Local investment manager fights trademark infringement lawsuit

A Boise investment management firm is fighting a federal trademark infringement lawsuit filed by a high-end residential real estate company based in Canada that uses the same name.

Talisker Corp. of Toronto, Canada, and its affiliate Talisker Mountain of Park City, Utah, sued Talisker Investment Group of Boise in federal court in Utah last August, though the lawsuit was transferred to Idaho’s federal district court on June 23.
The Canadian company claims that the local money management firm has used a “confusingly similar” name and mark in an effort to cause public confusion and capitalize on the company’s goodwill and reputation.
The lawsuit says both companies use the name “Talisker” in bold-style capital letters; provide investment-related services to individuals and businesses; and advertise and promote their services in media with national and international reach.
It says there is a high likelihood of confusion because the two companies’ brand names are similar in sight, sound, spelling and use, while each are involved in investment-related services in the same geographic region.
The Canadian company also highlights its 2,000-acre luxury development, Tuhaye, in Wasatch County, Utah, which features homes selling for as much as $5 million and an 18-hole golf course designed by British Open and Masters champion Mark O’Meara. It claims that through the development of Tuhaye, the public has come to associate Talisker with high-end real estate services and investments.
Talisker Corp. argues that all of this amounts to trademark infringement, trademark dilution, unfair competition, deceptive trade practices and false designation of origin. It has asked the court for an injunction plus compensatory and punitive damages and attorney fees.
The Boise investment management company, headed by president and chief investment officer Daniel Wiggins, who has written columns for the Idaho Business Review, has aggressively fought the lawsuit over the past year.
Attorneys for Talisker Investment Group note in court papers that the firm has no customers in Utah and does not actively market its products or seek business in the state.
They also argue that confusion is unlikely because of the dissimilarities in the services the two companies offer as well as their different geographic areas, marketing efforts and customer bases. The images associated with their use of the Talisker name are also different: the Boise company uses a square logo with a mountain and a stream plus its full name, while the Canadian company uses a circular logo with a globe or deer antlers.
Talisker is also a type of single malt scotch whiskey made on the Isle of Skye in Scotland.
According to court papers, the Canadian company focuses on the acquisition, development, divestiture, management and leasing of commercial and residential properties. That includes financing the sale of some properties, such as at Tuhaye, to individual buyers with sales of promissory notes backed by deeds of trust.
The Boise firm offers its investment management services to executives, entrepreneurs and high net worth individuals both nationally and internationally. It charges an annual fee for assets under management, according to its Web site.