OSHNA ICANN complaint

OLD SEMINOLE HEIGHTS ) NEIGHBORHOOD ASSN. ) INC., a Florida Corporation, )

Complainant ) v. ) In Re oldseminoleheightsfoundation.org SEMINOLE HEIGHTS ) FOUNDATION, INC., a ) Florida Corporation, and ) CHRISTIE HESS, individually )

Respondent ) )

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:

OSHNA UDRP COMPLAINT - 2 -

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: Christie Hess1

[b.] Organization: Seminole Heights Foundation

[b.] Address: Seminole Heights Foundation, Inc. 1011 E Broad Street, Tampa, Florida 33604 [c.] Telephone: (813) 237-8808 [e.] E-Mail: [email protected]

On information and belief, Respondent’s 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: Christie Hess

2

1 Although this is not an “alias” case, both the corporation and individual listed as Registrant are identified as Respondents, as it is unknown if Respondent/Registrant Christie Hess may claim an individual interest in the domain name apart from the Seminole Heights Foundation, Inc. corporation in an effort to circumvent the UDRP process. Respondent Foundation’s primary domain is registered with Domains by Proxy; it is therefore unclear whether the challenged registration is individual or corporate. Respondent/Registrant Christie Hess is not known to use any alias. She is a natural person and resident of Tampa, Florida. 2 N.B. The registration information does not include “Inc.”

[c.] Address: 1011 E Broad Street, Tampa, Florida 33604 [d.] Telephone: (813) 237-8808 [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. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 C.A.11 (Fla.), 2001. [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, 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

3 Long was OSHNA president until October, 2008, and is a Founder of SHF. 4 DiBona is the current OSHNA trustee.trustee

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. In January, 2009, Evan St. Ives5, Greg Barnhill, Randy Baron6, Doreen DiBona, Jeff Harmon7

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 Hess

, 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.

8

OSHNA’s Bylaws specifically provide that the Board is responsible for “preserving the good name and reputation of OSHNA”

, 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.

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

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

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


unanimously to move forward with pursuit of ICANN UDRP arbitration, and to terminate the membership of Hess, Baron and Long.

APPLICABLE LEGAL STANDARDS Federal and Florida law apply to this case. 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.”).

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 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. 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. A Likelihood of Confusion – Indeed, ACTUAL Confusion – Exists A likelihood of confusion 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 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.12

12 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.

(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.

C. 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. 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 deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents. Complainant certifies that the information contained in this Complaint is to the best of Complaint'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. Respectfully Submitted, /s/ Bradford A. Patrick Bradford A. Patrick, Esq. Florida Bar No. 0529850 July 6, 2009


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). ....... 7 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) .............................................................. 6 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) ..................................................................................................................................... 6

Rules for Uniform Domain NameDispute Resolution Policy

Policy Adopted: August 26, 1999Implementation Documents Approved: October 24, 1999

Note: These rules are now in effect. See www.icann.org/udrp/udrp-schedule.htm forthe 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 DisputeResolution Policy adopted by ICANN shall be governed by these Rules and also theSupplemental Rules of the Provider administering the proceedings, as posted on its website.

1. Definitions

In these Rules:

Complainant means the party initiating a complaint concerning a domain-nameregistration.

ICANN refers to the Internet Corporation for Assigned Names and Numbers.

Mutual Jurisdiction means a court jurisdiction at the location of either (a) theprincipal office of the Registrar (provided the domain-name holder has submittedin its Registration Agreement to that jurisdiction for court adjudication of disputesconcerning or arising from the use of the domain name) or (b) the domain-nameholder's address as shown for the registration of the domain name in Registrar'sWhois database at the time the complaint is submitted to the Provider.

Panel means an administrative panel appointed by a Provider to decide acomplaint 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 isincorporated by reference and made a part of the Registration Agreement.

Provider means a dispute-resolution service provider approved by ICANN. A listof such Providers appears at www.icann.org/udrp/approved-providers.htm.

ICANN | Rules for Uniform Domain Name Dispute Resolution Policy http://www.icann.org/en/udrp/udrp-rules-24oct99.htm

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Registrar means the entity with which the Respondent has registered a domainname that is the subject of a complaint.

Registration Agreement means the agreement between a Registrar and adomain-name holder.

Respondent means the holder of a domain-name registration against which acomplaint is initiated.

Reverse Domain Name Hijacking means using the Policy in bad faith to attemptto deprive a registered domain-name holder of a domain name.

Supplemental Rules means the rules adopted by the Provider administering aproceeding to supplement these Rules. Supplemental Rules shall not beinconsistent with the Policy or these Rules and shall cover such topics as fees,word and page limits and guidelines, the means for communicating with theProvider and the Panel, and the form of cover sheets.

2. Communications

(a) When forwarding a complaint to the Respondent, it shall be the Provider'sresponsibility to employ reasonably available means calculated to achieve actualnotice to Respondent. Achieving actual notice, or employing the followingmeasures 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 Whoisdatabase for the registered domain-name holder, the technicalcontact, and the administrative contact and (B) supplied by Registrarto the Provider for the registration's billing contact; and

(ii) sending the complaint in electronic form (including annexes to theextent available in that form) by e-mail to:

(A) the e-mail addresses for those technical, administrative,and billing contacts;

(B) postmaster@<the contested domain name>; and

(C) if the domain name (or "www." followed by the domainname) resolves to an active web page (other than a genericpage the Provider concludes is maintained by a registrar orISP for parking domain-names registered by multipledomain-name holders), any e-mail address shown or e-maillinks on that web page; and

(iii) sending the complaint to any address the Respondent has notifiedthe Provider it prefers and, to the extent practicable, to all otheraddresses provided to the Provider by Complainant under Paragraph3(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 thepreferred means stated by the Complainant or Respondent, respectively (seeParagraphs 3(b)(iii) and 5(b)(iii)), or in the absence of such specification

(i) by telecopy or facsimile transmission, with a confirmation oftransmission; or

(ii) by postal or courier service, postage pre-paid and return receiptrequested; or

(iii) electronically via the Internet, provided a record of its transmissionis available.

(c) Any communication to the Provider or the Panel shall be made by the meansand in the manner (including number of copies) stated in the Provider'sSupplemental 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 theRegistrar.

(f) Except as otherwise provided in these Rules, or decided by a Panel, allcommunications provided for under these Rules shall be deemed to have beenmade:

(i) if delivered by telecopy or facsimile transmission, on the date shownon 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 wastransmitted, provided that the date of transmission is verifiable.

(g) Except as otherwise provided in these Rules, all time periods calculated underthese Rules to begin when a communication is made shall begin to run on theearliest date that the communication is deemed to have been made in accordancewith Paragraph 2(f).

(h) Any communication by

(i) a Panel to any Party shall be copied to the Provider and to the otherParty;

(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 theProvider, as the case may be.

(i) It shall be the responsibility of the sender to retain records of the fact andcircumstances of sending, which shall be available for inspection by affectedparties and for reporting purposes.


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(j) In the event a Party sending a communication receives notification ofnon-delivery of the communication, the Party shall promptly notify the Panel (or, ifno Panel is yet appointed, the Provider) of the circumstances of the notification.Further proceedings concerning the communication and any response shall beas directed by the Panel (or the Provider).

3. The Complaint

(a) Any person or entity may initiate an administrative proceeding by submitting acomplaint in accordance with the Policy and these Rules to any Providerapproved by ICANN. (Due to capacity constraints or for other reasons, aProvider'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 thecomplaint to another Provider.)

(b) The complaint shall be submitted in hard copy and (except to the extent notavailable for annexes) in electronic form and shall:

(i) Request that the complaint be submitted for decision in accordancewith the Policy and these Rules;

(ii) Provide the name, postal and e-mail addresses, and the telephoneand telefax numbers of the Complainant and of any representativeauthorized to act for the Complainant in the administrative proceeding;

(iii) Specify a preferred method for communications directed to theComplainant in the administrative proceeding (including person to becontacted, 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 decidedby a single-member or a three-member Panel and, in the eventComplainant elects a three-member Panel, provide the names andcontact details of three candidates to serve as one of the Panelists(these candidates may be drawn from any ICANN-approved Provider'slist of panelists);

(v) Provide the name of the Respondent (domain-name holder) and allinformation (including any postal and e-mail addresses and telephoneand telefax numbers) known to Complainant regarding how to contactRespondent or any representative of Respondent, including contactinformation based on pre-complaint dealings, in sufficient detail toallow the Provider to send the complaint as described in Paragraph2(a);

(vi) Specify the domain name(s) that is/are the subject of thecomplaint;

(vii) Identify the Registrar(s) with whom the domain name(s) is/areregistered 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 separatelydescribe other goods and services with which it intends, at the timethe complaint is submitted, to use the mark in the future.);

(ix) Describe, in accordance with the Policy, the grounds on which thecomplaint is made including, in particular,

(1) the manner in which the domain name(s) is/are identicalor confusingly similar to a trademark or service mark inwhich the Complainant has rights; and

(2) why the Respondent (domain-name holder) should beconsidered as having no rights or legitimate interests inrespect of the domain name(s) that is/are the subject of thecomplaint; and

(3) why the domain name(s) should be considered ashaving been registered and being used in bad faith

(The description should, for elements (2) and (3), discuss any aspectsof Paragraphs 4(b) and 4(c) of the Policy that are applicable. Thedescription shall comply with any word or page limit set forth in theProvider's Supplemental Rules.);

(x) Specify, in accordance with the Policy, the remedies sought;

(xi) Identify any other legal proceedings that have been commenced orterminated 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 sheetas prescribed by the Provider's Supplemental Rules, has been sent ortransmitted to the Respondent (domain-name holder), in accordancewith Paragraph 2(b);

(xiii) State that Complainant will submit, with respect to any challengesto a decision in the administrative proceeding canceling or transferringthe domain name, to the jurisdiction of the courts in at least onespecified Mutual Jurisdiction;

(xiv) Conclude with the following statement followed by the signatureof the Complainant or its authorized representative:

"Complainant agrees that its claims and remediesconcerning the registration of the domain name, thedispute, or the dispute's resolution shall be solely againstthe domain-name holder and waives all such claims andremedies against (a) the dispute-resolution provider andpanelists, except in the case of deliberate wrongdoing, (b)the registrar, (c) the registry administrator, and (d) theInternet 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 thisComplaint is to the best of Complainant's knowledgecomplete and accurate, that this Complaint is not beingpresented for any improper purpose, such as to harass,and that the assertions in this Complaint are warrantedunder these Rules and under applicable law, as it nowexists or as it may be extended by a good-faith andreasonable argument."; and

(xv) Annex any documentary or other evidence, including a copy of thePolicy applicable to the domain name(s) in dispute and any trademarkor service mark registration upon which the complaint relies, togetherwith a schedule indexing such evidence.

(c) The complaint may relate to more than one domain name, provided that thedomain names are registered by the same domain-name holder.

4. Notification of Complaint

(a) The Provider shall review the complaint for administrative compliance with thePolicy and these Rules and, if in compliance, shall forward the complaint(together with the explanatory cover sheet prescribed by the Provider'sSupplemental Rules) to the Respondent, in the manner prescribed by Paragraph2(a), within three (3) calendar days following receipt of the fees to be paid by theComplainant in accordance with Paragraph 19.

(b) If the Provider finds the complaint to be administratively deficient, it shallpromptly notify the Complainant and the Respondent of the nature of thedeficiencies identified. The Complainant shall have five (5) calendar days withinwhich to correct any such deficiencies, after which the administrative proceedingwill be deemed withdrawn without prejudice to submission of a different complaintby Complainant.

(c) The date of commencement of the administrative proceeding shall be the dateon which the Provider completes its responsibilities under Paragraph 2(a) inconnection with forwarding the Complaint to the Respondent.

(d) The Provider shall immediately notify the Complainant, the Respondent, theconcerned Registrar(s), and ICANN of the date of commencement of theadministrative proceeding.

5. The Response

(a) Within twenty (20) days of the date of commencement of the administrativeproceeding the Respondent shall submit a response to the Provider.

(b) The response shall be submitted in hard copy and (except to the extent notavailable 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 disputeddomain name (This portion of the response shall comply with anyword or page limit set forth in the Provider's Supplemental Rules.);

(ii) Provide the name, postal and e-mail addresses, and the telephoneand telefax numbers of the Respondent (domain-name holder) and ofany representative authorized to act for the Respondent in theadministrative proceeding;

(iii) Specify a preferred method for communications directed to theRespondent in the administrative proceeding (including person to becontacted, 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 theComplaint (see Paragraph 3(b)(iv)), state whether Respondent electsinstead 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 asone of the Panelists (these candidates may be drawn from anyICANN-approved Provider's list of panelists);

(vi) Identify any other legal proceedings that have been commenced orterminated 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 tothe Complainant, in accordance with Paragraph 2(b); and

(viii) Conclude with the following statement followed by the signatureof the Respondent or its authorized representative:

"Respondent certifies that the information contained in thisResponse is to the best of Respondent's knowledgecomplete and accurate, that this Response is not beingpresented for any improper purpose, such as to harass,and that the assertions in this Response are warrantedunder these Rules and under applicable law, as it nowexists or as it may be extended by a good-faith andreasonable argument."; and

(ix) Annex any documentary or other evidence upon which theRespondent relies, together with a schedule indexing suchdocuments.

(c) If Complainant has elected to have the dispute decided by a single-memberPanel and Respondent elects a three-member Panel, Respondent shall berequired to pay one-half of the applicable fee for a three-member Panel as setforth in the Provider's Supplemental Rules. This payment shall be made togetherwith 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 beextended by written stipulation between the Parties, provided the stipulation isapproved by the Provider.

(e) If a Respondent does not submit a response, in the absence of exceptionalcircumstances, 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 panelistsand their qualifications.

(b) If neither the Complainant nor the Respondent has elected a three-memberPanel (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 ofthe time period for the submission thereof, a single Panelist from its list ofpanelists. The fees for a single-member Panel shall be paid entirely by theComplainant.

(c) If either the Complainant or the Respondent elects to have the disputedecided by a three-member Panel, the Provider shall appoint three Panelists inaccordance 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 wherethe election for a three-member Panel was made by the Respondent, in whichcase the applicable fees shall be shared equally between the Parties.

(d) Unless it has already elected a three-member Panel, the Complainant shallsubmit to the Provider, within five (5) calendar days of communication of aresponse in which the Respondent elects a three-member Panel, the names andcontact details of three candidates to serve as one of the Panelists. Thesecandidates 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 listof candidates provided by each of the Complainant and the Respondent. In theevent the Provider is unable within five (5) calendar days to secure theappointment of a Panelist on its customary terms from either Party's list ofcandidates, 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 candidatessubmitted by the Provider to the Parties, the Provider's selection from among thefive being made in a manner that reasonably balances the preferences of bothParties, as they may specify to the Provider within five (5) calendar days of theProvider's submission of the five-candidate list to the Parties.

(f) Once the entire Panel is appointed, the Provider shall notify the Parties of thePanelists 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 thePanelist'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 orindependence of the Panelist, that Panelist shall promptly disclose such circumstances tothe Provider. In such event, the Provider shall have the discretion to appoint a substitutePanelist.

8. Communication Between Parties and the Panel

No Party or anyone acting on its behalf may have any unilateral communication with thePanel. All communications between a Party and the Panel or the Provider shall be made to acase administrator appointed by the Provider in the manner prescribed in the Provider'sSupplemental 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 thecase of a Panel consisting of a single member, or as soon as the last Panelist is appointed inthe case of a three-member Panel.

10. General Powers of the Panel

(a) The Panel shall conduct the administrative proceeding in such manner as itconsiders appropriate in accordance with the Policy and these Rules.

(b) In all cases, the Panel shall ensure that the Parties are treated with equalityand that each Party is given a fair opportunity to present its case.

(c) The Panel shall ensure that the administrative proceeding takes place withdue expedition. It may, at the request of a Party or on its own motion, extend, inexceptional cases, a period of time fixed by these Rules or by the Panel.

(d) The Panel shall determine the admissibility, relevance, materiality and weightof the evidence.

(e) A Panel shall decide a request by a Party to consolidate multiple domainname disputes in accordance with the Policy and these Rules.

11. Language of Proceedings

(a) Unless otherwise agreed by the Parties, or specified otherwise in theRegistration Agreement, the language of the administrative proceeding shall bethe language of the Registration Agreement, subject to the authority of the Panelto determine otherwise, having regard to the circumstances of the administrativeproceeding.

(b) The Panel may order that any documents submitted in languages other thanthe language of the administrative proceeding be accompanied by a translation inwhole 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 discretionand 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, doesnot 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 withany provision of, or requirement under, these Rules or any request from thePanel, the Panel shall draw such inferences therefrom as it considersappropriate.

15. Panel Decisions

(a) A Panel shall decide a complaint on the basis of the statements anddocuments submitted and in accordance with the Policy, these Rules and anyrules and principles of law that it deems applicable.

(b) In the absence of exceptional circumstances, the Panel shall forward itsdecision on the complaint to the Provider within fourteen (14) days of itsappointment pursuant to Paragraph 6.

(c) In the case of a three-member Panel, the Panel's decision shall be made by amajority.

(d) The Panel's decision shall be in writing, provide the reasons on which it isbased, indicate the date on which it was rendered and identify the name(s) of thePanelist(s).

(e) Panel decisions and dissenting opinions shall normally comply with theguidelines as to length set forth in the Provider's Supplemental Rules. Anydissenting opinion shall accompany the majority decision. If the Panel concludesthat the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall sostate. If after considering the submissions the Panel finds that the complaint wasbrought in bad faith, for example in an attempt at Reverse Domain NameHijacking or was brought primarily to harass the domain-name holder, the Panelshall declare in its decision that the complaint was brought in bad faith andconstitutes 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, theProvider 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) shallimmediately communicate to each Party, the Provider, and ICANN the date for theimplementation 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 apublicly accessible web site. In any event, the portion of any decision determininga complaint to have been brought in bad faith (see Paragraph 15(e) of theseRules) shall be published.

17. Settlement or Other Grounds for Termination

(a) If, before the Panel's decision, the Parties agree on a settlement, the Panelshall terminate the administrative proceeding.

(b) If, before the Panel's decision is made, it becomes unnecessary or impossibleto continue the administrative proceeding for any reason, the Panel shallterminate the administrative proceeding, unless a Party raises justifiable groundsfor 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 anadministrative proceeding in respect of a domain-name dispute that is the subjectof the complaint, the Panel shall have the discretion to decide whether tosuspend or terminate the administrative proceeding, or to proceed to a decision.

(b) In the event that a Party initiates any legal proceedings during the pendencyof an administrative proceeding in respect of a domain-name dispute that is thesubject of the complaint, it shall promptly notify the Panel and the Provider. SeeParagraph 8 above.

19. Fees

(a) The Complainant shall pay to the Provider an initial fixed fee, in accordancewith the Provider's Supplemental Rules, within the time and in the amountrequired. A Respondent electing under Paragraph 5(b)(iv) to have the disputedecided by a three-member Panel, rather than the single-member Panel electedby 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 shallbear all of the Provider's fees, except as prescribed under Paragraph 19(d). Uponappointment of the Panel, the Provider shall refund the appropriate portion, ifany, of the initial fee to the Complainant, as specified in the Provider'sSupplemental Rules.

(b) No action shall be taken by the Provider on a complaint until it has receivedfrom Complainant the initial fee in accordance with Paragraph 19(a).

(c) If the Provider has not received the fee within ten (10) calendar days ofreceiving the complaint, the complaint shall be deemed withdrawn and theadministrative proceeding terminated.


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(d) In exceptional circumstances, for example in the event an in-person hearing isheld, 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 beliable to a Party for any act or omission in connection with any administrative proceedingunder these Rules.

21. Amendments

The version of these Rules in effect at the time of the submission of the complaint to theProvider shall apply to the administrative proceeding commenced thereby. These Rules maynot be amended without the express written approval of ICANN.

Comments concerning the layout, construction and functionality of this siteshould be sent to [email protected].

Page Updated 05-Feb-2002©2000, 2002 The Internet Corporation for Assigned Names and Numbers. All rights reserved.


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National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 1 Effective November 1, 2007

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


(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).


(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


(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.


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.


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);


(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.


(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


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.


17. Fees (U.S. Dollars)

(a) Fees:

Number of Disputed Domain Names

Single-Member Panel Three-Member Panel

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 fee quote.

Please contact the Forum for a 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


(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.

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Domain ID: D155640095-LRORDomain Name: OLDSEMINOLEHEIGHTSFOUNDATION.ORGCreated On: 17-Mar-2009 19: 30: 14 UTCLast Updated On: 17-May-2009 03: 54: 50 UTCExpiration Date: 17-Mar-2011 19: 30: 14 UTCSponsoring Registrar: GoDaddy.com, Inc. (R91-LROR)Status: CLIENT DELETE PROHIBITEDStatus: CLIENT RENEW PROHIBITEDStatus: CLIENT TRANSFER PROHIBITEDStatus: CLIENT UPDATE PROHIBITEDRegistrant ID: GODA-061117418Registrant Name: Christie HessRegistrant Organization: Seminole Heights FoundationRegistrant Street1: 1011 E Broad StRegistrant Street2: Registrant Street3: Registrant City: TAMPARegistrant State/Province: FloridaRegistrant Postal Code: 33604Registrant Country: USRegistrant Phone: +1.8132378808Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] ID: GODA-261117418Admin Name: Christie HessAdmin Organization: Seminole Heights FoundationAdmin Street1: 1011 E Broad StAdmin Street2: Admin Street3: Admin City: TAMPAAdmin State/Province: FloridaAdmin Postal Code: 33604Admin Country: USAdmin Phone: +1.8132378808Admin Phone Ext.: Admin FAX:

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Admin FAX Ext.: Admin Email: [email protected] ID: GODA-161117418Tech Name: Christie HessTech Organization: Seminole Heights FoundationTech Street1: 1011 E Broad StTech Street2: Tech Street3: Tech City: TAMPATech State/Province: FloridaTech Postal Code: 33604Tech Country: USTech Phone: +1.8132378808Tech Phone Ext.: Tech FAX: Tech FAX Ext.: Tech Email: [email protected] Server: NS21.DOMAINCONTROL.COMName Server: NS22.DOMAINCONTROL.COMName 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: D156022879-LRORDomain Name: SOUTHSEMINOLEHEIGHTSFOUNDATION.ORGCreated On: 29-Apr-2009 16: 01: 13 UTCLast Updated On: 29-Apr-2009 16: 01: 15 UTCExpiration Date: 29-Apr-2010 16: 01: 13 UTCSponsoring Registrar: Tucows Inc. (R11-LROR)Status: CLIENT TRANSFER PROHIBITEDStatus: CLIENT UPDATE PROHIBITEDStatus: TRANSFER PROHIBITEDRegistrant ID: tutRGQjVDZt25hXJRegistrant Name: Sherrill SimonsRegistrant Organization: NaRegistrant Street1: 911 E. Shadowlawn AvenueRegistrant Street2: Registrant Street3: Registrant City: TampaRegistrant State/Province: FLRegistrant Postal Code: 33603Registrant Country: USRegistrant Phone: +1.8137899849Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] ID: tuO0B6hHwY5GjOE8Admin Name: Sherrill SimonsAdmin Organization: NaAdmin Street1: 911 E. Shadowlawn AvenueAdmin Street2: Admin Street3: Admin City: TampaAdmin State/Province: FLAdmin Postal Code: 33603Admin Country: USAdmin Phone: +1.8137899849Admin Phone Ext.: Admin FAX: Admin FAX Ext.:




1 of 3 6/24/2009 10:28 AM

Admin Email: [email protected] ID: tu4uI4atpTFxjF47Tech Name: Domain AdministratorTech Organization: IPOWER, Inc.Tech Street1: 70 Blanchard RoadTech Street2: Tech Street3: Tech City: BurlingtonTech State/Province: MATech Postal Code: 01803Tech Country: USTech Phone: +1.8885114678Tech Phone Ext.: Tech FAX: +1.7812726550Tech FAX Ext.: Tech Email: [email protected] Server: NS2.IPOWER.COMName Server: NS1.IPOWER.COMName 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-LRORDomain Name: SOUTHEASTSEMINOLEHEIGHTSFOUNDATION.ORGCreated On: 29-Apr-2009 15: 59: 10 UTCLast Updated On: 29-Apr-2009 15: 59: 11 UTCExpiration Date: 29-Apr-2010 15: 59: 10 UTCSponsoring Registrar: Tucows Inc. (R11-LROR)Status: CLIENT TRANSFER PROHIBITEDStatus: CLIENT UPDATE PROHIBITEDStatus: TRANSFER PROHIBITEDRegistrant ID: tuc59YHaptmuizJrRegistrant Name: Sherrill SimonsRegistrant Organization: NaRegistrant Street1: 911 E. Shadowlawn AvenueRegistrant Street2: Registrant Street3: Registrant City: TampaRegistrant State/Province: FLRegistrant Postal Code: 33603Registrant Country: USRegistrant Phone: +1.8137899849Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] ID: tuscrARLlc5erRLwAdmin Name: Sherrill SimonsAdmin Organization: NaAdmin Street1: 911 E. Shadowlawn AvenueAdmin Street2: Admin Street3: Admin City: TampaAdmin State/Province: FLAdmin Postal Code: 33603Admin Country: USAdmin Phone: +1.8137899849Admin Phone Ext.: Admin FAX: Admin FAX Ext.:




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Admin Email: [email protected] ID: tu7rDfMvfXCB3O4RTech Name: Domain AdministratorTech Organization: IPOWER, Inc.Tech Street1: 70 Blanchard RoadTech Street2: Tech Street3: Tech City: BurlingtonTech State/Province: MATech Postal Code: 01803Tech Country: USTech Phone: +1.8885114678Tech Phone Ext.: Tech FAX: +1.7812726550Tech FAX Ext.: Tech Email: [email protected] Server: NS2.IPOWER.COMName Server: NS1.IPOWER.COMName 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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NEWS WEATHER COMMUNITY ENTERTAINMENT SPORTS LIFESTYLES TOOLS Jobs Autos Homes Deals Shopping|Classifieds

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Tuesday, April 14, 2009

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Foundation To Fill In Gaps http://centraltampa2.tbo.com/content/2009/mar/25/st-foundation-to-fill-in...

1 of 3 4/14/2009 10:02 AM

Email Print

A D V E R T I S E M E N T

MORE FROM THIS CHANNEL

By KATHY STEELE

[email protected]: March 25, 2009

SEMINOLE HEIGHTS - The idea floated around for a couple of years, inmoments of, "Well, what if we did this?" or "Do we go ahead with this?"

A workshop last month plotting out Seminole Heights' future growthcrystallized the obvious. The neighborhood could use a nonprofitfoundation if only to fill in funding gaps the city cannot bridge.

So Christie Hess, Susan Long and Randy Baron incorporated theSeminole Heights Foundation with the state and filed for nonprofit statusas a charity with the Internal Revenue Service.

Hess is chairwoman of crime awareness for Old Seminole HeightsNeighborhood Association; Long and Baron are past presidents of theassociation. But the new foundation is not affiliated with theneighborhood group.Charitable status for the foundation could take a few months, Hess said.The trio are moving forward on finding 10 more people for a 13-memberboard of directors. The first appointment is Sherry Genovar-Simons,president of the Southeast Seminole Heights Civic Association.

"We're not looking for this to be a popularity contest," Hess said. Thegroup wants board members with "real skills" such as legal expertise orfundraising talent, or experience working with nonprofit organizations.

The foundation hopes to have its board in place by October. Preferenceis for board members to come from Seminole Heights, but selectionscould come from outside the neighborhood, Hess said.

The foundation's mission is to search out resources and funding forprojects within the boundaries of the three Seminole Heightsneighborhoods - Old Seminole, Southeast Seminole and SouthSeminole.

Potential projects for the foundation might include crosswalks, gatewaysinto the neighborhood, streetlights, signs and sidewalks. The foundationalso could partner with the city in securing grants that require matchingfunds.Seminole Heights is in the second year of a pilot project to craft newzoning codes that during the next 20 to 50 years will guide theneighborhood's growth. Known as form-based zoning, the codesemphasize the size and appearance of buildings as well as the layout ofstreets and public spaces.

The intent is to create more mixed-use, pedestrian-friendlyneighborhoods.

Traditional zoning generally separates areas based on land use anddecisions of public health and safety, placing shops, homes andfactories in different districts.

The city's zoning staff is working on drafting the codes for review by citycouncil members by the end of the year. Workshops have been held toget 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 trashcans, signs and benches.

"That's where the foundation would fit in," she said. "We can do thingsthat 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" someprojects.

The organizers are asking for projects or goals for Seminole HeightsFoundation. Call Hess at (813) 237-8808 or e-mailinfo@seminoleheights foundation.org or [email protected].

Reporter Kathy Steele can be reached at (813) 259-7652.

Central Tampa > News

Foundation To Fill In Gaps

MORE FROM THIS TOPIC• Money 911: As April 15 Approaches, Keep Tax Breaks In

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• Accident Shuts Down Florida Avenue In Seminole Heights

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• Seminole Heights To Be Proving Ground

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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 CentralClient Identifier: OSHNADatabase: FEDFINDCitation Text: 222 F.3d 895Lines: 904Documents: 1Images: 0

The material accompanying this summary is subject to copyright. Usage is governed by contract with Thomson Reuters,West and their affiliates.

United States Court of Appeals,Eleventh Circuit.

ALLIANCE METALS, INC., OF ATLANTA,Plaintiff-Counter-Defendant-Appellee,

v.HINELY INDUSTRIES, INC., Robert F. Hinely,Jr., Defendants-Counter-Claimants-Appellants,Stephen C. Hinely, et al., Defendants Counter-

Claimants.No. 99-13836.

Aug. 15, 2000.

Corporation sued former employee for breach ofnon-compete agreement and trade name infringe-ment. The United States District Court for theNorthern District of Georgia, No.96-00268-CV-WBH-1,Willis B. Hunt, Jr., J., gran-ted summary judgment for employer, and employeeappealed. The Court of Appeals, Alarcón, CircuitJudge, sitting by designation, held that: (1) non-compete provision in employment contract was en-forceable; (2) employer's alleged breach of employ-ment agreement did not excuse employee's failureto comply with non-competition provision whereemployee failed to give employer contractually re-quired notice and opportunity to cure; and (3) tradename used by employee in competing business in-fringed employer's name.

Affirmed.

West Headnotes

[1] Contracts 95 116(1)

95 Contracts95I Requisites and Validity

95I(F) Legality of Object and of Considera-tion

95k115 Restraint of Trade or Competitionin Trade

95k116 In General

95k116(1) k. In General. MostCited CasesAlthough non-competition covenants are generallydisfavored under Pennsylvania law, exceptions tothis rule exist for covenants that protect (1) buyerof goodwill of business and (2) goodwill acquiredthrough efforts of employee.

[2] Contracts 95 103



95k103 k. Contravention of Law in Gen-eral. Most Cited Cases

Contracts 95 108(1)



95k108 Public Policy in General95k108(1) k. In General. Most Cited

CasesFor contract to be deemed unenforceable as illegalor contrary to public policy, its purpose or objectmust be contrary to law or policy of state.

[3] Contracts 95 116(1)



95k115 Restraint of Trade or Competitionin Trade

95k116 In General95k116(1) k. In General. Most

Cited CasesUnder Pennsylvania law, non-compete provision ofcorporate president's employment contract was notrendered unenforceable as illegal or contrary topublic policy by parent corporation's price fixing

222 F.3d 895 Page 1222 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)

© 2009 Thomson Reuters/West. No Claim to Orig. US Gov. Works.

http://www.westlaw.com/Find/Default.wl?rs=dfa1.0&vr=2.0&DB=PROFILER-WLD&DocName=0124035401&FindType=h

http://www.westlaw.com/KeyNumber/Default.wl?rs=dfa1.0&vr=2.0&CMD=KEY&DocName=95

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violation.

[4] Contracts 95 143(4)

95 Contracts95II Construction and Operation

95II(A) General Rules of Construction95k143 Application to Contracts in Gen-

eral95k143(4) k. Subject, Object, or Pur-

pose as Affecting Construction. Most Cited Cases

Contracts 95 147(1)


95II(A) General Rules of Construction95k147 Intention of Parties

95k147(1) k. In General. Most CitedCases

Contracts 95 154


95II(A) General Rules of Construction95k151 Language of Instrument

95k154 k. Reasonableness of Con-struction. Most Cited CasesIn construing contract, intention of parties is para-mount and court will adopt interpretation which un-der all circumstances ascribes most reasonable,probable, and natural conduct of parties, bearing inmind objects manifestly to be accomplished.

[5] Contracts 95 147(2)


95II(A) General Rules of Construction95k147 Intention of Parties

95k147(2) k. Language of Contract.Most Cited CasesIf language appearing in written agreement is clearand unambiguous, parties' intent is to be discernedsolely from plain meaning of words used.

[6] Contracts 95 143.5


95II(A) General Rules of Construction95k143.5 k. Construction as a Whole.

Most Cited CasesWritings which comprise contractual agreementmust be interpreted as a whole.

[7] Contracts 95 202(2)


95II(C) Subject-Matter95k202 Trade and Business

95k202(2) k. Restriction of Competi-tion. Most Cited Cases

Corporations 101 308(3)

101 Corporations101X Officers and Agents

101X(C) Rights, Duties, and Liabilities as toCorporation and Its Members

101k308 Compensation101k308(3) k. Contracts or Resolu-

tions Providing Therefor. Most Cited CasesUnder Pennsylvania law, alleged constructive dis-charge of corporate president did not release himfrom non-compete agreement; terms of agreement,allowing avoidance only for employer's failure tocure breach after notice or upon termination “byemployer,” indicated parties' intent to foreclose sortof unintentional invalidation that could result fromconstructive discharge.

[8] Contracts 95 202(2)



95k202(2) k. Restriction of Competi-tion. Most Cited CasesEven if employer materially breached employmentcontract, breach did not excuse employee's failure




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to comply with non-competition provision whereemployee failed to give employer contractually re-quired notice and opportunity to cure breach.

[9] Contracts 95 202(2)




Contracts 95 318

95 Contracts95V Performance or Breach

95k318 k. Discharge of Contract by Breach.Most Cited Cases

(Formerly 255k9.5 Master and Servant)Notice that employee considered employer to be inbreach of employment agreement, communicatedorally, in writing and through circumstances, wasinsufficient to satisfy contractual notice provision,which required written notice to be sent in particu-lar manner to particular location, and thus did notrelieve employee of obligations under agreement'snon-compete provision.

[10] Contracts 95 202(2)




Contracts 95 318

95 Contracts95V Performance or Breach

95k318 k. Discharge of Contract by Breach.Most Cited Cases

(Formerly 255k9.5 Master and Servant)Compliance with employment contract's notice ofbreach provision would not have been futile, and

thus employee who failed to comply was not re-lieved of obligations under contract's non-competeprovision, absent showing that compliance wouldnot have been useful to employer; employee failedto pursue available remedy for one breach, failed togive employer meaningful opportunity to cure an-other, and failed to give employer time to preparefor his departure following third, allegedly uncur-able breach.

[11] Trademarks 382T 1200(2)

382T Trademarks382TVI Nature, Extent, and Disposition of

Rights382Tk1197 Transfer or Sale; Assignments

382Tk1200 Construction and Operation382Tk1200(2) k. Duties, Rights, and

Violations. Most Cited Cases(Formerly 382k116 Trade Regulation)

Corporation, which acquired rights to acquired cor-poration's trade name at time of acquisition, did notsubsequently lose those rights through criminalconduct or breach of associated employment con-tract, absent provision for such loss in asset pur-chase agreement.

[12] Trademarks 382T 1691

382T Trademarks382TIX Actions and Proceedings

382TIX(E) Trial and Judgment382Tk1682 Questions of Law or Fact

382Tk1691 k. Similarity; Likelihoodof Confusion. Most Cited Cases

(Formerly 382k704 Trade Regulation)Although likelihood of confusion generally is ques-tion of fact, in trademark infringement action, itmay be decided as matter of law.


382T Trademarks382TIII Similarity Between Marks; Likelihood

of Confusion382Tk1081 k. Factors Considered in General.










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Most Cited Cases(Formerly 382k345.1, 382k340.1, 382k334.1

Trade Regulation)Factors relevant to determination of whether thereis likelihood of confusion, and hence trademark in-fringement, are: (1) strength of plaintiff's mark; (2)similarity between plaintiff's mark and allegedly in-fringing mark; (3) similarity between products andservices offered by plaintiff and defendant; (4) sim-ilarity of sales methods; (5) similarity of advert-ising methods; (6) defendant's intent, e.g., does thedefendant hope to gain competitive advantage byassociating his product with plaintiff's establishedmark; and (7) actual confusion.



of Confusion382Tk1083 Nature of Confusion

382Tk1086 k. Actual Confusion. MostCited Cases

(Formerly 382k350.1 Trade Regulation)

Trademarks 382T 1096


of Confusion382Tk1093 Relationship Between Marks

382Tk1096 k. Particular Marks, Similarityor Confusion Involving. Most Cited Cases

(Formerly 382Tk1096(2), 382k350.1 Trade Reg-ulation)



of Confusion382Tk1100 Relationship Between Goods or

Services Underlying Marks382Tk1103 k. Particular Goods and Ser-

vices, Relationship Between. Most Cited Cases(Formerly 382k350.1 Trade Regulation)

There was a likelihood of confusion between tradenames “Hinely Aluminum, Inc.” and “Hinely In-dustries, Inc.”, and thus defendant's use of formername infringed plaintiff's rights in latter one; nameswere similar, companies were in same business, andthere was ample evidence of actual confusion.*896 Richard N. Hubert,Chamberlain, Hrdlicka,White, Williams & Martin, Atlanta, GA, for De-fendants-Counter-Claimants-Appellants.

James N. Boudreau, Morgan, Lewis & BockiusLLP, Philadelphia, PA, for Alliance Metals, Inc., ofAtlanta.

*897 Appeal from the United States District Courtfor the Northern District of Georgia.

Before BIRCH, BARKETT and ALARCÓN FN*,Circuit Judges.

FN* Honorable Arthur L. Alarcón, U.S.Circuit Judge for the Ninth Circuit, sittingby designation.

ALARCÓN, Circuit Judge:

Robert F. Hinely, Jr., (“Hinely”) appeals from anorder of summary judgment in favor of his formeremployer, Alliance Metals, Inc., of Atlanta(“Alliance Atlanta”), in an action Alliance Atlantabrought against Hinely for breach of his employ-ment contract and trademark infringement. Wehave jurisdiction under 28 U.S.C. § 1291. We re-view the district court's grant of summary judgmentde novo, applying the same standards used by thedistrict court and viewing the facts in the light mostfavorable to the nonmoving party. See Jones v. BillHeard Chevrolet, Inc., 212 F.3d 1356, 1360 (11thCir.2000). Because the district court did not err inconcluding Hinely was obligated to comply withthe non-competition provision of his employmentcontract or in finding no genuine issue of materialfact as to whether Hinely had infringed AllianceAtlanta's right to the trade name Hinely Aluminum,

























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Inc., we affirm.

I

In March 1994, Alliance Atlanta, a wholly ownedsubsidiary of Alliance Metals, Inc., acquired the as-sets of Hinely's company, Hinely Aluminum, Inc.,for $500,000 in cash. Among the assets acquiredwere the Hinely Aluminum, Inc., trade name and“all goodwill relating to the Business as a goingconcern.” Pursuant to a contractual condition of theacquisition, Alliance Atlanta and Hinely alsoentered into a five-year employment contract underwhich Hinely was to serve as Alliance Atlanta'spresident. In that position, Hinely reported directlyto Bradley Evans (“Evans”), chairman and soleshareholder of both Alliance Atlanta and AllianceMetals, Inc.

Under the terms of the employment contract,Hinely was to receive an annual salary of $138,500.In addition, he was to receive a percentage of Alli-ance Atlanta's net sales and net profits as incentivecompensation. Under the terms of the employmentcontract, Hinely was entitled to review any inform-ation on which the calculation of his incentive com-pensation was based. The contract further providedthat

any dispute about the calculation of Incentive Com-pensation ..., the amount due the Employee, orany other matter described herein ... shall bepromptly referred to a “Big Six” accounting firmthat is mutually acceptable to the Employer andthe Employee.... Such accounting firm shall berequired to render a decision as to the appropri-ateness of the objections raised by the Employeewithin thirty (30) days after the submission of thedispute, and any such decision shall be final andbinding on both parties.

[1] The employment contract also contained a non-competition provision providing that

the Employee hereby agrees with Employer thatwhile in the Employer's employ and through the

period ending two (2) years after the terminationof his employment hereunder for any reason, hewill not (either for himself directly or in the ser-vice of or on behalf of any other person, firm,partnership, association, corporation or otherbusiness entity) ... [e]ngage in or render any ser-vices to, or be employed by, any business thatcompetes in the Territory with the Business ofthe Employer, in the capacity of officer, manageror executive employee, director, consultant orshareholder.

*898 The employment contract provided that itwould be “governed by, and construed and enforcedin accordance with the laws of the Commonwealthof Pennsylvania.” Although non-competition cov-enants are generally disfavored under Pennsylvanialaw, exceptions to this rule exist for covenants suchas this one that protect the buyer of the goodwill ofa business, see Piercing Pagoda, Inc. v. Hoffner,465 Pa. 500, 351 A.2d 207, 210 (1976), and thegoodwill acquired through the efforts of an employ-ee, see Sidco Paper Co. v. Aaron, 465 Pa. 586, 351A.2d 250, 252-53 (1976).

Hinely received no incentive compensation for the1994 fiscal year. According to Alliance Atlanta,Hinely was not entitled to any incentive compensa-tion because the company sustained a net loss thatyear. Hinely suspected Alliance Atlanta had manip-ulated its records to hide Alliance Atlanta's netprofit and eliminate Hinely's incentive compensa-tion. Between February and May 1995, he re-peatedly requested, through his attorney and ac-countant, information upon which the calculation ofhis incentive compensation was based. AlthoughHinely asserts that Alliance Atlanta failed to com-ply fully with its contractual duty to provide suchinformation, he never pursued arbitration as re-quired by the employment contract.

On February 17, 1995, Hinely came to suspect theformation of a price fixing agreement betweenEvans and Alliance Atlanta's primary competitor,Wrisco Industries, Inc. On that day, Evans faxedHinely a new price list with a cover note stating









“[n]ew prices for March no exceptions let me knowyour feelings.” Evans later told Hinely that WriscoIndustries, Inc., was charging the same prices.

On advice of his personal counsel, Hinely reportedhis suspicions to the United States Department ofJustice on February 27, 1995. The Department ofJustice initiated an investigation of Evans and Alli-ance Metals, Inc., for violations of the ShermanAct. Hinely continued to work at Alliance Atlantaand cooperated with the Department of Justicethroughout the investigation.

On August 14, 1995, John Webb, the executive vicepresident of Alliance Metals, Inc., hired Jack Bar-ton to be the new sales manager of Alliance At-lanta's Texas office. As sales manager, Barton wasto oversee day-to-day operations of that office.

In an affidavit Hinely filed in opposition to Alli-ance Atlanta's motion for a preliminary injunction,Hinely alleged that he revealed he had been cooper-ating with the Department of Justice at an August25, 1995, meeting with Alliance Atlanta's lawyers.

On September 18, 1995, Webb told Hinely he nolonger had responsibility for the operations of theTexas office. Webb told employees in the Texas of-fice that Hinely was the cause of the troubles Alli-ance Atlanta was having with the Department ofJustice. Hinely's salary and title were unaffected bywhat happened in the Texas office.

In a September 28, 1995, letter to all Alliance At-lanta employees, Evans admitted violating the Sher-man Act and stated that he and Alliance Metals,Inc., were cooperating with the Department ofJustice. On September 29, 1995, the Department ofJustice filed a criminal information charging Evansand Alliance Metals, Inc., with violations of Sher-man Act, 15 U.S.C. § 1.

In a letter to Evans dated October 2, 1995, Hinelystated that his own “employment with AllianceMetals of Atlanta, Inc. is terminated effective im-mediately.” He asserted in the letter that Alliance

Atlanta had breached the employment contract andconstructively discharged him. Hinely alleged thathe was constructively discharged because (1) Alli-ance Atlanta had engaged in price fixing; (2) Alli-ance Atlanta denied him incentive compensation hewas due for fiscal year 1994; (3) Alliance Atlantawould not supply him with information regardingthe calculation of his incentive compensation; (4)Alliance Atlanta *899 relieved him of his duties atthe Texas office; and (5) Alliance Atlanta blamedhim for the company's legal troubles.

On October 6, 1995, Hinely incorporated a compet-ing enterprise offering similar products in the sameterritory serviced by Alliance Atlanta. He called hisnew venture Hinely Industries, Inc.

On February 2, 1996, Alliance Atlanta filed this ac-tion, alleging breach of contract and trademark in-fringement. On May 28, 1996, the district courtgranted Alliance Atlanta's motion for a preliminaryinjunction prohibiting Hinely's new venture fromgoing forward under the name Hinely Industries,Inc. Hinely subsequently renamed his new companyRobert & Sons Aluminum, Inc.

On August 22, 1997, after extensive discovery, Al-liance Atlanta filed a motion for summary judgmenton its breach of contract and trademark infringe-ment claims. On February 19, 1998, the districtcourt granted partial summary judgment in favor ofAlliance Atlanta, finding Alliance Atlanta was en-titled to summary judgment on the claim thatHinely breached the non-competition provision ofhis employment contract. The district court alsoconcluded there was no genuine issue of materialfact as to Alliance Atlanta's ownership of rights tothe Hinely Aluminum, Inc., trade name or as to thelikelihood of confusion between that name andHinely Industries, Inc.

On September 22, 1998, the district court deniedHinely's motion for reconsideration. On July 23,1999, the parties stipulated to judgment on the re-maining issues, including the amount of damages.The district court entered a final judgment in favor




of Alliance Atlanta for $291,633, on August 31,1999. Hinely filed a timely notice of appeal onSeptember 28, 1999.

II

A

Hinely does not dispute that his actions were con-trary to the terms of the non-competition provisionof his employment contract. Instead, he contendsthe district court erred in concluding he was oblig-ated to comply with the non-competition provision.Hinely first argues that he was not obligated tocomply with the non-competition provision becauseAlliance Atlanta's price fixing rendered his entireemployment contract unenforceable as illegal andcontrary to public policy.

[2][3] For a contract to be deemed unenforceable asillegal or contrary to public policy, its purpose orobject must be contrary to a law or policy of thestate. See In re Mohler's Estate, 343 Pa. 299, 22A.2d 680, 682 (1941) (“[T]here is general consentthat contracts entered into for the purpose of re-warding criminal acts or effectuating some illegalobject are void and the courts strike such contractsdown.”); see also Zlotziver v. Zlotziver, 355 Pa.299, 49 A.2d 779, 781 (1946) (“[A] contract is il-legal if it has for its object the procurement of a di-vorce, as where the husband or the wife agrees toinstitute, or not to defend, a suit for that purpose.”).An agreement between Alliance Metals, Inc., andWrisco Industries, Inc., to fix prices, for example,would be an unenforceable contract. See Ford Mo-tor Co. v. Sweeten Auto. Co., 318 Pa. 177, 178 A.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, isillegal.’ ”) (quoting Restatement (First) of Con-tracts § 517 (1932)) (emphasis added); see alsoRe-statement (Second) of Contracts § 186(1) & (2)(1979) (“A promise is unenforceable on grounds ofpublic policy if it is unreasonably in restraint of

trade. A promise is in restraint of trade if its per-formance would limit competition in any busi-ness....”). The contract in issue here, however, hadas its object the employment of Hinely as AllianceAtlanta's president, not price fixing.

Additionally, Hinely incorrectly assumes that, ifany term of his employment contract was unen-forceable, that would necessarily render the entirecontract unenforceable.*900 See Restatement(Second) of Contracts Chapter 8, Topic 1 introduct-ory note (1979) (“Even where both parties makepromises, the analysis usually begins with the ques-tion of the enforceability of one promise or term of[the contract]. Sometimes the unenforceability ofthat promise or term will result in the unenforceab-ility of other promises and the denial of any reliefto either party. The law, however, is not necessarilyso severe.”); id. at § 178 (discussing “When a Termis Unenforceable on Grounds of Public Policy”).The “General Provisions” section of Hinely's em-ployment contract expressly provided for the sever-ability of any “particular provision of [the contract]adjudicated to be invalid or unenforceable.”

Alliance Atlanta did not obtain a judgment againstHinely for breach of contract based on a refusal orfailure by him to perform illegal acts in fulfillmentof his contractual duties as president. Rather, thedistrict court entered judgment for Alliance Atlantabased on Hinely's failure to comply with the non-competition provision. Hinely does not challengeon appeal the district court's conclusion that thenon-competition provision was enforceable.Hinely's argument that Alliance Atlanta's price fix-ing rendered the non-competition provision unen-forceable as illegal and contrary to public policytherefore fails.

B

Hinely next argues that the non-competition provi-sion was null and void by its own terms. In supportof this argument, he points to the passage within thenon-competition provision providing that it













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shall be null and void in the event Employee is ter-minated by Employer without cause or if the Em-ployer materially breaches the terms of thisagreement and fails to cure any such materialbreach within thirty (30) days after notice fromthe Employee specifying the breach and requiringit to be cured.

Hinely contends that the non-competition provisionwas null and void because (1) he was constructivelydischarged from Alliance Atlanta; and (2) AllianceAtlanta materially breached the employment con-tract.

1

Hinely maintains that he was constructively dis-charged and that the constructive dischargerendered the non-competition provision null andvoid by its own terms as a “terminat[ion] by Em-ployer without cause.” In rejecting Hinely's con-structive discharge defense, the district court foundthat Hinely failed to meet his burden of“produc[ing] evidence from which a reasonablefinder of fact could conclude that his working con-ditions were so intolerable that a reasonable personin his position would be compelled to resign.” SeeHighhouse v. Avery Transp., 443 Pa.Super. 120,660 A.2d 1374, 1376 (1995); see also Graham v.State Farm Mut. Ins. Co., 193 F.3d 1274, 1284(11th Cir.1999). The district court did not reach thequestion whether a constructive discharge consti-tuted a “terminat[ion] by Employer without cause.”We may, however, affirm the grant of summaryjudgment on any ground fairly supported by the re-cord. See Rozar v. Mullis, 85 F.3d 556, 564 (11thCir.1996). Interpretation of a contract poses a ques-tion of law. See Charles D. Stein Revocable Trust v.General Felt Indus., Inc., 749 A.2d 978, 980(Pa.Super.2000).

Pennsylvania courts have neither permitted nor pro-hibited predicating breach of an employment con-tract on a constructive discharge. Courts in otherstates, however, have recognized that a constructive

discharge may constitute a breach of an employ-ment contract permitting termination only forcause. See, e.g., Tennyson v. School Dist., 232Wis.2d 267, 606 N.W.2d 594, 602 (1999) ( “Where,as here, an employer's written policy guarantees itsemployees that they will not be discharged withoutcause, a constructive discharge without cause con-stitutes a breach of contract.”); Turner v. Anheuser-Busch, Inc., 7 Cal.4th 1238, 32 Cal.Rptr.2d 223,876 P.2d 1022, 1030 (Cal.1994) (“An employee*901 may prove ... that a constructive discharge is abreach of an express or implied contract of employ-ment.”); Hammond v. Katy Indep. Sch. Dist., 821S.W.2d 174, 177 (Tex.App.1991).

[4][5][6] To determine the effect of a constructivedischarge on the rights and duties of the parties inthis case, we must look to the contract in issue. SeeWarehime v. Warehime, 722 A.2d 1060, 1072(Pa.Super.1998) ( “When the parties to an agree-ment have chosen to address a particular aspect oftheir legal relationship by contract, it is the terms ofthe agreement, as manifestly expressed, that is todetermine the rights and liabilities of the parties.”);see also Turner, 32 Cal.Rptr.2d 223, 876 P.2d at1030 (“Standing alone, constructive discharge isneither a tort nor a breach of contract, but a doc-trine that transforms what is ostensibly a resigna-tion into a firing. Even after establishing construct-ive discharge, an employee must independentlyprove a breach of contract or tort....”). “ ‘In con-struing a contract, the intention of the parties isparamount and the court will adopt an interpretationwhich under all circumstances ascribes the mostreasonable, probable, and natural conduct of theparties, bearing in mind the objects manifestly to beaccomplished.’ ” Charles D. Stein Revocable Trust,749 A.2d at 980 (quoting Village Beer & Beverage,Inc. v. Vernon D. Cox & Co., Inc., 327 Pa.Super.99, 475 A.2d 117, 121 (1984)). If the language ap-pearing in the written agreement is clear and unam-biguous, the parties' intent is to be discerned solelyfrom the plain meaning of the words used. See id. “‘[W]ritings which comprise an agreement must beinterpreted as a whole.’ ” Id. (quoting Village Beer,









































475 A.2d at 121).

The non-competition provision of the employmentcontract reads as follows:

10. Non-Competition.

A. The Employee hereby acknowledges the follow-ing:

(1) That, as a shareholder of Hinely Aluminum,Inc., he has received substantial benefit fromthe purchase by Employer of substantially allof the assets of Hinely Aluminum, Inc. pursu-ant to the Asset Purchase Agreement;

(2) That Employee's position with Employer placeshim in a position of confidence and trust withthe customers and Employees of Employer andallows him access to “confidential or propriet-ary information” (as defined in paragraph 11hereof) of the Employer;

(3) That the type and periods of restrictions im-posed by the covenants in this Section 10 arefair and reasonable and such restrictions willnot prevent Employee from earning a liveli-hood; and

(4) That the business of the Employer is, in general,a highly competitive business.

