MARC
P. OSSINSKY ATTORNEY AT LAW REPORTED CASES
Case 4
828 F.Supp. 925
(Cite as: 828 F.Supp. 925)
ICE COLD AUTO AIR OF CLEARWATER, INC., et al. Plaintiffs,
v.
COLD AIR & ACCESSORIES, INC., et al. Defendants.
No. 93-149-CIV-ORL-22.
United States District Court, M.D. Florida, Orlando Division.
.June 7, 1993. [FN*]
FN* On July 6, 1993, Plaintiffs filed a Notice of Voluntary Dismissal.
*929 Terry C. Young, Lowndes, Drosdick, Doster, Kantor & Reed, P.A., Orlando, FL, for plaintiffs. Marc P. Ossinsky, Marc P. Ossinsky, P.A., Winter Park, FL, for defendants.
ORDER |
|
CONWAY, District
Judge.
I. INTRODUCTION
On October 10, 1983, Plaintiff Ice Cold Auto Air of Clearwater,
Inc. and Plaintiff Ice Cold Auto Air, Inc. registered
the following mark in the State of Florida:
ICE COLD AUTO AIR
The words "Ice Cold Auto Air" are flanked by a drawing of a penguin on the
right and an igloo on the left. The mark was registered as both a trademark
and a servicemark, and the registration specified that the mark was "to be
used in connection with the installation and after market repair of automotive
air conditioning systems." On February 26, 1991, Plaintiff Ice Cold Auto
Air of Clearwater, Inc. registered with the United States Patent and Trademark
Office two different servicemarks. Plaintiff's first registration, for "ICE
COLD AIR," provides that "[n]o claim is made to the exclusive right to use
'air', apart from the mark as shown." This first registration reflects that
the servicemark "ICE COLD AIR" was first used January 31, 1990. Plaintiff's
second registration for "ICE COLD AUTO AIR," provides that "[n]o claim is made
to the exclusive right to use 'auto air', apart from the mark as shown." The
second registration reflects that the servicemark "ICE COLD AUTO AIR" was first
used March 31, 1979. Both registrations provide:
FOR: INSTALLATION
AND REPAIR OF AUTOMOBILE AIR CONDITIONING SYSTEMS AND
PERFORMING OTHER GENERAL AUTO AIR REPAIRS.
According to the
Complaint, Plaintiff Ice Cold Auto Air of Clearwater,
Inc. gave Plaintiff Ice Cold Auto Air, Inc. an exclusive
license to use the second federally registered servicemark, "Ice
Cold Auto Air." Plaintiff Ice Cold Auto Air, Inc.,
in turn, granted sublicenses to use the "Ice Cold Auto
Air" mark to each of the other Plaintiffs in this action,
[FN1] including Plaintiff Oakridge Auto Air, Inc.,
Plaintiff Ice Cold Auto Air of Daytona, Inc., Plaintiff
CASC, Inc., Plaintiff Colonial Auto Air, Inc. [FN2]
and Plaintiff Florida Auto Air, Inc. Each of Plaintiffs
does business as Ice Cold Auto Air, [FN3] and Plaintiffs
hereinafter collectively shall be referred to as "ICAA." According
to the Complaint, ICAA owns and operates stores involving
goods and services connected with the installation
and repair of automotive air conditioning services.
Although ICAA operates stores in Clearwater, Orlando,
Daytona Beach and Fern Park, the issues in this case
involve primarily stores located in the Orlando area.
FN1. Plaintiff Ice Cold Auto Air, Inc. also granted
a sublicense to use the "Ice
Cold Auto Air" mark to J.J. Auto Air, Inc., a corporation which is not a plaintiff
in this action. However, the Complaint asserts that Plaintiff Ice Cold Auto
Air, Inc. is obligated to defend the "Ice Cold Auto Air" mark on behalf of
additional authorized licensees. J.J. Auto Air, Inc. does business as Ice Cold
Auto Air at 900 North Orlando Avenue in Winter Park, Florida.
FN2. Affidavits filed by Plaintiffs in connection with the preliminary injunction
hearing state that Colonial Auto Air, Inc. is being dissolved. The corporation
that should have been listed in its place is J.C. Auto Orlando, Inc. See Dkt.
55 and Dkt. 57. This proposed change in party does not affect the Court's analysis.
FN3. Additionally, Plaintiff CASC, Inc. does business as Muffler City.
Defendant Lawrence A. Powalisz was formerly the general manager and shareholder
of two of the Plaintiffs in this case. [FN4] According *930 to the Complaint,
Mr. Powalisz and the two Plaintiff corporations ended their relationship in
early February 1992, and then Mr. Powalisz formed Defendant Cold Air & Accessories,
Inc. less than two months later. Also named as Defendants are Fioravanti Enterprises,
Inc. and C & L Auto Air, Inc., both of which do business as Cold Air & Accessories.
[FN5]
FN4. This statement is based on paragraph 29 of the Complaint and Mr. Powalisz's
affidavit. However, ICAA's Memorandum in Support of Temporary Injunctive Relief
filed in the state court represents that Mr. Powalisz first worked for the
Winter Park Auto Air location from April 1, 1987 through January 16, 1990.
The memorandum does not suggest that Mr. Powalisz was a shareholder at that
time. After the Winter Park store was sold, Mr. Powalisz went to the Oakridge
Auto Air location where he was both a general manager and a shareholder. Whatever
the details of Mr. Powalisz's contact with ICAA may be, it is clear that his
contact was substantial.
FN5. In addition, C & L does business as Muffler Man.
