OLD SEMINOLE HEIGHTS ) NEIGHBORHOOD ASSN. ) INC., a Florida Corporation, ) Complainant ) v. ) In Re oldseminoleheightsfoundation.org SEMINOLE HEIGHTS ) FOUNDATION, INC. c/o ) CHRISTIE HESS, ) Respondent ) )
AMENDED COMPLAINT IN ACCORDANCE WITH THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY
[1.] This Complaint is hereby submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (ICANN Policy), and the Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules), adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and the National Arbitration Forum (NAF) Supplemental Rules (Supp. Rules, November 1, 2007). ICANN Rule 3(b)(i).
[2.1] COMPLAINANT INFORMATION
[a.] Name: Old Seminole Heights Neighborhood Association, Inc. (OSHNA) [b.] Address: P.O. Box 360022, Tampa, Florida 33673 [c.] Telephone: 813-857-5497 [e.] E-Mail: [email protected]
[2.2] COMPLAINANT COUNSEL Pursuant to ICANN Rule 3(b)(ii), all communication should be directed to the undersigned counsel.
[a.] Name: Bradford A. Patrick, Esq. [b.] Address: Chamberlin Patrick PA, 3001 N. Rocky Point Dr. E, Suite 200, Tampa, Florida 33607 [c.] Telephone: (813) 374-2216 [d.] Fax: (813) 234-4510 [e.] E-Mail: [email protected]
The Complainant’s preferred method for communications:
Electronic-Only Material [a.] Method: Email [b.] Address: [email protected] [c.] Contact: Bradford A. Patrick, Esq.
Material Including Hard Copy [a.] Method: Fax [b.] Address/Fax: (813) 234-4510 [c.] Contact: Bradford A. Patrick, Esq.
The Complainant selects a single-member administrative panel pursuant to ICANN Rule 3(b)(iv).
[3.] RESPONDENT INFORMATION
[a.] Name: Seminole Heights Foundation, Inc. c/o Christie Hess1 [b.] Address: 1011 E Broad Street, Tampa, Florida 33604 [c.] Telephone: (813) 237-8808 [e.] E-Mail: [email protected]
On information and belief, Respondent does not have legal counsel as an authorized representative in the administrative proceeding. ICANN Rule 3(b)(v).
[4.] DISPUTED DOMAIN NAME(S)
[a.] The following domain name(s) is/are the subject of this Complaint: ICANN Rule 3(b)(vi). OLDSEMINOLEHEIGHTSFOUNDATION.ORG
[b.] Registrar Information: ICANN Rule 3(b)(vii).
[a.] Name: GoDaddy.com, Inc. [b.] Organization: GoDaddy.com [c.] Address: 14455 N. Hayden Rd., Suite 219, Scottsdale, AZ 85260 [d.] Telephone: (480) 505-8899 [f.] E-Mail: [email protected]
[c.] Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
OSHNA enjoys common law rights to its name “Old Seminole Heights” as a service mark for its activities as a neighborhood association. It is not the subject of federal trademark registration, but is protectable nonetheless.2
1 Ms. Hess is understood to be the Administrative Contact for SHF. OSHNA understands GoDaddy to have confirmed Seminole Heights Foundation, Inc. is the confirmed registrant of the domain. 2 Common law trademark claims form a sufficient basis for a Complaint under paragraph 4(a)(i) of the Policy. The Policy does not require that the Complainant should have a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that Complainant has rights in common law trademark: WIPO/D2000- 0210. See also WIPO/D2001-0059; WIPO/D2000-1764. Accord Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 C.A.11 (Fla.), 2001.
OSHNA UDRP COMPLAINT - 2 -
[5.] FACTUAL AND LEGAL GROUNDS
Background
This is a dispute between two local neighborhood organizations in Tampa, Florida. Complainant, OSHNA, is an officially recognized neighborhood association with an established membership of more than 500 active members representing approximately 400 families. Since records have been kept, more than 2000 individuals at more than 1600 addresses have been members. OSHNA sponsors annual events including the “Paint Your Heart Out” event for low-income elders, a children’s Pumpkin Parade, decorating events, holiday dinner and holiday carolers concert. For eleven years, it has brought more than 1,000 visitors to the neighborhood for its annual Home Tour of distinctive bungalow-style homes. The annual budget this year is in the neighborhood of fifty thousand dollars, up from $6775 in 2000. Candidate forums occur in election years, and quarterly general membership meetings are heavily advertised and attract large turnouts. More than a decade of goodwill in OSHNA is likewise reflected in the thousands of volunteer hours put in each year. This year alone more than 3,000 hours of volunteer time has been contributed to date. OSHNA sends out mailers and ballots to a list of subscribers numbering more than 500 for a total of more than 4,700 pieces annually. Email has been sent by OSHNA since 1998. Today messages are sent to a list of more than 825 individuals. Since a change of system software in 2007, OSHNA has sent more than 300 items comprising more than 225,000 emails altogether. Its newsletter The Advisor is also distributed in paper form to a circulation of more than 500. OSHNA is organized as a Florida 501c4 corporation, and has been recognized by the City of Tampa for more than twenty years. OSHNA also developed branding standards for the use of its name and logo in the local business community.
In stark contrast, Respondent/ Registrant is a founder of a new corporation, the Seminole Heights Foundation (SHF), created in March, 2009 by former board members of OSHNA. The domain in dispute, oldseminoleheightsfoundation.org, was registered by Hess as founder of SHF and is a redirect for seminoleheightsfoundation.org, the primary domain of the new SHF organization. SHF is not a City of Tampa neighborhood association.
The term “Seminole Heights” dates back to the early 1900’s and describes a geographic location around the intersection of Hillsborough Avenue and Central Avenue, north of downtown Tampa. Contemporary usage is inclusive of three separate, contiguous neighborhoods: Old Seminole Heights, South Seminole Heights, and Southeast Seminole Heights, each of which is individually recognized through its member-based neighborhood association by the City of Tampa. “Old Seminole Heights” is a name devised by residents in conjunction with recognition by the City of Tampa, and later, the Florida Department of Transportation and National Register of Historic Places. It specifically connotes the people in the neighborhood in the minds of others. One board member, Ms. DiBona, described it:
Old Seminole Heights is about who we are as a community, a group of like-minded people who established a “club” to protect, preserve and promote a way of life which we felt was significant. This feeling was begun by a small group of friends and neighbors who lived within the compact original boundaries. As the group grew in numbers, people who lived in the outlying areas,
0210. See also WIPO/D2001-0059; WIPO/D2000-1764. Accord Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 C.A.11 (Fla.), 2001.
OSHNA UDRP COMPLAINT - 3 - wanted to be identified with Old Seminole Heights, as they valued the long-established sense of community existing here. It was an attitude of belonging and neighborly pride in what we had accomplished, not a legal description of our properties. Old Seminole Heights was our attempt to replicate the miniature township that this community enjoyed during our parents and grandparents generations. It is our inherited legacy. Clearly, the use of the designation that one is “from Old Seminole Heights” connotes more than identifying the parcel of land owned. It says, “I represent this group of folks with compatible values and beliefs who have come together to reach a common goal. I am designated (by virtue of my elected and appointed positions) to speak on behalf of these people, as long as I do so within the boundaries to which we have agreed”. It is a door-opener, as it is usually met with something like, “Oh, hi! You’re from Old Seminole Heights?” and then the conversation can continue.
Mr. St. Ives described his experience:
Seminole Heights is a geographic area. Old Seminole Heights is more; it’s a concept as well as a geographic area. What it represents to the people who live here and to the people of Tampa is a gracious way of living. A place where neighbors not only know neighbors but help neighbors, talk to neighbors, and really care. When you say Old Seminole Heights to another Civic Association they say ‘Wow, you’re the folks who did…’ and they name it off and add ‘..that benefitted X or that helped to complete Y. Some Civic groups will say … ‘You’re the folks who helped us get set up and running.’ If you say Old Seminole Heights to a political group such as City Council or the County Commission they will immediately recognize us as the group that spoke on such and such, or the group that opposed thus and so, or the folks who supported Z. Old Seminole Heights is known for not only developing concepts but for following through with their execution.
The recognition of the community extends beyond Tampa Bay itself. The current issue of This Old House named Seminole Heights one of the “Best of the South,” making specific mention of its strong neighborhood organizations.
Domain name dispute
The dispute in this case arises from the manner in which the SHF leadership obtained the domain name. The following sequence of events is illuminating.
The issue of 501c3 status has kicked around OSHNA for years. On August 28, 2008, OSHNA established a 501c3 committee charged with investigation of how best to proceed to create such a new entity, including specific discussion of what name and domain would be used. On September 16, 2008, Mr. St. Ives was appointed Chair, and $3,000 was budgeted to the Committee. On October 21, 2008, the committee hired outside counsel to consult with it in regard to how to accomplish OSHNA’s goal of setting up a 501c3 foundation. On November 18, 2008, Susan Long3 and Doreen DiBona4 reported to the Board regarding the issues associated with converting from a 501c4 to a 501c3 versus creation of a new 501c3. In December, 2008, a meeting with counsel to discuss the options was planned for January.
3 Long was OSHNA president until October, 2008, and is a Founder of SHF. 4 DiBona is a current OSHNA trustee.
OSHNA UDRP COMPLAINT - 4 - In January, 2009, Evan St. Ives5, Greg Barnhill, Randy Baron6, Doreen DiBona, Jeff Harmon7, and Bill Hunter were appointed to the Committee by the Board. On February 10, 2009, counsel met with St. Ives, Barnhill, DiBona, and Harmon. Notes from the meeting were transcribed and circulated as part of the Committee minutes. Between February 10 and 13, St. Ives circulated draft articles of incorporation and bylaws for the proposed new foundation to the Committee and Board. On February 14, a second Committee meeting was held, with Barnhill, Baron, DiBona, Harmon and St. Ives in attendance. Minutes included discussion of names, non-profit status, directors, and methods of appointment for foundation board members. On February 17, 2009, the OSHNA Board approved a special board meeting for the Committee to present its conclusions, and report on the recommendations of counsel, tax consequences and so forth, and hear from members of OSHNA about the proposal. The domain at issue was intended by OSHNA to be the domain used in association with the creation of a new 501c3 organization.
On February 23, 2009, the Committee received a presentation from a non-profit consultant. Long, Baron, St. Ives, Barnhill, DiBona, Harmon and Hunter were present. On February 26, 2009, SEMINOLEHEIGHTSFOUNDATION.ORG was registered anonymously through Domains-by-Proxy. On March 10, 2009, SEMINOLE HEIGHTS FOUNDATION, INC. was incorporated with the State of Florida, listing Respondent Hess8, Long and Baron as directors, using articles of incorporation nearly identical to those prepared by St. Ives on behalf of the OSHNA Committee. On March 13, 2009, OSHNA received communication from the City of Tampa Neighborhood and Community Relations office erroneously congratulating OSHNA on the creation of the new foundation. On March 17, 2009, Hess registered OLDSEMINOLEHEIGHTSFOUNDATION.ORG, at 2:30PM (19:30UTC), hours before an OSHNA Board meeting at which Hess, Long, and Baron refused to discuss the matter and left. On March 25, 2009,9 SHF issued a press release detailing how its formation as a 501c3 would “fill in the gaps” of those things OSHNA “could not or would not do.” Local news coverage in the St. Petersburg Times and Tampa Tribune followed.
On April 10, 2009, the undersigned counsel was retained to address this dispute. All efforts at further resolution of this matter were rejected by SHF. At a Board meeting on April 21, 2009, and a General Membership meeting on April 28, 2009, SHF representatives in attendance had no comment on why they had created their Foundation in secret, registered a domain anonymously, and registered OLDSEMINOLEHEIGHTSFOUNDATION.ORG at all.
OSHNA’s Bylaws specifically provide that the Board is responsible for “preserving the good name and reputation of OSHNA”9, “Approv[ing] the use of the OSHNA name and/or logo by other parties including, but not limited to, endorsements of products or businesses”10, and may “Expel members whose actions or conduct embarrass or jeopardize the best interest of OSHNA.”11 In light of the betrayal of the Committee (and Board’s) trust of Hess, Baron and Long, and their actions in creating a competing organization and usurping the domain name at issue, on May 19, 2009, the Board voted
5 St. Ives is the current OSHNA vice president. 6 Baron is former OSHNA president and is a founder of SHF. 7 Harmon is the current OSHNA president. 8 Respondent Hess is former OSHNA vice president and is a founder of SHF. 9 Art. VI, Sec. 3 10 Art. VI, Sec. 4.3 11 Art. VI, Sec.4.4
OSHNA UDRP COMPLAINT - 5 - unanimously to move forward with pursuit of ICANN UDRP arbitration, and to terminate the membership of Hess, Baron and Long.
APPLICABLE LEGAL STANDARDS
In addition to the UDRP precedents cited herein, federal and Florida law apply to this case. Complainant relies on the following points of ICANN Policy: Paragraph 2(b), (d).12 Paragraph 4(a)(i)-(iii).13 Paragraph 4(b)(iii)-(iv).14
LIKELIHOOD OF CONFUSION
To determine whether there is a likelihood of confusion between two marks, the Eleventh Circuit has developed a seven-factor inquiry. Under this inquiry, the court must assess:
(1) the strength of the plaintiff's mark; (2) the similarity between the plaintiff's mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and the defendant; (4) the similarity of the sales methods; (5) the similarity of advertising methods; (6) the defendant's intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff's established mark; and (7) actual confusion.
North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1220 C.A. 11 (2008) (citing Alliance Metals, Inc. v. Hinely Industries, Inc., 222 F.3d 895, 907 C.A. 11 (2000)). “Of these, the type of mark [i.e., the strength] and the evidence of actual confusion are the most important.” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d at 1201 n. 22.
SECONDARY MEANING OF DESCRIPTIVE MARKS
Geographic marks, although descriptive, can be subject to protection if they have acquired secondary meaning. “Secondary meaning is the connection in the consumer's mind between the mark and the provider of the service.” Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F.2d 1519, 1525 C.A. 11 (1991); see also Welding Services v. Forman, 509 F.3d 1351, 1358 C.A. 11 (2007) (citations omitted) (“A name has acquired secondary meaning when the primary significance of the term in the minds of the consuming public is not the product but the producer.”).
12 Policy Para. 2:“(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; [ ] and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.” 13 Policy Para. 4(a):“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.” 14 Policy Para. 4(b): “(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
OSHNA UDRP COMPLAINT - 6 - Whether a name has attained secondary meaning depends on the length and nature of the name's use, the nature and extent of advertising and promotion of the name, the efforts of the proprietor to promote a conscious connection between the name and the business, and the degree of actual recognition by the public that the name designates the proprietor's product or service.
Welding Services, 509 F.3d at 1358 (citing 15 U.S.C. § 1052(f) and Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 C.A. 11 (1984)).
‘NATURAL EXPANSION’ DOCTRINE APPLIES
Under the common law, the universal rule governing tradename protection is that protection will be extended to the first appropriator of a name, within the territorial scope of its business, against subsequent use of the same or a similar name by another. Junior Food Stores of West Florida, Inc. v. Junior Food Stores, Inc., 226 So.2d 393 (Fla. 1969). “The scope of protection enjoyed by a trademark owner is not restricted to the owner's original use. The “natural expansion” doctrine is applied to determine the proper scope of protection where a mark owner's previous use differs from its current use, and the junior use intervenes. Under this doctrine, the first trademark owner's rights are limited to goods on which the mark has already been used or that lie within the realm of natural expansion.” Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d at 1201-1202. This rule is limited by equitable considerations. The court in Carnival noted that “[A] trademark owner cannot by the normal expansion of its business extend the use or registration of its mark to distinctly different goods or services not comprehended by its previous use ... where the result could be a conflict with valuable intervening rights established by another through extensive use ... of the same or similar mark for like or similar goods and services.” Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1310-11 C.A.11 (Fla.),1999. (citations and internal quotation marks omitted) (emphasis added).
Courts determine the proper scope of protection of a mark in the context of intervening uses by applying the “source or sponsorship” test. Under this test, a trademark owner has “protection against use of its mark on any product or service which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner.” J. McCarthy, § 24:6. The public perception in this regard is determined at the time the junior user first used the mark on the product or service to which the allegedly infringing mark is affixed. Carnival, 187 F.3d at 1312. The court in Tally-Ho explained that “related use” is “merely a facet of the likelihood of confusion test and therefore requires an inquiry into [the] seven factors affecting the likelihood of confusion ....” Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1027 C.A.11 (Fla.) 1989.
FLORIDA UNFAIR COMPETITION APPLIES
To prevail on a Florida common law unfair competition claim, a plaintiff must prove that (1) the plaintiff is the prior user of the trade name or service mark, (2) the trade name or service mark is arbitrary or suggestive or has acquired secondary meaning, (3) the defendant is using a confusingly similar trade name or service mark to indicate or identify similar services rendered (or similar goods marketed) by it in competition with plaintiff in the same trade area in which plaintiff has already established its trade name or service mark, and (4) as a result of the defendant's action or threatened
OSHNA UDRP COMPLAINT - 7 - action, consumer confusion as to the source or sponsorship of the defendant's goods or services is likely. American United Life Ins. Co. v. American United Ins. Co., 731 F.Supp. 480, 486 (S.D.Fla.1990).
ARGUMENT
A. Complainant has Common Law Rights; The Mark “Old Seminole Heights” is Protectable
This service mark is protectable – despite its descriptive quality – because OSHNA has acquired secondary meaning for the phrase “Old Seminole Heights.” Taken from Welding Services v. Foreman, whether a name has attained secondary meaning depends on: (1) the length and nature of the name's use. OSHNA has used “Old Seminole Heights” in its current form since 1996, and previously, as “Old Seminole Heights Preservation Committee since the mid 1980s. (2) the nature and extent of advertising and promotion of the name. As described herein, the organization has engaged in a wide range of physical and electronic advertising. Email measured in the hundreds of “blasts” and hundreds of thousands of messages, several thousand mailings per year, and prolific sponsorship of events, as well as miscellaneous items including posters, hats, stickers, mugs, license plate frames and similar items. (3) the efforts of the proprietor to promote a conscious connection between the name and the business. OSHNA has undertaken to promote the “Old Seminole Heights” name and develop its meaning on a sustained basis for more than twenty years. (4) the degree of actual recognition by the public that the name designates the proprietor's product or service. OSHNA enjoys significant recognition, most notably by the City, as a well-run neighborhood association. Hundreds of residents are active members of OSHNA. Thousands of volunteer hours are contributed to OSHNA.
B. Respondent has No Legitimate Rights in the Domain
Respondent has no legitimate rights in the use of the domain, because it was stolen from an existing plan for Complainant’s future use by an insider. This is consistent with other interpretation of Policy Para. 4.
C. The Domain was Registered in Bad Faith under Policy 4(b)(iii)(disruption) and (iv)(intent to attract/compete)
Paragraph 4(b) of the Policy is a non-exhaustive list. WIPO/D2000-0245 (jornalnacional.com and globoesporte.com), WIPO/D2000-0834 (ilovelucy.com), DeC/AF-286 (starfrit.com), NAF/FA95065(winesdirect.com). Since the list is non-exhaustive, a Panel may find bad faith on grounds other than the list in Paragraph 4(b): WIPO/D2001-0698 [Rule 15(a) allows a Panel to find bad faith on grounds other than those contained in Paragraph 4(b)] (gulfstatestoyota.com and priceleblanctoyota.com).
i. Bad faith is clear from “insider knowledge” of Respondent The critical facts in this case are that Respondent and her colleagues at SHF had insider information from which to act. Other panels have found bad faith in similar circumstances under a variety of arguments.15
15 Bad faith registration found because Respondent was aware of the confusing similarity between his domain name "fibershield.net" and Complainant's domain name "fiber-shield.com" (Respondent tried to register fiber-shield.com but
OSHNA UDRP COMPLAINT - 8 - ii. Panels have found bad faith where Respondent has used the domain to link to other sites or have otherwise diverted or redirected Internet traffic. Here, the use of the domain is as a redirect. Similar cases allowed a panel to find bad faith.16 iii. While it is generally the Respondent that is alleged to have acted in bad faith, Paragraph 4(a)(iii) of the Policy may also be satisfied if Complainant can establish that an employee or agent under Respondent's control acted in bad faith or, in certain circumstances, that a third party acted in bad faith. Here, the facts are that the Respondent registered the domain either on her own, or as an agent for SHF. The point is largely irrelevant, except to the extent Respondent chooses to respond to this Complaint by alleging she does not have rights in the name, but rather, SHF does. Complainant alleges any such claim is pretext and should be rejected. Other cases have held that a “straw” use of Respondent on behalf of a third party should be rejected.17 Finally, under “disruption by diversion” theory, the essential quality of the registration in this case is to actively poach on the coattails of the goodwill associated with Complainant’s name. Bad faith has been found in similar cases.18
D. A Likelihood of Confusion – Indeed, ACTUAL Confusion – Exists
A likelihood of confusion exists between “Old Seminole Heights” as used by OSHNA, and oldseminoleheightsfoundation.org as used by SHF. As applied, the Axiom Worldwide standards require a conclusion that the marks are confusingly similar. (1) The strength of the plaintiff's mark. OSHNA’s mark is descriptive, but it is protectable. The substantial sustained activity of OSHNA in disseminating and promoting the association of “Old Seminole Heights” in conjunction with OSHNA’s services has created secondary meaning. (2) The similarity between the plaintiff's mark and the allegedly infringing mark. “Old Seminole Heights” plus the suffix “Foundation.org” is SHF’s domain. The marks are identical. (3) The similarity between the products and services offered by the plaintiff and the defendant. The services offered by OSHNA and SHF are presumably similar; SHF has not been in existence long enough to identify precisely the contours of what they intend to do. Based on the statements of their web site, they are engaged in service to the Seminole Heights neighborhood and intend to serve as a vehicle for local charitable activities. This is substantially similar to the work done by OSHNA. (4) The similarity of the sales methods. As applied, both OSHNA and SHF make use of the internet and thus the subject domain as a method of acquiring members and donations. (5) The similarity of advertising methods. OSHNA is engaged in a wide range of physical and electronic advertising. Email measured in the hundreds of “blasts” and hundreds of thousands of
discovered it was unavailable) and since Respondent did not claim any rights superior to Complainant's trademark registration of the name "fiber-shield": NAF/FA92054. 16 Domain used to divert Complainant's business to Respondent: WIPO/D2000-0051 (various domains), WIPO/D2000-0861 (blackwaterrafting.com). 17 Respondent registered the domain (in bad faith) on behalf of third parties, who used the domain in bad faith: WIPO/D2000- 0730 (gallerina.com). 18 Respondent registered the domain name with the primary purpose of diverting potential customers of Complainant to Respondent's website. Panel found that this leads to the disruption of the business of a competitor: WIPO/D2000-0137 (xpediatravel.com). Respondent used its confusingly similar domain name as a conduit to link users directly to Respondent's site which appeared to have the purpose of siphoning off Complainant's customers and to profit Respondent alone: NAF/FA94232 (playnetworks.com).
OSHNA UDRP COMPLAINT - 9 - messages, several thousand mailings per year, and sponsorship of events, including posters, hats, stickers, mugs, and similar items. SHF as a new organization does not have an established record of advertising. (6) The defendant's intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff's established mark. OSHNA’s real objection to the acquisition of the domain by Hess is that Hess, Long and Baron were uniquely situated to exploit the trust of the Committee, and thought they could simply get away with stealing the domain. They did so having themselves been responsible for expanding and deepening the goodwill associated with the Old Seminole Heights name over the years. They created this organization and obtained this domain precisely because they could hope to gain additional competitive advantage from the confusion between OSHNA and SHF. SHF must be considered to have created this situation to obtain financial gain while detracting from OSHNA. Had their intent been otherwise, they would have had no difficulty in turning over the domain and foregoing the need for this proceeding. This action is aimed at restoring the domain name to OSHNA. It should also be noted that one of the SHF board members individually registered two domain names in the wake of the public outcry about the dispute.19 (7) actual confusion. At the time SHF was created, key local figures, including the City of Tampa Neighborhood Development officer and the St. Petersburg Times reporter congratulated OSHNA, the wrong entity, on the creation of the 501c3 organization. If the very people whose job it is to know the neighborhoods they serve cannot distinguish between the two, members of the general public cannot be expected to differentiate between the two. Even if the two entities were intending to cooperate, brand differentiation between the two organizations in the minds of the public would be difficult to achieve. As a whole, the conclusion which should be drawn from the Axiom Worldwide factors as applied to these facts is that “Old Seminole Heights Foundation.org” is likely to confuse the public into believing the entity to which one is redirected online is associated with OSHNA. The domain is an extension of the name of OSHNA, and based on the facts of how it came be registered, admit of only one conclusion – the domain was registered in bad faith.
E. Additional Theory of Unfair Competition Under Florida Law
OSHNA additionally asserts that a claim for Florida Unfair Competition is stated, and that the facts demonstrate that: (1) the plaintiff is the prior user of the trade name or service mark. OSHNA is clearly the senior mark. (2) the trade name or service mark is arbitrary or suggestive or has acquired secondary meaning. OSHNA has acquired secondary meaning in “Old Seminole Heights” as described herein. (3) the defendant is using a confusingly similar trade name or service mark to indicate or identify similar services rendered (or similar goods marketed) by it in competition with plaintiff in the same trade area in which plaintiff has already established its trade name or service mark. SHF is using the domain at issue in the same geographic area and similar services, to wit, neighborhood association and/or support organization, including non-profit services. As demonstrated above, this is exactly what was contemplated by OSHNA and made known to the very people who registered the domain. (4) as a result of the defendant's action or threatened action, consumer confusion as to the source or sponsorship of the defendant's goods or services is likely. As shown herein, not only is the consumer confusion likely;actual confusion has already occurred among the very people most likely to be aware of the difference between OSHNA and SHF, if any. The consumer is absolutely likely to be confused as to the source or sponsorship of services, to OSHNA’s detriment.
19 Southseminoleheightsfoundation.org and southeastseminoleheightsfoundation.org were both registered by Sherrill Simons, now a board member of SHF, on April 29, 2009, the day after the public meeting at which these issues were aired.
OSHNA UDRP COMPLAINT - 10 - CONCLUSION
The facts in this matter admit of only one conclusion - committee members with insider attorney/client information and knowledge of OSHNA’s specific plans, including the choice of the domain name, “cybersquatted” the domain at issue. They gave no notice of their action, or their intent to secure the domain before doing so. When the new “rogue” Seminole Heights Foundation, Inc. announced it had formed and issued a press release which included the domain name, OSHNA received communication from the both the St. Petersburg Times and the City of Tampa Director of Neighborhood Relations offering congratulations – to the wrong entity. This communication reflects actual confusion - beyond mere likelihood of confusion - in identifying the organization’s website. In seeking to identify itself with “Old Seminole Heights”, SHF specifically and intentionally sought to trade on the goodwill and identity established by OSHNA. SHF founders obtained the domain name specifically discussed in committee and established it as a redirect to their own site, with the unambiguous intent of capitalizing on the goodwill and inherent value in the name “Old Seminole Heights.” To the extent OSHNA has sought to resolve this matter informally, made demand, and offered to pay for the cost of registration, all to no avail, the only suitable conclusion to this matter is assignment of the domain to OSHNA.
[6.] REMEDY SOUGHT
The Complainant requests that the Panel issue a decision that the domain-name registration be transferred. ICANN Rule 3(b)(x); ICANN Policy ¶ 4(i).
[7.] OTHER LEGAL PROCEEDINGS
None at this time. ICANN Rule 3(b)(xi).
[8.] COMPLAINT TRANSMISSION
The Complainant asserts that a copy of this Complaint, together with the cover sheet as prescribed by NAF’s Supplemental Rules, has been sent or transmitted to the Respondent (domain-name holder), in accordance with ICANN Rule 2(b) and to the Registrar(s) of the domain name(s), in accordance with NAF Supp. Rule 4(e). ICANN Rule 3(b)(xii); NAF Supp. Rule 4(c).
[9.] MUTUAL JURISDICTION
The Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to jurisdiction where the Respondent is located, as shown by the address(es) given for the domain name holder in the Whois Database at the time of the submission of the Complaint to NAF. ICANN Rule 3(b)(xiii).
[10.] CERTIFICATION
Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the National Arbitration Forum and panelists, except in the case of
OSHNA UDRP COMPLAINT - 11 -
ANNEXED MATERIAL
1. ICANN Policy applicable to domain name in dispute 2. Supplemental Rules (NAB) URDP 3. Registration information for oldseminoleheightsfoundation.org 4. Registration information for seminoleheightsfoundation.org 5. Registration information for southseminoleheightsfoundation.org 6. Registration information for southeastseminoleheightsfoundation.org 7. Kathy Steele, Filling in the Gaps, Tampa Tribune, March 25, 2009 8. Oldseminoleheightsfoundation.org screengrab, April 14, 2009 9. Seminoleheightsfoundation.org screengrab, April 14, 2009 10. SUNBIZ registration of Articles of Incorporation for Seminole Heights Foundation, Inc. 11. References Cases Alliance Metals, Inc. v. Hinely Industries, Inc., 222 F.3d 895, 907 C.A. 11 (2000))...... 6 American United Life Ins. Co. v. American United Ins. Co., 731 F.Supp. 480, 486 (S.D.Fla.1990)...... 8 Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1310-11 C.A.11 (Fla.),1999 ...... 7 Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 C.A. 11 (1984) ...... 7 Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F.2d 1519, 1525 C.A. 11 (1991); ...... 6 Junior Food Stores of West Florida, Inc. v. Junior Food Stores, Inc., 226 So.2d 393 (Fla. 1969) ...... 7 North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1220 C.A. 11 (2008) ...... 6 Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 C.A.11 (Fla.), 2001...... 3 Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1027 ...... 7 Welding Services v. Forman, 509 F.3d 1351, 1358 C.A. 11 (2007) ...... 6 Statutes 15 U.S.C. § 1052(f) ...... 7 Other Authorities DeC/AF-286 ...... 8 NAF/FA92054 ...... 9 NAF/FA94232 ...... 9 NAF/FA95065 ...... 8 WIPO/D2000-0051 ...... 9 WIPO/D2000-0137 ...... 9 WIPO/D2000-0210...... 3 WIPO/D2000-0245 ...... 8 WIPO/D2000-0834 ...... 8 WIPO/D2000-0861 ...... 9 WIPO/D2000-1764 ...... 3 WIPO/D2001-0059 ...... 3 WIPO/D2001-0698 ...... 8
OSHNA UDRP COMPLAINT - 13 - ICANN | Uniform Domain Name Dispute Resolution Policy http://www.icann.org/en/dndr/udrp/policy.htm
Uniform Domain Name Dispute Resolution Policy
Policy Adopted: August 26, 1999 Implementation Documents Approved: October 24, 1999
Notes:
1. This policy is now in effect. See www.icann.org/udrp/udrp-schedule.htm for the implementation schedule.
2. This policy has been adopted by all ICANN-accredited registrars. It has also been adopted by certain managers of country-code top-level domains (e.g., .nu, .tv, .ws).
3. The policy is between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domain-name holder or registrant). Thus, the policy uses "we" and "our" to refer to the registrar and it uses "you" and "your" to refer to the domain-name holder.
Uniform Domain Name Dispute Resolution Policy
(As Approved by ICANN on October 24, 1999)
1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the "Policy") has been adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you. Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules of Procedure"), which are available at www.icann.org/udrp /udrp-rules-24oct99.htm, and the selected administrative-dispute-resolution service provider's supplemental rules.
2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.
3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:
a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronic instructions from you or your authorized agent to take such action;
b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or
c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.)
We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registration Agreement or other legal requirements.
4. Mandatory Administrative Proceeding.
This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at www.icann.org/udrp/approved-providers.htm (each, a "Provider").
a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
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In the administrative proceeding, the complainant must prove that each of these three elements are present.
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
d. Selection of Provider. The complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f).
e. Initiation of Proceeding and Process and Appointment of Administrative Panel. The Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the "Administrative Panel").
f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN.
g. Fees. All fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to expand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by you and the complainant.
h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, we will not be liable as a result of any decisions rendered by the Administrative Panel.
i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.
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j. Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.
k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.
5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.
6. Our Involvement in Disputes. We will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend ourselves.
7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above.
8. Transfers During a Dispute.
a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.
b. Changing Registrars. You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. You may transfer administration of your domain name registration to another registrar during a pending court action or arbitration, provided that the domain name you have registered with us shall continue to be subject to the proceedings commenced against you in accordance with the terms of this Policy. In the event that you transfer a domain name registration to us during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred.
9. Policy Modifications. We reserve the right to modify this Policy at any time with the permission of ICANN. We will post our revised Policy at
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Rules for Uniform Domain Name Dispute Resolution Policy
Policy Adopted: August 26, 1999 Implementation Documents Approved: October 24, 1999
Note: These rules are now in effect. See www.icann.org/udrp/udrp-schedule.htm for the implementation schedule.
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules")
(As Approved by ICANN on October 24, 1999)
Administrative proceedings for the resolution of disputes under the Uniform Dispute Resolution Policy adopted by ICANN shall be governed by these Rules and also the Supplemental Rules of the Provider administering the proceedings, as posted on its web site.
1. Definitions
In these Rules:
Complainant means the party initiating a complaint concerning a domain-name registration.
ICANN refers to the Internet Corporation for Assigned Names and Numbers.
Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.
Panel means an administrative panel appointed by a Provider to decide a complaint concerning a domain-name registration.
Panelist means an individual appointed by a Provider to be a member of a Panel.
Party means a Complainant or a Respondent.
Policy means the Uniform Domain Name Dispute Resolution Policy that is incorporated by reference and made a part of the Registration Agreement.
Provider means a dispute-resolution service provider approved by ICANN. A list of such Providers appears at www.icann.org/udrp/approved-providers.htm.
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Registrar means the entity with which the Respondent has registered a domain name that is the subject of a complaint.
Registration Agreement means the agreement between a Registrar and a domain-name holder.
Respondent means the holder of a domain-name registration against which a complaint is initiated.
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, the means for communicating with the Provider and the Panel, and the form of cover sheets.
2. Communications
(a) When forwarding a complaint to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint in electronic form (including annexes to the extent available in that form) by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@
(C) if the domain name (or "www." followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e-mail address shown or e-mail links on that web page; and
(iii) sending the complaint to any address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other addresses provided to the Provider by Complainant under Paragraph 3(b)(v).
(b) Except as provided in Paragraph 2(a), any written communication to
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Complainant or Respondent provided for under these Rules shall be made by the preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)), or in the absence of such specification
(i) by telecopy or facsimile transmission, with a confirmation of transmission; or
(ii) by postal or courier service, postage pre-paid and return receipt requested; or
(iii) electronically via the Internet, provided a record of its transmission is available.
(c) Any communication to the Provider or the Panel shall be made by the means and in the manner (including number of copies) stated in the Provider's Supplemental Rules.
(d) Communications shall be made in the language prescribed in Paragraph 11. E-mail communications should, if practicable, be sent in plaintext.
(e) Either Party may update its contact details by notifying the Provider and the Registrar.
(f) Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made:
(i) if delivered by telecopy or facsimile transmission, on the date shown on the confirmation of transmission; or
(ii) if by postal or courier service, on the date marked on the receipt; or
(iii) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable.
(g) Except as otherwise provided in these Rules, all time periods calculated under these Rules to begin when a communication is made shall begin to run on the earliest date that the communication is deemed to have been made in accordance with Paragraph 2(f).
(h) Any communication by
(i) a Panel to any Party shall be copied to the Provider and to the other Party;
(ii) the Provider to any Party shall be copied to the other Party; and
(iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may be.
(i) It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes.
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(j) In the event a Party sending a communication receives notification of non-delivery of the communication, the Party shall promptly notify the Panel (or, if no Panel is yet appointed, the Provider) of the circumstances of the notification. Further proceedings concerning the communication and any response shall be as directed by the Panel (or the Provider).
3. The Complaint
(a) Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN. (Due to capacity constraints or for other reasons, a Provider's ability to accept complaints may be suspended at times. In that event, the Provider shall refuse the submission. The person or entity may submit the complaint to another Provider.)
(b) The complaint shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall:
(i) Request that the complaint be submitted for decision in accordance with the Policy and these Rules;
(ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Complainant and of any representative authorized to act for the Complainant in the administrative proceeding;
(iii) Specify a preferred method for communications directed to the Complainant in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy;
(iv) Designate whether Complainant elects to have the dispute decided by a single-member or a three-member Panel and, in the event Complainant elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider's list of panelists);
(v) Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a);
(vi) Specify the domain name(s) that is/are the subject of the complaint;
(vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed;
(viii) Specify the trademark(s) or service mark(s) on which the
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complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.);
(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,
(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
(3) why the domain name(s) should be considered as having been registered and being used in bad faith
(The description should, for elements (2) and (3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable. The description shall comply with any word or page limit set forth in the Provider's Supplemental Rules.);
(x) Specify, in accordance with the Policy, the remedies sought;
(xi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint;
(xii) State that a copy of the complaint, together with the cover sheet as prescribed by the Provider's Supplemental Rules, has been sent or transmitted to the Respondent (domain-name holder), in accordance with Paragraph 2(b);
(xiii) State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction;
(xiv) Conclude with the following statement followed by the signature of the Complainant or its authorized representative:
"Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the dispute-resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as
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well as their directors, officers, employees, and agents."
"Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."; and
(xv) Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence.
(c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
4. Notification of Complaint
(a) The Provider shall review the complaint for administrative compliance with the Policy and these Rules and, if in compliance, shall forward the complaint (together with the explanatory cover sheet prescribed by the Provider's Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a), within three (3) calendar days following receipt of the fees to be paid by the Complainant in accordance with Paragraph 19.
(b) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant.
(c) The date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent.
(d) The Provider shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding.
5. The Response
(a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.
(b) The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall:
(i) Respond specifically to the statements and allegations contained in
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the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider's Supplemental Rules.);
(ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Respondent (domain-name holder) and of any representative authorized to act for the Respondent in the administrative proceeding;
(iii) Specify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy;
(iv) If Complainant has elected a single-member panel in the Complaint (see Paragraph 3(b)(iv)), state whether Respondent elects instead to have the dispute decided by a three-member panel;
(v) If either Complainant or Respondent elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider's list of panelists);
(vi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint;
(vii) State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and
(viii) Conclude with the following statement followed by the signature of the Respondent or its authorized representative:
"Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."; and
(ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents.
(c) If Complainant has elected to have the dispute decided by a single-member Panel and Respondent elects a three-member Panel, Respondent shall be required to pay one-half of the applicable fee for a three-member Panel as set forth in the Provider's Supplemental Rules. This payment shall be made together with the submission of the response to the Provider. In the event that the required
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payment is not made, the dispute shall be decided by a single-member Panel.
(d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider.
(e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.
6. Appointment of the Panel and Timing of Decision
(a) Each Provider shall maintain and publish a publicly available list of panelists and their qualifications.
(b) If neither the Complainant nor the Respondent has elected a three-member Panel (Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. The fees for a single-member Panel shall be paid entirely by the Complainant.
(c) If either the Complainant or the Respondent elects to have the dispute decided by a three-member Panel, the Provider shall appoint three Panelists in accordance with the procedures identified in Paragraph 6(e). The fees for a three- member Panel shall be paid in their entirety by the Complainant, except where the election for a three-member Panel was made by the Respondent, in which case the applicable fees shall be shared equally between the Parties.
(d) Unless it has already elected a three-member Panel, the Complainant shall submit to the Provider, within five (5) calendar days of communication of a response in which the Respondent elects a three-member Panel, the names and contact details of three candidates to serve as one of the Panelists. These candidates may be drawn from any ICANN-approved Provider's list of panelists.
(e) In the event that either the Complainant or the Respondent elects a three- member Panel, the Provider shall endeavor to appoint one Panelist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) calendar days to secure the appointment of a Panelist on its customary terms from either Party's list of candidates, the Provider shall make that appointment from its list of panelists. The third Panelist shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties, the Provider's selection from among the five being made in a manner that reasonably balances the preferences of both Parties, as they may specify to the Provider within five (5) calendar days of the Provider's submission of the five-candidate list to the Parties.
(f) Once the entire Panel is appointed, the Provider shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider.
7. Impartiality and Independence
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A Panelist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist's impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist.
8. Communication Between Parties and the Panel
No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider's Supplemental Rules.
9. Transmission of the File to the Panel
The Provider shall forward the file to the Panel as soon as the Panelist is appointed in the case of a Panel consisting of a single member, or as soon as the last Panelist is appointed in the case of a three-member Panel.
10. General Powers of the Panel
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.
11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
12. Further Statements
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In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.
13. In-Person Hearings
There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.
14. Default
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
15. Panel Decisions
(a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
(b) In the absence of exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment pursuant to Paragraph 6.
(c) In the case of a three-member Panel, the Panel's decision shall be made by a majority.
(d) The Panel's decision shall be in writing, provide the reasons on which it is based, indicate the date on which it was rendered and identify the name(s) of the Panelist(s).
(e) Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider's Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
16. Communication of Decision to Parties
(a) Within three (3) calendar days after receiving the decision from the Panel, the Provider shall communicate the full text of the decision to each Party, the
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concerned Registrar(s), and ICANN. The concerned Registrar(s) shall immediately communicate to each Party, the Provider, and ICANN the date for the implementation of the decision in accordance with the Policy.
(b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published.
17. Settlement or Other Grounds for Termination
(a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.
(b) If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.
18. Effect of Court Proceedings
(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
(b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.
19. Fees
(a) The Complainant shall pay to the Provider an initial fixed fee, in accordance with the Provider's Supplemental Rules, within the time and in the amount required. A Respondent electing under Paragraph 5(b)(iv) to have the dispute decided by a three-member Panel, rather than the single-member Panel elected by the Complainant, shall pay the Provider one-half the fixed fee for a three- member Panel. See Paragraph 5(c). In all other cases, the Complainant shall bear all of the Provider's fees, except as prescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shall refund the appropriate portion, if any, of the initial fee to the Complainant, as specified in the Provider's Supplemental Rules.
(b) No action shall be taken by the Provider on a complaint until it has received from Complainant the initial fee in accordance with Paragraph 19(a).
(c) If the Provider has not received the fee within ten (10) calendar days of receiving the complaint, the complaint shall be deemed withdrawn and the administrative proceeding terminated.
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(d) In exceptional circumstances, for example in the event an in-person hearing is held, the Provider shall request the Parties for the payment of additional fees, which shall be established in agreement with the Parties and the Panel.
20. Exclusion of Liability
Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules.
21. Amendments
The version of these Rules in effect at the time of the submission of the complaint to the Provider shall apply to the administrative proceeding commenced thereby. These Rules may not be amended without the express written approval of ICANN.
Comments concerning the layout, construction and functionality of this site should be sent to [email protected].
Page Updated 05-Feb-2002 ©2000, 2002 The Internet Corporation for Assigned Names and Numbers. All rights reserved.
12 of 12 6/23/2009 3:28 PM Dispute Resolution for Domain Names
Supplemental Rules
THE NATIONAL ARBITRATION FORUM'S SUPPLEMENTAL RULES TO ICANN'S UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY
1. Definitions
(a) The Rules means the Rules for the Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999.
(b) The Policy means the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999.
(c) The Forum means the National Arbitration Forum.
(d) “The Holder of a Domain Name Registration,” as used in The Rules (Rule 1), means the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum; and once the registrar has verified registration, is limited to the single person or entity as verified by the registrar. (i) A Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(f) and 17(a)(i).
(e) “The Party Initiating a Complaint Concerning a Domain Name Registration,” as used in The Rules (Rule 1), means the single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.
(f) Submit. In these Supplemental Rules or in a FORUM or Panel Order, documents are deemed Submitted under the following circumstances. Documents necessary to be Submitted in hard copy and electronic copy are deemed Submitted when both the hard copy and the electronic copy are received by the Forum.
(i) Electronic Mail will be deemed Submitted when received by the Forum’s mail server; (ii) Facsimile transmissions will be deemed Submitted when the entire fax is received by the Forum; and
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 1 Effective November 1, 2007 (iii) Postal mail will be deemed Submitted when received by the Forum
(g) Calendar Days means that all days, including weekends and international and national holidays, shall be counted in determining all deadlines and due dates.
Exceptions-Deadlines:
(i) In the event that a deadline falls on a United States federal holiday, as defined by 5 U.S.C. §6103, the deadline shall be extended to the following Calendar Day. (ii) In the event that a Calendar Day deadline falls on a Saturday or Sunday, the deadline shall be extended to the following Calendar Day. 2. Scope
The Forum will apply the Rules, the Policy and the Forum’s Supplemental Rules in effect at the time a Complaint is Submitted. The Forum’s Supplemental Rules may be amended by the Forum in its sole discretion.
3. Communications
All communications must be directed to the Forum and not to the Panel.
4. The Complaint
(a) The Complaint must include all elements listed in Paragraph 3(b) of the Rules; and may not exceed fifteen (15) pages.
(b) The Complainant must Submit three (3) hard copies of the Complaint to the Forum if the Complainant requests a single-member Panel. The Complainant must Submit five (5) hard copies of the Complaint if the Complainant requests a three (3) member Panel. If the Respondent requests a three-member Panel, the Complainant may be asked to Submit additional copies of the Complaint.
(c) In accordance with Paragraph 3(b)(xii) of the Rules, the Complainant must send or transmit its Complaint to the Respondent under cover of the Complaint Transmittal Cover Sheet posted on the Forum's web site.
(d) The Complaint must be sent to the Forum by e-mail ([email protected]), and either by fax or by mail.
(e) Notification to Registrar and certification thereof. (i) The Complainant must provide a copy of the Complaint to the registrar of the disputed domain name at the same time the Complaint is sent to the Forum. (ii) The Complainant must certify in the Complaint that Complainant has complied with Supp. Rule 4(e)(i).
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 2 Effective November 1, 2007 (f) Any arguments alleging Respondent aliases must be included in the Complaint for Panel consideration. (i) All Complaints alleging multiple aliases will be subject to an increased filing fee (see Supp. Rule 17 (a)(i)). (ii) If the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel; no portion of the filing fee will be refunded.
5. The Response
(a) The Response must include all elements listed in Paragraph 5(b) of the Rules and may not exceed fifteen (15) pages.
(b) If no Response is Submitted or if the Response fails to designate a preferred method of communication as required under Paragraph 5(b)(iii) of the Rules, the method used by the Forum to communicate to the Respondent will be:
(i) the e-mail address Respondent provided in the Response;
(ii) if no Response is Submitted or if no e-mail address is provided in the Response, the e-mail address of the Respondent in the WHOIS on the date the Complaint was filed;
(iii) if there is no e-mail address in the WHOIS, the facsimile address the Respondent provided in the Response or the e- mail address provided for the Respondent in the Complaint;
(iv) if none of these addresses are provided, the facsimile address provided for the Respondent in the Complaint; or
(v) if none of these addresses are provided, the mail address provided for the Respondent in the Complaint.
(c) The Respondent must Submit three (3) hard copies of the Response to the Forum if the Complainant requested a single-member Panel. If the Complainant or Respondent requested a three-member Panel, the Respondent must Submit (5) hard copies of the Response to the Forum.
(d) The Response must be sent to the Forum by e-mail ([email protected]), and by either fax or by mail.
6. Extensions and Stays
(a) Extensions for Filing a Response
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 3 Effective November 1, 2007 (i) Paragraph 5(d) of the Rules provides that the Respondent may request additional time to Submit a Response, or may be given additional time if the parties stipulate to an extension and the Forum approves. Any request by the Respondent for an extension or any joint request by the parties for an extension must:
(A) be Submitted after the parties have first conferred with each other to see if they could reach an agreement concerning the requested extension;
(B) be Submitted in writing to the Forum and the parties within the time for the Response to be Submitted;
(C) state the exceptional circumstances warranting the request for an extension;
(D) state the length of the extension being requested (no more than twenty (20) additional Calendar Days); and
(E) be Submitted with an extension fee of $100.
(ii) The Forum may exercise its discretion in determining whether exceptional circumstances exist warranting an extension and if so, the length of the extension. No request for an extension will be approved if any of the conditions set forth in Paragraph 6(a) have not been performed.
(b) Stays of the Administrative Proceeding
(i) If a Panel has not been appointed by the Forum, parties may jointly request a stay for a one-time period of forty-five Calendar Days, provided that both parties have agreed to the stay in writing and that the parties Submit the signed agreement to the Forum. A Model Form is available on the Forum’s website: http://domains.adrforum.com.
(ii) Prior to expiration of the Stay, at least one party must request in writing that the case be reinstated. Absent this written request, the Forum will automatically dismiss the case without prejudice.
(iii) If a Panel has been appointed by the Forum, a request that the administrative proceeding be stayed shall be granted at the discretion of the appointed Panel.
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 4 Effective November 1, 2007 7. Submission of other Written Statements and Documents; No Amendment to the Complaint
(a) A party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum, or, if no Response has been filed, the last date the Response was due to be received by the Forum.
(b) Each additional submission pursuant to Supplemental Rule 7(a) must:
(i) be timely received by the Forum;
(ii) be accompanied by an additional submission fee of $400;
(iii) include proof of service of these submissions upon the opposing party(s); and
(iv) be Submitted in either hard copy or electronic form.
(c) The party(s) not filing the original additional submission under 7(a) may file additional written statements and documents to the Forum within five (5) Calendar Days after the date the original additional submission was received by the Forum.
(d) Each additional submission pursuant to Supplemental Rule 7(c) must:
(i) be timely received by the Forum;
(ii) include proof of service of these submissions upon the opposing party(s); and
(iii) be Submitted in either hard copy or electronic form.
(e) Each party is limited to one additional submission under either 7(a) or 7(c), but not both.
(f) Additional submissions must not amend the Complaint or Response.
8. The Record of the Administrative Proceeding.
The Complaint, Response, and additional written statements and documents provided in Paragraph 12 of the Rules and Paragraph 7 of the Supplemental Rules constitute the complete record to be considered by the Panel.
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 5 Effective November 1, 2007 9. Appointment of the Panel and Timing of Decision
(a) The Forum will maintain and publish a list of Panelists and their qualifications to which any party will be directed on the Forum's web site, http://domains.adrforum.com. the Forum will appoint a Panelist from this list to serve as a single-member Panel.
(b) In cases involving a three-member Panel, the Forum will select a Chair for the three-member Panel and will endeavor to select a Chair who was not from the list of Panelist candidates provided by the parties pursuant to Paragraph 6(e) of the Rules. The Chair will sign all Orders and the Decision, coordinate and preside over the proceeding, and forward to the Forum the Panel’s decision, including any concurring or dissenting opinion as required by Paragraph 15 of the Rules.
(c) In cases where the Complainant requested a three-member Panel and no Response was Submitted as required by Rule 5(a), the Complainant may be given the option of converting the three-member Panel to a single-member Panel:
(i) After the time for the Response has expired, the Forum will notify the Complainant that no response was Submitted and that the Complainant may convert its three-member Panel request to a single-member Panel request;
(ii) Within five (5) Calendar Days of this notification, the Complainant, by e-mail to the Forum ([email protected]), may request that the three-member Panel be converted to a single-member Panel;
(iii) If a single-member Panel is requested, the Forum will select a Panelist from its list of Panelists, not on the list of Panelists Submitted by the Complainant; and
(iv) If a single-member Panel is appointed to decide the case, the Complainant will be reimbursed $1,000 of its fee.
(d) If the Complainant fails to request that the three-member Panel be converted to a single-member Panel as provided in paragraph 9(c)(ii) above, the selection of the three-member Panel will be as follows:
(i) The Complainant must provide a list of three candidates and the Forum will endeavor to select a Panelist from that list as provided in Rule 6(e);
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 6 Effective November 1, 2007 (ii) The Forum will select a Panelist from its list of Panel members; and
(ii) The Forum will supply to the parties a list of five candidates and will select a Panelist as provided in Rule 6(e).
(e) In cases where the Respondent requested a three-member Panel and the Complaint is withdrawn prior to the appointment of a Panel, the Respondent will be reimbursed $1,000 of its fee.
10. Impartiality and Independence
(a) All Forum Panelists will take an oath to be neutral and independent.
(b) A Panelist will be disqualified if circumstances exist that create a conflict of interest or cause the Panelist to be unfair and biased, including but not limited to the following:
(i) The Panelist has a personal bias or prejudice concerning a party or personal knowledge of disputed evidentiary facts;
(ii) The Panelist has served as an attorney to any party or the Panelist has been associated with an attorney who has represented a party during that association;
(iii) The Panelist, individually or as a fiduciary, or the Panelist’s spouse or minor child residing in the Panelist’s household, has a direct financial interest in a matter before the Panelist;
(iv) The Panelist or the Panelist’s spouse, or a person within the third degree of relationship to either of them, or the spouse of such a person:
(1) Is a party to the proceeding, or an officer, director, or trustee of a Party; or (2) Is acting as a lawyer or representative in the proceeding.
(c) A party may challenge the selection of a Panelist, provided that a decision has not already been published, by filing with the Forum a written request stating the circumstances and specific reasons for the disqualification.
(d) A request to challenge must be filed in writing with the Director of Arbitration within five (5) Calendar Days of the date of receipt of the notice of the selection.
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 7 Effective November 1, 2007 (e) Provided a decision has not already been published by the selected Panelist, the Forum will promptly review the challenge and determine whether circumstances exist requiring Panelist disqualification in accord with this rule.
11. Communications Between Parties and the Panel
(a) No party may directly communicate with a Panelist.
(b) The parties may communicate with the Case Coordinator assigned to their proceeding by phone, fax, e-mail, or mail through the United States Postal Service.
(c) Any request by a party for any type of action by the Forum or Panel must be communicated in writing to the Forum and the opposing party(s).
12. Withdrawal
(a) Prior to Commencement
(i) Before the five (5) Calendar Day deficiency period described in Rule 4(b) expires, the Complainant may withdraw the Complaint without prejudice. A withdrawal request must be Submitted to the Forum in writing and signed by the Complainant. Upon the Forum’s receipt of the withdrawal request, the Complaint will be withdrawn without prejudice and the administrative proceeding will be terminated.
(ii) The Complainant may re-initiate a proceeding, which was properly with drawn pursuant to Supplemental Rule 12(a)(i), within thirty (30) Calendar Days. A re-initiation fee of $100 must accompany the request to re-initiate the proceeding.
(iii) If the Complaint was withdrawn pursuant to Supplemental Rule 12(a)(i) and if the Complainant does not re-initiate the Complaint at the end of thirty (30) Calendar Days, a subsequent Complaint will be treated as a new Complaint and must be accompanied by payment of the appropriate fees.
(b) After Commencement and Prior to Response:
(i) After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn by the Complainant. A withdrawal request must be Submitted to the Forum in writing and signed by the
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 8 Effective November 1, 2007 Complainant. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(i) will be dismissed without prejudice.
(ii) After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn pursuant to a joint request made by both parties. A withdrawal request must be Submitted to the Forum in writing and signed by both Parties. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(ii) will be dismissed with prejudice.
(c) After Response is Received: After a Response that complies with Supplemental Rule 5 has been received by the Forum, but before a Panel decision is published, the Complaint may be withdrawn if both parties agree to the withdrawal. A withdrawal request must be Submitted to the Forum in writing and signed by both parties. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(iii) will be dismissed with prejudice.
(d) The Complaint cannot be withdrawn after a Panel decision is published.
13. Panel Decisions
Panel decisions will meet the requirements set forth in Paragraph 15 of the Rules and will be of a length that the Panel deems appropriate.
14. Correction of Clerical Mistakes.
Clerical mistakes or clerical errors in the Panel’s decision arising from oversight or omission by the Panel may be corrected by the Director of Arbitration for the Forum.
15. Communication of Decision to Parties; Publication of Decision. (a) The Forum will publish the decision by Submitting the Panel’s decision to the parties, ICANN, and the Registrar as required by the Rules, and by publishing the full decision on a publicly accessible web site. (b) All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is Submitted before the Panel’s decision is published.
16. Conclusion of the Proceedings.
Once the Panel’s decision is issued, the case is closed with the Forum. No further submissions or requests will be considered.
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 9 Effective November 1, 2007
17. Fees (U.S. Dollars)
(a) Fees: Number of Disputed Single-Member Panel Three-Member Panel Domain Names
1 – 2 $1,300 $2,600 3 – 5 $1,450 $2,900 6 – 10 $1,800 $3,600 11 – 15 $2,250 $5,000 16 or more Please contact the Forum for a Please contact the Forum for a fee quote. fee quote.
(i) If a Complainant alleges that a single Respondent is using multiple aliases and makes such arguments in the Complaint for Panel consideration per Supplemental Rule 4(f), the filing fee shall be increased proportionately to the number of aliases involved. Please contact the Forum at [email protected] with the number of domain names and the number of aliases to obtain a fee quote.
(b) Participatory hearings:
As stated in the Rules, in exceptional circumstances (for example, in the event an in-person hearing is held), the Forum may require the Parties to pay additional fees, which will be established by agreement of the Parties and the Director of Arbitration for the Forum prior to the appointment of the Panel.
(c) Non-refundable fees:
Fees to be paid to the Forum as provided in these Supplemental Rules must be paid in U.S. Dollars and are non-refundable, except as provided in Supplemental Rule 9(c)(iv) and 9(e).
(d) Forms of payment
Payment shall be made in one of the following forms:
(i) Credit card;
(ii) Certified check; or
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 10 Effective November 1, 2007 (iii) Personal/business check.
(e) If any form of payment is cancelled, stopped, returned unpaid or dishonored, without prior written authorization from the Forum, the Forum reserves the right to charge a service fee of $50 for each cancelled, stopped, returned or dishonored payment.
18. Effective Date
These Supplemental Rules apply to all cases filed on or after November 1, 2007.
National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 11 Effective November 1, 2007 .:: Public Interest Registry ::. http://pir.org/index.php?mode=whois&db=content%2FWebsite&tbl=Regi...