B. Having acknowledged the foregoing matters inSection 10A above, the Employee hereby agreeswith Employer that while in the Employer's em-ploy and through the period ending two (2) yearsafter the termination of his employment hereun-der for any reason, he will not (either for himselfdirectly or in the service of or on behalf of anyother person, firm, partnership, association, cor-poration or other business entity):

(1) Solicit, contact, call upon, communicate with orattempt to communicate with any customer (orprospective customer) of the Employer withwhom Employee has had any contact duringthe two-year period immediately preceding the

termination of his employment with the Em-ployer, for the purpose of acquiring or obtain-ing the fabrication, distribution or sale of alu-minum or other metal products from any busi-ness other than Employer;

(2) Solicit, divert or hire away, or attempt to solicit,divert or hire away, any person (other than hissons) then *902 employed by the Employer (oremployed at any time by the Employer in thetwo years prior to the termination of Employ-ee's employment);

(3) Engage in, or render any services to, or be em-ployed by, any business that competes in theTerritory with the Business of the Employer, inthe capacity of officer, manager or executiveemployee, director, consultant or shareholder;

(4) Invest in, loan money to, or guarantee all or anypart of the obligations of, any person, firm,partnership, association, corporation or otherbusiness that competes in the Territory with theBusiness of the Employer....

(D) Paragraph 10(B) above shall be null and voidin the event Employee is terminated by Employerwithout cause or if the Employer materiallybreaches the terms of this agreement and fails tocure any such material breach within thirty (30)days after notice from the Employee specifyingthe breach and requiring it to be cured.

(emphasis added).

[7] The language of the non-competition provisiondemonstrates that Alliance Atlanta bargained for acommitment from Hinely that he would not start,participate in, or assist any competitive enterprisefor two years after his departure from Alliance At-lanta. The sweeping nature of this provision, in-cluding the fact that Hinely was obligated underparagraph 10(B) regardless of the reason for histermination, demonstrates that Alliance Atlanta bar-gained for assurance that Hinely would not leaveAlliance Atlanta and appropriate for himself the




business he had helped Alliance Atlanta build.

The express terms of the two narrow “escapeclauses” included in paragraph 10(D) indicate thatAlliance Atlanta intended to foreclose the possibil-ity that it might inadvertently forfeit the bargained-for protection of the non-competition provision.One of the two escape clauses provided that thenon-competition provision would become null andvoid if, after thirty days notice to Alliance Atlantaand its lawyer, Alliance Atlanta failed to cure a ma-terial breach of the employment contract. The in-clusion of the thirty-day notice requirement mani-fests an intent to foreclose inadvertent invalidationof the non-competition provision by an unrecog-nized material breach.

A “terminat[ion] by Employer without cause” wasthe second escape clause the parties included inparagraph 10(D). We think it significant that theparties inserted the language “by Employer” hereinstead of using a more common and generic phras-ing like “termination without cause” or“termination for other than cause.” The latter phras-ing was used elsewhere in the employment contractitself.FN1 A “terminat[ion] by Employer withoutcause,” as opposed to a “termination without cause”or “termination for other than cause,” contemplatesa conscious choice by Alliance Atlanta to terminateHinely without cause in order to free him from hiscontractual duty not to compete.

FN1. Paragraph 9(C) of the employmentcontract provided:

C. Payments in the Event of Terminationfor Other than Cause.

If the Employee is terminated for reasonother than cause, compensation pay-ments shall continue for the remainder ofthe five (5) year Employment Period onthe same basis as established in para-graph 4 hereof, including Base Salary,Incentive and Additional Incentive Com-pensation.

We conclude that the language “terminat[ion] byEmployer without cause” manifests the intent toforeclose the sort of unintentional invalidation ofthe non-competition provision that could resultfrom a constructive discharge. See EEOC v. MasseyYardley Chrysler Plymouth, Inc., 117 F.3d 1244,1250-51 (11th Cir.1997) (noting that a showing ofemployer willfulness is not required to establish aconstructive discharge); see also *903Pittman v.Hattiesburg Mun. Separate Sch. Dist., 644 F.2d1071, 1077 (5th Cir.1981) (stating that, to establisha constructive discharge, an employee does notneed to prove that an employer subjectively inten-ded to force the employee to resign); Bourque v.Powell Elec. Mfg. Co., 617 F.2d 61, 65 (5thCir.1980) (noting that the conditions endured,rather than the employer's state of mind, are relev-ant to the constructive discharge inquiry). Wetherefore hold that an alleged constructive dis-charge would not constitute a “terminat [ion] byEmployer without cause” so as to render null andvoid the non-competition provision of the employ-ment contract.

2

Hinely next contends that he was not obligated tocomply with the non-competition provision becauseAlliance Atlanta materially breached the employ-ment contract by engaging in illegal price fixing, bydepriving Hinely of his supervisory responsibilityfor the Texas office, and by failing to account fullyfor denying Hinely incentive compensation. In en-tering summary judgment for Alliance Atlanta onits breach of contract claim, the district court con-cluded that, even if Alliance Atlanta had materiallybreached the employment contract, the breach didnot excuse Hinely's failure to comply with the non-competition provision because Hinely failed to giveAlliance Atlanta the requisite notice and opportun-ity to cure the breach.

i















[8] Hinely argues that Alliance Atlanta breachedthe employment contract before he did and that thecompany's antecedent breach excused him from anyfurther performance under the contract, includingadherence to the non-competition provision. If wewere to so hold, we would effectively render mean-ingless contractual “notice and cure” requirementslike the one included in the non-competition provi-sion here. Hinely cites no Pennsylvania authority tosupport the adoption of such a rule, and we declineto do so. See Bethlehem Steel Corp. v. MATX, Inc.,703 A.2d 39, 42 (Pa.Super.1997) (“A court may notdisregard a provision in a contract if a reasonablemeaning may be ascertained therefrom. In constru-ing a contract, each and every part of it must betaken into consideration and given effect, if pos-sible ....”) (alterations, quotations, and citationomitted); see also In re Colony Square Co., 843F.2d 479, 481 (11th Cir.1988) (rejecting a litigant'sclaim of breach because that litigant failed to com-ply with a contractual “notice and cure” provision)(citing Orkin Exterminating Co. v. Stevens, 130Ga.App. 363, 203 S.E.2d 587, 593 (1973) (“Thefailure to give notice as required ... is an independ-ent bar to the maintenance of a successful cause ofaction on the contract.”)).

ii

[9] In Hinely's brief filed in opposition to AllianceAtlanta's motion for summary judgment, he con-ceded that he “did not inform Alliance Atlanta oftheir breach prior to October 2nd.” On appeal,however, Hinely argues that he “effectively” gaveAlliance Atlanta notice of the alleged materialbreaches well before he left Alliance Atlanta andstarted his competing venture. In support of this ar-gument, Hinely contends (1) that Alliance Atlantawas aware of the price fixing investigation and hisrole in prompting it; (2) that a May 31, 1995, letterfrom Hinely's lawyer to Alliance Atlanta's lawyernotified them that the company was not in compli-ance with the employment contract because it failedto provide information relating to the denial of in-centive compensation; and (3) that, on learning that

he would no longer have supervisory responsibilityfor the Texas office, he orally informed Webb thathe considered it a breach of his employment con-tract.

“When parties define the terms used in a contract,those definitions govern the construction of thecontract.” See *904Eannarino v. Eannarino, 294Pa.Super. 81, 439 A.2d 760, 761 (1982); see alsoColony Square Co., 843 F.2d at 481 (“Contractswhich set forth the manner in which a party mustexercise a remedy in the event of a default must bestrictly adhered to.... Accordingly, when a defaultclause contains a notice provision, it must bestrictly followed ....”) (citations omitted). Here, the“General Provisions” section of the employmentcontract included the following definition of theterm “notice:”

All notices, requests, and other communications toany party shall be in writing and sufficient if de-livered personally, sent by registered or certifiedmail, postage prepaid, return receipt requested, orby nationally recognized overnight courier ser-vice, addressed as follows:

If to the Employer, at: Alliance Metals, Inc. of At-lanta [address omitted]

With a copy to: C. Barry Buckley, Esquire [addressomitted]

Hinely failed to demonstrate that he sent writtennotice to Alliance Atlanta and Buckley specifying amaterial breach and requiring it to be cured. TheMay 31, 1995, letter was addressed and sent only toBuckley and not to Alliance Atlanta. That letterread:

Pursuant to paragraph (5)(b) of the EmploymentAgreement between Alliance Metals and RobertF. Hinely, Jr., Alliance is to provide RobertHinely with copies of all information and materi-als he requires to complete his review of Alli-ance's calculation of Incentive Compensation.Robert's accountant, Barry Franklin, has yet to

















receive any response to his February 9, 1995, re-quest for information from Mr. Gerald G. Storch,Alliance's accountant, in connection withRobert's review of the calculation of IncentiveCompensation. Additionally, I have not receivedany response to my phone calls and letters to youregarding this matter.

I would greatly appreciate it if you would favor mewith a response as to the status of this matter assoon as possible.

Even if the letter had been sent to Alliance Atlantain addition to Buckley, it stops short of “specifyingthe breach and requiring it to be cured” as is neces-sary under the notice requirement of the non-competition provision. We conclude that Hinelyfailed to demonstrate that he gave notice of any ofthe alleged breaches sufficient to satisfy the re-quirement of notice as that term is defined in theemployment contract.

iii

Hinely next argues that notice would have been fu-tile and that he was therefore excused from comply-ing with the notice requirement of the non-competition provision. Alliance Atlanta contendsthat Hinely did not raise the defense of futility be-fore the district court and that this court shouldtherefore decline to consider this defense.

Hinely's brief in opposition to the motion for sum-mary judgment included the following argument:

Alliance Atlanta argues that Hinely did not give Al-liance Atlanta an opportunity to cure theirbreach.... Even if Hinely was required to give Al-liance Atlanta an opportunity to cure its breach,the damage resulting from the price-fixing hadalready occurred, making the breach“incurable” because damages could not havebeen mitigated at that point. Regarding thebreach resulting from the reduction of Hinely'semployment duties, after Hinely sent his October2nd [resignation] letter to Alliance Atlanta, Alli-

ance Atlanta failed to notify Hinely that itplanned to cure the breach by reinstating hisTexas responsibilities. Consequently, with regardto both breaches, Alliance Atlanta's opportunityto cure was either not utilized by Alliance Atlantaor no logical cure was available.

*905 (emphasis added). In his unsuccessful motionfor reconsideration, Hinely asserted that “any no-tice [he] could have given to [Alliance Atlanta]would have been futile.” Although the district courtnever squarely addressed Hinely's futility argument,we decline to deem it waived. See Damiano v. FD-IC, 104 F.3d 328, 332-33 n. 6 (11th Cir.1997)(noting that waiver doctrine is a rule of practice theapplication of which is a matter of appellate courtdiscretion).

The futility doctrine flows out of the principle that“the law does not require the performance of vainor 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., 60Pa.Super. 151 (1915)); see also Wolff & Munier,Inc. v. Whiting-Turner Contracting Co., 946 F.2d1003, 1009 (2d Cir.1991) (noting that a party to acontract may be excused from complying with a no-tice requirement if notice would be a “useless ges-ture”) (citing, among others, Craddock v. GreenhutConstr. Co., Inc., 423 F.2d 111, 115 (5thCir.1970)). On summary judgment, Hinely bore theburden of introducing evidence to support a reason-able finding that giving notice of the allegedbreaches would have been useless. See Gey v. Beck,390 Pa.Super. 317, 568 A.2d 672, 680 (1990) (in adifferent context, stating that the party asserting fu-tility bears the burden of proving it); Beattie v.Commonwealth Unemployment Compensation Bd.of Review, 92 Pa.Cmwlth. 324, 500 A.2d 496, 499(1985) (same); see also General American Life Ins.Co. v. AmSouth Bank, 100 F.3d 893, 901 (11thCir.1996) (noting that a litigant asserting a defensein opposition to summary judgment bears the bur-den of presenting evidence sufficient to establishthat defense). The parties to this appeal agree that































the futility of giving notice is an issue of fact. Bothparties, however, urge this court to decide the issueas a matter of law in their respective favor.

[10] In his brief filed in opposition to the motionfor summary judgment and in his motion for recon-sideration, Hinely failed to point to any evidence,or even argue, that notice would have been futilewith respect to Alliance Atlanta's alleged failure toaccount fully for denying him any incentive com-pensation. Indeed, it was undisputed in the recordbefore the district court that, when Hinely left Alli-ance Atlanta on October 2, 1995, he had not soughtarbitration of his grievance as required by the in-centive compensation provision of the employmentcontract. We conclude that Hinely failed to meet hisburden of demonstrating that notice with respect tothis alleged breach would have been useless.

With regard to the futility of notifying Alliance At-lanta that he deemed the deprivation of his super-visory responsibility for the Texas office a materialbreach, Hinely asserted in his opposition brief that“after [he] sent his October 2nd letter to AllianceAtlanta, Alliance Atlanta failed to notify Hinelythat it planned to cure the breach by reinstating hisTexas responsibilities.” The mere fact that AllianceAtlanta did not attempt to cure the deprivation ofresponsibility after Hinely had already left the com-pany does not support a reasonable conclusion thatAlliance Atlanta could not or would not have curedthis alleged breach had it been formally confrontedwith the threat of liberating Hinely from his obliga-tions under the non-competition provision.Moreover, the loss of supervisory responsibility ofwhich Hinely complains appears, on its face, to bereversible and therefore curable. We conclude thatHinely failed to meet his burden of demonstratingthat notice with respect to this alleged breach wouldhave been useless.

Finally, with regard to the futility of notifying Alli-ance Atlanta that he deemed the company's pricefixing a material breach, Hinely relies solely on thecharacter of the alleged breach itself. He assertsthat, once Alliance Atlanta entered into the price

fixing conspiracy, there was no going back.Hinely's allegation would support a reasonable con-clusion that giving notice *906 would have beenuseless to Hinely. It would not, however, supportthe conclusion that receiving notice would havebeen useless to Alliance Atlanta. Cf. L.K. Comstock& Co. v. United Eng'rs & Constructors, Inc., 880F.2d 219, 232 (9th Cir.1989) (excusing contractor'sfailure to comply with a 48-hour “notice and cure”provision before terminating subcontract because“for [the contractor] to give 48-hour notice wouldhave been a useless gesture in terms of any benefitsto [the subcontractor ]”) (emphasis added).

Here, even if the alleged breach proved to be incur-able, the bargained-for requirement of notice theparties included in the non-competition provisionserved to prevent inadvertent invalidation of thatprovision by an unrecognized material breach. At aminimum, receiving notice would have given Alli-ance Atlanta thirty days to brace itself for Hinely'stransition from compatriot to competitor. Depend-ing on how early in the progression of eventsHinely had given notice to Alliance Atlanta and itslawyer, receiving notice may even have induced Al-liance Atlanta to abandon the price fixing conspir-acy and minimize its exposure to criminal penaltiesand related consequences.

That Alliance Atlanta could have benefitted fromnotice alone distinguishes this case from manycases in which courts have excused a party's failureto comply with a “notice and cure” provision on theground of futility. In those cases, the party seekingto enforce the provision typically disavowed anyfurther performance under the contract prior to thetime the other party should have given notice. See,e.g., Wolff & Munier, Inc., 946 F.2d at 1009(affirming the district court's finding that “strict ad-herence to the ... two-day cure provision wouldhave been a ‘useless act’ in the face of the[breaching party's] abandonment of the job and itsunjustified ultimatums”); Solitron Devices, Inc. v.Honeywell, Inc., 842 F.2d 274, 278 (11th Cir.1988)(“By letter ... Solitron itself expressly repudiated












the subcontract. Once Solitron had itself terminatedthe contract, a cure notice from Honeywell wouldhave served no purpose.”); United States v. DigitalProds. Corp., 624 F.2d 690, 694 (5th Cir.1980)(where one party sent a telegram stating that it“hereby terminates all efforts on subject contract,”holding that the other party was not obligated tofollow the contractual requirement of notice and aten-day curative period). In such circumstances, no-tice of the breach would be useless to the breacher,whose own conduct renders notice a redundant,empty formality.

Hinely failed to meet his burden of demonstratingthat notifying Alliance Atlanta that he consideredthe company's price fixing a material breach wouldhave been useless to Alliance Atlanta. The districtcourt therefore did not err in failing to find a genu-ine issue of material fact as to whether he was ex-cused from complying with the notice requirementof the non-competition provision.

III

Hinely argues that the district court erred in con-cluding Alliance Atlanta was entitled to summaryjudgment on its claim of trademark infringement.To prevail on this claim, Alliance Atlanta had to es-tablish (1) that it had a right to the trade name at is-sue, Hinely Aluminum, Inc.; and (2) that the tradename Hinely adopted, Hinely Industries, Inc., wasconfusingly similar to that trade name, such thatHinely's use of the name created a likelihood ofconfusion among consumers as to the origin ofgoods sold. See Conagra, Inc. v. Singleton, 743F.2d 1508, 1512 (11th Cir.1984).

A

[11] It is undisputed that Alliance Atlanta acquiredthe rights to the Hinely Aluminum, Inc., trade namewhen it acquired the assets of Hinely Aluminum,Inc., on March 22, 1994. Hinely argues, however,that Alliance Atlanta lost its *907 rights to thename when it breached the employment contract.

Hinely's argument rests on the theory that the assetpurchase contract and the employment contractwere part of one transaction, and that the breachesof the employment contract he alleges thereforealso constituted breaches of the asset purchase con-tract. Hinely further contends that perpetration ofcriminal conduct under the name of Hinely Alumin-um, Inc., was a direct breach of the asset purchasecontract.

If a contract involves clear and unambiguous terms,we “need only examine the writing itself to give ef-fect to the parties' understanding.” Harrity v. Med-ical College of Pennsylvania Hosp., 439 Pa.Super.10, 653 A.2d 5, 10 (1994). The asset purchase con-tract provided, in pertinent part:

1.1 Purchase and Sale.

(a) The Seller shall sell, convey, transfer and assignto the Purchaser, and the Purchaser shall pur-chase from the Seller, on the Closing Date (asdefined below), the Acquired Assets.“Acquired Assets” shall mean all of the follow-ing real property, personal property assets(tangible or intangible), and rights of the Sellerused or held in connection with the Business ...

(i) all Seller's trade names, trademarks and servicemarks.

....

1.4 Closing.

The closing (the “Closing”) for the consummationof the transactions contemplated by this Agree-ment shall take place ... at 10:00a.m. (east coasttime) on March 22, 1994 or such other date andtime agreed to by the Seller and the Pur-chaser....

1.5 Instruments of Conveyance and Transfer.

At the Closing, the Seller shall deliver to the Pur-chaser such bills of sale, endorsements, assign-ments and other instruments of transfer, con-













veyance and assignment ... as shall be neces-sary to transfer, convey and assign the Ac-quired Assets to the Purchaser.

Under the terms of the asset purchase contract, Al-liance Atlanta fulfilled its contractual duties relat-ing to the acquisition of the trade name Hinely Alu-minum, Inc., at the closing that took place onMarch 22, 1994. Once Hinely sold the name to Al-liance Atlanta, the company was free to use thename in any manner it deemed fit. The district courtdid not err in finding there was no genuine issue ofmaterial fact as to Alliance Atlanta's rights to thetrade name Hinely Aluminum, Inc.

B

[12] Hinely also argues that the district court erredin deciding likelihood of confusion as a matter oflaw. In support of this argument, he first contendsthat likelihood of confusion is a jury question. Al-though likelihood of confusion generally is a ques-tion of fact, it may be decided as a matter of law.See Conagra, 743 F.2d at 1514-15. Indeed, thiscourt has decided likelihood of confusion as a mat-ter of law in the first instance. See id. at 1514.

[13] The following factors are relevant in determin-ing whether there is a likelihood of confusion: (1)the strength of the plaintiff's mark; (2) the similar-ity between the plaintiff's mark and the allegedlyinfringing mark; (3) the similarity between theproducts and services offered by the plaintiff anddefendant; (4) the similarity of the sales methods;(5) the similarity of advertising methods; (6) the de-fendant's intent, e.g., does the defendant hope togain competitive advantage by associating hisproduct with the plaintiff's established mark; and(7) actual confusion. See Conagra, 743 F.2d at1514. The most persuasive evidence in assessingthe likelihood of confusion is proof of actual confu-sion. See id. at 1514-15 (finding likelihood of con-fusion as a matter of law based on evidence of mis-directed inquiries from distributors, suppliers, pro-spective employees and customers, as well as mis-

directed billing invoices).

*908 [14] The district court did not err in findingthat the evidence before it compelled the conclusionthat there was a likelihood of confusion betweenthe trade names Hinely Aluminum, Inc., and HinelyIndustries, Inc. There was no dispute that the twomarks are similar. It was also undisputed that bothcompanies distribute prefinished aluminum sheetsand sign blanks in the same territory. Most import-antly, there was ample undisputed evidence beforethe district court of actual confusion.

Melissa Hough, Alliance Atlanta's controller, al-leged in an affidavit that Alliance Atlanta receivedmany payments from its former customers forgoods those customers bought from Hinely Indus-tries, Inc. Filed in support of Hough's affidavit werecopies of more than a dozen checks Alliance At-lanta received for goods sold by Hinely Industries,Inc., that were made payable to “Hinely Alumin-um.” One such check was made payable to “HinelyAluminum Industries Inc.”

In her affidavit, Hough also alleged that AllianceAtlanta received invoices from vendors and credit-ors billing “Hinely Aluminum” for goods and ser-vices purchased by Hinely Industries, Inc. She at-tached copies of seven such invoices. She also al-leged that vendors delivered goods ordered by Alli-ance Atlanta to Hinely Industries, Inc., and viceversa. Additionally, Alliance Atlanta introduced thedeposition testimony of aluminum buyers thatdemonstrated confusion. For example, when askedin a deposition whether he was “confused as to thedifference between Hinely Industries and HinelyAluminum and Alliance Metals, Inc. of Atlanta,”aluminum buyer Robert Goldstucker replied,“[e]xtremely.”

Hinely argues that, in finding likelihood of confu-sion as a matter of law, the district court failed toconsider his explanation for the evidence of confu-sion. He alleges that Alliance Atlanta received mailintended for Hinely Industries, Inc., because of aforwarding 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 notraise a genuine issue of material fact when placedbeside the extensive evidence of confusion intro-duced by Alliance Atlanta.

The numerous checks and invoices Alliance Atlantareceived that were intended for Hinely Industries,Inc., were not simply misrouted; they referred tothe wrong company, “Hinely Aluminum,” by name.Furthermore, the misdirected deliveries Hough de-scribed came directly from vendors, not the UnitedStates Postal Service. Lastly, the forwarding ordercould not explain testimony of customers like Gold-stucker reporting confusion as to the differencebetween Hinely Industries, Inc., and Hinely Alu-minum, Inc. The district court did not err in findingas a matter of law that there was a likelihood ofconfusion between Hinely Industries, Inc., andHinely Aluminum, Inc.

IV

Hinely found himself in an unenviable positionwhen he came to suspect his employer of unlawfulanticompetitive activity. His decision to report hissuspicions to the Department of Justice is to becommended. Neither the righteousness of that ac-tion nor the wrongfulness of Evans's and AllianceMetals, Inc.'s conduct, however, excuses Hinely'sformation of a competing enterprise that violatedboth the non-competition provision of his employ-ment contract and Alliance Atlanta's trademarkrights. 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 EmployeeBenefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048

END OF DOCUMENT




Date/Time of Request: Monday, July 6, 2009 12:01 CentralClient Identifier: OSHNADatabase: FSFINDCitation Text: 731 F.Supp. 480Lines: 657Documents: 1Images: 0


United States District Court,S.D. Florida.

AMERICAN UNITED LIFE INSURANCE COM-PANY, an Indiana corporation, Plaintiff,

v.AMERICAN UNITED INSURANCE COMPANY, a

Florida corporation, Defendant.No. 89-6191-Civ.

Feb. 8, 1990.

Life and health insurance company sued to enjoin auto-mobile insurer's alleged unfair competition, trade nameinfringement, and dilution of its trade name. The Dis-trict Court, James Lawrence King, Chief Judge, heldthat: (1) plaintiff was entitled to injunctive relief underunfair competition provisions of Lanham Trade-MarkAct; (2) plaintiff was not guilty of any laches, such aswould prevent it from suing to enjoin defendant's in-fringing activities; and (3) defendant was liable for over$95,000 in attorney fees and over $10,000 in costsbased on its failure to make even the slightest inquiryregarding plaintiff's prior use of name.

So ordered.

West Headnotes

[1] Trademarks 382T 1714(3)


382TIX(F) Injunctions382Tk1712 Permanent Injunctions

382Tk1714 Grounds and Subjects of Relief382Tk1714(3) k. Unfair Competition.

Most Cited Cases(Formerly 382k646)

Life and health insurance company was entitled to in-junctive relief under the unfair competition provisionsof the Lanham Trade-Mark Act to prevent automobileinsurance company from using deceptively similar, ar-

bitrary trade name which first company had previouslyused and under which it had built up good reputation forover 50 years. Lanham Trade-Mark Act, § 43(a), asamended, 15 U.S.C.A. § 1125(a).


382T Trademarks382TVIII Violations of Rights

382TVIII(A) In General382Tk1418 Practices or Conduct Prohibited in

General; Elements382Tk1420 k. Unfair Competition. Most

Cited Cases(Formerly 382k641)

To prevail on claim for injunctive relief under unfaircompetition provisions of Lanham Trade-Mark Act,plaintiff must demonstrate that it is prior owner of tradename or service mark, and that defendant has adoptedthe same or a confusingly similar trade name or servicemark, thereby creating a likelihood of customer confu-sion as to proper origin of goods or services, such thatcustomer is likely to believe that defendant's goods orservices are being sold with consent or authorization ofplaintiff, or that defendant is affiliated with or connec-ted to plaintiff. Lanham Trade-Mark Act, § 43(a), asamended, 15 U.S.C.A. § 1125(a).




382Tk1714 Grounds and Subjects of Relief382Tk1714(3) k. Unfair Competition.


Life and health insurance company was entitled to in-junction, on common-law unfair competition theory, toprevent automobile insurance company from using de-ceptively similar, arbitrary trade name which first com-pany had previously used and under which it had builtup good reputation for over 50 years.

731 F.Supp. 480 Page 1731 F.Supp. 480, 15 U.S.P.Q.2d 1873(Cite as: 731 F.Supp. 480)





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General; Elements382Tk1421 k. Infringement. Most Cited

Cases(Formerly 382k462)

Elements which plaintiff must prove to prevail on com-mon-law unfair competition claim based on trade nameor service mark infringement are: that plaintiff is prioruser of trade name or service mark; that trade name orservice mark is arbitrary or suggestive or has acquiredsecondary meaning; that defendant is using confusinglysimilar trade name or service mark to indicate or identi-fy some of the products or services in same trade area inwhich plaintiff has already established its trade name orservice mark; and that consumer confusion is likely toresult from defendant's action or threatened action. Lan-ham Trade-Mark Act, § 43(a), as amended, 15 U.S.C.A.§ 1125(a).






Elements required to prevail on claim of common-lawtrade name and service mark infringement are the sameas those required to prevail under unfair competitionprovisions of Lanham Trade-Mark Act or under a claimfor common-law unfair competition. Lanham Trade-Mark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a).



382TIX(F) Injunctions

382Tk1712 Permanent Injunctions382Tk1714 Grounds and Subjects of Relief

382Tk1714(4) k. Dilution. Most CitedCases

(Formerly 382k647)Life and health insurance company was entitled to in-junction under Florida's antidilution statute to preventautomobile insurance company from using deceptivelysimilar, arbitrary trade name which first company hadpreviously used and under which it had built up goodreputation for over 50 years. West's F.S.A. § 495.151.



382TVIII(B) Dilution382Tk1461 k. Nature and Extent of Harm;

Similarity, Competition, and Confusion. Most CitedCases

(Formerly 382k462)Neither competition nor confusion is required in orderto state claim for dilution of trade name or service markpursuant to Florida statute. West's F.S.A. § 495.151.




382Tk1715 Defenses or Objections382Tk1715(1) k. In General. Most Cited

Cases(Formerly 382k642.1, 382k642)

Trade name holder was not guilty of any laches, such asmight prevent it from suing to enjoin defendant's use ofdeceptively similar trade name, where trade name hold-er made demand on defendant to cease its infringingacts immediately after it learned thereof and waited tobring suit only in order to give defendant chance to vol-untarily comply with its demands.


382T Trademarks




























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382TIX Actions and Proceedings382TIX(F) Injunctions

382Tk1712 Permanent Injunctions382Tk1715 Defenses or Objections

382Tk1715(1) k. In General. Most CitedCases

(Formerly 382k642.1, 382k642)Insurance company's incorporation in Florida undername deceptively similar to that of trade name holder,and its subsequent licensing by Florida Department ofInsurance, were not defense to trade name holder's ac-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).



382TIX(G) Costs382Tk1752 Attorney Fees

382Tk1755 k. Amount, Rate, and Items.Most Cited Cases

(Formerly 382k729)



382TIX(G) Costs382Tk1751 k. Amount and Items in General.


Insurance company which infringed on competitor'strade name without making even the slightest inquiryregarding competitor's prior use thereof was liable forover $95,000 in attorney fees and $10,000 in costs un-der federal statute authorizing such awards in infringe-ment actions based on evidence of fraud or bad faith.Lanham Trade-Mark Act, § 35, as amended, 15U.S.C.A. § 1117.*482 Janet T. Munn, Steel Hector & Davis, Miami, Fla.,for plaintiff.

Samuel R. Danziger, Goodhart, Rosner, Simon, Green-berg & Humbert, P.A., Miami, Fla., for defendant.

FINDINGS OF FACT, CONCLUSIONS OF LAW,AND FINAL JUDGMENT

JAMES LAWRENCE KING, Chief Judge.

This cause was tried from November 28, 1989, throughDecember 1, 1989, before this court sitting without ajury. The court has heard and considered the testimonyof the witnesses and considered the exhibits and the ar-guments of counsel. In accordance with Rule 52(a),Federal Rules of Civil Procedure, this court now makesthe following Findings of Fact and Conclusions of Law.

FINDINGS OF FACT

Plaintiff, American United Life Insurance Company(“Plaintiff”), is a mutual life insurance company whoseservices consist of underwriting life, universal life,health, income replacement, accident, pension, group,hospitalization, and credit insurance, as well as provid-ing reinsurance.

Defendant, American United Insurance Company(“Defendant”), is also in the business of providing in-surance. Defendant sells private passenger and commer-cial automobile liability and property damage insurance.

Plaintiff adopted the trade name and service mark“American United Life Insurance Company” in 1936.Since that time, plaintiff has continuously used thistrade name and service mark to market and sell itsproducts and services.

Plaintiff is an Indiana corporation with its principalplace of business in Indianapolis, Indiana. Plaintiff wasfirst licensed to conduct business in the state of Floridaas an insurance company in 1937 under the name“American United Life Insurance Company” and hascontinuously maintained this license.

Defendant is a Florida corporation, which was formedin November 1983, and has been licensed in Florida tosell insurance under the name “American United Insur-ance Company” since 1984.

Plaintiff is the prior owner and user of the trade name













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and service mark “American United Life InsuranceCompany.”

Plaintiff's origins date back to 1877, when one ofplaintiff's predecessors first began doing business as aninsurance company. Plaintiff's adoption in 1936 of thetrade name and service mark “American United Life In-surance Company” occurred following the merger of itspredecessor companies, American Central Life Insur-ance Company and United Mutual Life Insurance Com-pany. The first word of each of the predecessor compan-ies, “American” and “United,” was arbitrarily chosen asthe name for the new company.

Defendant's agent testified that the name “AmericanUnited” was selected by defendant as the name for de-fendant's company because Saudi Arabians wereserving as investors for a company which would be op-erated and managed by Americans in the United States.In the view of those individuals who formed the defend-ant corporation, the project demonstrated the unity ofthe two groups in this American venture.

The words “American United” are arbitrary as appliedto insurance. There is no relationship between the words“American United” and the product each company sells,which is insurance. Clearly, these words are not de-scriptive nor generic of insurance.

Plaintiff's service mark, “American United Life Insur-ance Company,” is a federally registered service markwhich is listed on the Principal Register of the UnitedStates Patent and Trademark Office (Reg. No.1,556,096). Plaintiff's service mark was registeredSeptember 12, 1989.

“American United Life Insurance Company” is also re-gistered as a service mark with the state of Florida(State of Florida Reg. No. T1146). This registration oc-curred on July 24, 1989.

*483 Defendant has not registered “American UnitedInsurance Company” as a service mark, either federallyor with the state of Florida.

Plaintiff markets and sells its policies and services un-der the trade name and service mark “American United

Life Insurance Company” throughout the United States,including Florida. Plaintiff uses its trade name and ser-vice mark, “American United Life Insurance Com-pany,” in interstate commerce.

Plaintiff maintains general agencies in Florida with atotal of 35-40 sales representatives in Florida. Two ofthese general agencies are located in Tampa, Florida.One agency is located in Boca Raton, another in Mel-bourne, and one in Jacksonville, Florida.

Since 1979, plaintiff has spent in excess of $5 million inadvertising nationally its trade name and service mark,“American United Life Insurance Company,” and hasbuilt up extensive good will in its name and a goodreputation over the fifty years that it has been using thename “American United Life Insurance Company.”Plaintiff advertises its trade name and service mark overthe radio, on television, and in newspapers and otherpublications. In addition to the money expended directlyby plaintiff for advertising, plaintiff's agents also ad-vertise plaintiff's service mark and trade name in Flor-ida. In addition, plaintiff prints and distributes to cus-tomers and prospective customers numerous pamphletsand brochures, which describe and promote plaintiff'sproducts and services and advertise plaintiff's tradename and service mark, “American United Life Insur-ance Company.”

Defendant has engaged in virtually no advertising of itsname. The only use defendant makes of its name is thelisting of its name on business forms and on a calendarprinted by its managing agent. The calendar also con-tains the names of two other insurance companies aswell as the name of the defendant's managing generalagent, Public Assurance Group, Ltd., Inc. (“Public”).

Defendant's business operations are conducted by itsmanaging general agent, Public. Public performs everyfunction of running defendant's company with the ex-ception of handling claims. Public selects the individualagents who sell defendant's policies and Public makesall decisions as to acceptance or rejection of prospectiveinsureds. Until some point in 1989, all claims werehandled for the defendant by yet another company, theApex Adjustment Bureau.



Plaintiff conducts its own business operations, handlesits own claims, trains its agents to ensure uniformity inservice, and makes its own decisions as to acceptance orrejection of prospective insureds.

Plaintiff was ranked in August 1988 by Best's Review.Best's Review is a publication of the A.M. Best Com-pany and is considered to be a reliable and accuratesource within the insurance industry, giving comparis-ons and ratings of insurance companies. Best's Reviewlisted plaintiff as the nation's 66th largest life insurancecompany in terms of insurance in force, and the 73rdlargest life insurance company in terms of assets. In1988, plaintiff was ranked as the nation's 24th largestmutual life insurance company in terms of assets, andthe nation's 20th largest mutual life insurance companyin terms of life insurance in force. Plaintiff has consist-ently been awarded the highest rating an insurance com-pany is given by the A.M. Best Company, the “A+ rat-ing.”

Since 1986, 2,507 consumer complaints have been filedwith the Florida Department of Insurance against thedefendant for its claim-handling delays. During thissame period of time, plaintiff had only 35 complaintsfiled against it.

The only difference between the plaintiff's trade nameand service mark, “American United Life InsuranceCompany,” and the defendant's trade name and servicemark, “American United Insurance Company,” is thepresence of the word “Life” in the plaintiff's name. Thevirtual identity of the two names has led to numerousinstances of actual consumer confusion. Plaintiff'sagents testified that their offices *484 received in ex-cess of 60 telephone calls per month from persons whoare confused and believe they are calling defendant.These callers are often customers of the defendant whohave confused the two companies. Many of those whocall the plaintiff's agents are calling to express dissatis-faction with the defendant's service. One caller in par-ticular, Janet Boynton, testified by deposition that be-cause of the close similarity in the names, she calledplaintiff's agent believing it was the defendant's agent.The testimony proving actual confusion was unrebuttedby defendant.

In addition, the state of Florida, as well as the state ofNew York, have required the plaintiff to respond to con-sumer complaints filed against the defendant. Plaintiffhas also been served at its corporate headquarters in In-dianapolis, Indiana, with lawsuits filed against defend-ant in Florida and other states. Defendant's wrongfulacts thus have harmed plaintiff and are likely to contin-ue to harm plaintiff in interstate commerce.

Plaintiff and defendant occupy the same industry. Eachsells the same product, insurance. Plaintiff also offeredproof that it is not uncommon for life insurance com-panies to own or be affiliated with automobile insurancecompanies. Under such circumstances, the two compan-ies are related and use the same or similar names.

The plaintiff and defendant sell their products and ser-vices in a similar manner. Each sells insurance policiesto purchasers of insurance through individual agentswho operate out of individual insurance agencies.

Defendant's use of the name “American United Insur-ance Company” is confusingly similar to plaintiff'strade name and service mark, “American United LifeInsurance Company.”

Plaintiff acted promptly in instituting this action. Uponlearning of the defendant's existence, plaintiff immedi-ately called and then wrote defendant asking defendantto cease its infringing acts. When defendant refused tocease infringement, plaintiff brought the instant action.

Defendant admitted that it made no effort prior to its in-corporation and licensing to discover the existence ofplaintiff or of plaintiff's prior ownership of the tradename and service mark, “American United Life Insur-ance Company.” Defendant failed to make any effort toconsult with the Florida Department of Insurance to de-termine if another insurance company was already do-ing business in Florida using the name “AmericanUnited” prior to commencing business as an insurancecompany in 1984. Defendant could have easily calledthe Department of Insurance or consulted with publicrecords of the department, which would have revealedthat plaintiff was the only insurance company doingbusiness in Florida using the words, “American



United.” Defendant admitted it made no effort whatso-ever to undertake even this simple investigation, despitedefendant's knowledge of the existence of state of Flor-ida publications, such as the Report of the Departmentof Insurance for the year ending June 30, 1983, whichwould have immediately revealed to defendant theplaintiff's prior use of the name “American United.”FN1

FN1. The Report of the Department of Insur-ance lists the names of insurance companiesauthorized to conduct business in Florida.

Defendant's president, Mark Trafton III, worked for theDepartment of Insurance for over fifteen years. At onetime during Mr. Trafton's employment with the Depart-ment of Insurance, he was the director of the Divisionof Insurance Rating, a section which, inter alia, regu-lated life insurance companies. Mr. Trafton, who im-pressed the court as a fine person and a credible wit-ness, testified that he could not say that he had neverheard of the plaintiff prior to the institution of the law-suit.

CONCLUSIONS OF LAW

Plaintiff seeks to enjoin defendant from using the tradename and service mark, “American United InsuranceCompany.” Plaintiff asserts that defendant hasviolated*485 § 43(a) of the Lanham Act, 15 U.S.C. §1125(a); that defendant has engaged in unfair competi-tion and trade name and service mark infringement un-der the common law; and that defendant has violatedthe Florida anti-dilution statute, Florida Statute §495.151. The court makes the following conclusions oflaw with respect to each of these claims:

This court has jurisdiction over the Lanham Act claimpursuant to 15 U.S.C. § 1121; 28 U.S.C. § 1338, and 28U.S.C. § 1331. The court has jurisdiction over the com-mon law claims pursuant to 28 U.S.C. § 1338(b) andpursuant to the doctrine of pendent jurisdiction. In addi-tion, diversity jurisdiction exists pursuant to 28 U.S.C. §1332.

UNFAIR COMPETITION PURSUANT TO SECTION43(A), 15 U.S.C. § 1125(A)

[1][2] To prevail on a claim for injunctive relief under §43(a) of the Lanham Act, 15 U.S.C. § 1125(a), plaintiffmust demonstrate (1) that it is the prior owner of thetrade name or service mark, and (2) that defendant ad-opted a trade name and service mark that is the same orconfusingly similar to plaintiff's trade name or servicemark so that there exists a likelihood of confusion toconsumers as to the proper origin of the goods or ser-vices, such that a consumer is likely to believe that de-fendant's goods or services are being sold with the con-sent or authorization of the plaintiff, or that defendant isaffiliated with or connected to the plaintiff. 15 U.S.C. §1125(a); Conagra, Inc. v. Singleton, 743 F.2d 1508,1512 (11th Cir.1984). Based upon the findings of factmade above, the court concludes that plaintiff has meteach of these requirements and is, therefore, entitled toinjunctive relief, pursuant to § 43(a) of the Lanham Act,15 U.S.C. § 1125(a), to prevent defendant's use of thename “American United Life Insurance Company.”

In making the determination of confusing similarity,this court considered and made factual findings with re-gard to the following seven factors: (1) the type of tradename or service mark used; (2) the similarity of thetrade name or service mark; (3) the similarity of theproduct of service; (4) the similarity of the retail outletsand purchasers; (5) the similarity of advertising mediaused; (6) the existence of actual confusion; and (7) thedefendant's intent. See Jellibeans, Inc. v. Skating Clubsof Georgia, Inc., 716 F.2d 833, 840 (11th Cir.1983); seealso Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d252, 259-264 (5th Cir.1980), cert. denied, 449 U.S. 899,101 S.Ct. 268, 66 L.Ed.2d 129 (1980). Upon considera-tion of each of these factors, the court finds that theplaintiff is entitled to injunctive relief.

Defendant contends that because the products or ser-vices which each party sells are not identical, life andhealth as compared with automobile insurance, it hasnot violated plaintiff's rights and is immune from suitby the plaintiff. The court finds this contention to bewithout merit. The law of unfair competition protectsthe prior owner of a mark from those who “ ‘sell their






























goods in such a way as to make it appear that they comefrom some other source.’ ” Boston Professional HockeyAssn., Inc. v. Dallas Cap & Emblem Mfg., 510 F.2d1004, 1010 (5th Cir.1975) (quoting American-MariettaCo. v. Krigsman, 275 F.2d 287, 289 (2nd Cir.1960)),cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98(1975). As found above, plaintiff and defendant occupythe same industry. Both sell insurance. That one com-pany is authorized to sell life insurance and anotherautomobile insurance does not answer the problem ofconsumer confusion. The distinction defendant seeks todraw is not one made by consumers. The product or ser-vices sold by each are the kind the insurance consumingpublic attributes to a single source. See E. Remy Martin& Co. v. Shaw-Ross Intern. Imports, 756 F.2d. 1525,1530 (11th Cir.1985). The actual confusion which hasoccurred and continues to occur between the plaintiffand the defendant in this case amply supports this con-clusion. Therefore, plaintiff is entitled to an injunctionpursuant to § 43(a) of the Lanham Act, 15 U.S.C. §1125(a).

*486 COMMON LAW UNFAIR COMPETITION

[3][4] For the reasons set forth above and in the find-ings of fact, the plaintiff has also proved its claim forcommon law unfair competition. Marathon Mfg. v. En-erlite Products Corp., 767 F.2d 214, 217 (5th Cir.1985).The elements a plaintiff must prove to prevail on a com-mon law unfair competition claim based on trade nameor service mark infringement are: (1) that plaintiff is theprior user of the trade name or service mark; (2) that thetrade name or service mark is arbitrary or suggestive orhas acquired secondary meaning; (3) that the defendantis using a “confusingly similar trade name or servicemark to indicate or identify similar services rendered(or similar goods marketed) by it in competition withplaintiff in the same trade area in which plaintiff hasalready established its trade name” or service mark; and(4) that as a result of defendant's action or threatenedaction, consumer confusion as to the source or sponsor-ship of defendant's goods and services is likely. Americ-an Bank of Merritt Island v. First Am. Bank and Trust,455 So.2d 443, 445-6 (Fla. 4th DCA 1984), reviewdenied, 461 So.2d 114 (Fla.1985).

The competition requirement has been interpreted bythe Florida Supreme Court to require a showing of“similarity in businesses of the parties.” Sun Coast v.Shupe, 52 So.2d 805 (Fla.1951). In Sun Coast, the Flor-ida Supreme Court held that a hotel corporation couldnot prohibit a real estate venture from using the words“Sun” and “Coast” in its name. Id. In reaching its de-cision, the court stated:

We cannot see how the public could be deceived by ap-pellees' use of the title “Suncoast” when there is notsimilarity in the businesses of the parties. In the casewe have cited, and formerly approved, it was said that‘the courts interfere solely to prevent deception.’...Further, the circumstances must lead to the conclu-sion that the business of the first user will suffer fromthe deceptive use, or that by reason of unfair competi-tion there will be an imposition on the public.

Id. (emphasis added).

Under Florida law, the plaintiff must show either “thatthe public would be tricked” or that the plaintiff will bedamaged because persons dealing with defendant arelikely to believe they are dealing with the plaintiff. Id.at 806. For reasons set forth above, the court has foundthat the close similarity of the services offered by twobusinesses who both sell insurance has caused and islikely to continue to cause consumer confusion as to thesource of origin or sponsorship of the defendant's goodsand services.

For reasons set forth in the findings above, plaintiff hasestablished the elements necessary to support a claimfor common law unfair competition, and plaintiff is en-titled to injunctive relief on this count as well.

COMMON LAW TRADE NAME AND SERVICEMARK INFRINGEMENT

[5] The elements required to prevail on a claim of com-mon law trade name and service mark infringement arethe same as those required to prevail under § 43(a) ofthe Lanham Act, 15 U.S.C. § 1125(a) or under a claimfor common law unfair competition. See Selchow &Righter Co. v. Goldex Corp., 612 F.Supp. 19, 24










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(S.D.Fla.1985) (plaintiff must prove that the “infringingmark is likely to confuse consumers as to the source ofthe product, its endorsement by the trademark holder, orits connection with the holder,” through evaluation ofthe seven factors); see also American Bank, 455 So.2dat 445-446. For reasons stated above, plaintiff has metits burden on this claim as well and is entitled to in-junctive relief.

DILUTION

[6] Finally, plaintiff has a claim for dilution of its tradename and service mark pursuant to Florida Statute §495.151. This court may award relief pursuant to §495.151 if the plaintiff has proved:

that there exists a likelihood of injury to business repu-tation or of dilution of the *487 distinctive quality ofthe mark [or] name ... notwithstanding the absence ofcompetition between the parties or of confusion as tothe source of goods or services.

Fla.Stat. § 495.151.

[7] Under this section of the Florida Statutes, neithercompetition nor confusion is required. Id. The court hasfound that plaintiff's trade name and service mark is dis-tinctive and entitled to protection. The court has alsofound that defendant is using a virtually identical tradename and service mark, to promote the sale of servicesand goods to consumers of insurance. There is no doubtthat the commercial value of the plaintiff's trade nameand service mark is likely to be diluted by defendant'sunauthorized use of a virtually identical trade name andservice mark, and that this will create a likelihood of in-jury to plaintiff's business reputation. Freedom Savingsand Loan Assn. v. Way, 757 F.2d 1176, 1186 (11thCir.1985), cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88L.Ed.2d 110 (1985). On the basis of its prior findingsand in consideration of the requirements of the Floridaanti-dilution statute, the court concludes that plaintiff isentitled to relief on this claim.

AFFIRMATIVE DEFENSES

Defendant raised affirmative defenses of laches and es-toppel by incorporation and licensing. For reasons spe-cified below, each of these defenses is without merit.

LACHES

[8] To prevail on the affirmative defense of laches, de-fendant must prove three elements: “(1) a delay in aright or claim; (2) that the delay was not excusable; and(3) that the delay caused defendant undue prejudice.”Conagra, Inc. v. Singleton, 743 F.2d 1508, 1517 (11thCir.1984). Defendant failed to prove that plaintiffdelayed in bringing its claims. The evidence at trialdemonstrated the contrary. As soon as plaintiff learnedabout defendant, plaintiff immediately demanded thatdefendant cease its infringing acts. Defendant refused,assuring plaintiff that there could be no public confu-sion. When plaintiff experienced additional confusion,plaintiff renewed its demand, which defendant again re-jected. Plaintiff then immediately brought suit. There-fore, since the defendant has not shown inexcusabledelay, it has not sustained its burden of proving laches.

ESTOPPEL BY VIRTUE OF INCORPORATION ANDLICENSING

[9] Defendant contends that its incorporation by thestate of Florida and its licensing by the Florida Depart-ment of Insurance grants defendant immunity from suit.This contention is contrary to longstanding Florida law.As long ago as 1926, the Supreme Court of Floridaheld:

The act of sovereignty in allowing incorporation under aparticular name is permissive only. It sanctions theact of incorporation under the name chosen and forthe business proposed, if that name and that businessbe otherwise lawful, but in granting a corporatecharter the sovereign adjudges neither the legality ofthe business nor of the name chosen. That is a matterfor judicial determination by a court of competentjurisdiction. An individual will be enjoined, in propercases, from the fraudulent or deceptive use of his ownnatural name. With even greater justification will anartificial person, a corporation, be enjoined from such





















a use of a corporate name voluntarily chosen by it.

Children's Bootery v. Sutker, 91 Fla. 60, 107 So. 345,349 (1926) (emphasis added).

The acceptance or approval of a name by a state agencysuch as the Florida Department of State is not a defenseto the claims brought in this lawsuit. American Auto.,618 F.Supp. at 797 (rejecting defendant insurance com-pany's claim that licensing is a defense to Lanham Actclaims and citing Children's Bootery, 107 So. at 349);see also Shatterproof Glass Corp. v. Buckmaster, 256So.2d 531, 533 (Fla. 2d DCA), cert. denied, 264 So.2d427 (Fla.1972).

*488 In addition, the Florida Supreme Court's holding isreiterated in the Florida Administrative Code:

IN-1.002 Name Assignments.

Any and all corporate names issued by this Divisionunder chapters 607 and 617, Florida Statutes, arebased only upon the records of this Division and therules of this Division at the time of filing and are notbased upon any other corporate entity filed by theUnited States government or its agencies or protectedby Federal Law, nor are these filings based upon therecords of any other state agency, nor is the Divisionresponsible for those persons or groups of personswho style themselves as a corporation nor those whouse a corporate suffix not of the Division's filing. Thefiling of any corporate entity is only a grant of au-thority to use such a name and does not include theadjudication of the legality of such use.

Fla.Admin. Code Ann. r.1N-1.002 (1989) (emphasis ad-ded). Incorporation by the state of Florida, therefore, isnot a defense to trade name or service mark infringe-ment, unfair competition, or anti-dilution claims.

Similarly, the permission to engage in business in Flor-ida as an insurance company is not a defense under theLanham Act or under state law. Children's Bootery, 107So. at 349. As an agency of the state of Florida, theFlorida Department of Insurance does not regulate oradjudicate the legality of the use of a particular name byany insurance company seeking to do business in Flor-

ida. Id. Additionally, the Lanham Act was specificallyintended by Congress to protect and make actionablethe use of deceptive and misleading marks in commerceand to protect persons engaged in such commerceagainst unfair competition. 15 U.S.C. § 1127.

Therefore, neither defendant's incorporation in Floridaunder the name “American United Insurance Company”nor its licensing by the Florida Department of Insuranceconstitutes a defense to plaintiff's action to enjoin tradename and service mark infringement, unfair competi-tion, and dilution of its trade name and service mark.See American Auto. Assoc. (Inc.), 618 F.Supp. at 798(relying in part on the Florida Supreme Court decisionin Children's Bootery, 107 So. at 349).

ATTORNEYS' FEES AND COSTS

[10] Plaintiff has requested an award of attorneys' feesand costs. Pursuant to 15 U.S.C. § 1117, this court hasthe authority to award fees to a prevailing party wherethere is evidence of fraud or bad faith. Safeway Stores,Inc. v. Safeway Discount Drugs, 675 F.2d 1160, 1166(11th Cir.1982); see also Jellibeans Inc. v. SkatingClubs of Georgia, Inc., 716 F.2d 833, 846 (11thCir.1983). As the court has found above, this entire con-troversy and the harm the plaintiff has suffered couldeasily have been avoided had defendant made even theslightest inquiry. After carefully considering all of theevidence presented at trial this court finds under thefacts of this case that the defendant's actions constitutebad faith under 15 U.S.C. § 1117, and accordingly thecourt awards the plaintiff its attorneys' fees.

Both sides presented expert testimony at trial, regardingthe reasonable amount of attorneys' fees. Since the trial,the plaintiff has submitted invoices supporting its claimand an affidavit from its expert regarding the reason-ableness of the amount of fees incurred in trial prepara-tion and for time spent in trial. Defendant's expert hasreviewed the affidavit of the plaintiff's expert, as well asthe invoices, and has submitted an affidavit regardingthe claim for fees incurred by plaintiff in trial prepara-tion and for time spent in trial. Plaintiff seeks an awardof fees in the amount of $100,303.60. Defendant, while





























objecting to the award of fees, admits that $80,803.60 isa reasonable amount to be awarded to plaintiff. Thecourt has carefully considered the testimony of the ex-perts for each party, together with the documentation onfees provided by the plaintiff and hereby awards theplaintiff attorneys' fees in the amount of $95,803.60.