On February 2, 1993, ICAA filed a Complaint in state court setting forth the
following claims:
Count I: federal
trademark infringement under 15 U.S.C. s 1114(1)
Count II: use of false designation of origins, false descriptions and false
representations (i.e., trade dress infringement) under 15 U.S.C. s 1125(a)
Count III: common law unfair competition
Count IV: common law palming off
Count V: state trademark dilution under Florida Statutes s 495.151
Count VI: violation of a non-compete agreement under Florida Statutes s 542.33
Count VII: violation of the Uniform Trade Secrets Act under Florida Statutes
s 688.001.
ICAA also sought
temporary injunctive relief. After a two-hour hearing
on the temporary injunctive relief requested by ICAA
on February 9, 1993, the state court scheduled a second
hearing for March 9, 1993. On February 26, 1993, Defendant
removed this case to federal court. The Court held
a hearing on ICAA's motion for preliminary injunction
on April 12, 1993.
II. PRELIMINARY INJUNCTION STANDARD
A movant for a
temporary restraining order or preliminary injunction
must show:
(1) a substantial likelihood that he will eventually prevail on the merits;
(2) that he will suffer irreparable injury unless the injunction issues; (3)
that the threatened injury to the movant outweighs whatever damage the proposed
injunction may cause the opposing party; and (4) that the injunction, if issued,
would not be adverse to the public interest.Zardui-Quintana v. Richard, 768
F.2d 1213, 1216 (11th Cir.1985) (citation omitted).
III. FEDERAL LAW:
INFRINGEMENT OF A MARK
The key issue
in determining whether a preliminary injunction should
issue on the infringement claim [FN6] is whether a
plaintiff
is likely to prevail on the merits.
FN6. In addressing the infringement claim, the Court will rely on cases involving
trademarks and servicemarks without noting the difference in the type of mark
being considered, unless the distinction has a bearing on the Court's analysis.
The analysis required in trademark and servicemark infringement is similar
to the analysis of unfair competition pursuant to 15 U.S.C. s 1125(a) for trade
dress or trade name infringement. Therefore, the Court will also refer to cases
addressing trade name and trade dress infringement.
a. Threshold Inquiry
[1] The first
issue the Court must address is whether the mark is
distinctive enough to deserve protection under the
Trademark Act of 1946 (commonly known as the Lanham
Act), 15 U.S.C. s 1051 et seq., specifically s 32(1)
of the Lanham Act, 15 U.S.C. s 1114(1). Freedom Sav.
and Loan Ass'n v. Way, 757 F.2d 1176 n. 1 (11th Cir.1985),
cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d
110 (1985). See also, Discount Muffler Shop, Inc. v.
Meineke Realty Corp., 535 F.Supp. 439, 444 (N.D.Ohio,
1982) (citing Vision Center v. Opticks, Inc., 596 F.2d
111 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100
S.Ct. 668, 62 L.Ed.2d 646 (1980)). There are four
categories of distinctiveness in which a mark may be classified:
*931 In ascending
order they are: (1) generic; (2) descriptive; (3) suggestive;
and (4) arbitrary or fanciful. The demarcation between
each category is more blurred than it is definite.
A term which suggests the basic nature of the service
is generic. The term "Milk Delivery" is an example
of a generic service mark for a hypothetical milk delivery
service. A generic term is typically incapable of achieving
service mark protection because it has no distinctiveness.
A descriptive term merely identifies a characteristic
or quality of a service. An example of a descriptive
service mark might be 'BarnMilk.' Because a descriptive
service mark is not inherently distinctive, it may
be protected only if it acquires a secondary meaning.
The personal name component of a service mark such
as 'Barney's' to denote a milk delivery service is
also considered not inherently distinctive and hence
merely descriptive. However, if the personal name mark
acquires secondary meaning, it is afforded the strength
of an inherently distinctive mark. Marks which are
descriptive of geographic location of the source of
the service are treated in the same manner as personal
name marks. A suggestive term suggests the characteristics
of the service and requires an effort of the imagination
by the consumer in order to be understood as descriptive
of the service. 'Barn-Barn' is an example of a suggestive
term. Because a suggestive service mark is inherently
distinctive, no proof of secondary meaning is required
for it to be protectable. 'An arbitrary or fanciful
[term] bears no relationship to the service.' Arbitrary
and fanciful terms are also inherently distinctive,
so they are protectable without proof of secondary
meaning. 'Barnbarnfish' is an example of an arbitrary
or fanciful service mark.
Investacorp, Inc.
v. Arabian Investment Banking Corp., 931 F.2d 1519,
1522-23 (11th Cir.1991) (footnotes omitted), cert.
denied, 502 U.S. 1005, 112 S.Ct. 639, 116 L.Ed.2d 657
(1991).
[2][3][4][5][6]
As the Eleventh Circuit made clear in Investacorp,
the categorization of a term as generic, suggestive
or arbitrary typically resolves the issue of whether
a mark is protectable. By contrast, the categorization
of a mark as descriptive is just the first step in
a two-stage inquiry. A term that is descriptive may
still be protectable if it has acquired secondary meaning.
Secondary meaning is the connection in the consumer's
mind between the mark and the provider of the product
or service. Investacorp, 931 F.2d at 1525. "A high
degree of proof is necessary to establish secondary
meaning for a descriptive term which suggests the basic
nature of the product or service." Am. Television and
Communications Corp. v. Am. Communications and Television,
Inc., 810 F.2d 1546, 1549 (11th Cir.1987) (conducting
the threshold inquiry in a case alleging unfair competition
through infringement of a trade name). A plaintiff
may meet its burden by consumer survey evidence. Investacorp.,
931 F.2d at 1525. Absent survey evidence, the factors
to consider in whether a mark has acquired secondary
meaning are: (1) the length and manner of its use;
(2) the nature and extent of advertising and promotion;
(3) the efforts made by a plaintiff to promote a conscious
connection in the public's mind between the mark and
the plaintiff's product or service. See Conagra, Inc.
v. Singleton, 743 F.2d 1508, 1513 (11th Cir.1984) (addressing
trade name infringement).