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Domain ID: D155640095-LROR Domain Name: OLDSEMINOLEHEIGHTSFOUNDATION.ORG Created On: 17-Mar-2009 19: 30: 14 UTC Last Updated On: 17-May-2009 03: 54: 50 UTC Expiration Date: 17-Mar-2011 19: 30: 14 UTC Sponsoring Registrar: GoDaddy.com, Inc. (R91-LROR) Status: CLIENT DELETE PROHIBITED Status: CLIENT RENEW PROHIBITED Status: CLIENT TRANSFER PROHIBITED Status: CLIENT UPDATE PROHIBITED Registrant ID: GODA-061117418 Registrant Name: Christie Hess Registrant Organization: Seminole Heights Foundation Registrant Street1: 1011 E Broad St Registrant Street2: Registrant Street3: Registrant City: TAMPA Registrant State/Province: Florida Registrant Postal Code: 33604 Registrant Country: US Registrant Phone: +1.8132378808 Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] Admin ID: GODA-261117418 Admin Name: Christie Hess Admin Organization: Seminole Heights Foundation Admin Street1: 1011 E Broad St Admin Street2: Admin Street3: Admin City: TAMPA Admin State/Province: Florida Admin Postal Code: 33604 Admin Country: US Admin Phone: +1.8132378808 Admin Phone Ext.: Admin FAX:
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Admin FAX Ext.: Admin Email: [email protected] Tech ID: GODA-161117418 Tech Name: Christie Hess Tech Organization: Seminole Heights Foundation Tech Street1: 1011 E Broad St Tech Street2: Tech Street3: Tech City: TAMPA Tech State/Province: Florida Tech Postal Code: 33604 Tech Country: US Tech Phone: +1.8132378808 Tech Phone Ext.: Tech FAX: Tech FAX Ext.: Tech Email: [email protected] Name Server: NS21.DOMAINCONTROL.COM Name Server: NS22.DOMAINCONTROL.COM Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server:
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Registrants Whois Find a Registrar .ORG WHOIS DATABASE SEARCH >> WHOIS Enter Domain: Resource Center .ORG Knowledge Center .ORG Showcase Members Directory of Resources You Searched For: "seminoleheightsfoundation" Internationalized Domain WHOIS Details: Names Punycode NOTICE: Access to .ORG WHOIS information is provided to assist persons in determining the contents of a domain name registration record in the Public Interest Registry registry database. The data in this Renewal record is provided by Public Interest Registry for informational purposes only, and Public Interest Transfers Registry does not guarantee its accuracy. This service is intended only for query-based access. You agree that you will use this data only for lawful purposes and that, under no circumstances will you use Dispute Resolution this data to: (a) allow, enable, or otherwise support the transmission by e-mail, telephone, or facsimile Registrant FAQs of mass unsolicited, commercial advertising or solicitations to entities other than the data recipient's own existing customers; or (b) enable high volume, automated, electronic processes that send queries or data to the systems of Registry Operator or any ICANN-Accredited Registrar, except as reasonably necessary to register domain names or modify existing registrations. All rights reserved. Public Interest whois Registry reserves the right to modify these terms at any time. By submitting this query, you agree to abide by this policy. .ORG WHOIS DATABASE SEARCH
Domain ID: D155472679-LROR Enter a .ORG Domain: Domain Name: SEMINOLEHEIGHTSFOUNDATION.ORG Created On: 26-Feb-2009 16: 34: 50 UTC Last Updated On: 26-Feb-2009 16: 34: 51 UTC Expiration Date: 26-Feb-2011 16: 34: 50 UTC Sponsoring Registrar: GoDaddy.com, Inc. (R91-LROR) Whois Help >> Status: CLIENT DELETE PROHIBITED Status: CLIENT RENEW PROHIBITED Status: CLIENT TRANSFER PROHIBITED Status: CLIENT UPDATE PROHIBITED Status: TRANSFER PROHIBITED Get the .ORG eNewsletter Registrant ID: GODA-060181969 Registrant Name: Registration Private Registrant Organization: Domains by Proxy, Inc. GET THE INSIDE SCOOP ON WHAT’S Registrant Street1: DomainsByProxy.com HAPPENING WITH .ORG AND PUBLIC Registrant Street2: 15111 N. Hayden Rd., Ste 160, PMB 353 INTEREST REGISTRY IN OUR QUARTERLY NEWSLETTER Registrant Street3: Registrant City: Scottsdale Registrant State/Province: Arizona Sign Up>> Registrant Postal Code: 85260 Registrant Country: US Registrant Phone: +1.4806242599 Registrant Phone Ext.: Registrant FAX: +1.4806242598 Registrant FAX Ext.: Registrant Email: [email protected] Admin ID: GODA-260181969 Admin Name: Registration Private Admin Organization: Domains by Proxy, Inc. Admin Street1: DomainsByProxy.com Admin Street2: 15111 N. Hayden Rd., Ste 160, PMB 353 Admin Street3: Admin City: Scottsdale Admin State/Province: Arizona Admin Postal Code: 85260 Admin Country: US Admin Phone: +1.4806242599 Admin Phone Ext.: Admin FAX: +1.4806242598 Admin FAX Ext.: Admin Email: [email protected] Tech ID: GODA-160181969 Tech Name: Registration Private Tech Organization: Domains by Proxy, Inc. Tech Street1: DomainsByProxy.com Tech Street2: 15111 N. Hayden Rd., Ste 160, PMB 353 Tech Street3: Tech City: Scottsdale Tech State/Province: Arizona
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Tech Postal Code: 85260 Tech Country: US Tech Phone: +1.4806242599 Tech Phone Ext.: Tech FAX: +1.4806242598 Tech FAX Ext.: Tech Email: [email protected] Name Server: NS19.DOMAINCONTROL.COM Name Server: NS20.DOMAINCONTROL.COM Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server:
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You Searched For: "southseminoleheightsfoundation.org"
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Domain ID: D156022879-LROR Domain Name: SOUTHSEMINOLEHEIGHTSFOUNDATION.ORG Created On: 29-Apr-2009 16: 01: 13 UTC Last Updated On: 29-Apr-2009 16: 01: 15 UTC Expiration Date: 29-Apr-2010 16: 01: 13 UTC Sponsoring Registrar: Tucows Inc. (R11-LROR) Status: CLIENT TRANSFER PROHIBITED Status: CLIENT UPDATE PROHIBITED Status: TRANSFER PROHIBITED Registrant ID: tutRGQjVDZt25hXJ Registrant Name: Sherrill Simons Registrant Organization: Na Registrant Street1: 911 E. Shadowlawn Avenue Registrant Street2: Registrant Street3: Registrant City: Tampa Registrant State/Province: FL Registrant Postal Code: 33603 Registrant Country: US Registrant Phone: +1.8137899849 Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] Admin ID: tuO0B6hHwY5GjOE8 Admin Name: Sherrill Simons Admin Organization: Na Admin Street1: 911 E. Shadowlawn Avenue Admin Street2: Admin Street3: Admin City: Tampa Admin State/Province: FL Admin Postal Code: 33603 Admin Country: US Admin Phone: +1.8137899849 Admin Phone Ext.: Admin FAX: Admin FAX Ext.:
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Admin Email: [email protected] Tech ID: tu4uI4atpTFxjF47 Tech Name: Domain Administrator Tech Organization: IPOWER, Inc. Tech Street1: 70 Blanchard Road Tech Street2: Tech Street3: Tech City: Burlington Tech State/Province: MA Tech Postal Code: 01803 Tech Country: US Tech Phone: +1.8885114678 Tech Phone Ext.: Tech FAX: +1.7812726550 Tech FAX Ext.: Tech Email: [email protected] Name Server: NS2.IPOWER.COM Name Server: NS1.IPOWER.COM Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server:
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Domain ID: D156022854-LROR Domain Name: SOUTHEASTSEMINOLEHEIGHTSFOUNDATION.ORG Created On: 29-Apr-2009 15: 59: 10 UTC Last Updated On: 29-Apr-2009 15: 59: 11 UTC Expiration Date: 29-Apr-2010 15: 59: 10 UTC Sponsoring Registrar: Tucows Inc. (R11-LROR) Status: CLIENT TRANSFER PROHIBITED Status: CLIENT UPDATE PROHIBITED Status: TRANSFER PROHIBITED Registrant ID: tuc59YHaptmuizJr Registrant Name: Sherrill Simons Registrant Organization: Na Registrant Street1: 911 E. Shadowlawn Avenue Registrant Street2: Registrant Street3: Registrant City: Tampa Registrant State/Province: FL Registrant Postal Code: 33603 Registrant Country: US Registrant Phone: +1.8137899849 Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] Admin ID: tuscrARLlc5erRLw Admin Name: Sherrill Simons Admin Organization: Na Admin Street1: 911 E. Shadowlawn Avenue Admin Street2: Admin Street3: Admin City: Tampa Admin State/Province: FL Admin Postal Code: 33603 Admin Country: US Admin Phone: +1.8137899849 Admin Phone Ext.: Admin FAX: Admin FAX Ext.:
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Admin Email: [email protected] Tech ID: tu7rDfMvfXCB3O4R Tech Name: Domain Administrator Tech Organization: IPOWER, Inc. Tech Street1: 70 Blanchard Road Tech Street2: Tech Street3: Tech City: Burlington Tech State/Province: MA Tech Postal Code: 01803 Tech Country: US Tech Phone: +1.8885114678 Tech Phone Ext.: Tech FAX: +1.7812726550 Tech FAX Ext.: Tech Email: [email protected] Name Server: NS2.IPOWER.COM Name Server: NS1.IPOWER.COM Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server:
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3 of 3 6/24/2009 10:30 AM Foundation To Fill In Gaps http://centraltampa2.tbo.com/content/2009/mar/25/st-foundation-to-fill-in...
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1 of 3 4/14/2009 10:02 AM Foundation To Fill In Gaps http://centraltampa2.tbo.com/content/2009/mar/25/st-foundation-to-fill-in...
Email Print Central Tampa > News ADVERTISEMENT Foundation To Fill In Gaps
ADVERTISEMENT By KATHY STEELE
[email protected] MORE FROM THIS TOPIC Published: March 25, 2009 • Money 911: As April 15 Approaches, Keep Tax Breaks In SEMINOLE HEIGHTS - The idea floated around for a couple of years, in Mind moments of, "Well, what if we did this?" or "Do we go ahead with this?" • Gazebo Coming Soon • Accident Shuts Down Florida Avenue In Seminole Heights A workshop last month plotting out Seminole Heights' future growth • Residents Hope To Take Back Streets crystallized the obvious. The neighborhood could use a nonprofit • Heights Plans Need More Tweaking foundation if only to fill in funding gaps the city cannot bridge. • City Sets Seminole Heights Tour • Pilot Project To Study Seminole Heights So Christie Hess, Susan Long and Randy Baron incorporated the • Seminole Heights To Be Proving Ground Seminole Heights Foundation with the state and filed for nonprofit status as a charity with the Internal Revenue Service. Hess is chairwoman of crime awareness for Old Seminole Heights Neighborhood Association; Long and Baron are past presidents of the association. But the new foundation is not affiliated with the Book Sale At Library neighborhood group. Foundation To Fill In Gaps Charitable status for the foundation could take a few months, Hess said. Fashion Shows To Feature Spring Styles The trio are moving forward on finding 10 more people for a 13-member Removing meters helped business, Ybor merchants say board of directors. The first appointment is Sherry Genovar-Simons, Teacher Made The Grade president of the Southeast Seminole Heights Civic Association.
"We're not looking for this to be a popularity contest," Hess said. The Gandy area business owners oppose group wants board members with "real skills" such as legal expertise or Crosstown extension fundraising talent, or experience working with nonprofit organizations. The foundation hopes to have its board in place by October. Preference Ikea drawing more retailers, including new Furniture Row is for board members to come from Seminole Heights, but selections Tampa Police: Reluctant Victim Risks Gunfire could come from outside the neighborhood, Hess said. To Keep Chain Cat fanciers say Tampa is just 'feline' The foundation's mission is to search out resources and funding for A Home Is Rebuilt projects within the boundaries of the three Seminole Heights Woman's Will To Decide Park's Fate neighborhoods - Old Seminole, Southeast Seminole and South Seminole. TOPICS TODAY Potential projects for the foundation might include crosswalks, gateways administration officials air force base air plane air traffic controller into the neighborhood, streetlights, signs and sidewalks. The foundation avon park citrus park connecticut doreen engine planes also could partner with the city in securing grants that require matching funds. federal aviation administration fertilizers first degree murder flags florida Seminole Heights is in the second year of a pilot project to craft new highw ay patrol fly fort myers grandmothers half days highlands county zoning codes that during the next 20 to 50 years will guide the hillsborough county integrity intersection landscape plants mindy nascar race
neighborhood's growth. Known as form-based zoning, the codes obama pilot died in flight proposal radio personality red flags road
emphasize the size and appearance of buildings as well as the layout of motor c y c les rush hour traffic sebring southwest florida southwest florida streets and public spaces. international southwest florida international airport takeoff university of The intent is to create more mixed-use, pedestrian-friendly south florida water lines w inchester plaza
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Traditional zoning generally separates areas based on land use and Advertise With Us decisions of public health and safety, placing shops, homes and factories in different districts. The city's zoning staff is working on drafting the codes for review by city council members by the end of the year. Workshops have been held to get public input. "Form-based zones will go a long way, but some parts will need help," Hess said, as in financial help for even fairly small things such as trash cans, signs and benches. "That's where the foundation would fit in," she said. "We can do things that the neighborhood association doesn't want to do or can't do." And the reality, she said, is the city "is not going to pick up" some projects. The organizers are asking for projects or goals for Seminole Heights Foundation. Call Hess at (813) 237-8808 or e-mail info@seminoleheights foundation.org or chess@sem inoleheightsfoundation.org. Reporter Kathy Steele can be reached at (813) 259-7652.
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2 of 3 4/14/2009 10:02 AM Foundation To Fill In Gaps http://centraltampa2.tbo.com/content/2009/mar/25/st-foundation-to-fill-in...
TOPICS IN THIS ARTICLE internal revenue service • form based zoning • seminole heights • neighborhood group • south seminole • neighborhood association • popularity contest • susan long • crime awareness • nonprofit status • nonprofit foundation • charitable status • pilot project • legal expertise • civic association • new foundation • member board • matching funds • hess • nonprofit organizations Please sign in to leave comments. (Register for an account.)
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3 of 3 4/14/2009 10:02 AM Seminole Heights Foundation http://oldseminoleheightsfoundation.org/
1 of 1 4/14/2009 10:00 AM Seminole Heights Foundation, Inc. http://seminoleheightsfoundation.org/
1 of 1 4/14/2009 10:01 AM
Westlaw Delivery Summary Report for PATRICK,BRADFORD
Date/Time of Request: Monday, July 6, 2009 12:01 Central Client Identifier: OSHNA Database: FEDFIND Citation Text: 222 F.3d 895 Lines: 904 Documents: 1 Images: 0
The material accompanying this summary is subject to copyright. Usage is governed by contract with Thomson Reuters, West and their affiliates. 222 F.3d 895 Page 1 222 F.3d 895, 141 Lab.Cas. P 59,055, 25 Employee Benefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048 (Cite as: 222 F.3d 895)
95k116(1) k. In General. Most Cited Cases United States Court of Appeals, Although non-competition covenants are generally Eleventh Circuit. disfavored under Pennsylvania law, exceptions to ALLIANCE METALS, INC., OF ATLANTA, this rule exist for covenants that protect (1) buyer Plaintiff-Counter-Defendant-Appellee, of goodwill of business and (2) goodwill acquired v. through efforts of employee. HINELY INDUSTRIES, INC., Robert F. Hinely, Jr., Defendants-Counter-Claimants-Appellants, [2] Contracts 95 103 Stephen C. Hinely, et al., Defendants Counter- Claimants. 95 Contracts No. 99-13836. 95I Requisites and Validity 95I(F) Legality of Object and of Considera- Aug. 15, 2000. tion 95k103 k. Contravention of Law in Gen- Corporation sued former employee for breach of eral. Most Cited Cases non-compete agreement and trade name infringe- ment. The United States District Court for the Contracts 95 108(1) Northern District of Georgia, No. 96-00268-CV-WBH-1,Willis B. Hunt, Jr., J., gran- 95 Contracts ted summary judgment for employer, and employee 95I Requisites and Validity appealed. The Court of Appeals, Alarcón, Circuit 95I(F) Legality of Object and of Considera- Judge, sitting by designation, held that: (1) non- tion compete provision in employment contract was en- 95k108 Public Policy in General forceable; (2) employer's alleged breach of employ- 95k108(1) k. In General. Most Cited ment agreement did not excuse employee's failure Cases to comply with non-competition provision where For contract to be deemed unenforceable as illegal employee failed to give employer contractually re- or contrary to public policy, its purpose or object quired notice and opportunity to cure; and (3) trade must be contrary to law or policy of state. name used by employee in competing business in- [3] Contracts 95 116(1) fringed employer's name. 95 Contracts Affirmed. 95I Requisites and Validity West Headnotes 95I(F) Legality of Object and of Considera- tion [1] Contracts 95 116(1) 95k115 Restraint of Trade or Competition in Trade 95 Contracts 95k116 In General 95I Requisites and Validity 95k116(1) k. In General. Most 95I(F) Legality of Object and of Considera- Cited Cases tion Under Pennsylvania law, non-compete provision of 95k115 Restraint of Trade or Competition corporate president's employment contract was not in Trade rendered unenforceable as illegal or contrary to 95k116 In General public policy by parent corporation's price fixing
© 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. 222 F.3d 895 Page 2 222 F.3d 895, 141 Lab.Cas. P 59,055, 25 Employee Benefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048 (Cite as: 222 F.3d 895)
violation. [6] Contracts 95 143.5
[4] Contracts 95 143(4) 95 Contracts 95II Construction and Operation 95 Contracts 95II(A) General Rules of Construction 95II Construction and Operation 95k143.5 k. Construction as a Whole. 95II(A) General Rules of Construction Most Cited Cases 95k143 Application to Contracts in Gen- Writings which comprise contractual agreement eral must be interpreted as a whole. 95k143(4) k. Subject, Object, or Pur- pose as Affecting Construction. Most Cited Cases [7] Contracts 95 202(2)
Contracts 95 147(1) 95 Contracts 95II Construction and Operation 95 Contracts 95II(C) Subject-Matter 95II Construction and Operation 95k202 Trade and Business 95II(A) General Rules of Construction 95k202(2) k. Restriction of Competi- 95k147 Intention of Parties tion. Most Cited Cases 95k147(1) k. In General. Most Cited Cases Corporations 101 308(3)
Contracts 95 154 101 Corporations 101X Officers and Agents 95 Contracts 101X(C) Rights, Duties, and Liabilities as to 95II Construction and Operation Corporation and Its Members 95II(A) General Rules of Construction 101k308 Compensation 95k151 Language of Instrument 101k308(3) k. Contracts or Resolu- 95k154 k. Reasonableness of Con- tions Providing Therefor. Most Cited Cases struction. Most Cited Cases Under Pennsylvania law, alleged constructive dis- In construing contract, intention of parties is para- charge of corporate president did not release him mount and court will adopt interpretation which un- from non-compete agreement; terms of agreement, der all circumstances ascribes most reasonable, allowing avoidance only for employer's failure to probable, and natural conduct of parties, bearing in cure breach after notice or upon termination “by mind objects manifestly to be accomplished. employer,” indicated parties' intent to foreclose sort of unintentional invalidation that could result from [5] Contracts 95 147(2) constructive discharge. 95 Contracts [8] Contracts 95 202(2) 95II Construction and Operation 95II(A) General Rules of Construction 95 Contracts 95k147 Intention of Parties 95II Construction and Operation 95k147(2) k. Language of Contract. 95II(C) Subject-Matter Most Cited Cases 95k202 Trade and Business If language appearing in written agreement is clear 95k202(2) k. Restriction of Competi- and unambiguous, parties' intent is to be discerned tion. Most Cited Cases solely from plain meaning of words used. Even if employer materially breached employment contract, breach did not excuse employee's failure
© 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. 222 F.3d 895 Page 3 222 F.3d 895, 141 Lab.Cas. P 59,055, 25 Employee Benefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048 (Cite as: 222 F.3d 895)
to comply with non-competition provision where thus employee who failed to comply was not re- employee failed to give employer contractually re- lieved of obligations under contract's non-compete quired notice and opportunity to cure breach. provision, absent showing that compliance would not have been useful to employer; employee failed [9] Contracts 95 202(2) to pursue available remedy for one breach, failed to give employer meaningful opportunity to cure an- 95 Contracts other, and failed to give employer time to prepare 95II Construction and Operation for his departure following third, allegedly uncur- 95II(C) Subject-Matter able breach. 95k202 Trade and Business 95k202(2) k. Restriction of Competi- [11] Trademarks 382T 1200(2) tion. Most Cited Cases 382T Trademarks Contracts 95 318 382TVI Nature, Extent, and Disposition of Rights 95 Contracts 382Tk1197 Transfer or Sale; Assignments 95V Performance or Breach 382Tk1200 Construction and Operation 95k318 k. Discharge of Contract by Breach. 382Tk1200(2) k. Duties, Rights, and Most Cited Cases Violations. Most Cited Cases (Formerly 255k9.5 Master and Servant) (Formerly 382k116 Trade Regulation) Notice that employee considered employer to be in Corporation, which acquired rights to acquired cor- breach of employment agreement, communicated poration's trade name at time of acquisition, did not orally, in writing and through circumstances, was subsequently lose those rights through criminal insufficient to satisfy contractual notice provision, conduct or breach of associated employment con- which required written notice to be sent in particu- tract, absent provision for such loss in asset pur- lar manner to particular location, and thus did not chase agreement. relieve employee of obligations under agreement's non-compete provision. [12] Trademarks 382T 1691
[10] Contracts 95 202(2) 382T Trademarks 382TIX Actions and Proceedings 95 Contracts 382TIX(E) Trial and Judgment 95II Construction and Operation 382Tk1682 Questions of Law or Fact 95II(C) Subject-Matter 382Tk1691 k. Similarity; Likelihood 95k202 Trade and Business of Confusion. Most Cited Cases 95k202(2) k. Restriction of Competi- (Formerly 382k704 Trade Regulation) tion. Most Cited Cases Although likelihood of confusion generally is ques- Contracts 95 318 tion of fact, in trademark infringement action, it may be decided as matter of law. 95 Contracts 95V Performance or Breach [13] Trademarks 382T 1081 95k318 k. Discharge of Contract by Breach. 382T Trademarks Most Cited Cases 382TIII Similarity Between Marks; Likelihood (Formerly 255k9.5 Master and Servant) of Confusion Compliance with employment contract's notice of 382Tk1081 k. Factors Considered in General. breach provision would not have been futile, and
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Most Cited Cases There was a likelihood of confusion between trade (Formerly 382k345.1, 382k340.1, 382k334.1 names “Hinely Aluminum, Inc.” and “Hinely In- Trade Regulation) dustries, Inc.”, and thus defendant's use of former Factors relevant to determination of whether there name infringed plaintiff's rights in latter one; names is likelihood of confusion, and hence trademark in- were similar, companies were in same business, and fringement, are: (1) strength of plaintiff's mark; (2) there was ample evidence of actual confusion. similarity between plaintiff's mark and allegedly in- *896 Richard N. Hubert,Chamberlain, Hrdlicka, fringing mark; (3) similarity between products and White, Williams & Martin, Atlanta, GA, for De- services offered by plaintiff and defendant; (4) sim- fendants-Counter-Claimants-Appellants. ilarity of sales methods; (5) similarity of advert- ising methods; (6) defendant's intent, e.g., does the James N. Boudreau, Morgan, Lewis & Bockius defendant hope to gain competitive advantage by LLP, Philadelphia, PA, for Alliance Metals, Inc., of associating his product with plaintiff's established Atlanta. mark; and (7) actual confusion. *897 Appeal from the United States District Court [14] Trademarks 382T 1086 for the Northern District of Georgia. 382T Trademarks FN* Before BIRCH, BARKETT and ALARCÓN , 382TIII Similarity Between Marks; Likelihood Circuit Judges. of Confusion 382Tk1083 Nature of Confusion 382Tk1086 k. Actual Confusion. Most FN* Honorable Arthur L. Alarcón, U.S. Cited Cases Circuit Judge for the Ninth Circuit, sitting (Formerly 382k350.1 Trade Regulation) by designation.
Trademarks 382T 1096 ALARCÓN, Circuit Judge: 382T Trademarks 382TIII Similarity Between Marks; Likelihood Robert F. Hinely, Jr., (“Hinely”) appeals from an of Confusion order of summary judgment in favor of his former 382Tk1093 Relationship Between Marks employer, Alliance Metals, Inc., of Atlanta 382Tk1096 k. Particular Marks, Similarity (“Alliance Atlanta”), in an action Alliance Atlanta or Confusion Involving. Most Cited Cases brought against Hinely for breach of his employ- (Formerly 382Tk1096(2), 382k350.1 Trade Reg- ment contract and trademark infringement. We ulation) have jurisdiction under 28 U.S.C. § 1291. We re- view the district court's grant of summary judgment Trademarks 382T 1103 de novo, applying the same standards used by the district court and viewing the facts in the light most 382T Trademarks favorable to the nonmoving party. See Jones v. Bill 382TIII Similarity Between Marks; Likelihood Heard Chevrolet, Inc., 212 F.3d 1356, 1360 (11th of Confusion Cir.2000). Because the district court did not err in 382Tk1100 Relationship Between Goods or concluding Hinely was obligated to comply with Services Underlying Marks the non-competition provision of his employment 382Tk1103 k. Particular Goods and Ser- contract or in finding no genuine issue of material vices, Relationship Between. Most Cited Cases fact as to whether Hinely had infringed Alliance (Formerly 382k350.1 Trade Regulation) Atlanta's right to the trade name Hinely Aluminum,
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Inc., we affirm. period ending two (2) years after the termination of his employment hereunder for any reason, he will not (either for himself directly or in the ser- I vice of or on behalf of any other person, firm, In March 1994, Alliance Atlanta, a wholly owned partnership, association, corporation or other subsidiary of Alliance Metals, Inc., acquired the as- business entity) ... [e]ngage in or render any ser- sets of Hinely's company, Hinely Aluminum, Inc., vices to, or be employed by, any business that for $500,000 in cash. Among the assets acquired competes in the Territory with the Business of were the Hinely Aluminum, Inc., trade name and the Employer, in the capacity of officer, manager “all goodwill relating to the Business as a going or executive employee, director, consultant or concern.” Pursuant to a contractual condition of the shareholder. acquisition, Alliance Atlanta and Hinely also *898 The employment contract provided that it entered into a five-year employment contract under would be “governed by, and construed and enforced which Hinely was to serve as Alliance Atlanta's in accordance with the laws of the Commonwealth president. In that position, Hinely reported directly of Pennsylvania.” Although non-competition cov- to Bradley Evans (“Evans”), chairman and sole enants are generally disfavored under Pennsylvania shareholder of both Alliance Atlanta and Alliance law, exceptions to this rule exist for covenants such Metals, Inc. as this one that protect the buyer of the goodwill of Under the terms of the employment contract, a business, see Piercing Pagoda, Inc. v. Hoffner, Hinely was to receive an annual salary of $138,500. 465 Pa. 500, 351 A.2d 207, 210 (1976), and the In addition, he was to receive a percentage of Alli- goodwill acquired through the efforts of an employ- ance Atlanta's net sales and net profits as incentive ee, see Sidco Paper Co. v. Aaron, 465 Pa. 586, 351 compensation. Under the terms of the employment A.2d 250, 252-53 (1976). contract, Hinely was entitled to review any inform- Hinely received no incentive compensation for the ation on which the calculation of his incentive com- 1994 fiscal year. According to Alliance Atlanta, pensation was based. The contract further provided Hinely was not entitled to any incentive compensa- that tion because the company sustained a net loss that any dispute about the calculation of Incentive Com- year. Hinely suspected Alliance Atlanta had manip- pensation ..., the amount due the Employee, or ulated its records to hide Alliance Atlanta's net any other matter described herein ... shall be profit and eliminate Hinely's incentive compensa- promptly referred to a “Big Six” accounting firm tion. Between February and May 1995, he re- that is mutually acceptable to the Employer and peatedly requested, through his attorney and ac- the Employee.... Such accounting firm shall be countant, information upon which the calculation of required to render a decision as to the appropri- his incentive compensation was based. Although ateness of the objections raised by the Employee Hinely asserts that Alliance Atlanta failed to com- within thirty (30) days after the submission of the ply fully with its contractual duty to provide such dispute, and any such decision shall be final and information, he never pursued arbitration as re- binding on both parties. quired by the employment contract.
[1] The employment contract also contained a non- On February 17, 1995, Hinely came to suspect the competition provision providing that formation of a price fixing agreement between Evans and Alliance Atlanta's primary competitor, the Employee hereby agrees with Employer that Wrisco Industries, Inc. On that day, Evans faxed while in the Employer's employ and through the Hinely a new price list with a cover note stating
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“[n]ew prices for March no exceptions let me know Atlanta had breached the employment contract and your feelings.” Evans later told Hinely that Wrisco constructively discharged him. Hinely alleged that Industries, Inc., was charging the same prices. he was constructively discharged because (1) Alli- ance Atlanta had engaged in price fixing; (2) Alli- On advice of his personal counsel, Hinely reported ance Atlanta denied him incentive compensation he his suspicions to the United States Department of was due for fiscal year 1994; (3) Alliance Atlanta Justice on February 27, 1995. The Department of would not supply him with information regarding Justice initiated an investigation of Evans and Alli- the calculation of his incentive compensation; (4) ance Metals, Inc., for violations of the Sherman Alliance Atlanta *899 relieved him of his duties at Act. Hinely continued to work at Alliance Atlanta the Texas office; and (5) Alliance Atlanta blamed and cooperated with the Department of Justice him for the company's legal troubles. throughout the investigation. On October 6, 1995, Hinely incorporated a compet- On August 14, 1995, John Webb, the executive vice ing enterprise offering similar products in the same president of Alliance Metals, Inc., hired Jack Bar- territory serviced by Alliance Atlanta. He called his ton to be the new sales manager of Alliance At- new venture Hinely Industries, Inc. lanta's Texas office. As sales manager, Barton was to oversee day-to-day operations of that office. On February 2, 1996, Alliance Atlanta filed this ac- tion, alleging breach of contract and trademark in- In an affidavit Hinely filed in opposition to Alli- fringement. On May 28, 1996, the district court ance Atlanta's motion for a preliminary injunction, granted Alliance Atlanta's motion for a preliminary Hinely alleged that he revealed he had been cooper- injunction prohibiting Hinely's new venture from ating with the Department of Justice at an August going forward under the name Hinely Industries, 25, 1995, meeting with Alliance Atlanta's lawyers. Inc. Hinely subsequently renamed his new company Robert & Sons Aluminum, Inc. On September 18, 1995, Webb told Hinely he no longer had responsibility for the operations of the On August 22, 1997, after extensive discovery, Al- Texas office. Webb told employees in the Texas of- liance Atlanta filed a motion for summary judgment fice that Hinely was the cause of the troubles Alli- on its breach of contract and trademark infringe- ance Atlanta was having with the Department of ment claims. On February 19, 1998, the district Justice. Hinely's salary and title were unaffected by court granted partial summary judgment in favor of what happened in the Texas office. Alliance Atlanta, finding Alliance Atlanta was en- titled to summary judgment on the claim that In a September 28, 1995, letter to all Alliance At- Hinely breached the non-competition provision of lanta employees, Evans admitted violating the Sher- his employment contract. The district court also man Act and stated that he and Alliance Metals, concluded there was no genuine issue of material Inc., were cooperating with the Department of fact as to Alliance Atlanta's ownership of rights to Justice. On September 29, 1995, the Department of the Hinely Aluminum, Inc., trade name or as to the Justice filed a criminal information charging Evans likelihood of confusion between that name and and Alliance Metals, Inc., with violations of Sher- Hinely Industries, Inc. man Act, 15 U.S.C. § 1. On September 22, 1998, the district court denied In a letter to Evans dated October 2, 1995, Hinely Hinely's motion for reconsideration. On July 23, stated that his own “employment with Alliance 1999, the parties stipulated to judgment on the re- Metals of Atlanta, Inc. is terminated effective im- maining issues, including the amount of damages. mediately.” He asserted in the letter that Alliance The district court entered a final judgment in favor
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of Alliance Atlanta for $291,633, on August 31, trade. A promise is in restraint of trade if its per- 1999. Hinely filed a timely notice of appeal on formance would limit competition in any busi- September 28, 1999. ness....”). The contract in issue here, however, had as its object the employment of Hinely as Alliance Atlanta's president, not price fixing. II Additionally, Hinely incorrectly assumes that, if A any term of his employment contract was unen- forceable, that would necessarily render the entire contract unenforceable.*900 See Restatement Hinely does not dispute that his actions were con- (Second) of Contracts Chapter 8, Topic 1 introduct- trary to the terms of the non-competition provision ory note (1979) (“Even where both parties make of his employment contract. Instead, he contends promises, the analysis usually begins with the ques- the district court erred in concluding he was oblig- tion of the enforceability of one promise or term of ated to comply with the non-competition provision. [the contract]. Sometimes the unenforceability of Hinely first argues that he was not obligated to that promise or term will result in the unenforceab- comply with the non-competition provision because ility of other promises and the denial of any relief Alliance Atlanta's price fixing rendered his entire to either party. The law, however, is not necessarily employment contract unenforceable as illegal and so severe.”); id. at § 178 (discussing “When a Term contrary to public policy. is Unenforceable on Grounds of Public Policy”). The “General Provisions” section of Hinely's em- [2][3] For a contract to be deemed unenforceable as ployment contract expressly provided for the sever- illegal or contrary to public policy, its purpose or ability of any “particular provision of [the contract] object must be contrary to a law or policy of the adjudicated to be invalid or unenforceable.” state. See In re Mohler's Estate, 343 Pa. 299, 22 A.2d 680, 682 (1941) (“[T]here is general consent Alliance Atlanta did not obtain a judgment against that contracts entered into for the purpose of re- Hinely for breach of contract based on a refusal or warding criminal acts or effectuating some illegal failure by him to perform illegal acts in fulfillment object are void and the courts strike such contracts of his contractual duties as president. Rather, the down.”); see also Zlotziver v. Zlotziver, 355 Pa. district court entered judgment for Alliance Atlanta 299, 49 A.2d 779, 781 (1946) (“[A] contract is il- based on Hinely's failure to comply with the non- legal if it has for its object the procurement of a di- competition provision. Hinely does not challenge vorce, as where the husband or the wife agrees to on appeal the district court's conclusion that the institute, or not to defend, a suit for that purpose.”). non-competition provision was enforceable. An agreement between Alliance Metals, Inc., and Hinely's argument that Alliance Atlanta's price fix- Wrisco Industries, Inc., to fix prices, for example, ing rendered the non-competition provision unen- would be an unenforceable contract. See Ford Mo- forceable as illegal and contrary to public policy tor Co. v. Sweeten Auto. Co., 318 Pa. 177, 178 A. therefore fails. 48, 50 (1935) (“ ‘A bargain not to bid at an auction, or any public competition for a sale or contract, having as its primary object to stifle competition, is B illegal.’ ”) (quoting Restatement (First) of Con- Hinely next argues that the non-competition provi- tracts § 517 (1932)) (emphasis added); see alsoRe- sion was null and void by its own terms. In support statement (Second) of Contracts § 186(1) & (2) of this argument, he points to the passage within the (1979) (“A promise is unenforceable on grounds of non-competition provision providing that it public policy if it is unreasonably in restraint of
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shall be null and void in the event Employee is ter- discharge may constitute a breach of an employ- minated by Employer without cause or if the Em- ment contract permitting termination only for ployer materially breaches the terms of this cause. See, e.g., Tennyson v. School Dist., 232 agreement and fails to cure any such material Wis.2d 267, 606 N.W.2d 594, 602 (1999) ( “Where, breach within thirty (30) days after notice from as here, an employer's written policy guarantees its the Employee specifying the breach and requiring employees that they will not be discharged without it to be cured. cause, a constructive discharge without cause con- stitutes a breach of contract.”); Turner v. Anheuser- Hinely contends that the non-competition provision Busch, Inc., 7 Cal.4th 1238, 32 Cal.Rptr.2d 223, was null and void because (1) he was constructively 876 P.2d 1022, 1030 (Cal.1994) (“An employee discharged from Alliance Atlanta; and (2) Alliance *901 may prove ... that a constructive discharge is a Atlanta materially breached the employment con- breach of an express or implied contract of employ- tract. ment.”); Hammond v. Katy Indep. Sch. Dist., 821 S.W.2d 174, 177 (Tex.App.1991). 1 [4][5][6] To determine the effect of a constructive Hinely maintains that he was constructively dis- discharge on the rights and duties of the parties in charged and that the constructive discharge this case, we must look to the contract in issue. See rendered the non-competition provision null and Warehime v. Warehime, 722 A.2d 1060, 1072 void by its own terms as a “terminat[ion] by Em- (Pa.Super.1998) ( “When the parties to an agree- ployer without cause.” In rejecting Hinely's con- ment have chosen to address a particular aspect of structive discharge defense, the district court found their legal relationship by contract, it is the terms of that Hinely failed to meet his burden of the agreement, as manifestly expressed, that is to “produc[ing] evidence from which a reasonable determine the rights and liabilities of the parties.”); finder of fact could conclude that his working con- see also Turner, 32 Cal.Rptr.2d 223, 876 P.2d at ditions were so intolerable that a reasonable person 1030 (“Standing alone, constructive discharge is in his position would be compelled to resign.” See neither a tort nor a breach of contract, but a doc- Highhouse v. Avery Transp., 443 Pa.Super. 120, trine that transforms what is ostensibly a resigna- 660 A.2d 1374, 1376 (1995); see also Graham v. tion into a firing. Even after establishing construct- State Farm Mut. Ins. Co., 193 F.3d 1274, 1284 ive discharge, an employee must independently (11th Cir.1999). The district court did not reach the prove a breach of contract or tort....”). “ ‘In con- question whether a constructive discharge consti- struing a contract, the intention of the parties is tuted a “terminat[ion] by Employer without cause.” paramount and the court will adopt an interpretation We may, however, affirm the grant of summary which under all circumstances ascribes the most judgment on any ground fairly supported by the re- reasonable, probable, and natural conduct of the cord. See Rozar v. Mullis, 85 F.3d 556, 564 (11th parties, bearing in mind the objects manifestly to be Cir.1996). Interpretation of a contract poses a ques- accomplished.’ ” Charles D. Stein Revocable Trust, tion of law. See Charles D. Stein Revocable Trust v. 749 A.2d at 980 (quoting Village Beer & Beverage, General Felt Indus., Inc., 749 A.2d 978, 980 Inc. v. Vernon D. Cox & Co., Inc., 327 Pa.Super. (Pa.Super.2000). 99, 475 A.2d 117, 121 (1984)). If the language ap- pearing in the written agreement is clear and unam- Pennsylvania courts have neither permitted nor pro- biguous, the parties' intent is to be discerned solely hibited predicating breach of an employment con- from the plain meaning of the words used. See id. “ tract on a constructive discharge. Courts in other ‘[W]ritings which comprise an agreement must be states, however, have recognized that a constructive interpreted as a whole.’ ” Id. (quoting Village Beer,
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475 A.2d at 121). termination of his employment with the Em- ployer, for the purpose of acquiring or obtain- The non-competition provision of the employment ing the fabrication, distribution or sale of alu- contract reads as follows: minum or other metal products from any busi- ness other than Employer; 10. Non-Competition. (2) Solicit, divert or hire away, or attempt to solicit, A. The Employee hereby acknowledges the follow- divert or hire away, any person (other than his ing: sons) then *902 employed by the Employer (or (1) That, as a shareholder of Hinely Aluminum, employed at any time by the Employer in the Inc., he has received substantial benefit from two years prior to the termination of Employ- the purchase by Employer of substantially all ee's employment); of the assets of Hinely Aluminum, Inc. pursu- (3) Engage in, or render any services to, or be em- ant to the Asset Purchase Agreement; ployed by, any business that competes in the (2) That Employee's position with Employer places Territory with the Business of the Employer, in him in a position of confidence and trust with the capacity of officer, manager or executive the customers and Employees of Employer and employee, director, consultant or shareholder; allows him access to “confidential or propriet- (4) Invest in, loan money to, or guarantee all or any ary information” (as defined in paragraph 11 part of the obligations of, any person, firm, hereof) of the Employer; partnership, association, corporation or other (3) That the type and periods of restrictions im- business that competes in the Territory with the posed by the covenants in this Section 10 are Business of the Employer.... fair and reasonable and such restrictions will (D) Paragraph 10(B) above shall be null and void not prevent Employee from earning a liveli- in the event Employee is terminated by Employer hood; and without cause or if the Employer materially (4) That the business of the Employer is, in general, breaches the terms of this agreement and fails to a highly competitive business. cure any such material breach within thirty (30) days after notice from the Employee specifying B. Having acknowledged the foregoing matters in the breach and requiring it to be cured. Section 10A above, the Employee hereby agrees with Employer that while in the Employer's em- (emphasis added). ploy and through the period ending two (2) years [7] The language of the non-competition provision after the termination of his employment hereun- demonstrates that Alliance Atlanta bargained for a der for any reason, he will not (either for himself commitment from Hinely that he would not start, directly or in the service of or on behalf of any participate in, or assist any competitive enterprise other person, firm, partnership, association, cor- for two years after his departure from Alliance At- poration or other business entity): lanta. The sweeping nature of this provision, in- (1) Solicit, contact, call upon, communicate with or cluding the fact that Hinely was obligated under attempt to communicate with any customer (or paragraph 10(B) regardless of the reason for his prospective customer) of the Employer with termination, demonstrates that Alliance Atlanta bar- whom Employee has had any contact during gained for assurance that Hinely would not leave the two-year period immediately preceding the Alliance Atlanta and appropriate for himself the
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business he had helped Alliance Atlanta build. We conclude that the language “terminat[ion] by Employer without cause” manifests the intent to The express terms of the two narrow “escape foreclose the sort of unintentional invalidation of clauses” included in paragraph 10(D) indicate that the non-competition provision that could result Alliance Atlanta intended to foreclose the possibil- from a constructive discharge. See EEOC v. Massey ity that it might inadvertently forfeit the bargained- Yardley Chrysler Plymouth, Inc., 117 F.3d 1244, for protection of the non-competition provision. 1250-51 (11th Cir.1997) (noting that a showing of One of the two escape clauses provided that the employer willfulness is not required to establish a non-competition provision would become null and constructive discharge); see also *903Pittman v. void if, after thirty days notice to Alliance Atlanta Hattiesburg Mun. Separate Sch. Dist., 644 F.2d and its lawyer, Alliance Atlanta failed to cure a ma- 1071, 1077 (5th Cir.1981) (stating that, to establish terial breach of the employment contract. The in- a constructive discharge, an employee does not clusion of the thirty-day notice requirement mani- need to prove that an employer subjectively inten- fests an intent to foreclose inadvertent invalidation ded to force the employee to resign); Bourque v. of the non-competition provision by an unrecog- Powell Elec. Mfg. Co., 617 F.2d 61, 65 (5th nized material breach. Cir.1980) (noting that the conditions endured, rather than the employer's state of mind, are relev- A “terminat[ion] by Employer without cause” was ant to the constructive discharge inquiry). We the second escape clause the parties included in therefore hold that an alleged constructive dis- paragraph 10(D). We think it significant that the charge would not constitute a “terminat [ion] by parties inserted the language “by Employer” here Employer without cause” so as to render null and instead of using a more common and generic phras- void the non-competition provision of the employ- ing like “termination without cause” or ment contract. “termination for other than cause.” The latter phras- ing was used elsewhere in the employment contract FN1 itself. A “terminat[ion] by Employer without 2 cause,” as opposed to a “termination without cause” or “termination for other than cause,” contemplates Hinely next contends that he was not obligated to a conscious choice by Alliance Atlanta to terminate comply with the non-competition provision because Hinely without cause in order to free him from his Alliance Atlanta materially breached the employ- contractual duty not to compete. ment contract by engaging in illegal price fixing, by depriving Hinely of his supervisory responsibility FN1. Paragraph 9(C) of the employment for the Texas office, and by failing to account fully contract provided: for denying Hinely incentive compensation. In en- tering summary judgment for Alliance Atlanta on C. Payments in the Event of Termination its breach of contract claim, the district court con- for Other than Cause. cluded that, even if Alliance Atlanta had materially breached the employment contract, the breach did If the Employee is terminated for reason not excuse Hinely's failure to comply with the non- other than cause, compensation pay- competition provision because Hinely failed to give ments shall continue for the remainder of Alliance Atlanta the requisite notice and opportun- the five (5) year Employment Period on ity to cure the breach. the same basis as established in para- graph 4 hereof, including Base Salary, Incentive and Additional Incentive Com- i pensation.
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[8] Hinely argues that Alliance Atlanta breached he would no longer have supervisory responsibility the employment contract before he did and that the for the Texas office, he orally informed Webb that company's antecedent breach excused him from any he considered it a breach of his employment con- further performance under the contract, including tract. adherence to the non-competition provision. If we were to so hold, we would effectively render mean- “When parties define the terms used in a contract, ingless contractual “notice and cure” requirements those definitions govern the construction of the like the one included in the non-competition provi- contract.” See *904Eannarino v. Eannarino, 294 sion here. Hinely cites no Pennsylvania authority to Pa.Super. 81, 439 A.2d 760, 761 (1982); see also support the adoption of such a rule, and we decline Colony Square Co., 843 F.2d at 481 (“Contracts to do so. See Bethlehem Steel Corp. v. MATX, Inc., which set forth the manner in which a party must 703 A.2d 39, 42 (Pa.Super.1997) (“A court may not exercise a remedy in the event of a default must be disregard a provision in a contract if a reasonable strictly adhered to.... Accordingly, when a default meaning may be ascertained therefrom. In constru- clause contains a notice provision, it must be ing a contract, each and every part of it must be strictly followed ....”) (citations omitted). Here, the taken into consideration and given effect, if pos- “General Provisions” section of the employment sible ....”) (alterations, quotations, and citation contract included the following definition of the omitted); see also In re Colony Square Co., 843 term “notice:” F.2d 479, 481 (11th Cir.1988) (rejecting a litigant's All notices, requests, and other communications to claim of breach because that litigant failed to com- any party shall be in writing and sufficient if de- ply with a contractual “notice and cure” provision) livered personally, sent by registered or certified (citing Orkin Exterminating Co. v. Stevens, 130 mail, postage prepaid, return receipt requested, or Ga.App. 363, 203 S.E.2d 587, 593 (1973) (“The by nationally recognized overnight courier ser- failure to give notice as required ... is an independ- vice, addressed as follows: ent bar to the maintenance of a successful cause of action on the contract.”)). If to the Employer, at: Alliance Metals, Inc. of At- lanta [address omitted] ii With a copy to: C. Barry Buckley, Esquire [address [9] In Hinely's brief filed in opposition to Alliance omitted] Atlanta's motion for summary judgment, he con- Hinely failed to demonstrate that he sent written ceded that he “did not inform Alliance Atlanta of notice to Alliance Atlanta and Buckley specifying a their breach prior to October 2nd.” On appeal, material breach and requiring it to be cured. The however, Hinely argues that he “effectively” gave May 31, 1995, letter was addressed and sent only to Alliance Atlanta notice of the alleged material Buckley and not to Alliance Atlanta. That letter breaches well before he left Alliance Atlanta and read: started his competing venture. In support of this ar- gument, Hinely contends (1) that Alliance Atlanta Pursuant to paragraph (5)(b) of the Employment was aware of the price fixing investigation and his Agreement between Alliance Metals and Robert role in prompting it; (2) that a May 31, 1995, letter F. Hinely, Jr., Alliance is to provide Robert from Hinely's lawyer to Alliance Atlanta's lawyer Hinely with copies of all information and materi- notified them that the company was not in compli- als he requires to complete his review of Alli- ance with the employment contract because it failed ance's calculation of Incentive Compensation. to provide information relating to the denial of in- Robert's accountant, Barry Franklin, has yet to centive compensation; and (3) that, on learning that
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receive any response to his February 9, 1995, re- ance Atlanta failed to notify Hinely that it quest for information from Mr. Gerald G. Storch, planned to cure the breach by reinstating his Alliance's accountant, in connection with Texas responsibilities. Consequently, with regard Robert's review of the calculation of Incentive to both breaches, Alliance Atlanta's opportunity Compensation. Additionally, I have not received to cure was either not utilized by Alliance Atlanta any response to my phone calls and letters to you or no logical cure was available. regarding this matter. *905 (emphasis added). In his unsuccessful motion I would greatly appreciate it if you would favor me for reconsideration, Hinely asserted that “any no- with a response as to the status of this matter as tice [he] could have given to [Alliance Atlanta] soon as possible. would have been futile.” Although the district court never squarely addressed Hinely's futility argument, Even if the letter had been sent to Alliance Atlanta we decline to deem it waived. See Damiano v. FD- in addition to Buckley, it stops short of “specifying IC, 104 F.3d 328, 332-33 n. 6 (11th Cir.1997) the breach and requiring it to be cured” as is neces- (noting that waiver doctrine is a rule of practice the sary under the notice requirement of the non- application of which is a matter of appellate court competition provision. We conclude that Hinely discretion). failed to demonstrate that he gave notice of any of the alleged breaches sufficient to satisfy the re- The futility doctrine flows out of the principle that quirement of notice as that term is defined in the “the law does not require the performance of vain employment contract. or useless things.” Fishel v. Yorktowne Mut. Ins. Co., 254 Pa.Super. 136, 385 A.2d 562, 565 (1978) (quoting Forester v. Teutonia Fire Ins. Co., 60 iii Pa.Super. 151 (1915)); see also Wolff & Munier, Hinely next argues that notice would have been fu- Inc. v. Whiting-Turner Contracting Co., 946 F.2d tile and that he was therefore excused from comply- 1003, 1009 (2d Cir.1991) (noting that a party to a ing with the notice requirement of the non- contract may be excused from complying with a no- competition provision. Alliance Atlanta contends tice requirement if notice would be a “useless ges- that Hinely did not raise the defense of futility be- ture”) (citing, among others, Craddock v. Greenhut fore the district court and that this court should Constr. Co., Inc., 423 F.2d 111, 115 (5th therefore decline to consider this defense. Cir.1970)). On summary judgment, Hinely bore the burden of introducing evidence to support a reason- Hinely's brief in opposition to the motion for sum- able finding that giving notice of the alleged mary judgment included the following argument: breaches would have been useless. See Gey v. Beck, 390 Pa.Super. 317, 568 A.2d 672, 680 (1990) (in a Alliance Atlanta argues that Hinely did not give Al- different context, stating that the party asserting fu- liance Atlanta an opportunity to cure their tility bears the burden of proving it); Beattie v. breach.... Even if Hinely was required to give Al- Commonwealth Unemployment Compensation Bd. liance Atlanta an opportunity to cure its breach, of Review, 92 Pa.Cmwlth. 324, 500 A.2d 496, 499 the damage resulting from the price-fixing had (1985) (same); see also General American Life Ins. already occurred, making the breach Co. v. AmSouth Bank, 100 F.3d 893, 901 (11th “incurable” because damages could not have Cir.1996) (noting that a litigant asserting a defense been mitigated at that point. Regarding the in opposition to summary judgment bears the bur- breach resulting from the reduction of Hinely's den of presenting evidence sufficient to establish employment duties, after Hinely sent his October that defense). The parties to this appeal agree that 2nd [resignation] letter to Alliance Atlanta, Alli-
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the futility of giving notice is an issue of fact. Both fixing conspiracy, there was no going back. parties, however, urge this court to decide the issue Hinely's allegation would support a reasonable con- as a matter of law in their respective favor. clusion that giving notice *906 would have been useless to Hinely. It would not, however, support [10] In his brief filed in opposition to the motion the conclusion that receiving notice would have for summary judgment and in his motion for recon- been useless to Alliance Atlanta. Cf. L.K. Comstock sideration, Hinely failed to point to any evidence, & Co. v. United Eng'rs & Constructors, Inc., 880 or even argue, that notice would have been futile F.2d 219, 232 (9th Cir.1989) (excusing contractor's with respect to Alliance Atlanta's alleged failure to failure to comply with a 48-hour “notice and cure” account fully for denying him any incentive com- provision before terminating subcontract because pensation. Indeed, it was undisputed in the record “for [the contractor] to give 48-hour notice would before the district court that, when Hinely left Alli- have been a useless gesture in terms of any benefits ance Atlanta on October 2, 1995, he had not sought to [the subcontractor ]”) (emphasis added). arbitration of his grievance as required by the in- centive compensation provision of the employment Here, even if the alleged breach proved to be incur- contract. We conclude that Hinely failed to meet his able, the bargained-for requirement of notice the burden of demonstrating that notice with respect to parties included in the non-competition provision this alleged breach would have been useless. served to prevent inadvertent invalidation of that provision by an unrecognized material breach. At a With regard to the futility of notifying Alliance At- minimum, receiving notice would have given Alli- lanta that he deemed the deprivation of his super- ance Atlanta thirty days to brace itself for Hinely's visory responsibility for the Texas office a material transition from compatriot to competitor. Depend- breach, Hinely asserted in his opposition brief that ing on how early in the progression of events “after [he] sent his October 2nd letter to Alliance Hinely had given notice to Alliance Atlanta and its Atlanta, Alliance Atlanta failed to notify Hinely lawyer, receiving notice may even have induced Al- that it planned to cure the breach by reinstating his liance Atlanta to abandon the price fixing conspir- Texas responsibilities.” The mere fact that Alliance acy and minimize its exposure to criminal penalties Atlanta did not attempt to cure the deprivation of and related consequences. responsibility after Hinely had already left the com- pany does not support a reasonable conclusion that That Alliance Atlanta could have benefitted from Alliance Atlanta could not or would not have cured notice alone distinguishes this case from many this alleged breach had it been formally confronted cases in which courts have excused a party's failure with the threat of liberating Hinely from his obliga- to comply with a “notice and cure” provision on the tions under the non-competition provision. ground of futility. In those cases, the party seeking Moreover, the loss of supervisory responsibility of to enforce the provision typically disavowed any which Hinely complains appears, on its face, to be further performance under the contract prior to the reversible and therefore curable. We conclude that time the other party should have given notice. See, Hinely failed to meet his burden of demonstrating e.g., Wolff & Munier, Inc., 946 F.2d at 1009 that notice with respect to this alleged breach would (affirming the district court's finding that “strict ad- have been useless. herence to the ... two-day cure provision would have been a ‘useless act’ in the face of the Finally, with regard to the futility of notifying Alli- [breaching party's] abandonment of the job and its ance Atlanta that he deemed the company's price unjustified ultimatums”); Solitron Devices, Inc. v. fixing a material breach, Hinely relies solely on the Honeywell, Inc., 842 F.2d 274, 278 (11th Cir.1988) character of the alleged breach itself. He asserts (“By letter ... Solitron itself expressly repudiated that, once Alliance Atlanta entered into the price
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the subcontract. Once Solitron had itself terminated Hinely's argument rests on the theory that the asset the contract, a cure notice from Honeywell would purchase contract and the employment contract have served no purpose.”); United States v. Digital were part of one transaction, and that the breaches Prods. Corp., 624 F.2d 690, 694 (5th Cir.1980) of the employment contract he alleges therefore (where one party sent a telegram stating that it also constituted breaches of the asset purchase con- “hereby terminates all efforts on subject contract,” tract. Hinely further contends that perpetration of holding that the other party was not obligated to criminal conduct under the name of Hinely Alumin- follow the contractual requirement of notice and a um, Inc., was a direct breach of the asset purchase ten-day curative period). In such circumstances, no- contract. tice of the breach would be useless to the breacher, whose own conduct renders notice a redundant, If a contract involves clear and unambiguous terms, empty formality. we “need only examine the writing itself to give ef- fect to the parties' understanding.” Harrity v. Med- Hinely failed to meet his burden of demonstrating ical College of Pennsylvania Hosp., 439 Pa.Super. that notifying Alliance Atlanta that he considered 10, 653 A.2d 5, 10 (1994). The asset purchase con- the company's price fixing a material breach would tract provided, in pertinent part: have been useless to Alliance Atlanta. The district court therefore did not err in failing to find a genu- 1.1 Purchase and Sale. ine issue of material fact as to whether he was ex- (a) The Seller shall sell, convey, transfer and assign cused from complying with the notice requirement to the Purchaser, and the Purchaser shall pur- of the non-competition provision. chase from the Seller, on the Closing Date (as defined below), the Acquired Assets. III “Acquired Assets” shall mean all of the follow- ing real property, personal property assets Hinely argues that the district court erred in con- (tangible or intangible), and rights of the Seller cluding Alliance Atlanta was entitled to summary used or held in connection with the Business ... judgment on its claim of trademark infringement. To prevail on this claim, Alliance Atlanta had to es- (i) all Seller's trade names, trademarks and service tablish (1) that it had a right to the trade name at is- marks. sue, Hinely Aluminum, Inc.; and (2) that the trade name Hinely adopted, Hinely Industries, Inc., was .... confusingly similar to that trade name, such that 1.4 Closing. Hinely's use of the name created a likelihood of confusion among consumers as to the origin of The closing (the “Closing”) for the consummation goods sold. See Conagra, Inc. v. Singleton, 743 of the transactions contemplated by this Agree- F.2d 1508, 1512 (11th Cir.1984). ment shall take place ... at 10:00a.m. (east coast time) on March 22, 1994 or such other date and A time agreed to by the Seller and the Pur- chaser.... [11] It is undisputed that Alliance Atlanta acquired the rights to the Hinely Aluminum, Inc., trade name 1.5 Instruments of Conveyance and Transfer. when it acquired the assets of Hinely Aluminum, At the Closing, the Seller shall deliver to the Pur- Inc., on March 22, 1994. Hinely argues, however, chaser such bills of sale, endorsements, assign- that Alliance Atlanta lost its *907 rights to the ments and other instruments of transfer, con- name when it breached the employment contract.
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veyance and assignment ... as shall be neces- directed billing invoices). sary to transfer, convey and assign the Ac- quired Assets to the Purchaser. *908 [14] The district court did not err in finding that the evidence before it compelled the conclusion Under the terms of the asset purchase contract, Al- that there was a likelihood of confusion between liance Atlanta fulfilled its contractual duties relat- the trade names Hinely Aluminum, Inc., and Hinely ing to the acquisition of the trade name Hinely Alu- Industries, Inc. There was no dispute that the two minum, Inc., at the closing that took place on marks are similar. It was also undisputed that both March 22, 1994. Once Hinely sold the name to Al- companies distribute prefinished aluminum sheets liance Atlanta, the company was free to use the and sign blanks in the same territory. Most import- name in any manner it deemed fit. The district court antly, there was ample undisputed evidence before did not err in finding there was no genuine issue of the district court of actual confusion. material fact as to Alliance Atlanta's rights to the trade name Hinely Aluminum, Inc. Melissa Hough, Alliance Atlanta's controller, al- leged in an affidavit that Alliance Atlanta received many payments from its former customers for B goods those customers bought from Hinely Indus- tries, Inc. Filed in support of Hough's affidavit were [12] Hinely also argues that the district court erred copies of more than a dozen checks Alliance At- in deciding likelihood of confusion as a matter of lanta received for goods sold by Hinely Industries, law. In support of this argument, he first contends Inc., that were made payable to “Hinely Alumin- that likelihood of confusion is a jury question. Al- um.” One such check was made payable to “Hinely though likelihood of confusion generally is a ques- Aluminum Industries Inc.” tion of fact, it may be decided as a matter of law. See Conagra, 743 F.2d at 1514-15. Indeed, this In her affidavit, Hough also alleged that Alliance court has decided likelihood of confusion as a mat- Atlanta received invoices from vendors and credit- ter of law in the first instance. See id. at 1514. ors billing “Hinely Aluminum” for goods and ser- vices purchased by Hinely Industries, Inc. She at- [13] The following factors are relevant in determin- tached copies of seven such invoices. She also al- ing whether there is a likelihood of confusion: (1) leged that vendors delivered goods ordered by Alli- the strength of the plaintiff's mark; (2) the similar- ance Atlanta to Hinely Industries, Inc., and vice ity between the plaintiff's mark and the allegedly versa. Additionally, Alliance Atlanta introduced the infringing mark; (3) the similarity between the deposition testimony of aluminum buyers that products and services offered by the plaintiff and demonstrated confusion. For example, when asked defendant; (4) the similarity of the sales methods; in a deposition whether he was “confused as to the (5) the similarity of advertising methods; (6) the de- difference between Hinely Industries and Hinely fendant's intent, e.g., does the defendant hope to Aluminum and Alliance Metals, Inc. of Atlanta,” gain competitive advantage by associating his aluminum buyer Robert Goldstucker replied, product with the plaintiff's established mark; and “[e]xtremely.” (7) actual confusion. See Conagra, 743 F.2d at 1514. The most persuasive evidence in assessing Hinely argues that, in finding likelihood of confu- the likelihood of confusion is proof of actual confu- sion as a matter of law, the district court failed to sion. See id. at 1514-15 (finding likelihood of con- consider his explanation for the evidence of confu- fusion as a matter of law based on evidence of mis- sion. He alleges that Alliance Atlanta received mail directed inquiries from distributors, suppliers, pro- intended for Hinely Industries, Inc., because of a spective employees and customers, as well as mis- forwarding order Alliance Atlanta placed with the
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United States Postal Service after the company's Ju- ly 1995 relocation. This factual allegation does not raise a genuine issue of material fact when placed beside the extensive evidence of confusion intro- duced by Alliance Atlanta.
The numerous checks and invoices Alliance Atlanta received that were intended for Hinely Industries, Inc., were not simply misrouted; they referred to the wrong company, “Hinely Aluminum,” by name. Furthermore, the misdirected deliveries Hough de- scribed came directly from vendors, not the United States Postal Service. Lastly, the forwarding order could not explain testimony of customers like Gold- stucker reporting confusion as to the difference between Hinely Industries, Inc., and Hinely Alu- minum, Inc. The district court did not err in finding as a matter of law that there was a likelihood of confusion between Hinely Industries, Inc., and Hinely Aluminum, Inc.
IV
Hinely found himself in an unenviable position when he came to suspect his employer of unlawful anticompetitive activity. His decision to report his suspicions to the Department of Justice is to be commended. Neither the righteousness of that ac- tion nor the wrongfulness of Evans's and Alliance Metals, Inc.'s conduct, however, excuses Hinely's formation of a competing enterprise that violated both the non-competition provision of his employ- ment contract and Alliance Atlanta's trademark rights. The judgment of the district court is
AFFIRMED.
C.A.11 (Fla.),2000. Alliance Metals, Inc., of Atlanta v. Hinely Indus- tries, Inc. 222 F.3d 895, 141 Lab.Cas. P 59,055, 25 Employee Benefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048
END OF DOCUMENT
© 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works. Westlaw Delivery Summary Report for PATRICK,BRADFORD
Date/Time of Request: Monday, July 6, 2009 12:01 Central Client Identifier: OSHNA Database: FSFIND Citation Text: 731 F.Supp. 480 Lines: 657 Documents: 1 Images: 0
The material accompanying this summary is subject to copyright. Usage is governed by contract with Thomson Reuters, West and their affiliates. 731 F.Supp. 480 Page 1 731 F.Supp. 480, 15 U.S.P.Q.2d 1873 (Cite as: 731 F.Supp. 480)
bitrary trade name which first company had previously used and under which it had built up good reputation for United States District Court, over 50 years. Lanham Trade-Mark Act, § 43(a), as S.D. Florida. amended, 15 U.S.C.A. § 1125(a).
AMERICAN UNITED LIFE INSURANCE COM- [2] Trademarks 382T 1420 PANY, an Indiana corporation, Plaintiff, v. 382T Trademarks AMERICAN UNITED INSURANCE COMPANY, a 382TVIII Violations of Rights Florida corporation, Defendant. 382TVIII(A) In General No. 89-6191-Civ. 382Tk1418 Practices or Conduct Prohibited in General; Elements Feb. 8, 1990. 382Tk1420 k. Unfair Competition. Most Cited Cases Life and health insurance company sued to enjoin auto- (Formerly 382k641) mobile insurer's alleged unfair competition, trade name To prevail on claim for injunctive relief under unfair infringement, and dilution of its trade name. The Dis- competition provisions of Lanham Trade-Mark Act, trict Court, James Lawrence King, Chief Judge, held plaintiff must demonstrate that it is prior owner of trade that: (1) plaintiff was entitled to injunctive relief under name or service mark, and that defendant has adopted unfair competition provisions of Lanham Trade-Mark the same or a confusingly similar trade name or service Act; (2) plaintiff was not guilty of any laches, such as mark, thereby creating a likelihood of customer confu- would prevent it from suing to enjoin defendant's in- sion as to proper origin of goods or services, such that fringing activities; and (3) defendant was liable for over customer is likely to believe that defendant's goods or $95,000 in attorney fees and over $10,000 in costs services are being sold with consent or authorization of based on its failure to make even the slightest inquiry plaintiff, or that defendant is affiliated with or connec- regarding plaintiff's prior use of name. ted to plaintiff. Lanham Trade-Mark Act, § 43(a), as So ordered. amended, 15 U.S.C.A. § 1125(a).
West Headnotes [3] Trademarks 382T 1714(3)
[1] Trademarks 382T 1714(3) 382T Trademarks 382TIX Actions and Proceedings 382T Trademarks 382TIX(F) Injunctions 382TIX Actions and Proceedings 382Tk1712 Permanent Injunctions 382TIX(F) Injunctions 382Tk1714 Grounds and Subjects of Relief 382Tk1712 Permanent Injunctions 382Tk1714(3) k. Unfair Competition. 382Tk1714 Grounds and Subjects of Relief Most Cited Cases 382Tk1714(3) k. Unfair Competition. (Formerly 382k646) Most Cited Cases Life and health insurance company was entitled to in- (Formerly 382k646) junction, on common-law unfair competition theory, to Life and health insurance company was entitled to in- prevent automobile insurance company from using de- junctive relief under the unfair competition provisions ceptively similar, arbitrary trade name which first com- of the Lanham Trade-Mark Act to prevent automobile pany had previously used and under which it had built insurance company from using deceptively similar, ar- up good reputation for over 50 years.