Finally, the court determines that the plaintiff is entitledto 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.,

603 F.Supp. 13, 19 (S.D.Fla.1984). The plaintiff hassupplied its bill of costs, along with a supportingmemorandum of law, and the defendant has filed its ob-jections. Having carefully reviewed the plaintiff's item-ized bill of costs, the defendant's objections, and the ap-plicable law, the court finds that the following costs aretaxable against the defendant:

(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-sistence and travel costs for plaintiff's witnesses at trial and deposition)

$ 1,790.90

(D) Process server fees $ 978.00

(E) Fees for exemplification and copies of papers necessarily obtained for use in thecase

$ 1,655.65

(F) Counsel's travel expenses $ 1,210.79

Total: $10,733.23

CONCLUSION

On the basis of the foregoing, the court concludes thatplaintiff has demonstrated its entitlement to a permanentinjunction for defendant's violation of § 43(a) of theLanham Act, 15 U.S.C. § 1125(a); for defendant's actsof unfair competition, trade name, and service mark in-fringement under common law; and for defendant's vi-olation of Florida Statute § 495.151. In addition, thecourt awards attorneys' fees and costs of the action tothe plaintiff. The terms and conditions of the injunctionawarded to plaintiff are set forth below in the FinalJudgment.

FINAL JUDGMENT

This cause came on for trial for permanent injunctionbefore the court sitting without a jury. The court havingheard and considered the testimony of the witnesses, theexhibits, and the argument of counsel, finds and con-cludes, for the reasons set forth in the findings of fact

and conclusions of law, that plaintiff is entitled to a per-manent injunction, attorneys' fees, and costs. Accord-ingly, it is

ORDERED, ADJUDGED and DECREED that finaljudgment is entered in favor of the plaintiff, AmericanUnited Life Insurance Company, and against the de-fendant, American United Insurance Company. The de-fendant, its officers, directors, agents, servants, employ-ees, attorneys, and all persons, firms or corporationsacting or claiming to act on their behalf or under theirdirection or authority, and all persons and firms actingor claiming to act in participation or concert with them,are hereby permanently enjoined:

(1) from using on or in connection with the manufac-ture, sale, offering for sale, distribution or the advertise-ment, labeling or packaging of any products or services,plaintiff's trade name or service mark, “AmericanUnited Life Insurance Company,” or any colorable imit-ation thereof or anything confusingly similar thereto;

(2) from representing by any means whatsoever that anyservices sold, offered for sale, or advertised by defend-
















ant, are sponsored, licensed, authorized by, or originatewith plaintiff, or from otherwise taking any action likelyto cause confusion, mistake or deception on the part ofthe public as to the origin or sponsorship of such ser-vices; or

(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 corporatename with the Florida Department of State and the Flor-ida Department of Insurance within 120 days of theentry 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 corporatename, the defendant is hereby required to place on theface of all correspondence, including but not limited toinvoices, envelopes and flyers used by defendant, thefollowing 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, awritten statement under oath, setting forth in detail themanner in which defendant has complied with thecourt's injunction and order.

The plaintiff is hereby awarded attorneys' fees in theamount of $95,803.60, for which let execution issue.

The plaintiff is hereby awarded its costs in the amountof $10,733.23, for which let execution issue.

This court hereby retains jurisdiction to enforce theterms of this permanent injunction and final judgmentand to award such other relief as this court may deemappropriate.

DONE AND ORDERED.

S.D.Fla.,1990.American United Life Ins. Co. v. American United Ins.Co.731 F.Supp. 480, 15 U.S.P.Q.2d 1873

END OF DOCUMENT




Date/Time of Request: Thursday, July 2, 2009 15:37 CentralClient Identifier: OSHNADatabase: FEDFINDCitation Text: 187 F.3d 1307Lines: 690Documents: 1Images: 0



CARNIVAL BRAND SEAFOOD COMPANY,Plaintiff-Appellant,

v.CARNIVAL BRANDS, INC., Defendant-Appellee.

No. 98-4126.

Sept. 3, 1999.

Assignee of “CARNIVAL” trademark for shrimpand other seafood products brought trademark in-fringement action against seller of Creole andCajun food products that also used “CARNIVAL”mark. The United States District Court for theSouthern District of Florida, No. 97-8273-CV-JL,Joan A. Lenard, J., granted summary judgment fordefendant, and plaintiff appealed. The Court of Ap-peals, Anderson, Chief Judge, held that: (1) fact is-sues existed as to whether first assignor's expansioninto products sold by defendant would have beennatural, and thus as to whether likelihood of confu-sion existed at time defendant entered market, forpurpose of determining priority, and (2) districtcourt was required to determine whether defend-ant's expansion into second assignor's product linewould have been natural expansion, for prioritypurposes.

Vacated and remanded.

West Headnotes

[1] Federal Courts 170B 776

170B Federal Courts170BVIII Courts of Appeals

170BVIII(K) Scope, Standards, and Extent170BVIII(K)1 In General

170Bk776 k. Trial De Novo. MostCited CasesCourt of Appeals reviews the district court's grantof summary judgment de novo, with all facts and

reasonable inferences therefrom reviewed in thelight most favorable to the nonmoving party.Fed.Rules Civ.Proc.Rule 56(c), 28 U.S.C.A.



382TVIII(A) In General382Tk1418 Practices or Conduct Prohib-

ited in General; Elements382Tk1421 k. Infringement. Most


To prevail on a trademark infringement claim, aplaintiff must show (1) that its mark has priorityand (2) that the defendant's mark is likely to causeconsumer confusion.

[3] 2493

170A Federal Civil Procedure170AXVII Judgment

170AXVII(C) Summary Judgment170AXVII(C)2 Particular Cases

170Ak2493 k. Copyright, Trademark,and Unfair Competition Cases. Most Cited Cases

(Formerly 382k722)Genuine issues of material fact as to whether itwould have been natural for seller of raw shrimpproducts under “CARNIVAL” mark to expand intoseafood gumbo and chicken gumbo, and, later, toexpand into shrimp cakes, crawfish cakes, lobstercakes, and crab cakes, and thus whether competit-or's use of “CARNIVAL” mark to sell thoseproducts created likelihood of confusion, precludedsummary judgment for competitor in trademark in-fringement action brought against competitor byseller's assignee, which claimed it had acquired pri-ority in mark.



187 F.3d 1307 Page 1187 F.3d 1307, 51 U.S.P.Q.2d 1929, 12 Fla. L. Weekly Fed. C 1280(Cite as: 187 F.3d 1307)




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Services Underlying Marks382Tk1102 k. Similarity or Dissimilarity

in General. Most Cited Cases(Formerly 382k363.1)

A trademark owner cannot by the normal expansionof business extend the use or registration of itsmark to distinctly different goods or services notcomprehended by its previous use where the resultcould be a conflict with valuable intervening rightsestablished by another through extensive use of thesame or similar mark for like or similar goods andservices.




382Tk1087 k. Time of Confusion. MostCited Cases

(Formerly 382k334.1)

Trademarks 382T 1137(1)

382T Trademarks382TIV Creation and Priority of Rights

382Tk1132 Use of Mark382Tk1137 Scope and Priority of Use;

Multiple Users, Markets, or Territories382Tk1137(1) k. In General. Most

Cited Cases(Formerly 382k334.1)

Likelihood-of-confusion test, when applied to de-termine priority where there are issues of relateduse, does not substitute for the likelihood-of-confusion test that controls whether infringementof the plaintiff's trademark is occurring or has oc-curred; rather, inquiries are independent, and, oncepriority in the use of a mark for a particular class ofgoods or services has been established, then it is ne-cessary to perform the likelihood-of-confusion test,as of the current time and as between the plaintiff'scurrent products and the allegedly infringing

products of the defendant, to determine whether theplaintiff ultimately prevails in a trademark infringe-ment litigation.




Most Cited Cases(Formerly 382k334.1)

Seven factors used for determining the likelihood ofconfusion in trademark infringement action are (1)the type of mark; (2) the similarity of the twomarks; (3) the similarity of the goods; (4) the iden-tity of customers and similarity of retail outlets,sometimes called the similarity of trade channels;(5) the similarity of advertising; (6) the intent, thatis, good or bad faith, of the alleged infringer; and(7) evidence of actual confusion, if any.




Services Underlying Marks382Tk1104 k. Markets and Territories;

Competition. Most Cited Cases(Formerly 382k334.1)





Cited Cases(Formerly 382k334.1)

When using likelihood-of-confusion test to analyzea trademark priority question, by looking at wheth-er senior user's rights would naturally expand to ju-













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nior user's use of mark, court must consider thestate of events that existed at the time the interven-ing use commenced.


382T Trademarks382TII Marks Protected

382Tk1033 k. Levels or Categories of Dis-tinctiveness in General; Strength of Marks in Gen-eral. Most Cited Cases

(Formerly 382k10)The strength of a trademark depends on the logicalcorrelation between a name and a product; if theseller of a product or service would naturally use aparticular name, it is weakly protected.



382Tk1039 k. Arbitrary or Fanciful Terms orMarks. Most Cited Cases

(Formerly 382k27)Trademark “CARNIVAL” would be arbitrary orfanciful as compared to product of raw shrimp be-cause it was a word in common usage applied to aservice unrelated to its meaning.



382Tk1033 k. Levels or Categories of Dis-tinctiveness in General; Strength of Marks in Gen-eral. Most Cited Cases

(Formerly 382k331)Strength of trademark is diminished by fairly fre-quent use of that mark by third parties in other mar-kets.

[11] 2493

170A Federal Civil Procedure170AXVII Judgment

170AXVII(C) Summary Judgment170AXVII(C)2 Particular Cases

170Ak2493 k. Copyright, Trademark,and Unfair Competition Cases. Most Cited Cases

(Formerly 382k722)Genuine issues of material fact as to whether itwould have been natural for seller of chicken andseafood gumbo to expand into product line that in-cluded products such as competitor's shrimp, craw-fish, and alligator products precluded summaryjudgment for seller, on its claim that it had priorityin “CARNIVAL” trademark for those products, inaction brought by assignee of “CARNIVAL” markwhich had obtained rights in mark from competitor.


382T Trademarks382TXI Trademarks and Trade Names Adjudic-

ated382Tk1800 k. Alphabetical Listing. Most


CARNIVAL*1308 Joseph Rodman Steele, Jr., Quarles & Brady,West Palm Beach, FL, James R. Cole, Madison,WI, Kenneth R. Hartmann, Kozyak, Tropin &Throckmorton, Miami, FL, for Plaintiff-Appellant.

Gregory L. Denes, Campbell & Associates, Miami,FL, for Defendant-Appellee.

Appeal from the United States District Court for theSouthern District of Florida

Before ANDERSON, Chief Judge, MARCUS, Cir-cuit Judge, and MILLS FN*, Senior District Judge.

FN* Honorable Richard H. Mills, SeniorU.S. District Judge for the Central Districtof Illinois, sitting by designation.

ANDERSON, Chief Judge:

Carnival Brand Seafood Company (“CBSC”)brought this trademark infringement action againstCarnival Brands, Inc. (“CBI”). The district court




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granted summary judgment for defendant CBI onthe ground that CBSC had failed to raise a genuineissue of material fact with respect to the likelihoodof confusion to the extent of the products as towhich CBSC had priority. Plaintiff CBSC now ap-peals.

I. FACTS

Beginning in 1980, Honduran company Mariscosde Bahia, S.A. de C.V. (“Mariscos”) began usingthe brand name “CARNIVAL” in connection withthe sale of fresh and frozen boxed raw shrimp. Mar-iscos sold shrimp to various wholesalers and retail-ers, including food suppliers and restaurants,through Miami distributor Ludwig Shrimp Co. Ltd.(“Ludwig”). CBSC incorporated as a Delaware cor-poration (with its headquarters in Florida) in March1996, and Mariscos assigned to CBSC all of itsrights in the CARNIVAL mark on October 1, 1996(“Mariscos Assignment”). CBSC registered theCARNIVAL mark with the Patent & TrademarkOffice. CBSC then expanded its CARNIVALproduct line to include not merely raw shrimp, butalso pre-packaged entrees such as bacon-wrappedshrimp, shrimp scampi, grouper, red snapper,Caribbean*1309 snapper marinated in lemon pep-per sauce, mahi mahi fillets, yellow fin tuna, orangeroughy, halibut, lobster tails, and “surf and turf”(lobster tails with beef tenderloin).

In addition to the Mariscos Assignment, CBSC alsoreceived an assignment of rights in the CARNIVALmark from Hi-Seas of Dulac, Inc. (“Hi-Seas”), aLouisiana corporation, on April 17, 1997 (“Hi-SeasAssignment”). Hi-Seas had begun using the mark“CARNIVAL!” in June 1992 in connection with thesale of fresh frozen shrimp, cooked shrimp, breadedshrimp, cooked crawfish, and breaded alligator.Following the Mariscos Assignment, CBSC suedHi-Seas for trademark infringement. As part of asettlement of that litigation, Hi-Seas executed theHi-Seas Assignment.

Defendant CBI is a New Orleans, Louisiana com-

pany that is engaged in the business of selling pre-pared Creole or Cajun-type food products. CBI,either by itself or as a sole proprietorship prior toits incorporation,FN1 has been engaged in thisbusiness since 1990. The original proprietorshipsold only chicken gumbo and seafood gumbo, usingthe brand name “CARNIVAL” or “CARNIVALCAJUN CLASSICS.” In December 1992, CBI in-corporated and expanded into other pre-cooked sea-food products such as shrimp cakes, crawfish cakes,lobster cakes, and crab cakes. CBI now sells an ar-ray of pre-cooked, pre-packaged, ready-to-eat sea-food products and sauces with a Cajun or Creoletheme; these products are available in grocerystores for retail purchase. CBI has promoted itsproducts through a web page on the Internet and onthe home shopping network cable television stationQVC.

FN1. For simplicity's sake, we use “CBI”herein to refer to CBI or the sole propriet-orship that was its predecessor in interest.

Plaintiff CBSC filed the instant action against de-fendant CBI on April 18, 1997, alleging that by us-ing the CARNIVAL mark, CBI infringed upon CB-SC's trademark. The complaint brought one countof statutory trademark infringement under the Lan-ham Act, 15 U.S.C. § 1114, one count of false des-ignation of origin and unfair competition under theLanham Act, 15 U.S.C. § 1125(a), and one count ofcommon law trademark infringement. Plaintiff laterfiled a motion for a preliminary injunction. The dis-trict court, finding no genuine issue of material factas to the likelihood of confusion between thesources of plaintiff's and defendant's products,granted summary judgment for defendant CBI, anddenied the motion for a preliminary injunction asmoot.

II. STANDARD OF REVIEW

[1] We review the district court's grant of summaryjudgment de novo, with all facts and reasonable in-ferences therefrom reviewed in the light most fa-





vorable to the nonmoving party. Hale v. TallapoosaCounty, 50 F.3d 1579, 1581 (11th Cir.1995). Sum-mary judgment was due to be granted only if theforecast of evidence before the district courtshowed that there was no genuine issue as to anymaterial fact and that the moving party, i.e., CBI,was entitled to judgment as a matter of law.Fed.R.Civ.P. 56(c).

III. ANALYSIS

[2] To prevail on a trademark infringement claim, aplaintiff must show (1) that its mark has priorityand (2) that the defendant's mark is likely to causeconsumer confusion. Lone Star Steakhouse & Sa-loon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379,1382 (11th Cir.1997) (citing Dieter v. B & H Indus.of S.W. Fla., Inc., 880 F.2d 322, 326 (11thCir.1989), cert. denied, 498 U.S. 950, 111 S.Ct.369, 112 L.Ed.2d 332 (1990)). Plaintiff CBSC itselfdid not begin to use the CARNIVAL mark until atleast as late as 1996. Defendant CBI, on the otherhand, used the CARNIVAL mark (or some vari-ation thereof) FN2*1310 beginning in 1990. There-fore, any priority that CBSC claims over CBI withrespect to the CARNIVAL mark must have beenderived from one of CBSC's predecessors in in-terest. Cf. Conagra, Inc. v. Singleton, 743 F.2d1508, 1511 (11th Cir.1984) (plaintiff's interest intrademark derived entirely from predecessor com-pany that it had acquired); see generally2 J.Thomas McCarthy, McCarthy on Trademarks andUnfair Competition § 16:5, at 16-7 & n. 3 (1998)(explaining that an assignee of a trademark steps in-to the shoes of the assignor and that a companymay “buy[ ] the trademark and associated good willof a company with an early priority date in order topre-date the priority of a rival”). That is, it mustrest on either the Mariscos Assignment or the Hi-Seas Assignment.FN3

FN2. Until its incorporation in December1992, CBI apparently used “CARNIVALCAJUN CLASSICS.”

FN3. CBI does not argue on appeal thateither the Mariscos Assignment or Hi-SeasAssignment was invalid or ineffective. In-deed, the only arguments on appeal in-volve the scope of rights conveyed in each.

A. The Mariscos Assignment

[3] The Mariscos Assignment conveyed to CBSCany and all rights that Mariscos had gained from theuse of the CARNIVAL mark in connection withMariscos' sale of raw shrimp since 1980. In otherwords, if Mariscos would have had priority overCBI, then CBSC has priority over CBI as well be-cause CBSC stepped into Mariscos' shoes. The is-sue for us to decide is whether CBI established bey-ond any genuine issue of material fact that it hadpriority over Mariscos, and thus over CBSC, withrespect to the use of the CARNIVAL mark for pro-cessed seafood entrees and sauces of the type soldby CBI.

Mariscos was unquestionably the senior user withrespect to raw shrimp. However, because Mariscosnever produced or sold processed, ready-to-eat sea-food entrees as did CBI, priority in these goods de-pends on the application of the “related use” or“natural expansion” theory. As we explained inTally-Ho, Inc. v. Coast Community College Dis-trict, 889 F.2d 1018 (11th Cir.1989),

The senior user's rights may extend into uses in“related” product or service markets (termed the“related goods” doctrine). Thus, an owner of acommon law trademark may use its mark on re-lated products or services and may enjoin a junioruser's use of the mark on such related uses. Thedoctrine gives the trademark owner protectionagainst the use of its mark on any product or ser-vice which would reasonably be thought by thebuying public to come from the same source, orthought to be affiliated with, connected with, orsponsored by, the trademark owner.

Id. at 1023 (citations and internal quotation marks




























omitted); see also Natural Footwear Ltd. v. Hart,Schaffner & Marx, 760 F.2d 1383, 1406 (3dCir.1985) (“[O]nce one has established a commonlaw trademark in a product, the prior use of thattrademark will apply as well to the use of the sametrademark on related products in ascertaining prior-ity of use.”(emphasis omitted)), cert. denied, 474U.S. 920, 106 S.Ct. 249, 88 L.Ed.2d 257 (1985);May Dep't Stores Co. v. Prince, 200 U.S.P.Q. 803,808-09 (T.T.A.B.1978) (senior user possessesrights in mark superior to those of “a subsequentuser of the same or a similar mark for any goodswhich purchasers might reasonably be likely to as-sume emanate from [senior user] in the normal ex-pansion of its business under the mark notwith-standing that the expansion to a particular productmight be subsequent in time to that of anotherparty”); see generally2 McCarthy § 16:5, at 16-7(“When a senior user of a mark on product line Aexpands later into product line B and finds an inter-vening user, priority in product line B is determinedby whether the expansion is ‘natural’ in that cus-tomers would have been confused as to source oraffiliation at the time of the intervening user's ap-pearance.”).

[4] On the other hand, “a trademark owner cannotby the normal expansion of its business extend theuse or registration *1311 of its mark to distinctlydifferent goods or services not comprehended by itsprevious use ... where the result could be a conflictwith valuable intervening rights established by an-other through extensive use ... of the same or simil-ar mark for like or similar goods and services.”American Stock Exchange, Inc. v. American Ex-press Co., 207 U.S.P.Q. 356, 364 (T.T.A.B.1980).See, e.g., Physicians Formula Cosmetics, Inc. v.West Cabot Cosmetics, Inc., 857 F.2d 80, 82 n. 1(2d Cir.1988) (defendant's prior use of mark onhard-bar soap did not extend to give defendant pri-ority to use similar mark in connection with cos-metics and skin creams, and so intervening userwith respect to cosmetics and skin creams had pri-ority); Clark & Freeman Corp. v. Heartland Co.Ltd., 811 F.Supp. 137, 142 (S.D.N.Y.1993) (where

plaintiff had senior rights to “HEARTLAND” markwith respect to women's boots, those rights did notextend to give plaintiff priority over defendant's in-tervening use of “HEARTLAND” with respect toshirts, sweaters, trousers, and jackets, because atthe time the intervening use began, “there was noreal likelihood that plaintiffs would bridge the gapby applying the ‘Heartland’ label to the types ofproducts defendants were selling”).

Thus, the determinative question is whether-as ofthe time CBI began using CARNIVAL (or somevariation thereof) for seafood gumbo and chickengumbo in 1990, and as a secondary matter, as of thetime CBI began using CARNIVAL for shrimpcakes, crawfish cakes, lobster cakes, and crab cakesin 1992-the buying public might reasonably havebeen confused as between CBI's products and theraw shrimp sold by Mariscos under the CARNI-VAL mark. To say that such confusion would haveexisted is another way of saying that the market forCBI's products would have been within the realm ofnatural expansion for Mariscos.

[5] Tally-Ho instructs that in examining this ques-tion for the purpose of determining priority, we ap-ply a variant of the familiar seven-factor test thatpertains to the likelihood of confusion.FN4 Tally-Ho, 889 F.2d at 1027. As McCarthy explains, “[t]he‘natural expansion’ thesis seems to be nothing morethan an unnecessarily complicated application ofthe likelihood of confusion of source or sponsorshiptest to a particular factual situation. If the‘intervening’ use was likely to cause confusion, itwas an infringement, and the senior user has theright to enjoin such use, whether it had in factalready expanded itself or not.” 4 McCarthy §24:20, at 24-39; cf. Rosenthal, A.G. v. Ritelite, Ltd.,986 F.Supp. 133, 140-44 (S.D.N.Y.1997)(analyzing whether plaintiff's senior use of“ROSENBERG” mark with respect to china, din-nerware, glassware, and flatware extended to giveplaintiff priority over intervening user in Judaica(i.e., household goods such as china commemorat-ing Jewish culture) market, and applying a likeli-































hood-of-confusion inquiry to determine whetherJudaica products were “a natural expansion or con-tinuation of [plaintiff's] existing product line”).

FN4. The likelihood-of-confusion test,when applied at this stage in order to de-termine priority where there are issues ofrelated use, does not substitute for the like-lihood-of-confusion test that controlswhether infringement of the plaintiff'strademark is occurring or has occurred.These are two independent inquiries. Oncepriority in the use of a mark for a particu-lar class of goods or services has been es-tablished, then it is necessary to performthe likelihood-of-confusion test, as of thecurrent time and as between the plaintiff'scurrent products (i.e., those that inherit thepriority with respect to the previously usedmark) and the allegedly infringingproducts of the defendant, to determinewhether the plaintiff ultimately prevails ina trademark infringement litigation. SeeViking Boat Co., Inc. v. Viking CamperSupply, Inc., 191 U.S.P.Q. 297, 302-03(T.T.A.B.1976) (distinguishing betweenthe relevance of the likelihood-of-confusion test at the priority stage andat the stage of determining current confu-sion).

[6][7] The seven factors that this Circuit uses fordetermining the likelihood of confusion are (1) thetype of mark; (2) the similarity of the two marks;(3) the similarity of the goods; (4) the identity ofcustomers and similarity of retail outlets, *1312sometimes called the similarity of trade channels;(5) the similarity of advertising; (6) the intent, i.e.,good or bad faith, of the alleged infringer; and (7)evidence of actual confusion, if any. Tally-Ho, 889F.2d at 1027; Freedom Sav. & Loan Ass'n v. Way,757 F.2d 1176, 1182 (11th Cir.), cert. denied, 474U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1985). Ofcourse, when we use this test to analyze a priorityquestion, we must consider the state of events that

existed at the time the intervening use (i.e., CBI'suse of CARNIVAL) commenced.FN5 See VikingBoat Co., Inc. v. Viking Camper Supply, Inc., 191U.S.P.Q. 297, 303 (T.T.A.B.1976) (“[T]he questionof natural expansion must be viewed not in light ofpresent trade practices but rather what they were in1961 when [the intervening user] began to do busi-ness under the mark ‘VIKING’.”). We concludethat there are genuine issues of material fact wheth-er it would have been natural in 1990 for Mariscosto expand into seafood gumbo and chicken gumbo,and in 1992 for Mariscos to expand into shrimpcakes, crawfish cakes, lobster cakes, and crabcakes. Stated another way, we conclude that thereare genuine issues of material fact whether therewas a likelihood of confusion stemming from CBI'suse of the CARNIVAL brand in 1990 in connectionwith seafood gumbo and chicken gumbo, and in1992 in connection with shrimp cakes, crawfishcakes, lobster cakes, and crab cakes.

FN5. Because there are really two separateinstances of intervening use, we look bothat 1990 (when CBI began selling chickengumbo and seafood gumbo) and 1992(when CBI began selling shrimp cakes,crawfish cakes, lobster cakes, and crabcakes).

[8][9][10] We begin with the first factor of the sev-en-factor test. The strength of a mark depends onthe logical correlation between a name and aproduct. Freedom Savings, 757 F.2d at 1182. If theseller of a product or service would naturally use aparticular name, it is weakly protected. Id. The rela-tionships between names and products fall into sev-eral classifications: generic, descriptive, suggestive,arbitrary or fanciful, and coined. Id. CARNIVALwould be arbitrary or fanciful as compared to rawshrimp because it is “a word in common usage ap-plied to a service unrelated to its meaning.” Id. at1183 n. 5.FN6 Second, the marks are identical.FN7

Third, although, on the one hand, raw shrimp is cer-tainly different from seafood gumbo and shrimpcakes, crawfish cakes, lobster cakes, and crab





















cakes; on the other hand, all of these are foodproducts and are related to seafood.FN8 The veryexistence of the “related goods” or “natural expan-sion” doctrine contemplates that the goods need notbe exactly alike, and that the senior user may reas-onably expand into related goods. Cf. J.C. PenneyCo., Inc. v. Security Tire & Rubber Co., Inc., 382F.Supp. 1342, 1344 (E.D.Va.1974) (holding thatunder the natural expansion doctrine, plaintiff's pri-ority that came from using the *1313 mark“SCAT-TRAC” in connection with bicycle tires ex-tended to automobile tires, even though plaintiff didnot actually start using “SCAT-TRAC” for auto-mobile tires until after other parties did so).

FN6. On the other hand, the strength of theCARNIVAL mark is diminished somewhatby the fairly frequent use of the CARNI-VAL mark by third parties in other mar-kets, as demonstrated by defendant CBI.See Sun Banks of Fla. v. Sun Fed. Sav. &Loan Ass'n, 651 F.2d 311, 316 (5thCir.1981) (noting that the use of the word“Sun” by third parties in other lines ofbusiness tended to reduce the strength ofthe “SUN” mark with respect to financialservices).

FN7. Some evidence indicates that duringits formative years, CBI used“CARNIVAL CAJUN CLASSICS” ratherthan “CARNIVAL.” Although CARNI-VAL CAJUN CLASSICS is different fromCARNIVAL, the word “carnival” is themost prominent identifying feature in theformer. CBI has not argued to this Courtthat the presence of the additional words“cajun classics” prior to 1992 underminedthe similarity, though CBI does contendthat references on its packaging to Louisi-ana separate its mark apart.

FN8. As aptly noted in CBSC's brief, CBI'sreasoning emphasizing the distinctionbetween shrimp and seafood gumbo couldlead to untenable distinctions such as that

“the Perdue chicken company cannot pre-vent another's use of the PERDUE markfor chicken pot pies, the Dole citrus com-pany cannot prevent another's use of theDOLE mark for pineapple ice cream, andthe Chiquita banana company cannot pre-vent another's use of the CHIQUITA markfor banana cream pie.” Appellant's InitialBrief at 27.

The fourth factor involves the identity of pur-chasers and similarity of retail outlets. The evid-ence before the district court indicated that Mar-iscos sold its raw shrimp to distributor Ludwig,who in turn sold it to retail outlets and wholesalersincluding grocery stores (e.g., Winn Dixie and Gi-ant), fish stores, and restaurants (e.g., Red Lobsterand King Fish), which in turn would sell it to endconsumers in piles of raw shrimp behind seafoodcounters (or, in the case of restaurants, would pre-sumably incorporate it into a prepared dish). Theevidence indicated that the name CARNIVAL wasused in connection with these sales to retail outletsand wholesalers, but not that the word CARNIVALwas used at any further stage in the distributionchain.FN9 There is nothing to suggest that endusers would have associated the CARNIVAL brandname with the high-quality raw shrimp sold byMariscos. CBI sold its seafood gumbo, and later, itsshrimp cakes, crawfish cakes, lobster cakes, andcrab cakes, directly to retail outlets where thoseproducts would generally be purchased by endusers while still in the packaging marked CARNI-VAL.FN10 It would be unlikely for any confusionof source or sponsorship to arise at the level of theend user, since the end user would never see theCARNIVAL mark used in connection with Mar-iscos' high-quality raw shrimp. Rather, any possibleconfusion could arise only at the level of the retail-ers or wholesalers who purchased Mariscos' shrimpin boxes bearing the name CARNIVAL, and alsowere in the market for CBI's products.

FN9. At oral argument, counsel for CBSCasserted that the CARNIVAL mark accom-











panied the piles of raw shrimp that weredisplayed in grocery stores and fish mar-kets for retail sale to end users. Counselalso informed us that Mariscos had soldsome shrimp in retail packaging bearingthe CARNIVAL name. Counsel for CBIcontended in his rebuttal that these state-ments lacked factual support in the record.We have reviewed the summary judgmentrecord, and find the following. First, thereis no evidence that the CARNIVAL markaccompanied the piles of raw shrimp soldat retail. Second, while there is evidence tothe effect that some shrimp were sold byMariscos in one-pound retail packagingbearing the CARNIVAL name, the sameevidence indicates that said retail pack-aging began in or around 1996, either atthe initiative of CBSC after it was assignedMariscos' rights, or only a few months be-fore the Mariscos Assignment. In eitherevent, retail packaging and the resultantexposure of retail consumers to the CAR-NIVAL name is not relevant to our analys-is of priority because we must focus on thestate of events that existed in 1990 and1992. See Viking Boat, 191 U.S.P.Q. at303 (“[T]he question of natural expansionmust be viewed not in light of presenttrade practices but rather what they were in1961 when [the intervening user] began todo business under the mark ‘VIKING’.”).

FN10. The affidavit of CBI's principalsaid, “I have always sold Louisiana Creoleor Cajun specialties that are prepared, pre-packed, ready-to-eat specialty foodproducts.... I have always packaged myCarnival Brands New Orleans preparedfood products in retail-type packaging. Ialso offer the identical products in foodservice quantity but always under the samename. My products are not meant to be re-packaged after sale and I am not aware of asingle person or entity repackaging my

products for resale.” An inference can bedrawn from this affidavit that some foodservice establishments might sell CBI'sproducts to the ultimate consumer withoutthe CARNIVAL label affixed thereto.However, the primary way in which CBI'sproducts appear to have reached the publicis sales to grocery stores followed by salesto end users with the CARNIVAL namestill attached.

The district court acknowledged that “there may besome overlap between customers of the Plaintiffand the Defendant,” but explained that “such over-lap would be limited to a situation in which a gro-cery store purchased boxes of the Plaintiff's rawshrimp from Ludwig to sell in the fresh fish depart-ment and that same grocery store purchased the De-fendant's prepackaged, prepared foods for resale toconsumers in the frozen food department.” DistrictCourt Order at 17. The court continued that “[t]histype of overlap is insignificant to the Court's likeli-hood of *1314 confusion analysis, in the absence ofevidence which conflicts with the Defendant's char-acterization of its primary customers as consumersand not resellers of any kind.” Id.

Somewhat contrary to the district court opinion, thecase law indicates that confusion at pre-end con-sumer stages of the distribution process may be ac-tionable. See Yarmuth-Dion, Inc. v. D'ion Furs,Inc., 835 F.2d 990, 994 (2d Cir.1987) (where de-signer who made fur coats sold them to departmentstores who then marketed them to end customerswithout the designer's identifying mark, it was errorfor district court to focus exclusively on the retailmarket (in which department store patrons wouldnot recognize the designer's mark and thereforethere would be no likelihood of confusion) becausethe wholesale market (i.e., the possibility of confu-sion among the department stores who bought thefur coats for resale) was relevant); Russ Berrie &Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980,990 (S.D.N.Y.1980) (holding that where defendantdid not affix the mark to its product and therefore













the end consumer was never made aware of themark, but defendant promoted the mark to whole-salers, “[t]here is no reason in law or equity why[plaintiff] would not be entitled to forestall confu-sion at the wholesale level. The test of course iswhether one-in this case a retailer-who had seen[plaintiff's] product under the mark [in question],would later know the difference when presentedwith an identical [product] offered to him under the[confusingly similar mark].”). The forecast of evid-ence indicates at least some degree of overlapbetween the type of customers, i.e., grocery chains,restaurants, etc., who bought from Mariscos andCBI. While it may ultimately turn out that no suchoverlap existed, and/or that there was no likelihoodof confusion, we cannot say based on the currentstatus of the record that there is no genuine issue ofmaterial fact on this point. We are hampered in ourattempted review in this regard because the districtcourt's analysis of the potential confusion at thiswholesale level was limited to the cursory state-ments quoted above.FN11

FN11. On remand, the parties may wish toexplore whether the purchasing agents ofthe commercial institutions buying Mar-iscos' shrimp were likely to be sophistic-ated businesspeople who would not be eas-ily confused by the dual use of the CAR-NIVAL mark. Indeed, the case law andcommentary indicate that this is frequentlythe case with respect to conflicting marksin wholesale markets. See Electronic DataSys. Corp. v. EDSA Micro Corp., 23U.S.P.Q.2d 1460, 1465 (T.T.A.B.1992); 3McCarthy §§ 23:101, 23:102.

Fifth, the evidence showed little with respect to ad-vertising by either party in the critical time frame of1990,FN12 so the fifth factor is neutral in impact.Sixth, there is no evidence in the record that wouldindicate bad faith on the part of CBI's principal inhis decision to use the name CARNIVAL or CAR-NIVAL CAJUN CLASSICS when he started doingbusiness as a sole proprietorship in 1990. Rather,

the unrebutted evidence suggests that he adoptedthe name to evoke the spirit of the Mardi Gras fest-ivities in New Orleans, a city whose culture wasclosely associated with the cuisine of his product.Seventh, there is no evidence of actual confusion inthe relevant time frame, i.e., 1990.FN13

FN12. The declaration of James Rukin,Mariscos' principal, indicates that Mariscosengaged in some advertising of its high-quality raw shrimp but fails to give specif-ic facts in this regard.

FN13. It is at this point that the distinctionbetween performing the likelihood-of-confusion test for purposes of determin-ing priority via the natural expansion the-ory, on the one hand, and performing thelikelihood-of-confusion test for purposesof determining whether current infringe-ment has occurred, on the other hand, be-comes highly significant. The former testfocuses on the time frame when the inter-vening use began to occur-in this case,1990, when CBI began doing business un-der the CARNIVAL name with respect tochicken gumbo and seafood gumbo, and1992, with respect to shrimp cakes, craw-fish cakes, lobster cakes, and crab cakes.See Viking Boat, 191 U.S.P.Q. at 303(“[T]he question of natural expansion mustbe viewed not in light of present tradepractices but rather what they were in 1961when [the intervening user] began to dobusiness under the mark ‘VIKING’.”).Thus, the various instances of actual con-fusion occurring at the FMI Show inChicago and at the San Francisco tradeshow in 1997 are not relevant.

*1315 Based on the totality of these factors, weconclude that there are genuine issues of materialfact regarding the likelihood of confusion of source,sponsorship, or affiliation with respect to Mariscos'product compared to CBI's product, at the time CBIbegan doing business, and two years thereafter












when it began to sell processed seafood productsother than gumbo. Cf. Tally-Ho, 889 F.2d at 1027(senior use of “You and the Law” mark in connec-tion with the title of an instructional televisionseries in the educational telecourse market extendedto the broadcast cable television market, because itwas reasonable for consumers to be confused as tothe relationship between the two users). The firstand second factors-the strength of the mark and thesimilarity of the marks-clearly weigh in favor ofCBSC. The fifth factor-advertising-is neutral. Thesixth and seventh factors-intent and actual confu-sion-weigh in favor of CBI. With respect to thethird factor-the similarity of the goods-raw shrimpand seafood gumbo are not so dissimilar that confu-sion is unlikely; the likelihood of confusing the in-stant goods would seem to depend upon the otherrelevant factors, including the context in which thepotential victim of confusion comes into contactwith the goods (which implicates the fourthfactor).FN14 However, as we have seen, the otherrelevant factors are closely balanced, and there aregenuine issues of material fact with respect to thefourth factor, the similarity of trade channels. Inthis particular case, we believe that the appropriateresolution of the remaining genuine issues of factmay be crucial to a proper disposition of this case;and we believe that further analysis by the districtcourt in the first instance is appropriate.

FN14. For example, when a retail customerin a grocery store sees a pile of raw shrimpat the fish counter, with no brand name atall, there is little likelihood that such enduser would confuse the source or sponsor-ship of the raw shrimp with that of CBI'spackaged seafood gumbo or shrimp cakes(bearing the CARNIVAL mark) eventhough located in another part of the samestore. On the other hand, depending uponfactors not yet analyzed by the districtcourt, there may be a likelihood of confu-sion at the level of the retailers or whole-salers who purchased Mariscos' shrimp inboxes bearing the name CARNIVAL, and

who were also in the market buying CBI'sproducts bearing the same CARNIVALmark.

B. Hi-Seas Assignment

[11] Second, plaintiff CBSC may have obtainedrights in the CARNIVAL mark through the Hi-SeasAssignment. Because CBSC stepped into Hi-Seas'shoes, CBSC's priority depends on the priority asbetween Hi-Seas and CBI. Hi-Seas began using theCARNIVAL mark in June 1992 for fresh frozenshrimp, cooked shrimp, breaded shrimp, cookedcrawfish, and breaded alligator. At that time, CBIhad been operating since 1990 as an unincorporatedsole proprietorship, and had been selling chickengumbo and seafood gumbo. However, at that time,CBI had not yet expanded into other processed sea-food products.FN15

FN15. CBI expanded into other processedseafood products, in particular shrimpcakes, crawfish cakes, lobster cakes, andcrab cakes, in December 1992.

Because CBI was using the CARNIVAL mark be-fore Hi-Seas with respect to a different good, prior-ity as between CBI and Hi-Seas turns on the same“natural expansion” concept that was exploredsupra in the context of Mariscos' priority and theMariscos Assignment. That is, CBI is unquestion-ably the senior user with respect to seafood gumboand chicken gumbo. The senior user's, i.e., CBI's,priority “may extend into uses in ‘related’ productor service markets,” i.e., the market for the productssold by Hi-Seas, because a trademark owner hasprotection “against the use of its mark on anyproduct or service which would reasonably bethought by the buying public to come from the*1316 same source, or thought to be affiliated with,connected with, or sponsored by, the trademarkowner.” Tally-Ho, 889 F.2d at 1023 (internal quota-tion marks omitted). If Hi-Seas' product was one in-to which CBI could have naturally expanded, thenCBI could have enjoined Hi-Seas at that time, and







CBI would have priority. The issue is whether-when Hi-Seas started using the CARNIVAL markin June 1992 for fresh frozen shrimp, cookedshrimp, breaded shrimp, cooked crawfish, andbreaded alligator-there was a likelihood of confu-sion as between Hi-Seas' products and CBI's sea-food gumbo which had been sold under the CAR-NIVAL mark since 1990. The existence of suchlikelihood of confusion, in turn, is determined byapplying the familiar seven-factor test to Hi-Seasand CBI as of June 1992.

The district court disregarded the Hi-Seas Assign-ment on the ground that “[a]ny rights received byPlaintiff via the assignment are legally insignificant... because [the record] indicates that Hi-Seas' rightsto the mark extended back only to June 10, 1992 ....[and] [h]aving used the ‘Carnival’ mark since 1990in connection with the manufacture and sale of sea-food gumbo and chicken gumbo, the Defendant'srights in the mark are senior to those assigned byHi-Seas to the Plaintiff.” District Court Order at 8n. 4. This ruling implicitly assumes that the naturalexpansion or related goods doctrine operated to ex-tend CBI's priority from the seafood gumbo marketto 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 inanalyzing this question, as directed by Tally-Ho,and we are not inclined to do so for the first time onappeal. Thus, on remand, the district court shouldconduct further proceedings, e.g., perform the prop-er analysis to decide whether there is any genuineissue of material fact as to whether the priority gen-erated by CBI's senior use extended to give CBIpriority 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 outstandingregarding whether plaintiff CBSC may have de-rived priority (via either the Mariscos Assignmentor the Hi-Seas Assignment) in the subject uses of

the mark CARNIVAL, we vacate. The order grant-ing summary judgment is vacated and the cause isremanded for further proceedings in accordancewith this opinion.

VACATED AND REMANDED.

C.A.11 (Fla.),1999.Carnival Brand Seafood Co. v. Carnival Brands,Inc.187 F.3d 1307, 51 U.S.P.Q.2d 1929, 12 Fla. L.Weekly Fed. C 1280

END OF DOCUMENT







CONAGRA, INC., a corporation, Plaintiff-Appel-lant,

v.Robert C. SINGLETON, an individual, d/b/a

SINGLETON SHRIMP BOATS, Singleton ShrimpBoats, Inc., a corporation, Defendants-Appellees.

No. 83-3037.

Oct. 11, 1984.

Successor in interest in shrimp processing businessbrought action against predecessor's son allegingtrademark infringement based on son's use of fam-ily name in business that was unrelated but similarto business father had established and which alsoused family name. The United States District Courtfor the Middle District of Florida, William J.Castagna, J., granted successor partial relief andfashioned injunction prohibiting son from using la-bels that were copies from product labels belongingto plaintiff, and plaintiff appealed. The Court ofAppeals, R. Lanier Anderson, III, Circuit Judge,held that: (1) family surname had acquired second-ary meaning as designation of father's shrimp pro-cessing business, and therefore, successor acquiredtrademark in name which it could assert against al-leged infringing use; (2) likelihood of confusion ex-isted between plaintiff and defendant's marks; (3)father did not abandon mark; and (4) doctrine oflaches was not available to son in connection withthe sale of processed shrimp.

Reversed and remanded with instructions.

West Headnotes



382TIX(F) Injunctions

382Tk1712 Permanent Injunctions382Tk1714 Grounds and Subjects of

Relief382Tk1714(1) k. In General. Most

Cited Cases(Formerly 382k870(2), 382k870.1 Trade Regu-

lation)In order to merit injunctive relief under section ofLanham Act prohibiting false designation of origin,plaintiff must show that it has trademark rights inmark or name at issue and that defendant adoptedmark or name that was same, or confusingly similarto plaintiff's mark, such that there was likelihood ofconfusion for consumers as to proper origin ofgoods created by defendant's use of name in histrade. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).




ited in General; Elements382Tk1419 k. In General. Most Cited

Cases(Formerly 382k870(2), 382k870.1 Trade Regu-

lation)Use of another's unregistered, that is, common-lawtrademark can constitute violation of section ofLanham Act prohibiting false designation or originwhere alleged unregistered trademarks used byplaintiff are so associated with its goods that use ofsame or similar marks by another company consti-tutes false representation that its goods came fromsame source. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1040 Names as Marks

743 F.2d 1508 Page 1743 F.2d 1508, 224 U.S.P.Q. 552(Cite as: 743 F.2d 1508)










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382Tk1042 k. Persons, Names Of. MostCited Cases

(Formerly 382k34 Trade Regulation)Where alleged trademark was surname, trademarklaws protected plaintiff's right to exclusive use ofname only to extent that name had acquired second-ary meaning. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1040 Names as Marks382Tk1042 k. Persons, Names Of. Most

Cited Cases(Formerly 382k10 Trade Regulation)

Factors to consider in determining whether surnamehas acquired secondary meaning entitling it totrademark protection are: length and manner of itsuse; nature and extent of advertising and promo-tion; efforts made by plaintiff to promote consciousconnection in public's mind between name andplaintiff's product or business; and extent to whichpublic actually identifies name with plaintiff'sproduct or venture.



382TIX(C) Evidence382Tk1620 Weight and Sufficiency

382Tk1628 Secondary Meaning382Tk1628(2) k. Particular Cases.

Most Cited Cases(Formerly 382k587 Trade Regulation)

Secondary meaning of surname and its clear identi-fication with shrimp packing business was estab-lished, where shrimp processing company hadprominently displayed surname on virtually all ofits seafood products for over 25 years, had expen-ded over $400,000 annually in worldwide marketsin its promotion of name, promotional efforts wereconsciously directed at establishing surname trade-mark in its relationship to business, and prior to ac-

quisition of business by current owner, market sur-veys revealed that surname was strongly identifiedwith products of business; thus, when current own-er acquired business, it acquired trademark rights inname which it could assert against allegedly in-fringing users.




Most Cited Cases(Formerly 382k870(2), 382k870.1 Trade Regu-

lation)Likelihood of confusion for purposes of section ofLanham Act prohibiting false destination of originis determined by analysis of number of factors, in-cluding strength of plaintiff's mark; similaritybetween plaintiff's mark and allegedly infringingmark; similarity between products and servicesoffered by plaintiff and defendant, similarity of ad-vertising methods, defendant's intent, and proof ofactual confusion. Lanham Trade-Mark Act, § 43(a),15 U.S.C.A. § 1125(a).




382Tk1086 k. Actual Confusion. MostCited Cases

(Formerly 382k870(2), 382k870.1 Trade Regu-lation)




382Tk1096 k. Particular Marks, Similarityor Confusion Involving. Most Cited Cases
















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(Formerly 382Tk1096(1), 382k870(2),382k870.1 Trade Regulation)



382TVIII(D) Defenses, Excuses, and Justific-ations

382Tk1521 Justified or Permissible Uses382Tk1526 k. Use of Own Name.

Most Cited Cases(Formerly 382k870(2), 382k870.1 Trade Regu-

lation)Defendant adopted business name confusingly sim-ilar to plaintiff's trademark, where most distinctiveaspect of defendant's business name was his sur-name, which was identical to plaintiff's mark, andcustomers and people in seafood trade actually con-fused defendant's business with that of plaintiff.Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. §1125(a).



Rights382Tk1202 Licenses

382Tk1207 k. Implied Licenses. MostCited Cases

(Formerly 382k73 Trade Regulation)Acquiescence in use of trade name is analogous toimplied license to use name which generally can berevoked at will of licensor.

[9] Equity 150 67

150 Equity150II Laches and Stale Demands

150k67 k. Nature and Elements in General.Most Cited Cases

Equity 150 84


150k84 k. Application of Doctrine in Gener-al. Most Cited CasesLaches is equitable doctrine committed to sounddiscretion of district court and it depends on carefulbalancing of several factors.


382T Trademarks382TV Duration and Termination of Rights

382Tk1167 Evidence382Tk1171 k. Weight and Sufficiency.


Defense of abandonment of trademark is one re-quiring strict proof.



382Tk1162 Use by Others382Tk1165 k. Objections; Laches, Acqui-

escence, and Delay. Most Cited Cases(Formerly 382k73 Trade Regulation)

Permitted infringement on mark holder's exclusiverights for some period of time does not constitutenonuse of marks sufficient to support abandonmentof trademark.



382Tk1162 Use by Others382Tk1164 k. Permission; Voluntary Ar-

rangements. Most Cited Cases(Formerly 382k73 Trade Regulation)

Where trademark holder's predecessor in interestevidenced no intent to abandon mark, but rather,used mark continuously and widely for 25 yearspreceding litigation, trademark was not abandonedeven though trademark was family name and prede-cessor in interest had allowed his son's use of fam-ily name in unrelated but similar business.

[13] Equity 150 72(1)





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150k68 Grounds and Essentials of Bar150k72 Prejudice from Delay in General

150k72(1) k. In General. Most CitedCasesLaches defense requires proof of three elements:delay in asserting right or claims; that delay wasnot excusable; and that delay caused defendant un-due prejudice.




382Tk1533 Delay in Assertion of Rights;Laches

382Tk1534 k. In General. Most CitedCases

(Formerly 382k385.1, 382k385 Trade Regula-tion)Court determining whether doctrine of laches es-tops plaintiff from asserting its rights to trademarkmust consider public's interest in trademark as def-inite designation of single source of goods.






(Formerly 382k386 Trade Regulation)





382Tk1535 k. Knowledge of Facts.Most Cited Cases

(Formerly 382k386 Trade Regulation)Laches defense was not available in trademark in-fringement action based on son's use of familyname in sale of processed shrimp, where father hadestablished similar business, family name wastrademark of father's business, and father did notbecome aware of son's direct competition in pro-cessed shrimp market until after lawsuit began.*1510 Thomas T. Steele, Tampa, Fla., for plaintiff-appellant.

Jeffrey L. Myers, Largo, Fla., for defendants-ap-pellees.

Appeal from the United States District Court for theMiddle District of Florida.

Before HILL and ANDERSON, Circuit Judges, andTUTTLE, Senior Circuit Judge.

R. LANIER ANDERSON, III, Circuit Judge:

This case presents a somewhat unique issue regard-ing a son's right to use a family name in a businessthat is unrelated, but similar to the business hisfather had established. Conagra, Inc. appeals fromthe district court's ruling on its claim to enjoin thedefendants, Singleton Shrimp Boats, Inc. andRobert C. Singleton,FN1 from using the Singletonname in the shrimp trade. Conagra, as a successorin interest to the trademark rights of SingletonPacking Corporation, brought the instant action un-der § 43(a) of the Lanham Act (15 U.S.C. § 1125),Florida's common law of unfair competition, andFla.Stat. § 495.151, which prohibits unfair competi-tion and dilution of an established trade name. Thedistrict court granted Conagra partial relief andfashioned an injunction prohibiting the defendantsfrom using labels that were copied from the productlabels belonging to Singleton Packing. On this ap-peal, we consider whether the court's remedy was
































adequate protection for Conagra's trademark rightsin light of the evidence adduced at trial.

FN1. We will hereinafter primarily refer tothe individual defendant, Robert C.Singleton, in discussing the actions of orpositions asserted collectively by both de-fendants.

I. FACTS

Henry C. Singleton, Sr. began selling shrimp over25 years ago in Tampa, Florida. The business wasincorporated as Singleton Packing Corp., whichthrough the years has engaged in procuring, pack-ing, and processing shrimp. Although SingletonPacking sells some unprocessed and unlabeledproducts to a variety of customers, its primaryproduct line consists of processed seafood products,which it markets either directly to large food ser-vice customers or through independent food brokersaround the world. In the years preceding this litiga-tion, Singleton Packing achieved annual sales ofover $100,000,000 and was spending $400,000 ayear on advertising and promotion. It ranks as thelargest packer-processor of shrimp in the *1511United States. With the exception of its sales offresh or unprocessed shrimp, all of Singleton Pack-ing's products are distributed with labels promin-ently displaying the Singleton name.

Conagra, through a subsidiary corporation, acquiredthe operating assets and business of Singleton Pack-ing from Henry C. Singleton on January 9, 1981.Under the purchase contract, Singleton transferredto Conagra all rights, title, and interest in and toany trademarks, trade names, and good will associ-ated with Singleton Packing.

Singleton Shrimp Boats is a Florida corporation, or-ganized in 1978 with its principal place of businessin Pinellas County, Florida, across the Bay fromSingleton Packing's headquarters in Tampa. RobertC. Singleton, the individual defendant, is a founder,chief executive, and principal owner of Singleton

Shrimp Boats. Robert C. Singleton is also the sonof Henry C. Singleton, the founder of SingletonPacking and Conagra's predecessor in interest inthat corporation. Singleton Shrimp Boats is en-gaged in the wholesale and retail marketing of freshand processed shrimp products in Florida. At thetime this litigation began, Singleton Shrimp Boatshad annual sales in the area of $2,000,000 a year.

Conagra filed the instant lawsuit in June of 1981,after it had failed to negotiate a settlement regard-ing the defendant's continued use of the Singletonname. Conagra claimed that the Singleton name, al-though not registered as a trademark, had acquiredsecondary meaning among consumers of seafoodproducts, and thus was entitled to protection underthe trademark laws. Because the defendants weresubsequent users of the name, Conagra sought toprohibit the defendant's prominent display of thename in connection with Singleton Shrimp Boats'business.

Robert C. Singleton defended primarily on thegrounds that Henry C. Singleton and SingletonPacking had acquiesced in his use of the Singletonname in connection with his business. He argued tothe district court that he had been selling freshshrimp and shrimp products since 1972, first from aretail outlet under the name Singleton Seafood Cen-ter, and later through the defendant corporation. Asfurther proof of acquiescence, Robert C. Singletonargued that his father knew of his activities in theshrimp business and, rather than objecting to hisuse of the Singleton name, had encouraged the son'sbusiness by selling shrimp to Singleton ShrimpBoats under a steadily increasing line of credit.

The district court held that the defendant could con-tinue to use the Singleton name in the shrimp trade.The court first found that the name had not acquiredsecondary meaning to consumers. Alternatively, itfound that Singleton Packing Company had acqui-esced in Robert C. Singleton's use of the name inthe shrimp trade. Finally, with respect to the labelswhich Robert C. Singleton admitted copying fromSingleton Packing, the district court found that the



defendant's use of the copied labels created a likeli-hood of confusion, and the court enjoined the de-fendant from using those labels on the processedshrimp products of Singleton Shrimp Boats.