[7][8][9] The
threshold inquiry into the proper categorization of
the mark permits the Court to withhold trademark protection
for generic terms in order to avoid the creation of
a monopoly in favor of the first provider of goods
or services. CES Publishing Corp. v. St. Regis Publications,
Inc., 531 F.2d 11, 13 (2d Cir.1975). If the Court were
to extend protection to a generic term, a competitor
could not describe his goods or services as what they
are. Id. Additionally, no word or phrase that is descriptive
of a particular business or the services performed
in connection with a business may be exclusively appropriated
by one firm, unless the descriptive phrase has acquired
secondary meaning. See Car Care, Inc. v. D.H. Holmes
Co., 160 So.2d 272 (La.Ct.App.1964) (addressing trade
name infringement). Therefore, generic terms and terms
that are merely descriptive are not protectable. The
significance of the assignment of a mark to one of
*932 the four categories "cannot be over-emphasized
since, ... once a determination has been made, it may
bring a party's case to a halt, precluding the presentation
of other evidence." [FN7] Union Nat'l Bank of Texas,
Laredo v. Union Nat'l Bank of Texas, Austin, 909 F.2d
839, 842 n. 6 (5th Cir.1990) (emphasis in original).
FN7. The Fifth
Circuit went on to note:
We do not think that the trademark law is so clear that the interests it is
meant to protect will be served in most cases without a thorough presentation
of the evidence on all of the issues. Therefore, it will be the exceptional
case which may be disposed of on these grounds. Since, as we observed above,
the likelihood of confusion is the essential concern in trademark law, no purpose
is served, unless the mark is found to be generic, by eliminating a case on
this ground if in fact consumers are likely to be confused.Union Nat'l Bank,
909 F.2d at 842 n. 6. The Fifth Circuit's concerns seem particularly meritorious
in the early stages of litigation.
The categorization
of a mark is far from a precise science. Courts typically
analyze a number of factors before reaching a conclusion.
[10] One factor
to be considered is whether the mark has been registered
with the United States Patent and Trademark Office. "Generic
terms may never be registered as trademarks under the
Lanham Act. 15 U.S.C. s 1052(e). Descriptive terms
may not be registered as trademarks under the Lanham
Act, unless the holder shows that the mark has acquired
'secondary meaning.' 15 U.S.C. s 1052(e)(1), (f)...." Dieter
v. B & H Industries of Southwest Florida, Inc.,
880 F.2d 322, 328 (11th Cir.1989), cert. denied, 498
U.S. 950, 111 S.Ct. 369, 112 L.Ed.2d 332 (1990). The
Lanham Act provides:
A certificate
of registration of a mark upon the principal register
provided by this chapter shall be prima facie evidence
of the validity of the registered mark and of the registration
of the mark, of the registrant's ownership of the mark,
and of the registrant's exclusive right to use the
registered mark in commerce on or in connection with
the goods or services specified in the certificate
subject to any conditions or limitations stated in
the certificate.
15 U.S.C. s 1057(b).
Registration of the mark therefore provides the plaintiff
with a presumption that the mark is "not merelydescriptive
or generic, or, if merely descriptive, is accorded
secondary meaning. This presumption may, of course,
be overcome by proof of descriptiveness, or by proof
of genericness." [FN8] Liquid Controls Corp. v. Liquid
Control Corp., 802 F.2d 934, 935 (7th Cir.1986) (citations
omitted). The Eleventh Circuit has noted that the rebuttable
presumption created by Section
1057(b) does not affect the ultimate burden of proof to be carried by the plaintiff.
Freedom Sav. and Loan Ass'n, 757 F.2d at 1182 n. 4.
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FN8. In Liquid
Controls, the court noted that plaintiff could not
rely fully on its registration to establish the existence
of a protectable interest. Rather, the presumption "bursts" once
the defendant presents sufficient evidence. 802 F.2d
at 937 n. 2.
As the Eleventh
Circuit observed in Dieter, additional protections
are available to a plaintiff five years after the mark
is
registered.
Five years after
registering a mark, the holder may file the affidavit
required by s 1065 and have its mark declared 'incontestable.'
15 U.S.C. s 1065(3). Once a mark has become 'incontestable,'
its validity is presumed, subject to certain enumerated
defenses which are not applicable in this action. 15
U.S.C. s 1065. Once a mark has achieved 'incontestable'
status, its validity cannot be challenged on the grounds
that it is merely descriptive, even if the challenger
can show that the mark was improperly registered initially.
Dieter, 880 F.2d
at 328 (footnote omitted). However, the mark may still
be challenged on the basis that it is generic. 15 U.S.C.
s 1065(4).
Therefore, if
a mark has been registered for five years or less,
the plaintiff is entitled to a rebuttable presumption
that its mark is at least descriptive with secondary
meaning. If the defendant provides evidence that the
mark is generic or merely descriptive, the plaintiff
must go beyond evidence of registration to establish
the existence of a protectable interest. Once five
years have passed *933 and the mark has achieved incontestable
status, the mark is conclusively presumed to be at
least descriptive with secondary meaning. The defendant
may defeat the presumption only by proof of genericness.
