from the Iowa District Court for Dubuque County, Monica
Zrinyi Wittig, Judge.
Reiff, doing business as Reiff Funeral Home and Crematory,
appeals from an adverse judgment entered in favor of Reiff
Funeral Homes, Inc.
D. Priebe and James H. Cook of Dutton, Braun, Staack &
Hellman, P.L.C., Waterloo, for appellant.
S. Harmon of Kintzinger Law Firm, P.L.C., Dubuque, for
by Vogel, C.J., Vaitheswaran, J., and Gamble, S.J. [*]
GAMBLE, Senior Judge.
(Bobby) Reiff, doing business as Reiff Funeral Home and
Crematory, appeals from an adverse judgment entered in favor
of Reiff Funeral Homes, Inc. and its principal Joseph (Joe)
Reiff in this common law trademark infringement
suit. Bobby asserts the district court erred in
concluding "Reiff Funeral Home" has a secondary
meaning entitled to trademark protections and the
plaintiff's case should be dismissed on the basis of
conclude Joe proved he had a valid trademark in the name of
Reiff Funeral Home and Bobby infringed on that trademark.
Joe's trademark infringement claim ripened when Bobby
used the internet to enter Joe's market. Bobby failed to
prove his equitable defense of laches.
Background Facts and Proceedings.
Funeral Homes began operating as a mortuary in 1959 under the
care and administration of Robert W. (Robert) and Anna Mae
Reiff. It has physical facilities in Epworth, Farley,
Dyersville, and Cascade and has provided funeral services in
Dubuque, Jackson, Jones, Delaware, and Clayton counties.
Robert and Anna had ten children. Their sons Bobby and Joe
both obtained degrees in mortuary science and assisted Robert
in the family business.
in the 1980s, Robert was diagnosed with cancer and made the
decision with Anna to offer Reiff Funeral Homes to Joe and
Bobby. Joe was still working in the family business when the
diagnosis was made. Bobby had been living in the Fort Dodge
area and working with Fort Dodge Area Funeral Service. In
1984, Bobby moved to Independence to manage the Mason Funeral
Chapel for Charles Dietman. "Within six months,"
Dietman approached Bobby and asked if the Reiff name could be
"put on the building." The business was then called
Mason and Reiff Funeral Chapel. The Mason name was later
dropped "because there was no value of the Mason
name" and the business was then called Reiff Funeral
Chapel. Bobby purchased the business from Dietman in March
early 1986, the families of Robert, Bobby, and Joe met with
Robert's attorney John O'Connor at his law office in
Dyersville and discussed options for the sale of the
business. Robert wished each son to purchase two of the
locations of Reiff Funeral Homes. Joe was interested in
making the purchase along with his wife, Peggy. Bobby
indicated he did not want anything to do with the "dead
horses" and walked out of the meeting. After further
discussions with Robert, Joe and Peggy decided to purchase
the business and the buildings.
O'Connor drew up the purchase agreements for the sale of
Reiff Funeral Homes. Pursuant to the bills of sale dated
September 30, 1986, Joe and Peggy purchased the buildings and
real estate located in Cascade, Dyersville, Epworth, and
Farley; the name of the business, "Reiff Funeral
Home"; and the goodwill associated with the business.
Joe and Peggy filed articles of incorporation with the
secretary of state on March 8, 1995, identifying the
corporation as "Reiff Funeral Homes, Inc.," with
Joe as the registered agent and Joe and Peggy as the only
Funeral Chapel was not performing well at the inception of
Bobby's ownership. Bobby testified no calls were received
from March to June 1986. Bobby testified he and his father
had a discussion about the business. Bobby thought the word
"chapel" sounded cold. He stated the two of them
had a long discussion and Robert suggested that Bobby use the
name Reiff Funeral Home to bring in families that related to
the Reiff name. Bobby stated he was concerned with
encroaching on his father's business but Robert
purportedly indicated it would bring a broader spectrum of
people to the funeral home and would benefit both Bobby and
Joe. Bobby claims Robert offered to provide a signed document
allowing him to use the "Reiff Funeral Home" name
but Bobby declined, explaining his father's word was
enough. In the fall of 1986, a sign was erected at
Bobby's Independence location identifying the business as
"Reiff Funeral Home" with an insignia of the letter
"R" printed in script with a circle around it.