II. INTRODUCTION

The defendant has not cross-appealed the districtcourt's judgment enjoining use of the copied labels.Thus, we consider only Conagra's claim that thedistrict court's refusal to enjoin the defendant's useof the Singleton name failed to adequately protectConagra's right to exclusive use of that name in theshrimp trade. Conagra argues that the districtcourt's findings-(1) that the Singleton name had notacquired secondary meaning, and (2) that SingletonPacking had acquiesced in the defendant's use ofthe name-were clearly erroneous.

We first evaluate the secondary meaning issue anddetermine that the district court's finding on this is-sue was contrary to the strong evidence in the re-cord. We further conclude that Conagra establishedfacts that entitled it to greater protection for its ex-clusive use of the Singleton name than was af-forded by the district court's order.

*1512 We next consider the affirmative defense ofacquiescence. Because the district court did notspecify findings relating to either of the two doc-trines argued by the defendant, abandonment orlaches leading to equitable estoppel, we look atthose doctrines. We conclude that the defendantpresented insufficient evidence to carry the burdenon the abandonment issue. We also conclude thatthe laches defense cannot support the defendant'scontinued use of the Singleton name in connectionwith the sale of processed shrimp. However, the de-fendant may have established a laches defense withregard to his use of the Singleton name in connec-tion with the sales of fresh shrimp, and therefore weremand to the district court for further proceedingson this aspect of the laches defense. Accordingly,we leave it to the district court to fashion an appro-priate remedy, consistent with its finding on the

laches issue, and affording greater protection to Co-nagra's trademark rights in the Singleton name thanwas granted in the court's previous order.

III. DISCUSSION

A. Conagra Has An Interest in the Singleton Namethat Entitles it to Protection Under the TrademarkLaws

[1] Our cases have established two elements thatConagra had to prove to merit injunctive relief un-der § 43(a) of the Lanham Act: FN2 (1) that it hastrademark rights in the mark or name at issue-i.e.,Singleton, see, e.g., Citibank, N.A. v. CitibancGroup, Inc., 724 F.2d 1540, 1545 (11th Cir.1984);and (2) that the defendant adopted a mark or namethat was the same, or confusingly similar to theplaintiff's mark, such that there was a likelihood ofconfusion for consumers as to the proper origin ofthe goods created by the defendant's use of theSingleton name in his trade. See, e.g., id. at 1547;Jellibeans, Inc. v. Georgia Skating Clubs, Inc., 716F.2d at 839-46; John H. Harland Co. v. ClarkeChecks, Inc., 711 F.2d 966, 981 (11thCir.1983).FN3

FN2. Section 43(a) provides in pertinentpart:

Any person who shall fix, apply, or an-nex, to any container or containers forgoods, a false designation of origin, orany false description or representation,including words or other symbols intend-ing to falsely describe or represent thesame ... shall be liable to a civil actionby any person doing business in the loc-ality falsely indicated as that of origin ...or by any person who believes that he isor is likely to be damaged by the use ofany such false description or representa-tion.

15 U.S.C. § 1125(a). In essence, Cona-












gra's claim in this litigation is that thedefendant's use of the Singleton name inthe shrimp business is a false designationof the origin of the defendant's goods be-cause consumers would be led to believeeither that the defendant's products wereproduced by Singleton Packing, or thatSingleton Shrimp Boats and SingletonPacking were somehow affiliated. Assuch, Conagra states a claim similar tothose previously recognized as fallingwithin the scope of § 43(a). See, e.g.,Jellibeans, Inc. v. Skating Clubs ofGeorgia, Inc., 716 F.2d 833 (11thCir.1983); cf. Safeway Stores, Inc. v.Safeway Discount Drugs, Inc., 675 F.2d1160, 1163 (11th Cir.1982) (discussingstandards for recovery under § 32(1)(a)of the Lanham Act, a provision closelyanalogous to § 43(a)). For purposes ofthis opinion, we draw no distinctionbetween the cases relying upon § 43(a),which applies to unregistered but pro-tectable marks, and § 32(a), which ap-plies to registered marks. See Jellibeans,Inc. v. Skating Clubs of Georgia, Inc.,716 F.2d at 839 n. 14.

FN3. Because of the similarity betweenConagra's claim under the Lanham Act andits state common law and statutory claims,see Safeway Stores, Inc. v. Safeway Dis-count Drugs, Inc., 675 F.2d 1160, 1167(11th Cir.1982); Amstar Corp. v. Domino'sPizza, Inc., 615 F.2d 252, 258 (5th Cir.),cert. denied, 449 U.S. 899, 101 S.Ct. 268,66 L.Ed.2d 129 (1980), and because wefind for Conagra on its Lanham Act claim,we do not address the state law claims sep-arately.

1. Conagra's Right to the Singleton Name

[2][3] With respect to the first element, Conagra'sright to the exclusive use of the Singleton name in

the shrimp trade, there is no dispute that Conagrapurchased the full trademark rights to the name thatbelonged to Henry C. Singleton and SingletonPacking, whatever those rights might be. Althoughthe Singleton name was not registered, the use ofanother's unregistered, i.e., common law, trademark“can constitute a violation of [§ 43(a) ] where...‘the alleged unregistered trademarks used by*1513 the plaintiff are so associated with its goodsthat the use of the same or similar marks by anothercompany constitutes a [false] representation that itsgoods came from the same source.’ ” Boston Pro-fessional Hockey Ass'n v. Dallas Cap & EmblemMfg., Inc., 510 F.2d 1004, 1010 (5th Cir.1975) FN4

(quoting Joshua Meier Co. v. Albany Novelty Mfg.Co., 236 F.2d 144, 147 (2d Cir.1956)), cert. denied,423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975).Because Singleton is a surname, the trademark lawsprotect Singleton Packing's (and thus Conagra's)right to exclusive use of the name only to the extentthat the name has acquired “secondary meaning.”See Chevron Chemical Co. v. Voluntary PurchasingGroups, 659 F.2d 695, 702 (5th Cir.1981) (thetrademark laws require proof of secondary meaningwhen the trademark is not sufficiently distinctive toidentify the product as tied to a specific producer,as in the case of a family surname; in such cases thecourts require a showing that the public identifiesthe name with the producer as the source of theproduct).FN5 The district court's ruling, that theSingleton name had not acquired secondary mean-ing, is a finding of fact that we evaluate under theclearly erroneous standard. See Brooks Shoe Mfg.,Inc. v. Suave Shoe Corp., 716 F.2d 854, 860 (11thCir.1983); Fed.R.Civ.P. 52.

FN4. In Bonner v. City of Prichard, 661F.2d 1206 (11th Cir.1981) (en banc), thiscourt adopted as binding precedent all ofthe decisions of the former Fifth Circuithanded down prior to the close of businesson September 30, 1981. Id. at 1209.

FN5. As noted in Original AppalachianArt Works, Inc. v. Toy Loft, Inc., 684 F.2d















































821, 831 n. 14 (11th Cir.1982), ChevronChemical is not binding authority in thiscircuit because it was decided by a Unit Apanel of the former Fifth Circuit after Oc-tober 1, 1981. See Bonner v. City ofPrichard, 661 F.2d 1206, 1209 (11thCir.1981) (en banc); Stein v. Reynolds Se-curities, Inc., 667 F.2d 33, 34 (11thCir.1982). Nevertheless, Chevron Chemic-al is persuasive authority because it reliesdirectly on former Fifth Circuit caseswhich are binding precedent on this court.

[4] The factors to consider in determining whethera name such as Singleton has acquired secondarymeaning are: (1) the length and manner of its use;(2) the nature and extent of advertising and promo-tion; (3) the efforts made by the plaintiff to promotea conscious connection in the public's mindbetween the name and the plaintiff's product orbusiness; and (4) the extent to which the public ac-tually identifies the name with the plaintiff'sproduct or venture. See Brooks Shoe Mfg., Inc. v.Suave Shoe Corp., 716 F.2d at 860; Volkswagen-werk Aktiengesellschaft v. Rickard, 492 F.2d 474,477-78 (5th Cir.1974).

[5] In the instant case, the secondary meaning ofthe Singleton name and its clear identification withSingleton Packing was hardly in dispute.FN6 Thefirst three factors supporting a finding of secondarymeaning were clearly set forth in the record.Singleton Packing has prominently displayed theSingleton name on virtually all of its seafoodproducts for over 25 years. It expended over$400,000 annually in worldwide markets in its pro-motion of the name. According to the current pres-ident of Singleton Packing, the promotional effortswere consciously directed at establishing theSingleton mark and its relationship to SingletonPacking's business. As an example, Conagra intro-duced a promotional film, which tied the Singletonname to the group of seafood products thatSingleton Packing marketed. The film, which em-phasized the extensive efforts at quality control de-

veloped by Singleton Packing, had been widely dis-played to brokers and retailers in the seafood busi-ness for over three years preceding the instant litig-ation.

FN6. Indeed, in his opening remarks to thecourt below, counsel for the defendantstated that “the name Singleton did, in fact,obtain a secondary meaning.” Trial Tran-script at 21. We note this statement not asa binding concession by the defendants, cf.Amstar Corp. v. Domino's Pizza, Inc., 615F.2d 252, 263 n. 9 (5th Cir.1980), butrather to emphasize that defense counselcorrectly perceived the strength of theplaintiff's proof on this issue.

Finally, on the fourth and most telling factor, therewas ample evidence that Singleton Packing hadachieved the recognition for the Singleton namethat it had sought. A representative of Conagra test-ified*1514 that prior to the acquisition of SingletonPacking, market surveys revealed that the Singletonname was strongly identified with the products ofSingleton Packing. An independent broker testifiedthat he merely had to mention the Singleton nameand customers knew that he was speaking ofSingleton Packing. Henry C. Singleton testified thatthe Singleton name had achieved wide recognitionin the industry by 1970. Even the individual de-fendant, Robert C. Singleton, referred to SingletonPacking as “Singleton” and testified that the namewas recognized in the industry as referring to hisfather's company.

By this uncontradicted evidence at trial, it is clearthat the Singleton name had acquired secondarymeaning as the designation of the business ofSingleton Packing. The district court was clearly er-roneous in finding to the contrary. Thus, when Co-nagra acquired Singleton Packing, it acquired trade-mark rights in the Singleton name, which it couldassert against allegedly infringing users.

2. Likelihood of Confusion






















We now turn to a consideration of the defendant'suse of the name to determine whether it caused alikelihood of confusion, such that Conagra was en-titled to enjoin the defendant's continued use of thename in connection with the shrimp trade. The dis-trict court, because of its findings on the secondarymeaning issue, did not have occasion to considerthe likelihood of confusion question in the contextof the defendant's general use of the name.FN7 Be-cause likelihood of confusion is a fact question, seeJellibeans, Inc. v. Skating Clubs of Georgia, Inc.,716 F.2d at 840 & n. 16, we ordinarily would re-mand for findings on this issue. In the instant case,however, the plaintiff's proof on this issue was sostrong that any finding other than one of likely con-fusion would be clearly erroneous. Therefore, wedecide the issue.

FN7. The district court did find a likeli-hood of confusion in the limited area of thedefendant's use of the copied labels.

[6] Likelihood of confusion for purposes of § 43(a)of the Lanham Act is determined by analysis of anumber of factors, including: (1) the strength of theplaintiff's mark; (2) the similarity between theplaintiff's mark and the allegedly infringing mark;(3) the similarity between the products and servicesoffered by the plaintiff and defendant; (4) the simil-arity of the sales methods, i.e., retail outlets or cus-tomers; (5) the similarity of advertising methods;(6) the defendant's intent, e.g., does the defendanthope to gain competitive advantage by associatinghis product with the plaintiff's established mark;and (7) the most persuasive factor on likely confu-sion is proof of actual confusion. See, e.g., Jelli-beans, Inc. v. Skating Clubs of Georgia, Inc., 716F.2d at 739-46. We find that the similarity betweenthe Singleton mark and the defendant's businessname, Singleton Shrimp Boats, and, most persuas-ively, the proof that Conagra offered on actual con-fusion compelled a fact finding of likelyconfusion.FN8

FN8. The remaining factors, although notas overwhelmingly established in the re-

cord, do not undermine our conclusion thata finding of likely confusion was com-pelled, and we do not address these factorsseparately.

a. Similarity of the Marks

[7] The distinctive aspect of the defendant's busi-ness name, Singleton Shrimp Boats, is the nameSingleton, which of course is identical to theplaintiff's mark. See, e.g., Safeway Stores, Inc. v.Safeway Discount Drugs, Inc., 675 F.2d 1160,1165-66 (11th Cir.1982) (the business name“Safeway Discount Center” or “Drugs” was foundto infringe the trade name “Safeway; ” the words“Discount Center” or “Discount Drugs” were foundto be merely descriptive). The Singleton name is setout, apart from the words “Shrimp Boats,” on all ofthe defendant's trucks, signs, media advertising, andbusiness cards. We have no trouble concluding thatthe defendant has adopted a business name confus-ingly similar to the plaintiff's mark. Cf. *1515Jelli-beans, Inc. v. Skating Clubs of Georgia, Inc., 716F.2d at 841-42 (trade names “Jellibeans” and“Lollipops” were found to be confusingly similar);John H. Harland Co. v. Clarke Checks, Inc., 711F.2d 966, 975-76 (11th Cir.1983) (upholding lowercourt's finding that names “Memory Stub” and“Entry Stub” were found to be confusinglysimilar).FN9

FN9. With regard to the defendant's adop-tion of a nondescriptive name, such asSingleton, we note that the defendant's ac-tion generally would support a finding ofintent to trade on the reputation of theplaintiff's business. See, e.g., Mortellito v.Nina of California, Inc., 335 F.Supp. 1288(S.D.N.Y.1972). In the instant case,however, Robert C. Singleton was usinghis own name in the shrimp trade. In sucha case, the courts are less likely to find in-tentional infringement. An individual gen-erally will be given some opportunity touse his own name and establish a reputa-





















tion for that name, even in the face of aprior user's trademark rights in the name,so long as the person using the name dis-tinguishes his business and use of the namefrom the business owning the trademarkrights. See, e.g., Taylor Wine Co. v. BullyHill Vineyards, Inc., 569 F.2d 731, 735-36(2d Cir.1978). It appears from the recordthat Robert C. Singleton did make some at-tempt to disassociate Singleton ShrimpBoats from his father's business and devel-op a reputation in the shrimp trade inde-pendent from Singleton Packing. Thus, al-though some facts in the case point to anintent on the part of Singleton ShrimpBoats to ride on the coattails of SingletonPacking, i.e., copying the Singleton Pack-ing labels, the evidence was not alone sostrong that the district court would havebeen compelled to find that the defendantintended to infringe on the Singleton mark.Contrary to Conagra's assertion on appeal,the evidence on intent was not strongenough, by itself, to compel a finding oflikely confusion. However, even withoutproof of intent, the evidence on the simil-arity of the marks and the proof of actualconfusion was strong enough to compelsuch a finding.

b. Actual Confusion

The most persuasive proof of likely confusion inthe instant case was Conagra's proof of actual con-fusion. See Safeway Stores, Inc. v. Safeway Dis-count Drugs, Inc., 675 F.2d at 1166-67. In responseto interrogatories propounded by Conagra, the de-fendant reported numerous instances where people,sometimes customers, assumed that defendant'sbusiness was affiliated with, or actually was,Singleton Packing.FN10 In addition, Conagra intro-duced evidence that it received inquiries from itsdistributors about competing direct sales ofSingleton products to restaurants and retailers;Singleton Packing made no such direct sales, but

Singleton Shrimp Boats did. In short, Conagra es-tablished that customers and people in the seafoodtrade actually confused the defendant's businesswith that of the plaintiff.

FN10. Singleton Shrimp Boats receivedcalls from customers complaining aboutshrimp purchased from a grocery chainthat sold the products of Singleton Pack-ing, not Singleton Shrimp Boats. Supplierswould often call Singleton Shrimp Boatsattempting to sell them products under theassumption that Singleton Shrimp Boatswas in fact Singleton Packing. Prospectiveemployees had contacted Singleton ShrimpBoats in response to “help wanted” adsplaced by Singleton Packing Corporation.Customers had made comments to the de-fendant that “Conagra had bought out” thedefendant's business, when in fact Conagrapurchased Singleton Packing. Finally, thedefendant had received invoices billinghim for purchases that had been made bySingleton Packing.

Conagra's proof of actual confusion resulting fromthe defendant's use of a confusingly similar markwas such strong evidence of likely confusion thatthe district court could not have reasonably foundotherwise. Conagra thus established in the lowercourt that it had a trademark right to the Singletonname, which preceded the defendant's use of thatname, and that the defendant's use of the name ledto a likelihood of confusion. Absent any justifica-tion for the defendant's infringing use by way ofsome affirmative defense, Conagra was entitled toprotection under § 43(a) of the Lanham Act againstthe defendant's infringing use.FN11

FN11. This is not to say that Robert C.Singleton must be totally foreclosed fromuse of his proper surname in the shrimpbusiness. Thus far we have consideredonly the defendant's actual use of thatname, i.e., the prominent display of theSingleton name accompanied only by the










descriptive words “Shrimp Boats.” Wehave found this use to be infringing.However, as we have noted, see supra note9, the courts have been reluctant to abso-lutely prohibit an individual from using hisproper name in connection with a business.The important consideration in this contextis whether the defendant can use the namein a fashion that will not lead to likely con-fusion with the plaintiff's business, forwhich the plaintiff has exclusive right touse the Singleton trade name. We do notdecide whether the defendant's use of hisfull name, Robert C. Singleton, or use ofthe Singleton name with some disclaimerdisavowing any affiliation with SingletonPacking, would lead to likely confusion.The district court is free to consider this is-sue on remand.

*1516 B. Acquiescence

The defendant raises the affirmative defense of ac-quiescence. The district court, as an alternative toits finding of no secondary meaning, found that Co-nagra's predecessors in interest to the name, HenryC. Singleton and Singleton Packing, had authorizedthe defendant's use of the name in the shrimp tradeand that this authorization precluded Conagra fromterminating that use. Conagra does not deny thatHenry C. Singleton was aware of and did not objectto his son's shrimp businesses using the Singletonname. Conagra further concedes that SingletonPacking was a significant supplier of fresh shrimpto Robert C. Singleton's various businesses. Cona-gra, however, argues that these facts did not supporta ruling that Singleton Packing is now unable toprevent the defendant's continued use of theSingleton trademark.

[8][9] A finding of acquiescense, as such, in the de-fendant's use of the name, was not sufficient toforeclose Conagra's rights to terminate that use. Ac-quiescence alone is analogous to an implied licenseto use the name. Cf. Menendez v. Holt, 128 U.S.

514, 524, 9 S.Ct. 143, 145, 32 L.Ed. 526 (1888) (“where consent by the owner to use of his trade-mark by another is to be inferred from his know-ledge and silence merely, ‘it lasts no longer than thesilence from which it springs; it is, in reality, nomore than a revocable license.’ ”). An implied li-cense is generally terminable at the will of the li-censor. Id. See also, University of Pittsburgh v.Champion Products, Inc., 686 F.2d 1040, 1045 (3dCir.), cert. denied, 459 U.S. 1087, 103 S.Ct. 571,74 L.Ed.2d 933 (1982); PGA v. Bankers' Life &Casualty Co., 514 F.2d 665, 670 (5th Cir.1975)(once licensee's right to use the mark is terminated,any subsequent use constitutes infringement). Tocontinue in its use of the Singleton name sub-sequent to the mark holder's desire to terminate thatuse, the defendant bore the burden of establishingone of the affirmative defenses of either abandon-ment or laches leading to equitable estoppel. See 3R. Callman, The Law of Unfair Competition, Trade-marks and Monopolies § 79.1 (1982). We examineeach of these doctrines seriatim.FN12

FN12. As we have noted, the district courtmade no specific findings on either aban-donment or laches, although it did grant re-lief on the defendant's acquiescence claim.We assume arguendo that abandonment isa fact issue, and we analyze the record todetermine whether a finding of abandon-ment would be clearly erroneous. Laches isan equitable doctrine committed to thesound discretion of the district court and itdepends on the careful balancing of severalfactors. Environmental Defense Fund, Inc.v. Alexander, 614 F.2d 474, 477-79 (5thCir.), cert. denied, 449 U.S. 919, 101 S.Ct.316, 66 L.Ed.2d 146 (1980). We thus con-sider the laches defense by analyzing theunderlying factors under the clearly erro-neous standard, and assuming arguendothat the lower court exercised its discretionin affording the defendant relief on thisclaim.




















1. Abandonment

[10][11][12] The defense of abandonment is one forwhich we require strict proof. See Citibank, N.A. v.Citibanc Group, Inc., 724 F.2d at 1545. Under thisdoctrine:

Defendants must show that the plaintiff actuallyabandoned the use of the mark, and, also, that theplaintiff intended to abandon the mark.

Id.; see also Saxlehner v. Eisner & Mendelson Co.,179 U.S. 19, 31, 21 S.Ct. 7, 11, 45 L.Ed. 60 (1900).Permitted infringement on the mark holder's exclus-ive rights for some period of time does not consti-tute nonuse of the mark sufficient to support anabandonment. See United States Jaycees v. Phil-adelphia Jaycees, 639 F.2d 134, 139 (3d Cir.1981).Furthermore, the plaintiff's predecessor in the in-stant case, Singleton Packing, evidenced no intentto abandon the mark; it used the mark continuouslyand widely over the 25 years preceding the litiga-tion. The doctrine of abandonment *1517 generallyapplies only when the plaintiff mark holder relin-quishes his exclusive rights to the world, notmerely to a single user, see Dawn Donut Co. v.Hart's Food Stores, Inc., 267 F.2d 358, 363 (2dCir.1959) (abandonment occurs only when markholder fails to use its mark anywhere in the nation)FN13 ; the latter case is more appropriately classi-fied as a license. See Menendez v. Holt, 128 U.S. at524, 9 S.Ct. at 145. A finding that Henry C.Singleton and Singleton Packing, as Conagra's pre-decessors, abandoned the mark would have beenclearly erroneous in light of the evidence at trial.

FN13. We discuss a narrow exception tothis general rule infra at note 15, and findthat exception inapplicable in the instantcase.

2. Laches Leading to Estoppel

[13][14] The question of laches, which can lead toestoppel of the plaintiff's exclusive claim to use themark, creates a much closer issue on the facts of

this case. The laches defense requires proof of threeelements: (1) a delay in asserting a right or claim;(2) that the delay was not excusable; and (3) thatthe delay caused the defendant undueprejudice.FN14 Environmental Defense Fund v. Al-exander, 614 F.2d 474, 478 (5th Cir.), cert. denied,449 U.S. 919, 101 S.Ct. 316, 66 L.Ed.2d 146(1980). The test for laches or estoppel is flexible,requiring a careful examination of both the delayand the prejudice caused by that delay. See Cit-ibank, N.A. v. Citibanc Group, Inc., 724 F.2d at1546.FN15 In addition, a court determining wheth-er the doctrine of laches estops the plaintiff fromasserting its rights also must consider the public'sinterest in the trademark as a definite designation ofa single source of the goods. Thus, although a de-fendant suffers some prejudice, the public interestin avoiding confusion might outweigh that preju-dice. See James Burrough Ltd. v. Sign of theBeefeater, Inc., 572 F.2d 574, 578 (7th Cir.1978).

FN14. With regard to the prejudice factor,a defendant's intent to wrongfully infringeon the plaintiff's mark undermines theweight to be given this factor. See Uni-versity of Pittsburgh v. ChampionProducts, Inc., 686 F.2d 1040, 1044 n. 14(3d Cir.1982).

FN15. In University of Pittsburgh v.Champion Products, Inc., the court notedthat the laches defense actually consists oftwo classes of cases: one in which theplaintiff's delay has been so outrageous,unreasonable, or unexcusable as to consti-tute virtual abandonment, and a second,more common class of cases, in which thedelay is not so unreasonable and the de-fendant must show the type of prejudiceleading to estoppel. 686 F.2d at 1044-45.The instant case falls into this second classof cases and thus the list of factors setforth above properly govern the analysis ofthis defense.

To properly consider the laches defense in the in-





































stant case, we must separate the two aspects of thedefendant's business. We conclude that laches de-fense cannot support the defendant's continued useof the Singleton name in connection with the sale ofprocessed shrimp. A contrary finding by the districtcourt would have been an abuse of discretion. Thedefendant's continued use of the name in connec-tion with the sale of fresh shrimp, however, re-quires a remand to the district court for more de-tailed consideration of the laches defense.

[15] With regard to the defendant's use of theSingleton mark in the sale of processed shrimp,there was complete justification for the delay; in ef-fect, there was no acquiescence. The father did notbecome aware of the defendant's direct competitionin the processed shrimp market until after this law-suit began. Thus, the evidence in the case does notsupport a finding that Singleton Packing inexcus-ably delayed in asserting its exclusive right to theSingleton mark as it related to the defendant's saleof processed shrimp. See supra note 12 (facts un-derlying laches defense reviewed under clearly er-roneous standard). Because one of the requisite ele-ments of the defense was not met, a finding oflaches with respect to processed shrimp would bean abuse of discretion.

The defendant's use of the Singleton name for hissales of fresh shrimp presents a more difficult ques-tion. The facts governing*1518 the lower court'sdiscretion on this issue are not clearly apparentfrom the record and we are unable to determinewhether application of the laches doctrine to thisaspect of the defendant's business would constitutean abuse of discretion.

The defendant's father was aware of his son's useand prominent display of the Singleton name invarious shrimp businesses for over 10 years. Thecorporate defendant, Singleton Shrimp Boats,began operations in 1978. Thus, it can properly besaid that the father delayed in asserting his exclus-ive rights to the name.FN16 This delay was accom-panied by encouragement in the form of sales to thedefendant by Singleton Packing on an established

line of credit. See, e.g., Ambrosia Chocolate Co. v.Ambrosia Cake Bakery, 165 F.2d 693, 695 (4thCir.1947) (sales of raw materials by the plaintiffmark holder to the defendant infringer deemed rel-evant to the defendant's permissive use of themark). In addition, with regard to fresh shrimpsales, no justification for the delay appears in therecord.

FN16. The proof at trial showed that thedefendant's use of the Singleton name wasnot continuous over the 10-year period.Singleton Seafood Center, which the indi-vidual defendant operated from 1972 to1977, was a distinct business fromSingleton Shrimp Boats in its operation,location, and facilities. For over 6 monthsafter Singleton Seafood Center ceased op-eration, Robert C. Singleton was not en-gaged in the shrimp trade. The court on re-mand must decide whether there was suffi-cient connection between the two busi-nesses to support a finding that SingletonShrimp Boats, a business formed in 1978,can assert the prior existence of SingletonSeafood Center in support of its continuedright to use the Singleton name.

With regard to the prejudice issue, the record showsthat Robert C. Singleton and Singleton ShrimpBoats spent $120,000 from 1978 until 1981 advert-ising the business. All of the advertising clearly andprominently displayed the Singleton name.However, we cannot determine from the recordhow much of that advertising was directly related tofresh shrimp sales, rather than the nonconsensualuse of the Singleton name on copied labels or ad-vertising related to processed shrimp products,which could not properly be considered in evaluat-ing the defendant's prejudice. There is little evid-ence in the record on which we could base a con-clusion regarding the detriment the defendantwould suffer from a change in name. Moreover, thecase before us lacks any factfindings regarding theissue of the defendant's intent in using the







Singleton name in his fresh shrimp business. Seesupra note 14.

Finally, although the evidence in the record clearlyshowed likely confusion stemming from the de-fendant's use of the Singleton name, we cannot de-termine whether this confusion would persist if thatuse was limited to fresh shrimp sales, and whetherpublic confusion from such use would outweigh theprejudice to the defendant.

Careful consideration of these factors, the possibleneed for additional evidence, the finding of facts onthe elements of the laches defense, and the soundexercise of discretion based on the facts are mattersbest left to the district court on remand.

IV. CONCLUSION

We have concluded that Conagra possesses trade-mark rights in the name “Singleton,” because thatname has acquired secondary meaning among con-sumers. The district court's finding to the contrarywas clearly erroneous. We have further concluded,based primarily on the evidence of actual confu-sion, that the defendant's use of the Singleton namein connection with Singleton Shrimp Boats in-fringes on Conagra's trademark rights to that nameand causes likely confusion.

With regard to the acquiescence defense, we havedetermined that a finding of abandonment would beclearly erroneous on these facts. We have furtherdetermined that the laches defense cannot apply toauthorize the defendant's continued use of theSingleton name in connection with his sales of pro-cessed shrimp. The laches defense may apply,however, to permit the defendant's continued use ofthe Singleton name in connection with fresh shrimpsales. We therefore remand to the district court*1519 for purposes of determining whether, uponbalancing the factors we have discussed and anyadditional evidence the court may wish to consider,the defendant sufficiently established a laches de-fense that estops Conagra from preventing his use

of the Singleton name in connection with the sale offresh shrimp.

We also leave to the district court's determinationthe proper scope of injunctive relief, consistent withits finding on the laches issue and our holding thatthe defendants may not use the Singleton trademarkin connection with sales of processed shrimp. Inmolding its injunctive order, the district court isfree on remand to consider whether the defendantmight be able to continue using his surname, bothin connection with fresh and processed shrimp, butin a fashion not likely to cause confusion withSingleton Packing's exclusive rights to that name.See supra notes 9 and 11.

The case is REVERSED and REMANDED with in-structions.

C.A.Fla.,1984.Conagra, Inc. v. Singleton743 F.2d 1508, 224 U.S.P.Q. 552

END OF DOCUMENT







INVESTACORP, INC., Plaintiff-Appellant,v.

ARABIAN INVESTMENT BANKING CORPOR-ATION (INVESTCORP) E.C. d/b/a Investcorp andInvestcorp International, Inc., a Delaware Corpora-

tion, Defendants-Appellees.No. 89-6060.

May 29, 1991.

Financial services company brought service markinfringement action against investment bank andwholly owned subsidiary. The United States Dis-trict Court for the Southern District of Florida, No.88-01962-CIV-TES,Thomas E. Scott, J., 722F.Supp. 719, entered summary judgment in favor ofbank and subsidiary. Company appealed. The Courtof Appeals, Edward S. Smith, Senior Circuit Judge,sitting by designation, held that: (1) service mark,“Investacorp,” was descriptive and could be protec-ted only if it acquired secondary meaning beforebank and subsidiary used similar term “Investcorp,”and (2) service mark did not acquire secondarymeaning during five years prior to bank's use ofmark.

Affirmed.

West Headnotes






To prove service mark infringement, plaintiff mustshow that defendant used term in commerce, thatdefendant's term was used in connection with de-fendant's services, and that defendant's term islikely to be confused with term in which plaintiffpossesses right to use to designate plaintiff's ser-vices. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1029 Capacity to Distinguish or Signi-fy; Distinctiveness


(Formerly 382k11, 382k10)Business does not automatically obtain rights inmark by using it and will obtain rights in markupon first use only if mark is inherently distinctive,but if mark is not inherently distinctive, businessmay obtain rights in mark when it attains secondarymeaning. Fed.Rules Civ.Proc.Rule 56(c), 28U.S.C.A.



382Tk1034 k. Generic Terms or Marks. MostCited Cases

(Formerly 382k23)Generic term is typically incapable of achievingservice mark protection because it has no distinct-iveness. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1035 Descriptive Terms or Marks382Tk1037 k. Acquired Distinctiveness;

Secondary Meaning. Most Cited Cases

931 F.2d 1519 Page 1931 F.2d 1519, 19 U.S.P.Q.2d 1056(Cite as: 931 F.2d 1519)


































(Formerly 382k13)Because descriptive service mark is not inherentlydistinctive, it may be protected only if it acquiressecondary meaning. Lanham Trade-Mark Act, §43(a), 15 U.S.C.A. § 1125(a).



382Tk1040 Names as Marks382Tk1042 k. Persons, Names Of. Most


If personal name mark acquires secondary meaning,it is afforded strength of inherently distinctivemark. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1045 Geographical Terms or Names asMarks

382Tk1047 Descriptiveness382Tk1047(1) k. In General. Most

Cited Cases(Formerly 382k32.1, 382k32)



382Tk1045 Geographical Terms or Names asMarks

382Tk1048 k. Acquired Distinctiveness;Secondary Meaning. Most Cited Cases

(Formerly 382k32.1, 382k32)Marks which are descriptive of geographic locationof source of service are treated in same manner aspersonal name marks and are afforded strength ofinherently distinctive mark, if they acquire second-ary meaning. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1038 k. Suggestive Terms or Marks.Most Cited Cases

(Formerly 382k25)“Suggestive term” suggests characteristics of ser-vice and requires effort of imagination by consumerin order to be understood as descriptive of the ser-vice. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1038 k. Suggestive Terms or Marks.Most Cited Cases

(Formerly 382k25)Because suggestive service mark is inherently dis-tinctive, no proof of secondary meaning is requiredfor it to be protected. Lanham Trade-Mark Act, §43(a), 15 U.S.C.A. § 1125(a).




(Formerly 382k24)Arbitrary or fanciful terms are inherently distinctiveand can be protected without proof of secondarymeaning. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).



382Tk1035 Descriptive Terms or Marks382Tk1036 k. In General. Most Cited



382T Trademarks


















































382TII Marks Protected382Tk1038 k. Suggestive Terms or Marks.





(Formerly 382k16)Financial services company's service mark,“Investacorp,” was “descriptive,” rather than“suggestive,”“arbitrary” or “fanciful,” and, there-fore, could be protected only if it acquired second-ary meaning; customer observing the service markdid not need to exercise imagination to perceivenature of company's services as advising customersin corporate investment opportunities. LanhamTrade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).



382Tk1035 Descriptive Terms or Marks382Tk1036 k. In General. Most Cited




382Tk1050 Format or Components of Termor Mark

382Tk1058 k. Multiple Elements; Com-binations. Most Cited Cases

(Formerly 382k13)Third-party usage and idea conveyed to observer byplain dictionary definition of formatives comprisingmark are probative to determine whether term is de-scriptive. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).

[12] Administrative Law and Procedure 15A

753

15A Administrative Law and Procedure15AV Judicial Review of Administrative De-

cisions15AV(D) Scope of Review in General

15Ak753 k. Theory and Grounds of Ad-ministrative Decision. Most Cited CasesCourt of Appeals will not defer to ethereal determ-ination that is not affirmatively stated by adminis-trative agency.




382Tk1032 k. Acquired Distinctivenessand Secondary Meaning in General. Most CitedCases

(Formerly 382k11)Financial services company's service mark,“Investacorp,” did not acquire secondary meaningduring five-year period before investment bankbegan using service mark, “Investcorp,” and, thus,company could not acquire protected interest in themark, even though company experienced expansivegrowth and showed high ratio of sales dollars to ad-vertising dollars during the five-year period; evid-ence did not indicate that public actually identifiedmark with company's business. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).



382Tk1155 Extent of Use; Discontinuanceand Non-Use


(Formerly 382k71)To establish abandonment of service mark, plaintiffmust prove nonuse and intent not to resume use.Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. §

























http://www.westlaw.com/KeyNumber/Default.wl?rs=dfa1.0&vr=2.0&CMD=KEY&DocName=15AV

http://www.westlaw.com/KeyNumber/Default.wl?rs=dfa1.0&vr=2.0&CMD=KEY&DocName=15AV%28D%29
















1125(a).



382Tk1158 k. Discontinuance or Transfer ofBusiness or Assets. Most Cited Cases

(Formerly 382k72)Investment bank's reorganization to create whollyowned subsidiary to continue to use service markwas not abandonment of mark. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).




382Tk1032 k. Acquired Distinctivenessand Secondary Meaning in General. Most CitedCases

(Formerly 382k11)“Secondary meaning” is connection in consumer'smind between mark and provider of service. Lan-ham Trade-Mark Act, § 43(a), 15 U.S.C.A. §1125(a).



382TIX(C) Evidence382Tk1601 Presumptions and Burden of

Proof382Tk1608 k. Marks Protected; Sec-

ondary Meaning. Most Cited Cases(Formerly 382k574)

Plaintiff has burden of sustaining high degree ofproof in establishing secondary meaning for de-scriptive term. Lanham Trade-Mark Act, § 43(a),15 U.S.C.A. § 1125(a).


382T Trademarks

382TII Marks Protected382Tk1029 Capacity to Distinguish or Signi-

fy; Distinctiveness382Tk1032 k. Acquired Distinctiveness

and Secondary Meaning in General. Most CitedCases

(Formerly 382k11)Absent consumer survey evidence, four factors canbe considered in determining whether particularmark has acquired secondary meaning: length andmanner of its use; nature and extent of advertisingand promotion; efforts made by plaintiff to promoteconscious connection in public's mind betweenname and plaintiff's business; and extent to whichpublic actually identifies name with plaintiff's ser-vice. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).





Investacorp.,*1520 Richard Ross, Richard S. Ross, P.A., Miami,Fla., for plaintiff-appellant.

John Millian, Washington, D.C., Rudolph F. Ar-agon, Coffey, Aragon, Martin & Bulington, P.A.,Miami, Fla., and Wesley Howell, Jr., Gibson, Dunn& Crutcher, Washington, D.C., for defendants-ap-pellees.

Appeal from the United States District Court for theSouthern District of Florida.

Before JOHNSON and HATCHETT, CircuitJudges, and SMITH FN*, Senior Circuit Judge.

FN* Honorable Edward S. Smith, SeniorU.S. Circuit Judge for the Federal Circuit,sitting by designation.











































*1521 EDWARD S. SMITH, Senior Circuit Judge:

Plaintiff, Investacorp, Inc. (Investacorp), appealsthe grant of summary judgment entered in favor ofdefendants, Arabian Investment Banking Corpora-tion (Investcorp E.C.) and Investcorp, International,Inc. (Investcorp International) on the claims of ser-vice mark infringement and unfair competition. 722F.Supp. 719. Because the undisputed facts show ap-pellant does not have a protectable interest in itsclaimed service mark, we affirm the judgment ofthe United States District Court for the SouthernDistrict of Florida.

Facts

Appellant, Investacorp, is a Florida corporationwhose primary business is providing financial ser-vices as a broker/dealer and as a financial interme-diary between individuals, corporations and institu-tions seeking investment opportunities. There aretwo appellees in this case: Investcorp E.C., the par-ent corporation, and its wholly owned subsidiary,Investcorp International. Investcorp E.C. is an in-vestment bank headquartered in Bahrain whichbegan doing business in the United States underthat name in 1983. Investcorp International wascreated by Investcorp E.C. in November of 1986 tocontinue conducting the business of its parent in theUnited States. Hereinafter, the two co-appelleeswill be referred to as “Investcorp”.

Investcorp filed for federal service mark registra-tion in June of 1987. The Patent and Trademark Of-fice (PTO) allowed the Investcorp service mark topass for potential opposition to registration. Fourmonths later, in October 1987, Investacorp filed forfederal service mark registration. In February,1988, Investacorp filed a Notice of Opposition withthe Trademark Trial and Appeal Board of the PTO,opposing registration of the Investcorp servicemark.

Later in 1988, Investacorp sued Investcorp on sev-eral counts of service mark infringement and unfair

competition. The district court granted summaryjudgment in favor of defendant on all counts of thecomplaint, because it determined that plaintiff doesnot have a proprietary interest in the mark“Investacorp”. Plaintiff appeals to this Court assert-ing that genuine issues of material fact are involvedin the trial court's summary resolution of theclaims.

Issue

We must determine whether the district court'sfinding involved the resolution of an issue of mater-ial fact. As an appellate court, we must also determ-ine the applicable law, independent of that inter-pretation rendered by the district court. If no issueof material fact was presented and the independ-ently determined applicable law supports the grantof summary judgment ordered by the district court,then we must affirm.FN1

FN1. Fed.R.Civ.P. 56(c).

Opinion

Plaintiff, Investacorp, alleges that defendants, In-vestcorp, unfairly competed by infringing onplaintiff's unregistered service mark. Appellant as-serts that the district court should have found genu-ine issues of material fact presented in the follow-ing counts: Federal service mark infringement,FN2

Florida common law service mark infringement,Florida common law unfair competition, and viola-tion of the Florida anti-dilution law.FN3 As theparties do in their briefs, we evaluate the federalservice mark infringement claim as a measuringstick for the whole host of claims that appellant as-serts. If the federal service mark claim fails in thiscase for the reason cited by the district court, thatplaintiff had no proprietary interest in the“Investacorp” mark, then all of appellant's claimswill fail.

FN2. Lanham Act § 43(a), 15 U.S.C. §1125(a) (1988).









FN3. Fla.Stat.Ann. § 495.151 (West 1988).

Prima Facie Service Mark Infringement

[1] To prove service mark infringement in this case,plaintiff must prove (1) that *1522 defendant used aterm in commerce (2) in connection with their ser-vices (3) which is likely to be confused with theterm (4) in which plaintiff possesses the right to useto designate their services.FN4 Appellee concedesthat elements (1) and (2) are present. The districtcourt, however, found that plaintiff did not own theright to designate its services with the term“Investacorp” and hence had no protectable interestthat could be infringed. Consequently, summaryjudgment was entered for defendant.

FN4. Lanham Act § 43(a), 15 U.S.C. §1125(a) (1988).

[2] In order for defendant to infringe on plaintiff'smark, plaintiff must have a protectable property in-terest in the mark “Investacorp”.FN5 Ordinarily,such an interest is derived when a business uses amark to represent its services.FN6 Each time abusiness uses a mark, it enhances the customer re-cognition of the mark and its association with theservice, thereby inuring to the business greaterrights in the mark.FN7 However, a business doesnot automatically obtain rights in a mark by usingit. A business will obtain rights in a mark upon firstuse only if the mark is “inherently distinctive.” FN8

If the mark is not inherently distinctive, a businessmay obtain rights in the mark when it attains a sec-ondary meaning.FN9 Therefore, to determine if andwhen plaintiff obtained rights in the mark“Investacorp,” we must determine if the mark“Investacorp” is inherently distinctive.

FN5. American Television & Communica-tions Corp. v. American Communications& Television, Inc., 810 F.2d 1546, 1548, 1U.S.P.Q.2d 2084, 2085 (11th Cir.1987).

FN6. 1 J. McCarthy, TRADEMARKSAND UNFAIR COMPETITION § 16:1 (2d

ed. 1984).

FN7. Id.

FN8. Id. at § 16:2.

FN9. Id.

The Categories of Distinctiveness

[3][4][5][6][7][8][9] There are four categories ofdistinctiveness in which a service mark may beclassified.FN10 In ascending order they are: (1)Generic; (2) descriptive; (3) suggestive; and (4) ar-bitrary or fanciful.FN11 The demarcation betweeneach category is more blurred than it isdefinite.FN12 A term which suggests the basicnature of the service is generic.FN13 The term“Milk Delivery” is an example of a generic servicemark for a hypothetical milk delivery service.FN14

A generic term is typically incapable of achievingservice mark protection because it has no distinct-iveness.FN15 A descriptive term merely identifies acharacteristic or quality of a service.FN16 An ex-ample of a descriptive service mark might be“BarnMilk.” Because a descriptive service mark isnot inherently distinctive, it may be protected onlyif it acquires a secondary meaning.FN17 The per-sonal name component of a service mark such as“Barney's” to denote a milk delivery service is alsoconsidered not inherently distinctive and hencemerely descriptive.FN18 However, if the personalname mark acquires secondary meaning, it is af-forded the strength of an inherently distinctivemark.FN19 Marks which are descriptive of geo-graphic location of the source of the service aretreated in the *1523 same manner as personal namemarks.FN20 A suggestive term suggests the charac-teristics of the service “and requires an effort of theimagination by the consumer in order to be under-stood as descriptive” of the service.FN21

“Barn-Barn” is an example of a suggestive term.Because a suggestive service mark is inherently dis-tinctive, no proof of secondary meaning is requiredfor it to be protectable.FN22 “An arbitrary or fanci-












ful [term] bears no relationship to the service.”FN23 Arbitrary and fanciful terms are also inher-ently distinctive, so they are protectable withoutproof of secondary meaning. “Barnbarnfish” is anexample of an arbitrary or fanciful service mark.

FN10. American Television, 810 F.2d at1548, 1 U.S.P.Q.2d at 2085.

FN11. Id.

FN12. Soweco, Inc. v. Shell Oil Co., 617F.2d 1178, 1183, 207 U.S.P.Q. 278, 282(5th Cir.1980), cert. denied, 450 U.S. 981,101 S.Ct. 1516, 67 L.Ed.2d 816 (1981).


FN14. The examples given in this para-graph are believed to be a hypothetical ser-vice marks for a fictional milk deliveryservice. The examples are given strictly forpedagogical reasons and have no legal ef-fect.


FN16. Id.

FN17. Id.

FN18. J. MCCARTHY, supra note 6, §13:2.

FN19. Id.

FN20. Id. at § 14:1.


FN22. Id.

FN23. Id.

Distinctiveness Inquiry

The district court determined that the term“Investacorp” was descriptive. Because the distinct-iveness categorization given a term is a question offact,FN24 we must determine whether the districtcourt's finding involved a genuine issue of materialfact.FN25

FN24. Soweco, 617 F.2d at 1183 n. 12, 207U.S.P.Q. at 282 n. 12.

FN25. Fed.R.Civ.P. 56(c).

[10] Investacorp is a corporation in the business ofadvising their customers in corporate investmentopportunities. Pursuant to a customer's desires, In-vestacorp sells stocks, bonds and other securitieswhich are often initially issued by corporations.The two key formatives in the term “Investacorp”are “invest” and “corp”. “Invest” is the verb “tocommit (money) in order to earn a financial return,”FN26 and “corp” is the widespread abbreviation fora corporation. It is beyond doubt that the term“Investacorp” bears a relationship to the type ofservices being offered by plaintiff. Hence, it cannotbe an arbitrary or fanciful term.FN27 The only twocategories remaining that are eligible for servicemark protection are the descriptive and suggestivecategories. Thus, we must determine whether themark is descriptive or suggestive.

FN26. WEBSTER'S NEW COLLEGIATEDICTIONARY, 603 (1979).

FN27. See J. MCCARTHY, supra note 6,§ 11:2.

[11] To determine whether a term is descriptive,third party usage by competitors is probative.FN28

We reject appellant's argument that third party us-age is not relevant to the distinctiveness inquiry be-cause there is a plethora of authority embracing therelevancy of third party usage.FN29

FN28. Vision Center v. Opticks, Inc., 596F.2d 111, 116, 202 U.S.P.Q. 333, 338 (5thCir.1979), cert. denied, 444 U.S. 1016, 100S.Ct. 668, 62 L.Ed.2d 646 (1980).































FN29. In re Bongrain Int'l Corp., 894 F.2d1316, 1317, 13 U.S.P.Q.2d 1727, 1728(Fed.Cir.1990); Burke-Parsons-BowlbyCorp. v. Appalachian Log Homes, Inc.,871 F.2d 590, 593, 10 U.S.P.Q.2d 1443,1445 (6th Cir.1989); Security Center, Ltd.v. First Nat'l Security Centers, 750 F.2d1295, 1298-1299, 225 U.S.P.Q. 373,375-76 (5th Cir.1985); Telemed Corp. v.Tel-Med, Inc., 588 F.2d 213, 218, 200U.S.P.Q. 427, 432 (7th Cir.1978).

The likelihood of prospective use by competitors ishigh. Both of the two formatives “invest” and“corp” pervade the lexicon of business terminology.Because the two formatives are indispensable to theinvestment services industry, we agree that it isvery likely that competitors will need to use theseterms.

Moreover, the popularity of actual use of the twokey formatives also indicates that the mark is de-scriptive.FN30 Over eighty competing broker-deal-ers use the word “invest” in their mark, and thereare a handful of businesses who use some combina-tion of the formatives “invest” and “corp” in theirmark. We find the popularity of use by competitorsis extreme.

FN30. Vision Center, 596 F.2d at 117, 202U.S.P.Q. at 339.

Also probative of the descriptiveness of a mark isthe idea that is conveyed to the observer by theplain dictionary definition *1524 of the formativescomprising the mark.FN31 In this case, the twoformatives combined in the term “Investacorp” lit-erally convey to the observer that appellant is in thebusiness of investing in corporations. Because thecustomer who observes the term can readily per-ceive the nature of plaintiff's services, without hav-ing to exercise his imagination, the term cannot beconsidered a suggestive term.FN32 The only re-maining categorization that is eligible for protectionis the descriptive category. Accordingly,“Investacorp” must be merely descriptive.

FN31. Id. at 116, 202 U.S.P.Q. at 338.

FN32. Id.

Plaintiff relies on the inaction of the Patent andTrademark Office to inject an issue of fact into thedistrict court's determination of distinctiveness.When the defendant submitted the “Investcorp”mark application, the PTO passed the mark on topublication. Because a finding of descriptiveness isone of the grounds for refusal of registration, appel-lant argues that the PTO must have decided that“Investcorp” was not merely descriptive; otherwise,the PTO would not have passed the mark on to pub-lication according to Section 1209 of the TRADE-MARK MANUAL OF EXAMINING PROCED-URE.FN33 Moreover, appellant notes, the PTO op-ted to reject plaintiff's subsequent application to re-gister “Investacorp” because the similar“Investcorp” application was pending, instead of onthe ground that it was merely descriptive. Plaintiffargues that this indicates that the PTO found thesimilar mark also not descriptive.

FN33. (6th rev. 1986).

Plaintiff asserts that these two facts negatively im-ply that the PTO found that both marks,“Investacorp” and “Investcorp,” were not merelydescriptive. Consequently, because it is proper todefer to any determination made by the agency“entrusted with the duty of administering the Lan-ham Act,” appellant argues that we must accept thedetermination made by the PTO in accord withWynn Oil Co. v. Thomas.FN34

FN34. 839 F.2d 1183, 1190, 5 U.S.P.Q.2d1944, 1949 (6th Cir.1988).

[12] The soft spot in appellant's argument is thatthere is no recorded finding by the PTO that eitherservice mark was not descriptive. Consequently, allthat this Court can do is guess at what the PTO'sdeterminations were while evaluating the merit ofeach mark. We do not know whether the PTO evenconsidered the descriptiveness of either mark. Al-




























though we will bestow proper respect to the de-terminations of the PTO, we will not defer to anethereal determination that is not affirmativelystated by the administrative agency. Therefore,withstanding the implications that appellant pointsout, the finding that “Investacorp” is merely de-scriptive involved no genuine issue of material fact.Consequently, in heeding the proposition that thedescriptiveness category encompasses a broadrange,FN35 the term “Investacorp” is merely de-scriptive and hence is not inherently distinctive.


Secondary Meaning

[13] Because the term is not inherently distinctive,for appellant to have a protectable interest in theterm “Investacorp,” it must have attained secondarymeaning before the date that appellee used the sim-ilar term “Investcorp”.FN36 The district court de-termined that the term “Investacorp” did not attainsecondary meaning by the time appellees first usedit. Because the existence of a secondary meaning isa question of fact, FN37 we determine whether thisdetermination required the resolution of a genuinefactual issue.

FN36. Co-Rect Products, Inc. v. Marvy!Advertising Photography, Inc., 780 F.2d1324, 1330, 228 U.S.P.Q. 429, 431 (8thCir.1985).

FN37. Aloe Creme Laboratories, Inc. v.Milsan, Inc., 423 F.2d 845, 849, 165U.S.P.Q. 37, 41 (5th Cir.)cert. denied, 398U.S. 928, 90 S.Ct. 1818, 26 L.Ed.2d90,reh'g denied, 400 U.S. 856, 91 S.Ct. 23,27 L.Ed.2d 95 (1970).

*1525 Because secondary meaning must attach tothe mark before appellee first used the mark, wemust determine the date that appellee first used themark “Investcorp”. The district court decided thatappellee first used the mark in March of 1983. Ap-

pellant disputes this finding by pointing out certainfacts. Investcorp E.C. first began using the servicemark in March of 1983. In June of 1987, InvestcorpE.C. created a subsidiary entitled Investcorp Inter-national to be responsible for conducting all of In-vestcorp's business in the United States. InvestcorpE.C., the parent, licensed to Investcorp Internation-al the right to use the “Investcorp” service mark inthe United States.

Appellant asserts that because the parent, Invest-corp E.C., intended not to use the mark in theUnited States, it had abandoned the use of the mark.The argument goes that the previous use by the par-ent corporation between 1983 and 1987 does notcount because it had abandoned the mark. Hence,appellant argues that appellee's first use did not oc-cur until 1987, when the subsidiary, Investcorp In-ternational, first began using the mark in the UnitedStates.

[14][15] To establish abandonment, appellant mustprove (1) nonuse and (2) intent not to resumeuse.FN38 Appellant's argument is disingenuous be-cause although Investcorp E.C. did not intend touse the mark in the United States, it intended In-vestcorp International, its wholly-owned subsidiary,to continue the use of the mark in its place. All thatoccurred was a reorganization of Investcorp's struc-ture; the intent was for Investcorp to continue touse the mark through its subsidiary, Investcorp In-ternational. Therefore, Investcorp never intended tocease using the “Investcorp” mark and there was noabandonment. Thus, Investcorp's first use of theirmark occurred in March of 1983, and the secondarymeaning of “Investacorp” must attach by that date.

FN38. E. Remy Martin & Co., S.A. v.Shaw-Ross International Imports, Inc., 756F.2d 1525, 1532, 225 U.S.P.Q. 1131,1136,reh'g denied, en banc, 765 F.2d 154(11th Cir.1985).

