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finding that the first element of a trademark infringement claim under common law is proof of "ownership and continuous use of the [m]arks"
Summary of this case from Johnson v. Apple, Inc.Opinion
Case No. 1:99-CV-958.
August 6, 2001
OPINION
This matter is before the Court on Plaintiff's Motion to Strike Evidence Submitted by McLeodUSA in Support of its Motion for Summary Judgment on Plaintiff's Trademark Related Claims. Also before the Court is Defendant's Motion for Summary Judgment on Plaintiff's Trademark Related Claims Because PhoneGuide is Not Protectable Under Trademark Law. The Court denies the Motions.
I. MOTION TO STRIKE
Plaintiff asks the Court to strike Defendant's 52 "examples" of PhoneGuide usage submitted in support of its Motion for Summary Judgment on Plaintiff's Trademark Related Claims because PhoneGuide is not Protectable under Trademark Law. Plaintiff claims the examples should be stricken because Defendant failed to disclose them during discovery although Plaintiff made discovery requests for such information.
Federal Rule of Civil Procedure 37(d) allows a court to make orders regarding the failure to serve answers to properly-served interrogatories. Fed.R.Civ.P. 37(d). The actions a court may take include an order (1) stating that the matter was established, (2) refusing to allow the disobedient party to support or oppose the designated claims, and (3) striking pleadings or parts thereof, or staying further proceedings, or dismissing the action or any part thereof. Fed.R.Civ.P. 37(d) and (b)(2)(A)-(C). Rule 37(d) also requires a party to confer with an opposing party in effort to obtain the answers or responses sought before seeking court action. This, Plaintiff has failed to do. Therefore, the Court denies the Motion.
II. MOTION FOR SUMMARY JUDGMENT
Defendant seeks summary judgment on all of Plaintiff's trademark-related claims because it claims that PhoneGuide is generic and not entitled to trademark protection. If the Court finds PhoneGuide is not generic, Defendant alternatively claims that the Court should grant summary judgment on Plaintiff's trademark-related claims in all markets except the Cheboygan-Emmett Counties market. Defendant is seeking summary judgment with respect to Counts I (Federal Trademark Infringement), II (Federal Unfair Competition), Ell (False and Deceptive Representations and False Advertising), IV (Common Law Trademark and Unfair Competition), and VII (Unjust Enrichment).
BACKGROUND
Plaintiff first used PhoneGuide in 1987 and applied to register it as a trademark in 1988. The Patent and Trademark Office ("PTO") refused Plaintiff's application because the mark "merely" described the subject matter of the application. Plaintiff then amended its application, arguing that the mark was suggestive, and the PTO rejected this argument. In 1989, Plaintiff filed to register PhoneGuide on the PTO's supplemental register, and the PTO granted this registration. In 1995, Plaintiff again applied to register PhoneGuide on the principal register. In 1998, the term PhoneGuide was registered on the principal register.
A mark on supplemental registration is not entitled to the prima facie presumptions of Section 7(b) of the Lanham Act, 15 U.S.C. § 1057(b), and the criteria for registering marks on the supplemental register is not as demanding as those required for registration on the principal register. See In re Cosmetic Factory, Inc., 208 U.S.P.Q. 443, 446 (1980).
LEGAL STANDARDS FOR RULE 56
In reviewing a motion for summary judgment, this Court will only consider the narrow question of whether there are "genuine issues as to any material fact and [whether] the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). A motion for summary judgment requires that the Court view the "`inferences to be drawn from the underlying facts . . . in the light most favorable to the party opposing the motion.'" Matsushita Electric Ind. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (quoting United States v. Diebold, Inc., 369 U.S. 654, 655 (1962)). The opponent, however, has the burden of showing that a "rational trier of fact [could] find for the non-moving party [or] that there is a `genuine issue for trial.'" Matsushita, 475 U.S. at 587. "The mere existence of a scintilla of evidence in support of plaintiffs position[, however,] will be insufficient; there must be evidence on which the jury could reasonably find for the plaintiff." Anderson v. Liberty Lobby, 477 U.S. 242, 252 (1986).
ANALYSIS
More trademark protection is afforded to distinctive names than generic names. See Frisch's, Inc. v. Shoney's Inc., 759 F.2d 1261, 1264 (6th Cir. 1985). When a name is the "common descriptive name" of the product, the name is generic and not entitled to trademark protection. See The Vette Shop, Inc. v. Roy, 542 F.2d 20, 21 (6th Cir. 1976). If the Court finds PhoneGuide is descriptive, Plaintiff must establish the mark's secondary meaning, which can be proven by showing that the consuming public understands the mark to represent a "single thing coming from a single source." See Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938); Ashland Oil, Inc. v. Olymco, Inc., 905 F. Supp. 409 (W.D.Ky. 1994). This means that the burden of proof regarding secondary meaning is Plaintiff's. See Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, 871 F.2d 590, 597 (6' Cir. 1989).
A. Is PhoneGuide Generic?
Courts place trademarks into one of four categories: (1) generic, (2) merely descriptive, (3) suggestive, and (4) arbitrary or fanciful. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); Bath Body Works, Inc. v. LuzierPersonalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir. 1996). Marks that are suggestive, arbitrary or fanciful are inherently distinctive and entitled to trademark protection. See Two Pesos, 505 U.S. at 768. A mark not inherently distinctive is either merely descriptive or generic. See id. A generic mark can never be a trademark, but a merely descriptive mark can be protected if it acquires secondary meaning. See id.; see also Champions Golf Club v. The Champions Golf Club, Inc., 78 F.3d 1111, 1116-17 (6th Cir. 1996).