See generally, 1 J. McCarthy, McCarthy on Trademarks
and Unfair Competition s 11.16 (3d ed. 1992).
[11] In an attempt
to determine whether a mark is descriptive or suggestive,
the Eleventh Circuit has used a variety of "tests." A
dictionary definition may be used as " 'an appropriate
and relevant indication' of the ordinary significance
and meaning of words 'to the public.' " Vision Center,
596 F.2d at 116 n. 13 (quoting American Heritage Life
Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 11
(5th Cir.1974)). See also Investacorp, 931 F.2d at
1523 (plain dictionary definition is probative of the
descriptiveness of a mark). But see Union Nat'l Bank,
909 F.2d at 841 (noting that dictionary definitions
are relevant but not dispositive and referring to certain
deficiencies in dictionary definitions). Another test
used to distinguish between descriptive and suggestive
marks is whether competitors in the same industry would
be likely to need the mark to describe their products
or services. Vision Center, 596 F.2d at 116.
[12] Once again
focusing on competitors, courts have also considered
the extent to which a mark is used by third parties
in the same industry. [FN9] Investacorp, 931 F.2d at
1523; Union Nat'l Bank, 909 F.2d at 848; Vision Center,
596 F.2d at 116. In considering third party usage,
a court may consider the likelihood of prospective
use by competitors. Investacorp, 931 F.2d at 1523.
If the court has determined that the term or terms
at issue are indispensable to the industry, it is likely
that competitors will need to use the term or terms.
Id. Additionally, a court may consider the popularity
of actual use. Id. But see Union Nat'l Bank, 909 F.2d
at 848 n. 25 (suggesting that a plaintiff should be
able to protect the precise arrangement of the components
of the mark, even if one component is popular within
the industry).
FN9. The inquiry
into third party usage at this stage of the analysis
is limited to use within the same industry. Once the
plaintiff has established the existence of a protectable
interest, the Court must consider the likelihood of
confusion with the allegedly infringing product or
service. In that analysis, the court may consider all
third party use, not just use in the same industry,
to determine whether a mark is weak or strong. See
Union Nat'l Bank, 909 F.2d at 848 n. 24.
[13] When analyzing the component parts of a mark in
isolation, there is some risk that the "distinctiveness of the words in combination will be overlooked." Vision
Center, 596 F.2d at 116. "[C]ommon or ordinary words can be combined in a novel
or unique way and thereby achieve a degree of protection denied to the words
when used separately." Id. Accord Liquid Controls, 802 F.2d at 938.
[14] In determining
whether a term is generic or descriptive, arguably
a court may use the same tests set forth in the cases
distinguishing between suggestive and descriptive marks.
The process of categorization continues to be far from
precise. As one court has observed:
The distinction
between generic and descriptive marks is a matter of
degree. '[A] generic term conveys information with
respect to the nature or class of an article, whereas
a descriptive term identifies the characteristics and
qualities of the article, its color, odor, functions,
dimensions or ingredients.' [3 Callman, Unfair Competition
Trademarks and Monopolies (3d ed.) ] s 70.4 'In a sense,
a generic designation is the ultimate in descriptiveness.'
1 McCarthy, Trademarks and Unfair Competition, s 12.5.
Imported Auto Parts Corp. v. R.B. Shaller & Sons,
Inc., 258 N.W.2d 797, 800 (Minn.1977) (addressing trade
name infringement).
[15] Since ICAA
has registered its marks, it is entitled to a rebuttable
presumption that its marks are at least descriptive
with secondary meaning. ICAA goes further and argues
that its marks are arbitrary. ICAA's argument is that
it requires imagination for the consumer to realize
that the air produced upon installation or repair of
automobile air conditioning is not really the same
temperature that is required to freeze water. Rather,
the air produced is comfortably cool. *934 Relying
simply upon the ordinary usage of the terms at issue,
the Court rejects ICAA's argument. The Court is persuaded
that consumers who are offered ice cold beverages expect
a refreshingly cool drink, not one which is frozen
solid. Similarly, most people understand immediately
that a person whose hands are "ice cold" does not have
frozen hands. Although the Court rejects ICAA's argument
that the marks are suggestive, ICAA is still entitled
to a presumption that the marks are descriptive with
secondary meaning.
Defendants have
attempted to defeat ICAA's presumption by providing
evidence that the marks are generic or merely descriptive.
The Court finds that the following terms are some of
the generic terms that describe the basic nature of
the principal service offered by the parties: air conditioning
service, air conditioning installation, air conditioning
repair, auto air conditioning service, auto air conditioning
installation and auto air conditioning repair. The
terms "cold air" and "ice cold air" describe a characteristic
of the service of the parties. Therefore, the Court
rejects the Defendants' argument that ICAA's marks
are generic.
The question that
remains is whether ICAA's mark is descriptive with
secondary meaning or merely descriptive. To establish
that the mark is merely descriptive, Defendants have
produced several pages of advertisements from the yellow
pages. The advertisements appear to offer the same
generic service as ICAA. The words "auto air" and "cold
auto air" appear to be common to the industry.
However, in this
case, the Court is concerned that analyzing the component
parts of ICAA's marks may cause the Court to overlook
the distinctiveness of the words in combination. The
Court finds that "Ice Cold Auto Air" and "Ice Cold
Air" are more distinctive in combination than are the
component parts of the marks. Therefore, the Court
is primarily interested in those third party uses within
the same industry that strongly suggest, not that the
component terms are common to the industry, but that
the combined terms of ICAA's marks are common to the
industry. Some of the businesses with advertisements
in the yellow pages provided by Defendants either are
third parties using "Ice Cold Auto Air" independently
of ICAA or are sublicensees of Plaintiff Ice Cold Auto
Air, Inc. Since it is not clear which is the case,
the Court cannot determine how much weight to give
Defendants' evidence of third party usage.