[16][17][18] Secondary meaning is the connectionin the consumer's mind between the mark and theprovider of the service.FN39 Plaintiff has the bur-

























den of sustaining a high degree of proof in estab-lishing a secondary meaning for a descriptiveterm.FN40 This requisite high degree of proof mustbe considered by the court when ruling on a motionof summary judgment.FN41 Absent consumer sur-vey evidence, as is the case here, four factors canbe considered in determining whether a particularmark has acquired a secondary meaning:

FN39. AmBrit, Inc. v. Kraft, Inc., 812 F.2d1531, 1536 n. 14, 1 U.S.P.Q.2d 1161 (11thCir.1986).


FN41. Anderson v. Liberty Lobby, Inc.,477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d202 (1986).

(1) [T]he length and manner of its use; (2) thenature and extent of advertising and promotion;(3) the efforts made by the plaintiff to promote aconscious connection in the public's mindbetween the name and the plaintiff's ... business;and (4) the extent to which the public actuallyidentifies the name with the plaintiff's[service].FN42

FN42. Conagra, Inc. v. Singleton, 743 F.2d1508, 1513, 224 U.S.P.Q. 552, 555 (11thCir.1984).

Appellant began designating their services with the“Investacorp” mark in January of 1978. Thus, thelength of appellant's use of the mark was five yearsprior to the appellee's use of their mark. However,there is nothing significant about the manner of ap-pellant's use of the mark, other than appellantmerely “displayed its service mark on nearly all ofits transactional documents.”

The nature and extent of appellant's advertisementand promotion and its achievement of a consciousconnection in the public mind between the markand the appellant's business during the relevanttime period is far short of spectacular. During this

period, appellant's advertising expenditures did notexceed one-hundred dollars per month. Although,appellant emphasizes that they had expansivegrowth and *1526 showed a high ratio of sales dol-lars to advertising dollars during the relevant peri-od, this fact does not indicate that appellant's ban-tam advertising campaigns made major inroads tothe consumer psyche.

The evidence that the public actually identifies themark with appellant's business is also lacking. Al-though instances of consumer confusion are probat-ive of secondary meaning,FN43 the few isolated in-stances cited by appellant are not adequate topresent a genuine issue of material fact. Con-sequently, we agree that the undisputed facts showthat the mark “Investacorp” did not acquire second-ary meaning before the end of the relevant timeperiod.

FN43. McCarthy, supra note 6, § 15:3.

Conclusion

In order to prove all of its claims, appellant mustestablish ownership of the right to use the mark todesignate its services. Because the undisputed factsshow that the “Investacorp” mark is not inherentlydistinctive, a protectable interest does not attachuntil the mark acquires a secondary meaning. Thedistrict court found that the undisputed facts estab-lished that “Investacorp” did not acquire secondarymeaning before appellee commenced use of theirsimilar service mark, “Investcorp”. Therefore, ap-pellant does not own a protectable interest in the“Investacorp” service mark. We agree with the dis-trict court's view of the evidence. Accordingly, as amatter of law, appellee did not infringe on the ap-pellant's service mark or unfairly compete with ap-pellant because appellant never owned a protectableinterest in the mark, “Investacorp”, and appellee isentitled to judgment. Affirmed.

C.A.11 (Fla.),1991.Investacorp, Inc. v. Arabian Inv. Banking Corp.


















(Investcorp) E.C.931 F.2d 1519, 19 U.S.P.Q.2d 1056

END OF DOCUMENT



226 So.2d 393 Page 1 226 So.2d 393, 163 U.S.P.Q. 500 (Cite as: 226 So.2d 393)


Supreme Court of Florida.

JUNIOR FOOD STORES OF WEST FLORIDA, INC., a Florida corporation, Petitioner,

v. JR. FOOD STORES, INC., a Florida corporation,

Respondent. No. 38089.

Sept. 17, 1969.

Rehearing Denied Oct. 2, 1969. Action by first registrant of trade name to enjoin use of similar trade name by second registrant. The Circuit Court, Bay County, W. L. Fitzpatrick, J., granted the injunction, and the second registrant appealed. The District Court of Appeal, 215 So.2d 56, affirmed, and certiorari was granted. The Supreme Court, Carlton, J., held that where the businesses involved were chains of small neighborhood convenience grocery stores, and where there was only one city in which the parties both operated, enjoining second registrant from use of trade name was error, but second registrant would be enjoined from using sign design which was basically identical in nature to that of first registrant, with the exception of distinguishing words in lettering so small as to be not readily visible to passersby. Order of District Court quashed; cause remanded.

West Headnotes [1] Trademarks 382T 1259 382T Trademarks 382TVII Registration 382TVII(A) In General 382Tk1256 State Registration 382Tk1259 k. Effect. Most Cited Cases (Formerly 382k251) Statutory provisions concerned solely with registra-tion and regulation of trademarks did not support order granting prior registrant exclusive use of trade name. F.S.A. § 495.011 et seq. [2] Trademarks 382T 1023

382T Trademarks 382TII Marks Protected 382Tk1022 Subject Matter Underlying Trademarks 382Tk1023 k. In General. Most Cited Cases (Formerly 382k1) Trademarks 382T 1026 382T Trademarks 382TII Marks Protected 382Tk1026 k. Trade Names in General. Most Cited Cases (Formerly 382k1) A “tradename” is descriptive of a manufacturer or dealer and applies to business and its goodwill, whe-reas “trademark” is applicable only to vendable commodities, and different legal principles govern protection of the two. [3] Trademarks 382T 1259 382T Trademarks 382TVII Registration 382TVII(A) In General 382Tk1256 State Registration 382Tk1259 k. Effect. Most Cited Cases (Formerly 382k251) Registration of trade name and sign design in 1961 did not, under statutes then in effect, invest prior registrant with right to exclusive use, but established basis for invoking common-law trade name protection predi-cated upon prior use. F.S.A. §§ 495.01 et seq., 495.011(6), 495.151, 495.171. [4] Trademarks 382T 1137(1) 382T Trademarks 382TIV Creation and Priority of Rights 382Tk1132 Use of Mark 382Tk1137 Scope and Priority of Use; Multiple Users, Markets, or Territories 382Tk1137(1) k. In General. Most Cited Cases (Formerly 382k95) 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 another, and the extent of the zone of territorial pro-tection is determined by the nature of the first appro-priator's business. [5] Trademarks 382T 1092 382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1090 Nature of Marks 382Tk1092 k. Strength or Fame of Marks; Degree of Distinctiveness. Most Cited Cases (Formerly 382k367) Trademarks 382T 1104 382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1100 Relationship Between Goods or Services Underlying Marks 382Tk1104 k. Markets and Territories; Competition. Most Cited Cases (Formerly 382k367) Where the business of the prior registrant of trade name was operation of small neighborhood conveni-ence grocery stores, and where the name had not yet acquired secondary meaning, second registrant in the same business was not operating within the territorial scope of the first registrant's stores where the parties were operating jointly in only one city, and there only in separate neighborhoods, and use of trade name by second registrant would not be enjoined. [6] Trademarks 382T 1086 382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1083 Nature of Confusion 382Tk1086 k. Actual Confusion. Most Cited Cases (Formerly 382k462) Trademarks 382T 1420 382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General

382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1420 k. Unfair Competition. Most Cited Cases (Formerly 382k462) 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-priator under the mistaken impression that they are doing business with the first. [7] Trademarks 382T 1629(3) 382T Trademarks 382TIX Actions and Proceedings 382TIX(C) Evidence 382Tk1620 Weight and Sufficiency 382Tk1629 Similarity; Likelihood of Confusion 382Tk1629(3) k. Particular Cases. Most Cited Cases (Formerly 382k591) Evidence that deliverymen and salesmen were con-fused by the similarity in names used by two grocery chains, without evidence of customer confusion, did not support grant of injunctive relief on the basis of unfair competition in the use of trade name. [8] Trademarks 382T 1714(1) 382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of Relief 382Tk1714(1) k. In General. Most Cited Cases (Formerly 382k648) Injunction against use of trade name by the second registrant thereof on the basis of potential conflict was not proper, especially where potential for future con-flict arose when prior registrant began establishing stores in counties previously served only by second registrant. [9] Trademarks 382T 1717(1) 382T Trademarks 382TIX Actions and Proceedings


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382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1717 Scope and Extent of Relief 382Tk1717(1) k. In General. Most Cited Cases (Formerly 382k648) Though second registrant of trade name had right to use name similar to that used by prior registrant, second registrant would be enjoined from use of sign design which was similar to that used by prior regi-strant with the exception of distinguishing words in lettering so small as to be not readily visible to pas-sersby. *394 Barrow & Holley, Crestview, and Douglass & Booth, Tallahassee, for petitioner. William E. Harris, of Davenport, Johnston & Harris, Panama City, for respondent.

REHEARING CARLTON, Justice. This is a common law tradename protection case. Petitioner and respondent operate similar chains of small neighborhood convenience grocery stores throughout the Panhandle region of West Florida. Circuit Court, Bay County, enjoined petitioner from using a tradename and outdoor identification sign design similar to those of the respondent. The District Court of Appeal, First District, affirmed, 215 So.2d 56 (1968). We granted certiorari because of conflict be-tween the District Court's decision and two cases arising out of the Second District, Tampa Wholesale Co. v. Foodtown, U.S.A., 166 So.2d 711 (2nd D.C.A.Fla.1964), and Stagg Shop of Miami, Inc. v. Moss, 120 So.2d 39 (2nd D.C.A.Fla.1960). Respondent was incorporated in June 1961. In August of that year, it registered the tradename ‘Jr. Food Store,‘ along with a design for its outdoor identifica-tion signs, with the Secretary of State under auspices of Fla.Laws 1957, ch. 57-212 (repealed 1967), now Fla.Stat. ch. 495, F.S.A. The design consisted of the words ‘Food Store’ separated by a large rendition of the abbreviation ‘Jr.’, and a simplified picture of a young boy's face. Respondent opened three stores in Bay County under this sign. Shortly afterwards, Jitney Jungle, a large food store chain, entered into a fran-chise agreement with respondent, and, as a condition of this franchise, respondent changed the names of its

three stores to ‘Jitney Junior.’ Petitioner was also incorporated in 1961. It, too, began business under a Jitney Jungle franchise, and thus its stores, which were located in Okaloosa, Jackson and Santa Rosa Counties, also operated under the ‘Jitney Junior’ banner. Neither litigant remained for long under franchise. Respondent was first to resume independent operation, and when it did, it put up its own signs again and also began an expansion program. Petitioner followed a similar course, but prior to doing so, it took a step which ultimately led to this litigation. Petitioner, just prior to the expiration of its franchise, registered with the Secretary of State the tradename ‘Jr. Food Stores of West Florida, Inc.‘ along with a sign design gener-ally similar to that of the respondent. Both signs em-phasized the abbreviation ‘Jr.‘ and both featured a boy's face, although the faces depicted were consi-derably different. The litigants have stipulated that their tradenames and signs are similar enough to cause confusion if used in the same location. Initially, the litigants' stores were far apart. At the time of their respective franchise expirations, respondent operated *395 only in Bay County, while petitioner had stores in Okaloosa, Jackson and Santa Rosa Counties. Subsequent expansion, however, brought them into close proximity in a qualified sense. Peti-tioner's expansion occurred primarily within Okaloosa County and only one store was added in a new county, Holmes. Respondent's expansion was more energetic. The Chancellor noted in his Final Order that respon-dent had one or more stores in Bay (its initial locale), Gulf, Franklin, Washington, Calhoun, Jefferson, Es-cambia, Jackson and Okaloosa Counties. It should be noted that the pattern of growth was from respondent towards petitioner, that is, respondent's stores were placed around the areas served by the petitioner and not vice versa. In the two counties in which both have stores, Jackson and Okaloosa, petitioner was estab-lished first. We have said that the litigants are in close proximity in a qualified sense because the closest they come to direct competition is in Niceville, Okaloosa County, where they are located in separate neighbor-hoods; Niceville is the only area where Both do business. Respondent's complaint was filed approximately two years after it was first aware that petitioner was using

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the word ‘Junior’ as part of its store identification signs. The record indicates that respondent's officers had informal conversations with persons connected with petitioner, on at least two occasions, prior to the filing of the complaint, during which petitioner was informally requested to stop using the name. When petitioner persisted in using the ‘Jr. Food Stores of West Florida, Inc.‘ tradename on its signs, and as competition loomed on the horizon as a steadily in-creasing probability, respondent filed its action in circuit court seeking to have petitioner enjoined from making any use of the words ‘Jr. Food Store’, or any imitation thereof, and from using an outdoor sign design similar to respondent's. The Judge, sitting as Chancellor, found that: (1) The litigants' tradenames and signs were similar; (2) this similarity resulted in confusion as to the ownership of stores in each chain; (3) this confusion would continue into the future; and (4) respondent had a prior right to the tradename and sign design by virtue of its prior registration. Accordingly, the Chancellor issued the following order: ‘ORDERED AND ADJUDGED that Plaintiff, JR. FOOD STORES, INC. is the lawful owner of the trademark and/or tradename ‘JR. FOOD STORE’ along with the design of said words and the picture of a boy as filed in the Office of the Secretary of State, State of Florida, and as such is entitled to the exclusive use of same as set forth under Chapter 495, Florida Statutes. ‘IT IS FURTHER ORDERED AND ADJUDGED that Defendant, JUNIOR FOOD STORES OF WEST FLORIDA, INC. be and it is hereby enjoined from using or displaying on any of its retail grocery stores, or in its advertising of any kind, the use of the words ‘JR. FOOD STORE’ or any imitation thereof, and further enjoined from the use of any sign or advertis-ing or other matter using said words ‘JR. FOOD STORE’, together with the picture of a boy such as that which Plaintiff had registered with the Secretary of State, State of Florida.' Upon petitioner's appeal, the District Court held only that it would not substitute its judgment for that of the Chancellor when sufficient evidence supported his findings and no erroneous application of law was apparent.

We have set out the facts of this case at length because we disagree with the District Court. It is our opinion that the Chancellor did not have sufficient evidence upon which to base his judgment and also that he did make an erroneous application of the law. [1][2] First, we cannot agree with the Chancellor that, because of its prior registration of its tradename and sign design, *396 respondent is ‘entitled to the exclu-sive use of same as set forth under Chapter 495, Florida Statutes.’A careful reading of Fla.Laws 1957, ch. 57-212, which is the version of Fla.Stat. ch. 495, F.S.A. applicable to this case, does not disclose any provision for the ‘exclusive use’ of a tradename. The chapter appears to be concerned solely with the reg-istration and regulation of trademarks, not tradenames. There is a fundamental distinction between the two, and distinctly different legal principles govern their protection. A tradename is descriptive of a manufac-turer or dealer and applies to a business and its goodwill, whereas a trademark, in a technical sense, is applicable only to vendable commodities. For discus-sion of this difference, see Children's Bootery v. Sutker, 91 Fla. 60, 107 So. 345, 44 A.L.R. 698 (1926); Vandenburgh Trademark Law & Procedure s 121(e) (2nd ed. 1968); 52 Am.Jur. Trademarks, Tradenames & Trade Practices s 3 (1944). While it is true that a tradename may be used as a trademark under certain circumstances, we do not have that situation here and so we are not concerned with the possibility. [3] The true effect of respondent's registration of its tradename and sign design was not to invest it in-stantaneously with a right to ‘exclusive use’, but rather to establish for respondent the basis for invoking common law tradename protection principles which are predicated upon a prior use of a tradename as against the subsequent use by another. It was not until after the initiation of this litigation that the Legislature revised Chapter 495 so as to provide for statutory protection of tradenames. See, for example, Fla.Stats. ss 495.011(6) and 495.151, F.S.A. of the current re-vision, and note that they are without statutory ante-cedent in Fla.Laws 1957, ch. 57-212. Note also that Fla.Stat. s 495.171, F.S.A. limits the effective date of the revision so as to make it inapplicable to this case. By predicating his order upon Chapter 495, the Chancellor misapplied the applicable law and the District Court erred by not correcting the situation. [4] Under the common law, the universal rule go-











verning 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. See Florida Ventilated Awning Co. Inc. v. Dickson, 67 So.2d 215 (Fla.1953) and related decision at 67 So.2d 218 (Fla.1953); First Born Church of the Living God v. The First Born Church,156 Fla. 78, 22 So.2d 452 (1945); Dye Tradenames: The Common-Law Right of a Corporation to the Protection of its Name, 2 U.Fla.L.Rev. 156 (1949). There can be no question about the fact that respondent was first to use the tradename ‘Jr. Food Store.’ Respondent's prior regis-tration establishes that. However, prior registration does not supply the answer to the question next to be asked: ‘What is the territorial scope of the business to be protected?’ [5] Two elements need to be considered in regard to this question: first, what is the territorial scope of respondent's business; second, at what point in time are the limits to this scope to be determined. In answer to the first question, we think it is obvious that res-pondent's zone of territorial protection is determined by the nature of respondent's business. Here we are concerned with small neighborhood convenience grocery stores. As was said in the strikingly similar case of National Grocery Co. v. National Stores Corp., 95 N.J.Eq. 588, 123 A. 740, 742 (1924): ‘Obviously, by force of the definition of the kind of business in which the parties are engaged, each store must draw its trade from a very small surrounding territory, because customers obliged to pay cash and carry away their purchases will not patronize a store unless within their immediate neighborhood.’ Since respondent's stores have not yet acquired a ‘secondary meaning’ within the sense of that doctrine, we think that each part of the chain must be considered as a separate entity. See *397Quality Courts United, Inc. v. Jones, 59 So.2d 20 (Fla.1952). This being so, we fail to see how it can be said that petitioner oper-ates within the territorial scope of respondent's stores. Recall that when the Chancellor entered his Final Order, respondent and petitioner operated stores jointly in only two counties, and in those counties, they were operating jointly only in Niceville, Oka-loosa County. Recall further that in Niceville they operate in separate neighborhoods. How, then, can they be said to be in competition?‘It is not the name

which is protected, but the business.’ Federal Securi-ties Co. v. Federal Securities Corp., 129 Or. 375, 276 P. 1100, 66 A.L.R. 934 (1929), cited with approval in Lumbermen's Mut. Cas. Co. v. Lumber Mut. Cas. Ins. Co. of New York, 154 Fla. 367, 17 So.2d 615 (1944); Tampa Wholesale Co. v. Foodtown, U.S.A., Supra. [6] The Chancellor did not limit his findings merely to the fact that respondent had made a prior registration. He carefully considered the fact that there had been confusion ‘among persons doing business' with the litigants because of the similarity of their tradenames. The ‘customer confusion’ test is associated with tra-dename protection under the general heading ‘unfair competition’. In effect, this is merely a variation of the universal rule of tradename protection. The test is satisfied when it is shown by one seeking injunctive relief that, because of a similarity of tradenames, po-tential customers of the first appropriator of a trade-name actually do business with a second appropriator under the mistaken impression that they are doing business with the first appropriator. If the test were satisfied in the instant case, then we would find no error in the Chancellor's order because his undue re-liance on Chapter 495 would be cured by the fact that unfair competition was afoot.Stagg Shop of Miami, Inc. v. Moss, Supra. [7] However, we find that when the Chancellor noted the existence of ‘confusion’, he was not referring to the kind of confusion that is recognized by the com-mon law. The Chancellor was referring to the fact that certain invoices and merchandise had been misdi-rected from stores in one chain to stores in the other by deliverymen and salesmen who were confused by the similarity in names. Testimony indicated that mistakes of this nature had also occurred between the litigants and stores wholly outside of their respective chains. In similar cases decided by other jurisdictions, this kind of error has not been deemed of sufficient conse-quence to support an injunction. See Umpqua Broccoli Exch. v. Um-Qua Broccoli Growers, 117 Or. 678, 245 P. 324 (1926); Federal Securities Co. v. Federal Se-curities Corp., Supra. It is presumed that mistakes such as these are due merely to inattention on the part of those charged with the servicing of the needs of businesses, and that in time the inattention will be rectified. The proper view of the ‘customer confusion’ test, as indicated by the definition set out previously, is that it












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is concerned, not with provisioners, but with those who seek to do business at the consumer level. Note, for example, how the test was applied in Stagg Shop of Miami, Inc. v. Moss, Supra, wherein a particular customer was queried as to her reason for shopping in the defendant's store. Testimony by particular cus-tomers is not essential as proof of the test so long as some evidence is presented regarding diminution in trade caused by the appropriation of a similar name by another. In the instant case, no evidence of a diminu-tion in respondent's trade was submitted before the Chancellor, and no customer testimony was proffered. [8] It is true that the litigants have stipulated that the similarity of their signs and tradenames would cause confusion ‘if used in the same location.’However, we do not think that this stipulation forecloses petitioner from the right to operate under a form of its corporate name, especially since at the time it began operation, it was far removed from any area served by the res-pondent. It should be remembered that *398 it was the respondent, not the petitioner, that made moves which presented the potential for commercial conflict; for example, petitioner had been in business in Okaloosa County since its incorporation, and had been in Nice-ville for some time before respondent placed a store in that town and in that county. This brings us to the answer to our second question: At what point in time are the limits to territorial protec-tion to be determined? Obviously, the answer depends upon the facts of the case. We think that the following words of the Chancellor given in a similar case, Na-tional Grocery Co. v. National Stores Corp., Supra, are most appropriate: ‘While I know of no decision of our own courts in a case on all fours with the present case, there are, however, many opinions in other jurisdictions that make it clear that the right of a given name previously adopted by a business located in one locality does not invest the proprietor of that business with the right to enjoin the use of the same or a similar name by a junior enterprise in another locality where one does not encroach upon the other. (Citations omitted.) But the complainant says that this rule is not applicable to the instant case, because, in the very nature of things, the prospect of a so-called chain store business is the constant expanding, reaching out, and establishing of new stores in neighborhoods not already tapped. Surely, in the great majority of business en-

terprises, and especially those like the complainant's, involving a business capable of expansion and the investment of large capital, there is implied the hope, intention, and design of constantly invading new ter-ritory for the purpose of securing an increasing vo-lume of business. For reasons already touched upon, it would be absurd to say that any such intention should permit the pre-empting of the use of the name at a place and a time where such a supposed business enterprise had no customers or business, and therefore nothing to lose. It is entirely too remote and fanciful for the complainant to object to another using a name in another locality, not because he has already estab-lished his trade there, but because he may do so in the future. For it is equally probable he may not.’ This question is important because, as the Chancellor observed in another strikingly similar case, Eastern Outfitting Co. v. Manheim, 59 Wash. 428, 110 P. 23, 35 L.R.A.,N.S., 251 (1910), a case cited with approval by this Court, McGhan v. McGhan, 115 Fla. 414, 155 So. 653, the interest sought to be protected must exist in fact and not merely in fancy. To hold otherwise would be to invite needless litigation and to contribute substantially towards promoting a pointless disruption of commerce. The Chancellor should determine the effective scope of a complainant's business by in-cluding in his considerations the actual state of affairs as they existed at the time when the complaint was perfected. In the instant case, no evidence was pre-sented to the Chancellor by respondent concerning any further planned expansion into the areas served by petitioner's stores, and, as we have already mentioned, there is insufficient evidence to support the contention that unfair competition existed at the time when the complaint was filed. This being so, we must conclude that the Chancellor erred when he issued his order since the evidence could not support it. [9] However, we Do think that the facts of this case call for an injunction against petitioner for another reason. Even though one may have a right to use a tradename which happens to be similar to that of another, this right does not authorize one to use the tradename in a manner which tends to be deceptive. Gottdiener v. Joe's Restaurant, 111 Fla. 741, 149 So. 646 (1933); McGhan v. McGhan, Supra; May v. May, 45 So.2d 494 (Fla.1950). *399 In the instant case, petitioner and respondent both operated under the ‘Jitney Junior’ banner and















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








NORTH AMERICAN MEDICAL CORPORA-TION, Adagen Medical International, Inc., Georgia

corporations, Plaintiffs-Appellees,v.

AXIOM WORLDWIDE, INC., a Florida corpora-tion, James Gibson, Jr., Nicholas Exarhos, residents

of Florida, Defendants-Appellants.No. 07-11574.

April 7, 2008.

Background: Manufacturer and authorized distrib-utor of physiotherapeutic spinal or “traction” devicebrought action against competitor, its president, andits vice president, alleging that defendants engagedin unfair competition by infringing manufacturer'strademarks and by issuing false advertising regard-ing competitor's own physiotherapeutic device. TheUnited States District Court for the Northern Dis-trict of Georgia, No. 06-01678-CV-JTC-1,Jack T.Camp, Chief Judge, granted a preliminary injunc-tion in favor of plaintiffs, prohibiting competitorfrom using manufacturer's “IDD Therapy” and“Accu-Spina” trademarks within its website's metatags and prohibiting competitor from making thechallenged statements about its device. Defendantsappealed.

Holdings: The Court of Appeals, Anderson, CircuitJudge, held that:(1) competitor's use of manufacturer's trademarkswithin its website's meta tags was a “use in com-merce” within the meaning of the Lanham Act;(2) the district court's finding of a likelihood ofconfusion was not clearly erroneous, for purposesof plaintiffs' trademark infringement claims;(3) the district court did not clearly err in findingthat competitor made literally false statements in itsadvertising;(4) the district court did not clearly err in finding

that competitor's false statements were material toconsumers' purchasing decisions;(5) the district court erred when it presumed thatplaintiffs would suffer irreparable harm in the ab-sence of a preliminary injunction merely becausecompetitor's advertisements were literally false; and(6) remand was required for the district court to ad-dress the effect of the Supreme Court's decision ineBay Inc. v. MercExchange, L.L.C. on the“irreparable harm” analysis with respect toplaintiffs' trademark infringement claims.

Affirmed in part and vacated and remanded in part.

West Headnotes



170BVIII(K) Scope, Standards, and Extent170BVIII(K)4 Discretion of Lower Court

170Bk814 Injunction170Bk815 k. Preliminary Injunc-

tion; Temporary Restraining Order. Most CitedCasesCourt of Appeals will reverse a grant of a prelimin-ary injunction only if the district court abused itsdiscretion.

[2] Federal Courts 170B 850.1


170BVIII(K) Scope, Standards, and Extent170BVIII(K)5 Questions of Fact, Verdicts

and Findings170Bk850 Clearly Erroneous Findings

of Court or Jury in General170Bk850.1 k. In General. Most

Cited CasesCourt of Appeals reviews the district court's find-ings of fact under a clearly erroneous standard.


522 F.3d 1211 Page 1522 F.3d 1211, 2008-1 Trade Cases P 76,124, 86 U.S.P.Q.2d 1462, 21 Fla. L. Weekly Fed. C 552(Cite as: 522 F.3d 1211)



















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of Court or Jury in General170Bk853 k. Definite and Firm

Conviction of Mistake. Most Cited CasesDistrict court's findings of fact is “clearly erro-neous” only when, although there is evidence tosupport it, the reviewing court on the entire evid-ence is left with the definite and firm convictionthat a mistake has been committed.




170Bk776 k. Trial De Novo. MostCited CasesCourt of Appeals reviews the district court's con-clusions of law de novo, understanding that applica-tion of an improper legal standard is never within adistrict court's discretion.



170BVIII(K) Scope, Standards, and Extent170BVIII(K)7 Waiver of Error in Appel-

late Court170Bk915 k. In General. Most Cited

CasesIssues not raised on appeal are abandoned.

[6] Injunction 212 138.1

212 Injunction212IV Preliminary and Interlocutory Injunctions

212IV(A) Grounds and Proceedings to Pro-cure

212IV(A)2 Grounds and Objections

212k138.1 k. In General. Most CitedCasesDistrict court may grant a preliminary injunctiononly if the movant establishes the following: (1) asubstantial likelihood of success on the merits ofthe underlying case, (2) the movant will suffer irre-parable harm in the absence of an injunction, (3)the harm suffered by the movant in the absence ofan injunction would exceed the harm suffered bythe opposing party if the injunction issued, and (4)an injunction would not disserve the public interest.





Cited CasesTo prevail on a claim of trademark infringementunder the Lanham Act, plaintiffs must establishthat: (1) they possess a valid mark, (2) defendantsused the mark, (3) defendants' use of the mark oc-curred “in commerce,” (4) defendants used themark “in connection with the sale or advertising ofany goods,” and (5) defendants used the mark in amanner likely to confuse consumers. Lanham Act,§ 32(1)(a), 15 U.S.C.A. § 1114(1)(a).

[8] Commerce 83 62.12

83 Commerce83II Application to Particular Subjects and

Methods of Regulation83II(C) Monopolies and Trade Regulation

83k62.12 k. Trade Regulation in General;Trade-Marks and Unfair Competition. Most CitedCases



382TIX(A) In General

























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382Tk1557 Jurisdiction382Tk1558 k. In General. Most Cited

CasesLanham Act defines “commerce” broadly, for juris-dictional purposes, as all commerce which maylawfully be regulated by Congress. Lanham Act, §45, 15 U.S.C.A. § 1127.

[9] Commerce 83 62.12

83 Commerce83II Application to Particular Subjects and

Methods of Regulation83II(C) Monopolies and Trade Regulation

83k62.12 k. Trade Regulation in General;Trade-Marks and Unfair Competition. Most CitedCases



382TVIII(A) In General382Tk1435 k. Internet Use. Most Cited

CasesCompetitor's use of physiotherapeutic spinal devicemanufacturer's “IDD Therapy” and “Accu-Spina”trademarks within its website's meta tags, as part ofits effort to promote and advertise its own productson the Internet, was a “use in commerce” within themeaning of the Lanham Act; although the meta tagswere never viewed by consumers, when a consumerentered the trademarks into a search engine, com-petitor caused the trademarks to be displayed to theconsumer in the search results' description of com-petitor's site. Lanham Act, § 32(1)(a), 15 U.S.C.A.§ 1114(1)(a).




Most Cited CasesFactors relevant to determination of whether there

is likelihood of confusion, and hence trademark in-fringement, are: (1) strength of plaintiff's mark, (2)similarity between plaintiff's mark and the allegedlyinfringing mark, (3) similarity between the productsand services offered by plaintiff and defendant, (4)similarity of the sales methods, (5) similarity of ad-vertising methods, (6) defendant's intent, for ex-ample, whether defendant hopes to gain competit-ive advantage by associating his product withplaintiff's established mark, and (7) actual confu-sion. Lanham Act, § 32(1)(a), 15 U.S.C.A. §1114(1)(a).




and Findings170Bk855 Particular Actions and Pro-

ceedings, Verdicts and Findings170Bk860 k. Copyrights, Patents

and Trade Regulation. Most Cited CasesDistrict court's findings as to each of the sevenfactors considered in determining whether a likeli-hood of confusion exists, for purposes of a trade-mark infringement claim, and as to the ultimateconclusion regarding whether or not a likelihood ofconfusion existed, are subject to the clearly erro-neous standard of review. Lanham Act, § 32(1)(a),15 U.S.C.A. § 1114(1)(a).



of Confusion382Tk1116 k. Internet Cases. Most Cited

CasesDistrict court's finding that competitor's use in itswebsite's meta tags of physiotherapeutic spinaldevice manufacturer's trademarks resulted in a like-lihood of confusion was not clearly erroneous, forpurposes of manufacturer's trademark infringementclaims; competitor's meta tags precisely mimicked









































manufacturer's “IDD Therapy' and Accu-Spina”trademarks, it was apparent that competitor inten-ded to gain a competitive advantage by associatingits product with manufacturer's trademark, andthough the meta tags were never viewed by con-sumers, when a consumer entered the trademarksinto a search engine, competitor caused its compet-ing website to be displayed, together with a briefdescription of the website which included and high-lighted manufacturer's trademarked terms, such thatconsumers would be led to believe that competitor'sproducts had the same source as manufacturer'sproducts or that the entities were otherwise related.Lanham Act, § 32(1)(a), 15 U.S.C.A. § 1114(1)(a).

[13] Antitrust and Trade Regulation 29T104(1)

29T Antitrust and Trade Regulation29TII Unfair Competition

29TII(C) Relief29Tk101 Injunction

29Tk104 Preliminary or TemporaryRelief, Grounds, Subjects, and Scope

29Tk104(1) k. In General. MostCited CasesTo establish a likelihood of success on the merits ofa false advertising claim under the Lanham Act, forpurposes of obtaining a preliminary injunction,movant must demonstrate that: (1) the ads of theopposing party were false or misleading, (2) the adsdeceived, or had the capacity to deceive, con-sumers, (3) the deception had a material effect onpurchasing decisions, (4) the misrepresentedproduct or service affects interstate commerce, and(5) the movant has been, or is likely to be, injuredas a result of the false advertising. Lanham Act, §43(a), 15 U.S.C.A. § 1125(a).

[14] Antitrust and Trade Regulation 29T 22


29TII(A) In General29Tk21 Advertising, Marketing, and Pro-

motion


Antitrust and Trade Regulation 29T 105



29Tk105 k. Proceedings to Impose;Evidence. Most Cited CasesOnce a court deems an advertisement to be literallyfalse within the meaning of the Lanham Act, amovant seeking a preliminary injunction need notpresent evidence of consumer deception, but, incontrast, if the court deems an ad to be true but mis-leading, the movant, even at the preliminary injunc-tion stage, must present evidence of deception. Lan-ham Act, § 43(a), 15 U.S.C.A. § 1125(a).



29TII(A) In General29Tk30 k. Sponsorship, Approval, or

Connection, Representations Concerning. MostCited CasesDistrict court did not clearly err in finding thatcompetitor of physiotherapeutic spinal device man-ufacturer made literally false statements in its ad-vertising, for purposes of manufacturer's false ad-vertising claims; though competitor claimed an af-filiation with the National Aeronautics and SpaceAdministration (NASA), having one engineer withNASA training or experience participate in the de-velopment of competitor's device did not constitutejoint collaboration between NASA and competitor,nor did it support the claim that NASA engineersdeveloped the device or discovered part of it, factthat device used some components that NASA alsoused did not mean that device contained or embod-ied NASA technology, and though competitorclaimed that its device was Food and Drug Admin-istration (FDA) “approved,” device, as a Class IImedical device, was only eligible for FDA






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“clearance,” which was a different process than ap-proval. Lanham Act, § 43(a), 15 U.S.C.A. §1125(a); Medical Device Amendments of 1976, § 2,21 U.S.C.A. §§ 360c, 360e.



29TII(B) Actions and Proceedings29Tk85 Proceedings; Trial

29Tk87 k. Questions of Law or Fact.Most Cited Cases

Federal Courts 170B 860



and Findings170Bk855 Particular Actions and Pro-

ceedings, Verdicts and Findings170Bk860 k. Copyrights, Patents

and Trade Regulation. Most Cited CasesWhether a statement is literally false, for purposesof a false advertising claim under the Lanham Act,is a finding of fact which is reviewed only for clearerror. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a).

[17] Health 198H 303

198H Health198HI Regulation in General

198HI(E) Drugs; Medical Devices and In-struments

198Hk303 k. Drugs and Devices Regu-lated. Most Cited CasesRegulation of medical devices is governed by theFederal Food, Drug, and Cosmetic Act. FederalFood, Drug, and Cosmetic Act, § 1, 21 U.S.C.A. §301.



29TII(A) In General29Tk30 k. Sponsorship, Approval, or

Connection, Representations Concerning. MostCited CasesDistrict court did not clearly err in finding that falsestatements made by competitor of physiotherapeut-ic spinal device manufacturer were material to con-sumers' purchasing decisions, for purposes of man-ufacturer's false advertising claims; type of claimsat issue, regarding competitor's purported affiliationwith the National Aeronautics and Space Adminis-tration (NASA) and its device's alleged “approval”by the Food and Drug Administration (FDA), logic-ally would have influenced a doctor's decision topurchase competitor's device over a competing ma-chine without those qualities. Lanham Act, § 43(a),15 U.S.C.A. § 1125(a).




motion29Tk22 k. In General. Most Cited

CasesEven when a court finds that a defendant's ads areliterally false, the plaintiff, to succeed on a claim offalse advertising, must still establish that the de-fendant's deception is likely to influence the pur-chasing decision. Lanham Act, § 43(a), 15 U.S.C.A.§ 1125(a).




motion29Tk22 k. In General. Most Cited

CasesLanham Act's requirement that a false ad be materi-al to consumers' purchasing decisions is based onthe premise that not all deceptions affect consumer





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decisions. Lanham Act, § 43(a), 15 U.S.C.A. §1125(a).

[21] Antitrust and Trade Regulation 29T105



29Tk105 k. Proceedings to Impose;Evidence. Most Cited CasesDistrict court erred when it presumed that manufac-turer and authorized distributor of physiotherapeut-ic spinal device would suffer irreparable harm inthe absence of a preliminary injunction merely be-cause competitor's advertisements about its owndevice were literally false; although competitor'sstatements were false, they did not mention manu-facturer's products by name or in any way comparecompetitor's products with manufacturer's products,and so manufacturer and authorized distributorwere not entitled to the presumption's benefits. Lan-ham Act, § 43(a), 15 U.S.C.A. § 1125(a).

[22] Antitrust and Trade Regulation 29T105



29Tk105 k. Proceedings to Impose;Evidence. Most Cited CasesIn false advertising cases, proof of falsity is gener-ally only sufficient to sustain a finding of irrepar-able injury when the false statement is made in thecontext of comparative advertising between theplaintiff's and defendant's products. Lanham Act, §43(a), 15 U.S.C.A. § 1125(a).



170BVIII(L) Determination and Disposition

of Cause170Bk943 Ordering New Trial or Other

Proceeding170Bk947 k. Further Evidence, Find-

ings or Conclusions. Most Cited CasesRemand was required for the district court to ad-dress the effect of the Supreme Court's decision ineBay Inc. v. MercExchange, L.L.C. on the“irreparable harm” analysis with respect to trade-mark infringement claims brought by manufacturerand authorized distributor of physiotherapeuticspinal device against competitor; although theCourt of Appeals' prior cases extended a presump-tion of irreparable harm once a plaintiff seeking apreliminary injunction established a likelihood ofsuccess on the merits of its trademark infringementclaim under the Lanham Act, the Supreme Courtdecision, despite dealing with permanent injunctiverelief and a different but similar statute, was applic-able to the instant case and called this presumptioninto question. Lanham Act, § 43(a), 15 U.S.C.A. §1125(a).




Cited CasesAccu-Spina.




Cited CasesIDD Therapy.*1215 L. Joseph Shaheen, Jr., Gardner, Wilkes,Shaheen & Candelora, Tampa, FL, Jonathan R.Granade, George P. Shingler, Casey, Gilson, Lei-bel, P.C., W. Scott Mayfield, Duane Morris, LLP,Atlanta, GA, for Defendants-Appellants.





















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Stephen M. Dorvee, Andrew Blaine Flake, JonathanT. Barr, Arnall, Golden & Gregory, LLP, Atlanta,GA, for Plaintiffs-Appellees.

Appeal from the United States District Court for theNorthern District of Georgia.

Before ANDERSON, BLACK and HILL, CircuitJudges.

*1216 ANDERSON, Circuit Judge:

Defendants-Appellants Axiom Worldwide, Inc.(“Axiom”), James Gibson, Jr., and Nicholas Exar-hos appeal the district court's grant of a preliminaryinjunction in favor of the Plaintiffs-Appellees,North American Medical Corporation (“NAM”)and Adagen Medical International, Inc.(“Adagen”).FN1 The district court enjoined the De-fendants-Appellants from engaging in certain al-leged acts of trademark infringement and false ad-vertising. We now affirm the district court's orderin part and vacate and remand it in part.

FN1. Defendant-Appellant Ren Scott ori-ginally participated in this appeal as well,but we previously granted a joint motion tovoluntarily dismiss him from the case afterhe reached a settlement agreement with thePlaintiffs-Appellees. Accordingly, we neednot address Scott's argument that the dis-trict court lacked personal jurisdiction overhim.

I. STANDARD OF REVIEW

[1][2][3][4] We will reverse a grant of a prelimin-ary injunction only if the district court abused itsdiscretion. Johnson & Johnson Vision Care, Inc. v.1-800 Contacts, Inc., 299 F.3d 1242, 1246 (11thCir.2002). We review the district court's findings offact under a clearly erroneous standard, noting thata finding of fact is clearly erroneous only when“although there is evidence to support it, the re-

viewing court on the entire evidence is left with thedefinite and firm conviction that a mistake has beencommitted.” Id. (quoting Univ. of Ga. Athletic Ass'nv. Laite, 756 F.2d 1535, 1543 (11th Cir.1985)). Wereview the district court's conclusions of law denovo,“understanding that ‘[a]pplication of an im-proper legal standard ... is never within a districtcourt's discretion.’ ” Id. (quoting Am. Bd. of Psychi-atry & Neurology, Inc. v. Johnson-Powell, 129 F.3d1, 2-3 (1st Cir.1997)).

II. BACKGROUND

NAM designs and manufacturers physiotherapeuticspinal devices, commonly known as tractiondevices, which are used, for example, to treat lowerback pain. Adagen is an authorized distributor ofNAM's devices. Axiom, a competitor of NAM's,manufacturers a physiotherapeutic device knowngenerally as the DRX 9000. Gibson and Exharhosare, respectively, the president and vice president ofAxiom. In the present lawsuit, NAM and Adagenallege that Axiom engaged in unfair competition byinfringing NAM's trademarks and by issuing falseadvertising regarding the DRX 9000.

The trademark infringement claims stem from Ax-iom's use of two of NAM's registered trademarks:the terms “Accu-Spina” and “IDD Therapy.” Ax-iom included these terms on its website within metatags.FN2 Although Axiom's website never dis-played NAM's trademarked terms to visitors andnever mentioned NAM or NAM's products, Axiomnonetheless included the terms within its meta tagsto influence Internet search engines. For instance,evidence in this case indicated that, before Axiomremoved these meta tags from its website, if a com-puter user *1217 entered the trademarked terms in-to Google's Internet search engine, Google listedAxiom's website as the second most relevant searchresult. In addition, Google provided the searcherwith a brief description of Axiom's website, and thedescription included these terms and highlightedthem.FN3






















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FN2. Meta tags consist of words andphrases that are intended to describe thecontents of a website. These descriptionsare embedded within the website's com-puter code. Although websites do not dis-play their meta tags to visitors, Internetsearch engines utilize meta tags in variousways. First, when a computer user entersparticular terms into an Internet search en-gine, the engine may rank a webpage thatcontains the search terms within its metatags higher in the list of relevant results.Second, when a particular webpage is lis-ted as a relevant search result, the searchengine may use the meta tags to providethe searcher a brief description of thewebpage. See Brookfield Commc'ns, Inc. v.W. Coast Entm't Corp., 174 F.3d 1036,1045 (9th Cir.1999).

FN3. Incidentally, Axiom makes a brief,conclusory argument that no evidence ex-ists to establish that the meta tags affectedthe search results. We disagree. The evid-ence indicates that nowhere in Axiom'swebsite do NAM's two trademarked termsappear (e.g., in comparative advertising).Rather, the terms appear only in Axiom'smeta tags. We cannot conclude that thedistrict court's implied finding of a causalrelationship is clearly erroneous.

[5] The false advertising claims stem from certainstatements that Axiom made about its product, theDRX 9000. In particular, two representations byAxiom are relevant to this appeal.FN4 First, Axiomrepresented in various ways that an affiliation existsbetween NASA and Axiom or between NASA andthe DRX 9000. Second, Axiom asserted in advert-isements that the DRX 9000 is FDA “approved.”

FN4. A third representation by Axiom, thatAxiom patented the DRX 9000 or any por-tion or feature thereof, was also deemedliterally false by the district court. BecauseAxiom's brief on appeal fails to challenge

this aspect of the district court's ruling,however, Axiom has waived the issue.This circuit has consistently held that is-sues not raised on appeal are abandoned.See, e.g., Greenbriar, Ltd. v. City of Ala-baster, 881 F.2d 1570, 1573 n. 6 (11thCir.1989).

The district court issued a preliminary injunction infavor of NAM and Adagen, prohibiting Axiomfrom using NAM's trademarks within meta tags andprohibiting Axiom from making the challengedstatements about the DRX 9000. Among otherthings, the district court specifically found that Ax-iom's use of NAM's trademarks created a likelihoodof confusion, and the court also found that Axiom'sadvertising statements are literally false and materi-al to consumers' purchasing decisions.

III. DISCUSSION

[6] At the outset, we note that a district court maygrant a preliminary injunction only if the movantestablishes the following: “(1) a substantial likeli-hood of success on the merits of the underlyingcase, (2) the movant will suffer irreparable harm inthe absence of an injunction, (3) the harm sufferedby the movant in the absence of an injunctionwould exceed the harm suffered by the opposingparty if the injunction issued, and (4) an injunctionwould not disserve the public interest.” Johnson &Johnson, 299 F.3d at 1246-47. Axiom challengesthe district court's order on multiple grounds. First,Axiom argues that NAM and Adagen failed to es-tablish a substantial likelihood of success on themerits of their trademark infringement claims. Spe-cifically, Axiom urges that its use of NAM's trade-marks in invisible meta tags is not a “use in com-merce” and does not create a likelihood of confu-sion. Second, Axiom argues that NAM and Adagenalso failed to establish a substantial likelihood ofsuccess on the merits of their false advertisingclaims. Specifically, Axiom asserts that its advert-ising statements are not literally false and are notmaterial to consumers' purchasing decisions. Third














and finally, Axiom argues that, even assumingNAM and Adagen are likely to succeed on the mer-its of these unfair competition claims, the districtcourt erred by categorically presuming that anyplaintiff with a viable unfair competition claim willalways suffer irreparable harm in the absence of apreliminary injunction. We address each point inturn.

*1218 A. Likelihood of Success on the Merits of theTrademark Infringement Claims

[7] Because Axiom's use of NAM's trademarks con-stitutes a “use in commerce” in connection with theadvertisement of goods, and because the districtcourt did not clearly err in its factual finding that alikelihood of confusion exists, NAM and Adagendemonstrated a likelihood of success on the meritsof their trademark infringement claims. Regardingtrademark infringement, the Lanham Act provides,in relevant part, as follows:

(1) Any person who shall, without the consent ofthe registrant-

(a) use in commerce any reproduction, counterfeit,copy, or colorable imitation of a registeredmark in connection with the sale, offering forsale, distribution, or advertising of any goodsor services on or in connection with which suchuse is likely to cause confusion, or to causemistake, or to deceive ...

shall be liable in a civil action by the registrant forthe remedies hereinafter provided.

15 U.S.C. § 1114(1)(a) (2006). To prevail on aclaim of trademark infringement in this case,plaintiffs must establish: (1) that they possess a val-id mark, (2) that the defendants used the mark, (3)that the defendants' use of the mark occurred “incommerce,” (4) that the defendants used the mark“in connection with the sale ... or advertising of anygoods,” and (5) that the defendants used the markin a manner likely to confuse consumers. See 1-800Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400,

406-07 (2d Cir.2005); People for Ethical Treatmentof Animals v. Doughney, 263 F.3d 359, 364 (4thCir.2001).

[8] Axiom does not challenge the validity ofNAM's marks, nor does Axiom dispute that its useof NAM's trademarks affects interstatecommerce.FN5 Thus, although Axiom purports tochallenge whether its placing of NAM's trademarksin its meta tags is a “use in commerce” and whethersuch use is likely to confuse consumers, Axiom'sarguments actually focus only on the second,fourth, and fifth elements. Moreover, because Ax-iom separates its “use” challenge from its“likelihood of confusion” challenge, we first ad-dress the second and fourth elements together (i.e.,whether there was a “use ... in connection with thesale ... or advertising of any goods”), and we thenaddress the fifth element (i.e., whether such usewas in a manner “likely to confuse consumers”).

FN5. The Lanham Act defines“commerce” broadly for jurisdictional pur-poses as “all commerce which may law-fully be regulated by Congress.” 15 U.S.C.§ 1127 (2006); see also Bosley Med. Inst.,Inc. v. Kremer, 403 F.3d 672, 677 (9thCir.2005) (describing “use in commerce”as a “jurisdictional predicate”); PlanetaryMotion, Inc. v. Techsplosion, Inc., 261F.3d 1188, 1194-95 (11th Cir.2001)(same).

1. Use in Commerce in Connection with the Sale orAdvertising of Any Goods

[9] Axiom briefly argues that placing a competitor'strademarks within meta tags, which consumers nev-er view, does not constitute a “use” as required tofind trademark infringement under the Lanham Act.However, we readily conclude that the facts of theinstant case do involve a “use” as contemplated inthe Lanham Act-that is, a use in connection withthe sale or advertisement of goods. In decidingwhether Axiom has made an infringing “use,” we





















focus on the plain language of § 1114(1)(a), which,as noted above, requires a “use in commerce ... of aregistered mark in connection with the sale ...*1219or advertising of any goods.” 15 U.S.C. §1114(1)(a). The facts of the instant case are abso-lutely clear that Axiom used NAM's two trade-marks as meta tags as part of its effort to promoteand advertise its products on the Internet. Under theplain meaning of the language of the statute, suchuse constitutes a use in commerce in connectionwith the advertising of any goods. Accordingly, wereadily conclude that plaintiffs in this case have sat-isfied that (1) they possessed a valid mark, (2) thatthe defendant used the mark, (3) that the defend-ant's use of the mark occurred “in commerce,” and(4) that the defendant used the mark “in connectionwith the sale ... or advertising of any goods.”

In an effort to avoid the foregoing plain meaning ofthe statutory language, Axiom places its sole reli-ance on the Second Circuit's 1-800 Contacts case.In that case, whenever a consumer who had in-stalled the defendant's computer program clickedon or searched for the plaintiff's website address,the program generated on the consumer's screen notonly the website sought (e.g., plaintiff's), but also asecond window displaying pop-up ads for the de-fendant's alternative, competing products. 414 F.3dat 404-05. The Second Circuit ultimately held, as amatter of law, that such use of the web address isnot a “use in commerce.” Id. at 403.

In so holding, the Second Circuit emphasized thatthe defendant did not use plaintiff's trademark, butrather used its website address, which differedslightly from the mark. Id. at 408-09. Indeed, thecourt explicitly declined to express an opinion onthe appropriate result if defendant had in fact usedplaintiff's trademark. Id. at 409 n. 11. Even morecrucial to the Second Circuit's holding, the courtemphasized repeatedly the fact that the defendantnever caused plaintiff's trademarks to be displayedto a consumer. Id. at 408-10. The court explainedthat the defendant used plaintiff's web addressmerely in the internal directory of its proprietary

software, which was “inaccessible to both the C-user and the general public.” Id. at 409. Explainingthe significance of the fact that the defendant nevercaused plaintiff's trademark to be displayed to theconsumer, the court stated that defendant's use ofplaintiff's “website address in the directory does notcreate a possibility of visual confusion with 1-800'smark.” Id.

In rejecting Axiom's invitation to rely on 1-800Contacts, we initially note that the above two keyfacts are not present in the case before us. First, un-like the defendant in 1-800 Contacts, Axiom in theinstant case did use NAM's two trademarks in itsmeta tags; it did not merely use NAM's unprotectedwebsite address. Second, and again unlike in 1-800Contacts, the defendant-Axiom in this case didcause plaintiff's trademark to be displayed to theconsumer in the search results' description of de-fendant's site.FN6 Thus, the facts of the instant casestand in stark contrast to those in 1-800 Contacts,and Axiom's reliance on the Second Circuit's opin-ion is therefore misplaced.

FN6. As described more fully below, whena consumer in this case entered NAM'strademarks into a search engine, the searchresults displayed Axiom's website alongwith a description thereof, which descrip-tion included NAM's trademarks in a man-ner likely to confuse consumers and sug-gest some relationship between Axiom andNAM.

Furthermore, to the extent the 1-800 Contacts courtbased its “use” analysis on the fact that the defend-ant did not display the plaintiff's trademark, wethink the Second Circuit's analysis is questionable.Although we believe that the absence of such a dis-play is relevant in deciding whether there is a likeli-hood of confusion, we believe that, when the ana-lysis separates the *1220 element of likelihood ofconfusion from the other elements, this fact is notrelevant in deciding whether there is a use in com-merce in connection with the sale or advertising ofany goods. Because the Second Circuit did separate






















its analysis in this manner, and did purport not toaddress the likelihood of confusion issue, see id. at406, its reliance on the fact that there was no dis-play of the plaintiff's trademark (and thus no pos-sibility of confusion) undermines the persuasive-ness of its analysis of the separate elements of usein commerce in connection with the sale or advert-ising of any goods.

In sum, we conclude that Axiom's reliance on theSecond Circuit decision in 1-800 Contacts is mis-placed.FN7 We conclude that the plain meaning ofthe statutory language clearly indicates that Ax-iom's use of NAM's trademarks as meta tags consti-tutes a “use in commerce ... in connection with thesale ... or advertising of any goods” under the factsof this case. Thus, we turn to the fifth, and final,element that plaintiffs' must establish-that such usewas “likely to cause confusion.”