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[4] Trademarks 382T 1421 382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of Relief 382T Trademarks 382Tk1714(4) k. Dilution. Most Cited 382TVIII Violations of Rights Cases 382TVIII(A) In General (Formerly 382k647) 382Tk1418 Practices or Conduct Prohibited in Life and health insurance company was entitled to in- General; Elements junction under Florida's antidilution statute to prevent 382Tk1421 k. Infringement. Most Cited automobile insurance company from using deceptively Cases similar, arbitrary trade name which first company had (Formerly 382k462) previously used and under which it had built up good Elements which plaintiff must prove to prevail on com- reputation for over 50 years. West's F.S.A. § 495.151. mon-law unfair competition claim based on trade name or service mark infringement are: that plaintiff is prior [7] Trademarks 382T 1461 user of trade name or service mark; that trade name or service mark is arbitrary or suggestive or has acquired 382T Trademarks secondary meaning; that defendant is using confusingly 382TVIII Violations of Rights similar trade name or service mark to indicate or identi- 382TVIII(B) Dilution fy some of the products or services in same trade area in 382Tk1461 k. Nature and Extent of Harm; which plaintiff has already established its trade name or Similarity, Competition, and Confusion. Most Cited service mark; and that consumer confusion is likely to Cases result from defendant's action or threatened action. Lan- (Formerly 382k462) ham Trade-Mark Act, § 43(a), as amended, 15 U.S.C.A. Neither competition nor confusion is required in order § 1125(a). to state claim for dilution of trade name or service mark pursuant to Florida statute. West's F.S.A. § 495.151. [5] Trademarks 382T 1421 [8] Trademarks 382T 1715(1) 382T Trademarks 382TVIII Violations of Rights 382T Trademarks 382TVIII(A) In General 382TIX Actions and Proceedings 382Tk1418 Practices or Conduct Prohibited in 382TIX(F) Injunctions General; Elements 382Tk1712 Permanent Injunctions 382Tk1421 k. Infringement. Most Cited 382Tk1715 Defenses or Objections Cases 382Tk1715(1) k. In General. Most Cited (Formerly 382k332) Cases Elements required to prevail on claim of common-law (Formerly 382k642.1, 382k642) trade name and service mark infringement are the same Trade name holder was not guilty of any laches, such as as those required to prevail under unfair competition might prevent it from suing to enjoin defendant's use of provisions of Lanham Trade-Mark Act or under a claim deceptively similar trade name, where trade name hold- for common-law unfair competition. Lanham Trade- er made demand on defendant to cease its infringing Mark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a). acts immediately after it learned thereof and waited to bring suit only in order to give defendant chance to vol- [6] Trademarks 382T 1714(4) untarily comply with its demands.
382T Trademarks [9] Trademarks 382T 1715(1) 382TIX Actions and Proceedings 382TIX(F) Injunctions 382T Trademarks
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382TIX Actions and Proceedings FINDINGS OF FACT, CONCLUSIONS OF LAW, 382TIX(F) Injunctions AND FINAL JUDGMENT 382Tk1712 Permanent Injunctions 382Tk1715 Defenses or Objections JAMES LAWRENCE KING, Chief Judge. 382Tk1715(1) k. In General. Most Cited This cause was tried from November 28, 1989, through Cases December 1, 1989, before this court sitting without a (Formerly 382k642.1, 382k642) jury. The court has heard and considered the testimony Insurance company's incorporation in Florida under of the witnesses and considered the exhibits and the ar- name deceptively similar to that of trade name holder, guments of counsel. In accordance with Rule 52(a), and its subsequent licensing by Florida Department of Federal Rules of Civil Procedure, this court now makes Insurance, were not defense to trade name holder's ac- the following Findings of Fact and Conclusions of Law. tion to enjoin its trade name infringement, unfair com- petition, and dilution of trade name. Lanham Trade- Mark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a). FINDINGS OF FACT
[10] Trademarks 382T 1755 Plaintiff, American United Life Insurance Company (“Plaintiff”), is a mutual life insurance company whose 382T Trademarks services consist of underwriting life, universal life, 382TIX Actions and Proceedings health, income replacement, accident, pension, group, 382TIX(G) Costs hospitalization, and credit insurance, as well as provid- 382Tk1752 Attorney Fees ing reinsurance. 382Tk1755 k. Amount, Rate, and Items. Most Cited Cases Defendant, American United Insurance Company (Formerly 382k729) (“Defendant”), is also in the business of providing in- surance. Defendant sells private passenger and commer- Trademarks 382T 1751 cial automobile liability and property damage insurance.
382T Trademarks Plaintiff adopted the trade name and service mark 382TIX Actions and Proceedings “American United Life Insurance Company” in 1936. 382TIX(G) Costs Since that time, plaintiff has continuously used this 382Tk1751 k. Amount and Items in General. trade name and service mark to market and sell its Most Cited Cases products and services. (Formerly 382k729) Insurance company which infringed on competitor's Plaintiff is an Indiana corporation with its principal trade name without making even the slightest inquiry place of business in Indianapolis, Indiana. Plaintiff was regarding competitor's prior use thereof was liable for first licensed to conduct business in the state of Florida over $95,000 in attorney fees and $10,000 in costs un- as an insurance company in 1937 under the name der federal statute authorizing such awards in infringe- “American United Life Insurance Company” and has ment actions based on evidence of fraud or bad faith. continuously maintained this license. Lanham Trade-Mark Act, § 35, as amended, 15 U.S.C.A. § 1117. Defendant is a Florida corporation, which was formed *482 Janet T. Munn, Steel Hector & Davis, Miami, Fla., in November 1983, and has been licensed in Florida to for plaintiff. sell insurance under the name “American United Insur- ance Company” since 1984. Samuel R. Danziger, Goodhart, Rosner, Simon, Green- berg & Humbert, P.A., Miami, Fla., for defendant. Plaintiff is the prior owner and user of the trade name
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and service mark “American United Life Insurance Life Insurance Company” throughout the United States, Company.” including Florida. Plaintiff uses its trade name and ser- vice mark, “American United Life Insurance Com- Plaintiff's origins date back to 1877, when one of pany,” in interstate commerce. plaintiff's predecessors first began doing business as an insurance company. Plaintiff's adoption in 1936 of the Plaintiff maintains general agencies in Florida with a trade name and service mark “American United Life In- total of 35-40 sales representatives in Florida. Two of surance Company” occurred following the merger of its these general agencies are located in Tampa, Florida. predecessor companies, American Central Life Insur- One agency is located in Boca Raton, another in Mel- ance Company and United Mutual Life Insurance Com- bourne, and one in Jacksonville, Florida. pany. The first word of each of the predecessor compan- ies, “American” and “United,” was arbitrarily chosen as Since 1979, plaintiff has spent in excess of $5 million in the name for the new company. advertising nationally its trade name and service mark, “American United Life Insurance Company,” and has Defendant's agent testified that the name “American built up extensive good will in its name and a good United” was selected by defendant as the name for de- reputation over the fifty years that it has been using the fendant's company because Saudi Arabians were name “American United Life Insurance Company.” serving as investors for a company which would be op- Plaintiff advertises its trade name and service mark over erated and managed by Americans in the United States. the radio, on television, and in newspapers and other In the view of those individuals who formed the defend- publications. In addition to the money expended directly ant corporation, the project demonstrated the unity of by plaintiff for advertising, plaintiff's agents also ad- the two groups in this American venture. vertise plaintiff's service mark and trade name in Flor- ida. In addition, plaintiff prints and distributes to cus- The words “American United” are arbitrary as applied tomers and prospective customers numerous pamphlets to insurance. There is no relationship between the words and brochures, which describe and promote plaintiff's “American United” and the product each company sells, products and services and advertise plaintiff's trade which is insurance. Clearly, these words are not de- name and service mark, “American United Life Insur- scriptive nor generic of insurance. ance Company.”
Plaintiff's service mark, “American United Life Insur- Defendant has engaged in virtually no advertising of its ance Company,” is a federally registered service mark name. The only use defendant makes of its name is the which is listed on the Principal Register of the United listing of its name on business forms and on a calendar States Patent and Trademark Office (Reg. No. printed by its managing agent. The calendar also con- 1,556,096). Plaintiff's service mark was registered tains the names of two other insurance companies as September 12, 1989. well as the name of the defendant's managing general agent, Public Assurance Group, Ltd., Inc. (“Public”). “American United Life Insurance Company” is also re- gistered as a service mark with the state of Florida Defendant's business operations are conducted by its (State of Florida Reg. No. T1146). This registration oc- managing general agent, Public. Public performs every curred on July 24, 1989. function of running defendant's company with the ex- ception of handling claims. Public selects the individual *483 Defendant has not registered “American United agents who sell defendant's policies and Public makes Insurance Company” as a service mark, either federally all decisions as to acceptance or rejection of prospective or with the state of Florida. insureds. Until some point in 1989, all claims were Plaintiff markets and sells its policies and services un- handled for the defendant by yet another company, the der the trade name and service mark “American United Apex Adjustment Bureau.
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Plaintiff conducts its own business operations, handles In addition, the state of Florida, as well as the state of its own claims, trains its agents to ensure uniformity in New York, have required the plaintiff to respond to con- service, and makes its own decisions as to acceptance or sumer complaints filed against the defendant. Plaintiff rejection of prospective insureds. has also been served at its corporate headquarters in In- dianapolis, Indiana, with lawsuits filed against defend- Plaintiff was ranked in August 1988 by Best's Review. ant in Florida and other states. Defendant's wrongful Best's Review is a publication of the A.M. Best Com- acts thus have harmed plaintiff and are likely to contin- pany and is considered to be a reliable and accurate ue to harm plaintiff in interstate commerce. source within the insurance industry, giving comparis- ons and ratings of insurance companies. Best's Review Plaintiff and defendant occupy the same industry. Each listed plaintiff as the nation's 66th largest life insurance sells the same product, insurance. Plaintiff also offered company in terms of insurance in force, and the 73rd proof that it is not uncommon for life insurance com- largest life insurance company in terms of assets. In panies to own or be affiliated with automobile insurance 1988, plaintiff was ranked as the nation's 24th largest companies. Under such circumstances, the two compan- mutual life insurance company in terms of assets, and ies are related and use the same or similar names. the nation's 20th largest mutual life insurance company in terms of life insurance in force. Plaintiff has consist- The plaintiff and defendant sell their products and ser- ently been awarded the highest rating an insurance com- vices in a similar manner. Each sells insurance policies pany is given by the A.M. Best Company, the “A+ rat- to purchasers of insurance through individual agents ing.” who operate out of individual insurance agencies.
Since 1986, 2,507 consumer complaints have been filed Defendant's use of the name “American United Insur- with the Florida Department of Insurance against the ance Company” is confusingly similar to plaintiff's defendant for its claim-handling delays. During this trade name and service mark, “American United Life same period of time, plaintiff had only 35 complaints Insurance Company.” filed against it. Plaintiff acted promptly in instituting this action. Upon The only difference between the plaintiff's trade name learning of the defendant's existence, plaintiff immedi- and service mark, “American United Life Insurance ately called and then wrote defendant asking defendant Company,” and the defendant's trade name and service to cease its infringing acts. When defendant refused to mark, “American United Insurance Company,” is the cease infringement, plaintiff brought the instant action. presence of the word “Life” in the plaintiff's name. The Defendant admitted that it made no effort prior to its in- virtual identity of the two names has led to numerous corporation and licensing to discover the existence of instances of actual consumer confusion. Plaintiff's plaintiff or of plaintiff's prior ownership of the trade agents testified that their offices *484 received in ex- name and service mark, “American United Life Insur- cess of 60 telephone calls per month from persons who ance Company.” Defendant failed to make any effort to are confused and believe they are calling defendant. consult with the Florida Department of Insurance to de- These callers are often customers of the defendant who termine if another insurance company was already do- have confused the two companies. Many of those who ing business in Florida using the name “American call the plaintiff's agents are calling to express dissatis- United” prior to commencing business as an insurance faction with the defendant's service. One caller in par- company in 1984. Defendant could have easily called ticular, Janet Boynton, testified by deposition that be- the Department of Insurance or consulted with public cause of the close similarity in the names, she called records of the department, which would have revealed plaintiff's agent believing it was the defendant's agent. that plaintiff was the only insurance company doing The testimony proving actual confusion was unrebutted business in Florida using the words, “American by defendant.
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United.” Defendant admitted it made no effort whatso- UNFAIR COMPETITION PURSUANT TO SECTION ever to undertake even this simple investigation, despite 43(A), 15 U.S.C. § 1125(A) defendant's knowledge of the existence of state of Flor- ida publications, such as the Report of the Department [1][2] To prevail on a claim for injunctive relief under § of Insurance for the year ending June 30, 1983, which 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), plaintiff would have immediately revealed to defendant the must demonstrate (1) that it is the prior owner of the plaintiff's prior use of the name “American United.” trade name or service mark, and (2) that defendant ad- FN1 opted a trade name and service mark that is the same or confusingly similar to plaintiff's trade name or service FN1. The Report of the Department of Insur- mark so that there exists a likelihood of confusion to ance lists the names of insurance companies consumers as to the proper origin of the goods or ser- authorized to conduct business in Florida. vices, such that a consumer is likely to believe that de- fendant's goods or services are being sold with the con- Defendant's president, Mark Trafton III, worked for the sent or authorization of the plaintiff, or that defendant is Department of Insurance for over fifteen years. At one affiliated with or connected to the plaintiff. 15 U.S.C. § time during Mr. Trafton's employment with the Depart- 1125(a); Conagra, Inc. v. Singleton, 743 F.2d 1508, ment of Insurance, he was the director of the Division 1512 (11th Cir.1984). Based upon the findings of fact of Insurance Rating, a section which, inter alia, regu- made above, the court concludes that plaintiff has met lated life insurance companies. Mr. Trafton, who im- each of these requirements and is, therefore, entitled to pressed the court as a fine person and a credible wit- injunctive relief, pursuant to § 43(a) of the Lanham Act, ness, testified that he could not say that he had never 15 U.S.C. § 1125(a), to prevent defendant's use of the heard of the plaintiff prior to the institution of the law- name “American United Life Insurance Company.” suit. In making the determination of confusing similarity, this court considered and made factual findings with re- CONCLUSIONS OF LAW gard to the following seven factors: (1) the type of trade Plaintiff seeks to enjoin defendant from using the trade name or service mark used; (2) the similarity of the name and service mark, “American United Insurance trade name or service mark; (3) the similarity of the Company.” Plaintiff asserts that defendant has product of service; (4) the similarity of the retail outlets violated*485 § 43(a) of the Lanham Act, 15 U.S.C. § and purchasers; (5) the similarity of advertising media 1125(a); that defendant has engaged in unfair competi- used; (6) the existence of actual confusion; and (7) the tion and trade name and service mark infringement un- defendant's intent. See Jellibeans, Inc. v. Skating Clubs der the common law; and that defendant has violated of Georgia, Inc., 716 F.2d 833, 840 (11th Cir.1983); see the Florida anti-dilution statute, Florida Statute § also Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 495.151. The court makes the following conclusions of 252, 259-264 (5th Cir.1980), cert. denied, 449 U.S. 899, law with respect to each of these claims: 101 S.Ct. 268, 66 L.Ed.2d 129 (1980). Upon considera- tion of each of these factors, the court finds that the This court has jurisdiction over the Lanham Act claim plaintiff is entitled to injunctive relief. pursuant to 15 U.S.C. § 1121; 28 U.S.C. § 1338, and 28 U.S.C. § 1331. The court has jurisdiction over the com- Defendant contends that because the products or ser- mon law claims pursuant to 28 U.S.C. § 1338(b) and vices which each party sells are not identical, life and pursuant to the doctrine of pendent jurisdiction. In addi- health as compared with automobile insurance, it has tion, diversity jurisdiction exists pursuant to 28 U.S.C. § not violated plaintiff's rights and is immune from suit 1332. by the plaintiff. The court finds this contention to be without merit. The law of unfair competition protects the prior owner of a mark from those who “ ‘sell their
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goods in such a way as to make it appear that they come The competition requirement has been interpreted by from some other source.’ ” Boston Professional Hockey the Florida Supreme Court to require a showing of Assn., Inc. v. Dallas Cap & Emblem Mfg., 510 F.2d “similarity in businesses of the parties.” Sun Coast v. 1004, 1010 (5th Cir.1975) (quoting American-Marietta Shupe, 52 So.2d 805 (Fla.1951). In Sun Coast, the Flor- Co. v. Krigsman, 275 F.2d 287, 289 (2nd Cir.1960)), ida Supreme Court held that a hotel corporation could cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 not prohibit a real estate venture from using the words (1975). As found above, plaintiff and defendant occupy “Sun” and “Coast” in its name. Id. In reaching its de- the same industry. Both sell insurance. That one com- cision, the court stated: pany is authorized to sell life insurance and another automobile insurance does not answer the problem of We cannot see how the public could be deceived by ap- consumer confusion. The distinction defendant seeks to pellees' use of the title “Suncoast” when there is not draw is not one made by consumers. The product or ser- similarity in the businesses of the parties. In the case vices sold by each are the kind the insurance consuming we have cited, and formerly approved, it was said that public attributes to a single source. See E. Remy Martin ‘the courts interfere solely to prevent deception.’ & Co. v. Shaw-Ross Intern. Imports, 756 F.2d. 1525, ...Further, the circumstances must lead to the conclu- 1530 (11th Cir.1985). The actual confusion which has sion that the business of the first user will suffer from occurred and continues to occur between the plaintiff the deceptive use, or that by reason of unfair competi- and the defendant in this case amply supports this con- tion there will be an imposition on the public. clusion. Therefore, plaintiff is entitled to an injunction Id. (emphasis added). pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Under Florida law, the plaintiff must show either “that the public would be tricked” or that the plaintiff will be *486 COMMON LAW UNFAIR COMPETITION damaged because persons dealing with defendant are likely to believe they are dealing with the plaintiff. Id. [3][4] For the reasons set forth above and in the find- at 806. For reasons set forth above, the court has found ings of fact, the plaintiff has also proved its claim for that the close similarity of the services offered by two common law unfair competition. Marathon Mfg. v. En- businesses who both sell insurance has caused and is erlite Products Corp., 767 F.2d 214, 217 (5th Cir.1985). likely to continue to cause consumer confusion as to the The elements a plaintiff must prove to prevail on a com- source of origin or sponsorship of the defendant's goods mon law unfair competition claim based on trade name and services. or service mark infringement are: (1) that plaintiff is the prior user of the trade name or service mark; (2) that the For reasons set forth in the findings above, plaintiff has trade name or service mark is arbitrary or suggestive or established the elements necessary to support a claim has acquired secondary meaning; (3) that the defendant for common law unfair competition, and plaintiff is en- is using a “confusingly similar trade name or service titled to injunctive relief on this count as well. mark to indicate or identify similar services rendered (or similar goods marketed) by it in competition with COMMON LAW TRADE NAME AND SERVICE plaintiff in the same trade area in which plaintiff has MARK INFRINGEMENT already established its trade name” or service mark; and (4) that as a result of defendant's action or threatened [5] The elements required to prevail on a claim of com- action, consumer confusion as to the source or sponsor- mon law trade name and service mark infringement are ship of defendant's goods and services is likely. Americ- the same as those required to prevail under § 43(a) of an Bank of Merritt Island v. First Am. Bank and Trust, the Lanham Act, 15 U.S.C. § 1125(a) or under a claim 455 So.2d 443, 445-6 (Fla. 4th DCA 1984), review for common law unfair competition. See Selchow & denied, 461 So.2d 114 (Fla.1985). Righter Co. v. Goldex Corp., 612 F.Supp. 19, 24
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(S.D.Fla.1985) (plaintiff must prove that the “infringing Defendant raised affirmative defenses of laches and es- mark is likely to confuse consumers as to the source of toppel by incorporation and licensing. For reasons spe- the product, its endorsement by the trademark holder, or cified below, each of these defenses is without merit. its connection with the holder,” through evaluation of the seven factors); see also American Bank, 455 So.2d LACHES at 445-446. For reasons stated above, plaintiff has met its burden on this claim as well and is entitled to in- [8] To prevail on the affirmative defense of laches, de- junctive relief. fendant must prove three elements: “(1) a delay in a right or claim; (2) that the delay was not excusable; and DILUTION (3) that the delay caused defendant undue prejudice.” Conagra, Inc. v. Singleton, 743 F.2d 1508, 1517 (11th [6] Finally, plaintiff has a claim for dilution of its trade Cir.1984). Defendant failed to prove that plaintiff name and service mark pursuant to Florida Statute § delayed in bringing its claims. The evidence at trial 495.151. This court may award relief pursuant to § demonstrated the contrary. As soon as plaintiff learned 495.151 if the plaintiff has proved: about defendant, plaintiff immediately demanded that defendant cease its infringing acts. Defendant refused, that there exists a likelihood of injury to business repu- assuring plaintiff that there could be no public confu- tation or of dilution of the *487 distinctive quality of sion. When plaintiff experienced additional confusion, the mark [or] name ... notwithstanding the absence of plaintiff renewed its demand, which defendant again re- competition between the parties or of confusion as to jected. Plaintiff then immediately brought suit. There- the source of goods or services. fore, since the defendant has not shown inexcusable delay, it has not sustained its burden of proving laches. Fla.Stat. § 495.151.
[7] Under this section of the Florida Statutes, neither ESTOPPEL BY VIRTUE OF INCORPORATION AND competition nor confusion is required. Id. The court has LICENSING found that plaintiff's trade name and service mark is dis- tinctive and entitled to protection. The court has also [9] Defendant contends that its incorporation by the found that defendant is using a virtually identical trade state of Florida and its licensing by the Florida Depart- name and service mark, to promote the sale of services ment of Insurance grants defendant immunity from suit. and goods to consumers of insurance. There is no doubt This contention is contrary to longstanding Florida law. that the commercial value of the plaintiff's trade name As long ago as 1926, the Supreme Court of Florida and service mark is likely to be diluted by defendant's held: unauthorized use of a virtually identical trade name and service mark, and that this will create a likelihood of in- The act of sovereignty in allowing incorporation under a jury to plaintiff's business reputation. Freedom Savings particular name is permissive only. It sanctions the and Loan Assn. v. Way, 757 F.2d 1176, 1186 (11th act of incorporation under the name chosen and for Cir.1985), cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88 the business proposed, if that name and that business L.Ed.2d 110 (1985). On the basis of its prior findings be otherwise lawful, but in granting a corporate and in consideration of the requirements of the Florida charter the sovereign adjudges neither the legality of anti-dilution statute, the court concludes that plaintiff is the business nor of the name chosen. That is a matter entitled to relief on this claim. for judicial determination by a court of competent jurisdiction. An individual will be enjoined, in proper cases, from the fraudulent or deceptive use of his own AFFIRMATIVE DEFENSES natural name. With even greater justification will an artificial person, a corporation, be enjoined from such
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a use of a corporate name voluntarily chosen by it. ida. Id. Additionally, the Lanham Act was specifically intended by Congress to protect and make actionable Children's Bootery v. Sutker, 91 Fla. 60, 107 So. 345, the use of deceptive and misleading marks in commerce 349 (1926) (emphasis added). and to protect persons engaged in such commerce against unfair competition. 15 U.S.C. § 1127. The acceptance or approval of a name by a state agency such as the Florida Department of State is not a defense Therefore, neither defendant's incorporation in Florida to the claims brought in this lawsuit. American Auto., under the name “American United Insurance Company” 618 F.Supp. at 797 (rejecting defendant insurance com- nor its licensing by the Florida Department of Insurance pany's claim that licensing is a defense to Lanham Act constitutes a defense to plaintiff's action to enjoin trade claims and citing Children's Bootery, 107 So. at 349); name and service mark infringement, unfair competi- see also Shatterproof Glass Corp. v. Buckmaster, 256 tion, and dilution of its trade name and service mark. So.2d 531, 533 (Fla. 2d DCA), cert. denied, 264 So.2d See American Auto. Assoc. (Inc.), 618 F.Supp. at 798 427 (Fla.1972). (relying in part on the Florida Supreme Court decision in Children's Bootery, 107 So. at 349). *488 In addition, the Florida Supreme Court's holding is reiterated in the Florida Administrative Code: ATTORNEYS' FEES AND COSTS IN-1.002 Name Assignments. [10] Plaintiff has requested an award of attorneys' fees Any and all corporate names issued by this Division and costs. Pursuant to 15 U.S.C. § 1117, this court has under chapters 607 and 617, Florida Statutes, are the authority to award fees to a prevailing party where based only upon the records of this Division and the there is evidence of fraud or bad faith. Safeway Stores, rules of this Division at the time of filing and are not Inc. v. Safeway Discount Drugs, 675 F.2d 1160, 1166 based upon any other corporate entity filed by the (11th Cir.1982); see also Jellibeans Inc. v. Skating United States government or its agencies or protected Clubs of Georgia, Inc., 716 F.2d 833, 846 (11th by Federal Law, nor are these filings based upon the Cir.1983). As the court has found above, this entire con- records of any other state agency, nor is the Division troversy and the harm the plaintiff has suffered could responsible for those persons or groups of persons easily have been avoided had defendant made even the who style themselves as a corporation nor those who slightest inquiry. After carefully considering all of the use a corporate suffix not of the Division's filing. The evidence presented at trial this court finds under the filing of any corporate entity is only a grant of au- facts of this case that the defendant's actions constitute thority to use such a name and does not include the bad faith under 15 U.S.C. § 1117, and accordingly the adjudication of the legality of such use. court awards the plaintiff its attorneys' fees.
Fla.Admin. Code Ann. r.1N-1.002 (1989) (emphasis ad- Both sides presented expert testimony at trial, regarding ded). Incorporation by the state of Florida, therefore, is the reasonable amount of attorneys' fees. Since the trial, not a defense to trade name or service mark infringe- the plaintiff has submitted invoices supporting its claim ment, unfair competition, or anti-dilution claims. and an affidavit from its expert regarding the reason- ableness of the amount of fees incurred in trial prepara- Similarly, the permission to engage in business in Flor- tion and for time spent in trial. Defendant's expert has ida as an insurance company is not a defense under the reviewed the affidavit of the plaintiff's expert, as well as Lanham Act or under state law. Children's Bootery, 107 the invoices, and has submitted an affidavit regarding So. at 349. As an agency of the state of Florida, the the claim for fees incurred by plaintiff in trial prepara- Florida Department of Insurance does not regulate or tion and for time spent in trial. Plaintiff seeks an award adjudicate the legality of the use of a particular name by of fees in the amount of $100,303.60. Defendant, while any insurance company seeking to do business in Flor-
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objecting to the award of fees, admits that $80,803.60 is 603 F.Supp. 13, 19 (S.D.Fla.1984). The plaintiff has a reasonable amount to be awarded to plaintiff. The supplied its bill of costs, along with a supporting court has carefully considered the testimony of the ex- memorandum of law, and the defendant has filed its ob- perts for each party, together with the documentation on jections. Having carefully reviewed the plaintiff's item- fees provided by the plaintiff and hereby awards the ized bill of costs, the defendant's objections, and the ap- plaintiff attorneys' fees in the amount of $95,803.60. plicable law, the court finds that the following costs are taxable against the defendant: Finally, the court determines that the plaintiff is entitled to its costs of prosecuting*489 this action. 15 U.S.C. § 1117(a); Rule 54(d), Federal Rules of Civil Procedure; see also Polo Fashions, Inc. v. Magic Trimmings, Inc.,
(A) Fees of the Clerk $ 160.00 (B) Fees of the court reporter necessarily obtained for use in the case $ 4,937.89 (C) Fees for witnesses (includes attendance fees and mileage costs for witnesses; sub- $ 1,790.90 sistence and travel costs for plaintiff's witnesses at trial and deposition) (D) Process server fees $ 978.00 (E) Fees for exemplification and copies of papers necessarily obtained for use in the $ 1,655.65 case (F) Counsel's travel expenses $ 1,210.79 Total: $10,733.23 and conclusions of law, that plaintiff is entitled to a per- manent injunction, attorneys' fees, and costs. Accord- CONCLUSION ingly, it is On the basis of the foregoing, the court concludes that ORDERED, ADJUDGED and DECREED that final plaintiff has demonstrated its entitlement to a permanent judgment is entered in favor of the plaintiff, American injunction for defendant's violation of § 43(a) of the United Life Insurance Company, and against the de- Lanham Act, 15 U.S.C. § 1125(a); for defendant's acts fendant, American United Insurance Company. The de- of unfair competition, trade name, and service mark in- fendant, its officers, directors, agents, servants, employ- fringement under common law; and for defendant's vi- ees, attorneys, and all persons, firms or corporations olation of Florida Statute § 495.151. In addition, the acting or claiming to act on their behalf or under their court awards attorneys' fees and costs of the action to direction or authority, and all persons and firms acting the plaintiff. The terms and conditions of the injunction or claiming to act in participation or concert with them, awarded to plaintiff are set forth below in the Final are hereby permanently enjoined: Judgment. (1) from using on or in connection with the manufac- FINAL JUDGMENT ture, sale, offering for sale, distribution or the advertise- ment, labeling or packaging of any products or services, This cause came on for trial for permanent injunction plaintiff's trade name or service mark, “American before the court sitting without a jury. The court having United Life Insurance Company,” or any colorable imit- heard and considered the testimony of the witnesses, the ation thereof or anything confusingly similar thereto; exhibits, and the argument of counsel, finds and con- cludes, for the reasons set forth in the findings of fact (2) from representing by any means whatsoever that any services sold, offered for sale, or advertised by defend-
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ant, are sponsored, licensed, authorized by, or originate S.D.Fla.,1990. with plaintiff, or from otherwise taking any action likely American United Life Ins. Co. v. American United Ins. to cause confusion, mistake or deception on the part of Co. the public as to the origin or sponsorship of such ser- 731 F.Supp. 480, 15 U.S.P.Q.2d 1873 vices; or END OF DOCUMENT (3) from passing off defendant's business and the ser- vices offered through that business as being owned, op- erated, or otherwise affiliated with plaintiff.
That in ensuring compliance with the above, the defend- ant is hereby directed to effect a change of its corporate name with the Florida Department of State and the Flor- ida Department of Insurance within 120 days of the entry of the permanent injunction, so that the words “American United” are no longer a part of the defend- ant's name.
Until the effective date of the change of its corporate name, the defendant is hereby required to place on the face of all correspondence, including but not limited to invoices, envelopes and flyers used by defendant, the following disclaimer of affiliation with plaintiff:
*490 “American United Insurance Company is not affil- iated with or connected to American United Life In- surance Company.”
Defendant is hereby directed to file with this court with- in 120 days of the entry of this permanent injunction, a written statement under oath, setting forth in detail the manner in which defendant has complied with the court's injunction and order.
The plaintiff is hereby awarded attorneys' fees in the amount of $95,803.60, for which let execution issue.
The plaintiff is hereby awarded its costs in the amount of $10,733.23, for which let execution issue.
This court hereby retains jurisdiction to enforce the terms of this permanent injunction and final judgment and to award such other relief as this court may deem appropriate.
DONE AND ORDERED.
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Date/Time of Request: Thursday, July 2, 2009 15:37 Central Client Identifier: OSHNA Database: FEDFIND Citation Text: 187 F.3d 1307 Lines: 690 Documents: 1 Images: 0
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reasonable inferences therefrom reviewed in the light most favorable to the nonmoving party. United States Court of Appeals, Fed.Rules Civ.Proc.Rule 56(c), 28 U.S.C.A. Eleventh Circuit. CARNIVAL BRAND SEAFOOD COMPANY, [2] Trademarks 382T 1421 Plaintiff-Appellant, v. 382T Trademarks CARNIVAL BRANDS, INC., Defendant-Appellee. 382TVIII Violations of Rights No. 98-4126. 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohib- Sept. 3, 1999. ited in General; Elements 382Tk1421 k. Infringement. Most Assignee of “CARNIVAL” trademark for shrimp Cited Cases and other seafood products brought trademark in- (Formerly 382k332) fringement action against seller of Creole and To prevail on a trademark infringement claim, a Cajun food products that also used “CARNIVAL” plaintiff must show (1) that its mark has priority mark. The United States District Court for the and (2) that the defendant's mark is likely to cause Southern District of Florida, No. 97-8273-CV-JL, consumer confusion. Joan A. Lenard, J., granted summary judgment for defendant, and plaintiff appealed. The Court of Ap- [3] 2493 peals, Anderson, Chief Judge, held that: (1) fact is- sues existed as to whether first assignor's expansion 170A Federal Civil Procedure into products sold by defendant would have been 170AXVII Judgment natural, and thus as to whether likelihood of confu- 170AXVII(C) Summary Judgment sion existed at time defendant entered market, for 170AXVII(C)2 Particular Cases purpose of determining priority, and (2) district 170Ak2493 k. Copyright, Trademark, court was required to determine whether defend- and Unfair Competition Cases. Most Cited Cases ant's expansion into second assignor's product line (Formerly 382k722) would have been natural expansion, for priority Genuine issues of material fact as to whether it purposes. would have been natural for seller of raw shrimp products under “CARNIVAL” mark to expand into Vacated and remanded. seafood gumbo and chicken gumbo, and, later, to expand into shrimp cakes, crawfish cakes, lobster West Headnotes cakes, and crab cakes, and thus whether competit- or's use of “CARNIVAL” mark to sell those [1] Federal Courts 170B 776 products created likelihood of confusion, precluded 170B Federal Courts summary judgment for competitor in trademark in- 170BVIII Courts of Appeals fringement action brought against competitor by 170BVIII(K) Scope, Standards, and Extent seller's assignee, which claimed it had acquired pri- 170BVIII(K)1 In General ority in mark. 170Bk776 k. Trial De Novo. Most [4] Trademarks 382T 1102 Cited Cases Court of Appeals reviews the district court's grant 382T Trademarks of summary judgment de novo, with all facts and 382TIII Similarity Between Marks; Likelihood
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of Confusion products of the defendant, to determine whether the 382Tk1100 Relationship Between Goods or plaintiff ultimately prevails in a trademark infringe- Services Underlying Marks ment litigation. 382Tk1102 k. Similarity or Dissimilarity in General. Most Cited Cases [6] Trademarks 382T 1081 (Formerly 382k363.1) 382T Trademarks A trademark owner cannot by the normal expansion 382TIII Similarity Between Marks; Likelihood of business extend the use or registration of its of Confusion mark to distinctly different goods or services not 382Tk1081 k. Factors Considered in General. comprehended by its previous use where the result Most Cited Cases could be a conflict with valuable intervening rights (Formerly 382k334.1) established by another through extensive use of the Seven factors used for determining the likelihood of same or similar mark for like or similar goods and confusion in trademark infringement action are (1) services. the type of mark; (2) the similarity of the two [5] Trademarks 382T 1087 marks; (3) the similarity of the goods; (4) the iden- tity of customers and similarity of retail outlets, 382T Trademarks sometimes called the similarity of trade channels; 382TIII Similarity Between Marks; Likelihood (5) the similarity of advertising; (6) the intent, that of Confusion is, good or bad faith, of the alleged infringer; and 382Tk1083 Nature of Confusion (7) evidence of actual confusion, if any. 382Tk1087 k. Time of Confusion. Most Cited Cases [7] Trademarks 382T 1104 (Formerly 382k334.1) 382T Trademarks Trademarks 382T 1137(1) 382TIII Similarity Between Marks; Likelihood of Confusion 382T Trademarks 382Tk1100 Relationship Between Goods or 382TIV Creation and Priority of Rights Services Underlying Marks 382Tk1132 Use of Mark 382Tk1104 k. Markets and Territories; 382Tk1137 Scope and Priority of Use; Competition. Most Cited Cases Multiple Users, Markets, or Territories (Formerly 382k334.1) 382Tk1137(1) k. In General. Most Cited Cases Trademarks 382T 1137(1) (Formerly 382k334.1) 382T Trademarks Likelihood-of-confusion test, when applied to de- 382TIV Creation and Priority of Rights termine priority where there are issues of related 382Tk1132 Use of Mark use, does not substitute for the likelihood- 382Tk1137 Scope and Priority of Use; of-confusion test that controls whether infringement Multiple Users, Markets, or Territories of the plaintiff's trademark is occurring or has oc- 382Tk1137(1) k. In General. Most curred; rather, inquiries are independent, and, once Cited Cases priority in the use of a mark for a particular class of (Formerly 382k334.1) goods or services has been established, then it is ne- When using likelihood-of-confusion test to analyze cessary to perform the likelihood-of-confusion test, a trademark priority question, by looking at wheth- as of the current time and as between the plaintiff's er senior user's rights would naturally expand to ju- current products and the allegedly infringing
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nior user's use of mark, court must consider the 170Ak2493 k. Copyright, Trademark, state of events that existed at the time the interven- and Unfair Competition Cases. Most Cited Cases ing use commenced. (Formerly 382k722) Genuine issues of material fact as to whether it [8] Trademarks 382T 1033 would have been natural for seller of chicken and seafood gumbo to expand into product line that in- 382T Trademarks cluded products such as competitor's shrimp, craw- 382TII Marks Protected fish, and alligator products precluded summary 382Tk1033 k. Levels or Categories of Dis- judgment for seller, on its claim that it had priority tinctiveness in General; Strength of Marks in Gen- in “CARNIVAL” trademark for those products, in eral. Most Cited Cases action brought by assignee of “CARNIVAL” mark (Formerly 382k10) which had obtained rights in mark from competitor. The strength of a trademark depends on the logical correlation between a name and a product; if the Trademarks 382T 1800 seller of a product or service would naturally use a particular name, it is weakly protected. 382T Trademarks 382TXI Trademarks and Trade Names Adjudic- [9] Trademarks 382T 1039 ated 382Tk1800 k. Alphabetical Listing. Most 382T Trademarks Cited Cases 382TII Marks Protected (Formerly 382k736) 382Tk1039 k. Arbitrary or Fanciful Terms or CARNIVAL Marks. Most Cited Cases *1308 Joseph Rodman Steele, Jr., Quarles & Brady, (Formerly 382k27) West Palm Beach, FL, James R. Cole, Madison, Trademark “CARNIVAL” would be arbitrary or WI, Kenneth R. Hartmann, Kozyak, Tropin & fanciful as compared to product of raw shrimp be- Throckmorton, Miami, FL, for Plaintiff-Appellant. cause it was a word in common usage applied to a service unrelated to its meaning. Gregory L. Denes, Campbell & Associates, Miami, FL, for Defendant-Appellee. [10] Trademarks 382T 1033
382T Trademarks Appeal from the United States District Court for the 382TII Marks Protected Southern District of Florida 382Tk1033 k. Levels or Categories of Dis- tinctiveness in General; Strength of Marks in Gen- Before ANDERSON, Chief Judge, MARCUS, Cir- FN* eral. Most Cited Cases cuit Judge, and MILLS , Senior District Judge. (Formerly 382k331) Strength of trademark is diminished by fairly fre- FN* Honorable Richard H. Mills, Senior quent use of that mark by third parties in other mar- U.S. District Judge for the Central District kets. of Illinois, sitting by designation. [11] 2493 ANDERSON, Chief Judge: 170A Federal Civil Procedure 170AXVII Judgment Carnival Brand Seafood Company (“CBSC”) 170AXVII(C) Summary Judgment brought this trademark infringement action against 170AXVII(C)2 Particular Cases Carnival Brands, Inc. (“CBI”). The district court
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granted summary judgment for defendant CBI on pany that is engaged in the business of selling pre- the ground that CBSC had failed to raise a genuine pared Creole or Cajun-type food products. CBI, issue of material fact with respect to the likelihood either by itself or as a sole proprietorship prior to FN1 of confusion to the extent of the products as to its incorporation, has been engaged in this which CBSC had priority. Plaintiff CBSC now ap- business since 1990. The original proprietorship peals. sold only chicken gumbo and seafood gumbo, using the brand name “CARNIVAL” or “CARNIVAL CAJUN CLASSICS.” In December 1992, CBI in- I. FACTS corporated and expanded into other pre-cooked sea- Beginning in 1980, Honduran company Mariscos food products such as shrimp cakes, crawfish cakes, de Bahia, S.A. de C.V. (“Mariscos”) began using lobster cakes, and crab cakes. CBI now sells an ar- the brand name “CARNIVAL” in connection with ray of pre-cooked, pre-packaged, ready-to-eat sea- the sale of fresh and frozen boxed raw shrimp. Mar- food products and sauces with a Cajun or Creole iscos sold shrimp to various wholesalers and retail- theme; these products are available in grocery ers, including food suppliers and restaurants, stores for retail purchase. CBI has promoted its through Miami distributor Ludwig Shrimp Co. Ltd. products through a web page on the Internet and on (“Ludwig”). CBSC incorporated as a Delaware cor- the home shopping network cable television station poration (with its headquarters in Florida) in March QVC. 1996, and Mariscos assigned to CBSC all of its FN1. For simplicity's sake, we use “CBI” rights in the CARNIVAL mark on October 1, 1996 herein to refer to CBI or the sole propriet- (“Mariscos Assignment”). CBSC registered the orship that was its predecessor in interest. CARNIVAL mark with the Patent & Trademark Office. CBSC then expanded its CARNIVAL Plaintiff CBSC filed the instant action against de- product line to include not merely raw shrimp, but fendant CBI on April 18, 1997, alleging that by us- also pre-packaged entrees such as bacon-wrapped ing the CARNIVAL mark, CBI infringed upon CB- shrimp, shrimp scampi, grouper, red snapper, SC's trademark. The complaint brought one count Caribbean*1309 snapper marinated in lemon pep- of statutory trademark infringement under the Lan- per sauce, mahi mahi fillets, yellow fin tuna, orange ham Act, 15 U.S.C. § 1114, one count of false des- roughy, halibut, lobster tails, and “surf and turf” ignation of origin and unfair competition under the (lobster tails with beef tenderloin). Lanham Act, 15 U.S.C. § 1125(a), and one count of common law trademark infringement. Plaintiff later In addition to the Mariscos Assignment, CBSC also filed a motion for a preliminary injunction. The dis- received an assignment of rights in the CARNIVAL trict court, finding no genuine issue of material fact mark from Hi-Seas of Dulac, Inc. (“Hi-Seas”), a as to the likelihood of confusion between the Louisiana corporation, on April 17, 1997 (“Hi-Seas sources of plaintiff's and defendant's products, Assignment”). Hi-Seas had begun using the mark granted summary judgment for defendant CBI, and “CARNIVAL!” in June 1992 in connection with the denied the motion for a preliminary injunction as sale of fresh frozen shrimp, cooked shrimp, breaded moot. shrimp, cooked crawfish, and breaded alligator. Following the Mariscos Assignment, CBSC sued Hi-Seas for trademark infringement. As part of a II. STANDARD OF REVIEW settlement of that litigation, Hi-Seas executed the Hi-Seas Assignment. [1] We review the district court's grant of summary judgment de novo, with all facts and reasonable in- Defendant CBI is a New Orleans, Louisiana com- ferences therefrom reviewed in the light most fa-
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vorable to the nonmoving party. Hale v. Tallapoosa FN3. CBI does not argue on appeal that County, 50 F.3d 1579, 1581 (11th Cir.1995). Sum- either the Mariscos Assignment or Hi-Seas mary judgment was due to be granted only if the Assignment was invalid or ineffective. In- forecast of evidence before the district court deed, the only arguments on appeal in- showed that there was no genuine issue as to any volve the scope of rights conveyed in each. material fact and that the moving party, i.e., CBI, was entitled to judgment as a matter of law. A. The Mariscos Assignment Fed.R.Civ.P. 56(c). [3] The Mariscos Assignment conveyed to CBSC III. ANALYSIS any and all rights that Mariscos had gained from the use of the CARNIVAL mark in connection with [2] To prevail on a trademark infringement claim, a Mariscos' sale of raw shrimp since 1980. In other plaintiff must show (1) that its mark has priority words, if Mariscos would have had priority over and (2) that the defendant's mark is likely to cause CBI, then CBSC has priority over CBI as well be- consumer confusion. Lone Star Steakhouse & Sa- cause CBSC stepped into Mariscos' shoes. The is- loon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, sue for us to decide is whether CBI established bey- 1382 (11th Cir.1997) (citing Dieter v. B & H Indus. ond any genuine issue of material fact that it had of S.W. Fla., Inc., 880 F.2d 322, 326 (11th priority over Mariscos, and thus over CBSC, with Cir.1989), cert. denied, 498 U.S. 950, 111 S.Ct. respect to the use of the CARNIVAL mark for pro- 369, 112 L.Ed.2d 332 (1990)). Plaintiff CBSC itself cessed seafood entrees and sauces of the type sold did not begin to use the CARNIVAL mark until at by CBI. least as late as 1996. Defendant CBI, on the other hand, used the CARNIVAL mark (or some vari- Mariscos was unquestionably the senior user with FN2 ation thereof) *1310 beginning in 1990. There- respect to raw shrimp. However, because Mariscos fore, any priority that CBSC claims over CBI with never produced or sold processed, ready-to-eat sea- respect to the CARNIVAL mark must have been food entrees as did CBI, priority in these goods de- derived from one of CBSC's predecessors in in- pends on the application of the “related use” or terest. Cf. Conagra, Inc. v. Singleton, 743 F.2d “natural expansion” theory. As we explained in 1508, 1511 (11th Cir.1984) (plaintiff's interest in Tally-Ho, Inc. v. Coast Community College Dis- trademark derived entirely from predecessor com- trict, 889 F.2d 1018 (11th Cir.1989), pany that it had acquired); see generally2 J. The senior user's rights may extend into uses in Thomas McCarthy, McCarthy on Trademarks and “related” product or service markets (termed the Unfair Competition § 16:5, at 16-7 & n. 3 (1998) “related goods” doctrine). Thus, an owner of a (explaining that an assignee of a trademark steps in- common law trademark may use its mark on re- to the shoes of the assignor and that a company lated products or services and may enjoin a junior may “buy[ ] the trademark and associated good will user's use of the mark on such related uses. The of a company with an early priority date in order to doctrine gives the trademark owner protection pre-date the priority of a rival”). That is, it must against the use of its mark on any product or ser- rest on either the Mariscos Assignment or the Hi- FN3 vice which would reasonably be thought by the Seas Assignment. buying public to come from the same source, or FN2. Until its incorporation in December thought to be affiliated with, connected with, or 1992, CBI apparently used “CARNIVAL sponsored by, the trademark owner. CAJUN CLASSICS.” Id. at 1023 (citations and internal quotation marks
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omitted); see also Natural Footwear Ltd. v. Hart, plaintiff had senior rights to “HEARTLAND” mark Schaffner & Marx, 760 F.2d 1383, 1406 (3d with respect to women's boots, those rights did not Cir.1985) (“[O]nce one has established a common extend to give plaintiff priority over defendant's in- law trademark in a product, the prior use of that tervening use of “HEARTLAND” with respect to trademark will apply as well to the use of the same shirts, sweaters, trousers, and jackets, because at trademark on related products in ascertaining prior- the time the intervening use began, “there was no ity of use.”(emphasis omitted)), cert. denied, 474 real likelihood that plaintiffs would bridge the gap U.S. 920, 106 S.Ct. 249, 88 L.Ed.2d 257 (1985); by applying the ‘Heartland’ label to the types of May Dep't Stores Co. v. Prince, 200 U.S.P.Q. 803, products defendants were selling”). 808-09 (T.T.A.B.1978) (senior user possesses rights in mark superior to those of “a subsequent Thus, the determinative question is whether-as of user of the same or a similar mark for any goods the time CBI began using CARNIVAL (or some which purchasers might reasonably be likely to as- variation thereof) for seafood gumbo and chicken sume emanate from [senior user] in the normal ex- gumbo in 1990, and as a secondary matter, as of the pansion of its business under the mark notwith- time CBI began using CARNIVAL for shrimp standing that the expansion to a particular product cakes, crawfish cakes, lobster cakes, and crab cakes might be subsequent in time to that of another in 1992-the buying public might reasonably have party”); see generally2 McCarthy § 16:5, at 16-7 been confused as between CBI's products and the (“When a senior user of a mark on product line A raw shrimp sold by Mariscos under the CARNI- expands later into product line B and finds an inter- VAL mark. To say that such confusion would have vening user, priority in product line B is determined existed is another way of saying that the market for by whether the expansion is ‘natural’ in that cus- CBI's products would have been within the realm of tomers would have been confused as to source or natural expansion for Mariscos. affiliation at the time of the intervening user's ap- [5] Tally-Ho instructs that in examining this ques- pearance.”). tion for the purpose of determining priority, we ap- ply a variant of the familiar seven-factor test that [4] On the other hand, “a trademark owner cannot FN4 by the normal expansion of its business extend the pertains to the likelihood of confusion. Tally- use or registration *1311 of its mark to distinctly Ho, 889 F.2d at 1027. As McCarthy explains, “[t]he different goods or services not comprehended by its ‘natural expansion’ thesis seems to be nothing more previous use ... where the result could be a conflict than an unnecessarily complicated application of with valuable intervening rights established by an- the likelihood of confusion of source or sponsorship other through extensive use ... of the same or simil- test to a particular factual situation. If the ar mark for like or similar goods and services.” ‘intervening’ use was likely to cause confusion, it American Stock Exchange, Inc. v. American Ex- was an infringement, and the senior user has the press Co., 207 U.S.P.Q. 356, 364 (T.T.A.B.1980). right to enjoin such use, whether it had in fact See, e.g., Physicians Formula Cosmetics, Inc. v. already expanded itself or not.” 4 McCarthy § West Cabot Cosmetics, Inc., 857 F.2d 80, 82 n. 1 24:20, at 24-39; cf. Rosenthal, A.G. v. Ritelite, Ltd., (2d Cir.1988) (defendant's prior use of mark on 986 F.Supp. 133, 140-44 (S.D.N.Y.1997) hard-bar soap did not extend to give defendant pri- (analyzing whether plaintiff's senior use of ority to use similar mark in connection with cos- “ROSENBERG” mark with respect to china, din- metics and skin creams, and so intervening user nerware, glassware, and flatware extended to give with respect to cosmetics and skin creams had pri- plaintiff priority over intervening user in Judaica ority); Clark & Freeman Corp. v. Heartland Co. (i.e., household goods such as china commemorat- Ltd., 811 F.Supp. 137, 142 (S.D.N.Y.1993) (where ing Jewish culture) market, and applying a likeli-
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hood-of-confusion inquiry to determine whether existed at the time the intervening use (i.e., CBI's FN5 Judaica products were “a natural expansion or con- use of CARNIVAL) commenced. See Viking tinuation of [plaintiff's] existing product line”). Boat Co., Inc. v. Viking Camper Supply, Inc., 191 U.S.P.Q. 297, 303 (T.T.A.B.1976) (“[T]he question FN4. The likelihood-of-confusion test, of natural expansion must be viewed not in light of when applied at this stage in order to de- present trade practices but rather what they were in termine priority where there are issues of 1961 when [the intervening user] began to do busi- related use, does not substitute for the like- ness under the mark ‘VIKING’.”). We conclude lihood-of-confusion test that controls that there are genuine issues of material fact wheth- whether infringement of the plaintiff's er it would have been natural in 1990 for Mariscos trademark is occurring or has occurred. to expand into seafood gumbo and chicken gumbo, These are two independent inquiries. Once and in 1992 for Mariscos to expand into shrimp priority in the use of a mark for a particu- cakes, crawfish cakes, lobster cakes, and crab lar class of goods or services has been es- cakes. Stated another way, we conclude that there tablished, then it is necessary to perform are genuine issues of material fact whether there the likelihood-of-confusion test, as of the was a likelihood of confusion stemming from CBI's current time and as between the plaintiff's use of the CARNIVAL brand in 1990 in connection current products (i.e., those that inherit the with seafood gumbo and chicken gumbo, and in priority with respect to the previously used 1992 in connection with shrimp cakes, crawfish mark) and the allegedly infringing cakes, lobster cakes, and crab cakes. products of the defendant, to determine whether the plaintiff ultimately prevails in FN5. Because there are really two separate a trademark infringement litigation. See instances of intervening use, we look both Viking Boat Co., Inc. v. Viking Camper at 1990 (when CBI began selling chicken Supply, Inc., 191 U.S.P.Q. 297, 302-03 gumbo and seafood gumbo) and 1992 (T.T.A.B.1976) (distinguishing between (when CBI began selling shrimp cakes, the relevance of the likelihood- crawfish cakes, lobster cakes, and crab of-confusion test at the priority stage and cakes). at the stage of determining current confu- sion). [8][9][10] We begin with the first factor of the sev- en-factor test. The strength of a mark depends on [6][7] The seven factors that this Circuit uses for the logical correlation between a name and a determining the likelihood of confusion are (1) the product. Freedom Savings, 757 F.2d at 1182. If the type of mark; (2) the similarity of the two marks; seller of a product or service would naturally use a (3) the similarity of the goods; (4) the identity of particular name, it is weakly protected. Id. The rela- customers and similarity of retail outlets, *1312 tionships between names and products fall into sev- sometimes called the similarity of trade channels; eral classifications: generic, descriptive, suggestive, (5) the similarity of advertising; (6) the intent, i.e., arbitrary or fanciful, and coined. Id. CARNIVAL good or bad faith, of the alleged infringer; and (7) would be arbitrary or fanciful as compared to raw evidence of actual confusion, if any. Tally-Ho, 889 shrimp because it is “a word in common usage ap- F.2d at 1027; Freedom Sav. & Loan Ass'n v. Way, plied to a service unrelated to its meaning.” Id. at FN6 FN7 757 F.2d 1176, 1182 (11th Cir.), cert. denied, 474 1183 n. 5. Second, the marks are identical. U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1985). Of Third, although, on the one hand, raw shrimp is cer- course, when we use this test to analyze a priority tainly different from seafood gumbo and shrimp question, we must consider the state of events that cakes, crawfish cakes, lobster cakes, and crab
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cakes; on the other hand, all of these are food “the Perdue chicken company cannot pre- FN8 products and are related to seafood. The very vent another's use of the PERDUE mark existence of the “related goods” or “natural expan- for chicken pot pies, the Dole citrus com- sion” doctrine contemplates that the goods need not pany cannot prevent another's use of the be exactly alike, and that the senior user may reas- DOLE mark for pineapple ice cream, and onably expand into related goods. Cf. J.C. Penney the Chiquita banana company cannot pre- Co., Inc. v. Security Tire & Rubber Co., Inc., 382 vent another's use of the CHIQUITA mark F.Supp. 1342, 1344 (E.D.Va.1974) (holding that for banana cream pie.” Appellant's Initial under the natural expansion doctrine, plaintiff's pri- Brief at 27. ority that came from using the *1313 mark “SCAT-TRAC” in connection with bicycle tires ex- The fourth factor involves the identity of pur- tended to automobile tires, even though plaintiff did chasers and similarity of retail outlets. The evid- not actually start using “SCAT-TRAC” for auto- ence before the district court indicated that Mar- mobile tires until after other parties did so). iscos sold its raw shrimp to distributor Ludwig, who in turn sold it to retail outlets and wholesalers FN6. On the other hand, the strength of the including grocery stores (e.g., Winn Dixie and Gi- CARNIVAL mark is diminished somewhat ant), fish stores, and restaurants (e.g., Red Lobster by the fairly frequent use of the CARNI- and King Fish), which in turn would sell it to end VAL mark by third parties in other mar- consumers in piles of raw shrimp behind seafood kets, as demonstrated by defendant CBI. counters (or, in the case of restaurants, would pre- See Sun Banks of Fla. v. Sun Fed. Sav. & sumably incorporate it into a prepared dish). The Loan Ass'n, 651 F.2d 311, 316 (5th evidence indicated that the name CARNIVAL was Cir.1981) (noting that the use of the word used in connection with these sales to retail outlets “Sun” by third parties in other lines of and wholesalers, but not that the word CARNIVAL business tended to reduce the strength of was used at any further stage in the distribution FN9 the “SUN” mark with respect to financial chain. There is nothing to suggest that end services). users would have associated the CARNIVAL brand name with the high-quality raw shrimp sold by FN7. Some evidence indicates that during Mariscos. CBI sold its seafood gumbo, and later, its its formative years, CBI used shrimp cakes, crawfish cakes, lobster cakes, and “CARNIVAL CAJUN CLASSICS” rather crab cakes, directly to retail outlets where those than “CARNIVAL.” Although CARNI- products would generally be purchased by end VAL CAJUN CLASSICS is different from users while still in the packaging marked CARNI- FN10 CARNIVAL, the word “carnival” is the VAL. It would be unlikely for any confusion most prominent identifying feature in the of source or sponsorship to arise at the level of the former. CBI has not argued to this Court end user, since the end user would never see the that the presence of the additional words CARNIVAL mark used in connection with Mar- “cajun classics” prior to 1992 undermined iscos' high-quality raw shrimp. Rather, any possible the similarity, though CBI does contend confusion could arise only at the level of the retail- that references on its packaging to Louisi- ers or wholesalers who purchased Mariscos' shrimp ana separate its mark apart. in boxes bearing the name CARNIVAL, and also were in the market for CBI's products. FN8. As aptly noted in CBSC's brief, CBI's reasoning emphasizing the distinction FN9. At oral argument, counsel for CBSC between shrimp and seafood gumbo could asserted that the CARNIVAL mark accom- lead to untenable distinctions such as that
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panied the piles of raw shrimp that were products for resale.” An inference can be displayed in grocery stores and fish mar- drawn from this affidavit that some food kets for retail sale to end users. Counsel service establishments might sell CBI's also informed us that Mariscos had sold products to the ultimate consumer without some shrimp in retail packaging bearing the CARNIVAL label affixed thereto. the CARNIVAL name. Counsel for CBI However, the primary way in which CBI's contended in his rebuttal that these state- products appear to have reached the public ments lacked factual support in the record. is sales to grocery stores followed by sales We have reviewed the summary judgment to end users with the CARNIVAL name record, and find the following. First, there still attached. is no evidence that the CARNIVAL mark accompanied the piles of raw shrimp sold The district court acknowledged that “there may be at retail. Second, while there is evidence to some overlap between customers of the Plaintiff the effect that some shrimp were sold by and the Defendant,” but explained that “such over- Mariscos in one-pound retail packaging lap would be limited to a situation in which a gro- bearing the CARNIVAL name, the same cery store purchased boxes of the Plaintiff's raw evidence indicates that said retail pack- shrimp from Ludwig to sell in the fresh fish depart- aging began in or around 1996, either at ment and that same grocery store purchased the De- the initiative of CBSC after it was assigned fendant's prepackaged, prepared foods for resale to Mariscos' rights, or only a few months be- consumers in the frozen food department.” District fore the Mariscos Assignment. In either Court Order at 17. The court continued that “[t]his event, retail packaging and the resultant type of overlap is insignificant to the Court's likeli- exposure of retail consumers to the CAR- hood of *1314 confusion analysis, in the absence of NIVAL name is not relevant to our analys- evidence which conflicts with the Defendant's char- is of priority because we must focus on the acterization of its primary customers as consumers state of events that existed in 1990 and and not resellers of any kind.” Id. 1992. See Viking Boat, 191 U.S.P.Q. at Somewhat contrary to the district court opinion, the 303 (“[T]he question of natural expansion case law indicates that confusion at pre-end con- must be viewed not in light of present sumer stages of the distribution process may be ac- trade practices but rather what they were in tionable. See Yarmuth-Dion, Inc. v. D'ion Furs, 1961 when [the intervening user] began to Inc., 835 F.2d 990, 994 (2d Cir.1987) (where de- do business under the mark ‘VIKING’.”). signer who made fur coats sold them to department FN10. The affidavit of CBI's principal stores who then marketed them to end customers said, “I have always sold Louisiana Creole without the designer's identifying mark, it was error or Cajun specialties that are prepared, pre- for district court to focus exclusively on the retail packed, ready-to-eat specialty food market (in which department store patrons would products.... I have always packaged my not recognize the designer's mark and therefore Carnival Brands New Orleans prepared there would be no likelihood of confusion) because food products in retail-type packaging. I the wholesale market (i.e., the possibility of confu- also offer the identical products in food sion among the department stores who bought the service quantity but always under the same fur coats for resale) was relevant); Russ Berrie & name. My products are not meant to be re- Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980, packaged after sale and I am not aware of a 990 (S.D.N.Y.1980) (holding that where defendant single person or entity repackaging my did not affix the mark to its product and therefore
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the end consumer was never made aware of the the unrebutted evidence suggests that he adopted mark, but defendant promoted the mark to whole- the name to evoke the spirit of the Mardi Gras fest- salers, “[t]here is no reason in law or equity why ivities in New Orleans, a city whose culture was [plaintiff] would not be entitled to forestall confu- closely associated with the cuisine of his product. sion at the wholesale level. The test of course is Seventh, there is no evidence of actual confusion in FN13 whether one-in this case a retailer-who had seen the relevant time frame, i.e., 1990. [plaintiff's] product under the mark [in question], would later know the difference when presented FN12. The declaration of James Rukin, with an identical [product] offered to him under the Mariscos' principal, indicates that Mariscos [confusingly similar mark].”). The forecast of evid- engaged in some advertising of its high- ence indicates at least some degree of overlap quality raw shrimp but fails to give specif- between the type of customers, i.e., grocery chains, ic facts in this regard. restaurants, etc., who bought from Mariscos and FN13. It is at this point that the distinction CBI. While it may ultimately turn out that no such between performing the likelihood- overlap existed, and/or that there was no likelihood of-confusion test for purposes of determin- of confusion, we cannot say based on the current ing priority via the natural expansion the- status of the record that there is no genuine issue of ory, on the one hand, and performing the material fact on this point. We are hampered in our likelihood-of-confusion test for purposes attempted review in this regard because the district of determining whether current infringe- court's analysis of the potential confusion at this ment has occurred, on the other hand, be- wholesale level was limited to the cursory state- FN11 comes highly significant. The former test ments quoted above. focuses on the time frame when the inter- FN11. On remand, the parties may wish to vening use began to occur-in this case, explore whether the purchasing agents of 1990, when CBI began doing business un- the commercial institutions buying Mar- der the CARNIVAL name with respect to iscos' shrimp were likely to be sophistic- chicken gumbo and seafood gumbo, and ated businesspeople who would not be eas- 1992, with respect to shrimp cakes, craw- ily confused by the dual use of the CAR- fish cakes, lobster cakes, and crab cakes. NIVAL mark. Indeed, the case law and See Viking Boat, 191 U.S.P.Q. at 303 commentary indicate that this is frequently (“[T]he question of natural expansion must the case with respect to conflicting marks be viewed not in light of present trade in wholesale markets. See Electronic Data practices but rather what they were in 1961 Sys. Corp. v. EDSA Micro Corp., 23 when [the intervening user] began to do U.S.P.Q.2d 1460, 1465 (T.T.A.B.1992); 3 business under the mark ‘VIKING’.”). McCarthy §§ 23:101, 23:102. Thus, the various instances of actual con- fusion occurring at the FMI Show in Fifth, the evidence showed little with respect to ad- Chicago and at the San Francisco trade vertising by either party in the critical time frame of show in 1997 are not relevant. FN12 1990, so the fifth factor is neutral in impact. Sixth, there is no evidence in the record that would *1315 Based on the totality of these factors, we indicate bad faith on the part of CBI's principal in conclude that there are genuine issues of material his decision to use the name CARNIVAL or CAR- fact regarding the likelihood of confusion of source, NIVAL CAJUN CLASSICS when he started doing sponsorship, or affiliation with respect to Mariscos' business as a sole proprietorship in 1990. Rather, product compared to CBI's product, at the time CBI began doing business, and two years thereafter
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when it began to sell processed seafood products who were also in the market buying CBI's other than gumbo. Cf. Tally-Ho, 889 F.2d at 1027 products bearing the same CARNIVAL (senior use of “You and the Law” mark in connec- mark. tion with the title of an instructional television series in the educational telecourse market extended B. Hi-Seas Assignment to the broadcast cable television market, because it was reasonable for consumers to be confused as to [11] Second, plaintiff CBSC may have obtained the relationship between the two users). The first rights in the CARNIVAL mark through the Hi-Seas and second factors-the strength of the mark and the Assignment. Because CBSC stepped into Hi-Seas' similarity of the marks-clearly weigh in favor of shoes, CBSC's priority depends on the priority as CBSC. The fifth factor-advertising-is neutral. The between Hi-Seas and CBI. Hi-Seas began using the sixth and seventh factors-intent and actual confu- CARNIVAL mark in June 1992 for fresh frozen sion-weigh in favor of CBI. With respect to the shrimp, cooked shrimp, breaded shrimp, cooked third factor-the similarity of the goods-raw shrimp crawfish, and breaded alligator. At that time, CBI and seafood gumbo are not so dissimilar that confu- had been operating since 1990 as an unincorporated sion is unlikely; the likelihood of confusing the in- sole proprietorship, and had been selling chicken stant goods would seem to depend upon the other gumbo and seafood gumbo. However, at that time, relevant factors, including the context in which the CBI had not yet expanded into other processed sea- FN15 potential victim of confusion comes into contact food products. with the goods (which implicates the fourth FN14 factor). However, as we have seen, the other FN15. CBI expanded into other processed relevant factors are closely balanced, and there are seafood products, in particular shrimp genuine issues of material fact with respect to the cakes, crawfish cakes, lobster cakes, and fourth factor, the similarity of trade channels. In crab cakes, in December 1992. this particular case, we believe that the appropriate resolution of the remaining genuine issues of fact Because CBI was using the CARNIVAL mark be- may be crucial to a proper disposition of this case; fore Hi-Seas with respect to a different good, prior- and we believe that further analysis by the district ity as between CBI and Hi-Seas turns on the same court in the first instance is appropriate. “natural expansion” concept that was explored supra in the context of Mariscos' priority and the FN14. For example, when a retail customer Mariscos Assignment. That is, CBI is unquestion- in a grocery store sees a pile of raw shrimp ably the senior user with respect to seafood gumbo at the fish counter, with no brand name at and chicken gumbo. The senior user's, i.e., CBI's, all, there is little likelihood that such end priority “may extend into uses in ‘related’ product user would confuse the source or sponsor- or service markets,” i.e., the market for the products ship of the raw shrimp with that of CBI's sold by Hi-Seas, because a trademark owner has packaged seafood gumbo or shrimp cakes protection “against the use of its mark on any (bearing the CARNIVAL mark) even product or service which would reasonably be though located in another part of the same thought by the buying public to come from the store. On the other hand, depending upon *1316 same source, or thought to be affiliated with, factors not yet analyzed by the district connected with, or sponsored by, the trademark court, there may be a likelihood of confu- owner.” Tally-Ho, 889 F.2d at 1023 (internal quota- sion at the level of the retailers or whole- tion marks omitted). If Hi-Seas' product was one in- salers who purchased Mariscos' shrimp in to which CBI could have naturally expanded, then boxes bearing the name CARNIVAL, and CBI could have enjoined Hi-Seas at that time, and
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CBI would have priority. The issue is whether- the mark CARNIVAL, we vacate. The order grant- when Hi-Seas started using the CARNIVAL mark ing summary judgment is vacated and the cause is in June 1992 for fresh frozen shrimp, cooked remanded for further proceedings in accordance shrimp, breaded shrimp, cooked crawfish, and with this opinion. breaded alligator-there was a likelihood of confu- sion as between Hi-Seas' products and CBI's sea- VACATED AND REMANDED. food gumbo which had been sold under the CAR- C.A.11 (Fla.),1999. NIVAL mark since 1990. The existence of such Carnival Brand Seafood Co. v. Carnival Brands, likelihood of confusion, in turn, is determined by Inc. applying the familiar seven-factor test to Hi-Seas 187 F.3d 1307, 51 U.S.P.Q.2d 1929, 12 Fla. L. and CBI as of June 1992. Weekly Fed. C 1280 The district court disregarded the Hi-Seas Assign- END OF DOCUMENT ment on the ground that “[a]ny rights received by Plaintiff via the assignment are legally insignificant ... because [the record] indicates that Hi-Seas' rights to the mark extended back only to June 10, 1992 .... [and] [h]aving used the ‘Carnival’ mark since 1990 in connection with the manufacture and sale of sea- food gumbo and chicken gumbo, the Defendant's rights in the mark are senior to those assigned by Hi-Seas to the Plaintiff.” District Court Order at 8 n. 4. This ruling implicitly assumes that the natural expansion or related goods doctrine operated to ex- tend CBI's priority from the seafood gumbo market to the market for the products sold by Hi-Seas. However, there is nothing in the district court's or- der to suggest that it applied the seven-factor test in analyzing this question, as directed by Tally-Ho, and we are not inclined to do so for the first time on appeal. Thus, on remand, the district court should conduct further proceedings, e.g., perform the prop- er analysis to decide whether there is any genuine issue of material fact as to whether the priority gen- erated by CBI's senior use extended to give CBI priority in the use of the CARNIVAL mark in con- nection with the products sold by Hi-Seas.