ICAA has provided
the Court with some evidence of secondary meaning,
including use of the marks for a number of years at
various locations and at least $2,000,000 spent on
advertising. ICAA has also provided some anecdotal
evidence that consumers consciously connect the marks
with its business. Although the parties may, over time,
refine and expand their evidence on these issues, at
this point it appears to the Court that ICAA is likely
to be able to establish at trial that its marks are
descriptive with secondary meaning.
There is one additional
threshold issue raised by Defendants. The Fifth Circuit
has noted that "two marks must bear some threshold
resemblance in order to trigger inquiry into extrinsic
factors, but this threshold is considerably lower than
the degree of similarity required where the plaintiff
presents little or no evidence on extrinsic factors
supporting infringement." Sun- Fun Products, Inc. v.
Suntan Research & Development, Inc., 656 F.2d 186,
189 (5th Cir.1981). As the analysis set forth below
will demonstrate, the threshold level of similarity
required to trigger inquiry into the other factors
was satisfied here.
b. Likelihood
of Confusion
[16][17] Once
the threshold question of whether the mark is distinctive
enough to deserve protection is answered affirmatively,
the court must turn to the central inquiry in an infringement
case. Specifically, the court must determine "whether
there is a 'likelihood of confusion' between the names
and symbols used by the two parties." Freedom Sav.
and Loan Ass'n, 757 F.2d at 1179. In the Eleventh Circuit
there are primarily seven factors to consider in deciding
whether *935 there is a likelihood of confusion. [FN10]
The factors include: 1) the type of mark at issue;
2) similarity of mark; 3) similarity of products or
services; 4) identity of purchasers and similarity
of retail outlets; 5) similarity of advertising campaigns;
6) the defendant's intent; and 7) actual confusion.
Id. at 1182-83. Rather than simply determining whether
a majority of these factors indicate a likelihood of
confusion, a court must "evaluate the weight to be
accorded the individual factors and then make its ultimate
decision." AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531,
1538 (11th Cir.1986) (analyzing the factors in the
context of a trade dress infringement claim). In its
ruling on the likelihood of confusion, a court is not
required to specifically mention each of the seven
factors in order to avoid reversal on appeal. Univ.
of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535,
1542 (11th Cir.1985) (analyzing the factors in the
context of a claim of unfair competition). An analysis
of fewer than all seven factors may support a finding
of likelihood of confusion. Id. at 1543. In the Eleventh
Circuit, the type of mark and evidence of actual confusion
are the most important factors. Dieter, 880 F.2d at
326.
FN10. In some
cases, courts may find other factors to be relevant.
The Fifth Circuit has considered the degree of care
purchasers are likely to exercise when selecting products
of the type sold by the parties. Sun- Fun Products,
Inc. v. Suntan Research & Development, Inc., 656
F.2d 186, 189 (5th Cir.1981). Another factor may be
the previous contractual or business relations between
the parties. Id. However, in most instances, previous
contractual or business relationships will be considered
as a subcategory of "defendant's intent." Falcon Rice
Mill, Inc. v. Community Rice Mill, Inc., 725 F.2d 336,
345 n. 9 (5th Cir.1984) (addressing trade dress infringement).
Compare Chassis Master Corp. v. Borrego, 610 F.Supp.
473, 478 (S.D.Fla.1985) (addressing the previous relationship
between the parties as a subcategory of intent and
finding that such a prior relationship imposes a greater
duty to adopt a clearly distinguishable mark) with
Varitronics Systems, Inc. v. Merlin Equipment, Inc.,
682 F.Supp. 1203, 1206 (S.D.Fla.1988) (listing contractual
relations as an entirely separate factor). Finally, "in
a case between noncompetitors, it is appropriate to
consider the lack of present competition as well as
the likelihood that one party will expand its product
line to compete with the other." Falcon Rice Mill,
Inc., 725 F.2d at 345 n. 9.
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1. Type of Mark
[18] In analyzing
the type of mark, a court must determine whether the
mark is strong or weak in order to determine the level
of protection to be extended to the mark. In Freedom
Savings and Loan Association, the Eleventh Circuit
explained:
The more distinctive
a plaintiff's servicemark, the greater the likelihood
that consumers will associate the registered trademark
and all similar marks with the registered owner. The
law therefore provides the greatest protection to strong
and distinctive servicemarks; the strength of a mark
depends on the extent of third party usage and the
relationship between the name and the service or good
it describes.
757 F.2d at 1182.
Extensive use by third parties [FN11] suggests that
there would be no likelihood of confusion between the
plaintiff and the alleged infringer. Sun Banks of Florida,
Inc. v. Sun Federal Sav. and Loan Ass'n., 651 F.2d
311, 316 (5th Cir.1981). In analyzing the relationship
between the name and the service or good it describes,
the Court again considers the proper categorization
of the mark. [FN12] Suggestive and arbitrary marks
are considered to be the most distinctive marks, and,
as relatively strong marks, entitled to the strongest
protection. Descriptive marks are much weaker, but
may still be entitled to some protection. Chassis Master
Corp., 610 F.Supp. at 476. A registered mark which
has achieved incontestable status is presumed to be "at
least descriptive with secondary meaning, and therefore
a relatively strong mark." Dieter, 880 F.2d at 329.