FN7. We also note that several cases, in-cluding 1-800 Contacts, refer to 15 U.S.C.§ 1127 with respect to the definition of“use in commerce” in the infringementcontext. See, e.g., 1-800 Contacts, 414F.3d at 407, 409. However, a leading treat-ise on trademarks notes that §1127“defines the kind of ‘use’ needed toacquire registerable trademark rights-not toinfringe them.” J. Thomas McCarthy, Mc-Carthy on Trademarks and Unfair Com-petition § 23:11.50 (4th ed.2003). Mc-Carthy explains that § 1127 harked back tothe common law “affixation” requirement,a formalistic prerequisite to achievingtechnical trademark status. Id. By contrast,McCarthy observes that § 1114(1) merelyrequires that a plaintiff's proof of infringe-ment establish a use in commerce “in con-nection with the sale ... or advertising ofany goods.” Id. In any event, McCarthynotes that the cases that inappropriatelycite § 1127 in the context of an infringing“use” analysis do not apply that section'saffixation limitations. Id. Finally, Mc-

Carthy cites Ninth Circuit opinions as cor-rectly construing § 1127. Id. (citing, forexample, Bosley Med. Inst., Inc. v. Kremer,403 F.3d 672 (9th Cir.2005)). In Kremer,the Ninth Circuit noted that § 1127 is ex-pressly prefaced with the caveat: “unlessthe contrary is plainly apparent from thecontext.” 403 F.3d at 677. Thus, the Kre-mer court held that the appropriate issuewas whether the use was “in connectionwith the sale of goods or services.” Id.; seealso Playboy Enters., Inc. v. NetscapeCommc'ns Corp., 354 F.3d 1020, 1024 n.11 (9th Cir.2004).

2. Likelihood of Confusion

[10][11] The district court's finding that a likeli-hood of confusion exists is not clearly erroneous.Seven factors are relevant when determining wheth-er a likelihood of confusion exists:

(1) the strength of the plaintiff's mark; (2) the simil-arity between the plaintiff's mark and the al-legedly infringing mark; (3) the similaritybetween the products and services offered by theplaintiff and defendant; (4) the similarity of thesales methods; (5) the similarity of advertisingmethods; (6) the defendant's intent, e.g., does thedefendant hope to gain competitive advantage byassociating his product with the plaintiff's estab-lished mark; and (7) actual confusion.

Alliance Metals, Inc., of Atlanta v. Hinely Indus.,Inc., 222 F.3d 895, 907 (11th Cir.2000). “The find-ings as to each factor, and as to the ultimate conclu-sion regarding whether or not a likelihood of confu-sion existed, are subject to the clearly erroneousstandard of review.” Frehling Enters., Inc. v. Int'lSelect Group, Inc., 192 F.3d 1330, 1335 (11thCir.1999).

[12] The district court expressly acknowledged theforegoing factors, but it made an explicit findingonly with respect to the ultimate conclusion thatthere was a likelihood of confusion. Regarding that



















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issue, Axiom's brief on appeal did notchallenge*1221 the district court's implied findingswith respect to any of the subsidiary factors (i.e.,the foregoing seven factors). Rather, Axiom chal-lenged only: (1) the district court's implied findingthat Axiom's use of NAM's two trademarks as metatags caused the Internet search results at issue,FN8

and (2) the district court's reliance on BrookfieldCommunications, Inc. v. West Coast EntertainmentCorp., 174 F.3d 1036 (9th Cir.1999), and PromatekIndustries, Ltd. v. Equitrac Corp., 300 F.3d 808(7th Cir.2002), with respect to the nature of metatags and search engines. Axiom argues that thoseopinions erroneously misled the district court tofind a likelihood of confusion; Axiom contends thatits use of the meta tags was instead analogous to astore placing its own generic brand next to a brandname product on the store's shelf. Because Axiomhas not challenged the district court's implied find-ings with respect to the subsidiary factors, any suchchallenge is deemed abandoned. Indeed, it is appar-ent that the marks are not only similar, but identic-al; Axiom's meta tags precisely mimic NAM's“IDD Therapy” and “Accu-Spina” trademarks. Ax-iom concedes that it is a direct competitor of NAM.It is also apparent that Axiom intended to gain acompetitive advantage by associating its productwith NAM's trademark. Finally, the litigation onappeal has proceeded on the assumption that therewould be a likelihood of confusion, unless Axiom'sarguments about the nature of meta tags and searchengines (i.e., Axiom's challenge to Brookfield andPromatek) prevailed.

FN8. As noted above, we summarily rejectthis argument. See supra note 3. NAM'strademarks appeared in the Google searchresult as part of the description of Axiom'swebsite. Because on this record the onlypossible cause for this is Axiom's use ofthe trademarks as meta tags, we readilyconclude that the district court was notclearly erroneous in its implicit findingthat the meta tags caused the search resultand thus the likelihood of confusion.

Therefore, we address Axiom's challenge to Brook-field and Promatek. In the leading case on this is-sue, the Ninth Circuit concluded that the LanhamAct bars a defendant from including in its meta tagsa competitor's trademark or confusingly similarterms. Brookfield, 174 F.3d at 1065. Accordingly,the Brookfield court enjoined one online videostore, West Coast, from using in its meta tags thetrademark (and similarly confusing terms) of acompeting online video store, Movie Buff. Id. at1066-67. Despite its ultimate conclusion, theBrookfield court conceded that even when a con-sumer who enters a company's trademark into asearch engine sees a list displaying a competitor'swebsite in addition to the trademark holder's web-site, the consumer will often be able to find the par-ticular website he is seeking by simply scanning thelist of results. Id. at 1062. The court also acknow-ledged that even if the web user chooses the com-petitor's website from the list, assuming the al-legedly infringed trademark is not actually dis-played by the competitor, “it is difficult to say thata consumer is likely to be confused about whosesite he has reached or to think that [the plaintiff]somehow sponsors [the competitor's] web site.” Id.Nevertheless, the Brookfield court concluded thatthe competitor's use of the trademark “in metatagswill still result in what is known as initial interestconfusion.” Id. That is, “[a]lthough there is nosource confusion in the sense that consumers knowthey are patronizing [the competitor] rather than[the plaintiff], there is nevertheless initial interestconfusion in the sense that, by using [the trade-mark] to divert people looking for [the plaintiff's]web site, [the competitor] improperly benefits fromthe good will that [the plaintiff] has developed in itsmark.” Id.

*1222 In the other case relied upon by the districtcourt, the Seventh Circuit faced facts similar tothose in Brookfield and agreed with the Brookfieldcourt's analysis. Promatek, 300 F.3d at 810-13.Other courts, however, have criticized various as-pects of the Brookfield opinion. See, e.g., 1-800Contacts, 414 F.3d at 410-11; Playboy Enters., Inc.






































v. Netscape Commc'ns Corp., 354 F.3d 1020,1034-36 (9th Cir.2004) (Berzon, J., concurring);J.G. Wentworth, S.S.C. Ltd. P'ship v. SettlementFunding LLC, No. 06-0597, 2007 WL 30115, at*6-*7 (E.D.Pa. Jan. 4, 2007); see alsoJ. ThomasMcCarthy, McCarthy on Trademarks and UnfairCompetition § 25:69 (4th ed.2003) (discussing metatags, initial interest confusion, and criticisms of theBrookfield court's approach).

Like the Brookfield and Promatek courts, we ulti-mately conclude that a company's use in meta tagsof its competitor's trademarks may result in a likeli-hood of confusion. However, because NAM andAdagen have demonstrated a likelihood of actualsource confusion,FN9 we need not decide, as thosecourts did, whether initial interest confusion alonemay provide a viable method of establishing a like-lihood of confusion. Unlike those courts, we are notfaced with a situation where the trademarks areused without being displayed to consumers.

FN9. “Source confusion” exists becauseconsumers are likely to be confused as towhether Axiom's products have the samesource or sponsor as NAM's or whetherthere is some other affiliation or relation-ship between the two. As has been notedby the Eighth Circuit, “[i]f the products areclosely related, and it is reasonable forconsumers to believe the products comefrom the same source, confusion is morelikely.” Davis v. Walt Disney Co., 430 F.3d901, 904 (8th Cir.2005).

In Brookfield and Promatek, consumers whoentered the plaintiff's trademarks into a search en-gine saw a list displaying the competitor's websitein addition to the trademark holder's websitewithout any other indication from the search resultsthat the competitor's website is sponsored by theplaintiff or related to the plaintiff's trademarks. Incontrast, in the instant case, when consumersentered NAM's trademarks into a search engine, thesearch results not only displayed Axiom's compet-ing website, but they also included a brief descrip-

tion of Axiom's website, which description includedand highlighted NAM's trademarked terms. That is,the evidence in the instant case specifically showsthat if consumers searched with Google for theterms “IDD Therapy” and “Accu-Spina,” the firstlisted result was a legitimate website sponsored byNAM, the owner of these trademarks, and thesecond entry in the search results was Axiom'scompeting website. Furthermore, and in contrast toBrookfield and Promatek, as noted above, thesearch results not only listed the competitor's (i.e.,Axiom's) web address, but they also included abrief description of the Axiom's site, and this de-scription included and highlighted both of NAM'strademarked terms, “IDD Therapy” and“Accu-Spina,” in addition to Axiom's competingproducts. Consumers viewing these search resultswould be led to believe that Axiom's products havethe same source as the products of the owner of the“IDD Therapy” and “Accu-Spina” trademarks, or atleast that Axiom distributed or sold all of theproducts to which the brief description referred, orthat Axiom was otherwise related to NAM. This, ofcourse, is misleading to the consumer because Ax-iom is not related in any way to NAM, nor doesAxiom distribute or sell the products of NAM.Moreover, there was nothing in Axiom's website it-self to disabuse consumers of the notion (suggestedby the Google search) that there is some relation-ship between Axiom and *1223 NAM. In otherwords, if consumers accessed Axiom's website afterviewing the Google search results, they would betold all about Axiom's products but would be metwith utter silence with respect to NAM's products.For example, there was no comparative advertisingin Axiom's website which would have made clear toconsumers that NAM's and Axiom's products arecompeting items. Thus, the factual situation in theinstant case is that Axiom's use of the meta tagscaused a likelihood of actual consumer confusion asto source.

The instant case is more like Playboy Enterprises,Inc. v. Netscape Communications Corp., 354 F.3d1020 (9th Cir.2004), than Brookfield or Promatek.































In Playboy, the defendant, Netscape, sold advertise-ments to competitors of Playboy and then caused itssearch engine to pop up banner ads of its advert-isers. Playboy, 354 F.3d at 1023. The ads appearedwhen the consumer-searcher typed in the searchterms “Playboy” and/or “Playmate,” which aretrademark terms owned by Playboy. Id. The searchengine operated in this manner by using “keying”words in its software. Id. at 1022-23. A competit-or's ad could be keyed to pop up in a banner adalong the margin of the search result when thesearcher entered “Playboy” and/or “Playmate.” Id.at 1023. Thus, the keying words operated in hiddenfashion, much like the meta tags in this case. Be-cause the banner ads appeared immediately afterthe searcher typed in the Playboy trademarks, andinvited the user to “click here,” id. at 1023, and es-pecially because the banner ads did not clearlyidentify a source (i.e., the sponsor of the ad), id. at1025 n. 16, 1030, the user was likely to be confusedregarding the sponsorship of the unlabeled advert-isements. Thus, the Playboy case involved some ac-tual confusion as to source, unlike the situation inBrookfield where there was never any confusion asto source or affiliation. The instant case is morelike Playboy than Brookfield. We note, however,that the source confusion in the instant case is con-siderably more pronounced than in Playboy. InPlayboy, there was no explicit representation of arelationship between the source of the ad and Play-boy, while there is an explicit representation in thiscase of some relationship between Axiom andNAM.

Judge Berzon wrote a concurring opinion in Play-boy in which he highlighted this distinction fromBrookfield. Id. at 1035-36 (Berzon, J., concurring).Judge Berzon criticized Brookfield, arguing that itinvolved merely a distraction of a potential custom-er with another choice in a situation in which thecustomer was never confused as to source. Id.Rather, the potential customer merely was providedan opportunity for another choice, which clearlywas not the sponsor of the original search. Id. Suchdistraction, Judge Berzon pointed out, was very

much like the product placement in a departmentstore. Id. at 1035. When a customer walks in, asksfor the Calvin Klein section, and is directed to thesecond floor, no one thinks that there is a trademarkinfringement because the store has placed its own(or another competitor's) clothing line in a moreprominent place as a distraction. Id.

Because Axiom's use of NAM's trademarks as metatags caused the Google search to suggest that Ax-iom's products and NAM's products had the samesource, or that Axiom sold both lines, or that therewas some other relationship between Axiom andNAM, Axiom's use of the meta tags caused a likeli-hood of actual source confusion. Thus, the instantcase is very different from the product placement ina department store. This case is also very differentfrom Brookfield where there was never source con-fusion. Finally, the instant case is not subject to thecriticism leveled by Judge Berzon.

*1224 For the foregoing reasons, and under the par-ticular factual circumstances of this case, we cannotconclude that the district court's finding of a likeli-hood of confusion is clearly erroneous.FN10 Be-cause the district court in this case was not clearlyerroneous in finding (1) that plaintiffs possessedvalid trademarks; (2) that defendants used thosemarks, (3) in commerce, (4) in connection with theadvertisement of defendant's goods; and (5) thatsuch use caused a likelihood of confusion to con-sumers, we conclude that the district court did noterr in concluding that plaintiffs demonstrated alikelihood of success with respect to the trademarkinfringement claim.

FN10. We note that our holding is narrow,and emphasize what kind of case and whatkind of facts are not before us. This is nota case like Brookfield or Promatek where adefendant's use of the plaintiff's trademarkas a meta tag causes in the search resultmerely a listing of the defendant's websitealong with other legitimate websites,without any misleading descriptions. Thisis also not a case where the defendant's





































website includes an explicit comparativeadvertisement (e.g., our product uses atechnology similar to that of a trademarkedproduct of our competitor, accomplishessimilar results, but costs approximatelyhalf as much as the competitor's product).Although we express no opinion thereon,such a defendant may have a legitimatereason to use the competitor's trademark asa meta tag and, in any event, when the de-fendant's website is actually accessed, itwill be clear to the consumer that there isno relationship between the defendant andthe competitor beyond the competitive re-lationship. Resolution of the foregoing, aswell as other factual situations not beforeus, appropriately await the day that suchfactual situations are presented concretely.

B. Likelihood of Success on the Merits of the FalseAdvertising Claims

[13][14] The district court did not clearly err in itsfactual findings that Axiom's representations are lit-erally false and material to consumers' purchasingdecisions, and thus NAM and Adagen demonstrateda likelihood on success on the merits of their falseadvertising claims. Regarding false advertising,section 43(a) of the Lanham Act provides, in relev-ant part, as follows:

(1) Any person who, on or in connection with anygoods or services, or any container for goods,uses in commerce any word, term, name, symbol,or device, or any combination thereof, or anyfalse designation of origin, false or misleadingdescription of fact, or false or misleading repres-entation of fact, which-

(B) in commercial advertising or promotion, mis-represents the nature, characteristics, qualities,or geographic origin of his or her or anotherperson's goods, services, or commercial activit-ies,

shall be liable in a civil action by any person whobelieves that he or she is or is likely to be dam-aged by such act.

15 U.S.C. § 1125(a) (2006). To establish a likeli-hood of success on the merits of a false advertisingclaim under this section, the movant must demon-strate the following: “(1) the ads of the opposingparty were false or misleading, (2) the ads de-ceived, or had the capacity to deceive, consumers,(3) the deception had a material effect on purchas-ing decisions, (4) the misrepresented product or ser-vice affects interstate commerce, and (5) themovant has been-or is likely to be-injured as a res-ult of the false advertising.” Johnson & Johnson,299 F.3d at 1247. Axiom only challenges the dis-trict court's conclusions regarding the first and thirdelements-that is, whether Axiom's statements areliterally false FN11 and whether thestatements*1225 have a material effect on purchas-ing decisions.

FN11. In the present case, we may onlysustain the preliminary injunction as it per-tains to literally false statements, as op-posed to those that are merely misleading.As we have explained before, “once acourt deems an advertisement to be liter-ally false, the movant need not presentevidence of consumer deception,” but incontrast, “[i]f the court deems an ad to betrue but misleading, the movant-even at thepreliminary injunction stage-must presentevidence of deception.” Johnson & John-son, 299 F.3d at 1247. Here, the districtcourt ruled that NAM and Adagen have notoffered evidence of deception at this stageof the proceedings, and therefore the dis-trict court acknowledged that it could onlyenjoin those advertising statements that areliterally false, not those that are merelymisleading. Even if the statements are mis-leading (but not false), which would satisfythe first element, the second elementwould remain unsatisfied at this stage, and










a preliminary injunction would be inappro-priate. Accordingly, if we rule that any ofAxiom's representations are not literallyfalse, we would have to reverse that aspectof the preliminary injunction.

1. Literal Falsity

[15][16] The district court did not clearly err whenit concluded that Axiom made literally false state-ments in its advertising.FN12 First, the districtcourt did not clearly err when it ruled that Axiom'sclaims about an affiliation with NASA are literallyfalse. Although one engineer with NASA trainingor experience participated in Axiom's developmentof the DRX 9000, this does not constitute a jointcollaboration between NASA and Axiom, nor doesit support the claim that NASA engineers de-veloped the DRX 9000 or discovered part of theDRX 9000. Similarly, although the DRX 9000 usedsome components that NASA also uses, that doesnot mean the DRX 9000 contains or embodiesNASA technology. Perhaps these statements couldproperly be characterized as misleading rather thanliterally false, but it is a fine line, and we will onlyreverse the district court if its findings are clearlyerroneous. Based on the entire evidence, we are notleft with the definite and firm conviction that thedistrict court clearly erred.FN13

FN12. Whether a statement is literallyfalse is a finding of fact, which is reviewedonly for clear error. Scotts Co. v. UnitedIndus. Corp., 315 F.3d 264, 274 (4thCir.2002) (noting that literal falsity of anadvertisement is a factual question subjectto the clearly erroneous standard); see alsoTime Warner Cable, Inc. v. DIRECTV,Inc., 497 F.3d 144, 158 (2d Cir.2007);Hickson Corp. v. N. Crossarm Co., Inc.,357 F.3d 1256, 1261 (11th Cir.2004) (“Thefirst element of the Lanham Act test re-quires that the plaintiff show that the state-ments at issue were either ‘(1) commercialclaims that are literally false as a factual

matter ....’ ” (quoting United Indus. Corp.v. Clorox, 140 F.3d 1175, 1180 (8thCir.1998))).

FN13. Furthermore although Axiom ob-jects that several of its statements regard-ing NASA only appeared in a video thatwas never released to any potential con-sumers, the record contains ample evid-ence of additional statements, beyondthose in the video, that support the districtcourt's ruling of literal falsity.

[17] Second, the district court likewise did notclearly err when it ruled that Axiom's claims aboutthe DRX 9000 being FDA “approved” are literallyfalse. The DRX 9000 is a Class II medical device,which is only eligible for FDA “clearance” ratherthan FDA “approval;” FDA approval is a separateprocess that applies only to Class III devices.FN14

See*122621 U.S.C. §§ 360c, 360e (2006).Compare21 C.F.R. § 807.81(a)(1) (2006), with21C.F.R. § 814.1(c) (2006). As such, Axiom's state-ments that the DRX 9000 is FDA “approved” areliterally false. In fact, FDA regulations state that it“is misleading and constitutes misbranding” toclaim FDA approval when a device is merely FDAcleared. See21 C.F.R. § 807.97 (2006). Althoughthese regulations use the term “misleading,” theyalso describe such a misrepresentation as“misbranding,” and again, it is often a matter of de-gree whether a statement is literally false or merelymisleading. Based on the entire evidence, we areconvinced that the district court did not clearly errin judging Axiom's statements literally false.FN15

FN14. Regulation of medical devices isgoverned by the Federal Food, Drug, andCosmetic Act, 52 Stat. 1040, as amendedby the Medical Device Amendments of1976, 90 Stat. 539, 21 U.S.C. § 301 et seq.See Buckman Co. v. Plaintiffs' LegalComm., 531 U.S. 341, 345, 121 S.Ct. 1012,1015, 148 L.Ed.2d 854 (2001). Underthese regulations, medical devices are di-vided into three categories: “Class I


















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devices are those that present no unreason-able risk of illness or injury and thereforerequire only general manufacturing con-trols; Class II devices are those possessinga greater potential dangerousness and thuswarranting more stringent controls; ClassIII devices ‘presen[t] a potential unreason-able risk of illness or injury’ and thereforeincur the FDA's strictest regulation.” Id.(quoting § 360c(a)(1)(C)(ii)(II) (1994 &Supp. V)).

FN15. Furthermore, despite Axiom's argu-ments to the contrary, the district court didnot step into the FDA's shoes when it ruledthat the DRX 9000 was not approved. Thedistrict court was not making a determina-tion whether the device should be ap-proved, it merely noted what the FDA hadalready determined.

2. Materiality to Consumers' Purchasing Decisions

[18][19][20] The evidence amply supports the dis-trict court's conclusion that Axiom's statements arematerial to consumers' purchasing decisions. Evenwhen a court finds that a defendant's ads are liter-ally false, the plaintiff, to succeed on a claim offalse advertising, must still “establish that ‘the de-fendant's deception is likely to influence the pur-chasing decision.’ ” Johnson & Johnson, 299 F.3dat 1250 (quoting Cashmere & Camel Hair Mfrs.Inst. v. Saks Fifth Ave., 284 F.3d 302, 311 (1stCir.2002)). “The materiality requirement is basedon the premise that not all deceptions affect con-sumer decisions.” Id.

The types of false claims that the district court en-joined-regarding NASA affiliation and FDA ap-proval-logically would influence a doctor's decisionto purchase the DRX 9000 over a competing ma-chine without those qualities. These statements notonly represent the quality of the device, but theyprovide marketing opportunities to the purchasingdoctor when he or she in turn is advertising to pro-

spective patients. In fact, after the onset of litiga-tion against Axiom, several doctors who had pur-chased DRX 9000s sent letters to Axiom expressingtheir dissatisfaction with the possibility that theymight not be able to use Axiom's claims, if theclaims proved untrue, to attract patients. These let-ters provide clear evidence that Axiom's representa-tions would affect doctors' decisions whether topurchase a DRX 9000. Based on this and all otherevidence currently in the record, the district courtdid not err in its conclusion that these false state-ments are material to consumers' purchasing de-cisions.

C. Presumptions of Irreparable Harm

Even though we hold that NAM and Adagen haveestablished a substantial likelihood of success onthe merits of their trademark infringement and falseadvertising claims, we must still evaluate whetherNAM and Adagen have demonstrated, with respectto each claim, that they will suffer irreparable harmin the absence of an injunction. In reaching its con-clusion that NAM and Adagen satisfied this ele-ment of the preliminary injunction test, the districtcourt relied on two presumptions, one regarding theinfringement claims and one regarding the false ad-vertising claims. For the reasons that follow, we va-cate the preliminary injunction with respect to boththe trademark claims and the false advertisingclaims.

1. Irreparable Harm in False Advertising Cases

[21][22] The district court erred when it presumedthat NAM and Adagen would *1227 suffer irrepar-able harm in the absence of a preliminary injunc-tion merely because Axiom's advertisements are lit-erally false. The district court cited a case out of theNorthern District of Georgia, Energy Four, Inc. v.Dornier Medical Systems, Inc., 765 F.Supp. 724,734 (N.D.Ga.1991), for the following proposition:“In false advertising cases, ‘[p]roof of falsity is suf-ficient to sustain a finding of irreparable injury for


















purposes of a preliminary injunction.’ ” This quote,however, is an incomplete statement of the law.Proof of falsity is generally only sufficient to sus-tain a finding of irreparable injury when the falsestatement is made in the context of comparative ad-vertising between the plaintiff's and defendant'sproducts. SeeMcCarthy, supra, § 27:37 (“Where thechallenged advertising makes a misleading compar-ison to a competitor's product, irreparable harm ispresumed. But if the false advertising is non-comparative and makes no direct reference to acompetitor's product, irreparable harm is not pre-sumed.”(internal footnotes omitted)). Althoughsome cases, such as the one cited by the districtcourt, employ language that may suggest a moreexpansive presumption, such quotes take the origin-al principle out of context without explanation.

Once this presumption is properly stated, it be-comes evident that NAM and Adagen are not en-titled to the presumption's benefits because Axiom'sstatements, although false, do not mention NAM'sproducts by name or in any way compare Axiom'sproducts with NAM's products.FN16 This is not tosay that NAM and Adagen could not demonstrate,absent the presumption, that they will suffer irre-parable harm from Axiom's false advertising, butthe district court abused its discretion by relyingsolely on the presumption to find irreparable harm.Accordingly, we vacate the preliminary injunctionto the extent it proscribes Axiom's false advertising,and we remand to the district court to determinewhether NAM and Adagen will suffer irreparableharm in the absence of a preliminary injunction.

FN16. In reaching this conclusion, we neednot address whether this conclusion is alsoindicated by eBay Inc. v. MercExchange,L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164L.Ed.2d 641 (2006).

2. Irreparable Harm in Trademark InfringementCases

[23] Regardless of whether NAM deserves a pre-

sumption of irreparable harm on its false advert-ising claims, our prior cases do extend a presump-tion of irreparable harm once a plaintiff establishesa likelihood of success on the merits of a trademarkinfringement claim. Our circuit has acknowledgedas much on several occasions. See, e.g., Tally-Ho,Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1029(11th Cir.1989) (“ ‘It is generally recognized intrademark infringement cases that (1) there is not[an] adequate remedy at law to redress infringementand (2) infringement by its nature causes irrepar-able harm.’ ” (quoting Processed Plastic Co. v.Warner Commc'ns, 675 F.2d 852, 858 (7thCir.1982))); McDonald's Corp. v. Robertson, 147F.3d 1301, 1310 (11th Cir.1998).

Nonetheless, although established law entitlesNAM and Adagen to this presumption in the trade-mark infringement context, a recent U.S. SupremeCourt case calls into question whether courts maypresume irreparable harm merely because aplaintiff in an intellectual property case has demon-strated a likelihood of success on the merits. Seegenerally eBay Inc. v. MercExchange, L.L.C., 547U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).In eBay, after a jury had found patent infringementby the defendant, the district court denied theplaintiff's motion for permanent*1228 injunctiverelief. Id. at 390-91, 126 S.Ct. at 1839. In so doing,the district court “appeared to adopt certain expans-ive principles suggesting that injunctive relief couldnot issue in a broad swath of cases.” Id. at 393, 126S.Ct. at 1840. On appeal, the Federal Circuit re-versed the denial of injunctive relief, articulating acategorical rule that permanent injunctions shall is-sue once infringement is established. Id. at 393-94,126 S.Ct. at 1841. The Supreme Court reversed theFederal Circuit and admonished both the districtand appellate courts for applying categorical rulesto the grant or denial of injunctive relief. Id. at 394,126 S.Ct. at 1841. The Court stressed that the Pat-ent Act indicates “that injunctive relief ‘may’ issueonly ‘in accordance with the principles of equity.’ ”Id. at 393, 126 S.Ct. at 1839. Because the Courtconcluded “that neither court below correctly ap-






































plied the traditional four-factor framework thatgoverns the award of injunctive relief, [it] vacatedthe judgment of the Court of Appeals, so that theDistrict Court may apply that framework in the firstinstance.” Id. at 394, 126 S.Ct. at 1841. The Su-preme Court held that while “the decision whetherto grant or deny injunctive relief rests within theequitable discretion of the district courts, ... suchdiscretion must be exercised consistent with tradi-tional principles of equity, in patent disputes no lessthan in other cases governed by such standards.” Id.

Although eBay dealt with the Patent Act and withpermanent injunctive relief, a strong case can bemade that eBay's holding necessarily extends to thegrant of preliminary injunctions under the LanhamAct. Similar to the Patent Act, the Lanham Actgrants federal courts the “power to grant injunc-tions, according to the principles of equity andupon such terms as the court may deem reason-able.” 15 U.S.C. § 1116(a) (2006). Furthermore, noobvious distinction exists between permanent andpreliminary injunctive relief to suggest that eBayshould not apply to the latter. Because the languageof the Lanham Act-granting federal courts thepower to grant injunctions “according to the prin-ciples of equity and upon such terms as the courtmay deem reasonable”-is so similar to the languageof the Patent Act, we conclude that the SupremeCourt's eBay case is applicable to the instant case.

However, we decline to express any further opinionwith respect to the effect of eBay on this case. Forexample, we decline to decide whether the districtcourt was correct in its holding that the nature ofthe trademark infringement gives rise to a presump-tion of irreparable injury. In other words, we de-cline to address whether such a presumption is theequivalent of the categorical rules rejected by theCourt in eBay. We decline to address such issuesfor several reasons. First, the briefing on appeal hasbeen entirely inadequate in this regard. Second, thedistrict 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-

cision by fully applying eBay without the benefit ofa presumption of irreparable injury, or it may welldecide that the particular circumstances of the in-stant case bear substantial parallels to previouscases such that a presumption of irreparable injuryis an appropriate exercise of its discretion in lightof the historical traditions. See eBay, 547 U.S. at394-97, 126 S.Ct. at 1841-43 (concurring opinionsof Chief Justice Roberts and Justice Kennedy, rep-resenting the views of seven Justices). Accordingly,we also vacate the preliminary injunction as it ap-plies to the trademark infringement claim, and re-mand to the district court for further proceedingsnot inconsistent with this opinion, and with eBay.

*1229 IV. CONCLUSIONFN17

FN17. We also reject Axiom's argumentthat the district court failed to exercise itsdiscretion with respect to the bond issue.The district court did exercise its discretionnot to require a bond.

In sum, we affirm the district court's findings withrespect to the likelihood of success on the merits ofthe trademark claims and the false advertisingclaims. However, we vacate the preliminary injunc-tion with respect to both, and we remand to the dis-trict court for further proceedings not inconsistentwith this opinion.

AFFIRMED IN PART, VACATED AND RE-MANDED IN PART.

C.A.11 (Ga.),2008.North American Medical Corp. v. Axiom World-wide, Inc.522 F.3d 1211, 2008-1 Trade Cases P 76,124, 86U.S.P.Q.2d 1462, 21 Fla. L. Weekly Fed. C 552

END OF DOCUMENT
























PLANETARY MOTION, INC., Plaintiff-Counter-Defendant-Appellee,

v.TECHSPLOSION, INC., Michael Gay a.k.a. MichaelCarson, Defendants-Counter-Claimants-Appellants.

No. 00-10872.

Aug. 16, 2001.

Owner of trademark for e-mail checking service suedcompetitor for infringement. The United States DistrictCourt for the Southern District of Florida, No.99-06511-CV-DTKH, Daniel T.K. Hurley, J., held forowner, and competitor appealed. The Court of Appeals,Restani, Judge, United States Court of InternationalTrade, sitting by designation, held that: (1) owner's dis-tribution of software for end-users over Internet, evenabsent any sales thereof, was sufficient to establishtrademark rights in software's name; (2) owner's initialtrademark rights in e-mail notification software exten-ded to its subsequent service allowing users to check e-mail via telephone line; and (3) award of attorney feeswas abuse of discretion.

Affirmed in part; vacated in part.

West Headnotes




170Bk776 k. Trial De Novo. Most CitedCases



170BVIII(K) Scope, Standards, and Extent170BVIII(K)3 Presumptions

170Bk802 k. Summary Judgment. MostCited CasesReview of district court's grant of summary judgment isde novo, with all facts and reasonable inferences there-from reviewed in light most favorable to non-movingparty.



382TVIII(A) In General382Tk1411 Constitutional and Statutory Pro-

visions382Tk1413 k. Purpose and Construction in

General. Most Cited Cases(Formerly 382k331 Trade Regulation)

Lanham Act provision forbidding trademark infringe-ment is remedial in nature and should be interpreted andapplied broadly so as to effectuate its remedial purpose.Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. §1125(a).





Cases(Formerly 382k332 Trade Regulation)

To prevail under Lanham Act, trademark infringementclaimant must show that (1) it had prior rights to markat issue and (2) defendant had adopted mark or namethat was same, or confusingly similar to its mark, suchthat consumers were likely to confuse the two. LanhamTrade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).


382T Trademarks

261 F.3d 1188 Page 1261 F.3d 1188, 51 Fed.R.Serv.3d 294, 59 U.S.P.Q.2d 1894, 14 Fla. L. Weekly Fed. C 1159(Cite as: 261 F.3d 1188)


































382TVIII Violations of Rights382TVIII(A) In General

382Tk1418 Practices or Conduct Prohibited inGeneral; Elements

382Tk1420 k. Unfair Competition. MostCited Cases

(Formerly 382k403 Trade Regulation)Court may use analysis of federal trademark infringe-ment claim as “measuring stick” in evaluating merits ofstate law claim of unfair competition. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).



382Tk1142 k. Affixation. Most Cited Cases(Formerly 382k64 Trade Regulation)

Affixation requirement for trademark protection wasmet where software in question was distributed under fi-lename that was also claimed mark, was promoted un-der same mark, was accompanied by user manual bear-ing mark, and was sold in compilation under mark. Lan-ham Trade-Mark Act, §§ 43(a), 45, 15 U.S.C.A. §§1125(a), 1127.



382Tk1132 Use of Mark382Tk1136 Nature and Extent of Use

382Tk1136(2) k. Particular Cases. MostCited Cases




382TVIII(A) In General382Tk1435 k. Internet Use. Most Cited Cases

(Formerly 382k331 Trade Regulation)Distribution of software for end-users over Internet,even absent any sales thereof, was sufficient to establishtrademark rights in software's name; distribution both

satisfied “use in commerce” jurisdictional predicate forapplication of Lanham Act, and was sufficiently publicto create ownership rights in mark. Lanham Trade-MarkAct, §§ 43(a), 45, 15 U.S.C.A. §§ 1125(a), 1127.



382Tk1142 k. Affixation. Most Cited Cases(Formerly 382k64 Trade Regulation)

There is no requirement that, for trademark in softwareto be valid, mark must appear on box containingproduct incorporating it, that mark must be displayed onscreen when program is running, or that software bear-ing mark be selling point for the product into which it isincorporated; there is no requirement that public cometo associate mark with product in any particular way orthat public be passive viewers of mark for sufficientpublic association to arise. Lanham Trade-Mark Act, §45, 15 U.S.C.A. § 1127.



382Tk1162 Use by Others382Tk1164 k. Permission; Voluntary Arrange-

ments. Most Cited Cases(Formerly 382k65 Trade Regulation)

Fact that software had been distributed pursuant to“GNU General Public License” did not defeat owner-ship of trademark in software's name, or in any waycompel finding that owner abandoned his rights intrademark.


382T Trademarks382TVI Nature, Extent, and Disposition of Rights

382Tk1187 Persons Entitled to Assert Rights382Tk1188 k. In General. Most Cited Cases

(Formerly 382k61 Trade Regulation)Eleemosynary individual that uses trademark in connec-tion with good or service may nonetheless acquire own-ership rights in mark if there is sufficient evidence of














































competitive activity. Lanham Trade-Mark Act, §§ 43(a),45, 15 U.S.C.A. §§ 1125(a), 1127.


382T Trademarks382TIII Similarity Between Marks; Likelihood of

Confusion382Tk1081 k. Factors Considered in General.

Most Cited Cases(Formerly 382k345.1, 382k340.1, 382k334.1,

382k333 Trade Regulation)Factors court considers in assessing likelihood of con-sumer confusion, and hence trademark infringement,are: (1) type of mark; (2) similarity of mark; (3) similar-ity of products marks represent; (4) similarity of parties'retail outlets and customers; (5) similarity of advertisingmedia; (6) defendant's intent; and (7) actual confusion.Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. §1125(a).



Confusion382Tk1100 Relationship Between Goods or Ser-

vices Underlying Marks382Tk1101 k. In General. Most Cited Cases

(Formerly 382k363.1 Trade Regulation)Scope of protection enjoyed by trademark owner is notrestricted to owner's original use; under “natural expan-sion” doctrine, owner's rights vis-a-vis junior user ex-tend to goods on which mark has already been used orthat lie within realm of natural expansion. LanhamTrade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).




vices Underlying Marks382Tk1101 k. In General. Most Cited Cases


Court determines proper scope of protection of trade-mark in context of intervening uses by applying “sourceor sponsorship test,” under which mark owner has pro-tection against use of its mark on any product or servicewhich would reasonably be thought by buying public tocome from same source, or thought to be affiliated with,connected with, or sponsored by, mark owner.




vices Underlying Marks382Tk1103 k. Particular Goods and Services,

Relationship Between. Most Cited Cases(Formerly 382k363.1 Trade Regulation)

First user's trademark rights in e-mail notification soft-ware extended to its subsequent service allowing usersto check e-mail via telephone line, for purpose of de-termining whether second user's use of mark for e-mailchecking service was infringing; consumers reasonablycould have attributed software and service under samename to same source. Lanham Trade-Mark Act, § 43(a),15 U.S.C.A. § 1125(a).




170Bk763 Extent of Review Dependent onNature of Decision Appealed from

170Bk767 k. Provisional Remedies; In-junctions; Receivers. Most Cited CasesAppellate court will not set aside injunction unless it isso vague that it has no reasonably specific meaning.Fed.Rules Civ.Proc.Rule 65(d), 28 U.S.C.A.



170BVIII(K) Scope, Standards, and Extent







































170BVIII(K)1 In General170Bk763 Extent of Review Dependent on

Nature of Decision Appealed from170Bk767 k. Provisional Remedies; In-

junctions; Receivers. Most Cited CasesAppellate court determines propriety of allegedly vagueinjunctive order by inquiring into whether parties sub-ject thereto understand their obligations under order.

[16] Trademarks 382T 1717(2)



382Tk1717 Scope and Extent of Relief382Tk1717(2) k. Infringement in Gen-

eral. Most Cited Cases(Formerly 382k645 Trade Regulation)




382Tk1717 Scope and Extent of Relief382Tk1717(5) k. Misuse of Internet Do-

main Names; Cybersquatting. Most Cited Cases(Formerly 382k645 Trade Regulation)

Injunction prohibiting trademark infringement defend-ant from using name “Coolmail” or any similar mark inconnection with e-mail or other Internet-related ser-vices, in connection with software, and as part of do-main name of its website, was neither vague nor over-broad; order contained no contextual ambiguities or al-ternate readings prohibiting legal conduct.




170Bk830 k. Costs, Attorney Fees andOther Allowances. Most Cited Cases

(Formerly 382k729 Trade Regulation)Award of attorney fees in trademark infringement suit isreviewable only to determine if trial court abused itsdiscretion in granting or denying them. Lanham Trade-Mark Act, § 35(a), 15 U.S.C.A. § 1117(a).



382TIX(G) Costs382Tk1750 k. In General. Most Cited Cases




382TIX(G) Costs382Tk1752 Attorney Fees

382Tk1754 Grounds382Tk1754(2) k. Exceptional Cases; In-

tent or Bad Faith. Most Cited Cases(Formerly 382k728.1 Trade Regulation)

Owner of trademark for e-mail checking service, havingprevailed in infringement action against competitor, wasentitled to recover costs, but not attorney fees absentshowing that competitor's conduct was malicious, fraud-ulent, deliberate, or willful. Lanham Trade-Mark Act, §35(a), 15 U.S.C.A. § 1117(a).


382T Trademarks382TXI Trademarks and Trade Names Adjudicated

382Tk1800 k. Alphabetical Listing. Most CitedCases

(Formerly 382k736 Trade Regulation)COOLMAIL.*1190 John Cyril Malloy, III,Louis R. Gigliotti, Malloy& Malloy, P.A., Miami, FL, for Appellants.

Douglas Rappaport, Piper Marbury Rudnick and Wolfe,New York City, Mimi Sall, Ft. Lauderdale, FL, for Ap-pellee.



















































Before TJOFLAT and WILSON, Circuit Judges, andRESTANI FN*, Judge.

FN* Honorable Jane A. Restani, Judge, UnitedStates Court of International Trade, sitting bydesignation.

RESTANI, Judge:

Planetary Motion, Inc. (“Planetary Motion” or“Appellee”) sued Techsplosion, Inc. and Michael Gaya/k/a Michael Carson (respectively “Techsplosion” and“Carson”; collectively “Appellants”) for infringementand dilution of an unregistered trademark under Section43(a) and (c) of the Federal Trademark Act, 15 U.S.C. §1051 et seq. (1994) (“Lanham Act”), and for violationof Florida's unfair competition law. Fla. Stat. Ann. §495.151 (West 2000). Finding that Planetary Motionhad established priority of use and a likelihood of con-fusion, the United States District Court for the SouthernDistrict of Florida entered summary judgment in favorof Planetary Motion.*1191 We affirm the judgment andvacate the award of attorney fees.

Facts

I. Development and Distribution of the “Coolmail”Software

In late 1994, Byron Darrah (“Darrah”) developed aUNIX-based program (the “Software”) that provides e-mail users with notice of new e-mail and serves as agateway to the users' e-mail application. On December31, 1994, Darrah distributed the Software over the In-ternet by posting it on a UNIX user site called“Sunsite,” from which it could be downloaded for free.Darrah had named the Software “Coolmail” and thisdesignation appeared on the announcement sent to theend-users on Sunsite as well as on the Software user-manual, both of which accompanied the release.

The Software was distributed without charge to userspursuant to a GNU General Public License that also ac-companied the release. A GNU General Public Licenseallows users to copy, distribute and/or modify the Soft-ware under certain restrictions, e.g., users modifying li-censed files must carry “prominent notices” stating thatthe user changed the files and the date of any change.After the release of the Software, Darrah received cor-respondence from users referencing the “Coolmail”mark and in some cases suggesting improvements. In1995, Darrah released two subsequent versions of theSoftware under the same mark and also pursuant to theGNU General Public License.

In early 1995, a German company named S.u.S.E.GmbH sought permission from Darrah to include theSoftware in a CD-ROM package sold as a compilationof Unix-based programs. Darrah consented and, pursu-ant to the GNU licensing agreement, S.u.S.E. distrib-uted the Software in its compilation product and in sub-sequent versions thereof. S.u.S.E. sold and continues tosell the software compilation in stores in the UnitedStates and abroad, as well as over the Internet.

II. Launch of Techsplosion's “CoolMail” E-mail Ser-vice

In 1998, Appellant Carson formed Techsplosion, for thepurpose 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 Internetunder the mark “CoolMail.” Two days later, Techsplo-sion activated the domain name “coolmail.to” Techsplo-sion delivered an e-mail solicitation under the“CoolMail” mark to approximately 11,000 members ofthe Paramount Banner Network, an Internet advertisingnetwork, also created and operated by Carson. Techs-plosion charged no fee to subscribe to the service andgenerated revenues through the sale of banner advertise-ments on its web site.

III. Planetary Motion's E-mail Service & Applicationfor Trademark Registration

Appellee Planetary Motion is a computer software and












telecommunications company that developed and ownsan electronic mail service called “Coolmail.” As part ofits service, Planetary Motion enables a person to checke-mail via telephone without logging onto a computer.On April 24, 1998, Planetary Motion filed three intent-to-use applications to register the mark “Coolmail” withthe United States Patent and Trademark Office. ThoughPlanetary Motion was aware that Darrah's Software alsobore the mark “Coolmail,” it represented in its applica-tions that it was not aware of any mark upon which itsproposed registered mark would infringe. Planetary Mo-tion launched its Coolmail e-mail service to subscriberson June 8, 1998.

*1192 IV. Planetary Motion's Complaint and Sub-sequent Acquisition of Darrah's Rights

On April 22, 1999, Planetary Motion filed a complaintagainst Techsplosion. In the complaint, Planetary Mo-tion alleged infringement of the alleged mark“Coolmail” for use in connection with e-mail services.Planetary alleged federal trademark infringement andunfair competition under Section 43(a) of the LanhamAct, 15 U.S.C. § 1125(a), as well as injury to businessreputation and dilution under Florida Statute § 495.151.

On June 10, 1999, Techsplosion filed an Answer, Af-firmative Defenses, and Counterclaims. The counter-claims alleged infringement of the mark “Coolmail” foruse in connection with e-mail services. Techsplosion al-leged unfair competition, false designation, description,and representation under the Lanham Act, commontrademark infringement, common law unfair competi-tion, and injury to business reputation and dilution.

In July of 1999, Planetary Motion purchased from Dar-rah all rights, title, and interest to the Software includ-ing all copyrights, trademarks, patents and other intel-lectual property rights.FN1 On August 31, 1999, Planet-ary filed an Amended Verified Complaint, adding aclaim for dilution under Section 43(c) of the LanhamAct, 15 U.S.C. § 1125(c), and alleging violation oftrademark rights assigned from Darrah.

FN1. The assignee of a trade name or service

mark “steps into the shoes of the assignor.”Premier Dental Prods. Co. v. Darby DentalSupply Co., 794 F.2d 850, 853 (3d Cir.), cert.denied, 479 U.S. 950, 107 S.Ct. 436, 93L.Ed.2d 385 (1986). Appellants do not contestthe validity of the assignment from Darrah, nordo they dispute that in purchasing rights toDarrah's software, Planetary Motion succeededto all rights possessed by Darrah.

V. Disposition of Planetary Motion's Complaint

On January 31, 2000, the district court entered an Ordergranting Planetary Motion's motion for summary judg-ment and denying Carson's and Techsplosion's motionfor summary judgment. The district court based the Or-der on two findings: (1) that the alleged mark was af-fixed to Darrah's software, and that Darrah's distributionof the software over the Internet constituted a “transportin commerce,” resulting in the creation of trademarkrights and priority, and (2) there was a likelihood ofconfusion because the marks “are essentially the same.”The district court did not reach the issue of whetherTechsplosion's use of “CoolMail” in connection with itse-mail service diluted Planetary Motion's mark.

On the same date, the district court entered final judg-ment granting Planetary Motion permanent injunctiverelief. See15 U.S.C. § 1116. The order also awardedPlanetary Motion profits and damages, as well as attor-ney fees and costs, pursuant to section 35 of the Lan-ham Act, 15 U.S.C. § 1117. The district court requesteda report and recommendation from a magistrate judgefixing the amounts to be awarded.

A Notice of Appeal was filed on February 15, 2000. OnFebruary 15, 2000, Techsplosion filed an EmergencyMotion to Stay Pending Appeal, reasserting that Darrahnever established any rights in the alleged mark. Thismotion was denied on February 17, 2000.

On May 9, 2000 the magistrate judge entered his reportrecommending that Planetary Motion be awarded$275,508 in attorneys' fees and $6,562.34 in costs, butthat its request for damages be denied for lack of spe-





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cificity. Techsplosion served its appeal brief on May 22,2000. On June 9, 2000, the district court entered an or-der adopting the report and recommendation in its en-tirety. On July 7, 2000, Techsplosion*1193 filed a No-tice of Appeal from the order adopting the magistratejudge's report and recommendation.FN2

FN2. Planetary Motion does not appeal the dis-trict court's adoption of the recommendation ofthe magistrate judge denying damages.

Standard of Review

[1] Review of a district court's grant of summary judg-ment is de novo, with all facts and reasonable inferencestherefrom reviewed in the light most favorable to thenon-moving party. Carnival Brand Seafood Co. v. Car-nival Brands, Inc., 187 F.3d 1307, 1309 (11thCir.1999).

Discussion

[2][3][4] Section 43(a) of the Lanham Act forbids unfairtrade practices involving infringement of trade dress,service marks, or trademarks, even in the absence offederal trademark registration.FN3 Two Pesos, Inc. v.Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753,120 L.Ed.2d 615 (1992). Section 43(a) is remedial innature and should be interpreted and applied broadly soas to effectuate its remedial purpose. Montgomery v.Noga, 168 F.3d 1282, 1300 & n. 29 (11th Cir.1999)(citing Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d76, 79 (2d Cir.1981)). To prevail under this section, aclaimant must show (1) that it had prior rights to themark at issue and (2) that the defendant had adopted amark or name that was the same, or confusingly similarto its mark, such that consumers were likely to confusethe two.FN4 Lone Star Steakhouse & Saloon, Inc. v.Longhorn Steaks, Inc., 106 F.3d 355, 360 (11thCir.1997) (citing Conagra Inc. v. Singleton, 743 F.2d1508, 1512 (11th Cir.1984)), modified, 122 F.3d 1379(1997). Appellants argue that the district court erred infinding that Planetary Motion had established both ele-ments. Appellants also dispute the scope of injunctiverelief, as well as the award of attorney fees and costs.

FN3. Section 43(a) provides in pertinent part:

(1) Any person who, on or in connectionwith any goods or services, or any containerfor goods, uses in commerce any word, term,name, symbol, or device, or any combinationthereof, or any false designation of origin,false or misleading description of fact, orfalse or misleading representation of fact,which-

(A) is likely to cause confusion, or to causemistake, or to deceive as to the affiliation,connection, or association of such personwith another person, or as to the origin, spon-sorship, or approval of his or her goods, ser-vices, or commercial activities by anotherperson, or

(B) in commercial advertising or promotion,misrepresents the nature, characteristics,qualities, or geographic origin of his or heror another person's goods, services, or com-mercial activities,

shall be liable in a civil action by any personwho believes that he or she is or is likely tobe damaged by such act.

15 U.S.C. § 1125(a).

FN4. Courts may use an analysis of federal in-fringement claims as a “measuring stick” inevaluating the merits of state law claims of un-fair competition. See Investacorp, Inc. v. Arabi-an Inv. Banking Corp. (Investcorp) E.C., 931F.2d 1519, 1521 (11th Cir.), cert. denied, 502U.S. 1005, 112 S.Ct. 639, 116 L.Ed.2d 657(1991).

I. Prior Use in Commerce

[5][6] Under common law, trademark ownership rightsare “appropriated only through actual prior use in com-merce.” Tally-Ho, Inc. v. Coast Community CollegeDist., 889 F.2d 1018, 1022 (11th Cir.1989) (citation




































omitted). Under the Lanham Act,FN5 the term “use incommerce” is *1194 defined in relevant part as follows:

FN5. “In the absence of registration, rights to amark traditionally have depended on the verysame elements that are now included in thestatutory definition: the bona fide use of a markin commerce that was not made merely to re-serve a mark for later exploitation.” AllardEnters., Inc. v. Advanced Programming Res.,Inc., 146 F.3d 350, 357 (6th Cir.1998). Com-mon law and statutory trademark infringementsare merely specific aspects of unfair competi-tion. New West Corp. v. NYM Co. of Cal., Inc.,595 F.2d 1194, 1201 (9th Cir.1979) (citing,inter alia, Dresser Indus., Inc. v. Heraeus En-gelhard Vacuum, Inc., 395 F.2d 457, 461 (3dCir.), cert. denied, 393 U.S. 934, 89 S.Ct. 293,21 L.Ed.2d 270 (1968)).

the bona fide use of a mark in the ordinary course oftrade, and not made merely to reserve a right in amark.... [A] mark shall be deemed to be in use incommerce ... on goods when (A) it is placed in anymanner on the goods or their containers or the dis-plays associated therewith or on the tags or labels af-fixed thereto, or if the nature of the goods makes suchplacement impracticable, then on documents associ-ated with the goods or their sale, and (B) the goodsare sold or transported in commerce ....

15 U.S.C. § 1127.FN6 The district court found that be-cause the statute is written in the disjunctive (i.e.,“sale or transport”), Darrah's wide distribution of theCoolmail software over the Internet, even absent anysales thereof, was sufficient to establish ownershiprights in the “CoolMail” mark. Appellants contendthat “transport in commerce” alone-here, Darrah'sfree distribution of software over the Internet “withno existing business, no intent to form a business, andno sale under the mark”-is insufficient to create trade-mark rights. Appellants' Brief at 13. Appellants' argu-ment lacks merit.

FN6. Appellants appear to have conceded thatif Darrah sent out original programs and relatedmanuals, this would satisfy the affixation re-

quirement:

MR. GIGLIOTTI [counsel for Techsplosion]:[The mark] has to be on the product or on theassociated documentation. It is on neither.

THE COURT: It is not on the associated doc-umentation[?] How about the original pro-grams Darrah sent out and manuals that wentwith it, and all that material, wasn't thatenough for affixation?

MR. GIGLIOTTI: Yes, Your Honor, that isaffixation; however, he did not meet the salerequirement.

R3-85-19 to 20.

In any case, the affixation requirement is metbecause the Software was distributed under afilename that is also the claimed mark, waspromoted under the same mark, was accom-panied by a user manual bearing the mark,and was sold in a compilation under themark.

The parties do not make clear the two different contextsin which the phrase “use in commerce” is used. Theterm “use in commerce” as used in the Lanham Act“denotes Congress's authority under the CommerceClause rather than an intent to limit the [Lanham] Act'sapplication to profit making activity.” United We StandAm., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d86, 92-93 (2d Cir.1997) (citation omitted), cert. denied,523 U.S. 1076, 118 S.Ct. 1521, 140 L.Ed.2d 673(1998); U.S. Const., Art. I, § 8, cl. 3. Because Con-gress's authority under the Commerce Clause extends toactivity that “substantially affects” interstate commerce,United States v. Lopez, 514 U.S. 549, 559, 115 S.Ct.1624, 131 L.Ed.2d 626 (1995), the Lanham Act's defini-tion of “commerce” is concomitantly broad in scope:“all commerce which may lawfully be regulated byCongress.” 15 U.S.C. § 1127. See also Steele v. BulovaWatch Co., 344 U.S. 280, 283-84, 73 S.Ct. 252, 97L.Ed. 319 (1952); Larry Harmon Pictures Corp. v. Wil-liams Rest. Corp., 929 F.2d 662, 666 (Fed.Cir.)






