IV. CONCLUSION
Because we have determined that on this record, genuine issues of material fact remain outstanding regarding whether plaintiff CBSC may have de- rived priority (via either the Mariscos Assignment or the Hi-Seas Assignment) in the subject uses of
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382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of United States Court of Appeals, Relief Eleventh Circuit. 382Tk1714(1) k. In General. Most CONAGRA, INC., a corporation, Plaintiff-Appel- Cited Cases lant, (Formerly 382k870(2), 382k870.1 Trade Regu- v. lation) Robert C. SINGLETON, an individual, d/b/a In order to merit injunctive relief under section of SINGLETON SHRIMP BOATS, Singleton Shrimp Lanham Act prohibiting false designation of origin, Boats, Inc., a corporation, Defendants-Appellees. plaintiff must show that it has trademark rights in No. 83-3037. mark or name at issue and that defendant adopted mark or name that was same, or confusingly similar Oct. 11, 1984. to plaintiff's mark, such that there was likelihood of Successor in interest in shrimp processing business confusion for consumers as to proper origin of brought action against predecessor's son alleging goods created by defendant's use of name in his trademark infringement based on son's use of fam- trade. Lanham Trade-Mark Act, § 43(a), 15 ily name in business that was unrelated but similar U.S.C.A. § 1125(a). to business father had established and which also [2] Trademarks 382T 1419 used family name. The United States District Court for the Middle District of Florida, William J. 382T Trademarks Castagna, J., granted successor partial relief and 382TVIII Violations of Rights fashioned injunction prohibiting son from using la- 382TVIII(A) In General bels that were copies from product labels belonging 382Tk1418 Practices or Conduct Prohib- to plaintiff, and plaintiff appealed. The Court of ited in General; Elements Appeals, R. Lanier Anderson, III, Circuit Judge, 382Tk1419 k. In General. Most Cited held that: (1) family surname had acquired second- Cases ary meaning as designation of father's shrimp pro- (Formerly 382k870(2), 382k870.1 Trade Regu- cessing business, and therefore, successor acquired lation) trademark in name which it could assert against al- Use of another's unregistered, that is, common-law leged infringing use; (2) likelihood of confusion ex- trademark can constitute violation of section of isted between plaintiff and defendant's marks; (3) Lanham Act prohibiting false designation or origin father did not abandon mark; and (4) doctrine of where alleged unregistered trademarks used by laches was not available to son in connection with plaintiff are so associated with its goods that use of the sale of processed shrimp. same or similar marks by another company consti- tutes false representation that its goods came from Reversed and remanded with instructions. same source. Lanham Trade-Mark Act, § 43(a), 15 West Headnotes U.S.C.A. § 1125(a).
[1] Trademarks 382T 1714(1) [3] Trademarks 382T 1042
382T Trademarks 382T Trademarks 382TIX Actions and Proceedings 382TII Marks Protected 382TIX(F) Injunctions 382Tk1040 Names as Marks
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382Tk1042 k. Persons, Names Of. Most quisition of business by current owner, market sur- Cited Cases veys revealed that surname was strongly identified (Formerly 382k34 Trade Regulation) with products of business; thus, when current own- Where alleged trademark was surname, trademark er acquired business, it acquired trademark rights in laws protected plaintiff's right to exclusive use of name which it could assert against allegedly in- name only to extent that name had acquired second- fringing users. ary meaning. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [6] Trademarks 382T 1081
[4] Trademarks 382T 1042 382T Trademarks 382TIII Similarity Between Marks; Likelihood 382T Trademarks of Confusion 382TII Marks Protected 382Tk1081 k. Factors Considered in General. 382Tk1040 Names as Marks Most Cited Cases 382Tk1042 k. Persons, Names Of. Most (Formerly 382k870(2), 382k870.1 Trade Regu- Cited Cases lation) (Formerly 382k10 Trade Regulation) Likelihood of confusion for purposes of section of Factors to consider in determining whether surname Lanham Act prohibiting false destination of origin has acquired secondary meaning entitling it to is determined by analysis of number of factors, in- trademark protection are: length and manner of its cluding strength of plaintiff's mark; similarity use; nature and extent of advertising and promo- between plaintiff's mark and allegedly infringing tion; efforts made by plaintiff to promote conscious mark; similarity between products and services connection in public's mind between name and offered by plaintiff and defendant, similarity of ad- plaintiff's product or business; and extent to which vertising methods, defendant's intent, and proof of public actually identifies name with plaintiff's actual confusion. Lanham Trade-Mark Act, § 43(a), product or venture. 15 U.S.C.A. § 1125(a).
[5] Trademarks 382T 1628(2) [7] Trademarks 382T 1086
382T Trademarks 382T Trademarks 382TIX Actions and Proceedings 382TIII Similarity Between Marks; Likelihood 382TIX(C) Evidence of Confusion 382Tk1620 Weight and Sufficiency 382Tk1083 Nature of Confusion 382Tk1628 Secondary Meaning 382Tk1086 k. Actual Confusion. Most 382Tk1628(2) k. Particular Cases. Cited Cases Most Cited Cases (Formerly 382k870(2), 382k870.1 Trade Regu- (Formerly 382k587 Trade Regulation) lation) Secondary meaning of surname and its clear identi- fication with shrimp packing business was estab- Trademarks 382T 1096 lished, where shrimp processing company had 382T Trademarks prominently displayed surname on virtually all of 382TIII Similarity Between Marks; Likelihood its seafood products for over 25 years, had expen- of Confusion ded over $400,000 annually in worldwide markets 382Tk1093 Relationship Between Marks in its promotion of name, promotional efforts were 382Tk1096 k. Particular Marks, Similarity consciously directed at establishing surname trade- or Confusion Involving. Most Cited Cases mark in its relationship to business, and prior to ac-
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(Formerly 382Tk1096(1), 382k870(2), 150k84 k. Application of Doctrine in Gener- 382k870.1 Trade Regulation) al. Most Cited Cases Laches is equitable doctrine committed to sound Trademarks 382T 1526 discretion of district court and it depends on careful balancing of several factors. 382T Trademarks 382TVIII Violations of Rights [10] Trademarks 382T 1171 382TVIII(D) Defenses, Excuses, and Justific- ations 382T Trademarks 382Tk1521 Justified or Permissible Uses 382TV Duration and Termination of Rights 382Tk1526 k. Use of Own Name. 382Tk1167 Evidence Most Cited Cases 382Tk1171 k. Weight and Sufficiency. (Formerly 382k870(2), 382k870.1 Trade Regu- Most Cited Cases lation) (Formerly 382k585 Trade Regulation) Defendant adopted business name confusingly sim- Defense of abandonment of trademark is one re- ilar to plaintiff's trademark, where most distinctive quiring strict proof. aspect of defendant's business name was his sur- name, which was identical to plaintiff's mark, and [11] Trademarks 382T 1165 customers and people in seafood trade actually con- 382T Trademarks fused defendant's business with that of plaintiff. 382TV Duration and Termination of Rights Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 382Tk1162 Use by Others 1125(a). 382Tk1165 k. Objections; Laches, Acqui- [8] Trademarks 382T 1207 escence, and Delay. Most Cited Cases (Formerly 382k73 Trade Regulation) 382T Trademarks Permitted infringement on mark holder's exclusive 382TVI Nature, Extent, and Disposition of rights for some period of time does not constitute Rights nonuse of marks sufficient to support abandonment 382Tk1202 Licenses of trademark. 382Tk1207 k. Implied Licenses. Most Cited Cases [12] Trademarks 382T 1164 (Formerly 382k73 Trade Regulation) 382T Trademarks Acquiescence in use of trade name is analogous to 382TV Duration and Termination of Rights implied license to use name which generally can be 382Tk1162 Use by Others revoked at will of licensor. 382Tk1164 k. Permission; Voluntary Ar- [9] Equity 150 67 rangements. Most Cited Cases (Formerly 382k73 Trade Regulation) 150 Equity Where trademark holder's predecessor in interest 150II Laches and Stale Demands evidenced no intent to abandon mark, but rather, 150k67 k. Nature and Elements in General. used mark continuously and widely for 25 years Most Cited Cases preceding litigation, trademark was not abandoned even though trademark was family name and prede- Equity 150 84 cessor in interest had allowed his son's use of fam- ily name in unrelated but similar business. 150 Equity 150II Laches and Stale Demands [13] Equity 150 72(1)
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150 Equity 382Tk1533 Delay in Assertion of Rights; 150II Laches and Stale Demands Laches 150k68 Grounds and Essentials of Bar 382Tk1535 k. Knowledge of Facts. 150k72 Prejudice from Delay in General Most Cited Cases 150k72(1) k. In General. Most Cited (Formerly 382k386 Trade Regulation) Cases Laches defense was not available in trademark in- Laches defense requires proof of three elements: fringement action based on son's use of family delay in asserting right or claims; that delay was name in sale of processed shrimp, where father had not excusable; and that delay caused defendant un- established similar business, family name was due prejudice. trademark of father's business, and father did not become aware of son's direct competition in pro- [14] Trademarks 382T 1534 cessed shrimp market until after lawsuit began. *1510 Thomas T. Steele, Tampa, Fla., for plaintiff- 382T Trademarks appellant. 382TVIII Violations of Rights 382TVIII(D) Defenses, Excuses, and Justific- Jeffrey L. Myers, Largo, Fla., for defendants-ap- ations pellees. 382Tk1533 Delay in Assertion of Rights; Laches 382Tk1534 k. In General. Most Cited Appeal from the United States District Court for the Cases Middle District of Florida. (Formerly 382k385.1, 382k385 Trade Regula- Before HILL and ANDERSON, Circuit Judges, and tion) TUTTLE, Senior Circuit Judge. Court determining whether doctrine of laches es- tops plaintiff from asserting its rights to trademark must consider public's interest in trademark as def- R. LANIER ANDERSON, III, Circuit Judge: inite designation of single source of goods. This case presents a somewhat unique issue regard- [15] Trademarks 382T 1534 ing a son's right to use a family name in a business that is unrelated, but similar to the business his 382T Trademarks father had established. Conagra, Inc. appeals from 382TVIII Violations of Rights the district court's ruling on its claim to enjoin the 382TVIII(D) Defenses, Excuses, and Justific- defendants, Singleton Shrimp Boats, Inc. and FN1 ations Robert C. Singleton, from using the Singleton 382Tk1533 Delay in Assertion of Rights; name in the shrimp trade. Conagra, as a successor Laches in interest to the trademark rights of Singleton 382Tk1534 k. In General. Most Cited Packing Corporation, brought the instant action un- Cases der § 43(a) of the Lanham Act (15 U.S.C. § 1125), (Formerly 382k386 Trade Regulation) Florida's common law of unfair competition, and Fla.Stat. § 495.151, which prohibits unfair competi- Trademarks 382T 1535 tion and dilution of an established trade name. The 382T Trademarks district court granted Conagra partial relief and 382TVIII Violations of Rights fashioned an injunction prohibiting the defendants 382TVIII(D) Defenses, Excuses, and Justific- from using labels that were copied from the product ations labels belonging to Singleton Packing. On this ap- peal, we consider whether the court's remedy was
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adequate protection for Conagra's trademark rights Shrimp Boats. Robert C. Singleton is also the son in light of the evidence adduced at trial. of Henry C. Singleton, the founder of Singleton Packing and Conagra's predecessor in interest in FN1. We will hereinafter primarily refer to that corporation. Singleton Shrimp Boats is en- the individual defendant, Robert C. gaged in the wholesale and retail marketing of fresh Singleton, in discussing the actions of or and processed shrimp products in Florida. At the positions asserted collectively by both de- time this litigation began, Singleton Shrimp Boats fendants. had annual sales in the area of $2,000,000 a year.
Conagra filed the instant lawsuit in June of 1981, I. FACTS after it had failed to negotiate a settlement regard- Henry C. Singleton, Sr. began selling shrimp over ing the defendant's continued use of the Singleton 25 years ago in Tampa, Florida. The business was name. Conagra claimed that the Singleton name, al- incorporated as Singleton Packing Corp., which though not registered as a trademark, had acquired through the years has engaged in procuring, pack- secondary meaning among consumers of seafood ing, and processing shrimp. Although Singleton products, and thus was entitled to protection under Packing sells some unprocessed and unlabeled the trademark laws. Because the defendants were products to a variety of customers, its primary subsequent users of the name, Conagra sought to product line consists of processed seafood products, prohibit the defendant's prominent display of the which it markets either directly to large food ser- name in connection with Singleton Shrimp Boats' vice customers or through independent food brokers business. around the world. In the years preceding this litiga- Robert C. Singleton defended primarily on the tion, Singleton Packing achieved annual sales of grounds that Henry C. Singleton and Singleton over $100,000,000 and was spending $400,000 a Packing had acquiesced in his use of the Singleton year on advertising and promotion. It ranks as the name in connection with his business. He argued to largest packer-processor of shrimp in the *1511 the district court that he had been selling fresh United States. With the exception of its sales of shrimp and shrimp products since 1972, first from a fresh or unprocessed shrimp, all of Singleton Pack- retail outlet under the name Singleton Seafood Cen- ing's products are distributed with labels promin- ter, and later through the defendant corporation. As ently displaying the Singleton name. further proof of acquiescence, Robert C. Singleton Conagra, through a subsidiary corporation, acquired argued that his father knew of his activities in the the operating assets and business of Singleton Pack- shrimp business and, rather than objecting to his ing from Henry C. Singleton on January 9, 1981. use of the Singleton name, had encouraged the son's Under the purchase contract, Singleton transferred business by selling shrimp to Singleton Shrimp to Conagra all rights, title, and interest in and to Boats under a steadily increasing line of credit. any trademarks, trade names, and good will associ- The district court held that the defendant could con- ated with Singleton Packing. tinue to use the Singleton name in the shrimp trade. Singleton Shrimp Boats is a Florida corporation, or- The court first found that the name had not acquired ganized in 1978 with its principal place of business secondary meaning to consumers. Alternatively, it in Pinellas County, Florida, across the Bay from found that Singleton Packing Company had acqui- Singleton Packing's headquarters in Tampa. Robert esced in Robert C. Singleton's use of the name in C. Singleton, the individual defendant, is a founder, the shrimp trade. Finally, with respect to the labels chief executive, and principal owner of Singleton which Robert C. Singleton admitted copying from Singleton Packing, the district court found that the
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defendant's use of the copied labels created a likeli- laches issue, and affording greater protection to Co- hood of confusion, and the court enjoined the de- nagra's trademark rights in the Singleton name than fendant from using those labels on the processed was granted in the court's previous order. shrimp products of Singleton Shrimp Boats. III. DISCUSSION II. INTRODUCTION
The defendant has not cross-appealed the district A. Conagra Has An Interest in the Singleton Name court's judgment enjoining use of the copied labels. that Entitles it to Protection Under the Trademark Thus, we consider only Conagra's claim that the Laws district court's refusal to enjoin the defendant's use [1] Our cases have established two elements that of the Singleton name failed to adequately protect Conagra had to prove to merit injunctive relief un- Conagra's right to exclusive use of that name in the FN2 der § 43(a) of the Lanham Act: (1) that it has shrimp trade. Conagra argues that the district trademark rights in the mark or name at issue-i.e., court's findings-(1) that the Singleton name had not Singleton, see, e.g., Citibank, N.A. v. Citibanc acquired secondary meaning, and (2) that Singleton Group, Inc., 724 F.2d 1540, 1545 (11th Cir.1984); Packing had acquiesced in the defendant's use of and (2) that the defendant adopted a mark or name the name-were clearly erroneous. that was the same, or confusingly similar to the We first evaluate the secondary meaning issue and plaintiff's mark, such that there was a likelihood of determine that the district court's finding on this is- confusion for consumers as to the proper origin of sue was contrary to the strong evidence in the re- the goods created by the defendant's use of the cord. We further conclude that Conagra established Singleton name in his trade. See, e.g., id. at 1547; facts that entitled it to greater protection for its ex- Jellibeans, Inc. v. Georgia Skating Clubs, Inc., 716 clusive use of the Singleton name than was af- F.2d at 839-46; John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 981 (11th forded by the district court's order. FN3 Cir.1983). *1512 We next consider the affirmative defense of acquiescence. Because the district court did not FN2. Section 43(a) provides in pertinent specify findings relating to either of the two doc- part: trines argued by the defendant, abandonment or Any person who shall fix, apply, or an- laches leading to equitable estoppel, we look at nex, to any container or containers for those doctrines. We conclude that the defendant goods, a false designation of origin, or presented insufficient evidence to carry the burden any false description or representation, on the abandonment issue. We also conclude that including words or other symbols intend- the laches defense cannot support the defendant's ing to falsely describe or represent the continued use of the Singleton name in connection same ... shall be liable to a civil action with the sale of processed shrimp. However, the de- by any person doing business in the loc- fendant may have established a laches defense with ality falsely indicated as that of origin ... regard to his use of the Singleton name in connec- or by any person who believes that he is tion with the sales of fresh shrimp, and therefore we or is likely to be damaged by the use of remand to the district court for further proceedings any such false description or representa- on this aspect of the laches defense. Accordingly, tion. we leave it to the district court to fashion an appro- priate remedy, consistent with its finding on the 15 U.S.C. § 1125(a). In essence, Cona-
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gra's claim in this litigation is that the the shrimp trade, there is no dispute that Conagra defendant's use of the Singleton name in purchased the full trademark rights to the name that the shrimp business is a false designation belonged to Henry C. Singleton and Singleton of the origin of the defendant's goods be- Packing, whatever those rights might be. Although cause consumers would be led to believe the Singleton name was not registered, the use of either that the defendant's products were another's unregistered, i.e., common law, trademark produced by Singleton Packing, or that “can constitute a violation of [§ 43(a) ] where Singleton Shrimp Boats and Singleton ...‘the alleged unregistered trademarks used by Packing were somehow affiliated. As *1513 the plaintiff are so associated with its goods such, Conagra states a claim similar to that the use of the same or similar marks by another those previously recognized as falling company constitutes a [false] representation that its within the scope of § 43(a). See, e.g., goods came from the same source.’ ” Boston Pro- Jellibeans, Inc. v. Skating Clubs of fessional Hockey Ass'n v. Dallas Cap & Emblem FN4 Georgia, Inc., 716 F.2d 833 (11th Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir.1975) Cir.1983); cf. Safeway Stores, Inc. v. (quoting Joshua Meier Co. v. Albany Novelty Mfg. Safeway Discount Drugs, Inc., 675 F.2d Co., 236 F.2d 144, 147 (2d Cir.1956)), cert. denied, 1160, 1163 (11th Cir.1982) (discussing 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975). standards for recovery under § 32(1)(a) Because Singleton is a surname, the trademark laws of the Lanham Act, a provision closely protect Singleton Packing's (and thus Conagra's) analogous to § 43(a)). For purposes of right to exclusive use of the name only to the extent this opinion, we draw no distinction that the name has acquired “secondary meaning.” between the cases relying upon § 43(a), See Chevron Chemical Co. v. Voluntary Purchasing which applies to unregistered but pro- Groups, 659 F.2d 695, 702 (5th Cir.1981) (the tectable marks, and § 32(a), which ap- trademark laws require proof of secondary meaning plies to registered marks. See Jellibeans, when the trademark is not sufficiently distinctive to Inc. v. Skating Clubs of Georgia, Inc., identify the product as tied to a specific producer, 716 F.2d at 839 n. 14. as in the case of a family surname; in such cases the courts require a showing that the public identifies FN3. Because of the similarity between the name with the producer as the source of the FN5 Conagra's claim under the Lanham Act and product). The district court's ruling, that the its state common law and statutory claims, Singleton name had not acquired secondary mean- see Safeway Stores, Inc. v. Safeway Dis- ing, is a finding of fact that we evaluate under the count Drugs, Inc., 675 F.2d 1160, 1167 clearly erroneous standard. See Brooks Shoe Mfg., (11th Cir.1982); Amstar Corp. v. Domino's Inc. v. Suave Shoe Corp., 716 F.2d 854, 860 (11th Pizza, Inc., 615 F.2d 252, 258 (5th Cir.), Cir.1983); Fed.R.Civ.P. 52. cert. denied, 449 U.S. 899, 101 S.Ct. 268, 66 L.Ed.2d 129 (1980), and because we FN4. In Bonner v. City of Prichard, 661 find for Conagra on its Lanham Act claim, F.2d 1206 (11th Cir.1981) (en banc), this we do not address the state law claims sep- court adopted as binding precedent all of arately. the decisions of the former Fifth Circuit handed down prior to the close of business on September 30, 1981. Id. at 1209. 1. Conagra's Right to the Singleton Name FN5. As noted in Original Appalachian [2][3] With respect to the first element, Conagra's Art Works, Inc. v. Toy Loft, Inc., 684 F.2d right to the exclusive use of the Singleton name in
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821, 831 n. 14 (11th Cir.1982), Chevron veloped by Singleton Packing, had been widely dis- Chemical is not binding authority in this played to brokers and retailers in the seafood busi- circuit because it was decided by a Unit A ness for over three years preceding the instant litig- panel of the former Fifth Circuit after Oc- ation. tober 1, 1981. See Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th FN6. Indeed, in his opening remarks to the Cir.1981) (en banc); Stein v. Reynolds Se- court below, counsel for the defendant curities, Inc., 667 F.2d 33, 34 (11th stated that “the name Singleton did, in fact, Cir.1982). Nevertheless, Chevron Chemic- obtain a secondary meaning.” Trial Tran- al is persuasive authority because it relies script at 21. We note this statement not as directly on former Fifth Circuit cases a binding concession by the defendants, cf. which are binding precedent on this court. Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 n. 9 (5th Cir.1980), but [4] The factors to consider in determining whether rather to emphasize that defense counsel a name such as Singleton has acquired secondary correctly perceived the strength of the meaning are: (1) the length and manner of its use; plaintiff's proof on this issue. (2) the nature and extent of advertising and promo- tion; (3) the efforts made by the plaintiff to promote Finally, on the fourth and most telling factor, there a conscious connection in the public's mind was ample evidence that Singleton Packing had between the name and the plaintiff's product or achieved the recognition for the Singleton name business; and (4) the extent to which the public ac- that it had sought. A representative of Conagra test- tually identifies the name with the plaintiff's ified*1514 that prior to the acquisition of Singleton product or venture. See Brooks Shoe Mfg., Inc. v. Packing, market surveys revealed that the Singleton Suave Shoe Corp., 716 F.2d at 860; Volkswagen- name was strongly identified with the products of werk Aktiengesellschaft v. Rickard, 492 F.2d 474, Singleton Packing. An independent broker testified 477-78 (5th Cir.1974). that he merely had to mention the Singleton name and customers knew that he was speaking of [5] In the instant case, the secondary meaning of Singleton Packing. Henry C. Singleton testified that the Singleton name and its clear identification with the Singleton name had achieved wide recognition FN6 Singleton Packing was hardly in dispute. The in the industry by 1970. Even the individual de- first three factors supporting a finding of secondary fendant, Robert C. Singleton, referred to Singleton meaning were clearly set forth in the record. Packing as “Singleton” and testified that the name Singleton Packing has prominently displayed the was recognized in the industry as referring to his Singleton name on virtually all of its seafood father's company. products for over 25 years. It expended over $400,000 annually in worldwide markets in its pro- By this uncontradicted evidence at trial, it is clear motion of the name. According to the current pres- that the Singleton name had acquired secondary ident of Singleton Packing, the promotional efforts meaning as the designation of the business of were consciously directed at establishing the Singleton Packing. The district court was clearly er- Singleton mark and its relationship to Singleton roneous in finding to the contrary. Thus, when Co- Packing's business. As an example, Conagra intro- nagra acquired Singleton Packing, it acquired trade- duced a promotional film, which tied the Singleton mark rights in the Singleton name, which it could name to the group of seafood products that assert against allegedly infringing users. Singleton Packing marketed. The film, which em- phasized the extensive efforts at quality control de- 2. Likelihood of Confusion
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We now turn to a consideration of the defendant's cord, do not undermine our conclusion that use of the name to determine whether it caused a a finding of likely confusion was com- likelihood of confusion, such that Conagra was en- pelled, and we do not address these factors titled to enjoin the defendant's continued use of the separately. name in connection with the shrimp trade. The dis- trict court, because of its findings on the secondary a. Similarity of the Marks meaning issue, did not have occasion to consider the likelihood of confusion question in the context FN7 [7] The distinctive aspect of the defendant's busi- of the defendant's general use of the name. Be- ness name, Singleton Shrimp Boats, is the name cause likelihood of confusion is a fact question, see Singleton, which of course is identical to the Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., plaintiff's mark. See, e.g., Safeway Stores, Inc. v. 716 F.2d at 840 & n. 16, we ordinarily would re- Safeway Discount Drugs, Inc., 675 F.2d 1160, mand for findings on this issue. In the instant case, 1165-66 (11th Cir.1982) (the business name however, the plaintiff's proof on this issue was so “Safeway Discount Center” or “Drugs” was found strong that any finding other than one of likely con- to infringe the trade name “Safeway; ” the words fusion would be clearly erroneous. Therefore, we “Discount Center” or “Discount Drugs” were found decide the issue. to be merely descriptive). The Singleton name is set out, apart from the words “Shrimp Boats,” on all of FN7. The district court did find a likeli- the defendant's trucks, signs, media advertising, and hood of confusion in the limited area of the business cards. We have no trouble concluding that defendant's use of the copied labels. the defendant has adopted a business name confus- [6] Likelihood of confusion for purposes of § 43(a) ingly similar to the plaintiff's mark. Cf. *1515Jelli- of the Lanham Act is determined by analysis of a beans, Inc. v. Skating Clubs of Georgia, Inc., 716 number of factors, including: (1) the strength of the F.2d at 841-42 (trade names “Jellibeans” and plaintiff's mark; (2) the similarity between the “Lollipops” were found to be confusingly similar); plaintiff's mark and the allegedly infringing mark; John H. Harland Co. v. Clarke Checks, Inc., 711 (3) the similarity between the products and services F.2d 966, 975-76 (11th Cir.1983) (upholding lower offered by the plaintiff and defendant; (4) the simil- court's finding that names “Memory Stub” and “Entry Stub” were found to be confusingly arity of the sales methods, i.e., retail outlets or cus- FN9 tomers; (5) the similarity of advertising methods; similar). (6) the defendant's intent, e.g., does the defendant FN9. With regard to the defendant's adop- hope to gain competitive advantage by associating tion of a nondescriptive name, such as his product with the plaintiff's established mark; Singleton, we note that the defendant's ac- and (7) the most persuasive factor on likely confu- tion generally would support a finding of sion is proof of actual confusion. See, e.g., Jelli- intent to trade on the reputation of the beans, Inc. v. Skating Clubs of Georgia, Inc., 716 plaintiff's business. See, e.g., Mortellito v. F.2d at 739-46. We find that the similarity between Nina of California, Inc., 335 F.Supp. 1288 the Singleton mark and the defendant's business (S.D.N.Y.1972). In the instant case, name, Singleton Shrimp Boats, and, most persuas- however, Robert C. Singleton was using ively, the proof that Conagra offered on actual con- his own name in the shrimp trade. In such fusion compelled a fact finding of likely FN8 a case, the courts are less likely to find in- confusion. tentional infringement. An individual gen- FN8. The remaining factors, although not erally will be given some opportunity to as overwhelmingly established in the re- use his own name and establish a reputa-
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tion for that name, even in the face of a Singleton Shrimp Boats did. In short, Conagra es- prior user's trademark rights in the name, tablished that customers and people in the seafood so long as the person using the name dis- trade actually confused the defendant's business tinguishes his business and use of the name with that of the plaintiff. from the business owning the trademark rights. See, e.g., Taylor Wine Co. v. Bully FN10. Singleton Shrimp Boats received Hill Vineyards, Inc., 569 F.2d 731, 735-36 calls from customers complaining about (2d Cir.1978). It appears from the record shrimp purchased from a grocery chain that Robert C. Singleton did make some at- that sold the products of Singleton Pack- tempt to disassociate Singleton Shrimp ing, not Singleton Shrimp Boats. Suppliers Boats from his father's business and devel- would often call Singleton Shrimp Boats op a reputation in the shrimp trade inde- attempting to sell them products under the pendent from Singleton Packing. Thus, al- assumption that Singleton Shrimp Boats though some facts in the case point to an was in fact Singleton Packing. Prospective intent on the part of Singleton Shrimp employees had contacted Singleton Shrimp Boats to ride on the coattails of Singleton Boats in response to “help wanted” ads Packing, i.e., copying the Singleton Pack- placed by Singleton Packing Corporation. ing labels, the evidence was not alone so Customers had made comments to the de- strong that the district court would have fendant that “Conagra had bought out” the been compelled to find that the defendant defendant's business, when in fact Conagra intended to infringe on the Singleton mark. purchased Singleton Packing. Finally, the Contrary to Conagra's assertion on appeal, defendant had received invoices billing the evidence on intent was not strong him for purchases that had been made by enough, by itself, to compel a finding of Singleton Packing. likely confusion. However, even without Conagra's proof of actual confusion resulting from proof of intent, the evidence on the simil- the defendant's use of a confusingly similar mark arity of the marks and the proof of actual was such strong evidence of likely confusion that confusion was strong enough to compel the district court could not have reasonably found such a finding. otherwise. Conagra thus established in the lower b. Actual Confusion court that it had a trademark right to the Singleton name, which preceded the defendant's use of that The most persuasive proof of likely confusion in name, and that the defendant's use of the name led the instant case was Conagra's proof of actual con- to a likelihood of confusion. Absent any justifica- fusion. See Safeway Stores, Inc. v. Safeway Dis- tion for the defendant's infringing use by way of count Drugs, Inc., 675 F.2d at 1166-67. In response some affirmative defense, Conagra was entitled to to interrogatories propounded by Conagra, the de- protection under § 43(a) of the Lanham Act against FN11 fendant reported numerous instances where people, the defendant's infringing use. sometimes customers, assumed that defendant's business was affiliated with, or actually was, FN11. This is not to say that Robert C. FN10 Singleton Packing. In addition, Conagra intro- Singleton must be totally foreclosed from duced evidence that it received inquiries from its use of his proper surname in the shrimp distributors about competing direct sales of business. Thus far we have considered Singleton products to restaurants and retailers; only the defendant's actual use of that Singleton Packing made no such direct sales, but name, i.e., the prominent display of the Singleton name accompanied only by the
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descriptive words “Shrimp Boats.” We 514, 524, 9 S.Ct. 143, 145, 32 L.Ed. 526 (1888) ( have found this use to be infringing. “where consent by the owner to use of his trade- However, as we have noted, see supra note mark by another is to be inferred from his know- 9, the courts have been reluctant to abso- ledge and silence merely, ‘it lasts no longer than the lutely prohibit an individual from using his silence from which it springs; it is, in reality, no proper name in connection with a business. more than a revocable license.’ ”). An implied li- The important consideration in this context cense is generally terminable at the will of the li- is whether the defendant can use the name censor. Id. See also, University of Pittsburgh v. in a fashion that will not lead to likely con- Champion Products, Inc., 686 F.2d 1040, 1045 (3d fusion with the plaintiff's business, for Cir.), cert. denied, 459 U.S. 1087, 103 S.Ct. 571, which the plaintiff has exclusive right to 74 L.Ed.2d 933 (1982); PGA v. Bankers' Life & use the Singleton trade name. We do not Casualty Co., 514 F.2d 665, 670 (5th Cir.1975) decide whether the defendant's use of his (once licensee's right to use the mark is terminated, full name, Robert C. Singleton, or use of any subsequent use constitutes infringement). To the Singleton name with some disclaimer continue in its use of the Singleton name sub- disavowing any affiliation with Singleton sequent to the mark holder's desire to terminate that Packing, would lead to likely confusion. use, the defendant bore the burden of establishing The district court is free to consider this is- one of the affirmative defenses of either abandon- sue on remand. ment or laches leading to equitable estoppel. See 3 R. Callman, The Law of Unfair Competition, Trade- marks and Monopolies § 79.1 (1982). We examine *1516 B. Acquiescence FN12 each of these doctrines seriatim. The defendant raises the affirmative defense of ac- FN12. As we have noted, the district court quiescence. The district court, as an alternative to made no specific findings on either aban- its finding of no secondary meaning, found that Co- donment or laches, although it did grant re- nagra's predecessors in interest to the name, Henry lief on the defendant's acquiescence claim. C. Singleton and Singleton Packing, had authorized We assume arguendo that abandonment is the defendant's use of the name in the shrimp trade a fact issue, and we analyze the record to and that this authorization precluded Conagra from determine whether a finding of abandon- terminating that use. Conagra does not deny that ment would be clearly erroneous. Laches is Henry C. Singleton was aware of and did not object an equitable doctrine committed to the to his son's shrimp businesses using the Singleton sound discretion of the district court and it name. Conagra further concedes that Singleton depends on the careful balancing of several Packing was a significant supplier of fresh shrimp factors. Environmental Defense Fund, Inc. to Robert C. Singleton's various businesses. Cona- v. Alexander, 614 F.2d 474, 477-79 (5th gra, however, argues that these facts did not support Cir.), cert. denied, 449 U.S. 919, 101 S.Ct. a ruling that Singleton Packing is now unable to 316, 66 L.Ed.2d 146 (1980). We thus con- prevent the defendant's continued use of the sider the laches defense by analyzing the Singleton trademark. underlying factors under the clearly erro- [8][9] A finding of acquiescense, as such, in the de- neous standard, and assuming arguendo fendant's use of the name, was not sufficient to that the lower court exercised its discretion foreclose Conagra's rights to terminate that use. Ac- in affording the defendant relief on this quiescence alone is analogous to an implied license claim. to use the name. Cf. Menendez v. Holt, 128 U.S.
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1. Abandonment this case. The laches defense requires proof of three elements: (1) a delay in asserting a right or claim; [10][11][12] The defense of abandonment is one for (2) that the delay was not excusable; and (3) that which we require strict proof. See Citibank, N.A. v. the delay caused the defendant undue FN14 Citibanc Group, Inc., 724 F.2d at 1545. Under this prejudice. Environmental Defense Fund v. Al- doctrine: exander, 614 F.2d 474, 478 (5th Cir.), cert. denied, 449 U.S. 919, 101 S.Ct. 316, 66 L.Ed.2d 146 Defendants must show that the plaintiff actually (1980). The test for laches or estoppel is flexible, abandoned the use of the mark, and, also, that the requiring a careful examination of both the delay plaintiff intended to abandon the mark. and the prejudice caused by that delay. See Cit- ibank, N.A. v. Citibanc Group, Inc., 724 F.2d at Id.; see also Saxlehner v. Eisner & Mendelson Co., FN15 179 U.S. 19, 31, 21 S.Ct. 7, 11, 45 L.Ed. 60 (1900). 1546. In addition, a court determining wheth- Permitted infringement on the mark holder's exclus- er the doctrine of laches estops the plaintiff from ive rights for some period of time does not consti- asserting its rights also must consider the public's tute nonuse of the mark sufficient to support an interest in the trademark as a definite designation of abandonment. See United States Jaycees v. Phil- a single source of the goods. Thus, although a de- adelphia Jaycees, 639 F.2d 134, 139 (3d Cir.1981). fendant suffers some prejudice, the public interest Furthermore, the plaintiff's predecessor in the in- in avoiding confusion might outweigh that preju- stant case, Singleton Packing, evidenced no intent dice. See James Burrough Ltd. v. Sign of the to abandon the mark; it used the mark continuously Beefeater, Inc., 572 F.2d 574, 578 (7th Cir.1978). and widely over the 25 years preceding the litiga- FN14. With regard to the prejudice factor, tion. The doctrine of abandonment *1517 generally a defendant's intent to wrongfully infringe applies only when the plaintiff mark holder relin- on the plaintiff's mark undermines the quishes his exclusive rights to the world, not weight to be given this factor. See Uni- merely to a single user, see Dawn Donut Co. v. versity of Pittsburgh v. Champion Hart's Food Stores, Inc., 267 F.2d 358, 363 (2d Products, Inc., 686 F.2d 1040, 1044 n. 14 Cir.1959) (abandonment occurs only when mark (3d Cir.1982). holder fails to use its mark anywhere in the nation) FN13 ; the latter case is more appropriately classi- FN15. In University of Pittsburgh v. fied as a license. See Menendez v. Holt, 128 U.S. at Champion Products, Inc., the court noted 524, 9 S.Ct. at 145. A finding that Henry C. that the laches defense actually consists of Singleton and Singleton Packing, as Conagra's pre- two classes of cases: one in which the decessors, abandoned the mark would have been plaintiff's delay has been so outrageous, clearly erroneous in light of the evidence at trial. unreasonable, or unexcusable as to consti- tute virtual abandonment, and a second, FN13. We discuss a narrow exception to more common class of cases, in which the this general rule infra at note 15, and find delay is not so unreasonable and the de- that exception inapplicable in the instant fendant must show the type of prejudice case. leading to estoppel. 686 F.2d at 1044-45. The instant case falls into this second class 2. Laches Leading to Estoppel of cases and thus the list of factors set forth above properly govern the analysis of [13][14] The question of laches, which can lead to this defense. estoppel of the plaintiff's exclusive claim to use the mark, creates a much closer issue on the facts of To properly consider the laches defense in the in-
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stant case, we must separate the two aspects of the line of credit. See, e.g., Ambrosia Chocolate Co. v. defendant's business. We conclude that laches de- Ambrosia Cake Bakery, 165 F.2d 693, 695 (4th fense cannot support the defendant's continued use Cir.1947) (sales of raw materials by the plaintiff of the Singleton name in connection with the sale of mark holder to the defendant infringer deemed rel- processed shrimp. A contrary finding by the district evant to the defendant's permissive use of the court would have been an abuse of discretion. The mark). In addition, with regard to fresh shrimp defendant's continued use of the name in connec- sales, no justification for the delay appears in the tion with the sale of fresh shrimp, however, re- record. quires a remand to the district court for more de- tailed consideration of the laches defense. FN16. The proof at trial showed that the defendant's use of the Singleton name was [15] With regard to the defendant's use of the not continuous over the 10-year period. Singleton mark in the sale of processed shrimp, Singleton Seafood Center, which the indi- there was complete justification for the delay; in ef- vidual defendant operated from 1972 to fect, there was no acquiescence. The father did not 1977, was a distinct business from become aware of the defendant's direct competition Singleton Shrimp Boats in its operation, in the processed shrimp market until after this law- location, and facilities. For over 6 months suit began. Thus, the evidence in the case does not after Singleton Seafood Center ceased op- support a finding that Singleton Packing inexcus- eration, Robert C. Singleton was not en- ably delayed in asserting its exclusive right to the gaged in the shrimp trade. The court on re- Singleton mark as it related to the defendant's sale mand must decide whether there was suffi- of processed shrimp. See supra note 12 (facts un- cient connection between the two busi- derlying laches defense reviewed under clearly er- nesses to support a finding that Singleton roneous standard). Because one of the requisite ele- Shrimp Boats, a business formed in 1978, ments of the defense was not met, a finding of can assert the prior existence of Singleton laches with respect to processed shrimp would be Seafood Center in support of its continued an abuse of discretion. right to use the Singleton name.
The defendant's use of the Singleton name for his With regard to the prejudice issue, the record shows sales of fresh shrimp presents a more difficult ques- that Robert C. Singleton and Singleton Shrimp tion. The facts governing*1518 the lower court's Boats spent $120,000 from 1978 until 1981 advert- discretion on this issue are not clearly apparent ising the business. All of the advertising clearly and from the record and we are unable to determine prominently displayed the Singleton name. whether application of the laches doctrine to this However, we cannot determine from the record aspect of the defendant's business would constitute how much of that advertising was directly related to an abuse of discretion. fresh shrimp sales, rather than the nonconsensual use of the Singleton name on copied labels or ad- The defendant's father was aware of his son's use vertising related to processed shrimp products, and prominent display of the Singleton name in which could not properly be considered in evaluat- various shrimp businesses for over 10 years. The ing the defendant's prejudice. There is little evid- corporate defendant, Singleton Shrimp Boats, ence in the record on which we could base a con- began operations in 1978. Thus, it can properly be clusion regarding the detriment the defendant said that the father delayed in asserting his exclus- FN16 would suffer from a change in name. Moreover, the ive rights to the name. This delay was accom- case before us lacks any factfindings regarding the panied by encouragement in the form of sales to the issue of the defendant's intent in using the defendant by Singleton Packing on an established
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Singleton name in his fresh shrimp business. See of the Singleton name in connection with the sale of supra note 14. fresh shrimp.
Finally, although the evidence in the record clearly We also leave to the district court's determination showed likely confusion stemming from the de- the proper scope of injunctive relief, consistent with fendant's use of the Singleton name, we cannot de- its finding on the laches issue and our holding that termine whether this confusion would persist if that the defendants may not use the Singleton trademark use was limited to fresh shrimp sales, and whether in connection with sales of processed shrimp. In public confusion from such use would outweigh the molding its injunctive order, the district court is prejudice to the defendant. free on remand to consider whether the defendant might be able to continue using his surname, both Careful consideration of these factors, the possible in connection with fresh and processed shrimp, but need for additional evidence, the finding of facts on in a fashion not likely to cause confusion with the elements of the laches defense, and the sound Singleton Packing's exclusive rights to that name. exercise of discretion based on the facts are matters See supra notes 9 and 11. best left to the district court on remand. The case is REVERSED and REMANDED with in- structions. IV. CONCLUSION C.A.Fla.,1984. We have concluded that Conagra possesses trade- Conagra, Inc. v. Singleton mark rights in the name “Singleton,” because that 743 F.2d 1508, 224 U.S.P.Q. 552 name has acquired secondary meaning among con- sumers. The district court's finding to the contrary END OF DOCUMENT was clearly erroneous. We have further concluded, based primarily on the evidence of actual confu- sion, that the defendant's use of the Singleton name in connection with Singleton Shrimp Boats in- fringes on Conagra's trademark rights to that name and causes likely confusion.
With regard to the acquiescence defense, we have determined that a finding of abandonment would be clearly erroneous on these facts. We have further determined that the laches defense cannot apply to authorize the defendant's continued use of the Singleton name in connection with his sales of pro- cessed shrimp. The laches defense may apply, however, to permit the defendant's continued use of the Singleton name in connection with fresh shrimp sales. We therefore remand to the district court *1519 for purposes of determining whether, upon balancing the factors we have discussed and any additional evidence the court may wish to consider, the defendant sufficiently established a laches de- fense that estops Conagra from preventing his use
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To prove service mark infringement, plaintiff must show that defendant used term in commerce, that United States Court of Appeals, defendant's term was used in connection with de- Eleventh Circuit. fendant's services, and that defendant's term is likely to be confused with term in which plaintiff INVESTACORP, INC., Plaintiff-Appellant, possesses right to use to designate plaintiff's ser- v. vices. Lanham Trade-Mark Act, § 43(a), 15 ARABIAN INVESTMENT BANKING CORPOR- U.S.C.A. § 1125(a). ATION (INVESTCORP) E.C. d/b/a Investcorp and Investcorp International, Inc., a Delaware Corpora- [2] Trademarks 382T 1030 tion, Defendants-Appellees. No. 89-6060. 382T Trademarks 382TII Marks Protected May 29, 1991. 382Tk1029 Capacity to Distinguish or Signi- fy; Distinctiveness Financial services company brought service mark 382Tk1030 k. In General. Most Cited infringement action against investment bank and Cases wholly owned subsidiary. The United States Dis- (Formerly 382k11, 382k10) trict Court for the Southern District of Florida, No. Business does not automatically obtain rights in 88-01962-CIV-TES,Thomas E. Scott, J., 722 mark by using it and will obtain rights in mark F.Supp. 719, entered summary judgment in favor of upon first use only if mark is inherently distinctive, bank and subsidiary. Company appealed. The Court but if mark is not inherently distinctive, business of Appeals, Edward S. Smith, Senior Circuit Judge, may obtain rights in mark when it attains secondary sitting by designation, held that: (1) service mark, meaning. Fed.Rules Civ.Proc.Rule 56(c), 28 “Investacorp,” was descriptive and could be protec- U.S.C.A. ted only if it acquired secondary meaning before bank and subsidiary used similar term “Investcorp,” [3] Trademarks 382T 1034 and (2) service mark did not acquire secondary meaning during five years prior to bank's use of 382T Trademarks mark. 382TII Marks Protected 382Tk1034 k. Generic Terms or Marks. Most Affirmed. Cited Cases (Formerly 382k23) West Headnotes Generic term is typically incapable of achieving [1] Trademarks 382T 1421 service mark protection because it has no distinct- iveness. Lanham Trade-Mark Act, § 43(a), 15 382T Trademarks U.S.C.A. § 1125(a). 382TVIII Violations of Rights 382TVIII(A) In General [4] Trademarks 382T 1037 382Tk1418 Practices or Conduct Prohib- 382T Trademarks ited in General; Elements 382TII Marks Protected 382Tk1421 k. Infringement. Most 382Tk1035 Descriptive Terms or Marks Cited Cases 382Tk1037 k. Acquired Distinctiveness; (Formerly 382k462) Secondary Meaning. Most Cited Cases
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(Formerly 382k13) 382T Trademarks Because descriptive service mark is not inherently 382TII Marks Protected distinctive, it may be protected only if it acquires 382Tk1038 k. Suggestive Terms or Marks. secondary meaning. Lanham Trade-Mark Act, § Most Cited Cases 43(a), 15 U.S.C.A. § 1125(a). (Formerly 382k25) “Suggestive term” suggests characteristics of ser- [5] Trademarks 382T 1042 vice and requires effort of imagination by consumer in order to be understood as descriptive of the ser- 382T Trademarks vice. Lanham Trade-Mark Act, § 43(a), 15 382TII Marks Protected U.S.C.A. § 1125(a). 382Tk1040 Names as Marks 382Tk1042 k. Persons, Names Of. Most [8] Trademarks 382T 1038 Cited Cases (Formerly 382k34) 382T Trademarks If personal name mark acquires secondary meaning, 382TII Marks Protected it is afforded strength of inherently distinctive 382Tk1038 k. Suggestive Terms or Marks. mark. Lanham Trade-Mark Act, § 43(a), 15 Most Cited Cases U.S.C.A. § 1125(a). (Formerly 382k25) Because suggestive service mark is inherently dis- [6] Trademarks 382T 1047(1) tinctive, no proof of secondary meaning is required for it to be protected. Lanham Trade-Mark Act, § 382T Trademarks 43(a), 15 U.S.C.A. § 1125(a). 382TII Marks Protected 382Tk1045 Geographical Terms or Names as [9] Trademarks 382T 1039 Marks 382Tk1047 Descriptiveness 382T Trademarks 382Tk1047(1) k. In General. Most 382TII Marks Protected Cited Cases 382Tk1039 k. Arbitrary or Fanciful Terms or (Formerly 382k32.1, 382k32) Marks. Most Cited Cases (Formerly 382k24) Trademarks 382T 1048 Arbitrary or fanciful terms are inherently distinctive and can be protected without proof of secondary 382T Trademarks meaning. Lanham Trade-Mark Act, § 43(a), 15 382TII Marks Protected U.S.C.A. § 1125(a). 382Tk1045 Geographical Terms or Names as Marks [10] Trademarks 382T 1036 382Tk1048 k. Acquired Distinctiveness; Secondary Meaning. Most Cited Cases 382T Trademarks (Formerly 382k32.1, 382k32) 382TII Marks Protected Marks which are descriptive of geographic location 382Tk1035 Descriptive Terms or Marks of source of service are treated in same manner as 382Tk1036 k. In General. Most Cited personal name marks and are afforded strength of Cases inherently distinctive mark, if they acquire second- (Formerly 382k16) ary meaning. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). Trademarks 382T 1038
[7] Trademarks 382T 1038 382T Trademarks
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382TII Marks Protected 753 382Tk1038 k. Suggestive Terms or Marks. Most Cited Cases 15A Administrative Law and Procedure (Formerly 382k16) 15AV Judicial Review of Administrative De- cisions Trademarks 382T 1039 15AV(D) Scope of Review in General 15Ak753 k. Theory and Grounds of Ad- 382T Trademarks ministrative Decision. Most Cited Cases 382TII Marks Protected Court of Appeals will not defer to ethereal determ- 382Tk1039 k. Arbitrary or Fanciful Terms or ination that is not affirmatively stated by adminis- Marks. Most Cited Cases trative agency. (Formerly 382k16) Financial services company's service mark, [13] Trademarks 382T 1032 “Investacorp,” was “descriptive,” rather than “suggestive,”“arbitrary” or “fanciful,” and, there- 382T Trademarks fore, could be protected only if it acquired second- 382TII Marks Protected ary meaning; customer observing the service mark 382Tk1029 Capacity to Distinguish or Signi- did not need to exercise imagination to perceive fy; Distinctiveness nature of company's services as advising customers 382Tk1032 k. Acquired Distinctiveness in corporate investment opportunities. Lanham and Secondary Meaning in General. Most Cited Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). Cases (Formerly 382k11) [11] Trademarks 382T 1036 Financial services company's service mark, “Investacorp,” did not acquire secondary meaning 382T Trademarks during five-year period before investment bank 382TII Marks Protected began using service mark, “Investcorp,” and, thus, 382Tk1035 Descriptive Terms or Marks company could not acquire protected interest in the 382Tk1036 k. In General. Most Cited mark, even though company experienced expansive Cases growth and showed high ratio of sales dollars to ad- (Formerly 382k13) vertising dollars during the five-year period; evid- ence did not indicate that public actually identified Trademarks 382T 1058 mark with company's business. Lanham Trade- 382T Trademarks Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). 382TII Marks Protected [14] Trademarks 382T 1156 382Tk1050 Format or Components of Term or Mark 382T Trademarks 382Tk1058 k. Multiple Elements; Com- 382TV Duration and Termination of Rights binations. Most Cited Cases 382Tk1155 Extent of Use; Discontinuance (Formerly 382k13) and Non-Use Third-party usage and idea conveyed to observer by 382Tk1156 k. In General. Most Cited plain dictionary definition of formatives comprising Cases mark are probative to determine whether term is de- (Formerly 382k71) scriptive. Lanham Trade-Mark Act, § 43(a), 15 To establish abandonment of service mark, plaintiff U.S.C.A. § 1125(a). must prove nonuse and intent not to resume use. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § [12] Administrative Law and Procedure 15A
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1125(a). 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signi- [15] Trademarks 382T 1158 fy; Distinctiveness 382Tk1032 k. Acquired Distinctiveness 382T Trademarks and Secondary Meaning in General. Most Cited 382TV Duration and Termination of Rights Cases 382Tk1158 k. Discontinuance or Transfer of (Formerly 382k11) Business or Assets. Most Cited Cases Absent consumer survey evidence, four factors can (Formerly 382k72) be considered in determining whether particular Investment bank's reorganization to create wholly mark has acquired secondary meaning: length and owned subsidiary to continue to use service mark manner of its use; nature and extent of advertising was not abandonment of mark. Lanham Trade- and promotion; efforts made by plaintiff to promote Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). conscious connection in public's mind between [16] Trademarks 382T 1032 name and plaintiff's business; and extent to which public actually identifies name with plaintiff's ser- 382T Trademarks vice. Lanham Trade-Mark Act, § 43(a), 15 382TII Marks Protected U.S.C.A. § 1125(a). 382Tk1029 Capacity to Distinguish or Signi- fy; Distinctiveness Trademarks 382T 1800 382Tk1032 k. Acquired Distinctiveness 382T Trademarks and Secondary Meaning in General. Most Cited 382TXI Trademarks and Trade Names Adjudic- Cases ated (Formerly 382k11) 382Tk1800 k. Alphabetical Listing. Most “Secondary meaning” is connection in consumer's Cited Cases mind between mark and provider of service. Lan- (Formerly 382k736) ham Trade-Mark Act, § 43(a), 15 U.S.C.A. § Investacorp., 1125(a). *1520 Richard Ross, Richard S. Ross, P.A., Miami, [17] Trademarks 382T 1608 Fla., for plaintiff-appellant.
382T Trademarks John Millian, Washington, D.C., Rudolph F. Ar- 382TIX Actions and Proceedings agon, Coffey, Aragon, Martin & Bulington, P.A., 382TIX(C) Evidence Miami, Fla., and Wesley Howell, Jr., Gibson, Dunn 382Tk1601 Presumptions and Burden of & Crutcher, Washington, D.C., for defendants-ap- Proof pellees. 382Tk1608 k. Marks Protected; Sec- ondary Meaning. Most Cited Cases Appeal from the United States District Court for the (Formerly 382k574) Southern District of Florida. Plaintiff has burden of sustaining high degree of proof in establishing secondary meaning for de- Before JOHNSON and HATCHETT, Circuit FN* scriptive term. Lanham Trade-Mark Act, § 43(a), Judges, and SMITH , Senior Circuit Judge. 15 U.S.C.A. § 1125(a).
[18] Trademarks 382T 1032 FN* Honorable Edward S. Smith, Senior U.S. Circuit Judge for the Federal Circuit, 382T Trademarks sitting by designation.
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*1521 EDWARD S. SMITH, Senior Circuit Judge: competition. The district court granted summary judgment in favor of defendant on all counts of the Plaintiff, Investacorp, Inc. (Investacorp), appeals complaint, because it determined that plaintiff does the grant of summary judgment entered in favor of not have a proprietary interest in the mark defendants, Arabian Investment Banking Corpora- “Investacorp”. Plaintiff appeals to this Court assert- tion (Investcorp E.C.) and Investcorp, International, ing that genuine issues of material fact are involved Inc. (Investcorp International) on the claims of ser- in the trial court's summary resolution of the vice mark infringement and unfair competition. 722 claims. F.Supp. 719. Because the undisputed facts show ap- pellant does not have a protectable interest in its claimed service mark, we affirm the judgment of Issue the United States District Court for the Southern We must determine whether the district court's District of Florida. finding involved the resolution of an issue of mater- ial fact. As an appellate court, we must also determ- Facts ine the applicable law, independent of that inter- pretation rendered by the district court. If no issue Appellant, Investacorp, is a Florida corporation of material fact was presented and the independ- whose primary business is providing financial ser- ently determined applicable law supports the grant vices as a broker/dealer and as a financial interme- of summary judgment ordered by the district court, FN1 diary between individuals, corporations and institu- then we must affirm. tions seeking investment opportunities. There are two appellees in this case: Investcorp E.C., the par- FN1. Fed.R.Civ.P. 56(c). ent corporation, and its wholly owned subsidiary, Investcorp International. Investcorp E.C. is an in- Opinion vestment bank headquartered in Bahrain which began doing business in the United States under Plaintiff, Investacorp, alleges that defendants, In- that name in 1983. Investcorp International was vestcorp, unfairly competed by infringing on created by Investcorp E.C. in November of 1986 to plaintiff's unregistered service mark. Appellant as- continue conducting the business of its parent in the serts that the district court should have found genu- United States. Hereinafter, the two co-appellees ine issues of material fact presented in the follow- FN2 will be referred to as “Investcorp”. ing counts: Federal service mark infringement, Florida common law service mark infringement, Investcorp filed for federal service mark registra- Florida common law unfair competition, and viola- tion in June of 1987. The Patent and Trademark Of- FN3 tion of the Florida anti-dilution law. As the fice (PTO) allowed the Investcorp service mark to parties do in their briefs, we evaluate the federal pass for potential opposition to registration. Four service mark infringement claim as a measuring months later, in October 1987, Investacorp filed for stick for the whole host of claims that appellant as- federal service mark registration. In February, serts. If the federal service mark claim fails in this 1988, Investacorp filed a Notice of Opposition with case for the reason cited by the district court, that the Trademark Trial and Appeal Board of the PTO, plaintiff had no proprietary interest in the opposing registration of the Investcorp service “Investacorp” mark, then all of appellant's claims mark. will fail. Later in 1988, Investacorp sued Investcorp on sev- FN2. Lanham Act § 43(a), 15 U.S.C. § eral counts of service mark infringement and unfair 1125(a) (1988).
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FN3. Fla.Stat.Ann. § 495.151 (West 1988). ed. 1984).