FN11. More recently
the Fifth Circuit has commented that at this stage
in the inquiry, the court should properly consider
all third party use, not just third party use in the
industry. Union Nat'l Bank, 909 F.2d at 848 n. 24.
FN12. The Court
previously categorized the mark as part of a threshold
inquiry in determining whether plaintiff had any type
of protectable interest. At this stage in the analysis,
the goal is to determine the degree of distinctiveness
of the mark. See AmBrit, Inc., 812 F.2d at 1539 n.
36.
Defendants have
provided evidence of registrations within the state
which begin with "ice" or with "cold." Registrations
may provide *936 evidence of third-party usage. As
set forth above, the Court finds that in this particular
case, there is a risk in considering merely the components
of ICAA's marks rather than the mark as a whole since
the terms combined are more distinctive than the individual
components. Therefore, registration of the component
terms are not as useful as registration of the words
in combination. For example, registrations of "ice
cold" in combination provide more guidance for the
Court. Registration of "ice skating" or some such name
does not suggest a likelihood of confusion. Additionally,
the Court finds evidence of third party usage in the
market area at issue more probative, since the concern
is likelihood of confusion in that market area.
As set forth above,
based on the evidence presented thus far, the Court
finds ICAA's mark to be descriptive with secondary
meaning. At this stage in the litigation, the Court
finds that ICAA's marks are somewhat weak, but still
entitled to some protection.
2. Similarity
of the Mark
[19] Another factor
increasing the likelihood of confusion is a high degree
of similarity between the marks. In comparing similarity,
a court should consider the overall impression created
by the marks rather than comparing individual features
of the marks. Bellsouth Advertising & Publishing
Corp. v. Real Color Pages, 792 F.Supp. 775, 781 (M.D.Fla.1991).
The analysis should include a comparison of the appearance,
sound and meaning of the marks, as well as the manner
in which they are displayed. Id.
See also Chassis Master Corp., 610 F.Supp. at 476 (comparing the appearance,
pronunciation and suggestion of the marks). The use of an identical word, even
a dominant word, does not automatically mean that two marks are similar. Freedom
Sav. and Loan Ass'n, 757 F.2d at 1183.
In arguing this
factor, the parties have tended to combine the analysis
required for marks and for trade dress. In Freedom
Savings and Loan Association v. Way, 757 F.2d 1176
(11th Cir.1985), the court considered the logos of
the parties, in addition to the two marks, since the
defendant most often advertised by using its logo in
connection with its name. In Sun-Fun Products, Inc.
v. Suntan Research & Development, Inc., 656 F.2d
186, 188 (5th Cir.1981), the court compared a "trademark
composed of the brand name 'Native Tan' and a sunburst
symbol surrounding a figure resembling the head of
a tiki god" with defendant's mark. In the case at hand,
the parties have no logo or symbol that is regularly
associated with their marks. However, the Court is
persuaded that the manner in which the marks are presented
to the public in terms of the relative size of the
component terms may be relevant to an analysis of the
similarity of the marks.
[20] Defendants
have argued that the comparison of marks must include
their entire mark, "Cold Air and Accessories." [FN13]
Defendants then argue that there is a significant difference
in the appearance, sound and meaning of the marks.
However, in virtually all of their signs and on the
office letterhead and business cards, the terms "and
Accessories" have been de-emphasized by Defendants
since they are placed below and are much smaller than
the terms "Cold Air." The Court is persuaded that consumers
would refer to Defendants' business as "Cold Air," that
the presentation of Defendants' mark to the public
encourages the public to use the short form "Cold Air," and
that Defendants reasonably anticipated such a result.
In comparing the short form of Defendants' mark with
ICAA's mark of "Ice Cold Air," the Court finds that
the marks are very similar. However, ICAA locations
primarily use ICAA's other mark, "Ice Cold Auto Air." The
presentation of this mark to the public is inconsistent.
In some instances, the terms "Auto Air" are larger
than the terms "Ice Cold." Taking this difference in
presentation into account and considering the appearance,
sound and meaning of "Ice Cold Auto Air" and "Cold
Air," the Court finds that there is some similarity,
but that the level of similarity does not strongly
contribute to the likelihood of confusion.
FN13. In presenting
their mark to the public, the Defendants have used "and" rather
than the ampersand used in their fictitious name registration
with the State of Florida.
*937 3. Similarity
of Products or Services
[21] The greater
the similarity between products and services, the greater
the likelihood of confusion. Exxon Corp. v. Texas Motor
Exchange of Houston, Inc., 628 F.2d 500, 505 (5th Cir.1980).
The parties have represented to the Court that their
products and services are virtually identical.
4. Identity of
Purchasers and Similarity of Retail Outlets
"Likelihood of
confusion is more probable if the products are sold
through the same channels to the same purchasers." AmBrit,
Inc., 812 F.2d at 1541. The parties appear to agree
that the purchasers and retail outlets are very similar.
5. Similarity
of Advertising Campaigns
"If a plaintiff
and defendant both use the same advertising media,
a finding of likelihood of confusion is more probable." AmBrit,
Inc., 812 F.2d at 1542. A court may properly consider
the overall advertising campaigns. Freedom Sav. and
Loan Ass'n., 757 F.2d at 1185. Defendants argue that
ICAA has recently used certain methods of advertising
that have served to increase confusion regarding the
parties' services. However, the Court finds that the
methods of advertising used by both ICAA and Defendants
are entirely predictable and ordinary for the type
of services offered. The parties now use, and may be
expected to use in the future, virtually identical
advertising media.