Advertisements were placed in the local papers that would be
serviced by the business, including where it had physical
locations-Winthrop, Quasqueton, and Independence-all being in
Buchanan County. Bobby recognized the value of the name Reiff
Funeral Home. As noted above, before he changed the name he
was not getting calls. Bobby testified, "[W]e were just
about on our last-last grasp [sic], when business started
coming in." But, Bobby did not pay any consideration to
Robert for the use of the name. Bobby did not incorporate his
business or register a trade name.
in the 1990s after his father died, Joe became aware that
Bobby was doing business as Reiff Funeral Home. This was a
source of disagreement between the brothers, but they were
still getting along and cooperating in their businesses. For
example, in 2000, Bobby lost the building that housed the
Independence facility to a fire. In rebuilding, he decided to
add a retort and change the name to reflect the
services he could now provide. Joe helped Bobby during the
rebuilding process by allowing him to use blueprints from his
Dyersville location, which included a sign with the name
Reiff Funeral Home. Joe told Bobby, "[O]f course, that
will have to change." After construction was complete,
Bobby announced an open house in the name of "Reiff
Funeral Home and Crematory" in June 2002.
the years, the brothers' relationship has deteriorated,
partially as a result of the confusion related to their
businesses. On April 11, 2008, Peggy sent Bobby an email
informing him that he was not supposed to be using the name
Reiff Funeral Home because she and Joe had purchased the
rights to that name. Bobby denies receiving the email,
claiming Peggy sent it to an old email address. However, it
was not returned to Peggy undelivered.
were several incidents of confusion. Joe was served with
papers for a collection action on Bobby's delinquent
business account. People sent money for prepaid planning
services to Bobby when it was intended to be placed in
Joe's control. When confronted, Bobby initially denied
that the money had been sent to him and then, when pressed,
verified he had the money. On one occasion, he refused to
send the money to Joe until the attorney-in-fact for the
person demanded the money be turned over to Joe.
confusion escalated sometime around 2011 when Bobby put a
website for his business on the internet. In addition to
listing his locations in Buchanan County, Joe advertised that
he was proudly serving several communities in northeast Iowa
including the Dubuque County communities where Joe's
Reiff Funeral Homes were located. As a result, on-line
obituaries have been difficult to find for the families and
friends due to the wording placed into search engines on
Google. When they are searching for Joe's business they
end up on Bobby's website because his URL was
examples of confusion included phone calls to Joe's
business when the caller was looking for Bobby's and
vice-versa. One caller indicated that Bobby told him the two
businesses worked together and Bobby could assist with a
pre-need contract. Supplies that had been ordered by
Joe's business were erroneously sent to Bobby's
business. When the supplier was asked about the discrepancy,
it was verified that the items were sent to the wrong
address. Joe's business ended up having to pay twice for
the same products as Bobby did not call to have the items
returned to the supplier nor did he call Joe to say the items
were received in error. The logo for Joe's business is
the scene of a park. When advertisements have been ordered by
Joe's business, the printer indicated it could take the
logo off the web site for publication-the printer used
Bobby's insignia instead of Joe's park scene.
several years, Joe has asked that Bobby desist in using the
name that Joe purchased from his father. Bobby has continued
to use the name. Joe testified, "I was trying to keep
family peace, and trying to make this work, but as the years
went on, it kept getting confusing, and the more he put on
his website, indicating he serviced the area, everything just
kept snowballing, and I couldn't reason with him."
Funeral Homes, Inc. filed suit on December 1, 2016, alleging
Bobby had infringed upon its trademark "by marking their
products and services under a similar designation that will
cause a likelihood of confusion among customers." Joe
sought an injunction against Bobby's use of the name
Reiff Funeral Home. Bobby denied Joe's trademark
infringement claim and asserted the affirmative defense of
December 27, 2016, Bobby incorporated and registered
"Reiff Funeral Home & Crematory, Inc." with ...