FN7. Id. Prima Facie Service Mark Infringement FN8. Id. at § 16:2. [1] To prove service mark infringement in this case, plaintiff must prove (1) that *1522 defendant used a FN9. Id. term in commerce (2) in connection with their ser- vices (3) which is likely to be confused with the The Categories of Distinctiveness term (4) in which plaintiff possesses the right to use FN4 to designate their services. Appellee concedes [3][4][5][6][7][8][9] There are four categories of that elements (1) and (2) are present. The district distinctiveness in which a service mark may be FN10 court, however, found that plaintiff did not own the classified. In ascending order they are: (1) right to designate its services with the term Generic; (2) descriptive; (3) suggestive; and (4) ar- FN11 “Investacorp” and hence had no protectable interest bitrary or fanciful. The demarcation between that could be infringed. Consequently, summary each category is more blurred than it is FN12 judgment was entered for defendant. definite. A term which suggests the basic FN13 nature of the service is generic. The term FN4. Lanham Act § 43(a), 15 U.S.C. § “Milk Delivery” is an example of a generic service 1125(a) (1988). FN14 mark for a hypothetical milk delivery service. [2] In order for defendant to infringe on plaintiff's A generic term is typically incapable of achieving service mark protection because it has no distinct- mark, plaintiff must have a protectable property in- FN15 FN5 iveness. A descriptive term merely identifies a terest in the mark “Investacorp”. Ordinarily, FN16 such an interest is derived when a business uses a characteristic or quality of a service. An ex- FN6 mark to represent its services. Each time a ample of a descriptive service mark might be business uses a mark, it enhances the customer re- “BarnMilk.” Because a descriptive service mark is not inherently distinctive, it may be protected only cognition of the mark and its association with the FN17 service, thereby inuring to the business greater if it acquires a secondary meaning. The per- FN7 rights in the mark. However, a business does sonal name component of a service mark such as not automatically obtain rights in a mark by using “Barney's” to denote a milk delivery service is also it. A business will obtain rights in a mark upon first considered not inherently distinctive and hence FN8 FN18 use only if the mark is “inherently distinctive.” merely descriptive. However, if the personal If the mark is not inherently distinctive, a business name mark acquires secondary meaning, it is af- may obtain rights in the mark when it attains a sec- forded the strength of an inherently distinctive FN9 FN19 ondary meaning. Therefore, to determine if and mark. Marks which are descriptive of geo- when plaintiff obtained rights in the mark graphic location of the source of the service are treated in the *1523 same manner as personal name “Investacorp,” we must determine if the mark FN20 “Investacorp” is inherently distinctive. marks. A suggestive term suggests the charac- teristics of the service “and requires an effort of the FN5. American Television & Communica- imagination by the consumer in order to be under- FN21 tions Corp. v. American Communications stood as descriptive” of the service. & Television, Inc., 810 F.2d 1546, 1548, 1 “Barn-Barn” is an example of a suggestive term. U.S.P.Q.2d 2084, 2085 (11th Cir.1987). Because a suggestive service mark is inherently dis- tinctive, no proof of secondary meaning is required FN22 FN6. 1 J. McCarthy, TRADEMARKS for it to be protectable. “An arbitrary or fanci- AND UNFAIR COMPETITION § 16:1 (2d
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ful [term] bears no relationship to the service.” The district court determined that the term FN23 Arbitrary and fanciful terms are also inher- “Investacorp” was descriptive. Because the distinct- ently distinctive, so they are protectable without iveness categorization given a term is a question of FN24 proof of secondary meaning. “Barnbarnfish” is an fact, we must determine whether the district example of an arbitrary or fanciful service mark. court's finding involved a genuine issue of material FN25 fact. FN10. American Television, 810 F.2d at 1548, 1 U.S.P.Q.2d at 2085. FN24. Soweco, 617 F.2d at 1183 n. 12, 207 U.S.P.Q. at 282 n. 12. FN11. Id. FN25. Fed.R.Civ.P. 56(c). FN12. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183, 207 U.S.P.Q. 278, 282 [10] Investacorp is a corporation in the business of (5th Cir.1980), cert. denied, 450 U.S. 981, advising their customers in corporate investment 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). opportunities. Pursuant to a customer's desires, In- vestacorp sells stocks, bonds and other securities FN13. American Television, 810 F.2d at which are often initially issued by corporations. 1548, 1 U.S.P.Q.2d at 2086. The two key formatives in the term “Investacorp” are “invest” and “corp”. “Invest” is the verb “to FN14. The examples given in this para- commit (money) in order to earn a financial return,” graph are believed to be a hypothetical ser- FN26 and “corp” is the widespread abbreviation for vice marks for a fictional milk delivery a corporation. It is beyond doubt that the term service. The examples are given strictly for “Investacorp” bears a relationship to the type of pedagogical reasons and have no legal ef- services being offered by plaintiff. Hence, it cannot fect. FN27 be an arbitrary or fanciful term. The only two FN15. American Television, 810 F.2d at categories remaining that are eligible for service 1548, 1 U.S.P.Q.2d at 2086. mark protection are the descriptive and suggestive categories. Thus, we must determine whether the FN16. Id. mark is descriptive or suggestive.
FN17. Id. FN26. WEBSTER'S NEW COLLEGIATE DICTIONARY, 603 (1979). FN18. J. MCCARTHY, supra note 6, § 13:2. FN27. See J. MCCARTHY, supra note 6, § 11:2. FN19. Id. [11] To determine whether a term is descriptive, FN28 FN20. Id. at § 14:1. third party usage by competitors is probative. We reject appellant's argument that third party us- FN21. American Television, 810 F.2d at age is not relevant to the distinctiveness inquiry be- 1549, 1 U.S.P.Q.2d at 2086. cause there is a plethora of authority embracing the FN29 FN22. Id. relevancy of third party usage.
FN23. Id. FN28. Vision Center v. Opticks, Inc., 596 F.2d 111, 116, 202 U.S.P.Q. 333, 338 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100 Distinctiveness Inquiry S.Ct. 668, 62 L.Ed.2d 646 (1980).
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FN29. In re Bongrain Int'l Corp., 894 F.2d FN31. Id. at 116, 202 U.S.P.Q. at 338. 1316, 1317, 13 U.S.P.Q.2d 1727, 1728 (Fed.Cir.1990); Burke-Parsons-Bowlby FN32. Id. Corp. v. Appalachian Log Homes, Inc., Plaintiff relies on the inaction of the Patent and 871 F.2d 590, 593, 10 U.S.P.Q.2d 1443, Trademark Office to inject an issue of fact into the 1445 (6th Cir.1989); Security Center, Ltd. district court's determination of distinctiveness. v. First Nat'l Security Centers, 750 F.2d When the defendant submitted the “Investcorp” 1295, 1298-1299, 225 U.S.P.Q. 373, mark application, the PTO passed the mark on to 375-76 (5th Cir.1985); Telemed Corp. v. publication. Because a finding of descriptiveness is Tel-Med, Inc., 588 F.2d 213, 218, 200 one of the grounds for refusal of registration, appel- U.S.P.Q. 427, 432 (7th Cir.1978). lant argues that the PTO must have decided that The likelihood of prospective use by competitors is “Investcorp” was not merely descriptive; otherwise, high. Both of the two formatives “invest” and the PTO would not have passed the mark on to pub- “corp” pervade the lexicon of business terminology. lication according to Section 1209 of the TRADE- MARK MANUAL OF EXAMINING PROCED- Because the two formatives are indispensable to the FN33 investment services industry, we agree that it is URE. Moreover, appellant notes, the PTO op- very likely that competitors will need to use these ted to reject plaintiff's subsequent application to re- terms. gister “Investacorp” because the similar “Investcorp” application was pending, instead of on Moreover, the popularity of actual use of the two the ground that it was merely descriptive. Plaintiff key formatives also indicates that the mark is de- argues that this indicates that the PTO found the FN30 scriptive. Over eighty competing broker-deal- similar mark also not descriptive. ers use the word “invest” in their mark, and there are a handful of businesses who use some combina- FN33. (6th rev. 1986). tion of the formatives “invest” and “corp” in their Plaintiff asserts that these two facts negatively im- mark. We find the popularity of use by competitors ply that the PTO found that both marks, is extreme. “Investacorp” and “Investcorp,” were not merely FN30. Vision Center, 596 F.2d at 117, 202 descriptive. Consequently, because it is proper to U.S.P.Q. at 339. defer to any determination made by the agency “entrusted with the duty of administering the Lan- Also probative of the descriptiveness of a mark is ham Act,” appellant argues that we must accept the the idea that is conveyed to the observer by the determination made by the PTO in accord with FN34 plain dictionary definition *1524 of the formatives Wynn Oil Co. v. Thomas. FN31 comprising the mark. In this case, the two formatives combined in the term “Investacorp” lit- FN34. 839 F.2d 1183, 1190, 5 U.S.P.Q.2d erally convey to the observer that appellant is in the 1944, 1949 (6th Cir.1988). business of investing in corporations. Because the [12] The soft spot in appellant's argument is that customer who observes the term can readily per- there is no recorded finding by the PTO that either ceive the nature of plaintiff's services, without hav- service mark was not descriptive. Consequently, all ing to exercise his imagination, the term cannot be FN32 that this Court can do is guess at what the PTO's considered a suggestive term. The only re- determinations were while evaluating the merit of maining categorization that is eligible for protection each mark. We do not know whether the PTO even is the descriptive category. Accordingly, considered the descriptiveness of either mark. Al- “Investacorp” must be merely descriptive.
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though we will bestow proper respect to the de- pellant disputes this finding by pointing out certain terminations of the PTO, we will not defer to an facts. Investcorp E.C. first began using the service ethereal determination that is not affirmatively mark in March of 1983. In June of 1987, Investcorp stated by the administrative agency. Therefore, E.C. created a subsidiary entitled Investcorp Inter- withstanding the implications that appellant points national to be responsible for conducting all of In- out, the finding that “Investacorp” is merely de- vestcorp's business in the United States. Investcorp scriptive involved no genuine issue of material fact. E.C., the parent, licensed to Investcorp Internation- Consequently, in heeding the proposition that the al the right to use the “Investcorp” service mark in descriptiveness category encompasses a broad the United States. FN35 range, the term “Investacorp” is merely de- scriptive and hence is not inherently distinctive. Appellant asserts that because the parent, Invest- corp E.C., intended not to use the mark in the FN35. Vision Center, 596 F.2d at 116, 202 United States, it had abandoned the use of the mark. U.S.P.Q. at 338. The argument goes that the previous use by the par- ent corporation between 1983 and 1987 does not count because it had abandoned the mark. Hence, Secondary Meaning appellant argues that appellee's first use did not oc- [13] Because the term is not inherently distinctive, cur until 1987, when the subsidiary, Investcorp In- for appellant to have a protectable interest in the ternational, first began using the mark in the United term “Investacorp,” it must have attained secondary States. meaning before the date that appellee used the sim- FN36 [14][15] To establish abandonment, appellant must ilar term “Investcorp”. The district court de- prove (1) nonuse and (2) intent not to resume termined that the term “Investacorp” did not attain FN38 use. Appellant's argument is disingenuous be- secondary meaning by the time appellees first used cause although Investcorp E.C. did not intend to it. Because the existence of a secondary meaning is FN37 use the mark in the United States, it intended In- a question of fact, we determine whether this vestcorp International, its wholly-owned subsidiary, determination required the resolution of a genuine to continue the use of the mark in its place. All that factual issue. occurred was a reorganization of Investcorp's struc- FN36. Co-Rect Products, Inc. v. Marvy! ture; the intent was for Investcorp to continue to Advertising Photography, Inc., 780 F.2d use the mark through its subsidiary, Investcorp In- 1324, 1330, 228 U.S.P.Q. 429, 431 (8th ternational. Therefore, Investcorp never intended to Cir.1985). cease using the “Investcorp” mark and there was no abandonment. Thus, Investcorp's first use of their FN37. Aloe Creme Laboratories, Inc. v. mark occurred in March of 1983, and the secondary Milsan, Inc., 423 F.2d 845, 849, 165 meaning of “Investacorp” must attach by that date. U.S.P.Q. 37, 41 (5th Cir.)cert. denied, 398 U.S. 928, 90 S.Ct. 1818, 26 L.Ed.2d FN38. E. Remy Martin & Co., S.A. v. 90,reh'g denied, 400 U.S. 856, 91 S.Ct. 23, Shaw-Ross International Imports, Inc., 756 27 L.Ed.2d 95 (1970). F.2d 1525, 1532, 225 U.S.P.Q. 1131, 1136,reh'g denied, en banc, 765 F.2d 154 *1525 Because secondary meaning must attach to (11th Cir.1985). the mark before appellee first used the mark, we must determine the date that appellee first used the [16][17][18] Secondary meaning is the connection in the consumer's mind between the mark and the mark “Investcorp”. The district court decided that FN39 appellee first used the mark in March of 1983. Ap- provider of the service. Plaintiff has the bur-
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den of sustaining a high degree of proof in estab- period, appellant's advertising expenditures did not lishing a secondary meaning for a descriptive exceed one-hundred dollars per month. Although, FN40 term. This requisite high degree of proof must appellant emphasizes that they had expansive be considered by the court when ruling on a motion growth and *1526 showed a high ratio of sales dol- FN41 of summary judgment. Absent consumer sur- lars to advertising dollars during the relevant peri- vey evidence, as is the case here, four factors can od, this fact does not indicate that appellant's ban- be considered in determining whether a particular tam advertising campaigns made major inroads to mark has acquired a secondary meaning: the consumer psyche.
FN39. AmBrit, Inc. v. Kraft, Inc., 812 F.2d The evidence that the public actually identifies the 1531, 1536 n. 14, 1 U.S.P.Q.2d 1161 (11th mark with appellant's business is also lacking. Al- Cir.1986). though instances of consumer confusion are probat- FN43 ive of secondary meaning, the few isolated in- FN40. Vision Center, 596 F.2d at 119, 202 stances cited by appellant are not adequate to U.S.P.Q. at 341. present a genuine issue of material fact. Con- sequently, we agree that the undisputed facts show FN41. Anderson v. Liberty Lobby, Inc., that the mark “Investacorp” did not acquire second- 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d ary meaning before the end of the relevant time 202 (1986). period. (1) [T]he length and manner of its use; (2) the FN43. McCarthy, supra note 6, § 15:3. nature and extent of advertising and promotion; (3) the efforts made by the plaintiff to promote a conscious connection in the public's mind Conclusion between the name and the plaintiff's ... business; and (4) the extent to which the public actually In order to prove all of its claims, appellant must identifies the name with the plaintiff's establish ownership of the right to use the mark to FN42 [service]. designate its services. Because the undisputed facts show that the “Investacorp” mark is not inherently FN42. Conagra, Inc. v. Singleton, 743 F.2d distinctive, a protectable interest does not attach 1508, 1513, 224 U.S.P.Q. 552, 555 (11th until the mark acquires a secondary meaning. The Cir.1984). district court found that the undisputed facts estab- lished that “Investacorp” did not acquire secondary Appellant began designating their services with the meaning before appellee commenced use of their “Investacorp” mark in January of 1978. Thus, the similar service mark, “Investcorp”. Therefore, ap- length of appellant's use of the mark was five years pellant does not own a protectable interest in the prior to the appellee's use of their mark. However, “Investacorp” service mark. We agree with the dis- there is nothing significant about the manner of ap- trict court's view of the evidence. Accordingly, as a pellant's use of the mark, other than appellant matter of law, appellee did not infringe on the ap- merely “displayed its service mark on nearly all of pellant's service mark or unfairly compete with ap- its transactional documents.” pellant because appellant never owned a protectable interest in the mark, “Investacorp”, and appellee is The nature and extent of appellant's advertisement entitled to judgment. Affirmed. and promotion and its achievement of a conscious connection in the public mind between the mark C.A.11 (Fla.),1991. and the appellant's business during the relevant Investacorp, Inc. v. Arabian Inv. Banking Corp. time period is far short of spectacular. During this
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(Investcorp) E.C. 931 F.2d 1519, 19 U.S.P.Q.2d 1056
END OF DOCUMENT
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382T Trademarks Supreme Court of Florida. 382TII Marks Protected JUNIOR FOOD STORES OF WEST FLORIDA, 382Tk1022 Subject Matter Underlying INC., a Florida corporation, Petitioner, Trademarks v. 382Tk1023 k. In General. Most Cited Cases JR. FOOD STORES, INC., a Florida corporation, (Formerly 382k1) Respondent. No. 38089. Trademarks 382T 1026
Sept. 17, 1969. 382T Trademarks Rehearing Denied Oct. 2, 1969. 382TII Marks Protected 382Tk1026 k. Trade Names in General. Most Action by first registrant of trade name to enjoin use of Cited Cases similar trade name by second registrant. The Circuit (Formerly 382k1) Court, Bay County, W. L. Fitzpatrick, J., granted the A “tradename” is descriptive of a manufacturer or injunction, and the second registrant appealed. The dealer and applies to business and its goodwill, whe- District Court of Appeal, 215 So.2d 56, affirmed, and reas “trademark” is applicable only to vendable certiorari was granted. The Supreme Court, Carlton, J., commodities, and different legal principles govern held that where the businesses involved were chains of protection of the two. small neighborhood convenience grocery stores, and where there was only one city in which the parties [3] Trademarks 382T 1259 both operated, enjoining second registrant from use of trade name was error, but second registrant would be 382T Trademarks enjoined from using sign design which was basically 382TVII Registration identical in nature to that of first registrant, with the 382TVII(A) In General exception of distinguishing words in lettering so small 382Tk1256 State Registration as to be not readily visible to passersby. 382Tk1259 k. Effect. Most Cited Cases (Formerly 382k251) Order of District Court quashed; cause remanded. Registration of trade name and sign design in 1961 did not, under statutes then in effect, invest prior registrant West Headnotes with right to exclusive use, but established basis for invoking common-law trade name protection predi- [1] Trademarks 382T 1259 cated upon prior use. F.S.A. §§ 495.01 et seq., 495.011(6), 495.151, 495.171. 382T Trademarks 382TVII Registration [4] Trademarks 382T 1137(1) 382TVII(A) In General 382Tk1256 State Registration 382T Trademarks 382Tk1259 k. Effect. Most Cited Cases 382TIV Creation and Priority of Rights (Formerly 382k251) 382Tk1132 Use of Mark Statutory provisions concerned solely with registra- 382Tk1137 Scope and Priority of Use; tion and regulation of trademarks did not support Multiple Users, Markets, or Territories order granting prior registrant exclusive use of trade 382Tk1137(1) k. In General. Most Cited name. F.S.A. § 495.011 et seq. Cases (Formerly 382k95) [2] Trademarks 382T 1023 Protection will be extended to first appropriator of a tradename, within the territorial scope of its business,
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against subsequent use of the same or similar name by 382Tk1418 Practices or Conduct Prohibited another, and the extent of the zone of territorial pro- in General; Elements tection is determined by the nature of the first appro- 382Tk1420 k. Unfair Competition. Most priator's business. Cited Cases (Formerly 382k462) [5] Trademarks 382T 1092 Test of unfair competition in use of trade name is whether potential customers of first appropriator of trade name actually do business with second appro- 382T Trademarks priator under the mistaken impression that they are 382TIII Similarity Between Marks; Likelihood of doing business with the first. Confusion 382Tk1090 Nature of Marks 382Tk1092 k. Strength or Fame of Marks; [7] Trademarks 382T 1629(3) Degree of Distinctiveness. Most Cited Cases (Formerly 382k367) 382T Trademarks 382TIX Actions and Proceedings Trademarks 382T 1104 382TIX(C) Evidence 382Tk1620 Weight and Sufficiency 382Tk1629 Similarity; Likelihood of 382T Trademarks Confusion 382TIII Similarity Between Marks; Likelihood of 382Tk1629(3) k. Particular Cases. Confusion Most Cited Cases 382Tk1100 Relationship Between Goods or (Formerly 382k591) Services Underlying Marks Evidence that deliverymen and salesmen were con- 382Tk1104 k. Markets and Territories; fused by the similarity in names used by two grocery Competition. Most Cited Cases chains, without evidence of customer confusion, did (Formerly 382k367) not support grant of injunctive relief on the basis of Where the business of the prior registrant of trade unfair competition in the use of trade name. name was operation of small neighborhood conveni- ence grocery stores, and where the name had not yet acquired secondary meaning, second registrant in the [8] Trademarks 382T 1714(1) same business was not operating within the territorial scope of the first registrant's stores where the parties 382T Trademarks were operating jointly in only one city, and there only 382TIX Actions and Proceedings in separate neighborhoods, and use of trade name by 382TIX(F) Injunctions second registrant would not be enjoined. 382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of [6] Trademarks 382T 1086 Relief 382Tk1714(1) k. In General. Most Cited Cases 382T Trademarks (Formerly 382k648) 382TIII Similarity Between Marks; Likelihood of Injunction against use of trade name by the second Confusion registrant thereof on the basis of potential conflict was 382Tk1083 Nature of Confusion not proper, especially where potential for future con- 382Tk1086 k. Actual Confusion. Most flict arose when prior registrant began establishing Cited Cases stores in counties previously served only by second (Formerly 382k462) registrant.
Trademarks 382T 1420 [9] Trademarks 382T 1717(1)
382T Trademarks 382T Trademarks 382TVIII Violations of Rights 382TIX Actions and Proceedings 382TVIII(A) In General
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382TIX(F) Injunctions three stores to ‘Jitney Junior.’ 382Tk1712 Permanent Injunctions 382Tk1717 Scope and Extent of Relief Petitioner was also incorporated in 1961. It, too, began 382Tk1717(1) k. In General. Most business under a Jitney Jungle franchise, and thus its Cited Cases stores, which were located in Okaloosa, Jackson and (Formerly 382k648) Santa Rosa Counties, also operated under the ‘Jitney Though second registrant of trade name had right to Junior’ banner. use name similar to that used by prior registrant, second registrant would be enjoined from use of sign Neither litigant remained for long under franchise. design which was similar to that used by prior regi- Respondent was first to resume independent operation, strant with the exception of distinguishing words in and when it did, it put up its own signs again and also lettering so small as to be not readily visible to pas- began an expansion program. Petitioner followed a sersby. similar course, but prior to doing so, it took a step *394 Barrow & Holley, Crestview, and Douglass & which ultimately led to this litigation. Petitioner, just Booth, Tallahassee, for petitioner. prior to the expiration of its franchise, registered with the Secretary of State the tradename ‘Jr. Food Stores William E. Harris, of Davenport, Johnston & Harris, of West Florida, Inc.‘ along with a sign design gener- Panama City, for respondent. ally similar to that of the respondent. Both signs em- phasized the abbreviation ‘Jr.‘ and both featured a REHEARING boy's face, although the faces depicted were consi- derably different. The litigants have stipulated that CARLTON, Justice. their tradenames and signs are similar enough to cause confusion if used in the same location. This is a common law tradename protection case. Petitioner and respondent operate similar chains of Initially, the litigants' stores were far apart. At the time small neighborhood convenience grocery stores of their respective franchise expirations, respondent throughout the Panhandle region of West Florida. operated *395 only in Bay County, while petitioner Circuit Court, Bay County, enjoined petitioner from had stores in Okaloosa, Jackson and Santa Rosa using a tradename and outdoor identification sign Counties. Subsequent expansion, however, brought design similar to those of the respondent. The District them into close proximity in a qualified sense. Peti- Court of Appeal, First District, affirmed, 215 So.2d 56 tioner's expansion occurred primarily within Okaloosa (1968). We granted certiorari because of conflict be- County and only one store was added in a new county, tween the District Court's decision and two cases Holmes. Respondent's expansion was more energetic. arising out of the Second District, Tampa Wholesale The Chancellor noted in his Final Order that respon- Co. v. Foodtown, U.S.A., 166 So.2d 711 (2nd dent had one or more stores in Bay (its initial locale), D.C.A.Fla.1964), and Stagg Shop of Miami, Inc. v. Gulf, Franklin, Washington, Calhoun, Jefferson, Es- Moss, 120 So.2d 39 (2nd D.C.A.Fla.1960). cambia, Jackson and Okaloosa Counties. It should be noted that the pattern of growth was from respondent Respondent was incorporated in June 1961. In August towards petitioner, that is, respondent's stores were of that year, it registered the tradename ‘Jr. Food placed around the areas served by the petitioner and Store,‘ along with a design for its outdoor identifica- not vice versa. In the two counties in which both have tion signs, with the Secretary of State under auspices stores, Jackson and Okaloosa, petitioner was estab- of Fla.Laws 1957, ch. 57-212 (repealed 1967), now lished first. We have said that the litigants are in close Fla.Stat. ch. 495, F.S.A. The design consisted of the proximity in a qualified sense because the closest they words ‘Food Store’ separated by a large rendition of come to direct competition is in Niceville, Okaloosa the abbreviation ‘Jr.’, and a simplified picture of a County, where they are located in separate neighbor- young boy's face. Respondent opened three stores in hoods; Niceville is the only area where Both do Bay County under this sign. Shortly afterwards, Jitney business. Jungle, a large food store chain, entered into a fran- chise agreement with respondent, and, as a condition Respondent's complaint was filed approximately two of this franchise, respondent changed the names of its years after it was first aware that petitioner was using
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the word ‘Junior’ as part of its store identification We have set out the facts of this case at length because signs. The record indicates that respondent's officers we disagree with the District Court. It is our opinion had informal conversations with persons connected that the Chancellor did not have sufficient evidence with petitioner, on at least two occasions, prior to the upon which to base his judgment and also that he did filing of the complaint, during which petitioner was make an erroneous application of the law. informally requested to stop using the name. When petitioner persisted in using the ‘Jr. Food Stores of [1][2] First, we cannot agree with the Chancellor that, West Florida, Inc.‘ tradename on its signs, and as because of its prior registration of its tradename and competition loomed on the horizon as a steadily in- sign design, *396 respondent is ‘entitled to the exclu- creasing probability, respondent filed its action in sive use of same as set forth under Chapter 495, circuit court seeking to have petitioner enjoined from Florida Statutes.’A careful reading of Fla.Laws 1957, making any use of the words ‘Jr. Food Store’, or any ch. 57-212, which is the version of Fla.Stat. ch. 495, imitation thereof, and from using an outdoor sign F.S.A. applicable to this case, does not disclose any design similar to respondent's. provision for the ‘exclusive use’ of a tradename. The chapter appears to be concerned solely with the reg- The Judge, sitting as Chancellor, found that: (1) The istration and regulation of trademarks, not tradenames. litigants' tradenames and signs were similar; (2) this There is a fundamental distinction between the two, similarity resulted in confusion as to the ownership of and distinctly different legal principles govern their stores in each chain; (3) this confusion would continue protection. A tradename is descriptive of a manufac- into the future; and (4) respondent had a prior right to turer or dealer and applies to a business and its the tradename and sign design by virtue of its prior goodwill, whereas a trademark, in a technical sense, is registration. Accordingly, the Chancellor issued the applicable only to vendable commodities. For discus- following order: sion of this difference, see Children's Bootery v. Sutker, 91 Fla. 60, 107 So. 345, 44 A.L.R. 698 (1926); ‘ORDERED AND ADJUDGED that Plaintiff, JR. Vandenburgh Trademark Law & Procedure s 121(e) FOOD STORES, INC. is the lawful owner of the (2nd ed. 1968); 52 Am.Jur. Trademarks, Tradenames trademark and/or tradename ‘JR. FOOD STORE’ & Trade Practices s 3 (1944). While it is true that a along with the design of said words and the picture of tradename may be used as a trademark under certain a boy as filed in the Office of the Secretary of State, circumstances, we do not have that situation here and State of Florida, and as such is entitled to the exclusive so we are not concerned with the possibility. use of same as set forth under Chapter 495, Florida Statutes. [3] The true effect of respondent's registration of its tradename and sign design was not to invest it in- ‘IT IS FURTHER ORDERED AND ADJUDGED stantaneously with a right to ‘exclusive use’, but rather that Defendant, JUNIOR FOOD STORES OF WEST to establish for respondent the basis for invoking FLORIDA, INC. be and it is hereby enjoined from common law tradename protection principles which using or displaying on any of its retail grocery stores, are predicated upon a prior use of a tradename as or in its advertising of any kind, the use of the words against the subsequent use by another. It was not until ‘JR. FOOD STORE’ or any imitation thereof, and after the initiation of this litigation that the Legislature further enjoined from the use of any sign or advertis- revised Chapter 495 so as to provide for statutory ing or other matter using said words ‘JR. FOOD protection of tradenames. See, for example, Fla.Stats. STORE’, together with the picture of a boy such as ss 495.011(6) and 495.151, F.S.A. of the current re- that which Plaintiff had registered with the Secretary vision, and note that they are without statutory ante- of State, State of Florida.' cedent in Fla.Laws 1957, ch. 57-212. Note also that Fla.Stat. s 495.171, F.S.A. limits the effective date of Upon petitioner's appeal, the District Court held only the revision so as to make it inapplicable to this case. that it would not substitute its judgment for that of the By predicating his order upon Chapter 495, the Chancellor when sufficient evidence supported his Chancellor misapplied the applicable law and the findings and no erroneous application of law was District Court erred by not correcting the situation. apparent. [4] Under the common law, the universal rule go-
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verning tradename protection is that protection will be which is protected, but the business.’ Federal Securi- extended to the first appropriator of a name, within the ties Co. v. Federal Securities Corp., 129 Or. 375, 276 territorial scope of its business, against subsequent use P. 1100, 66 A.L.R. 934 (1929), cited with approval in of the same or a similar name by another. See Florida Lumbermen's Mut. Cas. Co. v. Lumber Mut. Cas. Ins. Ventilated Awning Co. Inc. v. Dickson, 67 So.2d 215 Co. of New York, 154 Fla. 367, 17 So.2d 615 (1944); (Fla.1953) and related decision at 67 So.2d 218 Tampa Wholesale Co. v. Foodtown, U.S.A., Supra. (Fla.1953); First Born Church of the Living God v. The First Born Church,156 Fla. 78, 22 So.2d 452 [6] The Chancellor did not limit his findings merely to (1945); Dye Tradenames: The Common-Law Right of the fact that respondent had made a prior registration. a Corporation to the Protection of its Name, 2 He carefully considered the fact that there had been U.Fla.L.Rev. 156 (1949). There can be no question confusion ‘among persons doing business' with the about the fact that respondent was first to use the litigants because of the similarity of their tradenames. tradename ‘Jr. Food Store.’ Respondent's prior regis- The ‘customer confusion’ test is associated with tra- tration establishes that. However, prior registration dename protection under the general heading ‘unfair does not supply the answer to the question next to be competition’. In effect, this is merely a variation of the asked: ‘What is the territorial scope of the business to universal rule of tradename protection. The test is be protected?’ satisfied when it is shown by one seeking injunctive relief that, because of a similarity of tradenames, po- [5] Two elements need to be considered in regard to tential customers of the first appropriator of a trade- this question: first, what is the territorial scope of name actually do business with a second appropriator respondent's business; second, at what point in time under the mistaken impression that they are doing are the limits to this scope to be determined. In answer business with the first appropriator. If the test were to the first question, we think it is obvious that res- satisfied in the instant case, then we would find no pondent's zone of territorial protection is determined error in the Chancellor's order because his undue re- by the nature of respondent's business. Here we are liance on Chapter 495 would be cured by the fact that concerned with small neighborhood convenience unfair competition was afoot.Stagg Shop of Miami, grocery stores. As was said in the strikingly similar Inc. v. Moss, Supra. case of National Grocery Co. v. National Stores Corp., 95 N.J.Eq. 588, 123 A. 740, 742 (1924): [7] However, we find that when the Chancellor noted the existence of ‘confusion’, he was not referring to ‘Obviously, by force of the definition of the kind of the kind of confusion that is recognized by the com- business in which the parties are engaged, each store mon law. The Chancellor was referring to the fact that must draw its trade from a very small surrounding certain invoices and merchandise had been misdi- territory, because customers obliged to pay cash and rected from stores in one chain to stores in the other by carry away their purchases will not patronize a store deliverymen and salesmen who were confused by the unless within their immediate neighborhood.’ similarity in names. Testimony indicated that mistakes of this nature had also occurred between the litigants Since respondent's stores have not yet acquired a and stores wholly outside of their respective chains. In ‘secondary meaning’ within the sense of that doctrine, similar cases decided by other jurisdictions, this kind we think that each part of the chain must be considered of error has not been deemed of sufficient conse- as a separate entity. See *397Quality Courts United, quence to support an injunction. See Umpqua Broccoli Inc. v. Jones, 59 So.2d 20 (Fla.1952). This being so, Exch. v. Um-Qua Broccoli Growers, 117 Or. 678, 245 we fail to see how it can be said that petitioner oper- P. 324 (1926); Federal Securities Co. v. Federal Se- ates within the territorial scope of respondent's stores. curities Corp., Supra. It is presumed that mistakes Recall that when the Chancellor entered his Final such as these are due merely to inattention on the part Order, respondent and petitioner operated stores of those charged with the servicing of the needs of jointly in only two counties, and in those counties, businesses, and that in time the inattention will be they were operating jointly only in Niceville, Oka- rectified. loosa County. Recall further that in Niceville they operate in separate neighborhoods. How, then, can The proper view of the ‘customer confusion’ test, as they be said to be in competition?‘It is not the name indicated by the definition set out previously, is that it
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is concerned, not with provisioners, but with those terprises, and especially those like the complainant's, who seek to do business at the consumer level. Note, involving a business capable of expansion and the for example, how the test was applied in Stagg Shop of investment of large capital, there is implied the hope, Miami, Inc. v. Moss, Supra, wherein a particular intention, and design of constantly invading new ter- customer was queried as to her reason for shopping in ritory for the purpose of securing an increasing vo- the defendant's store. Testimony by particular cus- lume of business. For reasons already touched upon, tomers is not essential as proof of the test so long as it would be absurd to say that any such intention some evidence is presented regarding diminution in should permit the pre-empting of the use of the name trade caused by the appropriation of a similar name by at a place and a time where such a supposed business another. In the instant case, no evidence of a diminu- enterprise had no customers or business, and therefore tion in respondent's trade was submitted before the nothing to lose. It is entirely too remote and fanciful Chancellor, and no customer testimony was proffered. for the complainant to object to another using a name in another locality, not because he has already estab- [8] It is true that the litigants have stipulated that the lished his trade there, but because he may do so in the similarity of their signs and tradenames would cause future. For it is equally probable he may not.’ confusion ‘if used in the same location.’However, we do not think that this stipulation forecloses petitioner This question is important because, as the Chancellor from the right to operate under a form of its corporate observed in another strikingly similar case, Eastern name, especially since at the time it began operation, it Outfitting Co. v. Manheim, 59 Wash. 428, 110 P. 23, was far removed from any area served by the res- 35 L.R.A.,N.S., 251 (1910), a case cited with approval pondent. It should be remembered that *398 it was the by this Court, McGhan v. McGhan, 115 Fla. 414, 155 respondent, not the petitioner, that made moves which So. 653, the interest sought to be protected must exist presented the potential for commercial conflict; for in fact and not merely in fancy. To hold otherwise example, petitioner had been in business in Okaloosa would be to invite needless litigation and to contribute County since its incorporation, and had been in Nice- substantially towards promoting a pointless disruption ville for some time before respondent placed a store in of commerce. The Chancellor should determine the that town and in that county. effective scope of a complainant's business by in- cluding in his considerations the actual state of affairs This brings us to the answer to our second question: At as they existed at the time when the complaint was what point in time are the limits to territorial protec- perfected. In the instant case, no evidence was pre- tion to be determined? Obviously, the answer depends sented to the Chancellor by respondent concerning upon the facts of the case. We think that the following any further planned expansion into the areas served by words of the Chancellor given in a similar case, Na- petitioner's stores, and, as we have already mentioned, tional Grocery Co. v. National Stores Corp., Supra, are there is insufficient evidence to support the contention most appropriate: that unfair competition existed at the time when the complaint was filed. This being so, we must conclude ‘While I know of no decision of our own courts in a that the Chancellor erred when he issued his order case on all fours with the present case, there are, since the evidence could not support it. however, many opinions in other jurisdictions that make it clear that the right of a given name previously [9] However, we Do think that the facts of this case adopted by a business located in one locality does not call for an injunction against petitioner for another invest the proprietor of that business with the right to reason. Even though one may have a right to use a enjoin the use of the same or a similar name by a tradename which happens to be similar to that of junior enterprise in another locality where one does another, this right does not authorize one to use the not encroach upon the other. (Citations omitted.) But tradename in a manner which tends to be deceptive. the complainant says that this rule is not applicable to Gottdiener v. Joe's Restaurant, 111 Fla. 741, 149 So. the instant case, because, in the very nature of things, 646 (1933); McGhan v. McGhan, Supra; May v. May, the prospect of a so-called chain store business is the 45 So.2d 494 (Fla.1950). constant expanding, reaching out, and establishing of new stores in neighborhoods not already *399 In the instant case, petitioner and respondent tapped. Surely, in the great majority of business en- both operated under the ‘Jitney Junior’ banner and
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liked the tradename because it was a fairly accurate description of their businesses. When petitioner's franchise expired, it chose to adopt the ‘Junior’ label as part of its tradename; it should be recalled that petitioner's corporate name was Junior Food Stores of West Florida, Inc. In view of the facts, we have no complaint with petitioner's decision to adopt the tra- dename it chose. But we do think that it was unrea- sonable for petitioner to adopt the sign design it reg- istered with the Secretary of State for the simple rea- son that it tends to be deceptive. Petitioner's signs are basically identical in nature to respondent's, with the exception that petitioner's signs include in very small lettering the words ‘Of West Florida, Inc.’ It is said that these words are so small that they are not readily visible from the road and that all a passerby tends to see is the large abbreviation ‘Jr.‘ and the picture of a boy and the words ‘Food Store’. We think that equitable principles require that, while petitioner is entitled to use the trade name it registered, it is not entitled to advertise itself in a manner which invites deception. For examples of other cases in which this Court has been concerned with the size of lettering in signs and advertising, see Richard Store Co. v. Ri- chard's Warehouse Sales & Auction Gallery, Inc., 63 So.2d 502 (Fla.1953); McGhan v. McGhan, Su- pra;Gottdiener v. Joe's Restaurant, Supra.
It is our opinion that the decision of the District Court should be quashed and the cause remanded to the Chancellor for further evidentiary hearing to deter- mine the nature of an injunction to be rendered against petitioner in the light of our opinion and judgment, which injunction inter alia might, by its terms, require petitioner to increase the size of the words ‘Of West Florida, Inc.‘ to dimensions which would cleanse its signs and advertising of any taint of deception or provide such other injunctive provisions as the equi- ties of the case may require.
It is so ordered.
ERVIN, C.J., and ROBERTS, DREW and ADKINS, JJ., concur. Fla. 1969. Junior Food Stores of West Florida, Inc. v. Junior Food Stores, Inc. 226 So.2d 393, 163 U.S.P.Q. 500
END OF DOCUMENT
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that competitor's false statements were material to consumers' purchasing decisions; United States Court of Appeals, (5) the district court erred when it presumed that Eleventh Circuit. plaintiffs would suffer irreparable harm in the ab- NORTH AMERICAN MEDICAL CORPORA- sence of a preliminary injunction merely because TION, Adagen Medical International, Inc., Georgia competitor's advertisements were literally false; and corporations, Plaintiffs-Appellees, (6) remand was required for the district court to ad- v. dress the effect of the Supreme Court's decision in AXIOM WORLDWIDE, INC., a Florida corpora- eBay Inc. v. MercExchange, L.L.C. on the tion, James Gibson, Jr., Nicholas Exarhos, residents “irreparable harm” analysis with respect to of Florida, Defendants-Appellants. plaintiffs' trademark infringement claims. No. 07-11574. Affirmed in part and vacated and remanded in part. April 7, 2008. West Headnotes Background: Manufacturer and authorized distrib- utor of physiotherapeutic spinal or “traction” device [1] Federal Courts 170B 815 brought action against competitor, its president, and its vice president, alleging that defendants engaged 170B Federal Courts in unfair competition by infringing manufacturer's 170BVIII Courts of Appeals trademarks and by issuing false advertising regard- 170BVIII(K) Scope, Standards, and Extent ing competitor's own physiotherapeutic device. The 170BVIII(K)4 Discretion of Lower Court United States District Court for the Northern Dis- 170Bk814 Injunction trict of Georgia, No. 06-01678-CV-JTC-1,Jack T. 170Bk815 k. Preliminary Injunc- Camp, Chief Judge, granted a preliminary injunc- tion; Temporary Restraining Order. Most Cited tion in favor of plaintiffs, prohibiting competitor Cases from using manufacturer's “IDD Therapy” and Court of Appeals will reverse a grant of a prelimin- “Accu-Spina” trademarks within its website's meta ary injunction only if the district court abused its tags and prohibiting competitor from making the discretion. challenged statements about its device. Defendants [2] Federal Courts 170B 850.1 appealed. 170B Federal Courts Holdings: The Court of Appeals, Anderson, Circuit 170BVIII Courts of Appeals Judge, held that: 170BVIII(K) Scope, Standards, and Extent (1) competitor's use of manufacturer's trademarks 170BVIII(K)5 Questions of Fact, Verdicts within its website's meta tags was a “use in com- and Findings merce” within the meaning of the Lanham Act; 170Bk850 Clearly Erroneous Findings (2) the district court's finding of a likelihood of of Court or Jury in General confusion was not clearly erroneous, for purposes 170Bk850.1 k. In General. Most of plaintiffs' trademark infringement claims; Cited Cases (3) the district court did not clearly err in finding Court of Appeals reviews the district court's find- that competitor made literally false statements in its ings of fact under a clearly erroneous standard. advertising; (4) the district court did not clearly err in finding [3] Federal Courts 170B 853
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170B Federal Courts 212k138.1 k. In General. Most Cited 170BVIII Courts of Appeals Cases 170BVIII(K) Scope, Standards, and Extent District court may grant a preliminary injunction 170BVIII(K)5 Questions of Fact, Verdicts only if the movant establishes the following: (1) a and Findings substantial likelihood of success on the merits of 170Bk850 Clearly Erroneous Findings the underlying case, (2) the movant will suffer irre- of Court or Jury in General parable harm in the absence of an injunction, (3) 170Bk853 k. Definite and Firm the harm suffered by the movant in the absence of Conviction of Mistake. Most Cited Cases an injunction would exceed the harm suffered by District court's findings of fact is “clearly erro- the opposing party if the injunction issued, and (4) neous” only when, although there is evidence to an injunction would not disserve the public interest. support it, the reviewing court on the entire evid- ence is left with the definite and firm conviction [7] Trademarks 382T 1421 that a mistake has been committed. 382T Trademarks [4] Federal Courts 170B 776 382TVIII Violations of Rights 382TVIII(A) In General 170B Federal Courts 382Tk1418 Practices or Conduct Prohib- 170BVIII Courts of Appeals ited in General; Elements 170BVIII(K) Scope, Standards, and Extent 382Tk1421 k. Infringement. Most 170BVIII(K)1 In General Cited Cases 170Bk776 k. Trial De Novo. Most To prevail on a claim of trademark infringement Cited Cases under the Lanham Act, plaintiffs must establish Court of Appeals reviews the district court's con- that: (1) they possess a valid mark, (2) defendants clusions of law de novo, understanding that applica- used the mark, (3) defendants' use of the mark oc- tion of an improper legal standard is never within a curred “in commerce,” (4) defendants used the district court's discretion. mark “in connection with the sale or advertising of any goods,” and (5) defendants used the mark in a [5] Federal Courts 170B 915 manner likely to confuse consumers. Lanham Act, § 32(1)(a), 15 U.S.C.A. § 1114(1)(a). 170B Federal Courts 170BVIII Courts of Appeals [8] Commerce 83 62.12 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)7 Waiver of Error in Appel- 83 Commerce late Court 83II Application to Particular Subjects and 170Bk915 k. In General. Most Cited Methods of Regulation Cases 83II(C) Monopolies and Trade Regulation Issues not raised on appeal are abandoned. 83k62.12 k. Trade Regulation in General; Trade-Marks and Unfair Competition. Most Cited [6] Injunction 212 138.1 Cases
212 Injunction Trademarks 382T 1558 212IV Preliminary and Interlocutory Injunctions 212IV(A) Grounds and Proceedings to Pro- 382T Trademarks cure 382TIX Actions and Proceedings 212IV(A)2 Grounds and Objections 382TIX(A) In General
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382Tk1557 Jurisdiction is likelihood of confusion, and hence trademark in- 382Tk1558 k. In General. Most Cited fringement, are: (1) strength of plaintiff's mark, (2) Cases similarity between plaintiff's mark and the allegedly Lanham Act defines “commerce” broadly, for juris- infringing mark, (3) similarity between the products dictional purposes, as all commerce which may and services offered by plaintiff and defendant, (4) lawfully be regulated by Congress. Lanham Act, § similarity of the sales methods, (5) similarity of ad- 45, 15 U.S.C.A. § 1127. vertising methods, (6) defendant's intent, for ex- ample, whether defendant hopes to gain competit- [9] Commerce 83 62.12 ive advantage by associating his product with plaintiff's established mark, and (7) actual confu- 83 Commerce sion. Lanham Act, § 32(1)(a), 15 U.S.C.A. § 83II Application to Particular Subjects and 1114(1)(a). Methods of Regulation 83II(C) Monopolies and Trade Regulation [11] Federal Courts 170B 860 83k62.12 k. Trade Regulation in General; Trade-Marks and Unfair Competition. Most Cited 170B Federal Courts Cases 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent Trademarks 382T 1435 170BVIII(K)5 Questions of Fact, Verdicts and Findings 382T Trademarks 170Bk855 Particular Actions and Pro- 382TVIII Violations of Rights ceedings, Verdicts and Findings 382TVIII(A) In General 170Bk860 k. Copyrights, Patents 382Tk1435 k. Internet Use. Most Cited and Trade Regulation. Most Cited Cases Cases District court's findings as to each of the seven Competitor's use of physiotherapeutic spinal device factors considered in determining whether a likeli- manufacturer's “IDD Therapy” and “Accu-Spina” hood of confusion exists, for purposes of a trade- trademarks within its website's meta tags, as part of mark infringement claim, and as to the ultimate its effort to promote and advertise its own products conclusion regarding whether or not a likelihood of on the Internet, was a “use in commerce” within the confusion existed, are subject to the clearly erro- meaning of the Lanham Act; although the meta tags neous standard of review. Lanham Act, § 32(1)(a), were never viewed by consumers, when a consumer 15 U.S.C.A. § 1114(1)(a). entered the trademarks into a search engine, com- petitor caused the trademarks to be displayed to the [12] Trademarks 382T 1116 consumer in the search results' description of com- petitor's site. Lanham Act, § 32(1)(a), 15 U.S.C.A. 382T Trademarks § 1114(1)(a). 382TIII Similarity Between Marks; Likelihood of Confusion [10] Trademarks 382T 1081 382Tk1116 k. Internet Cases. Most Cited Cases 382T Trademarks District court's finding that competitor's use in its 382TIII Similarity Between Marks; Likelihood website's meta tags of physiotherapeutic spinal of Confusion device manufacturer's trademarks resulted in a like- 382Tk1081 k. Factors Considered in General. lihood of confusion was not clearly erroneous, for Most Cited Cases purposes of manufacturer's trademark infringement Factors relevant to determination of whether there claims; competitor's meta tags precisely mimicked
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manufacturer's “IDD Therapy' and Accu-Spina” 29Tk22 k. In General. Most Cited trademarks, it was apparent that competitor inten- Cases ded to gain a competitive advantage by associating its product with manufacturer's trademark, and Antitrust and Trade Regulation 29T 105 though the meta tags were never viewed by con- 29T Antitrust and Trade Regulation sumers, when a consumer entered the trademarks 29TII Unfair Competition into a search engine, competitor caused its compet- 29TII(C) Relief ing website to be displayed, together with a brief 29Tk101 Injunction description of the website which included and high- 29Tk105 k. Proceedings to Impose; lighted manufacturer's trademarked terms, such that Evidence. Most Cited Cases consumers would be led to believe that competitor's Once a court deems an advertisement to be literally products had the same source as manufacturer's false within the meaning of the Lanham Act, a products or that the entities were otherwise related. movant seeking a preliminary injunction need not Lanham Act, § 32(1)(a), 15 U.S.C.A. § 1114(1)(a). present evidence of consumer deception, but, in [13] Antitrust and Trade Regulation 29T contrast, if the court deems an ad to be true but mis- 104(1) leading, the movant, even at the preliminary injunc- tion stage, must present evidence of deception. Lan- 29T Antitrust and Trade Regulation ham Act, § 43(a), 15 U.S.C.A. § 1125(a). 29TII Unfair Competition 29TII(C) Relief [15] Antitrust and Trade Regulation 29T 30 29Tk101 Injunction 29T Antitrust and Trade Regulation 29Tk104 Preliminary or Temporary 29TII Unfair Competition Relief, Grounds, Subjects, and Scope 29TII(A) In General 29Tk104(1) k. In General. Most 29Tk30 k. Sponsorship, Approval, or Cited Cases Connection, Representations Concerning. Most To establish a likelihood of success on the merits of Cited Cases a false advertising claim under the Lanham Act, for District court did not clearly err in finding that purposes of obtaining a preliminary injunction, competitor of physiotherapeutic spinal device man- movant must demonstrate that: (1) the ads of the ufacturer made literally false statements in its ad- opposing party were false or misleading, (2) the ads vertising, for purposes of manufacturer's false ad- deceived, or had the capacity to deceive, con- vertising claims; though competitor claimed an af- sumers, (3) the deception had a material effect on filiation with the National Aeronautics and Space purchasing decisions, (4) the misrepresented Administration (NASA), having one engineer with product or service affects interstate commerce, and NASA training or experience participate in the de- (5) the movant has been, or is likely to be, injured velopment of competitor's device did not constitute as a result of the false advertising. Lanham Act, § joint collaboration between NASA and competitor, 43(a), 15 U.S.C.A. § 1125(a). nor did it support the claim that NASA engineers [14] Antitrust and Trade Regulation 29T 22 developed the device or discovered part of it, fact that device used some components that NASA also 29T Antitrust and Trade Regulation used did not mean that device contained or embod- 29TII Unfair Competition ied NASA technology, and though competitor 29TII(A) In General claimed that its device was Food and Drug Admin- 29Tk21 Advertising, Marketing, and Pro- istration (FDA) “approved,” device, as a Class II motion medical device, was only eligible for FDA
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“clearance,” which was a different process than ap- 29TII(A) In General proval. Lanham Act, § 43(a), 15 U.S.C.A. § 29Tk30 k. Sponsorship, Approval, or 1125(a); Medical Device Amendments of 1976, § 2, Connection, Representations Concerning. Most 21 U.S.C.A. §§ 360c, 360e. Cited Cases District court did not clearly err in finding that false [16] Antitrust and Trade Regulation 29T 87 statements made by competitor of physiotherapeut- ic spinal device manufacturer were material to con- 29T Antitrust and Trade Regulation sumers' purchasing decisions, for purposes of man- 29TII Unfair Competition ufacturer's false advertising claims; type of claims 29TII(B) Actions and Proceedings at issue, regarding competitor's purported affiliation 29Tk85 Proceedings; Trial with the National Aeronautics and Space Adminis- 29Tk87 k. Questions of Law or Fact. tration (NASA) and its device's alleged “approval” Most Cited Cases by the Food and Drug Administration (FDA), logic- Federal Courts 170B 860 ally would have influenced a doctor's decision to purchase competitor's device over a competing ma- 170B Federal Courts chine without those qualities. Lanham Act, § 43(a), 170BVIII Courts of Appeals 15 U.S.C.A. § 1125(a). 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)5 Questions of Fact, Verdicts [19] Antitrust and Trade Regulation 29T 22 and Findings 29T Antitrust and Trade Regulation 170Bk855 Particular Actions and Pro- 29TII Unfair Competition ceedings, Verdicts and Findings 29TII(A) In General 170Bk860 k. Copyrights, Patents 29Tk21 Advertising, Marketing, and Pro- and Trade Regulation. Most Cited Cases motion Whether a statement is literally false, for purposes 29Tk22 k. In General. Most Cited of a false advertising claim under the Lanham Act, Cases is a finding of fact which is reviewed only for clear Even when a court finds that a defendant's ads are error. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). literally false, the plaintiff, to succeed on a claim of [17] Health 198H 303 false advertising, must still establish that the de- fendant's deception is likely to influence the pur- 198H Health chasing decision. Lanham Act, § 43(a), 15 U.S.C.A. 198HI Regulation in General § 1125(a). 198HI(E) Drugs; Medical Devices and In- struments [20] Antitrust and Trade Regulation 29T 22 198Hk303 k. Drugs and Devices Regu- 29T Antitrust and Trade Regulation lated. Most Cited Cases 29TII Unfair Competition Regulation of medical devices is governed by the 29TII(A) In General Federal Food, Drug, and Cosmetic Act. Federal 29Tk21 Advertising, Marketing, and Pro- Food, Drug, and Cosmetic Act, § 1, 21 U.S.C.A. § motion 301. 29Tk22 k. In General. Most Cited [18] Antitrust and Trade Regulation 29T 30 Cases Lanham Act's requirement that a false ad be materi- 29T Antitrust and Trade Regulation al to consumers' purchasing decisions is based on 29TII Unfair Competition the premise that not all deceptions affect consumer
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decisions. Lanham Act, § 43(a), 15 U.S.C.A. § of Cause 1125(a). 170Bk943 Ordering New Trial or Other Proceeding [21] Antitrust and Trade Regulation 29T 170Bk947 k. Further Evidence, Find- 105 ings or Conclusions. Most Cited Cases Remand was required for the district court to ad- 29T Antitrust and Trade Regulation dress the effect of the Supreme Court's decision in 29TII Unfair Competition eBay Inc. v. MercExchange, L.L.C. on the 29TII(C) Relief “irreparable harm” analysis with respect to trade- 29Tk101 Injunction mark infringement claims brought by manufacturer 29Tk105 k. Proceedings to Impose; and authorized distributor of physiotherapeutic Evidence. Most Cited Cases spinal device against competitor; although the District court erred when it presumed that manufac- Court of Appeals' prior cases extended a presump- turer and authorized distributor of physiotherapeut- tion of irreparable harm once a plaintiff seeking a ic spinal device would suffer irreparable harm in preliminary injunction established a likelihood of the absence of a preliminary injunction merely be- success on the merits of its trademark infringement cause competitor's advertisements about its own claim under the Lanham Act, the Supreme Court device were literally false; although competitor's decision, despite dealing with permanent injunctive statements were false, they did not mention manu- relief and a different but similar statute, was applic- facturer's products by name or in any way compare able to the instant case and called this presumption competitor's products with manufacturer's products, into question. Lanham Act, § 43(a), 15 U.S.C.A. § and so manufacturer and authorized distributor 1125(a). were not entitled to the presumption's benefits. Lan- ham Act, § 43(a), 15 U.S.C.A. § 1125(a). Trademarks 382T 1800
[22] Antitrust and Trade Regulation 29T 382T Trademarks 105 382TXI Trademarks and Trade Names Adjudic- ated 29T Antitrust and Trade Regulation 382Tk1800 k. Alphabetical Listing. Most 29TII Unfair Competition Cited Cases 29TII(C) Relief Accu-Spina. 29Tk101 Injunction 29Tk105 k. Proceedings to Impose; Trademarks 382T 1800 Evidence. Most Cited Cases In false advertising cases, proof of falsity is gener- 382T Trademarks ally only sufficient to sustain a finding of irrepar- 382TXI Trademarks and Trade Names Adjudic- able injury when the false statement is made in the ated context of comparative advertising between the 382Tk1800 k. Alphabetical Listing. Most plaintiff's and defendant's products. Lanham Act, § Cited Cases 43(a), 15 U.S.C.A. § 1125(a). IDD Therapy. *1215 L. Joseph Shaheen, Jr., Gardner, Wilkes, [23] Federal Courts 170B 947 Shaheen & Candelora, Tampa, FL, Jonathan R. Granade, George P. Shingler, Casey, Gilson, Lei- 170B Federal Courts bel, P.C., W. Scott Mayfield, Duane Morris, LLP, 170BVIII Courts of Appeals Atlanta, GA, for Defendants-Appellants. 170BVIII(L) Determination and Disposition
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Stephen M. Dorvee, Andrew Blaine Flake, Jonathan viewing court on the entire evidence is left with the T. Barr, Arnall, Golden & Gregory, LLP, Atlanta, definite and firm conviction that a mistake has been GA, for Plaintiffs-Appellees. committed.” Id. (quoting Univ. of Ga. Athletic Ass'n v. Laite, 756 F.2d 1535, 1543 (11th Cir.1985)). We review the district court's conclusions of law de Appeal from the United States District Court for the novo,“understanding that ‘[a]pplication of an im- Northern District of Georgia. proper legal standard ... is never within a district Before ANDERSON, BLACK and HILL, Circuit court's discretion.’ ” Id. (quoting Am. Bd. of Psychi- Judges. atry & Neurology, Inc. v. Johnson-Powell, 129 F.3d 1, 2-3 (1st Cir.1997)).