6. Defendant's
Intent
[22] A finding
that a defendant adopted a mark with the intent of
deriving benefit from the reputation of a plaintiff's
service or product may alone be enough to justify an
inference that there is confusing similarity. AmBrit,
Inc., 812 F.2d at 1542. Evidence that a defendant intended
to come as close to plaintiff's mark as the law would
allow may support an inference that a defendant intended
to trade on the good will associated with plaintiff's
mark. John H. Harland Co. v. Clarke Checks, Inc., 711
F.2d 966, 977-78 (11th Cir.1983). Although intent may
be inferred, the actions of defendant must clearly
indicate an effort by the defendant to confuse the
public. Holiday Inns, Inc. v. Holiday Out in America,
481 F.2d 445, 449 (5th Cir.1973). Without clear evidence
of intent, a plaintiff's argument may become circular.
[The plaintiff]
argues that confusing similarity of the marks is proved
by the defendants' intent to confuse the public and
that the defendants' intent to confuse the public is
proved by the confusing similarity of the marks. The
obvious flaw in theargument is that it requires the
court to assume that which is to be proved.Id.
Given the prior
business relationship between the parties, the disputed
direct evidence of intent (presented in state court
and through affidavits), and the inferences that may
be drawn from some of the events that have transpired,
it is clear that this factor will be a key one in the
final outcome of this case. On the evidence and inferences
that have been presented thus far, the Court is not
prepared to conclude that this factor alone would entitle
ICAA to an inference of confusing similarity. However,
analysis of this factor at this stage in the litigation
does seem to support a finding of likelihood of confusion.
7. Actual confusion
[23][24] " 'Although
evidence of actual confusion is not necessary to a
finding of likelihood of confusion, it is nevertheless
the best evidence of likelihood of confusion.' " John
H. Harland Co., 711 F.2d at 978 (quoting Amstar Corp.
v. Domino's Pizza, Inc., 615 F.2d 252, 263 (5th Cir.1980)).
Actual confusion by a few customers is evidence of
likelihood of confusion by many customers. Freedom
Sav. and Loan Ass'n, 757 F.2d at 1185. Therefore, a
plaintiff usually will not have to prove more than
a few incidents of actual confusion. Id.
ICAA's evidence
of actual confusion makes this factor the strongest
of the seven. However, the Court could give more weight
to evidence of specific events fully documented. The
generalizations of ICAA's employees regarding types
of confusion do not provide the Court with the most
probative evidence.
c. Conclusion
Admittedly the
factors of intent and actual confusion tend to support
a finding of likelihood *938 of confusion. ICAA's claim
is hindered by the fact that the Court has found on
the evidence presented thus far that the marks are
entitled to relatively weak protection and that the
similarity between "Ice Cold Auto Air" and "Cold Air" is
not great. The Court is not prepared to conclude at
this point that ICAA has established a likelihood of
success on the merits on its claim of infringement
of its marks.
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IV. FEDERAL LAW:
UNFAIR COMPETITION (Trade Dress Infringement)
[25] Section 43(a)
of the Lanham Act, 15 U.S.C. s 1125(a), provides:
(a)(1) Any person
who, on or in connection with any goods or services,
or any container for goods, uses in commerce any word,
term, name, symbol, or device, or any combination thereof,
or any false designation of origin, false or misleading
description of fact, or false or misleading representation
of fact, which--
(A) is likely to cause confusion, or to cause mistake, or to deceive as to
the affiliation, connection, or association of such person with another person,
or as to the origin, sponsorship, or approval of his or her goods, services,
or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another person's goods, services,
or commercial activities, shall be liable in a civil action by any person who
believes that he or she is or is likely to be damaged by such act.This statutory
provision provides a federal cause of action for unfair competition. [FN14]
Specifically, this provision provides a cause of action for trade dress infringement.
See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.1983).
FN14. There are
certain similarities between the analysis required
for trademark and servicemark infringement and for
unfair competition. However, the unfair competition
claim is "broader." Freedom Sav. and Loan Ass'n v.
Way, 757 F.2d 1176, 1186(11th Cir.1985), cert. denied,
474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1985).
Therefore, failure on the trademark or servicemark
claim would not automatically bar an unfair competition
claim. Id.
[26] In John H.
Harland Co., the Eleventh Circuit stated:
'Trade dress'
involves the total image of a product and may include
features such as size, shape, color or color combinations,
texture, graphics, or even particular sales techniques....
Most trade dress infringement actions involve the packaging or labeling of
goods.... Recently, however, courts have recognized that the design of a product
itself may constitute protectable trade dress under s 43(a) of the Lanham Act.
Id. (citations
omitted). To prevail on a claim of trademark infringement,
a plaintiff must establish three elements: 1) its trade
dress is inherently distinctive or has acquired secondary
meaning; 2) its trade dress is primarily nonfunctional;
and 3) the defendant's trade dress is confusingly similar.
AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535 (11th
Cir.1986).
a. Inherent Distinctiveness
or Secondary Meaning
[27][28] If a "plaintiff's
trade dress is not sufficiently distinctive to allow
consumers to identify the product from the trade dress,
then the dress does not inherently serve as an indication
of origin and the plaintiff can claim no right to the
exclusive use of that trade dress." AmBrit, Inc., 812
F.2d at 1536. Trademarks and trade dress may be classified
as generic, descriptive, suggestive or arbitrary. Id.
at 1537. Trade dress which is arbitrary or suggestive
is inherently distinctive and entitled to protection.
Id. Alternately, trade dress which is not inherently
distinctive may be protectable if plaintiff can establish
that the trade dress has acquired secondary meaning,
i.e., that the consuming public has come to associate
that trade dress with the producer of the service or
product. Id. at 1536.