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(allowing registration for an intrastate provider of res-taurant services with an undefined interstate clientele),cert. denied, 502 U.S. 823, 112 S.Ct. 85, 116 L.Ed.2d58 (1991). The distribution of the Software for end-users over the Internet satisfies *1195 the “use in com-merce” jurisdictional predicate. See, e.g., Planned Par-enthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d1430, 1434, 1997 WL 133313 (S.D.N.Y.1997) ( “Thenature of the Internet indicates that establishing a typic-al home page on the Internet, for access to all users,would satisfy the Lanham Act's ‘in commerce’ require-ment.”), aff'd, 152 F.3d 920 (2d Cir.), cert. denied, 525U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998).

Nevertheless, the use of a mark in commerce also mustbe sufficient to establish ownership rights for a plaintiffto recover against subsequent users under section 43(a).See New England Duplicating Co. v. Mendes, 190 F.2d415, 417-18 (1st Cir.1951) (after finding “use in com-merce” jurisdiction predicate satisfied, court noted that“[t]he question remains whether the plaintiff has estab-lished that he was the ‘owner’ of the mark, for under[15 U.S.C. § 1051] only the ‘owner’ of a mark is en-titled to have it registered.”). The court in Mendes setforth a two part test to determine whether a party has es-tablished “prior use” of a mark sufficient to establishownership:

[E]vidence showing, first, adoption,FN7 and, second,use in a way sufficiently public to identify or distin-guish the marked goods in an appropriate segment ofthe public mind as those of the adopter of the mark, iscompetent to establish ownership, even without evid-ence of actual sales.FN8

FN7. It is uncontested that Darrah adopted themark “Coolmail” before Appellants' use of themark in connection with their e-mail service.

FN8. This ownership test is not for the purposeof establishing the “use in commerce” jurisdic-tional predicate of the Lanham Act. See, e.g.,Univ. of Fla. v. KPB, Inc., 89 F.3d 773, 776 n.4 (11th Cir.1996). See supra discussion in text.

Id. at 418. See also New West, 595 F.2d at 1200.FN9

FN9. This ownership requirement parallels thestatutory definition of “trademark”: “any word,name, symbol, or device, or any combinationthereof ... used by a person ... to identify anddistinguish his or her goods ... from those man-ufactured or sold by others ....”15 U.S.C. §1127. The Seventh Circuit has held that a high-er quantum of use may be necessary to estab-lish ownership rights under common law thanunder the statute because the notice function ofregistration is lacking. See Zazu Designs v.L'Oreal, S.A., 979 F.2d 499, 503-04 (7thCir.1992). In addition, the continuity of a user'scommercial activities in connection with themark is also relevant to determining whetheruse is sufficient to establish common law own-ership. Circuit City Stores, Inc. v. CarMax,Inc., 165 F.3d 1047, 1054-55 (6th Cir.1999)(“A party establishes a common law right to atrademark only by demonstrating that its use ofthe mark was ‘deliberate and continuous, notsporadic, casual or transitory.’ ”).

Courts generally must inquire into the activities sur-rounding the prior use of the mark to determine whethersuch an association or notice is present. See, e.g.,Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188F.3d 427, 433 (7th Cir.1999) (“The determination ofwhether a party has established protectable rights in atrademark is made on a case by case basis, consideringthe totality of the circumstances.”), cert. denied, 528U.S. 1188, 120 S.Ct. 1241, 146 L.Ed.2d 100 (2000).Under the “totality of circumstances” analysis, a partymay establish “use in commerce” even in the absence ofsales. “[A]lthough evidence of sales is highly persuas-ive, the question of use adequate to establish appropri-ation remains one to be decided on the facts of eachcase ....” New West, 595 F.2d at 1200 (quoting Mendes,190 F.2d at 418). The court in New West recognized that“mere advertising by itself may not establish priority ofuse,” but found that promotional mailings coupled withadvertiser and distributor solicitations met the Mendes“public identification” ownership *1196 requirement.








































Id. at 1200. Thus, contrary to Appellants' assertions, theexistence of sales or lack thereof does not by itself de-termine whether a user of a mark has established owner-ship rights therein.FN10 Compare Marvel Comics Ltd.v. Defiant, 837 F.Supp. 546, 549 (S.D.N.Y.1993)(finding announcement of “Plasmer” title to 13 millioncomic book readers and promotion at annual trade con-vention sufficient to establish trademark ownershiprights, notwithstanding lack of any sales) with Warner-Vision Entm't Inc. v. Empire of Carolina Inc., 915F.Supp. 639, 645-46 (S.D.N.Y.) (finding toy manufac-turer's promotional efforts insufficient to establish pri-ority of use where only a few presentations were madeto industry buyers, even though one resulted in a sale toa major toy retailer), aff'd in part, vacated in part, 101F.3d 259 (2d Cir.1996).FN11

FN10. Appellants cite Future Domain Corp. v.Trantor Sys. Ltd., 27 U.S.P.Q.2d 1289, 1293,1993 WL 270522 (N.D.Cal.1993) for the pro-position that there must be a sale in order tosatisfy the “use in commerce” requirement. Fu-ture Domain, however, turned not on the exist-ence of sales but whether the extent of the pur-ported mark owner's activities created a publicassociation between the mark and the product.There, the court determined that a computersoftware manufacturer's promotion of a mark ata trade show-where at most 7,000 persons actu-ally received or requested information aboutthe mark and where no orders were taken-wasnot sufficient to create such an association. Id.at 1293-95.

FN11. Courts applying the “totality of circum-stances” approach routinely have found evid-ence of a few sales of goods to which the markhad been affixed insufficient to establish trade-mark ownership. For example, in ZazuDesigns, 979 F.2d at 503-04, the plaintiff hairsalon had sold a few bottles of shampoo bear-ing the mark “Zazu” both over the counter andmailed over state lines. The court found thatsuch limited sales “neither link the Zazu markwith [the plaintiff's] product in the minds of

consumers nor put other producers on notice.”Id. at 503.

Similarly, not every transport of a good is sufficient toestablish ownership rights in a mark. To warrant protec-tion, use of a mark “need not have gained wide publicrecognition,” but “[s]ecret, undisclosed internal ship-ments are generally inadequate.” Blue Bell, Inc. v.Farah Mfg. Co., 508 F.2d 1260, 1265 (5thCir.1975).FN12 In general, uses that are de minimismay not establish trademark ownership rights. See, e.g.,Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d1768, 1772-73, 1994 WL 484936 (Trademark Tr. &App. Bd.1994) (finding no bona fide use in ordinarycourse of trade where mark was affixed to a game con-sisting of three pieces of paper and distributed for thepurpose of promoting musical group).

FN12. In Bonner v. City of Prichard, 661 F.2d1206 (11th Cir.1981) (en banc), the EleventhCircuit adopted as binding precedent all de-cisions handed down by the former Fifth Cir-cuit prior to October 1, 1981.

We find that, under these principles, Darrah's activitiesunder the “Coolmail” mark constitute a “use in com-merce” sufficiently public to create ownership rights inthe mark. First, the distribution was widespread, andthere is evidence that members of the targeted publicactually associated the mark Coolmail with the Soft-ware to which it was affixed. Darrah made the softwareavailable not merely to a discrete or select group (suchas friends and acquaintances, or at a trade show withlimited attendance), but to numerous end-users via theInternet. The Software was posted under a filenamebearing the “Coolmail” mark on a site accessible to any-one who had access to the Internet. End-users commu-nicated with Darrah regarding the Software by referen-cing the “Coolmail” mark in their e-mails. Appellantsargue that only technically-skilled UNIX-users madeuse of the Software, but there is no evidence that theywere so few in *1197 number to warrant a finding of deminimis use.

Third, the mark served to identify the source of theSoftware. The “Coolmail” mark appeared in the subject































field and in the text of the announcement accompanyingeach release of the Software, thereby distinguishing theSoftware from other programs that might perform simil-ar functions available on the Internet or sold in softwarecompilations.FN13 The announcements also apparentlyindicated that Darrah was the “Author/Maintainer ofCoolmail” and included his e-mail address. The usermanual also indicated that the Software was named“Coolmail.” FN14 The German company S.u.S.E. wasable to locate Darrah in order to request permission touse his Software in its product under the mark“Coolmail.” Appellants do not assert that S.u.S.E. wasunaware that the Software was called “Coolmail” whenit contacted Darrah.

FN13. Darrah testified that “[m]ost of thesource files ... have [the mark] in them. Alsothere's a copyright notice included with thesoftware that has the name Coolmail. And thename of the executable file itself is Coolmail.”

R2-47-Exh. 3 at 67.

FN14. Darrah: The Coolmail name alwayscomes with the documentation that comes withthe software.

* * *

Q: What documentation are you talkingabout?

A: There's a user manual that comes with it.

* * *

Q: Does it say “Coolmail” on page 1?

A. Yes.

Q: Where does it say “Coolmail” on page 1?

A: At the top.

... and on the header of every page.

Q: What does it say, exactly?

A: I'm not sure if it says this verbatim, it's“Coolmail,” space, then the version number.

R2-47-Exh. 3 at 68, 72 to 73.

Fourth, other potential users of the mark had notice thatthe mark was in use in connection with Darrah's Soft-ware. In investigating whether the mark Coolmail exis-ted before submitting its trademark registration applica-tion for its e-mail service, Planetary Motion was able todiscover that Darrah was using the mark to designatehis Software product.

[7] Fifth, the Software was incorporated into severalversions of a product that was in fact sold worldwideand specifically attributed ownership of the Software toDarrah under the “Coolmail” mark. Any individual us-ing the S.u.S.E. product, or competitor of S.u.S.E., thatwanted to know the source of the program that per-formed the e-mail notification function, could do so byreferring to the user manual accompanying theproduct.FN15 There is no support for the argument thatfor a trademark in software to be valid, the mark mustappear on the box containing the product incorporatingit, that the mark must be displayed on the screen whenthe program is running, or that the software bearing themark be a selling point for the product into which it isincorporated. There is no requirement that the publiccome to associate a mark with a product in any particu-lar way or that the public be *1198 passive viewers of amark for a sufficient public association to arise.

FN15. The user manual for the S.u.S.E. Linux4.3 product includes a list of application pack-ages that contains the following attribution:

coolmail “Cool” XBiff Clone

Shows if new mail has arrived. The main ad-vantage of this program is that you can clickinto the window to fire up the mailer of yourchoice.



Docu: man coolmail

Copyright: (c) 1994 Byron C. Darrah

Author: Byron C. Darrah <[email protected]>, Randall K. Sharpe<[email protected]>

Version: 1.3

Supp. Exh. 1 at 14-72 and 42-110.

[8] Sixth, software is commonly distributed withoutcharge under a GNU General Public License. The suffi-ciency of use should be determined according to thecustomary practices of a particular industry. SeeS. Rep.100-515 at 44 (1988) (“The committee intends that therevised definition of ‘use in commerce’ [see note 13,supra ] be interpreted to mean commercial use which istypical in a particular industry.”) (emphasis added).That the Software had been distributed pursuant to aGNU General Public License does not defeat trademarkownership, nor does this in any way compel a findingthat Darrah abandoned his rights in trademark. Appel-lants misconstrue the function of a GNU General PublicLicense. Software distributed pursuant to such a licenseis not necessarily ceded to the public domain and the li-censor purports to retain ownership rights, which mayor may not include rights to a mark.FN16

FN16. Because a GNU General Public Licenserequires licensees who wish to copy, distribute,or modify the software to include a copyrightnotice, the license itself is evidence of Darrah'sefforts to control the use of the “CoolMail”mark in connection with the Software.

Appellants cite Heinemann v. General Motors Corp.,342 F.Supp. 203 (N.D.Ill.1972), aff'd, 478 F.2d 1405(7th Cir.1973), for the proposition that Darrah was a“hobbyist” unworthy of common law trademark protec-tion. Heinemann is factually distinguishable from thecase at hand. The plaintiff in Heinemann used a mark inconnection with his automobile before an automobilemanufacturer independently had adopted the same namefor a new model. The court held that the plaintiff hadnot established common law ownership rights based ontwo findings. First, the court found that because Heine-mann's purpose in using the mark was to “open [at a

later date] an automobile equipment shop which wouldhave capitalized upon the slogan,” he merely attemptedto “reserve a trade or service mark pending the creationof a trade or business ....” 342 F.Supp. at 207. The courtreasoned as follows:

While the law does not require a nationwide business;an old, established business; or even a profitable busi-ness for the acquisition of property interests in tradeor service marks, it does require a presently existingtrade or business for such acquisition. The exhibitsdisclose that Plaintiff had only a desire to open abusiness in futuro. To hold otherwise would make atrade mark a property right in gross, instead of a rightappurtenant.

Id. (emphasis in original). The Heinemann court alsofound that plaintiff Heinemann's activities consistedmerely of occasionally racing or displaying the auto-mobile at fairs as a hobby, as evidenced by his testi-mony that he was employed at an oil company. Id. Here,Darrah did not attempt to “warehouse” the mark by pro-moting a product he merely intended to develop anddistribute at a later date. Darrah's use of the mark todesignate the distributed Software and each subsequentversion thereof indicates that his use was not meresporadic or token use.FN17 Furthermore,*1199 unlikeHeinemann, Darrah activities pertained to his chosenprofession. Darrah is employed as a computer systemsadministrator, which entails the management and over-sight of computer networks and systems as well as thedevelopment of software in support thereof.

FN17. Appellants contend that the district courterred in “ignoring” the first sentence of thepresent definition of “use in commerce” (“thebona fide use of a mark in the ordinary courseof trade, and not made merely to reserve a rightin a mark”), which was added pursuant to theTrademark Law Revision Act of 1988











(“Revision Act”), Pub.L. No. 100-667, 102Stat. 3935 (1988). The court in Allard foundthat a magistrate judge's reliance on case lawthat antedated the revision was proper becausethe language of the revised definition is“entirely consistent with the traditional rulesgoverning common-law ownership of trade-marks.” 146 F.3d at 357. The Allard courtnoted that “the purpose of this revision ‘was toeliminate “token use” as a basis for registra-tion, and that the stricter standard contemplatesinstead commercial use of the type common tothe particular industry in question.’ ” Id.(citation omitted).

The reason “token use” was expressly elim-inated was that the Revision Act had createdan “intent-to-use” application system thatrendered such a “commercial sham” unneces-sary. See134 Cong. Rec. 32,053 (Oct. 20,1988) (Sen.DeConcini). The revision did notalter the meaning of the phrase “sold ortransported in commerce” or in any way in-crease the quantum of use necessary to ac-quire trademark ownership as developed bycommon law. See id. (“Congress' intent thatthe revised definition still encompass genu-ine, but less traditional, trademark uses mustbe made clear. For example, such uses asclinical shipments of a new drug awaitingFDA approval, test marketing, or infrequentsales of large or expensive or seasonalproducts, reflect legitimate trademark uses inthe normal course of trade and are not to beexcluded by the House language.”). There isno evidence to support the contention thatDarrah's purpose was merely to secure trade-mark rights to reserve the mark for futureuse.

[9] Appellants also rely on DeCosta v. Columbia Broad.Sys., Inc., 520 F.2d 499, 513 (1st Cir.1975), cert.denied, 423 U.S. 1073, 96 S.Ct. 856, 47 L.Ed.2d 83(1976), to argue that Darrah is an eleemosynary indi-vidual and therefore unworthy of protection under un-

fair competition laws. The DeCosta court did not holdthat the that the absence of a profit-oriented enterpriserenders one an eleemosynary individual, nor did it holdthat such individuals categorically are denied protec-tion. Rather, the DeCosta court expressed “misgivings”of extending common law unfair competition protec-tion, clearly available to eleemosynary organizations, toeleemosynary individuals.FN18Id. The court's reluct-ance to extend protection to eleemosynary individualswas based on an apparent difficulty in establishing aline of demarcation between those eleemosynary indi-viduals engaged in commerce and those that are not.But as the sufficiency of use to establish trademarkownership is inherently fact-driven, the court need nothave based its decision on such a consideration.Mendes, 190 F.2d at 418. Common law unfair competi-tion protection extends to non-profit organizations be-cause they nonetheless engage in competition with otherorganizations.FN19 See Girls Clubs of Am., Inc. v. BoysClubs of Am., Inc., 683 F.Supp. 50 (S.D.N.Y.1988),aff'd, 859 F.2d 148 (2d Cir.). Thus, an eleemosynary in-dividual that uses a mark in connection with a good orservice may nonetheless acquire ownership rights in themark if there is sufficient evidence of competitive activ-ity.FN20

FN18. It is unlikely that the plaintiff's activitiesin De Costa-costumed performances and distri-bution of his picture at local rodeos, parades,hospitals, etc.-would generate a “public associ-ation” sufficient to confer him common lawtrademark ownership rights. The court assumedarguendo, however, that the plaintiff's activit-ies did warrant protection, and went on to findthat the evidence did not support a finding oflikelihood of confusion.

FN19. The DeCosta court recognized that “thelaw of unfair competition ... protects‘eleemosynary organizations (which) functionin commerce and, in form, resemble businessenterprises .... The happenstance that they arenonprofit-seeking ventures, and therefore re-moved, as such, from the rigors of businesscompetition, neither eliminates the element of



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competition nor disentitles them to protectionagainst the unfair competition of similar organ-izations.’ ” 520 F.2d at 512 (quoting Callman,Vol. 1, s 1.1, p. 4).

FN20. The DeCosta court noted that

[common law unfair competition][p]rotection at present has the merits of in-herent limitations: the existence of a trade,business, or profession where the “good will”to be protected has been subject to the acidtest of the willingness of people to pay forgoods or services; or, in the case of nonprofitinstitutions, the voluntary investment in time,effort, and money of many individuals to cre-ate and maintain a program of sufficient in-terest to consumers, members, and sponsorsto warrant protection.

520 F.2d at 513.

We find that such an “inherent limitation,” ifit in fact exists, is inapplicable in this con-text. One individual can invest time, effortand money in developing software or othertechnologically-based goods or services thatwould be of interest to a multitude of users,other developers, and retail establishments.In fact, the program was of sufficient interestfor S.u.S.E. to put effort into including it inits own software which was sold for profit,including the effort of obtaining Darrah'spermission under the GNU General PublicLicense.

*1200 Here, Darrah's activities bear elements of com-petition, notwithstanding his lack of an immediateprofit-motive. By developing and distributing softwareunder a particular mark, and taking steps to avoid ced-ing the Software to the public domain, Darrah made ef-forts to retain ownership rights in his Software and toensure that his Software would be distinguishable fromother developers who may have distributed similar orrelated Software. R2-47-Exh. 3 at 67. Competitiveactivity need not be fueled solely by a desire for direct

monetary gain. Darrah derived value from the distribu-tion because he was able to improve his Software basedon suggestions sent by end-users. Just as any other con-sumers, these end-users discriminate among and shareinformation on available software. It is logical that asthe Software improved, more end-users used his Soft-ware, thereby increasing Darrah's recognition in his pro-fession and the likelihood that the Software would beimproved even further.

In light of the foregoing, the use of the mark in connec-tion with the Software constitutes significant and sub-stantial public exposure of a mark sufficient to have cre-ated an association in the mind of public.

II. Likelihood of Confusion

[10] The district court supported its determination of“likelihood of confusion” with the following findings:(1) the mark used by Planetary Motion (“Coolmail”) is“essentially the same” as that used by Techsplosion(“CoolMail”) FN21; (2) both marks are used in connec-tion with e-mail services; (3) both plaintiff and defend-ants serve e-mail customers via the Internet; and (4)both use the Internet to promote their services. R2-62-7.FN22 Appellants do not dispute the accuracy of thesefindings. Rather, Appellants claim the district court im-properly based its analysis on a comparison of theparties' respective e-mail services, rather than on a com-parison of Techsplosion's “CoolMail” e-mail service tothe “Coolmail” Software. Appellants argue that the lat-ter comparison is required *1201 because Planetary Mo-tion acquired its rights to the “Coolmail” mark by as-signment of rights in Darrah's Software, and under the“natural expansion” doctrine this is a use unrelated toPlanetary Motion's current use of e-mail services. Thus,Appellants' argument in essence goes to whether thescope of trademark protection enjoyed by Planetary Mo-tion extends from the initial use (in connection with theSoftware) to the current use (in connection with Planet-ary Motion's e-mail services).

FN21. The Ninth Circuit in Brookfield Commu-nications, Inc. v. W. Coast Entm't Corp., 174F.3d 1036, 1055 (1999), explained that the do-










main name “moviebuff.com” was virtuallyidentical to “MovieBuff,” because “Web ad-dresses are not caps-sensitive.”

FN22. This Court considers the following sev-en factors in assessing whether or not a likeli-hood of consumer confusion exists: (1) type ofmark; (2) similarity of mark; (3) similarity ofthe products the marks represent; (4) similarityof the parties' retail outlets (trade channels) andcustomers; (5) similarity of advertising media;(6) defendant's intent; and (7) actual confusion.See Lone Star, 122 F.3d at 1382. Of these, thetype of mark and the evidence of actual confu-sion are the most important. See Dieter v. B&HIndus. of Southwest Fla., Inc., 880 F.2d 322,326 (11th Cir.1989), cert. denied, 498 U.S.950, 111 S.Ct. 369, 112 L.Ed.2d 332 (1990). Inthis case, there is evidence that end-users sub-scribed to Techsplosion's e-mail service underthe impression they were subscribing to Planet-ary Motion's service. See R2-46-Exh. 1-G.

[11] The scope of protection enjoyed by a trademarkowner is not restricted to the owner's original use. The“natural expansion” doctrine is applied to determine theproper scope of protection where a mark owner's previ-ous use differs from its current use, and the junior useintervenes. Under this doctrine, the first trademark own-er's rights are limited to goods on which the mark hasalready been used or that lie within the realm of naturalexpansion; “[t]his appears to be no more than a specificapplication of the familiar ‘related goods' test.” J. Mc-Carthy, § 24:20.FN23 See also Carnival, 187 F.3d at1310-11.

FN23. The theory of “natural expansion” as ap-plied to determinations of the scope of protec-tion “relates to a situation where the senior userof mark A on product line X expands use ofmark A to product line Z and conflicts with an‘intervening junior user’ who has already beenusing mark A on product line Z.” J. McCarthy,§ 24:20. This differs from the “natural expan-sion” doctrine as applied to determining thegeographical delimitation of common law

trademark rights. See id. § 26:20; Tally-Ho,889 F.2d at 1023, 1027-29.

The “natural expansion” thesis seems to benothing more than an unnecessarily complic-ated application of the likelihood of confu-sion of source or sponsorship test to a partic-ular factual situation. If the intervening usewas likely to cause confusion [with respect tothe mark owner's previous use], it was an in-fringement and the senior user has the rightto enjoin such use, whether it had in factalready expanded itself or not.

J. McCarthy, § 24:20.

The court in Tally-Ho explained that a senior user'srights “may extend into uses in ‘related’ product or ser-vice markets (termed the ‘related goods doctrine’),” andthat “an owner of a common law trademark may use itsmark on related products or services and may enjoin ajunior user's use of the mark on such related uses ....”889 F.2d at 1023 (citing J. McCarthy, § 24:1 to 24:12).This rule is limited by equitable considerations. Thecourt in Carnival noted that “[A] trademark owner can-not by the normal expansion of its business extend theuse or registration of its mark to distinctly differentgoods or services not comprehended by its previous use... where the result could be a conflict with valuable in-tervening rights established by another through extens-ive use... of the same or similar mark for like or similargoods and services.” 187 F.3d at 1310-11 (citations andinternal quotation marks omitted) (emphasis added).

[12] Courts determine the proper scope of protection ofa mark in the context of intervening uses by applyingthe “source or sponsorship” test. Under this test, atrademark owner has “protection against use of its markon any product or service which would reasonably bethought by the buying public to come from the samesource, 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 determinedat the time the junior user first used the mark on theproduct or service to which the allegedly infringingmark is affixed.FN24 Carnival, 187 F.3d at 1312. The






























court in Tally-Ho explained *1202 that “related use” is“merely a facet of the likelihood of confusion test andtherefore requires an inquiry into [the] seven factors af-fecting the likelihood of confusion ....” FN25 889 F.2dat 1027.

FN24. Techsplosion, the junior user in thiscase, first used the mark “CoolMail” in connec-tion with its e-mail service in April 16, 1998,before Planetary motion filed its intent-to-useapplication.

FN25. The court in Carnival explained the“source or sponsorship” inquiry in this contextas follows:

The likelihood-of-confusion test, when ap-plied at this stage in order to determine prior-ity where there are issues of related use, doesnot substitute for the likelihood-of-confusiontest that controls whether infringement of theplaintiff's trademark is occurring or has oc-curred. These are two independent inquiries.Once priority in the use of a mark for a par-ticular class of goods or services has been es-tablished, then it is necessary to perform the[liability stage] likelihood-of-confusion test,as of the current time and as between theplaintiff's current products (i.e., those that in-herit the priority with respect to the previ-ously used mark) and the allegedly infringingproducts of the defendant, to determinewhether the plaintiff ultimately prevails in atrademark infringement litigation.

187 F.3d at 1311, n. 4 (citation omitted).

Thus, evidence supporting a finding of“related use” need not rise to the level offinding likelihood of confusion for the pur-poses of establishing liability, but may non-etheless serve as a guide for determining thescope of protection.

[13] We find that the relatedness between e-mail noti-fication software and a service that allows users to

check e-mail via telephone line is not so attenuated thatthe district court mistakenly failed to limit PlanetaryMotion's rights in the mark to its use in connection withthe Software. Consumers reasonably could attribute theSoftware and an e-mail service under the same name tothe same source for several reasons.FN26 Both the Soft-ware and the e-mail service belong to the same generalfield of commerce, i.e., information technology, andboth deal more specifically with e-mail.FN27 Appel-lants do not dispute Planetary Motion's contention thatmajor firms in this field sell e-mail software as well asprovide e-mail service.FN28 See Darrah Affidavit,R2-46-Exh. 2 at ¶ 34. Both the Software and the e-mailservice involve sending messages over the Internet: theformer provides a functionality that enables a user withe-mail capability to receive notification of new mail,and the latter enables subscribers to the service to sendand receive e-mail. Both the Software and the e-mailservice were promoted over the Internet to those whomake use of e-mail.

FN26. The extension of Planetary Motion'srights to the mark in connection with its e-mailservice does not, as Appellants assert, hinge onwhether Darrah intended to launch, or evenwas capable of launching, an e-mail servicesimilar to those of the parties. For goods or ser-vices to be “related,” they need not have ex-actly the same customer base or be in directcompetition with one another.

FN27. Cf. Commerce Nat'l Ins. Servs., Inc. v.Commerce Insurance Agency, Inc., 214 F.3d432, 438, 441-43 (3d Cir.2000). The court inCommerce Nat'l found clear error in the districtcourt's “likelihood of confusion” analysis thathad been based “primarily on the assumptionthat banking and insurance are similar indus-tries in the minds of consumers and that con-sumers would expect banks to expand into theinsurance industry,” where evidence of suchperception consisted of an affidavit and an“unpersuasive report” and where state law lim-ited banks from engaging in the general insur-ance industry. 214 F.3d at 441.











FN28. See Scarves by Vera, Inc. v. Todo Im-ports, Ltd., 544 F.2d 1167, 1174-75 (2dCir.1976). The court in Scarves by Vera founda use of mark on cosmetics to infringe on useon apparel and household linens, even thoughplaintiff had no plans to enter the former mar-ket. The court reasoned that other fashion de-signers were commonly involved in both mar-kets, such that customers would likely assumethat defendant's use was a similar expansion byplaintiff.

Furthermore, the equities do not necessarily favor Tech-splosion.FN29 Techsplosion's *1203 “CoolMail” e-mailservice had not been in operation for an extended periodof time before Planetary Motion entered the market un-der the name “Coolmail,” and Planetary Motion is notmerely attempting to reserve the mark for a future busi-ness endeavor. Accordingly, we sustain the districtcourt's finding of “likelihood of confusion.”

FN29. See Rosenthal A.G. v. Ritelite, Ltd., 986F.Supp. 133, 141 (E.D.N.Y.1997) (“[A]bsentequities in a defendant's favor, courts shouldenjoin defendants ‘from using a similar trade-mark whenever the non-competitive productsare sufficiently related that customers are likelyto confuse the source of origin.’ ”) (citationomitted). The court in Rosenthal, relying on“undisputed evidence and basic commonsense,” found the two markets at issue to besufficiently related and noted that the equitiesdid not tip in the defendant's favor where theplaintiff had in fact entered the defendant'smarket. Id. (“[T]he interest at stake is morethan plaintiff's interest in being able to enter arelated market at some future time ....”).

III. Relief

Review of the district court's award of injunctive relief,attorney's fees and costs is for abuse of discretion. SeeBurger King Corp. v. Weaver, 169 F.3d 1310, 1315(11th Cir.), cert. dismissed, 528 U.S. 948, 120 S.Ct.370, 145 L.Ed.2d 287 (1999); Tally-Ho, 889 F.2d at1022.

A. Injunctive Relief

Appellants assert that the injunctive relief awarded bythe district court is impermissibly vague and overbroad.Appellants contend that the language “imposes agrossly unfair burden on Techsplosion, as it does not al-low for a determination of what is and is not permittedunder the injunctive provisions.” Appellants' Brief at40. Federal Rule of Civil Procedure 65(d) states in rel-evant part: “Every order granting an injunction ... shallbe specific in terms [and] shall describe in reasonabledetail ... the act or acts sought to be restrained ....”FN30Fed.R.Civ.P. 65(d). A clear and unambiguous or-der is one that leaves “ ‘no uncertainty in the minds ofthose to whom it is addressed,’... who must be able toascertain from the four corners of the order preciselywhat acts are forbidden.' ” King v. Allied Vision, Ltd.,65 F.3d 1051, 1058 (2d Cir.1995) (citations omitted).Optimally, the injunction

FN30. Three considerations underlie the spe-cificity requirements of Rule 65(d): “to preventuncertainty and confusion on the part of thosefaced with injunctive orders, ... to avoid thepossible founding of a contempt citation on adecree too vague to be understood ... [and] foran appellate tribunal to know precisely what itis reviewing.” Schmidt v. Lessard, 414 U.S.473, 476-77, 94 S.Ct. 713, 38 L.Ed.2d 661(1974) (per curiam).

should clearly let defendant know what he is ordered todo or not to do. A court order should be phrased interms of objective actions, not legal conclusions. Aninjunction which merely forbids a defendant from per-forming “acts of unfair competition,” or from“infringing on plaintiff's trademarks and tradesecrets” adds nothing to what the law already re-quires.

John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d966, 984-985 (11th Cir.1983) (quoting J. McCarthy,at § 30.13) (emphasis added).

[14][15] Notwithstanding these strictures, appellatecourts do not set aside injunctions under Rule65(d)“unless they are so vague that they have no reas-
































onably specific meaning.” E. & J. Gallo Winery v.Gallo Cattle Co., 967 F.2d 1280, 1297 (9th Cir.1992).Rather than applying Rule 65(d) rigidly, appellatecourts determine the propriety of an injunctive order byinquiring into whether the parties subject thereto under-stand their obligations under the order. Williams v. Cityof Dothan, 818 F.2d 755, 761 (11th Cir.1987) (citingCombs v. Ryan's Coal Co., 785 F.2d 970, 978-79 (11thCir.), cert. denied sub nom. *1204Simmons v. Combs,479 U.S. 853, 107 S.Ct. 187, 93 L.Ed.2d 120 (1986)),modified, 828 F.2d 13 (11th Cir.1987). Furthermore, thedegree of particularity required depends on the nature ofthe subject matter. McComb v. Jacksonville Paper Co.,336 U.S. 187, 191-92, 69 S.Ct. 497, 93 L.Ed. 599(1949) (decrees of generality are often necessary to pre-vent further violations where a proclivity for unlawfulconduct has been shown).

[16] Here, although several parts of the order arephrased in terms of legal conclusions, the order, read asa whole, clearly indicates what Techsplosion is forbid-den from doing.FN31 According to the order, Techsplo-sion is permanently enjoined from using the name“Coolmail” in connection with “e-mail or other Inter-net-related services,” in connection with software, andas part of the domain name of its website. These limita-tions sufficiently define the scope of the injunction andgive context to the arguably legally conclusory lan-guage included therein. Furthermore, the use of “anysimilar mark” after references to “Coolmail” does notdetract from this level of specificity. See Planned Par-enthood, 152 F.3d 920 (upholding preliminary injunc-tion that prohibited defendant from using mark or “anycolorable imitation of [that] mark” anywhere on the In-ternet and from taking actions “likely to cause confu-sion” among Internet users regarding Planned Parent-hood's endorsement or sponsorship of defendant's site).Appellants do not propose any reading of the languagein the injunction that would impermissibly prohibit con-duct that Techsplosion arguably has the right to do. Cf.B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d1254, 1269 (5th Cir.1971) (finding injunction imper-missible where broad reference to opinion's findings offact “[appeared to] enjoin perfectly legal acts”). But seeAmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1547-48

(11th Cir.1986) (“An injunction can be therapeutic aswell as protective. In fashioning relief against a partywho has transgressed the governing legal standards, acourt of equity is free to proscribe activities that, stand-ing alone, would have been unassailable.”) (citationomitted), cert. denied, 481 U.S. 1041, 107 S.Ct. 1983,95 L.Ed.2d 822 (1987). Nor do Appellants explain howthe *1205 wording of the injunction could lend itself toalternate interpretations. In the absence of any apparentcontextual ambiguities or alternate readings prohibitinglegal conduct, it is unlikely that Appellants will misap-prehend what conduct is proscribed, or will incur liabil-ity to contempt citations for activities not contemplatedby this order.

FN31. The injunction reads, in relevant part asfollows:

[Techsplosion is] permanently enjoined from(a) Using the name “Coolmail,” or any simil-ar mark, in connection with the offer, promo-tion, distribution, sale, advertisement or pro-vision of services relating to e-mail or otherInternet-related services; (b) Using the name“Coolmail,” or any similar mark, in connec-tion with the offer, promotion, distribution,sale, advertisement or provision of software;(c) Using Coolmail.com as the domain nameof their website; (d) Using any logo, tradename, trademark or servicemark which maybe calculated to represent falsely that the ser-vices or products of defendants are affiliated,connected, or associated with Planetary Mo-tion; (e) Using any logo, trade name or ser-vicemark which may be calculated to falselyrepresent that the services or products of de-fendants are sponsored by, authorized by, ap-proved by, or originate from Planetary Mo-tion; (f) Using the name “Coolmail” in anyfashion that would damage the business repu-tation of Planetary Motion, or any of its suc-cessors, assigns, affiliates, subsidiaries, orparents, or that would dilute the value of the“Coolmail” mark; (g) Otherwise infringingon the “Coolmail” mark; (h) Unfairly com-
















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peting with Planetary Motion; and Aiding,abetting or assisting any other person or en-tity in engaging in or performing any activit-ies stated in paragraphs (a) through (h)above.

R2-63.

Sections (g) and (h) are conclusory catch-allprovisions. Although sections (d) through (f)use legal terminology, they are linked toPlanetary Motion and its rights in the“Coolmail” mark such that Techsplosionlikely will not violate the injunction if itcompletely ceases the use of “Coolmail” inconnection with e-mail services or marketsrelated thereto.

B. Attorney Fees

[17] Awards of attorney fees are reviewable only to de-termine if the trial court abused its discretion in grant-ing or denying them.FN32 See St. Charles Mfg. Co. v.Mercer, 737 F.2d 891, 894 (11th Cir.1983). Fla. Stat. §495.151 provides for injunctive relief only. Under Sec-tion 35(a) of the Lanham Act, however, courts mayaward reasonable attorney fees to the prevailing party“in exceptional cases.” 15 U.S.C. § 1117(a). See alsoMontgomery, 168 F.3d at 1304. Exceptional cases arethose where the infringing party acts in a “malicious,fraudulent, deliberate, or willful manner.” Burger KingCorp. v. Pilgrim's Pride Corp., 15 F.3d 166, 168 (11thCir.1994) (quoting S.R. Rep. 93-1400 (1974), reprintedin 1974 U.S.C.C.A.N. 7132, 7133) (internal quotationmarks omitted).

FN32. As Techsplosion timely filed an appealfrom the order fixing the amount of attorneyfees and costs, and we may reach the issue. SeeBudinich v. Becton Dickinson & Co., 486 U.S.196, 202-203, 108 S.Ct. 1717, 100 L.Ed.2d 178(1988).

[18] Here, the district court awarded attorney feeswithout articulating a basis for doing so, let alone thefactual circumstances that would warrant such an

award.FN33 Furthermore, there is nothing in the recordto support a finding of “malicious, fraudulent, deliber-ate, or willful” conduct on the part of Planetary motion.Remand is therefore unnecessary on this issue. Accord-ingly, we find that the award of attorney fees is an ab-use of discretion and vacate the award.

FN33. Planetary Motion asserts that Techsplo-sion learned in early 1999 of its use of the“Coolmail” mark, and that “Planetary Motionpossessed senior rights in the Coolmail mark.”Since Techsplosion reasonably could have as-sumed that Planetary Motion lacked priority inthe mark, such knowledge in this case does notinvariably give rise to a finding of deliberate ormalicious infringement.

C. Award of Costs

Under the Lanham Act, a successful party “subject tothe principles of equity” may recover: “(1) defendant's[the infringer's] profits; (2) any damages sustained bythe plaintiff, and (3) the costs of the action.” 15 U.S.C.§ 1117(a). See Babbit Elecs., Inc. v. Dynascan Corp., 38F.3d 1161, 1182 (11th Cir.1994). To recover costs un-der the Lanham Act, therefore, a plaintiff need not es-tablish that the alleged infringer acted maliciously,fraudulently, deliberately, or willfully. Because it waswithin the district court's discretion to award costs, andin the absence of any evidence that would warrant afinding that the balance of equities necessarily tipped infavor of Techsplosion, we uphold the award of costs toPlanetary Motion.

Conclusion

Accordingly, the district court's order and final judg-ment are AFFIRMED, except that the order adoptingthe magistrate judge's report and recommendation, withrespect to the award of attorney fees, is VACATED.

C.A.11 (Fla.),2001.Planetary Motion, Inc. v. Techsplosion, Inc.261 F.3d 1188, 51 Fed.R.Serv.3d 294, 59 U.S.P.Q.2d1894, 14 Fla. L. Weekly Fed. C 1159
























END OF DOCUMENT




Date/Time of Request: Thursday, July 2, 2009 15:36 CentralClient Identifier: OSHNADatabase: FEDFINDCitation Text: 889 F.2d 1018Lines: 831Documents: 1Images: 0



TALLY-HO, INC., A Florida Corporation,Plaintiff-Counter-Defendant-Appellant,

v.COAST COMMUNITY COLLEGE DISTRICT,

Defendant-Counter-Plaintiff-Appellee.No. 88-5594.

Dec. 6, 1989.As Amended Jan. 19, 1990.

Television program producer/distributor, which re-gistered its “You and the Law” mark under Flor-ida's trademark law, brought trademark infringe-ment and unfair competition action against com-munity college district, which used the “You andthe Law” mark for educational telecourses. TheUnited States District Court for the Southern Dis-trict of Florida, No. 88-501-CIV-SMA, Sidney M.Aronovitz, J., denied preliminary injunctive relief.Producer/distributor appealed. The Court of Ap-peals, held that district's common-law trademarkrights in the educational community college marketdid not extend into county cable television market.

Reversed and remanded.

West Headnotes

[1] Injunction 212 147

212 Injunction212IV Preliminary and Interlocutory Injunctions

212IV(A) Grounds and Proceedings to Pro-cure

212IV(A)4 Proceedings212k147 k. Evidence and Affidavits.

Most Cited CasesTo prevail on motion for preliminary injunction,movant has burden of proving substantial likeli-hood of success on the merits, substantial threat ofirreparable injury, that its own injury outweighs in-

jury to nonmovant; and that injunction would notdisserve public interest.




170Bk754 Review Dependent onWhether Questions Are of Law or of Fact

170Bk754.1 k. In General. MostCited Cases

(Formerly 170Bk754)




170Bk814 Injunction170Bk815 k. Preliminary Injunc-

tion; Temporary Restraining Order. Most CitedCasesDistrict court's denial of preliminary injunction isreviewed to determine whether district court abusedits discretion; however, if district court misappliedlaw, the Court of Appeals must review and correcterror without deference to district court's determin-ation of the legal issue.





of Court or Jury in General170Bk850.1 k. In General. Most

Cited Cases(Formerly 170Bk850)

Factual findings will be reversed only if clearly er-

889 F.2d 1018 Page 1889 F.2d 1018, 58 USLW 2392, 13 U.S.P.Q.2d 1133(Cite as: 889 F.2d 1018)



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roneous.



382Tk1132 Use of Mark382Tk1136 Nature and Extent of Use

382Tk1136(1) k. In General. MostCited Cases






(Formerly 382k65 Trade Regulation)Under common law, trademark rights are appropri-ated only through actual prior use in commerce;trademark ownership is always appurtenant to com-mercial activity, and actual and continuous use isrequired to acquire and retain protectible interest inmark.



382Tk1153 k. Abandonment in General.Most Cited Cases









Rights382Tk1202 Licenses

382Tk1208 k. Control Over Use or Qual-ity; “Naked” Licenses. Most Cited Cases

(Formerly 382k73 Trade Regulation)Rights in trademark can be lost through abandon-ment, nonuse, or naked license without control overproduct quality.





Cited Cases(Formerly 382k66.1, 382k66 Trade Regulation)

First to use mark on product or service in particulargeographic market, the senior user, acquires rightsin the mark in that market; junior users, who sub-sequently use same or similar mark on similarproducts or services, may also establish common-law rights to perhaps even the same mark providedthere is no competitive overlap with the senior user,but the senior user may enjoin uses that infringeupon its prior rights.






Owner of common-law trademark may use its markon related products or services and may enjoin juni-or user's use of mark on such related uses; “relatedgoods” doctrine gives trademark owner protectionagainst the use of its mark on any product or ser-













































vice which would reasonably be thought by thebuying public to come from the same source, orthought to be affiliated with, connected with, orsponsored by, the trademark owner.






Senior user's rights are geographically limited toonly those territories in which it actually uses itsmark or into which it might naturally expand (the“zone of natural expansion”).


382T Trademarks382TVII Registration

382TVII(A) In General382Tk1256 State Registration

382Tk1259 k. Effect. Most CitedCases

(Formerly 382k262, 382k255 Trade Regulation)Mark registered under the Florida Trademark Acthas prima facie validity but is subject to another'sbona fide use of the same or similar mark undercommon law. West's F.S.A. §§ 495.011-495.171.




Proof382Tk1603 k. Infringement in General.





Proof382Tk1607 k. Creation and Priority of

Rights. Most Cited Cases(Formerly 382k574 Trade Regulation)




Proof382Tk1612 k. Defenses, Excuses, and

Justifications. Most Cited Cases(Formerly 382k574 Trade Regulation)

In infringement action, plaintiff must initiallydemonstrate right to trademark and actual geo-graphic and product competition with alleged in-fringer; defendant must then establish some defenseto defeat plaintiff's infringement claim. West'sF.S.A. §§ 495.011-495.171.




382Tk1521 Justified or Permissible Uses382Tk1527 k. Other Particular Uses.


In establishing prior use defense to trademark in-fringement claim, defendant must prove that itscompeting use of contested mark predates competit-or's use. West's F.S.A. §§ 495.011-495.171.



382TVIII(A) In General











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382Tk1418 Practices or Conduct Prohib-ited in General; Elements

382Tk1421 k. Infringement. MostCited Cases

(Formerly 382k332 Trade Regulation)Elements of common-law and statutory trademarkinfringement under Florida law are the same.West's F.S.A. §§ 495.011-495.171.




Services Underlying Marks382Tk1101 k. In General. Most Cited

Cases(Formerly 382k363.1, 382k363 Trade Regula-

tion)“Related goods,” for trademark protection pur-poses, are those that a consumer is likely to believecome from the same source and are somehow con-nected with common company.




Most Cited Cases(Formerly 382k363.1, 382k363 Trade Regula-

tion)



of Confusion382Tk1107 Nature and Circumstances of Use

of Marks382Tk1108 k. In General. Most Cited

Cases(Formerly 382k363.1, 382k363 Trade Regula-

tion)

“Related use,” for trademark protection purposes, ismerely facet of the likelihood of confusion test andrequires inquiry into seven factors affecting thelikelihood of confusion among consumers: type oftrademark, similarity of the two marks, similarity ofservices, identity of customers and facilities, simil-arity of advertising, intent of alleged infringer, andactual confusion.

[15] Trademarks 382T 1137(1)




Cited Cases(Formerly 382k363.1, 382k367, 382k363 Trade

Regulation)Related use doctrine expands trademark protectionsto uses in related product and service markets butdoes not expand trademark protections to geograph-ically remote markets; thus, finding of related use isnot finding of state-wide trademark protection, butrather, related use doctrine expands trademark pro-tections to related product or service markets in ex-isting geographic markets.

[16] Trademarks 382T 1137(1)





Territorial extent of trademark protection is limitedto those geographic areas in which mark is actuallyused in commerce and zone of reasonable future ex-pansion.

[17] Trademarks 382T 1137(1)











































Zone of natural expansion, for trademark protectionpurposes, does not necessarily include all areaswhere senior user has in fact expanded becausesuch uses may infringe upon junior users' bona fidetrade areas; instead, junior users whose uses are ingood faith and “remote” are protected, and extent ofzone is generally considered as of date of junioruser's first use.




Services Underlying Marks382Tk1104 k. Markets and Territories;

Competition. Most Cited Cases(Formerly 382k350.1, 382k350 Trade Regula-

tion)




Multiple Users, Markets, or Territories382Tk1137(2) k. Particular Cases.

Most Cited Cases(Formerly 382k350.1, 382k350 Trade Regula-

tion)Community college district, which began using the“You and the Law” mark in connection with educa-tional telecourses in October of 1983 but which didnot register its mark, infringed on trademark rightsof television program producer/distributor, whichregistered its “You and the Law” mark in December

of 1985 and which used its mark for television pro-gram, by injecting its “educational” programmingseries into the county in which the producer/dis-tributor had statutory and common-law trademarkprotection; district's common-law trademark rightsin the educational community college market didnot extend into the county cable television market.West's F.S.A. §§ 495.011-495.171.





You and the Law.*1020 Bret Shawn Clark, Miami Shores, Fla., forplaintiff-counter-defendant-appellant.

Richard B. Adams, Adams, Hunter, Angones,Adams, Adams & McClure, Miami, Fla., Harold L.Novick, Larson & Taylor, Douglas E. Jackson, S.Arlington, Va., for defendant-counter-plaintiff-appellee.


Before CLARK and COX, Circuit Judges, andHENDERSON, Senior Circuit Judge.

PER CURIAM:

Appellant Tally-Ho, Inc. appeals an order denyingit preliminary injunctive relief on its complaint oftrademark infringement and unfair competitionagainst Coast Community College District underthe Lanham Act, 15 U.S.C.A. § 1051 et seq. (1976),and FLA.STAT.ANN. § 495.011 et seq. (West1988). Because the district court misapplied the lawwhen it denied Tally-Ho's motion for a preliminaryinjunction we exercise our broad powers of review,see E. Remy Martin & Co. v. Shaw-Ross Int'l Im-

































ports, Inc., 756 F.2d 1525, 1529 (11th Cir.1985),and reverse and remand.

I. BACKGROUND

A. Facts

Tally-Ho, Inc. (Tally-Ho) produces and distributesa program entitled “You and the Law” that has beenbroadcast in South *1021 Florida since 1984 on apublic television station, WLRN, and on a cabletelevision system. The program is hosted by a mod-erator who discusses with guests topics of currentinterest in the law. Tally-Ho registered its “You andthe Law” trademark with the State of Florida onDecember 20, 1985, and its certificate indicates themark was first used in January, 1984.

Coast Community College District (Coast) is one ofthe nation's largest producers and distributors ofeducational telecourses. It distributes “You and theLaw,” a series of twenty-six videotaped lecturesand discussions concerning various legal issues andconcepts. Coast produced and copyrighted FN1 thisseries in 1980 and 1981. Coast, however, has notregistered the “You and the Law” trademark understate or federal trademark statutes. Following nego-tiations, in February 1984, the State of Florida andCoast entered a licensing contract which gave thestate the right to use, broadcast and distributeCoast's video lecture series. The license also per-mitted the state to duplicate and distribute the seriesby any means. The state included the series in a listof video courses available to community colleges.The video series was first shown during the firstweek of January 1984. Use of the telecourse wasvery limited. The video series was shown only atDaytona Beach Community College, ValenciaCommunity College and Florida Keys CommunityCollege. None of these uses were in the same view-er market in which Tally-Ho's programming wasshown.

FN1. This is a trademark case and whetherand when Coast registered its copyright is

legally irrelevant for trademark purposes.

Tally-Ho became aware of Coast's video serieswhen a local community access cable channel,MDTV, advertised that it was going to present theCoast “You and the Law” series in upcomingbroadcasts. MDTV acquired the Coast series fromthe state after learning about it from WLRN. Coasthad not previously broadcast its courses over anytelevision systems anywhere in Florida.

B. District Court Proceedings

In March 1988, Tally-Ho filed a two-count com-plaint for declaratory and permanent injunctive re-lief and for damages under federal and state trade-mark and unfair competition laws.FN2 On June 1,1988, Coast answered and filed a four-count coun-terclaim. Coast also sought declaratory and perman-ent injunctive relief and damages for Tally-Ho's al-leged violation of federal and state unfair competi-tion laws.FN3 In June 1988, Tally-Ho filed a mo-tion seeking preliminary injunctive relief to preventCoast from broadcasting its course to the generalpublic.

FN2. Count I alleges service mark in-fringement under the Lanham Act, 15U.S.C. § 1051, et seq., andFLA.STAT.ANN. § 495.131 (West 1988)(infringement). Count II alleges unfaircompetition in violation of federal andstate law.

The Lanham Act infringement claim hasno merit. Tally-Ho has not registered itstrademark under 15 U.S.C.A. §§1051-72, and consequently is not entitledto relief under 15 U.S.C.A. § 1114.

FN3. Counts I and II allege unfair competi-tion under the Lanham Act, 15 U.S.C. §1125(a), and the common law, respect-ively. Count III seeks a declaration thatTally-Ho's state registration is invalid.Count IV alleges violation of Florida's an-














tidilution statute, FLA.STAT. § 495.151(1988).

Following an evidentiary hearing, the district courtissued an order denying Tally-Ho's motion for apreliminary injunction. The court held that Coastwas the first to “use” FN4 the mark in Floridabased on an October 4, 1983, internal Florida De-partment of Education memorandum indicating ap-proval for a proposed contract with Coast. The dis-trict court rejected Tally-Ho's argument that Coastrelinquished its right by granting to the Departmentof Education a “naked license” to use the mark. Thecourt also rejected Tally-Ho's arguments thatCoast's prior use was in a substantially differentgeographic market than the market occupied byTally-Ho, and that Coast could not support its claimof *1022 superior right because it could not showthat its “You and the Law” telecourse was in directcompetition with Tally-Ho's program. The courtspecifically held that Coast's “prior” educationaluse of the mark gives it the right to use the mark inthe “related” broadcast market and that Tally-Howas not entitled to a preliminary injunction because“the court does not find [Tally-Ho] to have a sub-stantial likelihood of success on the merits.” FN5

FN4. FLA.STAT.ANN. § 495.011(11)states that “a service mark shall be deemedto be ‘used’ in this state when it is used ordisplayed in the sale or advertising of ser-vices in this state or in connection withservices rendered in this state.”FLA.STAT.ANN. § 495.011(11) (West1988).

FN5. The district court's opinion also con-cludes summarily that Tally-Ho has notdemonstrated entitlement to the issuance ofa preliminary injunction because it couldnot meet the other prerequisites for in-junctive relief-namely, a likelihood of irre-parable injury, a balance of harms weigh-ing in favor of Tally-Ho, and absence ofdisservice to the public interest.

Tally-Ho filed a notice of appeal and moved for apreliminary injunction pending appeal. The districtcourt granted the motion in part and enjoinedCoast's broadcast of its program for twenty days.After this court denied Tally-Ho's motion to extendthe injunction, Coast and the Dade County Attorneyinformed Tally-Ho that the broadcast of the tele-course would begin on July 25, 1988. Tally-Hofiled a motion for reconsideration to this court foran injunction pending appeal, which was denied.

II. DISCUSSION

[1] The sole issue on appeal is whether the districtcourt erred in denying Tally-Ho's motion for a pre-liminary injunction. To prevail on its motion for apreliminary injunction, Tally-Ho has the burden ofproving: (1) a substantial likelihood of success onthe merits; (2) a substantial threat of irreparable in-jury; (3) its own injury outweighs the injury toCoast; and (4) the injunction would not disserve thepublic interest. Canal Authority of the State of Flor-ida v. Callaway, 489 F.2d 567, 572 (5th Cir.1974).The district court held that Tally-Ho failed to meetits burden on each of these elements.

[2][3] We review the district court's denial of a pre-liminary injunction to determine whether that courtabused its discretion. Remy Martin, 756 F.2d at1529. However, if the trial court has misapplied thelaw, we must review and correct the error withoutdeference to that court's determination of the legalissue. Id. Factual findings will be reversed only ifclearly erroneous. Id. Our review of the districtcourt opinion reveals two errors of law. First, thedistrict court erred when it determined that Coastwas not required to show actual competition withTally-Ho in order to successfully assert a prior usedefense. Second, the district court ignored the geo-graphic component of trademark protection thatgives Coast priority only in limited geographic andproduct markets in which it did not compete withTally-Ho.