*1216 ANDERSON, Circuit Judge: II. BACKGROUND Defendants-Appellants Axiom Worldwide, Inc. (“Axiom”), James Gibson, Jr., and Nicholas Exar- NAM designs and manufacturers physiotherapeutic hos appeal the district court's grant of a preliminary spinal devices, commonly known as traction injunction in favor of the Plaintiffs-Appellees, devices, which are used, for example, to treat lower North American Medical Corporation (“NAM”) back pain. Adagen is an authorized distributor of and Adagen Medical International, Inc. NAM's devices. Axiom, a competitor of NAM's, FN1 (“Adagen”). The district court enjoined the De- manufacturers a physiotherapeutic device known fendants-Appellants from engaging in certain al- generally as the DRX 9000. Gibson and Exharhos leged acts of trademark infringement and false ad- are, respectively, the president and vice president of vertising. We now affirm the district court's order Axiom. In the present lawsuit, NAM and Adagen in part and vacate and remand it in part. allege that Axiom engaged in unfair competition by infringing NAM's trademarks and by issuing false FN1. Defendant-Appellant Ren Scott ori- advertising regarding the DRX 9000. ginally participated in this appeal as well, but we previously granted a joint motion to The trademark infringement claims stem from Ax- voluntarily dismiss him from the case after iom's use of two of NAM's registered trademarks: he reached a settlement agreement with the the terms “Accu-Spina” and “IDD Therapy.” Ax- iom included these terms on its website within meta Plaintiffs-Appellees. Accordingly, we need FN2 not address Scott's argument that the dis- tags. Although Axiom's website never dis- trict court lacked personal jurisdiction over played NAM's trademarked terms to visitors and him. never mentioned NAM or NAM's products, Axiom nonetheless included the terms within its meta tags to influence Internet search engines. For instance, I. STANDARD OF REVIEW evidence in this case indicated that, before Axiom removed these meta tags from its website, if a com- [1][2][3][4] We will reverse a grant of a prelimin- puter user *1217 entered the trademarked terms in- ary injunction only if the district court abused its to Google's Internet search engine, Google listed discretion. Johnson & Johnson Vision Care, Inc. v. Axiom's website as the second most relevant search 1-800 Contacts, Inc., 299 F.3d 1242, 1246 (11th result. In addition, Google provided the searcher Cir.2002). We review the district court's findings of with a brief description of Axiom's website, and the fact under a clearly erroneous standard, noting that description included these terms and highlighted a finding of fact is clearly erroneous only when FN3 them. “although there is evidence to support it, the re-
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FN2. Meta tags consist of words and this aspect of the district court's ruling, phrases that are intended to describe the however, Axiom has waived the issue. contents of a website. These descriptions This circuit has consistently held that is- are embedded within the website's com- sues not raised on appeal are abandoned. puter code. Although websites do not dis- See, e.g., Greenbriar, Ltd. v. City of Ala- play their meta tags to visitors, Internet baster, 881 F.2d 1570, 1573 n. 6 (11th search engines utilize meta tags in various Cir.1989). ways. First, when a computer user enters particular terms into an Internet search en- The district court issued a preliminary injunction in gine, the engine may rank a webpage that favor of NAM and Adagen, prohibiting Axiom contains the search terms within its meta from using NAM's trademarks within meta tags and tags higher in the list of relevant results. prohibiting Axiom from making the challenged Second, when a particular webpage is lis- statements about the DRX 9000. Among other ted as a relevant search result, the search things, the district court specifically found that Ax- engine may use the meta tags to provide iom's use of NAM's trademarks created a likelihood the searcher a brief description of the of confusion, and the court also found that Axiom's webpage. See Brookfield Commc'ns, Inc. v. advertising statements are literally false and materi- W. Coast Entm't Corp., 174 F.3d 1036, al to consumers' purchasing decisions. 1045 (9th Cir.1999). III. DISCUSSION FN3. Incidentally, Axiom makes a brief, conclusory argument that no evidence ex- [6] At the outset, we note that a district court may ists to establish that the meta tags affected grant a preliminary injunction only if the movant the search results. We disagree. The evid- establishes the following: “(1) a substantial likeli- ence indicates that nowhere in Axiom's hood of success on the merits of the underlying website do NAM's two trademarked terms case, (2) the movant will suffer irreparable harm in appear (e.g., in comparative advertising). the absence of an injunction, (3) the harm suffered Rather, the terms appear only in Axiom's by the movant in the absence of an injunction meta tags. We cannot conclude that the would exceed the harm suffered by the opposing district court's implied finding of a causal party if the injunction issued, and (4) an injunction relationship is clearly erroneous. would not disserve the public interest.” Johnson & Johnson, 299 F.3d at 1246-47. Axiom challenges [5] The false advertising claims stem from certain the district court's order on multiple grounds. First, statements that Axiom made about its product, the Axiom argues that NAM and Adagen failed to es- DRX 9000. In particular, two representations by FN4 tablish a substantial likelihood of success on the Axiom are relevant to this appeal. First, Axiom merits of their trademark infringement claims. Spe- represented in various ways that an affiliation exists cifically, Axiom urges that its use of NAM's trade- between NASA and Axiom or between NASA and marks in invisible meta tags is not a “use in com- the DRX 9000. Second, Axiom asserted in advert- merce” and does not create a likelihood of confu- isements that the DRX 9000 is FDA “approved.” sion. Second, Axiom argues that NAM and Adagen FN4. A third representation by Axiom, that also failed to establish a substantial likelihood of Axiom patented the DRX 9000 or any por- success on the merits of their false advertising tion or feature thereof, was also deemed claims. Specifically, Axiom asserts that its advert- literally false by the district court. Because ising statements are not literally false and are not Axiom's brief on appeal fails to challenge material to consumers' purchasing decisions. Third
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and finally, Axiom argues that, even assuming 406-07 (2d Cir.2005); People for Ethical Treatment NAM and Adagen are likely to succeed on the mer- of Animals v. Doughney, 263 F.3d 359, 364 (4th its of these unfair competition claims, the district Cir.2001). court erred by categorically presuming that any plaintiff with a viable unfair competition claim will [8] Axiom does not challenge the validity of always suffer irreparable harm in the absence of a NAM's marks, nor does Axiom dispute that its use of NAM's trademarks affects interstate preliminary injunction. We address each point in FN5 turn. commerce. Thus, although Axiom purports to challenge whether its placing of NAM's trademarks in its meta tags is a “use in commerce” and whether *1218 A. Likelihood of Success on the Merits of the such use is likely to confuse consumers, Axiom's Trademark Infringement Claims arguments actually focus only on the second, fourth, and fifth elements. Moreover, because Ax- [7] Because Axiom's use of NAM's trademarks con- iom separates its “use” challenge from its stitutes a “use in commerce” in connection with the “likelihood of confusion” challenge, we first ad- advertisement of goods, and because the district dress the second and fourth elements together (i.e., court did not clearly err in its factual finding that a whether there was a “use ... in connection with the likelihood of confusion exists, NAM and Adagen sale ... or advertising of any goods”), and we then demonstrated a likelihood of success on the merits address the fifth element (i.e., whether such use of their trademark infringement claims. Regarding was in a manner “likely to confuse consumers”). trademark infringement, the Lanham Act provides, in relevant part, as follows: FN5. The Lanham Act defines “commerce” broadly for jurisdictional pur- (1) Any person who shall, without the consent of poses as “all commerce which may law- the registrant- fully be regulated by Congress.” 15 U.S.C. (a) use in commerce any reproduction, counterfeit, § 1127 (2006); see also Bosley Med. Inst., copy, or colorable imitation of a registered Inc. v. Kremer, 403 F.3d 672, 677 (9th mark in connection with the sale, offering for Cir.2005) (describing “use in commerce” sale, distribution, or advertising of any goods as a “jurisdictional predicate”); Planetary or services on or in connection with which such Motion, Inc. v. Techsplosion, Inc., 261 use is likely to cause confusion, or to cause F.3d 1188, 1194-95 (11th Cir.2001) mistake, or to deceive ... (same).
shall be liable in a civil action by the registrant for 1. Use in Commerce in Connection with the Sale or the remedies hereinafter provided. Advertising of Any Goods 15 U.S.C. § 1114(1)(a) (2006). To prevail on a [9] Axiom briefly argues that placing a competitor's claim of trademark infringement in this case, trademarks within meta tags, which consumers nev- plaintiffs must establish: (1) that they possess a val- er view, does not constitute a “use” as required to id mark, (2) that the defendants used the mark, (3) find trademark infringement under the Lanham Act. that the defendants' use of the mark occurred “in However, we readily conclude that the facts of the commerce,” (4) that the defendants used the mark instant case do involve a “use” as contemplated in “in connection with the sale ... or advertising of any the Lanham Act-that is, a use in connection with goods,” and (5) that the defendants used the mark the sale or advertisement of goods. In deciding in a manner likely to confuse consumers. See 1-800 whether Axiom has made an infringing “use,” we Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400,
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focus on the plain language of § 1114(1)(a), which, software, which was “inaccessible to both the C- as noted above, requires a “use in commerce ... of a user and the general public.” Id. at 409. Explaining registered mark in connection with the sale ...*1219 the significance of the fact that the defendant never or advertising of any goods.” 15 U.S.C. § caused plaintiff's trademark to be displayed to the 1114(1)(a). The facts of the instant case are abso- consumer, the court stated that defendant's use of lutely clear that Axiom used NAM's two trade- plaintiff's “website address in the directory does not marks as meta tags as part of its effort to promote create a possibility of visual confusion with 1-800's and advertise its products on the Internet. Under the mark.” Id. plain meaning of the language of the statute, such use constitutes a use in commerce in connection In rejecting Axiom's invitation to rely on 1-800 with the advertising of any goods. Accordingly, we Contacts, we initially note that the above two key readily conclude that plaintiffs in this case have sat- facts are not present in the case before us. First, un- isfied that (1) they possessed a valid mark, (2) that like the defendant in 1-800 Contacts, Axiom in the the defendant used the mark, (3) that the defend- instant case did use NAM's two trademarks in its ant's use of the mark occurred “in commerce,” and meta tags; it did not merely use NAM's unprotected (4) that the defendant used the mark “in connection website address. Second, and again unlike in 1-800 with the sale ... or advertising of any goods.” Contacts, the defendant-Axiom in this case did cause plaintiff's trademark to be displayed to the In an effort to avoid the foregoing plain meaning of consumer in the search results' description of de- FN6 the statutory language, Axiom places its sole reli- fendant's site. Thus, the facts of the instant case ance on the Second Circuit's 1-800 Contacts case. stand in stark contrast to those in 1-800 Contacts, In that case, whenever a consumer who had in- and Axiom's reliance on the Second Circuit's opin- stalled the defendant's computer program clicked ion is therefore misplaced. on or searched for the plaintiff's website address, the program generated on the consumer's screen not FN6. As described more fully below, when only the website sought (e.g., plaintiff's), but also a a consumer in this case entered NAM's second window displaying pop-up ads for the de- trademarks into a search engine, the search fendant's alternative, competing products. 414 F.3d results displayed Axiom's website along at 404-05. The Second Circuit ultimately held, as a with a description thereof, which descrip- matter of law, that such use of the web address is tion included NAM's trademarks in a man- not a “use in commerce.” Id. at 403. ner likely to confuse consumers and sug- gest some relationship between Axiom and In so holding, the Second Circuit emphasized that NAM. the defendant did not use plaintiff's trademark, but rather used its website address, which differed Furthermore, to the extent the 1-800 Contacts court slightly from the mark. Id. at 408-09. Indeed, the based its “use” analysis on the fact that the defend- court explicitly declined to express an opinion on ant did not display the plaintiff's trademark, we the appropriate result if defendant had in fact used think the Second Circuit's analysis is questionable. plaintiff's trademark. Id. at 409 n. 11. Even more Although we believe that the absence of such a dis- crucial to the Second Circuit's holding, the court play is relevant in deciding whether there is a likeli- emphasized repeatedly the fact that the defendant hood of confusion, we believe that, when the ana- never caused plaintiff's trademarks to be displayed lysis separates the *1220 element of likelihood of to a consumer. Id. at 408-10. The court explained confusion from the other elements, this fact is not that the defendant used plaintiff's web address relevant in deciding whether there is a use in com- merely in the internal directory of its proprietary merce in connection with the sale or advertising of any goods. Because the Second Circuit did separate
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its analysis in this manner, and did purport not to Carthy cites Ninth Circuit opinions as cor- address the likelihood of confusion issue, see id. at rectly construing § 1127. Id. (citing, for 406, its reliance on the fact that there was no dis- example, Bosley Med. Inst., Inc. v. Kremer, play of the plaintiff's trademark (and thus no pos- 403 F.3d 672 (9th Cir.2005)). In Kremer, sibility of confusion) undermines the persuasive- the Ninth Circuit noted that § 1127 is ex- ness of its analysis of the separate elements of use pressly prefaced with the caveat: “unless in commerce in connection with the sale or advert- the contrary is plainly apparent from the ising of any goods. context.” 403 F.3d at 677. Thus, the Kre- mer court held that the appropriate issue In sum, we conclude that Axiom's reliance on the was whether the use was “in connection Second Circuit decision in 1-800 Contacts is mis- FN7 with the sale of goods or services.” Id.; see placed. We conclude that the plain meaning of also Playboy Enters., Inc. v. Netscape the statutory language clearly indicates that Ax- Commc'ns Corp., 354 F.3d 1020, 1024 n. iom's use of NAM's trademarks as meta tags consti- 11 (9th Cir.2004). tutes a “use in commerce ... in connection with the sale ... or advertising of any goods” under the facts 2. Likelihood of Confusion of this case. Thus, we turn to the fifth, and final, element that plaintiffs' must establish-that such use [10][11] The district court's finding that a likeli- was “likely to cause confusion.” hood of confusion exists is not clearly erroneous. Seven factors are relevant when determining wheth- FN7. We also note that several cases, in- er a likelihood of confusion exists: cluding 1-800 Contacts, refer to 15 U.S.C. § 1127 with respect to the definition of (1) the strength of the plaintiff's mark; (2) the simil- “use in commerce” in the infringement arity between the plaintiff's mark and the al- context. See, e.g., 1-800 Contacts, 414 legedly infringing mark; (3) the similarity F.3d at 407, 409. However, a leading treat- between the products and services offered by the ise on trademarks notes that § plaintiff and defendant; (4) the similarity of the 1127“defines the kind of ‘use’ needed to sales methods; (5) the similarity of advertising acquire registerable trademark rights-not to methods; (6) the defendant's intent, e.g., does the infringe them.” J. Thomas McCarthy, Mc- defendant hope to gain competitive advantage by Carthy on Trademarks and Unfair Com- associating his product with the plaintiff's estab- petition § 23:11.50 (4th ed.2003). Mc- lished mark; and (7) actual confusion. Carthy explains that § 1127 harked back to Alliance Metals, Inc., of Atlanta v. Hinely Indus., the common law “affixation” requirement, Inc., 222 F.3d 895, 907 (11th Cir.2000). “The find- a formalistic prerequisite to achieving ings as to each factor, and as to the ultimate conclu- technical trademark status. Id. By contrast, sion regarding whether or not a likelihood of confu- McCarthy observes that § 1114(1) merely sion existed, are subject to the clearly erroneous requires that a plaintiff's proof of infringe- standard of review.” Frehling Enters., Inc. v. Int'l ment establish a use in commerce “in con- Select Group, Inc., 192 F.3d 1330, 1335 (11th nection with the sale ... or advertising of Cir.1999). any goods.” Id. In any event, McCarthy notes that the cases that inappropriately [12] The district court expressly acknowledged the cite § 1127 in the context of an infringing foregoing factors, but it made an explicit finding “use” analysis do not apply that section's only with respect to the ultimate conclusion that affixation limitations. Id. Finally, Mc- there was a likelihood of confusion. Regarding that
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issue, Axiom's brief on appeal did not Therefore, we address Axiom's challenge to Brook- challenge*1221 the district court's implied findings field and Promatek. In the leading case on this is- with respect to any of the subsidiary factors (i.e., sue, the Ninth Circuit concluded that the Lanham the foregoing seven factors). Rather, Axiom chal- Act bars a defendant from including in its meta tags lenged only: (1) the district court's implied finding a competitor's trademark or confusingly similar that Axiom's use of NAM's two trademarks as meta terms. Brookfield, 174 F.3d at 1065. Accordingly, FN8 tags caused the Internet search results at issue, the Brookfield court enjoined one online video and (2) the district court's reliance on Brookfield store, West Coast, from using in its meta tags the Communications, Inc. v. West Coast Entertainment trademark (and similarly confusing terms) of a Corp., 174 F.3d 1036 (9th Cir.1999), and Promatek competing online video store, Movie Buff. Id. at Industries, Ltd. v. Equitrac Corp., 300 F.3d 808 1066-67. Despite its ultimate conclusion, the (7th Cir.2002), with respect to the nature of meta Brookfield court conceded that even when a con- tags and search engines. Axiom argues that those sumer who enters a company's trademark into a opinions erroneously misled the district court to search engine sees a list displaying a competitor's find a likelihood of confusion; Axiom contends that website in addition to the trademark holder's web- its use of the meta tags was instead analogous to a site, the consumer will often be able to find the par- store placing its own generic brand next to a brand ticular website he is seeking by simply scanning the name product on the store's shelf. Because Axiom list of results. Id. at 1062. The court also acknow- has not challenged the district court's implied find- ledged that even if the web user chooses the com- ings with respect to the subsidiary factors, any such petitor's website from the list, assuming the al- challenge is deemed abandoned. Indeed, it is appar- legedly infringed trademark is not actually dis- ent that the marks are not only similar, but identic- played by the competitor, “it is difficult to say that al; Axiom's meta tags precisely mimic NAM's a consumer is likely to be confused about whose “IDD Therapy” and “Accu-Spina” trademarks. Ax- site he has reached or to think that [the plaintiff] iom concedes that it is a direct competitor of NAM. somehow sponsors [the competitor's] web site.” Id. It is also apparent that Axiom intended to gain a Nevertheless, the Brookfield court concluded that competitive advantage by associating its product the competitor's use of the trademark “in metatags with NAM's trademark. Finally, the litigation on will still result in what is known as initial interest appeal has proceeded on the assumption that there confusion.” Id. That is, “[a]lthough there is no would be a likelihood of confusion, unless Axiom's source confusion in the sense that consumers know arguments about the nature of meta tags and search they are patronizing [the competitor] rather than engines (i.e., Axiom's challenge to Brookfield and [the plaintiff], there is nevertheless initial interest Promatek) prevailed. confusion in the sense that, by using [the trade- mark] to divert people looking for [the plaintiff's] FN8. As noted above, we summarily reject web site, [the competitor] improperly benefits from this argument. See supra note 3. NAM's the good will that [the plaintiff] has developed in its trademarks appeared in the Google search mark.” Id. result as part of the description of Axiom's website. Because on this record the only *1222 In the other case relied upon by the district possible cause for this is Axiom's use of court, the Seventh Circuit faced facts similar to the trademarks as meta tags, we readily those in Brookfield and agreed with the Brookfield conclude that the district court was not court's analysis. Promatek, 300 F.3d at 810-13. clearly erroneous in its implicit finding Other courts, however, have criticized various as- that the meta tags caused the search result pects of the Brookfield opinion. See, e.g., 1-800 and thus the likelihood of confusion. Contacts, 414 F.3d at 410-11; Playboy Enters., Inc.
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v. Netscape Commc'ns Corp., 354 F.3d 1020, tion of Axiom's website, which description included 1034-36 (9th Cir.2004) (Berzon, J., concurring); and highlighted NAM's trademarked terms. That is, J.G. Wentworth, S.S.C. Ltd. P'ship v. Settlement the evidence in the instant case specifically shows Funding LLC, No. 06-0597, 2007 WL 30115, at that if consumers searched with Google for the *6-*7 (E.D.Pa. Jan. 4, 2007); see alsoJ. Thomas terms “IDD Therapy” and “Accu-Spina,” the first McCarthy, McCarthy on Trademarks and Unfair listed result was a legitimate website sponsored by Competition § 25:69 (4th ed.2003) (discussing meta NAM, the owner of these trademarks, and the tags, initial interest confusion, and criticisms of the second entry in the search results was Axiom's Brookfield court's approach). competing website. Furthermore, and in contrast to Brookfield and Promatek, as noted above, the Like the Brookfield and Promatek courts, we ulti- search results not only listed the competitor's (i.e., mately conclude that a company's use in meta tags Axiom's) web address, but they also included a of its competitor's trademarks may result in a likeli- brief description of the Axiom's site, and this de- hood of confusion. However, because NAM and scription included and highlighted both of NAM's Adagen have demonstrated a likelihood of actual FN9 trademarked terms, “IDD Therapy” and source confusion, we need not decide, as those “Accu-Spina,” in addition to Axiom's competing courts did, whether initial interest confusion alone products. Consumers viewing these search results may provide a viable method of establishing a like- would be led to believe that Axiom's products have lihood of confusion. Unlike those courts, we are not the same source as the products of the owner of the faced with a situation where the trademarks are “IDD Therapy” and “Accu-Spina” trademarks, or at used without being displayed to consumers. least that Axiom distributed or sold all of the products to which the brief description referred, or FN9. “Source confusion” exists because that Axiom was otherwise related to NAM. This, of consumers are likely to be confused as to course, is misleading to the consumer because Ax- whether Axiom's products have the same iom is not related in any way to NAM, nor does source or sponsor as NAM's or whether Axiom distribute or sell the products of NAM. there is some other affiliation or relation- Moreover, there was nothing in Axiom's website it- ship between the two. As has been noted self to disabuse consumers of the notion (suggested by the Eighth Circuit, “[i]f the products are by the Google search) that there is some relation- closely related, and it is reasonable for ship between Axiom and *1223 NAM. In other consumers to believe the products come words, if consumers accessed Axiom's website after from the same source, confusion is more viewing the Google search results, they would be likely.” Davis v. Walt Disney Co., 430 F.3d told all about Axiom's products but would be met 901, 904 (8th Cir.2005). with utter silence with respect to NAM's products. In Brookfield and Promatek, consumers who For example, there was no comparative advertising entered the plaintiff's trademarks into a search en- in Axiom's website which would have made clear to gine saw a list displaying the competitor's website consumers that NAM's and Axiom's products are in addition to the trademark holder's website competing items. Thus, the factual situation in the without any other indication from the search results instant case is that Axiom's use of the meta tags that the competitor's website is sponsored by the caused a likelihood of actual consumer confusion as plaintiff or related to the plaintiff's trademarks. In to source. contrast, in the instant case, when consumers The instant case is more like Playboy Enterprises, entered NAM's trademarks into a search engine, the Inc. v. Netscape Communications Corp., 354 F.3d search results not only displayed Axiom's compet- 1020 (9th Cir.2004), than Brookfield or Promatek. ing website, but they also included a brief descrip-
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In Playboy, the defendant, Netscape, sold advertise- much like the product placement in a department ments to competitors of Playboy and then caused its store. Id. at 1035. When a customer walks in, asks search engine to pop up banner ads of its advert- for the Calvin Klein section, and is directed to the isers. Playboy, 354 F.3d at 1023. The ads appeared second floor, no one thinks that there is a trademark when the consumer-searcher typed in the search infringement because the store has placed its own terms “Playboy” and/or “Playmate,” which are (or another competitor's) clothing line in a more trademark terms owned by Playboy. Id. The search prominent place as a distraction. Id. engine operated in this manner by using “keying” words in its software. Id. at 1022-23. A competit- Because Axiom's use of NAM's trademarks as meta or's ad could be keyed to pop up in a banner ad tags caused the Google search to suggest that Ax- along the margin of the search result when the iom's products and NAM's products had the same searcher entered “Playboy” and/or “Playmate.” Id. source, or that Axiom sold both lines, or that there at 1023. Thus, the keying words operated in hidden was some other relationship between Axiom and fashion, much like the meta tags in this case. Be- NAM, Axiom's use of the meta tags caused a likeli- cause the banner ads appeared immediately after hood of actual source confusion. Thus, the instant the searcher typed in the Playboy trademarks, and case is very different from the product placement in invited the user to “click here,” id. at 1023, and es- a department store. This case is also very different pecially because the banner ads did not clearly from Brookfield where there was never source con- identify a source (i.e., the sponsor of the ad), id. at fusion. Finally, the instant case is not subject to the 1025 n. 16, 1030, the user was likely to be confused criticism leveled by Judge Berzon. regarding the sponsorship of the unlabeled advert- *1224 For the foregoing reasons, and under the par- isements. Thus, the Playboy case involved some ac- ticular factual circumstances of this case, we cannot tual confusion as to source, unlike the situation in conclude that the district court's finding of a likeli- Brookfield where there was never any confusion as FN10 hood of confusion is clearly erroneous. Be- to source or affiliation. The instant case is more cause the district court in this case was not clearly like Playboy than Brookfield. We note, however, erroneous in finding (1) that plaintiffs possessed that the source confusion in the instant case is con- valid trademarks; (2) that defendants used those siderably more pronounced than in Playboy. In marks, (3) in commerce, (4) in connection with the Playboy, there was no explicit representation of a advertisement of defendant's goods; and (5) that relationship between the source of the ad and Play- such use caused a likelihood of confusion to con- boy, while there is an explicit representation in this sumers, we conclude that the district court did not case of some relationship between Axiom and err in concluding that plaintiffs demonstrated a NAM. likelihood of success with respect to the trademark Judge Berzon wrote a concurring opinion in Play- infringement claim. boy in which he highlighted this distinction from FN10. We note that our holding is narrow, Brookfield. Id. at 1035-36 (Berzon, J., concurring). and emphasize what kind of case and what Judge Berzon criticized Brookfield, arguing that it kind of facts are not before us. This is not involved merely a distraction of a potential custom- a case like Brookfield or Promatek where a er with another choice in a situation in which the defendant's use of the plaintiff's trademark customer was never confused as to source. Id. as a meta tag causes in the search result Rather, the potential customer merely was provided merely a listing of the defendant's website an opportunity for another choice, which clearly along with other legitimate websites, was not the sponsor of the original search. Id. Such without any misleading descriptions. This distraction, Judge Berzon pointed out, was very is also not a case where the defendant's
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website includes an explicit comparative shall be liable in a civil action by any person who advertisement (e.g., our product uses a believes that he or she is or is likely to be dam- technology similar to that of a trademarked aged by such act. product of our competitor, accomplishes similar results, but costs approximately 15 U.S.C. § 1125(a) (2006). To establish a likeli- half as much as the competitor's product). hood of success on the merits of a false advertising Although we express no opinion thereon, claim under this section, the movant must demon- such a defendant may have a legitimate strate the following: “(1) the ads of the opposing reason to use the competitor's trademark as party were false or misleading, (2) the ads de- a meta tag and, in any event, when the de- ceived, or had the capacity to deceive, consumers, fendant's website is actually accessed, it (3) the deception had a material effect on purchas- will be clear to the consumer that there is ing decisions, (4) the misrepresented product or ser- no relationship between the defendant and vice affects interstate commerce, and (5) the the competitor beyond the competitive re- movant has been-or is likely to be-injured as a res- lationship. Resolution of the foregoing, as ult of the false advertising.” Johnson & Johnson, well as other factual situations not before 299 F.3d at 1247. Axiom only challenges the dis- us, appropriately await the day that such trict court's conclusions regarding the first and third elements-that is, whether Axiom's statements are factual situations are presented concretely. FN11 literally false and whether the statements*1225 have a material effect on purchas- B. Likelihood of Success on the Merits of the False ing decisions. Advertising Claims FN11. In the present case, we may only [13][14] The district court did not clearly err in its sustain the preliminary injunction as it per- factual findings that Axiom's representations are lit- tains to literally false statements, as op- erally false and material to consumers' purchasing posed to those that are merely misleading. decisions, and thus NAM and Adagen demonstrated As we have explained before, “once a a likelihood on success on the merits of their false court deems an advertisement to be liter- advertising claims. Regarding false advertising, ally false, the movant need not present section 43(a) of the Lanham Act provides, in relev- evidence of consumer deception,” but in ant part, as follows: contrast, “[i]f the court deems an ad to be true but misleading, the movant-even at the (1) Any person who, on or in connection with any preliminary injunction stage-must present goods or services, or any container for goods, evidence of deception.” Johnson & John- uses in commerce any word, term, name, symbol, son, 299 F.3d at 1247. Here, the district or device, or any combination thereof, or any court ruled that NAM and Adagen have not false designation of origin, false or misleading offered evidence of deception at this stage description of fact, or false or misleading repres- of the proceedings, and therefore the dis- entation of fact, which- trict court acknowledged that it could only (B) in commercial advertising or promotion, mis- enjoin those advertising statements that are represents the nature, characteristics, qualities, literally false, not those that are merely or geographic origin of his or her or another misleading. Even if the statements are mis- person's goods, services, or commercial activit- leading (but not false), which would satisfy ies, the first element, the second element would remain unsatisfied at this stage, and
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a preliminary injunction would be inappro- matter ....’ ” (quoting United Indus. Corp. priate. Accordingly, if we rule that any of v. Clorox, 140 F.3d 1175, 1180 (8th Axiom's representations are not literally Cir.1998))). false, we would have to reverse that aspect of the preliminary injunction. FN13. Furthermore although Axiom ob- jects that several of its statements regard- ing NASA only appeared in a video that 1. Literal Falsity was never released to any potential con- sumers, the record contains ample evid- [15][16] The district court did not clearly err when ence of additional statements, beyond it concluded that Axiom made literally false state- FN12 those in the video, that support the district ments in its advertising. First, the district court's ruling of literal falsity. court did not clearly err when it ruled that Axiom's claims about an affiliation with NASA are literally [17] Second, the district court likewise did not false. Although one engineer with NASA training clearly err when it ruled that Axiom's claims about or experience participated in Axiom's development the DRX 9000 being FDA “approved” are literally of the DRX 9000, this does not constitute a joint false. The DRX 9000 is a Class II medical device, collaboration between NASA and Axiom, nor does which is only eligible for FDA “clearance” rather it support the claim that NASA engineers de- than FDA “approval;” FDA approval is a separate FN14 veloped the DRX 9000 or discovered part of the process that applies only to Class III devices. DRX 9000. Similarly, although the DRX 9000 used See*122621 U.S.C. §§ 360c, 360e (2006). some components that NASA also uses, that does Compare21 C.F.R. § 807.81(a)(1) (2006), with21 not mean the DRX 9000 contains or embodies C.F.R. § 814.1(c) (2006). As such, Axiom's state- NASA technology. Perhaps these statements could ments that the DRX 9000 is FDA “approved” are properly be characterized as misleading rather than literally false. In fact, FDA regulations state that it literally false, but it is a fine line, and we will only “is misleading and constitutes misbranding” to reverse the district court if its findings are clearly claim FDA approval when a device is merely FDA erroneous. Based on the entire evidence, we are not cleared. See21 C.F.R. § 807.97 (2006). Although left with the definite and firm conviction that the FN13 these regulations use the term “misleading,” they district court clearly erred. also describe such a misrepresentation as “misbranding,” and again, it is often a matter of de- FN12. Whether a statement is literally gree whether a statement is literally false or merely false is a finding of fact, which is reviewed misleading. Based on the entire evidence, we are only for clear error. Scotts Co. v. United convinced that the district court did not clearly err Indus. Corp., 315 F.3d 264, 274 (4th FN15 in judging Axiom's statements literally false. Cir.2002) (noting that literal falsity of an advertisement is a factual question subject FN14. Regulation of medical devices is to the clearly erroneous standard); see also governed by the Federal Food, Drug, and Time Warner Cable, Inc. v. DIRECTV, Cosmetic Act, 52 Stat. 1040, as amended Inc., 497 F.3d 144, 158 (2d Cir.2007); by the Medical Device Amendments of Hickson Corp. v. N. Crossarm Co., Inc., 1976, 90 Stat. 539, 21 U.S.C. § 301 et seq. 357 F.3d 1256, 1261 (11th Cir.2004) (“The See Buckman Co. v. Plaintiffs' Legal first element of the Lanham Act test re- Comm., 531 U.S. 341, 345, 121 S.Ct. 1012, quires that the plaintiff show that the state- 1015, 148 L.Ed.2d 854 (2001). Under ments at issue were either ‘(1) commercial these regulations, medical devices are di- claims that are literally false as a factual vided into three categories: “Class I
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devices are those that present no unreason- spective patients. In fact, after the onset of litiga- able risk of illness or injury and therefore tion against Axiom, several doctors who had pur- require only general manufacturing con- chased DRX 9000s sent letters to Axiom expressing trols; Class II devices are those possessing their dissatisfaction with the possibility that they a greater potential dangerousness and thus might not be able to use Axiom's claims, if the warranting more stringent controls; Class claims proved untrue, to attract patients. These let- III devices ‘presen[t] a potential unreason- ters provide clear evidence that Axiom's representa- able risk of illness or injury’ and therefore tions would affect doctors' decisions whether to incur the FDA's strictest regulation.” Id. purchase a DRX 9000. Based on this and all other (quoting § 360c(a)(1)(C)(ii)(II) (1994 & evidence currently in the record, the district court Supp. V)). did not err in its conclusion that these false state- ments are material to consumers' purchasing de- FN15. Furthermore, despite Axiom's argu- cisions. ments to the contrary, the district court did not step into the FDA's shoes when it ruled that the DRX 9000 was not approved. The C. Presumptions of Irreparable Harm district court was not making a determina- Even though we hold that NAM and Adagen have tion whether the device should be ap- established a substantial likelihood of success on proved, it merely noted what the FDA had the merits of their trademark infringement and false already determined. advertising claims, we must still evaluate whether NAM and Adagen have demonstrated, with respect 2. Materiality to Consumers' Purchasing Decisions to each claim, that they will suffer irreparable harm in the absence of an injunction. In reaching its con- [18][19][20] The evidence amply supports the dis- clusion that NAM and Adagen satisfied this ele- trict court's conclusion that Axiom's statements are ment of the preliminary injunction test, the district material to consumers' purchasing decisions. Even court relied on two presumptions, one regarding the when a court finds that a defendant's ads are liter- infringement claims and one regarding the false ad- ally false, the plaintiff, to succeed on a claim of vertising claims. For the reasons that follow, we va- false advertising, must still “establish that ‘the de- cate the preliminary injunction with respect to both fendant's deception is likely to influence the pur- the trademark claims and the false advertising chasing decision.’ ” Johnson & Johnson, 299 F.3d claims. at 1250 (quoting Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 311 (1st Cir.2002)). “The materiality requirement is based 1. Irreparable Harm in False Advertising Cases on the premise that not all deceptions affect con- [21][22] The district court erred when it presumed sumer decisions.” Id. that NAM and Adagen would *1227 suffer irrepar- The types of false claims that the district court en- able harm in the absence of a preliminary injunc- joined-regarding NASA affiliation and FDA ap- tion merely because Axiom's advertisements are lit- proval-logically would influence a doctor's decision erally false. The district court cited a case out of the to purchase the DRX 9000 over a competing ma- Northern District of Georgia, Energy Four, Inc. v. chine without those qualities. These statements not Dornier Medical Systems, Inc., 765 F.Supp. 724, only represent the quality of the device, but they 734 (N.D.Ga.1991), for the following proposition: provide marketing opportunities to the purchasing “In false advertising cases, ‘[p]roof of falsity is suf- doctor when he or she in turn is advertising to pro- ficient to sustain a finding of irreparable injury for
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purposes of a preliminary injunction.’ ” This quote, sumption of irreparable harm on its false advert- however, is an incomplete statement of the law. ising claims, our prior cases do extend a presump- Proof of falsity is generally only sufficient to sus- tion of irreparable harm once a plaintiff establishes tain a finding of irreparable injury when the false a likelihood of success on the merits of a trademark statement is made in the context of comparative ad- infringement claim. Our circuit has acknowledged vertising between the plaintiff's and defendant's as much on several occasions. See, e.g., Tally-Ho, products. SeeMcCarthy, supra, § 27:37 (“Where the Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1029 challenged advertising makes a misleading compar- (11th Cir.1989) (“ ‘It is generally recognized in ison to a competitor's product, irreparable harm is trademark infringement cases that (1) there is not presumed. But if the false advertising is non- [an] adequate remedy at law to redress infringement comparative and makes no direct reference to a and (2) infringement by its nature causes irrepar- competitor's product, irreparable harm is not pre- able harm.’ ” (quoting Processed Plastic Co. v. sumed.”(internal footnotes omitted)). Although Warner Commc'ns, 675 F.2d 852, 858 (7th some cases, such as the one cited by the district Cir.1982))); McDonald's Corp. v. Robertson, 147 court, employ language that may suggest a more F.3d 1301, 1310 (11th Cir.1998). expansive presumption, such quotes take the origin- al principle out of context without explanation. Nonetheless, although established law entitles NAM and Adagen to this presumption in the trade- Once this presumption is properly stated, it be- mark infringement context, a recent U.S. Supreme comes evident that NAM and Adagen are not en- Court case calls into question whether courts may titled to the presumption's benefits because Axiom's presume irreparable harm merely because a statements, although false, do not mention NAM's plaintiff in an intellectual property case has demon- products by name or in any way compare Axiom's strated a likelihood of success on the merits. See FN16 products with NAM's products. This is not to generally eBay Inc. v. MercExchange, L.L.C., 547 say that NAM and Adagen could not demonstrate, U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). absent the presumption, that they will suffer irre- In eBay, after a jury had found patent infringement parable harm from Axiom's false advertising, but by the defendant, the district court denied the the district court abused its discretion by relying plaintiff's motion for permanent*1228 injunctive solely on the presumption to find irreparable harm. relief. Id. at 390-91, 126 S.Ct. at 1839. In so doing, Accordingly, we vacate the preliminary injunction the district court “appeared to adopt certain expans- to the extent it proscribes Axiom's false advertising, ive principles suggesting that injunctive relief could and we remand to the district court to determine not issue in a broad swath of cases.” Id. at 393, 126 whether NAM and Adagen will suffer irreparable S.Ct. at 1840. On appeal, the Federal Circuit re- harm in the absence of a preliminary injunction. versed the denial of injunctive relief, articulating a categorical rule that permanent injunctions shall is- FN16. In reaching this conclusion, we need sue once infringement is established. Id. at 393-94, not address whether this conclusion is also 126 S.Ct. at 1841. The Supreme Court reversed the indicated by eBay Inc. v. MercExchange, Federal Circuit and admonished both the district L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164 and appellate courts for applying categorical rules L.Ed.2d 641 (2006). to the grant or denial of injunctive relief. Id. at 394, 126 S.Ct. at 1841. The Court stressed that the Pat- 2. Irreparable Harm in Trademark Infringement ent Act indicates “that injunctive relief ‘may’ issue Cases only ‘in accordance with the principles of equity.’ ” Id. at 393, 126 S.Ct. at 1839. Because the Court [23] Regardless of whether NAM deserves a pre- concluded “that neither court below correctly ap-
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plied the traditional four-factor framework that cision by fully applying eBay without the benefit of governs the award of injunctive relief, [it] vacated a presumption of irreparable injury, or it may well the judgment of the Court of Appeals, so that the decide that the particular circumstances of the in- District Court may apply that framework in the first stant case bear substantial parallels to previous instance.” Id. at 394, 126 S.Ct. at 1841. The Su- cases such that a presumption of irreparable injury preme Court held that while “the decision whether is an appropriate exercise of its discretion in light to grant or deny injunctive relief rests within the of the historical traditions. See eBay, 547 U.S. at equitable discretion of the district courts, ... such 394-97, 126 S.Ct. at 1841-43 (concurring opinions discretion must be exercised consistent with tradi- of Chief Justice Roberts and Justice Kennedy, rep- tional principles of equity, in patent disputes no less resenting the views of seven Justices). Accordingly, than in other cases governed by such standards.” Id. we also vacate the preliminary injunction as it ap- plies to the trademark infringement claim, and re- Although eBay dealt with the Patent Act and with mand to the district court for further proceedings permanent injunctive relief, a strong case can be not inconsistent with this opinion, and with eBay. made that eBay's holding necessarily extends to the grant of preliminary injunctions under the Lanham FN17 Act. Similar to the Patent Act, the Lanham Act *1229 IV. CONCLUSION grants federal courts the “power to grant injunc- tions, according to the principles of equity and FN17. We also reject Axiom's argument upon such terms as the court may deem reason- that the district court failed to exercise its able.” 15 U.S.C. § 1116(a) (2006). Furthermore, no discretion with respect to the bond issue. obvious distinction exists between permanent and The district court did exercise its discretion preliminary injunctive relief to suggest that eBay not to require a bond. should not apply to the latter. Because the language of the Lanham Act-granting federal courts the In sum, we affirm the district court's findings with power to grant injunctions “according to the prin- respect to the likelihood of success on the merits of ciples of equity and upon such terms as the court the trademark claims and the false advertising may deem reasonable”-is so similar to the language claims. However, we vacate the preliminary injunc- of the Patent Act, we conclude that the Supreme tion with respect to both, and we remand to the dis- Court's eBay case is applicable to the instant case. trict court for further proceedings not inconsistent with this opinion. However, we decline to express any further opinion with respect to the effect of eBay on this case. For AFFIRMED IN PART, VACATED AND RE- example, we decline to decide whether the district MANDED IN PART. court was correct in its holding that the nature of the trademark infringement gives rise to a presump- C.A.11 (Ga.),2008. tion of irreparable injury. In other words, we de- North American Medical Corp. v. Axiom World- cline to address whether such a presumption is the wide, Inc. equivalent of the categorical rules rejected by the 522 F.3d 1211, 2008-1 Trade Cases P 76,124, 86 Court in eBay. We decline to address such issues U.S.P.Q.2d 1462, 21 Fla. L. Weekly Fed. C 552 for several reasons. First, the briefing on appeal has END OF DOCUMENT been entirely inadequate in this regard. Second, the district court has not addressed the effect of eBay. Finally, the district court may well conclude on re- mand that it can readily reach an appropriate de-
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170BVIII(K) Scope, Standards, and Extent 170BVIII(K)3 Presumptions United States Court of Appeals, 170Bk802 k. Summary Judgment. Most Eleventh Circuit. Cited Cases PLANETARY MOTION, INC., Plaintiff- Review of district court's grant of summary judgment is Counter-Defendant-Appellee, de novo, with all facts and reasonable inferences there- v. from reviewed in light most favorable to non-moving TECHSPLOSION, INC., Michael Gay a.k.a. Michael party. Carson, Defendants-Counter-Claimants-Appellants. No. 00-10872. [2] Trademarks 382T 1413
Aug. 16, 2001. 382T Trademarks 382TVIII Violations of Rights Owner of trademark for e-mail checking service sued 382TVIII(A) In General competitor for infringement. The United States District 382Tk1411 Constitutional and Statutory Pro- Court for the Southern District of Florida, No. visions 99-06511-CV-DTKH, Daniel T.K. Hurley, J., held for 382Tk1413 k. Purpose and Construction in owner, and competitor appealed. The Court of Appeals, General. Most Cited Cases Restani, Judge, United States Court of International (Formerly 382k331 Trade Regulation) Trade, sitting by designation, held that: (1) owner's dis- Lanham Act provision forbidding trademark infringe- tribution of software for end-users over Internet, even ment is remedial in nature and should be interpreted and absent any sales thereof, was sufficient to establish applied broadly so as to effectuate its remedial purpose. trademark rights in software's name; (2) owner's initial Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § trademark rights in e-mail notification software exten- 1125(a). ded to its subsequent service allowing users to check e- mail via telephone line; and (3) award of attorney fees [3] Trademarks 382T 1421 was abuse of discretion. 382T Trademarks Affirmed in part; vacated in part. 382TVIII Violations of Rights 382TVIII(A) In General West Headnotes 382Tk1418 Practices or Conduct Prohibited in General; Elements [1] Federal Courts 170B 776 382Tk1421 k. Infringement. Most Cited 170B Federal Courts Cases 170BVIII Courts of Appeals (Formerly 382k332 Trade Regulation) 170BVIII(K) Scope, Standards, and Extent To prevail under Lanham Act, trademark infringement 170BVIII(K)1 In General claimant must show that (1) it had prior rights to mark 170Bk776 k. Trial De Novo. Most Cited at issue and (2) defendant had adopted mark or name Cases that was same, or confusingly similar to its mark, such that consumers were likely to confuse the two. Lanham Federal Courts 170B 802 Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).
170B Federal Courts [4] Trademarks 382T 1420 170BVIII Courts of Appeals 382T Trademarks
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382TVIII Violations of Rights satisfied “use in commerce” jurisdictional predicate for 382TVIII(A) In General application of Lanham Act, and was sufficiently public 382Tk1418 Practices or Conduct Prohibited in to create ownership rights in mark. Lanham Trade-Mark General; Elements Act, §§ 43(a), 45, 15 U.S.C.A. §§ 1125(a), 1127. 382Tk1420 k. Unfair Competition. Most Cited Cases [7] Trademarks 382T 1142 (Formerly 382k403 Trade Regulation) 382T Trademarks Court may use analysis of federal trademark infringe- 382TIV Creation and Priority of Rights ment claim as “measuring stick” in evaluating merits of 382Tk1142 k. Affixation. Most Cited Cases state law claim of unfair competition. Lanham Trade- (Formerly 382k64 Trade Regulation) Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). There is no requirement that, for trademark in software [5] Trademarks 382T 1142 to be valid, mark must appear on box containing product incorporating it, that mark must be displayed on 382T Trademarks screen when program is running, or that software bear- 382TIV Creation and Priority of Rights ing mark be selling point for the product into which it is 382Tk1142 k. Affixation. Most Cited Cases incorporated; there is no requirement that public come (Formerly 382k64 Trade Regulation) to associate mark with product in any particular way or Affixation requirement for trademark protection was that public be passive viewers of mark for sufficient met where software in question was distributed under fi- public association to arise. Lanham Trade-Mark Act, § lename that was also claimed mark, was promoted un- 45, 15 U.S.C.A. § 1127. der same mark, was accompanied by user manual bear- ing mark, and was sold in compilation under mark. Lan- [8] Trademarks 382T 1164 ham Trade-Mark Act, §§ 43(a), 45, 15 U.S.C.A. §§ 382T Trademarks 1125(a), 1127. 382TV Duration and Termination of Rights [6] Trademarks 382T 1136(2) 382Tk1162 Use by Others 382Tk1164 k. Permission; Voluntary Arrange- 382T Trademarks ments. Most Cited Cases 382TIV Creation and Priority of Rights (Formerly 382k65 Trade Regulation) 382Tk1132 Use of Mark Fact that software had been distributed pursuant to 382Tk1136 Nature and Extent of Use “GNU General Public License” did not defeat owner- 382Tk1136(2) k. Particular Cases. Most ship of trademark in software's name, or in any way Cited Cases compel finding that owner abandoned his rights in (Formerly 382k65 Trade Regulation) trademark.
Trademarks 382T 1435 [9] Trademarks 382T 1188
382T Trademarks 382T Trademarks 382TVIII Violations of Rights 382TVI Nature, Extent, and Disposition of Rights 382TVIII(A) In General 382Tk1187 Persons Entitled to Assert Rights 382Tk1435 k. Internet Use. Most Cited Cases 382Tk1188 k. In General. Most Cited Cases (Formerly 382k331 Trade Regulation) (Formerly 382k61 Trade Regulation) Distribution of software for end-users over Internet, Eleemosynary individual that uses trademark in connec- even absent any sales thereof, was sufficient to establish tion with good or service may nonetheless acquire own- trademark rights in software's name; distribution both ership rights in mark if there is sufficient evidence of
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competitive activity. Lanham Trade-Mark Act, §§ 43(a), Court determines proper scope of protection of trade- 45, 15 U.S.C.A. §§ 1125(a), 1127. mark in context of intervening uses by applying “source or sponsorship test,” under which mark owner has pro- [10] Trademarks 382T 1081 tection against use of its mark on any product or service which would reasonably be thought by buying public to 382T Trademarks come from same source, or thought to be affiliated with, 382TIII Similarity Between Marks; Likelihood of connected with, or sponsored by, mark owner. Confusion 382Tk1081 k. Factors Considered in General. [13] Trademarks 382T 1103 Most Cited Cases (Formerly 382k345.1, 382k340.1, 382k334.1, 382T Trademarks 382k333 Trade Regulation) 382TIII Similarity Between Marks; Likelihood of Factors court considers in assessing likelihood of con- Confusion sumer confusion, and hence trademark infringement, 382Tk1100 Relationship Between Goods or Ser- are: (1) type of mark; (2) similarity of mark; (3) similar- vices Underlying Marks ity of products marks represent; (4) similarity of parties' 382Tk1103 k. Particular Goods and Services, retail outlets and customers; (5) similarity of advertising Relationship Between. Most Cited Cases media; (6) defendant's intent; and (7) actual confusion. (Formerly 382k363.1 Trade Regulation) Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § First user's trademark rights in e-mail notification soft- 1125(a). ware extended to its subsequent service allowing users to check e-mail via telephone line, for purpose of de- [11] Trademarks 382T 1101 termining whether second user's use of mark for e-mail checking service was infringing; consumers reasonably 382T Trademarks could have attributed software and service under same 382TIII Similarity Between Marks; Likelihood of name to same source. Lanham Trade-Mark Act, § 43(a), Confusion 15 U.S.C.A. § 1125(a). 382Tk1100 Relationship Between Goods or Ser- vices Underlying Marks [14] Federal Courts 170B 767 382Tk1101 k. In General. Most Cited Cases (Formerly 382k363.1 Trade Regulation) 170B Federal Courts Scope of protection enjoyed by trademark owner is not 170BVIII Courts of Appeals restricted to owner's original use; under “natural expan- 170BVIII(K) Scope, Standards, and Extent sion” doctrine, owner's rights vis-a-vis junior user ex- 170BVIII(K)1 In General tend to goods on which mark has already been used or 170Bk763 Extent of Review Dependent on that lie within realm of natural expansion. Lanham Nature of Decision Appealed from Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). 170Bk767 k. Provisional Remedies; In- junctions; Receivers. Most Cited Cases [12] Trademarks 382T 1101 Appellate court will not set aside injunction unless it is so vague that it has no reasonably specific meaning. 382T Trademarks Fed.Rules Civ.Proc.Rule 65(d), 28 U.S.C.A. 382TIII Similarity Between Marks; Likelihood of Confusion [15] Federal Courts 170B 767 382Tk1100 Relationship Between Goods or Ser- vices Underlying Marks 170B Federal Courts 382Tk1101 k. In General. Most Cited Cases 170BVIII Courts of Appeals (Formerly 382k363.1 Trade Regulation) 170BVIII(K) Scope, Standards, and Extent
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170BVIII(K)1 In General (Formerly 382k729 Trade Regulation) 170Bk763 Extent of Review Dependent on Award of attorney fees in trademark infringement suit is Nature of Decision Appealed from reviewable only to determine if trial court abused its 170Bk767 k. Provisional Remedies; In- discretion in granting or denying them. Lanham Trade- junctions; Receivers. Most Cited Cases Mark Act, § 35(a), 15 U.S.C.A. § 1117(a). Appellate court determines propriety of allegedly vague injunctive order by inquiring into whether parties sub- [18] Trademarks 382T 1750 ject thereto understand their obligations under order. 382T Trademarks [16] Trademarks 382T 1717(2) 382TIX Actions and Proceedings 382TIX(G) Costs 382T Trademarks 382Tk1750 k. In General. Most Cited Cases 382TIX Actions and Proceedings (Formerly 382k728.1 Trade Regulation) 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions Trademarks 382T 1754(2) 382Tk1717 Scope and Extent of Relief 382T Trademarks 382Tk1717(2) k. Infringement in Gen- 382TIX Actions and Proceedings eral. Most Cited Cases 382TIX(G) Costs (Formerly 382k645 Trade Regulation) 382Tk1752 Attorney Fees Trademarks 382T 1717(5) 382Tk1754 Grounds 382Tk1754(2) k. Exceptional Cases; In- 382T Trademarks tent or Bad Faith. Most Cited Cases 382TIX Actions and Proceedings (Formerly 382k728.1 Trade Regulation) 382TIX(F) Injunctions Owner of trademark for e-mail checking service, having 382Tk1712 Permanent Injunctions prevailed in infringement action against competitor, was 382Tk1717 Scope and Extent of Relief entitled to recover costs, but not attorney fees absent 382Tk1717(5) k. Misuse of Internet Do- showing that competitor's conduct was malicious, fraud- main Names; Cybersquatting. Most Cited Cases ulent, deliberate, or willful. Lanham Trade-Mark Act, § (Formerly 382k645 Trade Regulation) 35(a), 15 U.S.C.A. § 1117(a). Injunction prohibiting trademark infringement defend- ant from using name “Coolmail” or any similar mark in Trademarks 382T 1800 connection with e-mail or other Internet-related ser- 382T Trademarks vices, in connection with software, and as part of do- 382TXI Trademarks and Trade Names Adjudicated main name of its website, was neither vague nor over- 382Tk1800 k. Alphabetical Listing. Most Cited broad; order contained no contextual ambiguities or al- Cases ternate readings prohibiting legal conduct. (Formerly 382k736 Trade Regulation) [17] Federal Courts 170B 830 COOLMAIL. *1190 John Cyril Malloy, III,Louis R. Gigliotti, Malloy 170B Federal Courts & Malloy, P.A., Miami, FL, for Appellants. 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent Douglas Rappaport, Piper Marbury Rudnick and Wolfe, 170BVIII(K)4 Discretion of Lower Court New York City, Mimi Sall, Ft. Lauderdale, FL, for Ap- 170Bk830 k. Costs, Attorney Fees and pellee. Other Allowances. Most Cited Cases
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Appeal from the United States District Court for the The Software was distributed without charge to users Southern District of Florida. pursuant to a GNU General Public License that also ac- companied the release. A GNU General Public License Before TJOFLAT and WILSON, Circuit Judges, and FN* allows users to copy, distribute and/or modify the Soft- RESTANI , Judge. ware under certain restrictions, e.g., users modifying li- censed files must carry “prominent notices” stating that FN* Honorable Jane A. Restani, Judge, United the user changed the files and the date of any change. States Court of International Trade, sitting by After the release of the Software, Darrah received cor- designation. respondence from users referencing the “Coolmail” mark and in some cases suggesting improvements. In 1995, Darrah released two subsequent versions of the RESTANI, Judge: Software under the same mark and also pursuant to the GNU General Public License. Planetary Motion, Inc. (“Planetary Motion” or “Appellee”) sued Techsplosion, Inc. and Michael Gay In early 1995, a German company named S.u.S.E. a/k/a Michael Carson (respectively “Techsplosion” and GmbH sought permission from Darrah to include the “Carson”; collectively “Appellants”) for infringement Software in a CD-ROM package sold as a compilation and dilution of an unregistered trademark under Section of Unix-based programs. Darrah consented and, pursu- 43(a) and (c) of the Federal Trademark Act, 15 U.S.C. § ant to the GNU licensing agreement, S.u.S.E. distrib- 1051 et seq. (1994) (“Lanham Act”), and for violation uted the Software in its compilation product and in sub- of Florida's unfair competition law. Fla. Stat. Ann. § sequent versions thereof. S.u.S.E. sold and continues to 495.151 (West 2000). Finding that Planetary Motion sell the software compilation in stores in the United had established priority of use and a likelihood of con- States and abroad, as well as over the Internet. fusion, the United States District Court for the Southern District of Florida entered summary judgment in favor of Planetary Motion.*1191 We affirm the judgment and II. Launch of Techsplosion's “CoolMail” E-mail Ser- vacate the award of attorney fees. vice In 1998, Appellant Carson formed Techsplosion, for the Facts purpose of operating a business based on an e-mail ser- vice that he had developed. On April 16, 1998, Techs- plosion began offering the e-mail service on the Internet I. Development and Distribution of the “Coolmail” under the mark “CoolMail.” Two days later, Techsplo- Software sion activated the domain name “coolmail.to” Techsplo- In late 1994, Byron Darrah (“Darrah”) developed a sion delivered an e-mail solicitation under the UNIX-based program (the “Software”) that provides e- “CoolMail” mark to approximately 11,000 members of mail users with notice of new e-mail and serves as a the Paramount Banner Network, an Internet advertising gateway to the users' e-mail application. On December network, also created and operated by Carson. Techs- 31, 1994, Darrah distributed the Software over the In- plosion charged no fee to subscribe to the service and ternet by posting it on a UNIX user site called generated revenues through the sale of banner advertise- “Sunsite,” from which it could be downloaded for free. ments on its web site. Darrah had named the Software “Coolmail” and this designation appeared on the announcement sent to the III. Planetary Motion's E-mail Service & Application end-users on Sunsite as well as on the Software user- for Trademark Registration manual, both of which accompanied the release. Appellee Planetary Motion is a computer software and
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telecommunications company that developed and owns mark “steps into the shoes of the assignor.” an electronic mail service called “Coolmail.” As part of Premier Dental Prods. Co. v. Darby Dental its service, Planetary Motion enables a person to check Supply Co., 794 F.2d 850, 853 (3d Cir.), cert. e-mail via telephone without logging onto a computer. denied, 479 U.S. 950, 107 S.Ct. 436, 93 On April 24, 1998, Planetary Motion filed three intent- L.Ed.2d 385 (1986). Appellants do not contest to-use applications to register the mark “Coolmail” with the validity of the assignment from Darrah, nor the United States Patent and Trademark Office. Though do they dispute that in purchasing rights to Planetary Motion was aware that Darrah's Software also Darrah's software, Planetary Motion succeeded bore the mark “Coolmail,” it represented in its applica- to all rights possessed by Darrah. tions that it was not aware of any mark upon which its proposed registered mark would infringe. Planetary Mo- V. Disposition of Planetary Motion's Complaint tion launched its Coolmail e-mail service to subscribers on June 8, 1998. On January 31, 2000, the district court entered an Order granting Planetary Motion's motion for summary judg- *1192 IV. Planetary Motion's Complaint and Sub- ment and denying Carson's and Techsplosion's motion sequent Acquisition of Darrah's Rights for summary judgment. The district court based the Or- der on two findings: (1) that the alleged mark was af- On April 22, 1999, Planetary Motion filed a complaint fixed to Darrah's software, and that Darrah's distribution against Techsplosion. In the complaint, Planetary Mo- of the software over the Internet constituted a “transport tion alleged infringement of the alleged mark in commerce,” resulting in the creation of trademark “Coolmail” for use in connection with e-mail services. rights and priority, and (2) there was a likelihood of Planetary alleged federal trademark infringement and confusion because the marks “are essentially the same.” unfair competition under Section 43(a) of the Lanham The district court did not reach the issue of whether Act, 15 U.S.C. § 1125(a), as well as injury to business Techsplosion's use of “CoolMail” in connection with its reputation and dilution under Florida Statute § 495.151. e-mail service diluted Planetary Motion's mark.
On June 10, 1999, Techsplosion filed an Answer, Af- On the same date, the district court entered final judg- firmative Defenses, and Counterclaims. The counter- ment granting Planetary Motion permanent injunctive claims alleged infringement of the mark “Coolmail” for relief. See15 U.S.C. § 1116. The order also awarded use in connection with e-mail services. Techsplosion al- Planetary Motion profits and damages, as well as attor- leged unfair competition, false designation, description, ney fees and costs, pursuant to section 35 of the Lan- and representation under the Lanham Act, common ham Act, 15 U.S.C. § 1117. The district court requested trademark infringement, common law unfair competi- a report and recommendation from a magistrate judge tion, and injury to business reputation and dilution. fixing the amounts to be awarded.
In July of 1999, Planetary Motion purchased from Dar- A Notice of Appeal was filed on February 15, 2000. On rah all rights, title, and interest to the Software includ- February 15, 2000, Techsplosion filed an Emergency ing all copyrights, trademarks, patents and other intel- Motion to Stay Pending Appeal, reasserting that Darrah FN1 lectual property rights. On August 31, 1999, Planet- never established any rights in the alleged mark. This ary filed an Amended Verified Complaint, adding a motion was denied on February 17, 2000. claim for dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and alleging violation of On May 9, 2000 the magistrate judge entered his report trademark rights assigned from Darrah. recommending that Planetary Motion be awarded $275,508 in attorneys' fees and $6,562.34 in costs, but FN1. The assignee of a trade name or service that its request for damages be denied for lack of spe-
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cificity. Techsplosion served its appeal brief on May 22, FN3. Section 43(a) provides in pertinent part: 2000. On June 9, 2000, the district court entered an or- der adopting the report and recommendation in its en- (1) Any person who, on or in connection tirety. On July 7, 2000, Techsplosion*1193 filed a No- with any goods or services, or any container tice of Appeal from the order adopting the magistrate for goods, uses in commerce any word, term, FN2 judge's report and recommendation. name, symbol, or device, or any combination thereof, or any false designation of origin, FN2. Planetary Motion does not appeal the dis- false or misleading description of fact, or trict court's adoption of the recommendation of false or misleading representation of fact, the magistrate judge denying damages. which-
(A) is likely to cause confusion, or to cause Standard of Review mistake, or to deceive as to the affiliation, connection, or association of such person [1] Review of a district court's grant of summary judg- with another person, or as to the origin, spon- ment is de novo, with all facts and reasonable inferences sorship, or approval of his or her goods, ser- therefrom reviewed in the light most favorable to the vices, or commercial activities by another non-moving party. Carnival Brand Seafood Co. v. Car- person, or nival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir.1999). (B) in commercial advertising or promotion, misrepresents the nature, characteristics, Discussion qualities, or geographic origin of his or her or another person's goods, services, or com- [2][3][4] Section 43(a) of the Lanham Act forbids unfair mercial activities, trade practices involving infringement of trade dress, service marks, or trademarks, even in the absence of shall be liable in a civil action by any person FN3 federal trademark registration. Two Pesos, Inc. v. who believes that he or she is or is likely to Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, be damaged by such act. 120 L.Ed.2d 615 (1992). Section 43(a) is remedial in 15 U.S.C. § 1125(a). nature and should be interpreted and applied broadly so as to effectuate its remedial purpose. Montgomery v. FN4. Courts may use an analysis of federal in- Noga, 168 F.3d 1282, 1300 & n. 29 (11th Cir.1999) fringement claims as a “measuring stick” in (citing Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d evaluating the merits of state law claims of un- 76, 79 (2d Cir.1981)). To prevail under this section, a fair competition. See Investacorp, Inc. v. Arabi- claimant must show (1) that it had prior rights to the an Inv. Banking Corp. (Investcorp) E.C., 931 mark at issue and (2) that the defendant had adopted a F.2d 1519, 1521 (11th Cir.), cert. denied, 502 mark or name that was the same, or confusingly similar U.S. 1005, 112 S.Ct. 639, 116 L.Ed.2d 657 to its mark, such that consumers were likely to confuse FN4 (1991). the two. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360 (11th Cir.1997) (citing Conagra Inc. v. Singleton, 743 F.2d I. Prior Use in Commerce 1508, 1512 (11th Cir.1984)), modified, 122 F.3d 1379 [5][6] Under common law, trademark ownership rights (1997). Appellants argue that the district court erred in are “appropriated only through actual prior use in com- finding that Planetary Motion had established both ele- merce.” Tally-Ho, Inc. v. Coast Community College ments. Appellants also dispute the scope of injunctive Dist., 889 F.2d 1018, 1022 (11th Cir.1989) (citation relief, as well as the award of attorney fees and costs.
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FN5 omitted). Under the Lanham Act, the term “use in quirement: commerce” is *1194 defined in relevant part as follows: MR. GIGLIOTTI [counsel for Techsplosion]: FN5. “In the absence of registration, rights to a [The mark] has to be on the product or on the mark traditionally have depended on the very associated documentation. It is on neither. same elements that are now included in the statutory definition: the bona fide use of a mark THE COURT: It is not on the associated doc- in commerce that was not made merely to re- umentation[?] How about the original pro- serve a mark for later exploitation.” Allard grams Darrah sent out and manuals that went Enters., Inc. v. Advanced Programming Res., with it, and all that material, wasn't that Inc., 146 F.3d 350, 357 (6th Cir.1998). Com- enough for affixation? mon law and statutory trademark infringements MR. GIGLIOTTI: Yes, Your Honor, that is are merely specific aspects of unfair competi- affixation; however, he did not meet the sale tion. New West Corp. v. NYM Co. of Cal., Inc., requirement. 595 F.2d 1194, 1201 (9th Cir.1979) (citing, inter alia, Dresser Indus., Inc. v. Heraeus En- R3-85-19 to 20. gelhard Vacuum, Inc., 395 F.2d 457, 461 (3d Cir.), cert. denied, 393 U.S. 934, 89 S.Ct. 293, In any case, the affixation requirement is met 21 L.Ed.2d 270 (1968)). because the Software was distributed under a filename that is also the claimed mark, was the bona fide use of a mark in the ordinary course of promoted under the same mark, was accom- trade, and not made merely to reserve a right in a panied by a user manual bearing the mark, mark.... [A] mark shall be deemed to be in use in and was sold in a compilation under the commerce ... on goods when (A) it is placed in any mark. manner on the goods or their containers or the dis- plays associated therewith or on the tags or labels af- The parties do not make clear the two different contexts fixed thereto, or if the nature of the goods makes such in which the phrase “use in commerce” is used. The placement impracticable, then on documents associ- term “use in commerce” as used in the Lanham Act ated with the goods or their sale, and (B) the goods “denotes Congress's authority under the Commerce are sold or transported in commerce .... Clause rather than an intent to limit the [Lanham] Act's FN6 15 U.S.C. § 1127. The district court found that be- application to profit making activity.” United We Stand cause the statute is written in the disjunctive (i.e., Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d “sale or transport”), Darrah's wide distribution of the 86, 92-93 (2d Cir.1997) (citation omitted), cert. denied, Coolmail software over the Internet, even absent any 523 U.S. 1076, 118 S.Ct. 1521, 140 L.Ed.2d 673 sales thereof, was sufficient to establish ownership (1998); U.S. Const., Art. I, § 8, cl. 3. Because Con- rights in the “CoolMail” mark. Appellants contend gress's authority under the Commerce Clause extends to that “transport in commerce” alone-here, Darrah's activity that “substantially affects” interstate commerce, free distribution of software over the Internet “with United States v. Lopez, 514 U.S. 549, 559, 115 S.Ct. no existing business, no intent to form a business, and 1624, 131 L.Ed.2d 626 (1995), the Lanham Act's defini- no sale under the mark”-is insufficient to create trade- tion of “commerce” is concomitantly broad in scope: mark rights. Appellants' Brief at 13. Appellants' argu- “all commerce which may lawfully be regulated by ment lacks merit. Congress.” 15 U.S.C. § 1127. See also Steele v. Bulova Watch Co., 344 U.S. 280, 283-84, 73 S.Ct. 252, 97 FN6. Appellants appear to have conceded that L.Ed. 319 (1952); Larry Harmon Pictures Corp. v. Wil- if Darrah sent out original programs and related liams Rest. Corp., 929 F.2d 662, 666 (Fed.Cir.) manuals, this would satisfy the affixation re-
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FN9 (allowing registration for an intrastate provider of res- Id. at 418. See also New West, 595 F.2d at 1200. taurant services with an undefined interstate clientele), cert. denied, 502 U.S. 823, 112 S.Ct. 85, 116 L.Ed.2d FN9. This ownership requirement parallels the 58 (1991). The distribution of the Software for end- statutory definition of “trademark”: “any word, users over the Internet satisfies *1195 the “use in com- name, symbol, or device, or any combination merce” jurisdictional predicate. See, e.g., Planned Par- thereof ... used by a person ... to identify and enthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d distinguish his or her goods ... from those man- 1430, 1434, 1997 WL 133313 (S.D.N.Y.1997) ( “The ufactured or sold by others ....”15 U.S.C. § nature of the Internet indicates that establishing a typic- 1127. The Seventh Circuit has held that a high- al home page on the Internet, for access to all users, er quantum of use may be necessary to estab- would satisfy the Lanham Act's ‘in commerce’ require- lish ownership rights under common law than ment.”), aff'd, 152 F.3d 920 (2d Cir.), cert. denied, 525 under the statute because the notice function of U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998). registration is lacking. See Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 503-04 (7th Nevertheless, the use of a mark in commerce also must Cir.1992). In addition, the continuity of a user's be sufficient to establish ownership rights for a plaintiff commercial activities in connection with the to recover against subsequent users under section 43(a). mark is also relevant to determining whether See New England Duplicating Co. v. Mendes, 190 F.2d use is sufficient to establish common law own- 415, 417-18 (1st Cir.1951) (after finding “use in com- ership. Circuit City Stores, Inc. v. CarMax, merce” jurisdiction predicate satisfied, court noted that Inc., 165 F.3d 1047, 1054-55 (6th Cir.1999) “[t]he question remains whether the plaintiff has estab- (“A party establishes a common law right to a lished that he was the ‘owner’ of the mark, for under trademark only by demonstrating that its use of [15 U.S.C. § 1051] only the ‘owner’ of a mark is en- the mark was ‘deliberate and continuous, not titled to have it registered.”). The court in Mendes set sporadic, casual or transitory.’ ”). forth a two part test to determine whether a party has es- tablished “prior use” of a mark sufficient to establish Courts generally must inquire into the activities sur- ownership: rounding the prior use of the mark to determine whether such an association or notice is present. See, e.g., FN7 [E]vidence showing, first, adoption, and, second, Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 use in a way sufficiently public to identify or distin- F.3d 427, 433 (7th Cir.1999) (“The determination of guish the marked goods in an appropriate segment of whether a party has established protectable rights in a the public mind as those of the adopter of the mark, is trademark is made on a case by case basis, considering competent to establish ownership, even without evid- the totality of the circumstances.”), cert. denied, 528 FN8 ence of actual sales. U.S. 1188, 120 S.Ct. 1241, 146 L.Ed.2d 100 (2000). Under the “totality of circumstances” analysis, a party may establish “use in commerce” even in the absence of FN7. It is uncontested that Darrah adopted the sales. “[A]lthough evidence of sales is highly persuas- mark “Coolmail” before Appellants' use of the ive, the question of use adequate to establish appropri- mark in connection with their e-mail service. ation remains one to be decided on the facts of each FN8. This ownership test is not for the purpose case ....” New West, 595 F.2d at 1200 (quoting Mendes, of establishing the “use in commerce” jurisdic- 190 F.2d at 418). The court in New West recognized that tional predicate of the Lanham Act. See, e.g., “mere advertising by itself may not establish priority of Univ. of Fla. v. KPB, Inc., 89 F.3d 773, 776 n. use,” but found that promotional mailings coupled with 4 (11th Cir.1996). See supra discussion in text. advertiser and distributor solicitations met the Mendes “public identification” ownership *1196 requirement.