*939 [29] At this
stage of the analysis, the court should consider the
overall impression conveyed by the combination of the
various elements of the trade dress. Id. at 1537. Isolated
or piecemeal third party uses of various elements does
not detract from the distinctiveness of the trade dress
unless the third party usage is so extensive that it
impairs the ability of consumers to use the trade dress
to identify plaintiff as the source for the service
or product. Id.
[30] ICAA's trade
dress is not uniform throughout all of its stores.
This lack of uniformity suggests that ICAA's trade
dress would be unprotectable. Yet in spite of the lack
of uniformity in specific details, there appears to
be an overall impression that is fairly distinctive.
ICAA is likely to prevail at trial in establishing
inherent distinctiveness or secondary meaning in their
trade dress.
b. Functionality
[31][32] Trade
dress is protectable only if it is primarily nonfunctional.
AmBrit, Inc., 812 F.2d at 1538. The fact that individual
elements of trade dress are nonfunctional does not
mean that the trade dress as a whole is unprotectable.
Id. While a defendant is free to copy functional features
(assuming no trademark or copyright protection), copying
features which are primarily nonfunctional may create
liability for infringement. John H. Harland Co., 711
F.2d at 982.
The parties need
to focus more particularly on the issue of functionality
before the Court can address this element in any detail.
The Court is not persuaded that ICAA is attempting
to interfere with Defendants' method and style of doing
business or attempting to prevent Defendants from using
certain marketing approaches as Defendants argue. It
appears that this type of concern can be addressed
in the analysis of functionality. However, the Court
notes that extensive third-party usage of a specific
element, while relevant to various aspects of the analysis,
does not establish that the element is functional.
c. Likelihood
of Confusion
The factors relevant
to determining whether there is a likelihood of confusion
between the trade dress of two products is essentially
the same as the factors relevant to the likelihood
of confusion analysis for trademark or servicemark
infringement. John H. Harland Co., 711 F.2d at 981.
The key difference is in the second factor. In trademark
or servicemark analysis, the second factor is "similarity
of mark." In trade dress infringement, the second factor
is "similarity of design." AmBrit, Inc., 812 F.2d at
1540. The scope of inquiry into similarity of design
is considerably broader and may extend beyond a comparison
of the marks involved. Sun-Fun Products, Inc. v. Suntan
Research & Development, Inc., 656 F.2d 186, 192
(5th Cir.1981). Accord Freedom Sav. and Loan Ass'n
v. Way, 757 F.2d 1176, 1186 (11th Cir.1985) (noting
that a comparison of trade dress is one example of
the fact that an unfair competition claim is broader
than a trademark infringement claim), cert. denied,
474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1985).
A comparison of
the similarity of trade dress in this case merits closer
analysis than the parties have provided for the Court
up to this point. While there are differences in the
trade dress for ICAA and Defendants, there is a sense
that the overall effect of the trade dress for each
is quite similar.
d. Conclusion
The Court is hindered
in its analysis of trade dress because the parties
have either not focused on this claim separately in
their briefs or have not developed in detail the analysis
required by the Eleventh Circuit. No doubt this shortcoming
will be remedied by the time of trial. On the record
before it, the Court is unwilling to conclude that
ICAA has established a likelihood of success on the
merits of its trade dress infringement claim.
V. ICAA'S REMAINING
CLAIMS
[33] "Unfair competition
occurs when one business entity 'palms off' its products
or services as those of another." Sun Banks of Florida,
Inc. v. Sun Federal Sav. and Loan Ass'n, 651 F.2d 311,
313 n. 2 (5th Cir.1981). *940 The Court has already
concluded that ICAA has not established a likelihood
of success on the merits of their federal statutory
claims based on the evidence available at this time.
For similar reasons, ICAA has not established a likelihood
of success on the merits on its common law unfair competition
and common law palming off claims.
[34] In addressing
state trademark dilution under Florida Statutes s 495.151,
the Eleventh Circuit has noted:
Dilution, like
unfair competition, is a broader claim than infringement.....
Dilution requires some proof that the use of a trademark decreases its commercial
value. If the plaintiff holds a distinctive trademark, it is enough that the
defendant has made significant use of a very similar mark. On the other hand,
where the mark is a weak one that lacks much distinctiveness, the mere use
of a similar mark will not establish loss of commercial value.
Freedom Sav. and
Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir.1985)
(citations omitted). Based on the analysis under ICAA's
infringement claim, the Court finds that ICAA has not
established a likelihood of success on the merits of
its claim of dilution.
[35] On the issue
of ICAA's claim that Mr. Powalisz has violated a non-
compete agreement, the Court findsthere are unresolved
issues regarding contract interpretation. These unresolved
issues lead to the conclusion that ICAA has not established
a likelihood of success on the merits.
[36] With respect
to ICAA's claim that Mr. Powalisz has violated the
Uniform Trade Secrets Act under Florida Statutes s
688.001, the Court finds that on the evidence presented
to the Court at this time, ICAA has not established
a likelihood of success on the merits.
Accordingly, it
is hereby ORDERED as follows:
1. Plaintiffs'
Motion for Preliminary Injunction (Dkt. 8), filed March
5, 1993, is DENIED.
2. Defendant's
(sic) Motion to Strike (Dkt. 49), filed March 10, 1993,
is DENIED.
3. Defendant's
(sic) Supplemental Motion to Strike (Dkt. 73), filed
March 11, 1993, is DENIED.
4. The parties
shall prepare for trial on an expedited basis. The
deadlines related to discovery and trial shall be set
by separate Order of the Court.
DONE AND ORDERED.
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