To determine whether a mark is generic, courts look to whether the public perceives the term primarily as the designation of the article. See Bath Body, 76 F.3d at 748. Generic terms do not distinguish one's goods from goods identical in kind and "having the same name and manufactured by others." Ethicon v. Deknatel, Inc., 183 U.S.P.Q. 503, 504 (1974). Courts have also looked at the dictionary definition of a word to determine the meaning of words to the public. See Discount Muffler Shop, Inc. v. Meineke Realty Corp., Inc., 535 F. Supp. 439, 444 (N.D.Ohio. 1982).
Furthermore, combining common descriptive terms does change the quality of a trade name. See Nat'l Conf. of Bar Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478, 488 (7th Cir. 1982).
Defendant argues that the PTO has already ruled that PhoneGuide is not suggestive because no imagination is needed to ascertain that a "phone guide" contains phone numbers. Defendant further argues that PhoneGuide identifies the underlying article and is generic. See Induct-0-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). In addition, Defendant argues that combining "phone" and "guide" into "PhoneGuide" does not change the generic meanings of those terms such that PhoneGuide is entitled to trademark protection. As factual support for its Motion, Defendant cites to the standard meanings of "phone" and "guide" as found in dictionaries, 28 newspaper articles using the term "phone guide" synonymously with "phone book" or "phone directory," and 24 Internet sites using the term "phone guide" synonymously with a list or directory of telephone numbers.
Plaintiff argues that the word mark and the logo must be separated and then studied and distinguished. Plaintiff cites to the style of the logo as indication that it is distinctive and deserving of trademark protection. Plaintiff claims that the word mark is a suggestive mark and inherently distinctive. Plaintiff claims that the word mark identifies a collection of business advertisements and residential and community reference. Therefore, claims Plaintiff, the word mark merely suggests rather than describes an element of the product. In other words, the word mark allows the customer to use his or her perceptions to determine the product's nature. See Champions, 78 F.3d at 1117. In addition, Plaintiff argues that the mark's registration entitles it to strong presumption that it is not merely descriptive, or at least has secondary meaning. See id. at 1118.
It appears to the Court that whether the PhoneGuide logo or word mark is generic is a question of fact. In this case, the mark is presumed valid because it is registered, and Defendant has not shown substantial evidence overcoming this. For example, Defendant did not show that the relevant public's understanding of PhoneGuide refers to the type of goods rather than the source. In addition, the actual term PhoneGuide is not found in the dictionary, and it is possible that rational jurors could ascribe different meanings to this term. Moreover, the terms claimed to be synonymous with PhoneGuide, "telephone book," "telephone directory," and "yellow pages" are all found within certain dictionaries. In addition, some courts have held that combining known words into one word may create a trademark. See California Cooler, Inc. v. Loretto Winery, LTD., 747 F.2d 1217, 1221 (9th Cir. 1985); see also Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir. 1976). The facts before the Court do not allow it to gauge the relevant public's determination of PhoneGuide, nor do they allow the Court to overcome a presumption of validity based on registration. Therefore, the Court cannot appropriately determine that the mark is generic.
B. Is the Mark Descriptive?
A merely descriptive term specifically describes a characteristic or ingredient of an article. See Bath Body, 76 F.3d at 748 citing Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). A mark is descriptive ". . . if it describes: the intended purpose, function or use of the goods; the class of users of the goods; a desirable characteristic of the goods; or the end effect upon the user." Burke-Parsons-Bowlby, 871 F.2d at 594 quoting Wynn Oil Co. Classic Car Wash Inc. v. Thomas, 839 F.2d 1183, 1190 (6th Cir. 1988). If the mark "imparts information directly, it is descriptive." Id. quoting Anheuser-Busch, Inc. v. Stroh Brewery Co., 587 F. Supp. 330, 335 (E.D.Mo. 1984).
Defendant argues that PhoneGuide describes the characteristic of the article, that is, it is a guide for using the telephone. Defendant also argues that PhoneGuide describes the intended purpose and function of the goods.
Plaintiff argues that the mark is suggestive rather than descriptive. According to Plaintiff, PhoneGuide does not describe the character of the underlying product. Rather, the mark is used to uniquely identify business and residential reference information. In other words, Plaintiff argues that the mark suggests an element of the product to enable its customers to use its perceptions to determine the product's nature.
The Court finds this to be a question of material fact, and one that cannot be properly decided on summary judgment. A rational juror could find the mark descriptive, or a rational juror could find the mark suggestive and distinctive. The Court, therefore, will allow a "rational juror" to decide this.
CONCLUSION
For the reasons stated above, the Court denies Plaintiff's Motion to Strike and also denies Defendant's Motion for Summary Judgment.
An Order consistent with this Opinion is forthcoming.
ORDER
In accordance with the Opinion entered this day,
IT IS HEREBY ORDERED that Plaintiff's Motion for Summary Judgment on Federal and Common Law Trademark Infringement and Unfair Competition (Dkt. No. 136) is DENIED.