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Id. at 1200. Thus, contrary to Appellants' assertions, the consumers nor put other producers on notice.” existence of sales or lack thereof does not by itself de- Id. at 503. termine whether a user of a mark has established owner- FN10 ship rights therein. Compare Marvel Comics Ltd. Similarly, not every transport of a good is sufficient to v. Defiant, 837 F.Supp. 546, 549 (S.D.N.Y.1993) establish ownership rights in a mark. To warrant protec- (finding announcement of “Plasmer” title to 13 million tion, use of a mark “need not have gained wide public comic book readers and promotion at annual trade con- recognition,” but “[s]ecret, undisclosed internal ship- vention sufficient to establish trademark ownership ments are generally inadequate.” Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th rights, notwithstanding lack of any sales) with Warner- FN12 Vision Entm't Inc. v. Empire of Carolina Inc., 915 Cir.1975). In general, uses that are de minimis F.Supp. 639, 645-46 (S.D.N.Y.) (finding toy manufac- may not establish trademark ownership rights. See, e.g., turer's promotional efforts insufficient to establish pri- Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d ority of use where only a few presentations were made 1768, 1772-73, 1994 WL 484936 (Trademark Tr. & to industry buyers, even though one resulted in a sale to App. Bd.1994) (finding no bona fide use in ordinary a major toy retailer), aff'd in part, vacated in part, 101 course of trade where mark was affixed to a game con- FN11 F.3d 259 (2d Cir.1996). sisting of three pieces of paper and distributed for the purpose of promoting musical group). FN10. Appellants cite Future Domain Corp. v. Trantor Sys. Ltd., 27 U.S.P.Q.2d 1289, 1293, FN12. In Bonner v. City of Prichard, 661 F.2d 1993 WL 270522 (N.D.Cal.1993) for the pro- 1206 (11th Cir.1981) (en banc), the Eleventh position that there must be a sale in order to Circuit adopted as binding precedent all de- satisfy the “use in commerce” requirement. Fu- cisions handed down by the former Fifth Cir- ture Domain, however, turned not on the exist- cuit prior to October 1, 1981. ence of sales but whether the extent of the pur- We find that, under these principles, Darrah's activities ported mark owner's activities created a public under the “Coolmail” mark constitute a “use in com- association between the mark and the product. merce” sufficiently public to create ownership rights in There, the court determined that a computer the mark. First, the distribution was widespread, and software manufacturer's promotion of a mark at there is evidence that members of the targeted public a trade show-where at most 7,000 persons actu- actually associated the mark Coolmail with the Soft- ally received or requested information about ware to which it was affixed. Darrah made the software the mark and where no orders were taken-was available not merely to a discrete or select group (such not sufficient to create such an association. Id. as friends and acquaintances, or at a trade show with at 1293-95. limited attendance), but to numerous end-users via the FN11. Courts applying the “totality of circum- Internet. The Software was posted under a filename stances” approach routinely have found evid- bearing the “Coolmail” mark on a site accessible to any- ence of a few sales of goods to which the mark one who had access to the Internet. End-users commu- had been affixed insufficient to establish trade- nicated with Darrah regarding the Software by referen- mark ownership. For example, in Zazu cing the “Coolmail” mark in their e-mails. Appellants Designs, 979 F.2d at 503-04, the plaintiff hair argue that only technically-skilled UNIX-users made salon had sold a few bottles of shampoo bear- use of the Software, but there is no evidence that they ing the mark “Zazu” both over the counter and were so few in *1197 number to warrant a finding of de mailed over state lines. The court found that minimis use. such limited sales “neither link the Zazu mark Third, the mark served to identify the source of the with [the plaintiff's] product in the minds of Software. The “Coolmail” mark appeared in the subject
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field and in the text of the announcement accompanying A: I'm not sure if it says this verbatim, it's each release of the Software, thereby distinguishing the “Coolmail,” space, then the version number. Software from other programs that might perform simil- ar functions available on the Internet or sold in software R2-47-Exh. 3 at 68, 72 to 73. FN13 compilations. The announcements also apparently Fourth, other potential users of the mark had notice that indicated that Darrah was the “Author/Maintainer of the mark was in use in connection with Darrah's Soft- Coolmail” and included his e-mail address. The user ware. In investigating whether the mark Coolmail exis- manual also indicated that the Software was named FN14 ted before submitting its trademark registration applica- “Coolmail.” The German company S.u.S.E. was tion for its e-mail service, Planetary Motion was able to able to locate Darrah in order to request permission to discover that Darrah was using the mark to designate use his Software in its product under the mark his Software product. “Coolmail.” Appellants do not assert that S.u.S.E. was unaware that the Software was called “Coolmail” when [7] Fifth, the Software was incorporated into several it contacted Darrah. versions of a product that was in fact sold worldwide and specifically attributed ownership of the Software to FN13. Darrah testified that “[m]ost of the Darrah under the “Coolmail” mark. Any individual us- source files ... have [the mark] in them. Also ing the S.u.S.E. product, or competitor of S.u.S.E., that there's a copyright notice included with the wanted to know the source of the program that per- software that has the name Coolmail. And the formed the e-mail notification function, could do so by name of the executable file itself is Coolmail.” referring to the user manual accompanying the FN15 R2-47-Exh. 3 at 67. product. There is no support for the argument that for a trademark in software to be valid, the mark must FN14. Darrah: The Coolmail name always appear on the box containing the product incorporating comes with the documentation that comes with it, that the mark must be displayed on the screen when the software. the program is running, or that the software bearing the mark be a selling point for the product into which it is *** incorporated. There is no requirement that the public come to associate a mark with a product in any particu- Q: What documentation are you talking lar way or that the public be *1198 passive viewers of a about? mark for a sufficient public association to arise. A: There's a user manual that comes with it. FN15. The user manual for the S.u.S.E. Linux *** 4.3 product includes a list of application pack- ages that contains the following attribution: Q: Does it say “Coolmail” on page 1? coolmail “Cool” XBiff Clone A. Yes. Shows if new mail has arrived. The main ad- Q: Where does it say “Coolmail” on page 1? vantage of this program is that you can click into the window to fire up the mailer of your A: At the top. choice.
... and on the header of every page.
Q: What does it say, exactly?
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Docu: man coolmail Copyright: (c) 1994 Byron C. Darrah Author: Byron C. Darrah
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(“Revision Act”), Pub.L. No. 100-667, 102 fair competition laws. The DeCosta court did not hold Stat. 3935 (1988). The court in Allard found that the that the absence of a profit-oriented enterprise that a magistrate judge's reliance on case law renders one an eleemosynary individual, nor did it hold that antedated the revision was proper because that such individuals categorically are denied protec- the language of the revised definition is tion. Rather, the DeCosta court expressed “misgivings” “entirely consistent with the traditional rules of extending common law unfair competition protec- governing common-law ownership of trade- tion, clearly available to eleemosynary organizations, to FN18 marks.” 146 F.3d at 357. The Allard court eleemosynary individuals. Id. The court's reluct- noted that “the purpose of this revision ‘was to ance to extend protection to eleemosynary individuals eliminate “token use” as a basis for registra- was based on an apparent difficulty in establishing a tion, and that the stricter standard contemplates line of demarcation between those eleemosynary indi- instead commercial use of the type common to viduals engaged in commerce and those that are not. the particular industry in question.’ ” Id. But as the sufficiency of use to establish trademark (citation omitted). ownership is inherently fact-driven, the court need not have based its decision on such a consideration. The reason “token use” was expressly elim- Mendes, 190 F.2d at 418. Common law unfair competi- inated was that the Revision Act had created tion protection extends to non-profit organizations be- an “intent-to-use” application system that cause they nonetheless engage in competition with other FN19 rendered such a “commercial sham” unneces- organizations. See Girls Clubs of Am., Inc. v. Boys sary. See134 Cong. Rec. 32,053 (Oct. 20, Clubs of Am., Inc., 683 F.Supp. 50 (S.D.N.Y.1988), 1988) (Sen.DeConcini). The revision did not aff'd, 859 F.2d 148 (2d Cir.). Thus, an eleemosynary in- alter the meaning of the phrase “sold or dividual that uses a mark in connection with a good or transported in commerce” or in any way in- service may nonetheless acquire ownership rights in the crease the quantum of use necessary to ac- mark if there is sufficient evidence of competitive activ- FN20 quire trademark ownership as developed by ity. common law. See id. (“Congress' intent that the revised definition still encompass genu- FN18. It is unlikely that the plaintiff's activities ine, but less traditional, trademark uses must in De Costa-costumed performances and distri- be made clear. For example, such uses as bution of his picture at local rodeos, parades, clinical shipments of a new drug awaiting hospitals, etc.-would generate a “public associ- FDA approval, test marketing, or infrequent ation” sufficient to confer him common law sales of large or expensive or seasonal trademark ownership rights. The court assumed products, reflect legitimate trademark uses in arguendo, however, that the plaintiff's activit- the normal course of trade and are not to be ies did warrant protection, and went on to find excluded by the House language.”). There is that the evidence did not support a finding of no evidence to support the contention that likelihood of confusion. Darrah's purpose was merely to secure trade- mark rights to reserve the mark for future FN19. The DeCosta court recognized that “the use. law of unfair competition ... protects ‘eleemosynary organizations (which) function [9] Appellants also rely on DeCosta v. Columbia Broad. in commerce and, in form, resemble business Sys., Inc., 520 F.2d 499, 513 (1st Cir.1975), cert. enterprises .... The happenstance that they are denied, 423 U.S. 1073, 96 S.Ct. 856, 47 L.Ed.2d 83 nonprofit-seeking ventures, and therefore re- (1976), to argue that Darrah is an eleemosynary indi- moved, as such, from the rigors of business vidual and therefore unworthy of protection under un- competition, neither eliminates the element of
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competition nor disentitles them to protection monetary gain. Darrah derived value from the distribu- against the unfair competition of similar organ- tion because he was able to improve his Software based izations.’ ” 520 F.2d at 512 (quoting Callman, on suggestions sent by end-users. Just as any other con- Vol. 1, s 1.1, p. 4). sumers, these end-users discriminate among and share information on available software. It is logical that as FN20. The DeCosta court noted that the Software improved, more end-users used his Soft- ware, thereby increasing Darrah's recognition in his pro- [common law unfair competition] fession and the likelihood that the Software would be [p]rotection at present has the merits of in- improved even further. herent limitations: the existence of a trade, business, or profession where the “good will” In light of the foregoing, the use of the mark in connec- to be protected has been subject to the acid tion with the Software constitutes significant and sub- test of the willingness of people to pay for stantial public exposure of a mark sufficient to have cre- goods or services; or, in the case of nonprofit ated an association in the mind of public. institutions, the voluntary investment in time, effort, and money of many individuals to cre- ate and maintain a program of sufficient in- II. Likelihood of Confusion terest to consumers, members, and sponsors [10] The district court supported its determination of to warrant protection. “likelihood of confusion” with the following findings: 520 F.2d at 513. (1) the mark used by Planetary Motion (“Coolmail”) is “essentially the same” as that used by Techsplosion FN21 We find that such an “inherent limitation,” if (“CoolMail”) ; (2) both marks are used in connec- it in fact exists, is inapplicable in this con- tion with e-mail services; (3) both plaintiff and defend- text. One individual can invest time, effort ants serve e-mail customers via the Internet; and (4) and money in developing software or other both use the Internet to promote their services. R2-62-7. FN22 technologically-based goods or services that Appellants do not dispute the accuracy of these would be of interest to a multitude of users, findings. Rather, Appellants claim the district court im- other developers, and retail establishments. properly based its analysis on a comparison of the In fact, the program was of sufficient interest parties' respective e-mail services, rather than on a com- for S.u.S.E. to put effort into including it in parison of Techsplosion's “CoolMail” e-mail service to its own software which was sold for profit, the “Coolmail” Software. Appellants argue that the lat- including the effort of obtaining Darrah's ter comparison is required *1201 because Planetary Mo- permission under the GNU General Public tion acquired its rights to the “Coolmail” mark by as- License. signment of rights in Darrah's Software, and under the “natural expansion” doctrine this is a use unrelated to *1200 Here, Darrah's activities bear elements of com- Planetary Motion's current use of e-mail services. Thus, petition, notwithstanding his lack of an immediate Appellants' argument in essence goes to whether the profit-motive. By developing and distributing software scope of trademark protection enjoyed by Planetary Mo- under a particular mark, and taking steps to avoid ced- tion extends from the initial use (in connection with the ing the Software to the public domain, Darrah made ef- Software) to the current use (in connection with Planet- forts to retain ownership rights in his Software and to ary Motion's e-mail services). ensure that his Software would be distinguishable from other developers who may have distributed similar or FN21. The Ninth Circuit in Brookfield Commu- related Software. R2-47-Exh. 3 at 67. Competitive nications, Inc. v. W. Coast Entm't Corp., 174 activity need not be fueled solely by a desire for direct F.3d 1036, 1055 (1999), explained that the do-
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main name “moviebuff.com” was virtually trademark rights. See id. § 26:20; Tally-Ho, identical to “MovieBuff,” because “Web ad- 889 F.2d at 1023, 1027-29. dresses are not caps-sensitive.” The “natural expansion” thesis seems to be FN22. This Court considers the following sev- nothing more than an unnecessarily complic- en factors in assessing whether or not a likeli- ated application of the likelihood of confu- hood of consumer confusion exists: (1) type of sion of source or sponsorship test to a partic- mark; (2) similarity of mark; (3) similarity of ular factual situation. If the intervening use the products the marks represent; (4) similarity was likely to cause confusion [with respect to of the parties' retail outlets (trade channels) and the mark owner's previous use], it was an in- customers; (5) similarity of advertising media; fringement and the senior user has the right (6) defendant's intent; and (7) actual confusion. to enjoin such use, whether it had in fact See Lone Star, 122 F.3d at 1382. Of these, the already expanded itself or not. type of mark and the evidence of actual confu- sion are the most important. See Dieter v. B&H J. McCarthy, § 24:20. Indus. of Southwest Fla., Inc., 880 F.2d 322, The court in Tally-Ho explained that a senior user's 326 (11th Cir.1989), cert. denied, 498 U.S. rights “may extend into uses in ‘related’ product or ser- 950, 111 S.Ct. 369, 112 L.Ed.2d 332 (1990). In vice markets (termed the ‘related goods doctrine’),” and this case, there is evidence that end-users sub- that “an owner of a common law trademark may use its scribed to Techsplosion's e-mail service under mark on related products or services and may enjoin a the impression they were subscribing to Planet- junior user's use of the mark on such related uses ....” ary Motion's service. See R2-46-Exh. 1-G. 889 F.2d at 1023 (citing J. McCarthy, § 24:1 to 24:12). [11] The scope of protection enjoyed by a trademark This rule is limited by equitable considerations. The owner is not restricted to the owner's original use. The court in Carnival noted that “[A] trademark owner can- “natural expansion” doctrine is applied to determine the not by the normal expansion of its business extend the proper scope of protection where a mark owner's previ- use or registration of its mark to distinctly different ous use differs from its current use, and the junior use goods or services not comprehended by its previous use intervenes. Under this doctrine, the first trademark own- ... where the result could be a conflict with valuable in- er's rights are limited to goods on which the mark has tervening rights established by another through extens- already been used or that lie within the realm of natural ive use... of the same or similar mark for like or similar expansion; “[t]his appears to be no more than a specific goods and services.” 187 F.3d at 1310-11 (citations and application of the familiar ‘related goods' test.” J. Mc- internal quotation marks omitted) (emphasis added). FN23 Carthy, § 24:20. See also Carnival, 187 F.3d at [12] Courts determine the proper scope of protection of 1310-11. a mark in the context of intervening uses by applying FN23. The theory of “natural expansion” as ap- the “source or sponsorship” test. Under this test, a plied to determinations of the scope of protec- trademark owner has “protection against use of its mark tion “relates to a situation where the senior user on any product or service which would reasonably be of mark A on product line X expands use of thought by the buying public to come from the same mark A to product line Z and conflicts with an source, or thought to be affiliated with, connected with, ‘intervening junior user’ who has already been or sponsored by, the trademark owner.” J. McCarthy, § using mark A on product line Z.” J. McCarthy, 24:6. The public perception in this regard is determined § 24:20. This differs from the “natural expan- at the time the junior user first used the mark on the product or service to which the allegedly infringing sion” doctrine as applied to determining the FN24 geographical delimitation of common law mark is affixed. Carnival, 187 F.3d at 1312. The
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court in Tally-Ho explained *1202 that “related use” is check e-mail via telephone line is not so attenuated that “merely a facet of the likelihood of confusion test and the district court mistakenly failed to limit Planetary therefore requires an inquiry into [the] seven factors af- Motion's rights in the mark to its use in connection with FN25 fecting the likelihood of confusion ....” 889 F.2d the Software. Consumers reasonably could attribute the at 1027. Software and an e-mail service under the same name to FN26 the same source for several reasons. Both the Soft- FN24. Techsplosion, the junior user in this ware and the e-mail service belong to the same general case, first used the mark “CoolMail” in connec- field of commerce, i.e., information technology, and FN27 tion with its e-mail service in April 16, 1998, both deal more specifically with e-mail. Appel- before Planetary motion filed its intent-to-use lants do not dispute Planetary Motion's contention that application. major firms in this field sell e-mail software as well as FN28 provide e-mail service. See Darrah Affidavit, FN25. The court in Carnival explained the R2-46-Exh. 2 at ¶ 34. Both the Software and the e-mail “source or sponsorship” inquiry in this context service involve sending messages over the Internet: the as follows: former provides a functionality that enables a user with The likelihood-of-confusion test, when ap- e-mail capability to receive notification of new mail, plied at this stage in order to determine prior- and the latter enables subscribers to the service to send ity where there are issues of related use, does and receive e-mail. Both the Software and the e-mail not substitute for the likelihood-of-confusion service were promoted over the Internet to those who test that controls whether infringement of the make use of e-mail. plaintiff's trademark is occurring or has oc- FN26. The extension of Planetary Motion's curred. These are two independent inquiries. rights to the mark in connection with its e-mail Once priority in the use of a mark for a par- service does not, as Appellants assert, hinge on ticular class of goods or services has been es- whether Darrah intended to launch, or even tablished, then it is necessary to perform the was capable of launching, an e-mail service [liability stage] likelihood-of-confusion test, similar to those of the parties. For goods or ser- as of the current time and as between the vices to be “related,” they need not have ex- plaintiff's current products (i.e., those that in- actly the same customer base or be in direct herit the priority with respect to the previ- competition with one another. ously used mark) and the allegedly infringing products of the defendant, to determine FN27. Cf. Commerce Nat'l Ins. Servs., Inc. v. whether the plaintiff ultimately prevails in a Commerce Insurance Agency, Inc., 214 F.3d trademark infringement litigation. 432, 438, 441-43 (3d Cir.2000). The court in Commerce Nat'l found clear error in the district 187 F.3d at 1311, n. 4 (citation omitted). court's “likelihood of confusion” analysis that Thus, evidence supporting a finding of had been based “primarily on the assumption “related use” need not rise to the level of that banking and insurance are similar indus- finding likelihood of confusion for the pur- tries in the minds of consumers and that con- poses of establishing liability, but may non- sumers would expect banks to expand into the etheless serve as a guide for determining the insurance industry,” where evidence of such scope of protection. perception consisted of an affidavit and an “unpersuasive report” and where state law lim- [13] We find that the relatedness between e-mail noti- ited banks from engaging in the general insur- fication software and a service that allows users to ance industry. 214 F.3d at 441.
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FN28. See Scarves by Vera, Inc. v. Todo Im- A. Injunctive Relief ports, Ltd., 544 F.2d 1167, 1174-75 (2d Cir.1976). The court in Scarves by Vera found Appellants assert that the injunctive relief awarded by a use of mark on cosmetics to infringe on use the district court is impermissibly vague and overbroad. on apparel and household linens, even though Appellants contend that the language “imposes a plaintiff had no plans to enter the former mar- grossly unfair burden on Techsplosion, as it does not al- ket. The court reasoned that other fashion de- low for a determination of what is and is not permitted signers were commonly involved in both mar- under the injunctive provisions.” Appellants' Brief at kets, such that customers would likely assume 40. Federal Rule of Civil Procedure 65(d) states in rel- that defendant's use was a similar expansion by evant part: “Every order granting an injunction ... shall plaintiff. be specific in terms [and] shall describe in reasonable detail ... the act or acts sought to be restrained ....” FN30 Furthermore, the equities do not necessarily favor Tech- Fed.R.Civ.P. 65(d). A clear and unambiguous or- FN29 splosion. Techsplosion's *1203 “CoolMail” e-mail der is one that leaves “ ‘no uncertainty in the minds of service had not been in operation for an extended period those to whom it is addressed,’... who must be able to of time before Planetary Motion entered the market un- ascertain from the four corners of the order precisely der the name “Coolmail,” and Planetary Motion is not what acts are forbidden.' ” King v. Allied Vision, Ltd., merely attempting to reserve the mark for a future busi- 65 F.3d 1051, 1058 (2d Cir.1995) (citations omitted). ness endeavor. Accordingly, we sustain the district Optimally, the injunction court's finding of “likelihood of confusion.” FN30. Three considerations underlie the spe- FN29. See Rosenthal A.G. v. Ritelite, Ltd., 986 cificity requirements of Rule 65(d): “to prevent F.Supp. 133, 141 (E.D.N.Y.1997) (“[A]bsent uncertainty and confusion on the part of those equities in a defendant's favor, courts should faced with injunctive orders, ... to avoid the enjoin defendants ‘from using a similar trade- possible founding of a contempt citation on a mark whenever the non-competitive products decree too vague to be understood ... [and] for are sufficiently related that customers are likely an appellate tribunal to know precisely what it to confuse the source of origin.’ ”) (citation is reviewing.” Schmidt v. Lessard, 414 U.S. omitted). The court in Rosenthal, relying on 473, 476-77, 94 S.Ct. 713, 38 L.Ed.2d 661 “undisputed evidence and basic common (1974) (per curiam). sense,” found the two markets at issue to be sufficiently related and noted that the equities should clearly let defendant know what he is ordered to did not tip in the defendant's favor where the do or not to do. A court order should be phrased in plaintiff had in fact entered the defendant's terms of objective actions, not legal conclusions. An market. Id. (“[T]he interest at stake is more injunction which merely forbids a defendant from per- than plaintiff's interest in being able to enter a forming “acts of unfair competition,” or from related market at some future time ....”). “infringing on plaintiff's trademarks and trade secrets” adds nothing to what the law already re- III. Relief quires. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d Review of the district court's award of injunctive relief, 966, 984-985 (11th Cir.1983) (quoting J. McCarthy, attorney's fees and costs is for abuse of discretion. See at § 30.13) (emphasis added). Burger King Corp. v. Weaver, 169 F.3d 1310, 1315 (11th Cir.), cert. dismissed, 528 U.S. 948, 120 S.Ct. [14][15] Notwithstanding these strictures, appellate 370, 145 L.Ed.2d 287 (1999); Tally-Ho, 889 F.2d at courts do not set aside injunctions under Rule 1022. 65(d)“unless they are so vague that they have no reas-
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onably specific meaning.” E. & J. Gallo Winery v. (11th Cir.1986) (“An injunction can be therapeutic as Gallo Cattle Co., 967 F.2d 1280, 1297 (9th Cir.1992). well as protective. In fashioning relief against a party Rather than applying Rule 65(d) rigidly, appellate who has transgressed the governing legal standards, a courts determine the propriety of an injunctive order by court of equity is free to proscribe activities that, stand- inquiring into whether the parties subject thereto under- ing alone, would have been unassailable.”) (citation stand their obligations under the order. Williams v. City omitted), cert. denied, 481 U.S. 1041, 107 S.Ct. 1983, of Dothan, 818 F.2d 755, 761 (11th Cir.1987) (citing 95 L.Ed.2d 822 (1987). Nor do Appellants explain how Combs v. Ryan's Coal Co., 785 F.2d 970, 978-79 (11th the *1205 wording of the injunction could lend itself to Cir.), cert. denied sub nom. *1204Simmons v. Combs, alternate interpretations. In the absence of any apparent 479 U.S. 853, 107 S.Ct. 187, 93 L.Ed.2d 120 (1986)), contextual ambiguities or alternate readings prohibiting modified, 828 F.2d 13 (11th Cir.1987). Furthermore, the legal conduct, it is unlikely that Appellants will misap- degree of particularity required depends on the nature of prehend what conduct is proscribed, or will incur liabil- the subject matter. McComb v. Jacksonville Paper Co., ity to contempt citations for activities not contemplated 336 U.S. 187, 191-92, 69 S.Ct. 497, 93 L.Ed. 599 by this order. (1949) (decrees of generality are often necessary to pre- vent further violations where a proclivity for unlawful FN31. The injunction reads, in relevant part as conduct has been shown). follows:
[16] Here, although several parts of the order are [Techsplosion is] permanently enjoined from phrased in terms of legal conclusions, the order, read as (a) Using the name “Coolmail,” or any simil- a whole, clearly indicates what Techsplosion is forbid- ar mark, in connection with the offer, promo- FN31 den from doing. According to the order, Techsplo- tion, distribution, sale, advertisement or pro- sion is permanently enjoined from using the name vision of services relating to e-mail or other “Coolmail” in connection with “e-mail or other Inter- Internet-related services; (b) Using the name net-related services,” in connection with software, and “Coolmail,” or any similar mark, in connec- as part of the domain name of its website. These limita- tion with the offer, promotion, distribution, tions sufficiently define the scope of the injunction and sale, advertisement or provision of software; give context to the arguably legally conclusory lan- (c) Using Coolmail.com as the domain name guage included therein. Furthermore, the use of “any of their website; (d) Using any logo, trade similar mark” after references to “Coolmail” does not name, trademark or servicemark which may detract from this level of specificity. See Planned Par- be calculated to represent falsely that the ser- enthood, 152 F.3d 920 (upholding preliminary injunc- vices or products of defendants are affiliated, tion that prohibited defendant from using mark or “any connected, or associated with Planetary Mo- colorable imitation of [that] mark” anywhere on the In- tion; (e) Using any logo, trade name or ser- ternet and from taking actions “likely to cause confu- vicemark which may be calculated to falsely sion” among Internet users regarding Planned Parent- represent that the services or products of de- hood's endorsement or sponsorship of defendant's site). fendants are sponsored by, authorized by, ap- Appellants do not propose any reading of the language proved by, or originate from Planetary Mo- in the injunction that would impermissibly prohibit con- tion; (f) Using the name “Coolmail” in any duct that Techsplosion arguably has the right to do. Cf. fashion that would damage the business repu- B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d tation of Planetary Motion, or any of its suc- 1254, 1269 (5th Cir.1971) (finding injunction imper- cessors, assigns, affiliates, subsidiaries, or missible where broad reference to opinion's findings of parents, or that would dilute the value of the fact “[appeared to] enjoin perfectly legal acts”). But see “Coolmail” mark; (g) Otherwise infringing AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1547-48 on the “Coolmail” mark; (h) Unfairly com-
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FN33 peting with Planetary Motion; and Aiding, award. Furthermore, there is nothing in the record abetting or assisting any other person or en- to support a finding of “malicious, fraudulent, deliber- tity in engaging in or performing any activit- ate, or willful” conduct on the part of Planetary motion. ies stated in paragraphs (a) through (h) Remand is therefore unnecessary on this issue. Accord- above. ingly, we find that the award of attorney fees is an ab- use of discretion and vacate the award. R2-63. FN33. Planetary Motion asserts that Techsplo- Sections (g) and (h) are conclusory catch-all sion learned in early 1999 of its use of the provisions. Although sections (d) through (f) “Coolmail” mark, and that “Planetary Motion use legal terminology, they are linked to possessed senior rights in the Coolmail mark.” Planetary Motion and its rights in the Since Techsplosion reasonably could have as- “Coolmail” mark such that Techsplosion sumed that Planetary Motion lacked priority in likely will not violate the injunction if it the mark, such knowledge in this case does not completely ceases the use of “Coolmail” in invariably give rise to a finding of deliberate or connection with e-mail services or markets malicious infringement. related thereto.
B. Attorney Fees C. Award of Costs
[17] Awards of attorney fees are reviewable only to de- Under the Lanham Act, a successful party “subject to termine if the trial court abused its discretion in grant- the principles of equity” may recover: “(1) defendant's FN32 ing or denying them. See St. Charles Mfg. Co. v. [the infringer's] profits; (2) any damages sustained by Mercer, 737 F.2d 891, 894 (11th Cir.1983). Fla. Stat. § the plaintiff, and (3) the costs of the action.” 15 U.S.C. 495.151 provides for injunctive relief only. Under Sec- § 1117(a). See Babbit Elecs., Inc. v. Dynascan Corp., 38 tion 35(a) of the Lanham Act, however, courts may F.3d 1161, 1182 (11th Cir.1994). To recover costs un- award reasonable attorney fees to the prevailing party der the Lanham Act, therefore, a plaintiff need not es- “in exceptional cases.” 15 U.S.C. § 1117(a). See also tablish that the alleged infringer acted maliciously, Montgomery, 168 F.3d at 1304. Exceptional cases are fraudulently, deliberately, or willfully. Because it was those where the infringing party acts in a “malicious, within the district court's discretion to award costs, and fraudulent, deliberate, or willful manner.” Burger King in the absence of any evidence that would warrant a Corp. v. Pilgrim's Pride Corp., 15 F.3d 166, 168 (11th finding that the balance of equities necessarily tipped in Cir.1994) (quoting S.R. Rep. 93-1400 (1974), reprinted favor of Techsplosion, we uphold the award of costs to in 1974 U.S.C.C.A.N. 7132, 7133) (internal quotation Planetary Motion. marks omitted).
FN32. As Techsplosion timely filed an appeal Conclusion from the order fixing the amount of attorney Accordingly, the district court's order and final judg- fees and costs, and we may reach the issue. See ment are AFFIRMED, except that the order adopting Budinich v. Becton Dickinson & Co., 486 U.S. the magistrate judge's report and recommendation, with 196, 202-203, 108 S.Ct. 1717, 100 L.Ed.2d 178 respect to the award of attorney fees, is VACATED. (1988). C.A.11 (Fla.),2001. [18] Here, the district court awarded attorney fees Planetary Motion, Inc. v. Techsplosion, Inc. without articulating a basis for doing so, let alone the 261 F.3d 1188, 51 Fed.R.Serv.3d 294, 59 U.S.P.Q.2d factual circumstances that would warrant such an 1894, 14 Fla. L. Weekly Fed. C 1159
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END OF DOCUMENT
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Date/Time of Request: Thursday, July 2, 2009 15:36 Central Client Identifier: OSHNA Database: FEDFIND Citation Text: 889 F.2d 1018 Lines: 831 Documents: 1 Images: 0
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jury to nonmovant; and that injunction would not disserve public interest. United States Court of Appeals, Eleventh Circuit. [2] Federal Courts 170B 754.1 TALLY-HO, INC., A Florida Corporation, Plaintiff-Counter-Defendant-Appellant, 170B Federal Courts v. 170BVIII Courts of Appeals COAST COMMUNITY COLLEGE DISTRICT, 170BVIII(K) Scope, Standards, and Extent Defendant-Counter-Plaintiff-Appellee. 170BVIII(K)1 In General No. 88-5594. 170Bk754 Review Dependent on Whether Questions Are of Law or of Fact Dec. 6, 1989. 170Bk754.1 k. In General. Most As Amended Jan. 19, 1990. Cited Cases (Formerly 170Bk754) Television program producer/distributor, which re- gistered its “You and the Law” mark under Flor- Federal Courts 170B 815 ida's trademark law, brought trademark infringe- ment and unfair competition action against com- 170B Federal Courts munity college district, which used the “You and 170BVIII Courts of Appeals the Law” mark for educational telecourses. The 170BVIII(K) Scope, Standards, and Extent United States District Court for the Southern Dis- 170BVIII(K)4 Discretion of Lower Court trict of Florida, No. 88-501-CIV-SMA, Sidney M. 170Bk814 Injunction Aronovitz, J., denied preliminary injunctive relief. 170Bk815 k. Preliminary Injunc- Producer/distributor appealed. The Court of Ap- tion; Temporary Restraining Order. Most Cited peals, held that district's common-law trademark Cases rights in the educational community college market District court's denial of preliminary injunction is did not extend into county cable television market. reviewed to determine whether district court abused its discretion; however, if district court misapplied Reversed and remanded. law, the Court of Appeals must review and correct error without deference to district court's determin- West Headnotes ation of the legal issue.
[1] Injunction 212 147 [3] Federal Courts 170B 850.1
212 Injunction 170B Federal Courts 212IV Preliminary and Interlocutory Injunctions 170BVIII Courts of Appeals 212IV(A) Grounds and Proceedings to Pro- 170BVIII(K) Scope, Standards, and Extent cure 170BVIII(K)5 Questions of Fact, Verdicts 212IV(A)4 Proceedings and Findings 212k147 k. Evidence and Affidavits. 170Bk850 Clearly Erroneous Findings Most Cited Cases of Court or Jury in General To prevail on motion for preliminary injunction, 170Bk850.1 k. In General. Most movant has burden of proving substantial likeli- Cited Cases hood of success on the merits, substantial threat of (Formerly 170Bk850) irreparable injury, that its own injury outweighs in- Factual findings will be reversed only if clearly er-
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roneous. 382T Trademarks 382TVI Nature, Extent, and Disposition of [4] Trademarks 382T 1136(1) Rights 382Tk1202 Licenses 382T Trademarks 382Tk1208 k. Control Over Use or Qual- 382TIV Creation and Priority of Rights ity; “Naked” Licenses. Most Cited Cases 382Tk1132 Use of Mark (Formerly 382k73 Trade Regulation) 382Tk1136 Nature and Extent of Use Rights in trademark can be lost through abandon- 382Tk1136(1) k. In General. Most ment, nonuse, or naked license without control over Cited Cases product quality. (Formerly 382k65 Trade Regulation) [6] Trademarks 382T 1137(1) Trademarks 382T 1156 382T Trademarks 382T Trademarks 382TIV Creation and Priority of Rights 382TV Duration and Termination of Rights 382Tk1132 Use of Mark 382Tk1155 Extent of Use; Discontinuance 382Tk1137 Scope and Priority of Use; and Non-Use Multiple Users, Markets, or Territories 382Tk1156 k. In General. Most Cited 382Tk1137(1) k. In General. Most Cases Cited Cases (Formerly 382k65 Trade Regulation) (Formerly 382k66.1, 382k66 Trade Regulation) Under common law, trademark rights are appropri- First to use mark on product or service in particular ated only through actual prior use in commerce; geographic market, the senior user, acquires rights trademark ownership is always appurtenant to com- in the mark in that market; junior users, who sub- mercial activity, and actual and continuous use is sequently use same or similar mark on similar required to acquire and retain protectible interest in products or services, may also establish common- mark. law rights to perhaps even the same mark provided [5] Trademarks 382T 1153 there is no competitive overlap with the senior user, but the senior user may enjoin uses that infringe 382T Trademarks upon its prior rights. 382TV Duration and Termination of Rights 382Tk1153 k. Abandonment in General. [7] Trademarks 382T 1137(1) Most Cited Cases 382T Trademarks (Formerly 382k68 Trade Regulation) 382TIV Creation and Priority of Rights Trademarks 382T 1156 382Tk1132 Use of Mark 382Tk1137 Scope and Priority of Use; 382T Trademarks Multiple Users, Markets, or Territories 382TV Duration and Termination of Rights 382Tk1137(1) k. In General. Most 382Tk1155 Extent of Use; Discontinuance Cited Cases and Non-Use (Formerly 382k67 Trade Regulation) 382Tk1156 k. In General. Most Cited Owner of common-law trademark may use its mark Cases on related products or services and may enjoin juni- (Formerly 382k71 Trade Regulation) or user's use of mark on such related uses; “related goods” doctrine gives trademark owner protection Trademarks 382T 1208 against the use of its mark on any product or ser-
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vice which would reasonably be thought by the 382T Trademarks buying public to come from the same source, or 382TIX Actions and Proceedings thought to be affiliated with, connected with, or 382TIX(C) Evidence sponsored by, the trademark owner. 382Tk1601 Presumptions and Burden of Proof [8] Trademarks 382T 1137(1) 382Tk1607 k. Creation and Priority of Rights. Most Cited Cases 382T Trademarks (Formerly 382k574 Trade Regulation) 382TIV Creation and Priority of Rights 382Tk1132 Use of Mark Trademarks 382T 1612 382Tk1137 Scope and Priority of Use; Multiple Users, Markets, or Territories 382T Trademarks 382Tk1137(1) k. In General. Most 382TIX Actions and Proceedings Cited Cases 382TIX(C) Evidence (Formerly 382k67 Trade Regulation) 382Tk1601 Presumptions and Burden of Senior user's rights are geographically limited to Proof only those territories in which it actually uses its 382Tk1612 k. Defenses, Excuses, and mark or into which it might naturally expand (the Justifications. Most Cited Cases “zone of natural expansion”). (Formerly 382k574 Trade Regulation) In infringement action, plaintiff must initially [9] Trademarks 382T 1259 demonstrate right to trademark and actual geo- graphic and product competition with alleged in- 382T Trademarks fringer; defendant must then establish some defense 382TVII Registration to defeat plaintiff's infringement claim. West's 382TVII(A) In General F.S.A. §§ 495.011-495.171. 382Tk1256 State Registration 382Tk1259 k. Effect. Most Cited [11] Trademarks 382T 1527 Cases (Formerly 382k262, 382k255 Trade Regulation) 382T Trademarks Mark registered under the Florida Trademark Act 382TVIII Violations of Rights has prima facie validity but is subject to another's 382TVIII(D) Defenses, Excuses, and Justific- bona fide use of the same or similar mark under ations common law. West's F.S.A. §§ 495.011-495.171. 382Tk1521 Justified or Permissible Uses 382Tk1527 k. Other Particular Uses. [10] Trademarks 382T 1603 Most Cited Cases (Formerly 382k574 Trade Regulation) 382T Trademarks In establishing prior use defense to trademark in- 382TIX Actions and Proceedings fringement claim, defendant must prove that its 382TIX(C) Evidence competing use of contested mark predates competit- 382Tk1601 Presumptions and Burden of or's use. West's F.S.A. §§ 495.011-495.171. Proof 382Tk1603 k. Infringement in General. [12] Trademarks 382T 1421 Most Cited Cases (Formerly 382k574 Trade Regulation) 382T Trademarks 382TVIII Violations of Rights Trademarks 382T 1607 382TVIII(A) In General
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382Tk1418 Practices or Conduct Prohib- “Related use,” for trademark protection purposes, is ited in General; Elements merely facet of the likelihood of confusion test and 382Tk1421 k. Infringement. Most requires inquiry into seven factors affecting the Cited Cases likelihood of confusion among consumers: type of (Formerly 382k332 Trade Regulation) trademark, similarity of the two marks, similarity of Elements of common-law and statutory trademark services, identity of customers and facilities, simil- infringement under Florida law are the same. arity of advertising, intent of alleged infringer, and West's F.S.A. §§ 495.011-495.171. actual confusion.
[13] Trademarks 382T 1101 [15] Trademarks 382T 1137(1)
382T Trademarks 382T Trademarks 382TIII Similarity Between Marks; Likelihood 382TIV Creation and Priority of Rights of Confusion 382Tk1132 Use of Mark 382Tk1100 Relationship Between Goods or 382Tk1137 Scope and Priority of Use; Services Underlying Marks Multiple Users, Markets, or Territories 382Tk1101 k. In General. Most Cited 382Tk1137(1) k. In General. Most Cases Cited Cases (Formerly 382k363.1, 382k363 Trade Regula- (Formerly 382k363.1, 382k367, 382k363 Trade tion) Regulation) “Related goods,” for trademark protection pur- Related use doctrine expands trademark protections poses, are those that a consumer is likely to believe to uses in related product and service markets but come from the same source and are somehow con- does not expand trademark protections to geograph- nected with common company. ically remote markets; thus, finding of related use is not finding of state-wide trademark protection, but [14] Trademarks 382T 1081 rather, related use doctrine expands trademark pro- tections to related product or service markets in ex- 382T Trademarks isting geographic markets. 382TIII Similarity Between Marks; Likelihood of Confusion [16] Trademarks 382T 1137(1) 382Tk1081 k. Factors Considered in General. Most Cited Cases 382T Trademarks (Formerly 382k363.1, 382k363 Trade Regula- 382TIV Creation and Priority of Rights tion) 382Tk1132 Use of Mark 382Tk1137 Scope and Priority of Use; Trademarks 382T 1108 Multiple Users, Markets, or Territories 382Tk1137(1) k. In General. Most 382T Trademarks Cited Cases 382TIII Similarity Between Marks; Likelihood (Formerly 382k367 Trade Regulation) of Confusion Territorial extent of trademark protection is limited 382Tk1107 Nature and Circumstances of Use to those geographic areas in which mark is actually of Marks used in commerce and zone of reasonable future ex- 382Tk1108 k. In General. Most Cited pansion. Cases (Formerly 382k363.1, 382k363 Trade Regula- [17] Trademarks 382T 1137(1) tion)
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382T Trademarks of 1985 and which used its mark for television pro- 382TIV Creation and Priority of Rights gram, by injecting its “educational” programming 382Tk1132 Use of Mark series into the county in which the producer/dis- 382Tk1137 Scope and Priority of Use; tributor had statutory and common-law trademark Multiple Users, Markets, or Territories protection; district's common-law trademark rights 382Tk1137(1) k. In General. Most in the educational community college market did Cited Cases not extend into the county cable television market. (Formerly 382k367 Trade Regulation) West's F.S.A. §§ 495.011-495.171. Zone of natural expansion, for trademark protection purposes, does not necessarily include all areas Trademarks 382T 1800 where senior user has in fact expanded because 382T Trademarks such uses may infringe upon junior users' bona fide 382TXI Trademarks and Trade Names Adjudic- trade areas; instead, junior users whose uses are in ated good faith and “remote” are protected, and extent of 382Tk1800 k. Alphabetical Listing. Most zone is generally considered as of date of junior Cited Cases user's first use. (Formerly 382k736 Trade Regulation) [18] Trademarks 382T 1104 You and the Law. *1020 Bret Shawn Clark, Miami Shores, Fla., for 382T Trademarks plaintiff-counter-defendant-appellant. 382TIII Similarity Between Marks; Likelihood of Confusion Richard B. Adams, Adams, Hunter, Angones, 382Tk1100 Relationship Between Goods or Adams, Adams & McClure, Miami, Fla., Harold L. Services Underlying Marks Novick, Larson & Taylor, Douglas E. Jackson, S. 382Tk1104 k. Markets and Territories; Arlington, Va., for defendant- Competition. Most Cited Cases counter-plaintiff-appellee. (Formerly 382k350.1, 382k350 Trade Regula- tion) Appeal from the United States District Court for the Southern District of Florida. Trademarks 382T 1137(2) Before CLARK and COX, Circuit Judges, and 382T Trademarks HENDERSON, Senior Circuit Judge. 382TIV Creation and Priority of Rights 382Tk1132 Use of Mark 382Tk1137 Scope and Priority of Use; PER CURIAM: Multiple Users, Markets, or Territories 382Tk1137(2) k. Particular Cases. Appellant Tally-Ho, Inc. appeals an order denying Most Cited Cases it preliminary injunctive relief on its complaint of (Formerly 382k350.1, 382k350 Trade Regula- trademark infringement and unfair competition tion) against Coast Community College District under Community college district, which began using the the Lanham Act, 15 U.S.C.A. § 1051 et seq. (1976), “You and the Law” mark in connection with educa- and FLA.STAT.ANN. § 495.011 et seq. (West tional telecourses in October of 1983 but which did 1988). Because the district court misapplied the law not register its mark, infringed on trademark rights when it denied Tally-Ho's motion for a preliminary of television program producer/distributor, which injunction we exercise our broad powers of review, registered its “You and the Law” mark in December see E. Remy Martin & Co. v. Shaw-Ross Int'l Im-
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ports, Inc., 756 F.2d 1525, 1529 (11th Cir.1985), legally irrelevant for trademark purposes. and reverse and remand. Tally-Ho became aware of Coast's video series when a local community access cable channel, I. BACKGROUND MDTV, advertised that it was going to present the Coast “You and the Law” series in upcoming A. Facts broadcasts. MDTV acquired the Coast series from Tally-Ho, Inc. (Tally-Ho) produces and distributes the state after learning about it from WLRN. Coast a program entitled “You and the Law” that has been had not previously broadcast its courses over any broadcast in South *1021 Florida since 1984 on a television systems anywhere in Florida. public television station, WLRN, and on a cable television system. The program is hosted by a mod- B. District Court Proceedings erator who discusses with guests topics of current interest in the law. Tally-Ho registered its “You and In March 1988, Tally-Ho filed a two-count com- the Law” trademark with the State of Florida on plaint for declaratory and permanent injunctive re- December 20, 1985, and its certificate indicates the lief and for damages under federal and state trade- FN2 mark was first used in January, 1984. mark and unfair competition laws. On June 1, 1988, Coast answered and filed a four-count coun- Coast Community College District (Coast) is one of terclaim. Coast also sought declaratory and perman- the nation's largest producers and distributors of ent injunctive relief and damages for Tally-Ho's al- educational telecourses. It distributes “You and the leged violation of federal and state unfair competi- FN3 Law,” a series of twenty-six videotaped lectures tion laws. In June 1988, Tally-Ho filed a mo- and discussions concerning various legal issues and FN1 tion seeking preliminary injunctive relief to prevent concepts. Coast produced and copyrighted this Coast from broadcasting its course to the general series in 1980 and 1981. Coast, however, has not public. registered the “You and the Law” trademark under state or federal trademark statutes. Following nego- FN2. Count I alleges service mark in- tiations, in February 1984, the State of Florida and fringement under the Lanham Act, 15 Coast entered a licensing contract which gave the U.S.C. § 1051, et seq., and state the right to use, broadcast and distribute FLA.STAT.ANN. § 495.131 (West 1988) Coast's video lecture series. The license also per- (infringement). Count II alleges unfair mitted the state to duplicate and distribute the series competition in violation of federal and by any means. The state included the series in a list state law. of video courses available to community colleges. The video series was first shown during the first The Lanham Act infringement claim has week of January 1984. Use of the telecourse was no merit. Tally-Ho has not registered its very limited. The video series was shown only at trademark under 15 U.S.C.A. §§ Daytona Beach Community College, Valencia 1051-72, and consequently is not entitled Community College and Florida Keys Community to relief under 15 U.S.C.A. § 1114. College. None of these uses were in the same view- FN3. Counts I and II allege unfair competi- er market in which Tally-Ho's programming was tion under the Lanham Act, 15 U.S.C. § shown. 1125(a), and the common law, respect- FN1. This is a trademark case and whether ively. Count III seeks a declaration that and when Coast registered its copyright is Tally-Ho's state registration is invalid. Count IV alleges violation of Florida's an-
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tidilution statute, FLA.STAT. § 495.151 Tally-Ho filed a notice of appeal and moved for a (1988). preliminary injunction pending appeal. The district court granted the motion in part and enjoined Following an evidentiary hearing, the district court Coast's broadcast of its program for twenty days. issued an order denying Tally-Ho's motion for a After this court denied Tally-Ho's motion to extend preliminary injunction. The court held that Coast FN4 the injunction, Coast and the Dade County Attorney was the first to “use” the mark in Florida informed Tally-Ho that the broadcast of the tele- based on an October 4, 1983, internal Florida De- course would begin on July 25, 1988. Tally-Ho partment of Education memorandum indicating ap- filed a motion for reconsideration to this court for proval for a proposed contract with Coast. The dis- an injunction pending appeal, which was denied. trict court rejected Tally-Ho's argument that Coast relinquished its right by granting to the Department of Education a “naked license” to use the mark. The II. DISCUSSION court also rejected Tally-Ho's arguments that [1] The sole issue on appeal is whether the district Coast's prior use was in a substantially different court erred in denying Tally-Ho's motion for a pre- geographic market than the market occupied by liminary injunction. To prevail on its motion for a Tally-Ho, and that Coast could not support its claim preliminary injunction, Tally-Ho has the burden of of *1022 superior right because it could not show proving: (1) a substantial likelihood of success on that its “You and the Law” telecourse was in direct the merits; (2) a substantial threat of irreparable in- competition with Tally-Ho's program. The court jury; (3) its own injury outweighs the injury to specifically held that Coast's “prior” educational Coast; and (4) the injunction would not disserve the use of the mark gives it the right to use the mark in public interest. Canal Authority of the State of Flor- the “related” broadcast market and that Tally-Ho ida v. Callaway, 489 F.2d 567, 572 (5th Cir.1974). was not entitled to a preliminary injunction because The district court held that Tally-Ho failed to meet “the court does not find [Tally-Ho] to have a sub- FN5 its burden on each of these elements. stantial likelihood of success on the merits.” [2][3] We review the district court's denial of a pre- FN4. FLA.STAT.ANN. § 495.011(11) liminary injunction to determine whether that court states that “a service mark shall be deemed abused its discretion. Remy Martin, 756 F.2d at to be ‘used’ in this state when it is used or 1529. However, if the trial court has misapplied the displayed in the sale or advertising of ser- law, we must review and correct the error without vices in this state or in connection with deference to that court's determination of the legal services rendered in this state.” issue. Id. Factual findings will be reversed only if FLA.STAT.ANN. § 495.011(11) (West clearly erroneous. Id. Our review of the district 1988). court opinion reveals two errors of law. First, the FN5. The district court's opinion also con- district court erred when it determined that Coast cludes summarily that Tally-Ho has not was not required to show actual competition with demonstrated entitlement to the issuance of Tally-Ho in order to successfully assert a prior use a preliminary injunction because it could defense. Second, the district court ignored the geo- not meet the other prerequisites for in- graphic component of trademark protection that junctive relief-namely, a likelihood of irre- gives Coast priority only in limited geographic and parable injury, a balance of harms weigh- product markets in which it did not compete with ing in favor of Tally-Ho, and absence of Tally-Ho. disservice to the public interest. At the outset, it is important to note that neither
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Tally-Ho nor Coast has registered the “You and the ket, the senior user, acquires rights in the mark in Law” trademark under the federal registration sys- that market. Junior Food Stores of W. Fla. v. Junior tem. Tally-Ho has registered its mark under the Food Stores, Inc., 226 So.2d 393, 396 (Fla.1969). Florida statute while Coast has not filed on any re- Junior users, who subsequently use the same or gistry. Thus, neither party can claim nationwide similar mark on similar products or services, may protection under the federal statute. Instead, Coast also establish common law rights to perhaps even has only common law trademark protection while the same mark provided there is no competitive Tally-Ho has common law trademark protections in overlap with the senior user. Id. at 398. The senior addition to those provided under the Florida statute. user, however, may enjoin such uses that infringe As discussed below, because the Florida statute upon its prior rights. The extent of the senior user's provides little additional protection beyond that rights in the mark are also governed by a few addi- provided at common law, this action is almost ex- tional principles. clusively governed by common law trademark prin- ciples. [7] The senior user's rights may extend into uses in “related” product or service markets (termed the “related goods” doctrine). J. McCarthy, supra, § A. Common Law Trademark Principles 24-1 to -12. Thus, an owner of a common law trademark may use its mark on related products or [4][5] Because of the importance of common law services and may enjoin a junior user's use of the trademark principles under Florida's statutory sys- mark on such related uses. The doctrine “gives the tem, we first identify the basic concepts necessary trademark owner protection against the use of its to determine the extent of Coast's common law mark on any product or service which would reas- trademark rights. Under the common law, trade- onably be thought by the buying public to come mark rights are appropriated only through actual from the same source, or thought to be affiliated prior use in commerce. United States v. Steffens, with, connected with, or sponsored by, the trade- 100 U.S. 82, 25 L.Ed. 550 (1879); J. McCarthy, mark owner.” Id. at 166. In this case, the district Trademarks and Unfair Competition § 16:1, at 720 court concluded that Coast's use of its telecourse in (2d Ed.1984). Trademark ownership is always ap- the cable broadcast market is “related” to use in the purtenant to commercial activity. Thus, actual and FN6 community college educational telecourse market. continuous use is required*1023 to acquire and retain a protectible interest in a mark. [8] A senior user's rights also are geographically limited to only those territories in which it actually FN6. Rights in a mark can be lost through uses its mark or into which it might naturally ex- abandonment, non-use, or a naked license pand (the “zone of natural expansion”). For in- without control over product quality. In stance, if a senior user cannot prove that it directly fact, as an alternative ground for relief competes in a geographic market with a junior user, Tally-Ho contends that even if Coast has it can still demonstrate that the junior user is oper- superior rights to the “You and the Law” ating in a market into which the senior user should mark, it forfeited its rights by granting a be allowed to expand at a later time. “naked license” to the Department of Edu- cation. We believe the district court cor- rectly rejected this argument. B. Florida's Trademark Act
[6] Ownership of a distinctive mark is further lim- [9] Tally-Ho's preliminary injunction is based, in ited by priority of use. The first to use a mark on a part, on Coast's alleged violation of Florida's Trade- product or service in a particular geographic mar- mark Act which provides for state trademark regis-
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FN7 tration. In Florida, registration under the trade- ject to any conditions and limitations mark statute is “prima facie evidence of the validity stated therein. of the registration, registrant's ownership of the mark, and of registrant's exclusive right to use the The Act permits a registrant to sue for infringement under FLA.STAT.ANN. § 495.131 (West 1988) mark in this state in connection with the goods or FN9 services specified in the certificate, subject to any and pursue remedies under FLA.STAT.ANN. conditions and limitations stated therein.” § 495.141 (West 1988). Common law owners of FN8 FLA.STAT.ANN. § 495.061(2) (West 1988); unregistered marks are limited to common law rem- Abner's Beef House Corp. v. Abner's Int'l, Inc., 227 edies in infringement actions. The Florida statute also permits an “antidilution” claim under section So.2d 865, 866 (Fla.1969). The Florida Trademark FN10 Act however explicitly preserves common law 495.151. This provision permits any trade- rights in marks acquired in good faith. mark owner, whether registered or unregistered, to FLA.STAT.ANN. § 495.161 (West 1988) prohibit either a non-competitor's or competitor's (“Nothing herein shall adversely affect or diminish use of a similar mark if there is a likelihood of in- the rights or the enforcement of rights in marks ac- jury to business reputation or dilution of the mark's quired in good faith at any time at common law.”). distinctive quality. The antidilution statute's pur- Thus, a registered mark has prima facie validity but pose is to prevent the weakening of a distinctive is subject to another's bona fide use of the same or trademark. similar mark under the common law. The statute FN9. This section, entitled “Infringement,” therefore does not abrogate the common law rights provides: of owners of marks. Instead, a registrant's rights are limited by *1024 the bona fide rights of common Subject to the provisions of § 495.161, law users. In this action, Tally-Ho's registration is any person who shall: prima facie evidence of its right to use the “You and the Law” trademark in Florida subject only to (1) Use, without the consent of the regis- Coast's common law rights. trant, any reproduction, counterfeit, copy or colorable imitation of a mark re- FN7. FLA.STAT.ANN. §§ 495.011-.171 gistered under this chapter on any goods (West 1988). or in connection with the sale, offering for sale, distribution or advertising of FN8. Subsection (2) provides: any goods or services on or in connec- Any certificate of registration issued by tion with which such use is likely to the department of state under the provi- cause confusion or mistake or to deceive sions hereof or a copy thereof duly certi- as to the source of origin of such goods fied by the department of state shall be or services; or admissible in evidence as competent and (2) Reproduce, counterfeit, copy or col- sufficient proof of the registration of orably imitate any such mark and apply such mark in any action of judicial pro- such reproduction, counterfeit, copy or ceedings in any court of this state, and colorable imitation to labels, signs, shall be prima facie evidence of the prints, packages, wrappers, receptacles validity of the registration, registrant's or advertisements intended to be used ownership of the mark, and the regis- upon or in conjunction with the sale, of- trant's exclusive right to use the mark in fering for sale, distribution or advert- this state in connection with the goods or ising in this state of goods or services; services specified in the certificate, sub-
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Shall be liable in a civil action by the become a symbol of consumer loyalty and goodwill owner of such registered mark for any or rather than merely an indicator of supplier identity. all of the remedies provided in § A dilution action protects the owners of such 495.141, except that under subsection strong, distinctive marks from the diminution of (2) hereof the registrant is not entitled to consumer goodwill by competitors or non- FN11 recover profits or damages unless the competitors. Thus, dilution analysis is funda- acts have been committed with know- mentally different from infringement analysis; the ledge that such mark was intended to be former focuses on the dilution of a mark's distinct- used to cause confusion or mistake or to ive quality while the latter focuses on the likelihood deceive. of consumer confusion. In addition, a dilution ac- tion eliminates the requirement of competition; an FN10. This section, entitled “Injury to infringement action does not. business reputation; dilution,” provides: FN11. “The underlying rationale of the di- Every person, association, or union of lution doctrine is that the gradual diminu- workingmen adopting and using a mark, tion or whittling away of the value of a trade name, label or form of advertise- trademark, resulting from use by another, ment may proceed by suit, and all courts constitutes an invasion of the senior user's having jurisdiction thereof shall grant in- property right and good will in his mark junctions, to enjoin subsequent use by and gives rise to an independent wrong.” J. another of the same or similar mark, McCarthy, supra, § 24:13, at 213. trade name, label or form of advertise- ment if it appears to the court that there exists a likelihood of injury to business C. Competition Required in an Infringement Action reputation or of dilution of the distinct- [10][11] The district court relied upon a dilution ive quality of the mark, trade name, label theory to support its conclusion that Coast did not or form of advertisement of the prior have to demonstrate competition in order to estab- user, notwithstanding the absence of lish a prior use defense. In an infringement action, competition between the parties or of the *1025 plaintiff must initially demonstrate the confusion as to the source of goods or right to a trademark and actual geographic and services. product competition with the alleged infringer. The FLA.STAT.ANN. § 495.151 (West defendant must then establish some defense, in this 1988). case priority of usage, to defeat the plaintiff's in- fringement claim. In establishing prior use, the de- It is critical to note the distinction between a trade- fendant has essentially the same burden as the mark infringement action and a trademark dilution plaintiff: to prove that its competing use of the con- action. At common law, a trademark was intended tested mark pre-dates the competitor's use. In other to differentiate between different sources of com- words, a defendant's prior use defense also requires peting goods. Thus, an infringement action is based a showing of competition. on the likelihood of consumer confusion between suppliers of competing goods in the same geo- The district court erred in failing to distinguish graphic locale. In contrast, a dilution action is between an infringement action and a dilution ac- based on the concept that a strong trademark has tion. The district court relied upon and misinter- value beyond its ability to distinguish a good or ser- preted a passage from Abner's Beef House Corp. v. vice's source. A strong, distinctive trademark may Abner's Int'l, Inc., 227 So.2d 865 (Fla.1969). In
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full, this passage states: Because one's goodwill or reputation may be harmed by another's use of a tradename similar to F.S., Section 495.151, F.S.A., does, however, obvi- that of the first, it is often stated that under most ate the necessity in an injunction suit to enjoin a of the more recent cases actual or direct competi- subsequent use of a similar mark that plaintiff tion is no longer essential to injunctive relief show there is competition between the parties or from infringement of a tradename, trademark or a confusion as to the source of goods and ser- unfair competition. However, actual or intended vices, which showing was a requisite under the competition appears to be essential to potential common law. See El Modello Cigar Manufactur- customer confusion, when the issue is the same- ing Co. v. Gato, 25 Fla. 886, 7 So. 23, 6 L.R.A. ness or similarity in kind of the services or goods 823 [1890]. involved (substantive scope of protection) and when the issue is the territorial scope of trade- Id. at 866. The court in Abner's Beef House was name (or mark) protection. discussing Florida's antidilution statute, section Id. at 446 n. 4 (citations omitted). As the American 495.151, which by its plain language eliminates the Bank court holds, the common law requirement requirement of competition in a dilution FN12 of demonstrating actual or intended competition action. The court clearly was not discussing is still a requisite in a trademark infringement ac- either state statutory or common law trademark in- tion. The proper interpretation of the Florida fringement actions. In fact, the passage makes ap- Trademark Act and Florida case law leads to the parent that the common law requires a showing of conclusion that a defendant in a trademark in- competition between the parties in an infringement FN13 fringement action based on common law prin- action. Similarly, in American Bank v. First ciples shoulders the same burden as the plaintiff American Bank & Trust, 455 So.2d 443 (Fla. 5th in establishing priority of use in defending Dist.Ct.App.1984), the court stated: against an infringement claim. This burden in- FN12. See also Tio Pepe, Inc. v. El Tio cludes a showing that the prior use is also a com- Pepe de Miami Restaurant, Inc., 523 So.2d peting use. The district court's conclusion to the 1158, 1160 (Fla.3d Dist.Ct.App.1988) contrary provides defendants in infringement ac- (“Under the statute, the common law re- tions with greater protections than those provided quirement of establishing competition at common law. The Florida Trademark Statute is between the parties or confusion as to the emphatic in preserving common law trademark source of the services has been eliminated rights, and there is no indication that such rights ... thus the need to inquire into the territori- were to be preserved only in the acquisition of al scope of the business to determine trademarks and not in their defense. whether competition or confusion is present has also been dispensed with.”) D. Infringement (citations omitted). [12] The elements of common law and statutory FN14 FN13. At common law, trademark law had trademark infringement are the *1026 same. no role absent competition. Unless two or A cause of action for injunctive relief on the com- more owners of similar marks competed mon law of unfair competition based on tradename within the same geographic market or or trademark infringement requires the following between similar goods or services, no pos- elements to be alleged and proved: sibility of consumer confusion existed. Thus, there was no need for trademark pro- FN14. Tally-Ho has also set forth a claim tection. for unfair competition. The district court
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recognized that an unfair competition plaintiff has already established its tradename (or claim based only upon alleged trademark mark, etc.) and infringement is practically identical to an infringement claim. See Freedom Savings (4) as a consequence of the defendant's action, or and Loan Ass'n v. Way, 757 F.2d 1176, threatened action, customer confusion of source 1186 (11th Cir.1985). Because we con- or as to the sponsorship of the services (or goods) clude that Tally-Ho is entitled to a prelim- offered, or to be offered, by the defendant is inary injunction on its trademark infringe- probable (likely) or inevitable. ment claim, we need not address whether it American Bank, 455 So.2d at 445-46. is entitled to injunctive relief on the unfair competition claim. The requirements for the issuance of a preliminary injunction require that Tally-Ho demonstrate a sub- (1) The plaintiff first adopted and used a certain stantial likelihood of success on the merits of its in- name (or mark or symbol or logo or design) in a fringement claim. It therefore must establish each certain market or trade area, as a means of estab- of these four elements. Neither party disputes that lishing good will and reputation and to describe, Coast's broadcast of its “You and the Law” tele- identify or denominate particular services course will inevitably cause consumer confusion in rendered or offered by it (or goods made or sold the Dade County cable broadcast marketplace. Nor by it) and to distinguish them from similar ser- do the parties claim that the “You and the Law” vices rendered or offered (or similar goods mar- mark is not protectible (i.e. generic, descriptive, or keted) by others, and geographic). The central dispute is whether Tally- (2) through its association with such services or Ho or Coast has priority of use of the “You and the goods the plaintiff's tradename (or mark, etc.) has Law” mark in this particular market. The evidence acquired a special significance as the name of the compels the conclusion that Tally-Ho has priority. services rendered (or goods marketed) by the The record demonstrates that Coast was the first to plaintiff in its trade area because plaintiff's trade- use the “You and the Law” trademark. However, name (or mark, etc.) Tally-Ho correctly asserts that Coast never used the (a) is inherently distinctive (fanciful, novel or arbit- trademark in the Dade County cable broadcast mar- rary), or ket where Tally-Ho had been broadcasting its “You and the Law” series for four years. The district (b) while generic, descriptive, or geographic, court agreed with Coast that an internal Department plaintiff's tradename (or mark, etc.) has, by ac- of Education memorandum dated October 1983 tual usage, acquired in a certain trade area, a provides a sufficient basis for granting Coast a secondary, special or trade meaning as indicat- statewide monopoly on the “You and the Law” ing, describing, identifying or denominating trademark in both the educational community col- the plaintiff as the source of certain services (or lege and cable broadcast markets. The record and goods), and the case law, however, establish that, at most, Coast has common law trademark protection in very lim- (3) the defendant has commenced, or intends to ited geographic markets and that its expansion into commence, the use of an identical or confusingly the Dade County market infringes on Tally-Ho's similar tradename (or mark, etc.) to indicate or protected trademark rights. identify similar services rendered (or similar goods marketed) by it in competition with The district court relies upon the related use doc- plaintiff in the same trade areas in which the trine to expand Coast's limited common law rights
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in the community college telecourse market to the sion into the broadcasting market is not a “related cable broadcast market. Without discussion the dis- use.” trict *1027 court further expands Coast's common law rights to encompass the entire state of Florida The district court concluded that the public broad- through the zone of natural expansion doctrine. cast of Coast's video courses was “complementary” This holding is contrary to the principle that actual with the educational use of its courses. Freedom use is necessary to establish common law trade- Savings, 757 F.2d at 1184. Although this is one mark rights. The next two sections of this opinion measure of relatedness, it is not the sole measure. therefore describe the related use doctrine and the Instead, the case law requires a more detailed ap- doctrine of natural expansion, and analyze the dis- proach as described above. Nevertheless, the dis- trict court's reasoning. trict court's conclusion that the cable broadcast market is related to the educational telecourse mar- ket is supportable. The test for relatedness is wheth- 1. Related Use er consumers are likely to believe that a broadcast of “You and the Law” over a cable channel is from [13][14] The district court found that Coast's ex- the same source or is somehow affiliated with pansion into the broadcast market is “related to” the Coast's educational telecourse series, “You and the use of video courses in the educational telecourse Law.” Under this standard, the district court's find- market. Related goods are those that a consumer is ings are not clearly erroneous. The inquiry, likely to believe come from the same source and are however, does not end at this point. somehow connected with a common company. “Related use” is merely a facet of the likelihood of [15] Even assuming that Coast has common law confusion test and therefore requires an inquiry into rights in the related cable broadcast market, Tally- seven factors affecting the likelihood of confusion Ho still has a protectible trademark in the Dade among consumers: (1) type of trademark; (2) simil- County cable broadcast market because the related arity of the two marks; (3) similarity of services; use doctrine expands trademark protections to uses (4) identity of customers and facilities; (5) similar- in related product and service markets. The doctrine ity of advertising; (6) intent of the alleged infringer; does not expand trademark protections to geograph- and (7) actual confusion. See Freedom Savings and ically remote markets. Thus, a finding of related Loan Ass'n v. Way, 757 F.2d 1176, 1182 (11th use is not a finding of state-wide trademark protec- Cir.1985). tion. Instead, the related use doctrine expands trademark protections to related product or service Tally-Ho claims that the cable broadcast market is markets in existing geographic markets. not a related use because the cable broadcast mar- ket is a separate and distinct market from the edu- cational telecourse market and that these markets 2. Zone of Natural Expansion are composed of distinct customers-that is, students versus the general viewing public. Tally-Ho further [16][17] The territorial extent of trademark protec- argues that it advertises its “You and the Law” pro- tion is limited to those geographic areas in which a mark is actually used in commerce and a zone of gram differently than Coast advertises its tele- FN15 course. Tally-Ho also asserts that it had no intent to reasonable future expansion. “[U]nder com- invade Coast's telecourse markets when it began its mon law principles, the senior user of a mark can- cable broadcasts and finally that there was no actual not monopolize markets that neither his trade nor confusion prior to Coast's entry into the broadcast- his reputation has reached.” *1028J. McCarthy, ing market. Thus, Tally-Ho argues that almost all of supra, § 26:1, at 284. This “zone of natural expan- these factors favors its position that Coast's expan- sion” doctrine provides the senior user with some
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limited “breathing space” in which to expand bey- The zone of natural expansion doctrine is admit- ond its current actual use. J. McCarthy, supra, § tedly a legal fiction created to provide senior users 26:8, at 302. with expansion areas. Thus, there are few firm guidelines to define the senior user's imaginary FN15. “Under the common law, the uni- zone of natural expansion. However, several criter- versal rule governing tradename protection ia seem relevant: is that protection will be extended to the first appropriator of a name, within the ter- (1) How great is the geographical distance from the ritorial scope of its business, against sub- senior user's actual location to a point on the peri- sequent use of the same or similar name by meter of the zone of expansion? another.” Junior Food Stores, 226 So.2d at 396 (emphasis added). (2) What is the nature of the business? Does it already have a large or small zone of actual mar- This theory has been seized upon by senior users to ket penetration or reputation? argue that defendant is occupying territory within its natural zone of expansion, even though it has (3) What is the history of the senior user's past ex- not yet entered that market and defendant was pansion? Has it remained static for years, or has concededly first in that remote area. In most it continually expanded into new territories? Ex- cases, the courts have rejected this argument on trapolating prior expansion, how long would it the facts, narrowly defining the senior user's zone take the senior user to reach the periphery of the of natural expansion. expansion zone he claims?
If the senior user is static, and has restricted use (4) Would it require an unusual ‘great leap forward’ to only one small area, such as one city, a good- for the senior user to enter the zone, or is the faith junior user may expand into a nationwide zone so close to existing locations that expansion use of the mark, subject only to an exception in would be (or is) a logical, gradual, step of the the small area occupied by the senior user. same length as those previously made? However, if the senior user has constantly expan- J. McCarthy, supra, § 26:9, at 304-05. In addition, ded its business by the date of the junior user's the “zone of territorial protection is determined by adoption of the mark, and if distances are not the nature of the [user's] business.” Junior Food great, it may be that the senior user is entitled to Stores, 226 So.2d at 396. exclusive rights in a zone of natural expansion which includes the junior user's area, even though Based upon these criteria, and assuming Coast is a no actual sales have yet been made in that area by senior user, Coast's zone of natural expansion as of the senior user. January 1984 does not include Dade County. Coast had not even officially entered its licensing agree- Id. at 302-03 (citations omitted). The zone of natur- ment with the Florida Department of Education at al expansion, of course, does not necessarily in- this time. Nor had Coast used its mark in any iden- clude all areas where a senior user has in fact ex- tifiable geographic market. Thus, Coast had no pen- panded because such uses may infringe upon ju- etration in the Dade County cable broadcast market nior users' bona fide trade areas. Id. Instead, juni- at the time Tally-Ho was actively using its mark in or users whose uses are in good faith and commerce in Dade County. Furthermore, Coast's “remote” are protected. The extent of the zone is history of expansion within Florida is static. Over generally considered as of the date of the junior the four years following its licensing agreement, user's first use. See Burger King of Florida, Inc. Coast's telecourse had extremely limited use in v. Brewer, 244 F.Supp. 293 (W.D.Tenn.1965).
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three community colleges, outside the Dade County would be in the public interest by avoiding the in- area. No use was made or attempted on cable evitable viewer confusion that would otherwise res- broadcast systems in Florida either prior to or after ult. Tally-Ho's registration of its “You and the Law” mark. In sum, Coast's zone of natural expansion III. CONCLUSION cannot include the Dade County market where Tally-Ho has been using the “You and the Law” [18] Tally-Ho has a state-registered trademark on mark for four years. “You and the Law” and has been telecasting its pro- gramming in Dade County for almost five years. Thus, the district court erred in granting Coast Coast infringed on Tally-Ho's trademark by inject- statewide common law rights in the *1029 “You ing its “educational” programming series, which and the Law” mark through its broad application of uses the same service mark as Tally-Ho, into the the related use doctrine and disregard of the geo- Dade County market in which Tally-Ho has stat- graphical component of trademark protections. utory and common law trademark protection. The district court erred by neglecting the geographic 3. Preliminary Injunction component of trademark law and effectively grants Coast state-wide protection for its mark despite The analysis above reveals that the district court Coast's never having used its mark in Florida other misapplied the law and therefore reached an erro- than in three community colleges' courses. Coast's neous conclusion regarding Tally-Ho's likelihood of common law trademark rights in the educational success on the merits of its claims. Tally-Ho had community college market simply do not extend in- priority of usage in the Dade County market. Al- to the Dade County cable television market. The though the district court summarily concluded that district court therefore erred in refusing to grant the other prerequisites for granting a preliminary Tally-Ho's request for a preliminary injunction. injunction were not present, we believe that the re- cord may support contrary findings. For example, it Accordingly, we REVERSE the district court's is undisputed that there was a substantial likelihood denial of Tally-Ho's motion for a preliminary in- of confusion if Coast's telecourse were broadcast. junction and REMAND with instructions to the dis- Thus, Tally-Ho faced a substantial threat of irrepar- trict court to enter a preliminary injunction. able injury to its protected trademark and to view- er's goodwill resulting from the broadcast of Coast's C.A.11 (Fla.),1989. course. Processed Plastic Co. v. Warner Commu- Tally-Ho, Inc. v. Coast Community College Dist. nications, 675 F.2d 852, 858 (7th Cir.1982) (“It is 889 F.2d 1018, 58 USLW 2392, 13 U.S.P.Q.2d generally recognized in trademark infringement 1133 cases that (1) there is not adequate remedy at law to END OF DOCUMENT redress infringement and (2) infringement by its nature causes irreparable harm.”). Furthermore, the injury to Tally-Ho seems outweighed by any asser- ted injury to Coast. Tally-Ho's four year investment in its course and trademark is subject to reputation- al and financial injury from Coast's infringing videocourse. Additionally, an injunction would have no direct financial effect on Coast because Coast does not receive any compensation from the broadcast of its telecourse. Finally, the injunction
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Affirmed. United States Court of Appeals, Eleventh Circuit. West Headnotes WELDING SERVICES, INC., Plaintiff-Appellant, [1] Federal Courts 170B 776 v. Terry FORMAN, Welding Technologies, Inc., 170B Federal Courts Robert Henson, Charles Jones, Rod Forman, De- 170BVIII Courts of Appeals fendants-Appellees. 170BVIII(K) Scope, Standards, and Extent No. 06-13174. 170BVIII(K)1 In General 170Bk776 k. Trial De Novo. Most Dec. 17, 2007. Cited Cases Background: Corporation brought suit against its Court of Appeals reviews de novo a district court's competitor for allegedly infringing its service mark, grant of summary judgment. and the United States District Court for the North- [2] Federal Courts 170B 759.1 ern District of Georgia, No. 05-00096-CV-WCO-2,William C. O'Kelley, J., 170B Federal Courts entered summary judgment against plaintiff based 170BVIII Courts of Appeals on absence of likelihood of consumer confusion. 170BVIII(K) Scope, Standards, and Extent Plaintiff appealed, and defendant asserted that dis- 170BVIII(K)1 In General trict court should have found that plaintiff's mark 170Bk759 Theory and Grounds of De- was generic mark not entitled to service mark pro- cision of Lower Court tection. 170Bk759.1 k. In General. Most Cited Cases Holdings: The Court of Appeals, Gibson, Circuit Court of Appeals may affirm on any ground sup- Judge, sitting by designation, held that: ported by record. (1) name “Welding Services,” as applied to com- pany whose business was offering welding services, [3] Trademarks 382T 1421 was “generic” and not eligible for service mark pro- tection; 382T Trademarks (2) abbreviation “WSI,” as used in logo of corpora- 382TVIII Violations of Rights tion whose primary business was offering welding 382TVIII(A) In General services, was not shown to have acquired any 382Tk1418 Practices or Conduct Prohib- meaning distinct from the generic terms that it ab- ited in General; Elements breviated; and 382Tk1421 k. Infringement. Most (3) even assuming that welding service corpora- Cited Cases tion's logo was sufficiently distinctive to be eligible To establish a claim for service mark infringement, for service mark protection, allegedly infringing service mark holder must show: (1) that its service logo of its competitor, consisting of the abbrevi- marks are entitled to protection; and (2) that alleged ation “WTI” with an orange “swoosh” design wrap- infringer's marks are either identical to its service ping around the middle of these letters, was so visu- marks or so similar that they are likely to confuse ally dissimilar as to foreclose claim of likelihood of consumers. Lanham Trade-Mark Act, § 43(a), 15 confusion with first company's weak mark. U.S.C.A. § 1125(a).
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[4] Federal Courts 170B 752 1051 et seq.
170B Federal Courts [7] Trademarks 382T 1030 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 382T Trademarks 170BVIII(K)1 In General 382TII Marks Protected 170Bk752 k. Matters or Evidence Con- 382Tk1029 Capacity to Distinguish or Signi- sidered. Most Cited Cases fy; Distinctiveness Court of Appeals ordinarily does not review materi- 382Tk1030 k. In General. Most Cited als outside the record on appeal, but has equitable Cases power to do so in interests of justice. Some marks are inherently distinctive, and thus eli- gible for trademark or service mark protection, [5] Federal Courts 170B 752 while some marks that are not inherently distinctive can still acquire a distinctiveness by becoming as- 170B Federal Courts sociated in minds of public with products or ser- 170BVIII Courts of Appeals vices offered by proprietor of mark, and still other 170BVIII(K) Scope, Standards, and Extent marks can never become distinctive. Lanham 170BVIII(K)1 In General Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et 170Bk752 k. Matters or Evidence Con- seq. sidered. Most Cited Cases On appeal from district court's grant of summary [8] Trademarks 382T 1689 judgment against service mark holder on its in- fringement claim, Court of Appeals would not devi- 382T Trademarks ate from normal rule against review of materials 382TIX Actions and Proceedings outside the record on appeal, and would not in the 382TIX(E) Trial and Judgment interests of justice consider evidence that, since dis- 382Tk1682 Questions of Law or Fact trict court's order was entered, service mark holder 382Tk1689 k. Marks Protected. Most had obtained registration for its service marks, Cited Cases where service mark holder had not moved to reopen Trademarks 382T 1690 district court proceedings to enlarge the record, and it was service mark holder, as plaintiff, that com- 382T Trademarks menced case, and filed motion for summary judg- 382TIX Actions and Proceedings ment, before registration of its marks was complete. 382TIX(E) Trial and Judgment 382Tk1682 Questions of Law or Fact [6] Trademarks 382T 1030 382Tk1690 k. Secondary Meaning. 382T Trademarks Most Cited Cases 382TII Marks Protected Whether a mark is distinctive, and thus eligible for 382Tk1029 Capacity to Distinguish or Signi- trademark or service mark protection, is question of fy; Distinctiveness fact, regardless of whether question is inherent dis- 382Tk1030 k. In General. Most Cited tinctiveness or acquired distinctiveness. Lanham Cases Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et Trademark or service mark protection is available seq. only to “distinctive” marks, i.e., marks that serve [9] Trademarks 382T 1033 purpose of identifying source of goods or services. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 382T Trademarks
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382TII Marks Protected Secondary Meaning. Most Cited Cases 382Tk1033 k. Levels or Categories of Dis- Descriptive name, though not inherently distinctive, tinctiveness in General; Strength of Marks in Gen- can acquire distinctiveness or secondary meaning, eral. Most Cited Cases and thus become eligible for trademark protection, Trademark law distinguishes four gradations of dis- by becoming associated with proprietor's product or tinctiveness of marks, in descending order of service. Lanham Trade-Mark Act, § 1 et seq., 15 strength: “fanciful marks” or “arbitrary marks,” U.S.C.A. § 1051 et seq. which bear no logical relationship to product or ser- vice that they are used to represent; “suggestive [13] Trademarks 382T 1032 marks,” which refer to some characteristic of the 382T Trademarks product that they are used to represent goods, but 382TII Marks Protected for which a leap of imagination is required to get 382Tk1029 Capacity to Distinguish or Signi- from the mark to the product; “descriptive marks,” fy; Distinctiveness which identify a characteristic or quality of the ser- 382Tk1032 k. Acquired Distinctiveness vice or product; and generic marks. Lanham Trade- and Secondary Meaning in General. Most Cited Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. Cases [10] Trademarks 382T 1034 Term has acquired “secondary meaning,” for pur- poses of trademark law, when primary significance 382T Trademarks of term in minds of consuming public is not 382TII Marks Protected product, but the producer. Lanham Trade-Mark 382Tk1034 k. Generic Terms or Marks. Most Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. Cited Cases Genericness of term, for purpose of deciding [14] Trademarks 382T 1032 whether it is eligible for trademark protection, lies 382T Trademarks not in term itself, but in use of term; word may be 382TII Marks Protected generic of some things and not of others. Lanham 382Tk1029 Capacity to Distinguish or Signi- Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et fy; Distinctiveness seq. 382Tk1032 k. Acquired Distinctiveness [11] Trademarks 382T 1034 and Secondary Meaning in General. Most Cited Cases 382T Trademarks Whether name has acquired “secondary meaning,” 382TII Marks Protected for purposes of trademark law, depends on length 382Tk1034 k. Generic Terms or Marks. Most and nature of name's use, nature and extent of ad- Cited Cases vertising and promotion of name, efforts of propri- Generic use of word may not be registered as trade- etor to promote conscious connection between mark. Lanham Trade-Mark Act, § 1 et seq., 15 name and business, and degree of actual recogni- U.S.C.A. § 1051 et seq. tion by public that name designates the proprietor's product or service. Lanham Trade-Mark Act, § 1 et [12] Trademarks 382T 1037 seq., 15 U.S.C.A. § 1051 et seq.
382T Trademarks [15] Trademarks 382T 1034 382TII Marks Protected 382Tk1035 Descriptive Terms or Marks 382T Trademarks 382Tk1037 k. Acquired Distinctiveness; 382TII Marks Protected
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382Tk1034 k. Generic Terms or Marks. Most to kind of services it and its competitors provide is Cited Cases powerful evidence that the words in putative mark Generic mark cannot achieve true secondary mean- are being used generically. Lanham Trade-Mark ing, and become eligible for trademark protection, Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. even if it becomes in some degree associated with its source. Lanham Trade-Mark Act, § 1 et seq., 15 [18] Trademarks 382T 1052 U.S.C.A. § 1051 et seq. 382T Trademarks [16] Trademarks 382T 1034 382TII Marks Protected 382Tk1050 Format or Components of Term 382T Trademarks or Mark 382TII Marks Protected 382Tk1052 k. Letters or Initials; Abbrevi- 382Tk1034 k. Generic Terms or Marks. Most ations. Most Cited Cases Cited Cases Trademarks 382T 1057(1) Trademarks 382T 1052 382T Trademarks 382T Trademarks 382TII Marks Protected 382TII Marks Protected 382Tk1050 Format or Components of Term 382Tk1050 Format or Components of Term or Mark or Mark 382Tk1057 Nonliteral Elements 382Tk1052 k. Letters or Initials; Abbrevi- 382Tk1057(1) k. In General. Most ations. Most Cited Cases Cited Cases Abbreviation “WSI,” as used in logo of corporation Trademarks 382T 1058 whose primary business was offering welding ser- vices, was not shown to have acquired any meaning 382T Trademarks distinct from the generic terms, “Welding Services, 382TII Marks Protected Inc.,” that it abbreviated, as required for abbrevi- 382Tk1050 Format or Components of Term ation to be eligible for service mark protection, or Mark where abbreviation appeared in logo immediately 382Tk1058 k. Multiple Elements; Com- next to generic terms themselves. Lanham Trade- binations. Most Cited Cases Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. Name “Welding Services,” as applied to company whose business was offering welding services, was [19] Trademarks 382T 1052 “generic” and not eligible for service mark protec- tion, and did not become non-generic simply be- 382T Trademarks cause company included the abbreviation “Inc.” at 382TII Marks Protected end of its name. Lanham Trade-Mark Act, § 1 et 382Tk1050 Format or Components of Term seq., 15 U.S.C.A. § 1051 et seq. or Mark 382Tk1052 k. Letters or Initials; Abbrevi- [17] Trademarks 382T 1034 ations. Most Cited Cases Abbreviations of generic words may become pro- 382T Trademarks tectable, if the party claiming trademark or service 382TII Marks Protected mark protection for abbreviation shows that abbre- 382Tk1034 k. Generic Terms or Marks. Most viation has meaning distinct from underlying words Cited Cases in mind of public. Lanham Trade-Mark Act, § 1 et Would-be proprietor's use of words in mark to refer
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seq., 15 U.S.C.A. § 1051 et seq. marks; (3) similarity between goods or services offered under the two marks; (4) similarity of actual [20] Trademarks 382T 1052 sales methods used by the two parties, such as their sales outlets and customer base; (5) similarity of 382T Trademarks advertising methods; (6) intent of alleged infringer 382TII Marks Protected to misappropriate proprietor's good will; and (7) ex- 382Tk1050 Format or Components of Term istence and extent of actual confusion in the con- or Mark suming public. Lanham Trade-Mark Act, § 1 et 382Tk1052 k. Letters or Initials; Abbrevi- seq., 15 U.S.C.A. § 1051 et seq. ations. Most Cited Cases While investment in advertising is generally relev- [23] Trademarks 382T 1691 ant to question of whether a mark has acquired sec- ondary meaning, for purposes of federal trademark 382T Trademarks law, question of whether abbreviation of generic 382TIX Actions and Proceedings words has a discrete meaning in minds of public 382TIX(E) Trial and Judgment from the generic words for which it stands requires 382Tk1682 Questions of Law or Fact a different kind of evidence. Lanham Trade-Mark 382Tk1691 k. Similarity; Likelihood Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. of Confusion. Most Cited Cases Whether marks are sufficiently similar to give rise [21] Trademarks 382T 1058 to likelihood of confusion, for purpose of trademark or service mark infringement claim, is question of 382T Trademarks fact for factfinder. Lanham Trade-Mark Act, § 1 et 382TII Marks Protected seq., 15 U.S.C.A. § 1051 et seq. 382Tk1050 Format or Components of Term or Mark [24] Trademarks 382T 1081 382Tk1058 k. Multiple Elements; Com- binations. Most Cited Cases 382T Trademarks Logo consisting of nonprotectable literal element 382TIII Similarity Between Marks; Likelihood combined with a display or geometric design may of Confusion be distinctive enough to receive trademark protec- 382Tk1081 k. Factors Considered in General. tion. Lanham Trade-Mark Act, § 1 et seq., 15 Most Cited Cases U.S.C.A. § 1051 et seq. In assessing whether marks are sufficiently similar to give rise to likelihood of confusion for purposes [22] Trademarks 382T 1081 of trademark or service mark infringement claim, court must consider each of the seven factors, such 382T Trademarks as distinctiveness of mark allegedly infringed, sim- 382TIII Similarity Between Marks; Likelihood ilarity of marks, and similarity of goods or services, of Confusion bearing upon this inquiry. Lanham Trade-Mark Act, 382Tk1081 k. Factors Considered in General. § 1 et seq., 15 U.S.C.A. § 1051 et seq. Most Cited Cases Whether marks are sufficiently similar to give rise [25] Trademarks 382T 1033 to likelihood of confusion is assessed, for purpose of trademark or service mark infringement claim, 382T Trademarks by examining seven factors: (1) distinctiveness of 382TII Marks Protected mark alleged to have been infringed; (2) similarity 382Tk1033 k. Levels or Categories of Dis- of the allegedly infringed and allegedly infringing tinctiveness in General; Strength of Marks in Gen-
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eral. Most Cited Cases fringing logo of its competitor, consisting of the ab- breviation “WTI” with an orange “swoosh” design Trademarks 382T 1092 wrapping around the middle of these letters, was so visually dissimilar as to foreclose claim of likeli- 382T Trademarks hood of confusion with first company's weak mark, 382TIII Similarity Between Marks; Likelihood where second company had hired advertising com- of Confusion pany to design its logo, and where businesses using 382Tk1090 Nature of Marks the two companies' services were sophisticated, 382Tk1092 k. Strength or Fame of Marks; large-scale purchasers, that were less likely to be Degree of Distinctiveness. Most Cited Cases confused than casual purchasers of small items. The stronger or more distinctive a trademark or ser- Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § vice mark, the greater the likelihood of confusion 1051 et seq. and the greater the scope of protection afforded it; conversely, the weaker the mark, the less protection [27] Trademarks 382T 1098 it receives. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. 382T Trademarks 382TIII Similarity Between Marks; Likelihood [26] Trademarks 382T 1092 of Confusion 382Tk1093 Relationship Between Marks 382T Trademarks 382Tk1098 k. Appearance, Sound, and 382TIII Similarity Between Marks; Likelihood Meaning. Most Cited Cases of Confusion Overwhelming visual dissimilarity can defeat an in- 382Tk1090 Nature of Marks fringement claim, by demonstrating that there is no 382Tk1092 k. Strength or Fame of Marks; likelihood of confusion, even though other factors Degree of Distinctiveness. Most Cited Cases bearing on the likelihood of such confusion all Trademarks 382T 1098 weigh in favor of party asserting infringement claim. Lanham Trade-Mark Act, § 1 et seq., 15 382T Trademarks U.S.C.A. § 1051 et seq. 382TIII Similarity Between Marks; Likelihood of Confusion Trademarks 382T 1800 382Tk1093 Relationship Between Marks 382T Trademarks 382Tk1098 k. Appearance, Sound, and 382TXI Trademarks and Trade Names Adjudic- Meaning. Most Cited Cases ated Trademarks 382T 1112 382Tk1800 k. Alphabetical Listing. Most Cited Cases 382T Trademarks Welding Services Inc. 382TIII Similarity Between Marks; Likelihood of Confusion Trademarks 382T 1800 382Tk1112 k. Persons Confused; Circum- 382T Trademarks stances of Sale. Most Cited Cases 382TXI Trademarks and Trade Names Adjudic- Even assuming that welding service corporation's ated logo, consisting of an abbreviation, “WSI,” of gen- 382Tk1800 k. Alphabetical Listing. Most eric terms that it used in its name enclosed within Cited Cases simple circle, was sufficiently distinctive to be eli- WSI. gible for service mark protection, allegedly in-
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Trademarks 382T 1800 Robert Henson, infringed Welding Services' service marks in violation of the Lanham Act, 15 U.S.C. § 382T Trademarks 1125(a). Welding Services contends that there are 382TXI Trademarks and Trade Names Adjudic- triable issues of fact as to whether the companies' ated service marks are confusingly similar, whether 382Tk1800 k. Alphabetical Listing. Most there has been actual confusion about which com- Cited Cases pany was designated by Welding Technologies' WTI. marks, and whether Welding Technologies intended *1354 Amanda S. Thompson, David Wayne Long- to infringe on Welding Services' marks. We affirm Daniels, Ernest L. Greer, James Jay Wolfson, the judgment of the district court. Dorsey E. Hopson, II, Greenberg Trauig, LLP, At- lanta, GA, for Plaintiff-Appellant. I. Charlene R. Swartz, Steven G. Hill, Hill, Kertscher & Wharton, LLP, Atlanta, GA, for Defendants-Ap- Welding Services and Welding Technologies are pellees. rival companies providing services for maintaining equipment used in heavy industry. Since 1990 Welding Services has been using the FN1 Appeal from the United States District Court for the abbreviation “WSI,” and since February 1994, Northern District of Georgia. it has been using a stylized logo consisting of the initials WSI, surrounded by a circle, as shown in Before EDMONDSON, Chief Judge, and TJO- FN* the margin. FLAT and GIBSON, Circuit Judges. FN1. We use the term “abbreviation” FN* Honorable John R. Gibson, United rather than “acronym” because an acronym States Circuit Judge for the Eighth Circuit, is a kind of abbreviation that is pronounced sitting by designation. as a word, rather than as letters. See 3 Louis Altman, Callmann on Unfair Com- petition, Trademarks and Monopolies § *1355 GIBSON, Circuit Judge: 18:12 n. 27 (4th ed. 2004). Obviously, WSI cannot be pronounced as a word. Welding Services, Inc. appeals from the district court's entry of summary judgment against it on its claim that Welding Technologies, Inc., its General Manager, Terry Forman, and its Vice President,
ginal owners. The individual defendants Terry Forman and Robert Henson are former employees Welding Technologies was founded in 2003. In of Welding Services who moved to Welding Tech- May 2005, a group of former Welding Services em- FN2 nologies. When Welding Technologies was ployees bought Welding Technologies from the ori-
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created in 2003, the original owners had a sister FN2. Rod Forman and Charles Jones were company, Orbital Tool Technologies, Inc., a ma- named as defendants in the complaint, but chining business. The owners hired an advertising were not included in the Lanham Act company, Fetelli, Inc., to design twin logos for the count. two companies. The logos for both companies showed the company's initials with an orange “rotational symbol intended to convey the rotation- al movement of [Orbital Tool's] machining equip- ment.” The Welding Technologies logo is shown in the margin.
as to whether Welding Technologies' use of “WTI” and the logo above created a likelihood of confu- Welding Services brought this suit alleging federal sion. Welding Technologies, on the other hand, ar- trademark infringement on its abbreviation and gues that the district court should have held that stylized logo under section 4 of the Lanham Act, 15 Welding Services has not shown that the abbrevi- U.S.C. § 1125(a)(1)(A), as well as state law causes ation “WSI” was entitled to trademark protection. of action for unfair competition, false and deceptive trade practices, misappropriation of trade secrets, tortious interference with *1356 business relations, II. and other related theories. Welding Services and Welding Technologies made cross-motions for [1][2] We review de novo a district court's grant of summary judgment on the Lanham Act claim, and summary judgment. Stewart v. Booker T. Washing- Welding Technologies also moved for summary ton Ins., 232 F.3d 844, 848 (11th Cir.2000). Sum- judgment on the state deceptive trade practices and mary judgment is proper only if the record before unfair competition claims. The district court gran- the district court shows that there is no genuine is- ted summary judgment to Welding Technologies on sue as to any material fact and Welding Technolo- the only federal claim and on the state law claims gies is entitled to judgment as a matter of law. for unfair competition and deceptive trade prac- Fed.R.Civ.P. 56(c). We must view the evidence in tices. The court declined to exercise supplemental the light most favorable to Welding Services, rather jurisdiction over the remaining state law claims and than weighing the evidence ourselves or making so dismissed those claims. credibility determinations. Stewart, 232 F.3d at 848. Upon motion and after adequate discovery, a On appeal, Welding Services' argument focuses on district court may enter judgment “against a party its federal Lanham Act claim. It argues that the dis- who fails to make a showing sufficient to establish trict court erred in holding that Welding Services the existence of an element essential to that party's had not adduced a genuine question of material fact case, and on which that party will bear the burden
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of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. ther, at oral argument, Welding Services' counsel 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). advised us that it had successfully registered the ab- This court may affirm on any ground supported by breviation “WSI” and the stylized logo. We ordin- the record. Bircoll v. Miami-Dade County, 480 F.3d arily do not review materials outside the record on 1072, 1088 n. 21 (11th Cir.2007). appeal as designated by Fed. R.App. P. 10(a), al- though we have the equitable power to do so if it is [3] To make a claim for infringement of its service in the interest of justice. See Schwartz v. Millon marks, Welding Services must show: (1) that its Air, Inc., 341 F.3d 1220, 1225 n. 4 (11th Cir.2003). service marks were entitled to protection and (2) However, Welding Services has neglected to ad- that Welding Technologies' abbreviated name and dress before this court the ramifications that regis- logo were identical to those marks or so similar that tration would have on allocation of the burden of they were likely to confuse consumers. 15 U.S.C. § proof on the issues of protectability and strength of FN3 1125(a); Int'l Stamp Art, Inc. v. U.S. Postal Serv., the marks. Nor has Welding Services moved to 456 F.3d 1270, 1274 (11th Cir.2006) (per curiam). reopen the district court proceedings to enlarge the record. In light of these omissions and of the fact III. that Welding Services as plaintiff filed this case and also filed a summary judgment motion before the The district court considered the issue of whether registration was complete, we conclude that justice Welding Services' marks were protected, but de- does not require us to deviate from the ordinary clined to enter summary judgment against Welding rule that the appeal is decided on the record before Services on that ground because the court was con- us. See Star Indus., Inc. v. Bacardi & Co., 412 F.3d cerned that there was some evidence that the marks 373, 381-83 (2d Cir.2005) (where mark not re- had acquired secondary meaning (although as to the gistered until after district court entered judgment abbreviation mark, the court's holding is ambiguous and district court declined to reopen the trial record and may be read to mean that the abbreviation was to include new evidence of registration, court con- not protected). On appeal, Welding Technologies sidered protectability without reference to registra- argues that the abbreviation “WSI” is not protect- tion), cert. denied, 547 U.S. 1019, 126 S.Ct. 1570, able because it is generic. 164 L.Ed.2d 298 (2006).
[4][5] At the outset, we observe that at the time of FN3. Registration establishes a rebuttable the district court's decision, Welding Services had presumption that the marks are protectable not successfully registered either the abbreviation or “distinctive.” 15 U.S.C. § 1057(b). The WSI or the stylized logo. Its application to register sort of presumption appropriate depends “Welding Services Inc.” had been refused by the on whether or not the Patent and Trade- Patent and Trademark Office's examining attorney mark Office has required proof of second- on the ground that the proposed mark was merely ary meaning. See Borinquen Biscuit Corp. descriptive or generic as applied to the welding ser- v. M.V. Trading Corp., 443 F.3d 112, 117 vices identified. Its application to register “WSI” & n. 2 (1st Cir.2006) (If no proof of sec- was refused on the ground that the *1357 mark was ondary meaning is provided, presumption confusingly similar to a prior registered WSI mark is that mark is inherently distinctive; if used to sell highly related services. In its reply brief proof of secondary meaning is provided, before this court, Welding Services first advised us presumption is that mark has secondary that after the date of the district court's decision, the meaning.). abbreviation and logo had been accepted by the Patent and Trademark Office for registration. Fur- [6][7][8] Trademark or service mark protection is
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only available to “distinctive” marks, Two Pesos, Multistate Legal Studies, 692 F.2d 478, 487 (7th Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69, Cir.1982). Still other courts say a generic name de- 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992), that is, picts the product or service as a whole, rather than marks that serve the purpose of identifying the any particular feature, quality, or characteristic of source of the goods or services, see Colt Defense the whole. Blinded Veterans Ass'n v. Blinded Am. LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, Veterans Found., 872 F.2d 1035, 1039 705 (1st Cir.2007). Some marks are inherently dis- (D.C.Cir.1989) (citing Zatarains, Inc. v. Oak Grove tinctive; some marks, though not inherently dis- Smokehouse, Inc., 698 F.2d 786, 790 (5th tinctive, acquire distinctiveness by becoming asso- Cir.1983)). Genericness lies not in the term itself, ciated in the minds of the public with the products but in the use of the term: “A word may be generic or services offered by the proprietor of the mark; of some things and not of others: ‘ivory’ is generic and some marks can never become distinctive. Two of elephant tusks but arbitrary as applied to soap.” Pesos, 505 U.S. at 768-69, 112 S.Ct. 2753; Coach Soweco, 617 F.2d at 1183. House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1560 (11th Cir.1991). Distinctiveness is [11][12][13][14] A generic use of a word may not a question of fact, whether the question is inherent be registered as a trademark. Park 'N Fly, Inc. v. distinctiveness or acquired distinctiveness. Investa- Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 corp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d S.Ct. 658, 83 L.Ed.2d 582 (1985). A descriptive 1519, 1523 (11th Cir.1991); Coach House, 934 name, on the other hand, though not inherently dis- F.2d at 1560. tinctive, can acquire distinctiveness or “secondary meaning” by becoming associated with the propri- [9] Trademark law distinguishes four gradations of etor's product or service. Am. Television & Commu- distinctiveness of marks, in descending order of nications Corp. v. Am. Communications & Televi- strength: fanciful or arbitrary, suggestive, descript- sion, Inc., 810 F.2d 1546, 1548-49 (11th Cir.1987). ive, and generic. An arbitrary or fanciful mark A name has acquired secondary meaning when “the bears no logical relationship to the product or ser- primary significance of the term in the minds of the vice it is used to represent. Soweco, Inc. v. Shell Oil [consuming] public is not the product but the pro- Co., 617 F.2d 1178, 1184 (5th Cir.1980) (giving ex- ducer.” Id. at 1549 (quoting Vision Ctr. v. Opticks, ample of “Kodak”). A suggestive mark refers to Inc., 596 F.2d 111, 118 (5th Cir.1979) (quoting some characteristic of the goods, but requires a leap Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118, of the imagination to get from the mark to *1358 59 S.Ct. 109, 83 L.Ed. 73 (1938))). A proprietor the product. Id. (giving example of “Penguin” for can make a prima facie showing of “secondary refrigerators). A descriptive mark identifies a char- meaning” by showing that the name has been used acteristic or quality of the service or product. Id. at in connection with the proprietor's goods or service 1183-84 (giving example of “Vision Center” for continuously and substantially exclusively for five eyeglasses store). years. 15 U.S.C. § 1052(f). Whether a name has at- tained secondary meaning depends on the length [10] There are several different approaches to de- and nature of the name's use, the nature and extent fining “generic.” By one test, a generic name refers of advertising and promotion of the name, the ef- to “a particular genus or class of which an individu- forts of the proprietor to promote a conscious con- al article or service is but a member.” Soweco, 617 nection between the name and the business, and the F.2d at 1183 (internal quotation marks omitted). By degree of actual recognition by the public that the another measure, a generic name is the term by name designates the proprietor's product or service. which the product or service itself is commonly Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 known. See Nat'l Conference of Bar Exam'rs v. (11th Cir.1984).
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[15] Courts have generally held that a term used ing Technologies provide: “The parties' Marks are generically cannot be appropriated from the public used in connection with identical services- domain; therefore, even if the name becomes in non-nuclear welding services that compete directly some degree associated with the source, a generic with the other”; “Defendant Welding Technologies, mark cannot achieve true secondary meaning. See Inc. (‘WTI’) is an Illinois corporation that provides Soweco, 617 F.2d at 1185 n. 20 (secondary mean- welding services in direct competition with WSI” ing not relevant to generic mark); Vision Ctr. v. Op- (emphasis added). A would-be proprietor's use of ticks, Inc., 596 F.2d 111, 115 & n. 11 (5th the words in the mark to refer to the kind of ser- Cir.1979) (“Most courts hold that a generic term is vices it and its competitors provide is powerful incapable of achieving trade name protection”; evidence that the words in the putative mark are be- courts refuse to allow proof of secondary meaning ing used generically. See Retail Servs. Inc. v. Free- to elevate generic term to trademark status); see bies Publ'g, 364 F.3d 535, 545 (4th Cir.2004); 2 also Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d McCarthy, supra, at § 12.13. Here, Welding Ser- 971, 974 (8th Cir.2006); Zatarains, Inc. v. Oak vices has used “welding services” to denote both Grove Smokehouse, Inc., 698 F.2d 786, 790-91 (5th what it does and what Welding Technologies does Cir.1983); Nat'l Conference of Bar Exam'rs, 692 for customers; we can only conclude that its use of FN4 F.2d at 487; 2 J. Thomas McCarthy, McCarthy on these words is generic. Trademarks and Unfair Competition § 15:24 (4th ed.2007). But see *1359Am. Heritage Life Ins. Co. FN4. The mere inclusion of “Inc.” at the v. Heritage Life Ins. Co., 494 F.2d 3, 11 (5th end of the name does not make generic Cir.1974) (generic name will be protected if it ac- words protectable. In re Patent & Trade- quires secondary meaning). mark Servs. Inc., 49 U.S.P.Q.2d 1537, 1539 (Trademark Trial & App. Bd.1998); [16][17] The record indicates that when Welding 3 Louis Altman, Callmann on Unfair Com- Services applied to register the name “Welding Ser- petition § 18:4, at 18-67 (4th ed. 2003). vices Inc.,” registration was refused on the ground that the proposed mark was “generic as applied” [18] Although we conclude that the words “welding and that it was descriptive. As the Patent and services” are not protectable, this does not decide Trademark Office concluded upon reviewing the the precise question before us because Welding application, “Clearly the applicant is providing Services, Inc. does not seek protection for the welding services and [the] proposed mark is generic words themselves, but for the abbreviation “WSI” for the applicant's services.” In the service mark re- and the stylized logo using that abbreviation. The gistration application for “WSI” in the record be- protectability of the initials and of the stylized logo fore us, Welding Services itself describes the kind present different issues, so we will consider them in of services it offers as “[w]eld metal overlay ser- turn. vices and fabrications.” Similarly, in a page from [19] Abbreviations of generic words may become the Welding Services website attached as an exhibit protectable if the party claiming protection for such to the registration application, Welding Services an abbreviation shows that the abbreviation has a states: “Welding Services is the largest producer meaning distinct from the underlying words in the and supplier of weld metal overlay services and mind of the public. G. Heileman Brewing Co. v. fabrications in the world.” This statement assumes Anheuser-Busch, Inc., 873 F.2d 985, 993-94 (7th that the company is one of many suppliers of “weld Cir.1989) (“heavy burden” on trademark claimant ... services.” Even in its statement of material facts seeking to show an independent meaning for initials in the district court, Welding Services used the of descriptive words apart from the fact that they phrase to denote the services that both it and Weld- are abbreviations for the descriptive words); 2 Mc-
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Carthy, supra, § 12:37 (distinguishing between ab- vices' statement of material facts shows the logo breviations “which still convey[ ] to the buyer the with the initials on advertising material displayed original generic connotation of the abbreviated immediately next to the words “Welding Services name” and those which are “not recognizable as the Inc.” Thus, Welding Services' own motion papers original generic term”). But cf. Anheuser-Busch, indicate that the abbreviation is used in association Inc. v. Stroh Brewery Co., 750 F.2d 631, 635-36 with the generic words, rather than being used in a (8th Cir.1984) (abbreviation of generic words pro- way that would give rise to a meaning distinct from tectable if “some operation of the imagination is re- those words. Accordingly, we hold that Welding quired to connect the initials with the product”); Services had not shown “WSI” to be protectable. *1360Modern Optics, Inc. v. Univis Lens Co., 43 C.C.P.A. 970, 234 F.2d 504, 506 (C.C.P.A.1956) ( [21] As for the stylized logo, a logo consisting of a “[I]nitials cannot be considered descriptive unless nonprotectable literal element combined with a dis- they have become so generally understood as rep- play or geometric design may be distinctive enough resenting descriptive words as to be accepted as to receive protection. In re Trail-R-Van, Inc., 188 substantially synonymous therewith.”). U.S.P.Q. 590, 591 (Trademark Trial & App. Bd.1975); 3 Callman, supra, § 18:4, at Welding Services introduced the affidavit of its 18-62-18-63; 2 McCarthy, supra, § 12:40. The WSI marketing director, Michael Welch, stating that the stylized logo is not particularly distinctive, consist- company had used the abbreviation since 1990 and ing of the three letters in a circle. See Star Indus., the stylized logo for nine years before Welding Inc. v. Bacardi & Co., 412 F.3d 373, 383 (2d Technologies began using its marks. Welch said Cir.2005) (basic shapes not protectable, though Welding Services had spent $5 million advertising stylized version of shapes and letters may be). Nev- its marks over the course of fourteen years (from ertheless, we will not hold that summary judgment 1990 to 2004) and had generated more than $1 bil- against Welding Services would have been proper lion in revenues. Welch said that the WSI marks are on this question, since another ground-no likelihood recognized as a “highly significant indicator of of confusion-so obviously supports entry of sum- WSI's welding services.” On the basis of this evid- mary judgment against Welding Services on the ence, the district court declined to hold that Weld- claim for infringement of the stylized logo. ing Services' marks were not protectable.
[20] But Welch's affidavit does not address the IV. question of whether the company's investment in [22][23][24] Likelihood of confusion is assessed by advertising its marks served to give the abbrevi- examining seven factors: (1) distinctiveness of the ation “WSI” a meaning distinct from the words mark alleged to have been infringed; (2) similarity “Welding Services Inc.” While investment in ad- of the infringed and infringing marks; (3) similarity vertising is relevant to the question of secondary between the goods or services offered under the meaning generally, Investacorp, Inc. v. Arabian two marks; (4) similarity of the actual sales meth- Inv. Banking Corp., 931 F.2d 1519, 1525 (11th ods used by the two parties, such as their sales out- Cir.1991), the question of whether the abbreviation lets and customer base; (5) similarity of advertising has a discrete meaning in the minds of the public methods; (6) intent of the alleged infringer to mis- from the generic words for which it stands requires appropriate the proprietor's good will; and (7) exist- a different kind of evidence. The only evidence in ence and extent of actual confusion in the consum- the record relevant to this question shows Welding ing public. Conagra, Inc. v. Singleton, 743 F.2d Services has not created a separate meaning for the 1508, 1514 (11th Cir.1984); see also *1361Custom abbreviation. Crucially, exhibit B to Welding Ser- Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d
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641, 646-47, 2007 WL 4165634, at *3 (11th Cir. logo. Nov.21, 2007). The likelihood of confusion is a question of fact. Jellibeans, Inc. v. Skating Clubs, Finally, Welding Services contends that it has 716 F.2d 833, 840 n. 16 (11th Cir.1983). In this cir- shown actual confusion between the marks. Weld- cuit, we are required to consider each of the seven ing Services offered the deposition of Michael factors. Dippin' Dots, Inc. v. Frosty Bites Distrib., Welch, who said that at a trade show in 2005, he LLC, 369 F.3d 1197, 1207 (11th Cir.2004). had a number of customers come and ask about “who WTI was and whether they were affiliated [25][26] The stronger or more distinctive a trade- with WSI.” Terry Forman, of Welding Technolo- mark or service mark, the greater the likelihood of gies, reported that she had been asked whether confusion and the greater the scope of protection Welding Technologies was a “spin-off of WSI.” afforded it, and conversely, the weaker the mark, These incidents have no explicit connection to the the less protection it receives. See Amstar Corp. v. stylized logos. As the district court remarked, their Domino's Pizza, Inc., 615 F.2d 252, 259 (5th probative value is very low because of the uncer- Cir.1980). While we decline to decide whether the tainty about what might have prompted the inquir- logo was sufficiently distinctive to be protectable, ies. Welding Technologies' employees were we can say that at most the extent of stylization was formerly associated with Welding Services, so the marginal. The result is a weak mark, entitled to confusion could just as likely have arisen because very little protection (if any). Star Indus., Inc. v. of the personnel rather than the logo. Moreover, the Bacardi & Co., 412 F.3d 373, 383 (2d Cir.2005). nature of the business at issue here requires that the purchasers of the services must be sophisticated [27] Visual comparison of the two logos shows that consumers, since the services are technical and they are not similar. The WSI mark consists of styl- large-scale. Such purchasers are less likely to be ized letters in an ordinary circle. The WTI mark confused than casual purchasers of small items. See consists of plain block letters with an orange Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, “swoosh” design, meant to convey rotational move- 1185 (11th Cir.1985). ment, wrapping around the middle of the letters. The words “Welding Technologies, Inc” appear be- Welding Services has not come forward with suffi- low the letters. There is not the least possibility of cient proof of likelihood of confusion of the logos confusing the two stylized logos. Overwhelming to warrant a trial of the issue. visual dissimilarity can defeat an infringement claim, even where the other six factors all weigh in *** favor of the plaintiff. Dippin' Dots, 369 F.3d at 1208. We AFFIRM the judgment of the district court.
The next three factors weigh in favor of Welding C.A.11 (Ga.),2007. Services, since there is undisputed similarity of ser- Welding Services, Inc. v. Forman vices offered, sales methods, and advertising meth- 509 F.3d 1351, 85 U.S.P.Q.2d 1233, 21 Fla. L. ods. Weekly Fed. C 246
The record does not support Welding Services' con- END OF DOCUMENT tention that Welding Technologies intended to cause confusion in adopting its mark. The story of how the WTI logo was created by previous owners to harmonize with the mark of its sister company is undisputed and shows an innocent origin for the
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Effective: October 6, 2006
United States Code Annotated Currentness Title 15. Commerce and Trade Chapter 22. Trademarks (Refs & Annos) Subchapter I. The Principal Register § 1052. Trademarks registrable on principal register; concurrent registration
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be re- fused registration on the principal register on account of its nature unless it--
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of Title 19) enters into force with respect to the United States.
(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or mu- nicipality, or of any foreign nation, or any simulation thereof.
(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to de- ceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concur- rent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent re-
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gistrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registra- tions, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.
(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely de- scriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applic- ant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any mat- ter that, as a whole, is functional.
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applic- ant's goods in commerce. The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and con- tinuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.
A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under sec- tion 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.
CREDIT(S)
(July 5, 1946, c. 540, Title I, § 2, 60 Stat. 428; Oct. 9, 1962, Pub.L. 87-772, § 2, 76 Stat. 769; Jan. 2, 1975, Pub.L. 93-596, § 1, 88 Stat. 1949; Nov. 16, 1988, Pub.L. 100-667, Title I, § 104, 102 Stat. 3937; Dec. 8, 1993, Pub.L. 103-182, Title III, § 333(a), 107 Stat. 2114; Dec. 8, 1994, Pub.L. 103-465, Title V, § 522, 108 Stat. 4982; Oct. 30, 1998, Pub.L. 105-330, Title II, § 201(a)(2), (12), 112 Stat. 3069, 3070; Aug. 5, 1999, Pub.L. 106-43, § 2(a), 113 Stat. 218; Nov. 29, 1999, Pub.L. 106-113, Div. B, § 1000(a)(9) [Title IV, § 4732(b)(1)(B)], 113 Stat. 1536, 1501A-583; Oct. 6, 2006, Pub.L. 109-312, § 3(a), 120 Stat. 1732.)
HISTORICAL AND STATUTORY NOTES
Revision Notes and Legislative Reports
1946 Acts. Senate Report No. 1333, see 1946 U.S. Code Cong. Service, p. 1274.
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1962 Acts. Senate Report No. 2107, see 1962 U.S. Code Cong. and Adm. News, p. 2844.
1975 Acts. Senate Report No. 93-1399, see 1974 U.S. Code Cong. and Adm. News, p. 7113.
1988 Acts. Senate Report No. 100-515 and House Report No. 100-887(Parts I and II), see 1988 U.S. Code Cong. and Adm. News, p. 5577.
1993 Acts. House Report No. 103-361(Parts I-III), see 1993 U.S. Code Cong. and Adm. News, p. 2552.
1994 Acts. House Report No. 103-826(Parts I and II) and Statement of Administrative Action, see 1994 U.S. Code Cong. and Adm. News, p. 3773.
1999 Acts. Statement by President, see 1999 U.S. Code Cong. and Adm. News, p. 290.
2006 Acts. House Report No. 109-23, see 2006 U.S. Code Cong. and Adm. News, p. 1091.
References in Text
The date on which the WTO Agreement enters into force with respect to the United States, referred to in subsec. (a), is Jan. 1, 1995, see section 3511(b) of Title 19, Customs Duties.
Acts March 3, 1881, and February 20, 1905, referred to in subsec. (d), are Act Mar. 3, 1881, c. 138, 21 Stat. 502 and Act Feb. 20, 1905, c. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by Act July 5, 1946, c. 540, § 46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of this title.
Codifications
Amendment by Pub.L. 109-312, § 3(a), which directed the deletion of the last two sentences of subsec. (f) and the addition of two new sentences at the end of subsec. (f), was executed by striking the undesignated flush para- graph at the end of this section and inserting the new sentences as an undesignated flush paragraph at the end, as the probable intent of Congress. See 2006 Amendments note set out under this section.
Amendments
2006 Amendments. Pub.L. 109-312, § 3(a), in the undesignated flush paragraph at the end, struck out “A mark which when used would cause dilution under section 1125(c) of this title may be refused registration only pursu- ant to a proceeding brought under section 1063 of this title. A registration for a mark which when used would cause dilution under section 1125(c) of this title may be canceled pursuant to a proceeding brought under either
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section 1064 of this title or section 1092 of this title.” and inserted “A mark which would be likely to cause dilu- tion by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be can- celed pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.”. See Codifications note under this section.
1999 Amendments. Pub.L. 106-113 [§ 4732(b)(1)(B)], struck out “Commissioner” and inserted “Director” throughout the section.
Pub.L. 106-43, § 2(a), added the flush paragraph at the end.
1998 Amendments. Pub.L. 105-330, § 201(a)(12), substituted “trademark” for “trade-mark” in the provisions preceding subsec. (a).
Subsec. (e)(3). Pub.L. 105-330, § 201(a)(2), struck “or” following “them”.
Subsec. (e)(5). Pub.L. 105-330, § 201(a)(2), added par. (5).
Subsec. (f). Pub.L. 105-330, § 201(a)(2), struck “paragraphs (a), (b), (c), (d), and (e)(3)” and inserted “subsections (a), (b), (c), (d), (e)(3), and (e)(5)”.
1994 Amendments. Subsec. (a). Pub.L. 103-465, § 522, inserted provision relating to a geographical indication used in connection with wines or spirits which identifies a place other than the origin of the goods and is first used on or after one year after the date on which the WTO Agreement enters into force with respect to the United States.
1993 Amendments. Subsec. (e). Pub.L. 103-182, § 333(a)(1), amended subsec. (e) generally. Prior to amend- ment, subsec. (e) read as follows: “Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connec- tion with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, or (3) is primar- ily merely a surname.”
Subsec. (f). Pub.L. 103-182, § 333(a)(2), inserted “, and (e)(3)” following “(a), (b), (c), (d)”, and inserted at end “Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became dis- tinctive of the applicant's goods in commerce before December 8, 1993.”
1988 Amendments. Subsec. (d). Pub.L. 100-667, § 104(1), amended subsec. (d) generally. Prior to amendment,
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subsec. (d) read as follows: “Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not aban- doned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limita- tions as to the mode or place of use of the marks or the goods in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; or (ii) July 5, 1947, in the case of registrations previ- ously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (iii) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and re- gistered after July 5, 1947. Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe conditions and limita- tions as to the mode or place of use of the mark or the goods in connection with which such mark is registered to the respective persons.”
Subsec. (e). Pub.L. 100-667, § 104(2), substituted “used on or in connection with” for “applied to” in two in- stances.
Subsec. (f). Pub.L. 100-667, § 104(3), substituted “used on or in connection with” for “applied to”, and “five years before the date on which the claim of distinctiveness is made.” for “five years next preceding the date of the filing of the application for its registration.”.
1975 Amendments. Subsec. (d). Pub.L. 93-596 substituted “Patent and Trademark Office” for “Patent Office”.
1962 Amendments. Subsec. (d). Pub.L. 87-772, among other changes, substituted provisions authorizing the is- suance of concurrent registrations to persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to the earliest of the filing dates of the applications pending or of any registration issued under this chapter, or July 5, 1947, in the case of registrations previously issued under the Act of Mar. 3, 1881, or Feb. 20, 1905, and continuing in full force and effect on that date, or July 5, 1947, in the case of applications under the Act of Feb. 20, 1905, and registered after July 5, 1947, for provisions which re- stricted issuance of concurrent registrations to persons entitled to use such mark as a result of their concurrent lawful use thereof in commerce prior to any of the filing dates of the applications involved, and provisions dir- ecting that issuance of the mark be upon such conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, for provisions which required issuance under conditions and limitations as to the mode or place of use of the goods in connection with which such registra- tions may be granted, and eliminated provisions which limited confusion, mistake, or deception to purchasers, required written notice of applications for concurrent registrations and of hearings thereon, and publication in the Official Gazette upon a decision to grant such a registration and permitted a court to order such a registration under § 4915 of the Revised Statutes.
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Effective and Applicability Provisions
1999 Acts. Amendment by Pub.L. 106-113 [§ 4732(b)(1)(B)], effective 4 months after the date of enactment of this Act [Nov. 29, 1999, which is the date of enactment of Pub.L. 106-113, 113 Stat. 1501, which in Div. B, § 1000(a)(9), enacted into law this Act as an Appendix], see Pub.L. 106-113 [§ 4731], set out as a note under sec- tion 1 of Title 35.
Pub.L. 106-43, § 2(e), Aug. 5, 1999, 113 Stat. 218, provided that: “The amendments made by this section [amending this section and sections 1063, 1064, and 1092 of this title] shall take effect on the date of enactment of this Act [Aug. 5, 1999] and shall apply only to any application for registration filed on or after January 16, 1996.”
1998 Acts. Amendments by Pub.L. 105-330, § 201(a), effective Oct. 30, 1998, and applicable only to any civil action filed or proceeding before the United States Patent and Trademark Office commenced on or after such date relating to the registration of a mark, see section 201(b) of Pub.L. 105-330 set out as a note under section 1051 of this title.
1994 Acts. Section 523 of Pub.L. 103-465 provided that: “The amendments made by this subtitle [subtitle B (§§ 521-523 of title V of Pub.L. 103-465, amending this section and section 1127 of this title] take effect one year after the date on which the WTO Agreement enters into force with respect to the United States [Jan. 1, 1995].”
1993 Acts. Section 335 of title III of Pub.L. 103-182 provided that:
“(a) In general.--Subject to subsections (b) and (c), the amendments made by this subtitle [subtitle C (§§ 331-335) of title III of Pub.L. 103-182, enacting section 104A of Title 17, Copyrights, amending this section, section 1091 of this title and section 104 of Title 35, Patents, and amending provisions set out as a note under section 109 of Title 17] take effect on the date the Agreement [North American Free Trade Agreement] enters into force with respect to the United States [Jan. 1, 1994].
“(b) Section 331.--The amendments made by section 331 [amending section 104 of Title 35] shall apply to all patent applications that are filed on or after the date of the enactment of this Act [Dec. 8, 1993]: Provided, That an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a NAFTA country, except as provided in sections 119 and 365 of title 35, United States Code, that is earlier than the date of the enactment of this Act.
“(c) Section 333.--The amendments made by section 333 [amending this section and section 1091 of this title] shall apply only to trademark applications filed on or after the date of the enactment of this Act.”
1988 Acts. Amendment by Pub.L. 100-667 effective on the date which is one year after Nov. 16, 1988, see sec- tion 136 of Pub.L. 100-667, set out as a note under section 1051 of this title.
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1975 Acts. Amendment by Pub.L. 93-596 effective Jan. 2, 1975, see § 4 of Pub.L. 93-596, set out as a note un- der § 1111 of this title.
Transfer of Functions
For transfer of functions of other officers, employees, and agencies of Department of Commerce to Secretary of Commerce, with certain exceptions, see 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees.
Prior Provisions
Acts Feb. 20, 1905, c. 592, § 5, 33 Stat. 725; Mar. 2, 1907, c. 2573, § 1, 34 Stat. 1251; Feb. 18, 1911, c. 113, 36 Stat. 918; Jan. 8, 1913, c. 7, 37 Stat. 649; Mar. 19, 1920, c. 104, § 9, 41 Stat. 535; June 7, 1924, c. 341, 43 Stat. 647.
Uruguay Round Agreements: Entry Into Force
The Uruguay Round Agreements, including the World Trade Organization Agreement and agreements annexed to that Agreement, as referred to in 19 U.S.C.A. § 3511(d), entered into force with respect to the United States on Jan. 1, 1995. See note set out under 19 U.S.C.A. § 3511.
Definitions
For definition of “WTO Agreement” and “WTO member country”, see section 501 of Pub.L. 103-465, set out as a note under section 101 of Title 17, Copyrights.
Marks Registered Under Ten Year Proviso of Trademark Act of 1905
Marks registered under the “ten-year proviso” of § 5 of the Act of Feb. 20, 1905, as amended, deemed to have become distinctive of the registrant's goods in commerce under par. (f) of this section, see § 46(b) of Act July 5, 1946, set out as a note under § 1051 of this title.
Repeal and Effect on Existing Rights
Repeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, and saving clause, see notes under § 1051 of this title.
CROSS REFERENCES
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