At the outset, it is important to note that neither













Tally-Ho nor Coast has registered the “You and theLaw” trademark under the federal registration sys-tem. Tally-Ho has registered its mark under theFlorida statute while Coast has not filed on any re-gistry. Thus, neither party can claim nationwideprotection under the federal statute. Instead, Coasthas only common law trademark protection whileTally-Ho has common law trademark protections inaddition to those provided under the Florida statute.As discussed below, because the Florida statuteprovides little additional protection beyond thatprovided at common law, this action is almost ex-clusively governed by common law trademark prin-ciples.

A. Common Law Trademark Principles

[4][5] Because of the importance of common lawtrademark principles under Florida's statutory sys-tem, we first identify the basic concepts necessaryto determine the extent of Coast's common lawtrademark rights. Under the common law, trade-mark rights are appropriated only through actualprior use in commerce. United States v. Steffens,100 U.S. 82, 25 L.Ed. 550 (1879); J. McCarthy,Trademarks and Unfair Competition § 16:1, at 720(2d Ed.1984). Trademark ownership is always ap-purtenant to commercial activity. Thus, actual andcontinuous use FN6 is required*1023 to acquireand retain a protectible interest in a mark.

FN6. Rights in a mark can be lost throughabandonment, non-use, or a naked licensewithout control over product quality. Infact, as an alternative ground for reliefTally-Ho contends that even if Coast hassuperior rights to the “You and the Law”mark, it forfeited its rights by granting a“naked license” to the Department of Edu-cation. We believe the district court cor-rectly rejected this argument.

[6] Ownership of a distinctive mark is further lim-ited by priority of use. The first to use a mark on aproduct or service in a particular geographic mar-

ket, the senior user, acquires rights in the mark inthat market. Junior Food Stores of W. Fla. v. JuniorFood Stores, Inc., 226 So.2d 393, 396 (Fla.1969).Junior users, who subsequently use the same orsimilar mark on similar products or services, mayalso establish common law rights to perhaps eventhe same mark provided there is no competitiveoverlap with the senior user. Id. at 398. The senioruser, however, may enjoin such uses that infringeupon its prior rights. The extent of the senior user'srights in the mark are also governed by a few addi-tional principles.

[7] The senior user's rights may extend into uses in“related” product or service markets (termed the“related goods” doctrine). J. McCarthy, supra, §24-1 to -12. Thus, an owner of a common lawtrademark may use its mark on related products orservices and may enjoin a junior user's use of themark on such related uses. The doctrine “gives thetrademark owner protection against the use of itsmark on any product or service which would reas-onably be thought by the buying public to comefrom the same source, or thought to be affiliatedwith, connected with, or sponsored by, the trade-mark owner.” Id. at 166. In this case, the districtcourt concluded that Coast's use of its telecourse inthe cable broadcast market is “related” to use in thecommunity college educational telecourse market.

[8] A senior user's rights also are geographicallylimited to only those territories in which it actuallyuses its mark or into which it might naturally ex-pand (the “zone of natural expansion”). For in-stance, if a senior user cannot prove that it directlycompetes in a geographic market with a junior user,it can still demonstrate that the junior user is oper-ating in a market into which the senior user shouldbe allowed to expand at a later time.

B. Florida's Trademark Act

[9] Tally-Ho's preliminary injunction is based, inpart, on Coast's alleged violation of Florida's Trade-mark Act which provides for state trademark regis-















tration.FN7 In Florida, registration under the trade-mark statute is “prima facie evidence of the validityof the registration, registrant's ownership of themark, and of registrant's exclusive right to use themark in this state in connection with the goods orservices specified in the certificate, subject to anyconditions and limitations stated therein.”FLA.STAT.ANN. § 495.061(2) (West 1988); FN8

Abner's Beef House Corp. v. Abner's Int'l, Inc., 227So.2d 865, 866 (Fla.1969). The Florida TrademarkAct however explicitly preserves common lawrights in marks acquired in good faith.FLA.STAT.ANN. § 495.161 (West 1988)(“Nothing herein shall adversely affect or diminishthe rights or the enforcement of rights in marks ac-quired in good faith at any time at common law.”).Thus, a registered mark has prima facie validity butis subject to another's bona fide use of the same orsimilar mark under the common law. The statutetherefore does not abrogate the common law rightsof owners of marks. Instead, a registrant's rights arelimited by *1024 the bona fide rights of commonlaw users. In this action, Tally-Ho's registration isprima facie evidence of its right to use the “Youand the Law” trademark in Florida subject only toCoast's common law rights.

FN7. FLA.STAT.ANN. §§ 495.011-.171(West 1988).

FN8. Subsection (2) provides:

Any certificate of registration issued bythe department of state under the provi-sions hereof or a copy thereof duly certi-fied by the department of state shall beadmissible in evidence as competent andsufficient proof of the registration ofsuch mark in any action of judicial pro-ceedings in any court of this state, andshall be prima facie evidence of thevalidity of the registration, registrant'sownership of the mark, and the regis-trant's exclusive right to use the mark inthis state in connection with the goods orservices specified in the certificate, sub-

ject to any conditions and limitationsstated therein.

The Act permits a registrant to sue for infringementunder FLA.STAT.ANN. § 495.131 (West 1988)FN9 and pursue remedies under FLA.STAT.ANN.§ 495.141 (West 1988). Common law owners ofunregistered marks are limited to common law rem-edies in infringement actions. The Florida statutealso permits an “antidilution” claim under section495.151.FN10 This provision permits any trade-mark owner, whether registered or unregistered, toprohibit either a non-competitor's or competitor'suse of a similar mark if there is a likelihood of in-jury to business reputation or dilution of the mark'sdistinctive quality. The antidilution statute's pur-pose is to prevent the weakening of a distinctivetrademark.

FN9. This section, entitled “Infringement,”provides:

Subject to the provisions of § 495.161,any person who shall:

(1) Use, without the consent of the regis-trant, any reproduction, counterfeit, copyor colorable imitation of a mark re-gistered under this chapter on any goodsor in connection with the sale, offeringfor sale, distribution or advertising ofany goods or services on or in connec-tion with which such use is likely tocause confusion or mistake or to deceiveas to the source of origin of such goodsor services; or

(2) Reproduce, counterfeit, copy or col-orably imitate any such mark and applysuch reproduction, counterfeit, copy orcolorable imitation to labels, signs,prints, packages, wrappers, receptaclesor advertisements intended to be usedupon or in conjunction with the sale, of-fering for sale, distribution or advert-ising in this state of goods or services;















Shall be liable in a civil action by theowner of such registered mark for any orall of the remedies provided in §495.141, except that under subsection(2) hereof the registrant is not entitled torecover profits or damages unless theacts have been committed with know-ledge that such mark was intended to beused to cause confusion or mistake or todeceive.

FN10. This section, entitled “Injury tobusiness reputation; dilution,” provides:

Every person, association, or union ofworkingmen adopting and using a mark,trade name, label or form of advertise-ment may proceed by suit, and all courtshaving jurisdiction thereof shall grant in-junctions, to enjoin subsequent use byanother of the same or similar mark,trade name, label or form of advertise-ment if it appears to the court that thereexists a likelihood of injury to businessreputation or of dilution of the distinct-ive quality of the mark, trade name, labelor form of advertisement of the prioruser, notwithstanding the absence ofcompetition between the parties or ofconfusion as to the source of goods orservices.

FLA.STAT.ANN. § 495.151 (West1988).

It is critical to note the distinction between a trade-mark infringement action and a trademark dilutionaction. At common law, a trademark was intendedto differentiate between different sources of com-peting goods. Thus, an infringement action is basedon the likelihood of consumer confusion betweensuppliers of competing goods in the same geo-graphic locale. In contrast, a dilution action isbased on the concept that a strong trademark hasvalue beyond its ability to distinguish a good or ser-vice's source. A strong, distinctive trademark may

become a symbol of consumer loyalty and goodwillrather than merely an indicator of supplier identity.A dilution action protects the owners of suchstrong, distinctive marks from the diminution ofconsumer goodwill by competitors or non-competitors.FN11 Thus, dilution analysis is funda-mentally different from infringement analysis; theformer focuses on the dilution of a mark's distinct-ive quality while the latter focuses on the likelihoodof consumer confusion. In addition, a dilution ac-tion eliminates the requirement of competition; aninfringement action does not.

FN11. “The underlying rationale of the di-lution doctrine is that the gradual diminu-tion or whittling away of the value of atrademark, resulting from use by another,constitutes an invasion of the senior user'sproperty right and good will in his markand gives rise to an independent wrong.” J.McCarthy, supra, § 24:13, at 213.

C. Competition Required in an Infringement Action

[10][11] The district court relied upon a dilutiontheory to support its conclusion that Coast did nothave to demonstrate competition in order to estab-lish a prior use defense. In an infringement action,the *1025 plaintiff must initially demonstrate theright to a trademark and actual geographic andproduct competition with the alleged infringer. Thedefendant must then establish some defense, in thiscase priority of usage, to defeat the plaintiff's in-fringement claim. In establishing prior use, the de-fendant has essentially the same burden as theplaintiff: to prove that its competing use of the con-tested mark pre-dates the competitor's use. In otherwords, a defendant's prior use defense also requiresa showing of competition.

The district court erred in failing to distinguishbetween an infringement action and a dilution ac-tion. The district court relied upon and misinter-preted a passage from Abner's Beef House Corp. v.Abner's Int'l, Inc., 227 So.2d 865 (Fla.1969). In













full, this passage states:

F.S., Section 495.151, F.S.A., does, however, obvi-ate the necessity in an injunction suit to enjoin asubsequent use of a similar mark that plaintiffshow there is competition between the parties ora confusion as to the source of goods and ser-vices, which showing was a requisite under thecommon law. See El Modello Cigar Manufactur-ing Co. v. Gato, 25 Fla. 886, 7 So. 23, 6 L.R.A.823 [1890].

Id. at 866. The court in Abner's Beef House wasdiscussing Florida's antidilution statute, section495.151, which by its plain language eliminates therequirement of competition in a dilutionaction.FN12 The court clearly was not discussingeither state statutory or common law trademark in-fringement actions. In fact, the passage makes ap-parent that the common law requires a showing ofcompetition between the parties in an infringementaction.FN13 Similarly, in American Bank v. FirstAmerican Bank & Trust, 455 So.2d 443 (Fla. 5thDist.Ct.App.1984), the court stated:

FN12. See also Tio Pepe, Inc. v. El TioPepe de Miami Restaurant, Inc., 523 So.2d1158, 1160 (Fla.3d Dist.Ct.App.1988)(“Under the statute, the common law re-quirement of establishing competitionbetween the parties or confusion as to thesource of the services has been eliminated... thus the need to inquire into the territori-al scope of the business to determinewhether competition or confusion ispresent has also been dispensed with.”)(citations omitted).

FN13. At common law, trademark law hadno role absent competition. Unless two ormore owners of similar marks competedwithin the same geographic market orbetween similar goods or services, no pos-sibility of consumer confusion existed.Thus, there was no need for trademark pro-tection.

Because one's goodwill or reputation may beharmed by another's use of a tradename similar tothat of the first, it is often stated that under mostof the more recent cases actual or direct competi-tion is no longer essential to injunctive relieffrom infringement of a tradename, trademark orunfair competition. However, actual or intendedcompetition appears to be essential to potentialcustomer confusion, when the issue is the same-ness or similarity in kind of the services or goodsinvolved (substantive scope of protection) andwhen the issue is the territorial scope of trade-name (or mark) protection.

Id. at 446 n. 4 (citations omitted). As the AmericanBank court holds, the common law requirementof demonstrating actual or intended competitionis still a requisite in a trademark infringement ac-tion. The proper interpretation of the FloridaTrademark Act and Florida case law leads to theconclusion that a defendant in a trademark in-fringement action based on common law prin-ciples shoulders the same burden as the plaintiffin establishing priority of use in defendingagainst an infringement claim. This burden in-cludes a showing that the prior use is also a com-peting use. The district court's conclusion to thecontrary provides defendants in infringement ac-tions with greater protections than those providedat common law. The Florida Trademark Statute isemphatic in preserving common law trademarkrights, and there is no indication that such rightswere to be preserved only in the acquisition oftrademarks and not in their defense.

D. Infringement

[12] The elements of common law and statutorytrademark infringement are the *1026 same.FN14

A cause of action for injunctive relief on the com-mon law of unfair competition based on tradenameor trademark infringement requires the followingelements to be alleged and proved:

FN14. Tally-Ho has also set forth a claimfor unfair competition. The district court


















recognized that an unfair competitionclaim based only upon alleged trademarkinfringement is practically identical to aninfringement claim. See Freedom Savingsand Loan Ass'n v. Way, 757 F.2d 1176,1186 (11th Cir.1985). Because we con-clude that Tally-Ho is entitled to a prelim-inary injunction on its trademark infringe-ment claim, we need not address whether itis entitled to injunctive relief on the unfaircompetition claim.

(1) The plaintiff first adopted and used a certainname (or mark or symbol or logo or design) in acertain market or trade area, as a means of estab-lishing good will and reputation and to describe,identify or denominate particular servicesrendered or offered by it (or goods made or soldby it) and to distinguish them from similar ser-vices rendered or offered (or similar goods mar-keted) by others, and

(2) through its association with such services orgoods the plaintiff's tradename (or mark, etc.) hasacquired a special significance as the name of theservices rendered (or goods marketed) by theplaintiff in its trade area because plaintiff's trade-name (or mark, etc.)

(a) is inherently distinctive (fanciful, novel or arbit-rary), or

(b) while generic, descriptive, or geographic,plaintiff's tradename (or mark, etc.) has, by ac-tual usage, acquired in a certain trade area, asecondary, special or trade meaning as indicat-ing, describing, identifying or denominatingthe plaintiff as the source of certain services (orgoods), and

(3) the defendant has commenced, or intends tocommence, the use of an identical or confusinglysimilar tradename (or mark, etc.) to indicate oridentify similar services rendered (or similargoods marketed) by it in competition withplaintiff in the same trade areas in which the

plaintiff has already established its tradename (ormark, etc.) and

(4) as a consequence of the defendant's action, orthreatened action, customer confusion of sourceor as to the sponsorship of the services (or goods)offered, or to be offered, by the defendant isprobable (likely) or inevitable.

American Bank, 455 So.2d at 445-46.

The requirements for the issuance of a preliminaryinjunction require that Tally-Ho demonstrate a sub-stantial likelihood of success on the merits of its in-fringement claim. It therefore must establish eachof these four elements. Neither party disputes thatCoast's broadcast of its “You and the Law” tele-course will inevitably cause consumer confusion inthe Dade County cable broadcast marketplace. Nordo the parties claim that the “You and the Law”mark is not protectible (i.e. generic, descriptive, orgeographic). The central dispute is whether Tally-Ho or Coast has priority of use of the “You and theLaw” mark in this particular market. The evidencecompels the conclusion that Tally-Ho has priority.

The record demonstrates that Coast was the first touse the “You and the Law” trademark. However,Tally-Ho correctly asserts that Coast never used thetrademark in the Dade County cable broadcast mar-ket where Tally-Ho had been broadcasting its “Youand the Law” series for four years. The districtcourt agreed with Coast that an internal Departmentof Education memorandum dated October 1983provides a sufficient basis for granting Coast astatewide monopoly on the “You and the Law”trademark in both the educational community col-lege and cable broadcast markets. The record andthe case law, however, establish that, at most, Coasthas common law trademark protection in very lim-ited geographic markets and that its expansion intothe Dade County market infringes on Tally-Ho'sprotected trademark rights.

The district court relies upon the related use doc-trine to expand Coast's limited common law rights









in the community college telecourse market to thecable broadcast market. Without discussion the dis-trict *1027 court further expands Coast's commonlaw rights to encompass the entire state of Floridathrough the zone of natural expansion doctrine.This holding is contrary to the principle that actualuse is necessary to establish common law trade-mark rights. The next two sections of this opiniontherefore describe the related use doctrine and thedoctrine of natural expansion, and analyze the dis-trict court's reasoning.

1. Related Use

[13][14] The district court found that Coast's ex-pansion into the broadcast market is “related to” theuse of video courses in the educational telecoursemarket. Related goods are those that a consumer islikely to believe come from the same source and aresomehow connected with a common company.“Related use” is merely a facet of the likelihood ofconfusion test and therefore requires an inquiry intoseven factors affecting the likelihood of confusionamong consumers: (1) type of trademark; (2) simil-arity of the two marks; (3) similarity of services;(4) identity of customers and facilities; (5) similar-ity of advertising; (6) intent of the alleged infringer;and (7) actual confusion. See Freedom Savings andLoan Ass'n v. Way, 757 F.2d 1176, 1182 (11thCir.1985).

Tally-Ho claims that the cable broadcast market isnot a related use because the cable broadcast mar-ket is a separate and distinct market from the edu-cational telecourse market and that these marketsare composed of distinct customers-that is, studentsversus the general viewing public. Tally-Ho furtherargues that it advertises its “You and the Law” pro-gram differently than Coast advertises its tele-course. Tally-Ho also asserts that it had no intent toinvade Coast's telecourse markets when it began itscable broadcasts and finally that there was no actualconfusion prior to Coast's entry into the broadcast-ing market. Thus, Tally-Ho argues that almost all ofthese factors favors its position that Coast's expan-

sion into the broadcasting market is not a “relateduse.”

The district court concluded that the public broad-cast of Coast's video courses was “complementary”with the educational use of its courses. FreedomSavings, 757 F.2d at 1184. Although this is onemeasure of relatedness, it is not the sole measure.Instead, the case law requires a more detailed ap-proach as described above. Nevertheless, the dis-trict court's conclusion that the cable broadcastmarket is related to the educational telecourse mar-ket is supportable. The test for relatedness is wheth-er consumers are likely to believe that a broadcastof “You and the Law” over a cable channel is fromthe same source or is somehow affiliated withCoast's educational telecourse series, “You and theLaw.” Under this standard, the district court's find-ings are not clearly erroneous. The inquiry,however, does not end at this point.

[15] Even assuming that Coast has common lawrights in the related cable broadcast market, Tally-Ho still has a protectible trademark in the DadeCounty cable broadcast market because the relateduse doctrine expands trademark protections to usesin related product and service markets. The doctrinedoes not expand trademark protections to geograph-ically remote markets. Thus, a finding of relateduse is not a finding of state-wide trademark protec-tion. Instead, the related use doctrine expandstrademark protections to related product or servicemarkets in existing geographic markets.

2. Zone of Natural Expansion

[16][17] The territorial extent of trademark protec-tion is limited to those geographic areas in which amark is actually used in commerce and a zone ofreasonable future expansion.FN15 “[U]nder com-mon law principles, the senior user of a mark can-not monopolize markets that neither his trade norhis reputation has reached.” *1028J. McCarthy,supra, § 26:1, at 284. This “zone of natural expan-sion” doctrine provides the senior user with some













limited “breathing space” in which to expand bey-ond its current actual use. J. McCarthy, supra, §26:8, at 302.

FN15. “Under the common law, the uni-versal rule governing tradename protectionis that protection will be extended to thefirst appropriator of a name, within the ter-ritorial scope of its business, against sub-sequent use of the same or similar name byanother.” Junior Food Stores, 226 So.2d at396 (emphasis added).

This theory has been seized upon by senior users toargue that defendant is occupying territory withinits natural zone of expansion, even though it hasnot yet entered that market and defendant wasconcededly first in that remote area. In mostcases, the courts have rejected this argument onthe facts, narrowly defining the senior user's zoneof natural expansion.

If the senior user is static, and has restricted useto only one small area, such as one city, a good-faith junior user may expand into a nationwideuse of the mark, subject only to an exception inthe small area occupied by the senior user.However, if the senior user has constantly expan-ded its business by the date of the junior user'sadoption of the mark, and if distances are notgreat, it may be that the senior user is entitled toexclusive rights in a zone of natural expansionwhich includes the junior user's area, even thoughno actual sales have yet been made in that area bythe senior user.

Id. at 302-03 (citations omitted). The zone of natur-al expansion, of course, does not necessarily in-clude all areas where a senior user has in fact ex-panded because such uses may infringe upon ju-nior users' bona fide trade areas. Id. Instead, juni-or users whose uses are in good faith and“remote” are protected. The extent of the zone isgenerally considered as of the date of the junioruser's first use. See Burger King of Florida, Inc.v. Brewer, 244 F.Supp. 293 (W.D.Tenn.1965).

The zone of natural expansion doctrine is admit-tedly a legal fiction created to provide senior userswith expansion areas. Thus, there are few firmguidelines to define the senior user's imaginaryzone of natural expansion. However, several criter-ia seem relevant:

(1) How great is the geographical distance from thesenior user's actual location to a point on the peri-meter of the zone of expansion?

(2) What is the nature of the business? Does italready have a large or small zone of actual mar-ket penetration or reputation?

(3) What is the history of the senior user's past ex-pansion? Has it remained static for years, or hasit continually expanded into new territories? Ex-trapolating prior expansion, how long would ittake the senior user to reach the periphery of theexpansion zone he claims?

(4) Would it require an unusual ‘great leap forward’for the senior user to enter the zone, or is thezone so close to existing locations that expansionwould be (or is) a logical, gradual, step of thesame length as those previously made?

J. McCarthy, supra, § 26:9, at 304-05. In addition,the “zone of territorial protection is determined bythe nature of the [user's] business.” Junior FoodStores, 226 So.2d at 396.

Based upon these criteria, and assuming Coast is asenior user, Coast's zone of natural expansion as ofJanuary 1984 does not include Dade County. Coasthad not even officially entered its licensing agree-ment with the Florida Department of Education atthis time. Nor had Coast used its mark in any iden-tifiable geographic market. Thus, Coast had no pen-etration in the Dade County cable broadcast marketat the time Tally-Ho was actively using its mark incommerce in Dade County. Furthermore, Coast'shistory of expansion within Florida is static. Overthe four years following its licensing agreement,Coast's telecourse had extremely limited use in



















three community colleges, outside the Dade Countyarea. No use was made or attempted on cablebroadcast systems in Florida either prior to or afterTally-Ho's registration of its “You and the Law”mark. In sum, Coast's zone of natural expansioncannot include the Dade County market whereTally-Ho has been using the “You and the Law”mark for four years.

Thus, the district court erred in granting Coaststatewide common law rights in the *1029 “Youand the Law” mark through its broad application ofthe related use doctrine and disregard of the geo-graphical component of trademark protections.

3. Preliminary Injunction

The analysis above reveals that the district courtmisapplied the law and therefore reached an erro-neous conclusion regarding Tally-Ho's likelihood ofsuccess on the merits of its claims. Tally-Ho hadpriority of usage in the Dade County market. Al-though the district court summarily concluded thatthe other prerequisites for granting a preliminaryinjunction were not present, we believe that the re-cord may support contrary findings. For example, itis undisputed that there was a substantial likelihoodof confusion if Coast's telecourse were broadcast.Thus, Tally-Ho faced a substantial threat of irrepar-able injury to its protected trademark and to view-er's goodwill resulting from the broadcast of Coast'scourse. Processed Plastic Co. v. Warner Commu-nications, 675 F.2d 852, 858 (7th Cir.1982) (“It isgenerally recognized in trademark infringementcases that (1) there is not adequate remedy at law toredress infringement and (2) infringement by itsnature causes irreparable harm.”). Furthermore, theinjury to Tally-Ho seems outweighed by any asser-ted injury to Coast. Tally-Ho's four year investmentin its course and trademark is subject to reputation-al and financial injury from Coast's infringingvideocourse. Additionally, an injunction wouldhave no direct financial effect on Coast becauseCoast does not receive any compensation from thebroadcast of its telecourse. Finally, the injunction

would be in the public interest by avoiding the in-evitable viewer confusion that would otherwise res-ult.

III. CONCLUSION

[18] Tally-Ho has a state-registered trademark on“You and the Law” and has been telecasting its pro-gramming in Dade County for almost five years.Coast infringed on Tally-Ho's trademark by inject-ing its “educational” programming series, whichuses the same service mark as Tally-Ho, into theDade County market in which Tally-Ho has stat-utory and common law trademark protection. Thedistrict court erred by neglecting the geographiccomponent of trademark law and effectively grantsCoast state-wide protection for its mark despiteCoast's never having used its mark in Florida otherthan in three community colleges' courses. Coast'scommon law trademark rights in the educationalcommunity college market simply do not extend in-to the Dade County cable television market. Thedistrict court therefore erred in refusing to grantTally-Ho's request for a preliminary injunction.

Accordingly, we REVERSE the district court'sdenial of Tally-Ho's motion for a preliminary in-junction and REMAND with instructions to the dis-trict court to enter a preliminary injunction.

C.A.11 (Fla.),1989.Tally-Ho, Inc. v. Coast Community College Dist.889 F.2d 1018, 58 USLW 2392, 13 U.S.P.Q.2d1133

END OF DOCUMENT










WELDING SERVICES, INC., Plaintiff-Appellant,v.

Terry FORMAN, Welding Technologies, Inc.,Robert Henson, Charles Jones, Rod Forman, De-

fendants-Appellees.No. 06-13174.

Dec. 17, 2007.

Background: Corporation brought suit against itscompetitor for allegedly infringing its service mark,and the United States District Court for the North-ern District of Georgia, No.05-00096-CV-WCO-2,William C. O'Kelley, J.,entered summary judgment against plaintiff basedon absence of likelihood of consumer confusion.Plaintiff appealed, and defendant asserted that dis-trict court should have found that plaintiff's markwas generic mark not entitled to service mark pro-tection.

Holdings: The Court of Appeals, Gibson, CircuitJudge, sitting by designation, held that:(1) name “Welding Services,” as applied to com-pany whose business was offering welding services,was “generic” and not eligible for service mark pro-tection;(2) abbreviation “WSI,” as used in logo of corpora-tion whose primary business was offering weldingservices, was not shown to have acquired anymeaning distinct from the generic terms that it ab-breviated; and(3) even assuming that welding service corpora-tion's logo was sufficiently distinctive to be eligiblefor service mark protection, allegedly infringinglogo of its competitor, consisting of the abbrevi-ation “WTI” with an orange “swoosh” design wrap-ping around the middle of these letters, was so visu-ally dissimilar as to foreclose claim of likelihood ofconfusion with first company's weak mark.

Affirmed.

West Headnotes




170Bk776 k. Trial De Novo. MostCited CasesCourt of Appeals reviews de novo a district court'sgrant of summary judgment.




170Bk759 Theory and Grounds of De-cision of Lower Court

170Bk759.1 k. In General. MostCited CasesCourt of Appeals may affirm on any ground sup-ported by record.





Cited CasesTo establish a claim for service mark infringement,service mark holder must show: (1) that its servicemarks are entitled to protection; and (2) that allegedinfringer's marks are either identical to its servicemarks or so similar that they are likely to confuseconsumers. Lanham Trade-Mark Act, § 43(a), 15U.S.C.A. § 1125(a).
































170Bk752 k. Matters or Evidence Con-sidered. Most Cited CasesCourt of Appeals ordinarily does not review materi-als outside the record on appeal, but has equitablepower to do so in interests of justice.




170Bk752 k. Matters or Evidence Con-sidered. Most Cited CasesOn appeal from district court's grant of summaryjudgment against service mark holder on its in-fringement claim, Court of Appeals would not devi-ate from normal rule against review of materialsoutside the record on appeal, and would not in theinterests of justice consider evidence that, since dis-trict court's order was entered, service mark holderhad obtained registration for its service marks,where service mark holder had not moved to reopendistrict court proceedings to enlarge the record, andit was service mark holder, as plaintiff, that com-menced case, and filed motion for summary judg-ment, before registration of its marks was complete.




382Tk1030 k. In General. Most CitedCasesTrademark or service mark protection is availableonly to “distinctive” marks, i.e., marks that servepurpose of identifying source of goods or services.Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. §

1051 et seq.




382Tk1030 k. In General. Most CitedCasesSome marks are inherently distinctive, and thus eli-gible for trademark or service mark protection,while some marks that are not inherently distinctivecan still acquire a distinctiveness by becoming as-sociated in minds of public with products or ser-vices offered by proprietor of mark, and still othermarks can never become distinctive. LanhamTrade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.




382Tk1689 k. Marks Protected. MostCited Cases




382Tk1690 k. Secondary Meaning.Most Cited CasesWhether a mark is distinctive, and thus eligible fortrademark or service mark protection, is question offact, regardless of whether question is inherent dis-tinctiveness or acquired distinctiveness. LanhamTrade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.


382T Trademarks














































382TII Marks Protected382Tk1033 k. Levels or Categories of Dis-

tinctiveness in General; Strength of Marks in Gen-eral. Most Cited CasesTrademark law distinguishes four gradations of dis-tinctiveness of marks, in descending order ofstrength: “fanciful marks” or “arbitrary marks,”which bear no logical relationship to product or ser-vice that they are used to represent; “suggestivemarks,” which refer to some characteristic of theproduct that they are used to represent goods, butfor which a leap of imagination is required to getfrom the mark to the product; “descriptive marks,”which identify a characteristic or quality of the ser-vice or product; and generic marks. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.



382Tk1034 k. Generic Terms or Marks. MostCited CasesGenericness of term, for purpose of decidingwhether it is eligible for trademark protection, liesnot in term itself, but in use of term; word may begeneric of some things and not of others. LanhamTrade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 etseq.



382Tk1034 k. Generic Terms or Marks. MostCited CasesGeneric use of word may not be registered as trade-mark. Lanham Trade-Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.



382Tk1035 Descriptive Terms or Marks382Tk1037 k. Acquired Distinctiveness;

Secondary Meaning. Most Cited CasesDescriptive name, though not inherently distinctive,can acquire distinctiveness or secondary meaning,and thus become eligible for trademark protection,by becoming associated with proprietor's product orservice. Lanham Trade-Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.




382Tk1032 k. Acquired Distinctivenessand Secondary Meaning in General. Most CitedCasesTerm has acquired “secondary meaning,” for pur-poses of trademark law, when primary significanceof term in minds of consuming public is notproduct, but the producer. Lanham Trade-MarkAct, § 1 et seq., 15 U.S.C.A. § 1051 et seq.




382Tk1032 k. Acquired Distinctivenessand Secondary Meaning in General. Most CitedCasesWhether name has acquired “secondary meaning,”for purposes of trademark law, depends on lengthand nature of name's use, nature and extent of ad-vertising and promotion of name, efforts of propri-etor to promote conscious connection betweenname and business, and degree of actual recogni-tion by public that name designates the proprietor'sproduct or service. Lanham Trade-Mark Act, § 1 etseq., 15 U.S.C.A. § 1051 et seq.














































382Tk1034 k. Generic Terms or Marks. MostCited CasesGeneric mark cannot achieve true secondary mean-ing, and become eligible for trademark protection,even if it becomes in some degree associated withits source. Lanham Trade-Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.



382Tk1034 k. Generic Terms or Marks. MostCited Cases




382Tk1052 k. Letters or Initials; Abbrevi-ations. Most Cited Cases




382Tk1058 k. Multiple Elements; Com-binations. Most Cited CasesName “Welding Services,” as applied to companywhose business was offering welding services, was“generic” and not eligible for service mark protec-tion, and did not become non-generic simply be-cause company included the abbreviation “Inc.” atend of its name. Lanham Trade-Mark Act, § 1 etseq., 15 U.S.C.A. § 1051 et seq.



382Tk1034 k. Generic Terms or Marks. MostCited CasesWould-be proprietor's use of words in mark to refer

to kind of services it and its competitors provide ispowerful evidence that the words in putative markare being used generically. Lanham Trade-MarkAct, § 1 et seq., 15 U.S.C.A. § 1051 et seq.




382Tk1052 k. Letters or Initials; Abbrevi-ations. Most Cited Cases




382Tk1057 Nonliteral Elements382Tk1057(1) k. In General. Most

Cited CasesAbbreviation “WSI,” as used in logo of corporationwhose primary business was offering welding ser-vices, was not shown to have acquired any meaningdistinct from the generic terms, “Welding Services,Inc.,” that it abbreviated, as required for abbrevi-ation to be eligible for service mark protection,where abbreviation appeared in logo immediatelynext to generic terms themselves. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.




382Tk1052 k. Letters or Initials; Abbrevi-ations. Most Cited CasesAbbreviations of generic words may become pro-tectable, if the party claiming trademark or servicemark protection for abbreviation shows that abbre-viation has meaning distinct from underlying wordsin mind of public. Lanham Trade-Mark Act, § 1 et
















































seq., 15 U.S.C.A. § 1051 et seq.




382Tk1052 k. Letters or Initials; Abbrevi-ations. Most Cited CasesWhile investment in advertising is generally relev-ant to question of whether a mark has acquired sec-ondary meaning, for purposes of federal trademarklaw, question of whether abbreviation of genericwords has a discrete meaning in minds of publicfrom the generic words for which it stands requiresa different kind of evidence. Lanham Trade-MarkAct, § 1 et seq., 15 U.S.C.A. § 1051 et seq.




382Tk1058 k. Multiple Elements; Com-binations. Most Cited CasesLogo consisting of nonprotectable literal elementcombined with a display or geometric design maybe distinctive enough to receive trademark protec-tion. Lanham Trade-Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.




Most Cited CasesWhether marks are sufficiently similar to give riseto likelihood of confusion is assessed, for purposeof trademark or service mark infringement claim,by examining seven factors: (1) distinctiveness ofmark alleged to have been infringed; (2) similarityof the allegedly infringed and allegedly infringing

marks; (3) similarity between goods or servicesoffered under the two marks; (4) similarity of actualsales methods used by the two parties, such as theirsales outlets and customer base; (5) similarity ofadvertising methods; (6) intent of alleged infringerto misappropriate proprietor's good will; and (7) ex-istence and extent of actual confusion in the con-suming public. Lanham Trade-Mark Act, § 1 etseq., 15 U.S.C.A. § 1051 et seq.




382Tk1691 k. Similarity; Likelihoodof Confusion. Most Cited CasesWhether marks are sufficiently similar to give riseto likelihood of confusion, for purpose of trademarkor service mark infringement claim, is question offact for factfinder. Lanham Trade-Mark Act, § 1 etseq., 15 U.S.C.A. § 1051 et seq.




Most Cited CasesIn assessing whether marks are sufficiently similarto give rise to likelihood of confusion for purposesof trademark or service mark infringement claim,court must consider each of the seven factors, suchas distinctiveness of mark allegedly infringed, sim-ilarity of marks, and similarity of goods or services,bearing upon this inquiry. Lanham Trade-Mark Act,§ 1 et seq., 15 U.S.C.A. § 1051 et seq.



382Tk1033 k. Levels or Categories of Dis-tinctiveness in General; Strength of Marks in Gen-





































eral. Most Cited Cases



of Confusion382Tk1090 Nature of Marks

382Tk1092 k. Strength or Fame of Marks;Degree of Distinctiveness. Most Cited CasesThe stronger or more distinctive a trademark or ser-vice mark, the greater the likelihood of confusionand the greater the scope of protection afforded it;conversely, the weaker the mark, the less protectionit receives. Lanham Trade-Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.



of Confusion382Tk1090 Nature of Marks

382Tk1092 k. Strength or Fame of Marks;Degree of Distinctiveness. Most Cited Cases




382Tk1098 k. Appearance, Sound, andMeaning. Most Cited Cases



of Confusion382Tk1112 k. Persons Confused; Circum-

stances of Sale. Most Cited CasesEven assuming that welding service corporation'slogo, consisting of an abbreviation, “WSI,” of gen-eric terms that it used in its name enclosed withinsimple circle, was sufficiently distinctive to be eli-gible for service mark protection, allegedly in-

fringing logo of its competitor, consisting of the ab-breviation “WTI” with an orange “swoosh” designwrapping around the middle of these letters, was sovisually dissimilar as to foreclose claim of likeli-hood of confusion with first company's weak mark,where second company had hired advertising com-pany to design its logo, and where businesses usingthe two companies' services were sophisticated,large-scale purchasers, that were less likely to beconfused than casual purchasers of small items.Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. §1051 et seq.




382Tk1098 k. Appearance, Sound, andMeaning. Most Cited CasesOverwhelming visual dissimilarity can defeat an in-fringement claim, by demonstrating that there is nolikelihood of confusion, even though other factorsbearing on the likelihood of such confusion allweigh in favor of party asserting infringementclaim. Lanham Trade-Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.




Cited CasesWelding Services Inc.




Cited CasesWSI.















































Cited CasesWTI.*1354 Amanda S. Thompson, David Wayne Long-Daniels, Ernest L. Greer, James Jay Wolfson,Dorsey E. Hopson, II, Greenberg Trauig, LLP, At-lanta, GA, for Plaintiff-Appellant.

Charlene R. Swartz, Steven G. Hill, Hill, Kertscher& Wharton, LLP, Atlanta, GA, for Defendants-Ap-pellees.

Appeal from the United States District Court for theNorthern District of Georgia.

Before EDMONDSON, Chief Judge, and TJO-FLAT and GIBSON,FN* Circuit Judges.

FN* Honorable John R. Gibson, UnitedStates Circuit Judge for the Eighth Circuit,sitting by designation.

*1355 GIBSON, Circuit Judge:

Welding Services, Inc. appeals from the districtcourt's entry of summary judgment against it on itsclaim that Welding Technologies, Inc., its GeneralManager, Terry Forman, and its Vice President,

Robert Henson, infringed Welding Services' servicemarks in violation of the Lanham Act, 15 U.S.C. §1125(a). Welding Services contends that there aretriable issues of fact as to whether the companies'service marks are confusingly similar, whetherthere has been actual confusion about which com-pany was designated by Welding Technologies'marks, and whether Welding Technologies intendedto infringe on Welding Services' marks. We affirmthe judgment of the district court.

I.

Welding Services and Welding Technologies arerival companies providing services for maintainingequipment used in heavy industry. Since 1990Welding Services has been using theabbreviationFN1 “WSI,” and since February 1994,it has been using a stylized logo consisting of theinitials WSI, surrounded by a circle, as shown inthe margin.

FN1. We use the term “abbreviation”rather than “acronym” because an acronymis a kind of abbreviation that is pronouncedas a word, rather than as letters. See 3Louis Altman, Callmann on Unfair Com-petition, Trademarks and Monopolies §18:12 n. 27 (4th ed. 2004). Obviously,WSI cannot be pronounced as a word.

Welding Technologies was founded in 2003. InMay 2005, a group of former Welding Services em-ployees bought Welding Technologies from the ori-

ginal owners. The individual defendants TerryForman and Robert Henson are former employeesof Welding Services who moved to Welding Tech-nologies.FN2 When Welding Technologies was













































created in 2003, the original owners had a sistercompany, Orbital Tool Technologies, Inc., a ma-chining business. The owners hired an advertisingcompany, Fetelli, Inc., to design twin logos for thetwo companies. The logos for both companiesshowed 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 inthe margin.

FN2. Rod Forman and Charles Jones werenamed as defendants in the complaint, butwere not included in the Lanham Actcount.

Welding Services brought this suit alleging federaltrademark infringement on its abbreviation andstylized logo under section 4 of the Lanham Act, 15U.S.C. § 1125(a)(1)(A), as well as state law causesof action for unfair competition, false and deceptivetrade practices, misappropriation of trade secrets,tortious interference with *1356 business relations,and other related theories. Welding Services andWelding Technologies made cross-motions forsummary judgment on the Lanham Act claim, andWelding Technologies also moved for summaryjudgment on the state deceptive trade practices andunfair competition claims. The district court gran-ted summary judgment to Welding Technologies onthe only federal claim and on the state law claimsfor unfair competition and deceptive trade prac-tices. The court declined to exercise supplementaljurisdiction over the remaining state law claims andso dismissed those claims.

On appeal, Welding Services' argument focuses onits federal Lanham Act claim. It argues that the dis-trict court erred in holding that Welding Serviceshad not adduced a genuine question of material fact

as to whether Welding Technologies' use of “WTI”and the logo above created a likelihood of confu-sion. Welding Technologies, on the other hand, ar-gues that the district court should have held thatWelding Services has not shown that the abbrevi-ation “WSI” was entitled to trademark protection.

II.

[1][2] We review de novo a district court's grant ofsummary judgment. Stewart v. Booker T. Washing-ton Ins., 232 F.3d 844, 848 (11th Cir.2000). Sum-mary judgment is proper only if the record beforethe district court shows that there is no genuine is-sue as to any material fact and Welding Technolo-gies is entitled to judgment as a matter of law.Fed.R.Civ.P. 56(c). We must view the evidence inthe light most favorable to Welding Services, ratherthan weighing the evidence ourselves or makingcredibility determinations. Stewart, 232 F.3d at848. Upon motion and after adequate discovery, adistrict court may enter judgment “against a partywho fails to make a showing sufficient to establishthe existence of an element essential to that party'scase, and on which that party will bear the burden



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of proof at trial.” Celotex Corp. v. Catrett, 477 U.S.317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).This court may affirm on any ground supported bythe record. Bircoll v. Miami-Dade County, 480 F.3d1072, 1088 n. 21 (11th Cir.2007).

[3] To make a claim for infringement of its servicemarks, Welding Services must show: (1) that itsservice marks were entitled to protection and (2)that Welding Technologies' abbreviated name andlogo were identical to those marks or so similar thatthey were likely to confuse consumers. 15 U.S.C. §1125(a); Int'l Stamp Art, Inc. v. U.S. Postal Serv.,456 F.3d 1270, 1274 (11th Cir.2006) (per curiam).

III.

The district court considered the issue of whetherWelding Services' marks were protected, but de-clined to enter summary judgment against WeldingServices on that ground because the court was con-cerned that there was some evidence that the markshad acquired secondary meaning (although as to theabbreviation mark, the court's holding is ambiguousand may be read to mean that the abbreviation wasnot protected). On appeal, Welding Technologiesargues that the abbreviation “WSI” is not protect-able because it is generic.

[4][5] At the outset, we observe that at the time ofthe district court's decision, Welding Services hadnot successfully registered either the abbreviationWSI or the stylized logo. Its application to register“Welding Services Inc.” had been refused by thePatent and Trademark Office's examining attorneyon the ground that the proposed mark was merelydescriptive or generic as applied to the welding ser-vices identified. Its application to register “WSI”was refused on the ground that the *1357 mark wasconfusingly similar to a prior registered WSI markused to sell highly related services. In its reply briefbefore this court, Welding Services first advised usthat after the date of the district court's decision, theabbreviation and logo had been accepted by thePatent and Trademark Office for registration. Fur-

ther, at oral argument, Welding Services' counseladvised us that it had successfully registered the ab-breviation “WSI” and the stylized logo. We ordin-arily do not review materials outside the record onappeal as designated by Fed. R.App. P. 10(a), al-though we have the equitable power to do so if it isin the interest of justice. See Schwartz v. MillonAir, Inc., 341 F.3d 1220, 1225 n. 4 (11th Cir.2003).However, Welding Services has neglected to ad-dress before this court the ramifications that regis-tration would have on allocation of the burden ofproof on the issues of protectability and strength ofthe marks.FN3 Nor has Welding Services moved toreopen the district court proceedings to enlarge therecord. In light of these omissions and of the factthat Welding Services as plaintiff filed this case andalso filed a summary judgment motion before theregistration was complete, we conclude that justicedoes not require us to deviate from the ordinaryrule that the appeal is decided on the record beforeus. See Star Indus., Inc. v. Bacardi & Co., 412 F.3d373, 381-83 (2d Cir.2005) (where mark not re-gistered until after district court entered judgmentand district court declined to reopen the trial recordto include new evidence of registration, court con-sidered protectability without reference to registra-tion), cert. denied, 547 U.S. 1019, 126 S.Ct. 1570,164 L.Ed.2d 298 (2006).

FN3. Registration establishes a rebuttablepresumption that the marks are protectableor “distinctive.” 15 U.S.C. § 1057(b). Thesort of presumption appropriate dependson whether or not the Patent and Trade-mark Office has required proof of second-ary meaning. See Borinquen Biscuit Corp.v. M.V. Trading Corp., 443 F.3d 112, 117& n. 2 (1st Cir.2006) (If no proof of sec-ondary meaning is provided, presumptionis that mark is inherently distinctive; ifproof of secondary meaning is provided,presumption is that mark has secondarymeaning.).

[6][7][8] Trademark or service mark protection is














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only available to “distinctive” marks, Two Pesos,Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69,112 S.Ct. 2753, 120 L.Ed.2d 615 (1992), that is,marks that serve the purpose of identifying thesource of the goods or services, see Colt DefenseLLC v. Bushmaster Firearms, Inc., 486 F.3d 701,705 (1st Cir.2007). Some marks are inherently dis-tinctive; some marks, though not inherently dis-tinctive, acquire distinctiveness by becoming asso-ciated in the minds of the public with the productsor services offered by the proprietor of the mark;and some marks can never become distinctive. TwoPesos, 505 U.S. at 768-69, 112 S.Ct. 2753; CoachHouse Rest., Inc. v. Coach & Six Rests., Inc., 934F.2d 1551, 1560 (11th Cir.1991). Distinctiveness isa question of fact, whether the question is inherentdistinctiveness or acquired distinctiveness. Investa-corp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d1519, 1523 (11th Cir.1991); Coach House, 934F.2d at 1560.

[9] Trademark law distinguishes four gradations ofdistinctiveness of marks, in descending order ofstrength: fanciful or arbitrary, suggestive, descript-ive, and generic. An arbitrary or fanciful markbears no logical relationship to the product or ser-vice it is used to represent. Soweco, Inc. v. Shell OilCo., 617 F.2d 1178, 1184 (5th Cir.1980) (giving ex-ample of “Kodak”). A suggestive mark refers tosome characteristic of the goods, but requires a leapof the imagination to get from the mark to *1358the product. Id. (giving example of “Penguin” forrefrigerators). A descriptive mark identifies a char-acteristic or quality of the service or product. Id. at1183-84 (giving example of “Vision Center” foreyeglasses store).

[10] There are several different approaches to de-fining “generic.” By one test, a generic name refersto “a particular genus or class of which an individu-al article or service is but a member.” Soweco, 617F.2d at 1183 (internal quotation marks omitted). Byanother measure, a generic name is the term bywhich the product or service itself is commonlyknown. See Nat'l Conference of Bar Exam'rs v.

Multistate Legal Studies, 692 F.2d 478, 487 (7thCir.1982). Still other courts say a generic name de-picts the product or service as a whole, rather thanany particular feature, quality, or characteristic ofthe whole. Blinded Veterans Ass'n v. Blinded Am.Veterans Found., 872 F.2d 1035, 1039(D.C.Cir.1989) (citing Zatarains, Inc. v. Oak GroveSmokehouse, Inc., 698 F.2d 786, 790 (5thCir.1983)). Genericness lies not in the term itself,but in the use of the term: “A word may be genericof some things and not of others: ‘ivory’ is genericof elephant tusks but arbitrary as applied to soap.”Soweco, 617 F.2d at 1183.

[11][12][13][14] A generic use of a word may notbe registered as a trademark. Park 'N Fly, Inc. v.Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105S.Ct. 658, 83 L.Ed.2d 582 (1985). A descriptivename, on the other hand, though not inherently dis-tinctive, can acquire distinctiveness or “secondarymeaning” by becoming associated with the propri-etor's product or service. Am. Television & Commu-nications Corp. v. Am. Communications & Televi-sion, Inc., 810 F.2d 1546, 1548-49 (11th Cir.1987).A name has acquired secondary meaning when “theprimary significance of the term in the minds of the[consuming] public is not the product but the pro-ducer.” Id. at 1549 (quoting Vision Ctr. v. Opticks,Inc., 596 F.2d 111, 118 (5th Cir.1979) (quotingKellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118,59 S.Ct. 109, 83 L.Ed. 73 (1938))). A proprietorcan make a prima facie showing of “secondarymeaning” by showing that the name has been usedin connection with the proprietor's goods or servicecontinuously and substantially exclusively for fiveyears. 15 U.S.C. § 1052(f). Whether a name has at-tained secondary meaning depends on the lengthand nature of the name's use, the nature and extentof advertising and promotion of the name, the ef-forts of the proprietor to promote a conscious con-nection between the name and the business, and thedegree of actual recognition by the public that thename designates the proprietor's product or service.Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513(11th Cir.1984).































































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[15] Courts have generally held that a term usedgenerically cannot be appropriated from the publicdomain; therefore, even if the name becomes insome degree associated with the source, a genericmark cannot achieve true secondary meaning. SeeSoweco, 617 F.2d at 1185 n. 20 (secondary mean-ing not relevant to generic mark); Vision Ctr. v. Op-ticks, Inc., 596 F.2d 111, 115 & n. 11 (5thCir.1979) (“Most courts hold that a generic term isincapable of achieving trade name protection”;courts refuse to allow proof of secondary meaningto elevate generic term to trademark status); seealso Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d971, 974 (8th Cir.2006); Zatarains, Inc. v. OakGrove Smokehouse, Inc., 698 F.2d 786, 790-91 (5thCir.1983); Nat'l Conference of Bar Exam'rs, 692F.2d at 487; 2 J. Thomas McCarthy, McCarthy onTrademarks and Unfair Competition § 15:24 (4thed.2007). But see *1359Am. Heritage Life Ins. Co.v. Heritage Life Ins. Co., 494 F.2d 3, 11 (5thCir.1974) (generic name will be protected if it ac-quires secondary meaning).

[16][17] The record indicates that when WeldingServices applied to register the name “Welding Ser-vices Inc.,” registration was refused on the groundthat the proposed mark was “generic as applied”and that it was descriptive. As the Patent andTrademark Office concluded upon reviewing theapplication, “Clearly the applicant is providingwelding services and [the] proposed mark is genericfor the applicant's services.” In the service mark re-gistration application for “WSI” in the record be-fore us, Welding Services itself describes the kindof services it offers as “[w]eld metal overlay ser-vices and fabrications.” Similarly, in a page fromthe Welding Services website attached as an exhibitto the registration application, Welding Servicesstates: “Welding Services is the largest producerand supplier of weld metal overlay services andfabrications in the world.” This statement assumesthat the company is one of many suppliers of “weld... services.” Even in its statement of material factsin the district court, Welding Services used thephrase to denote the services that both it and Weld-

ing Technologies provide: “The parties' Marks areused in connection with identical services-non-nuclear welding services that compete directlywith the other”; “Defendant Welding Technologies,Inc. (‘WTI’) is an Illinois corporation that provideswelding services in direct competition with WSI”(emphasis added). A would-be proprietor's use ofthe words in the mark to refer to the kind of ser-vices it and its competitors provide is powerfulevidence that the words in the putative mark are be-ing used generically. See Retail Servs. Inc. v. Free-bies Publ'g, 364 F.3d 535, 545 (4th Cir.2004); 2McCarthy, supra, at § 12.13. Here, Welding Ser-vices has used “welding services” to denote bothwhat it does and what Welding Technologies doesfor customers; we can only conclude that its use ofthese words is generic.FN4

FN4. The mere inclusion of “Inc.” at theend of the name does not make genericwords protectable. In re Patent & Trade-mark Servs. Inc., 49 U.S.P.Q.2d 1537,1539 (Trademark Trial & App. Bd.1998);3 Louis Altman, Callmann on Unfair Com-petition § 18:4, at 18-67 (4th ed. 2003).

[18] Although we conclude that the words “weldingservices” are not protectable, this does not decidethe precise question before us because WeldingServices, Inc. does not seek protection for thewords themselves, but for the abbreviation “WSI”and the stylized logo using that abbreviation. Theprotectability of the initials and of the stylized logopresent different issues, so we will consider them inturn.

[19] Abbreviations of generic words may becomeprotectable if the party claiming protection for suchan abbreviation shows that the abbreviation has ameaning distinct from the underlying words in themind of the public. G. Heileman Brewing Co. v.Anheuser-Busch, Inc., 873 F.2d 985, 993-94 (7thCir.1989) (“heavy burden” on trademark claimantseeking to show an independent meaning for initialsof descriptive words apart from the fact that theyare abbreviations for the descriptive words); 2 Mc-








































Carthy, supra, § 12:37 (distinguishing between ab-breviations “which still convey[ ] to the buyer theoriginal generic connotation of the abbreviatedname” and those which are “not recognizable as theoriginal generic term”). But cf. Anheuser-Busch,Inc. v. Stroh Brewery Co., 750 F.2d 631, 635-36(8th Cir.1984) (abbreviation of generic words pro-tectable if “some operation of the imagination is re-quired to connect the initials with the product”);*1360Modern Optics, Inc. v. Univis Lens Co., 43C.C.P.A. 970, 234 F.2d 504, 506 (C.C.P.A.1956) (“[I]nitials cannot be considered descriptive unlessthey have become so generally understood as rep-resenting descriptive words as to be accepted assubstantially synonymous therewith.”).

Welding Services introduced the affidavit of itsmarketing director, Michael Welch, stating that thecompany had used the abbreviation since 1990 andthe stylized logo for nine years before WeldingTechnologies began using its marks. Welch saidWelding Services had spent $5 million advertisingits marks over the course of fourteen years (from1990 to 2004) and had generated more than $1 bil-lion in revenues. Welch said that the WSI marks arerecognized as a “highly significant indicator ofWSI's welding services.” On the basis of this evid-ence, the district court declined to hold that Weld-ing Services' marks were not protectable.

[20] But Welch's affidavit does not address thequestion of whether the company's investment inadvertising its marks served to give the abbrevi-ation “WSI” a meaning distinct from the words“Welding Services Inc.” While investment in ad-vertising is relevant to the question of secondarymeaning generally, Investacorp, Inc. v. ArabianInv. Banking Corp., 931 F.2d 1519, 1525 (11thCir.1991), the question of whether the abbreviationhas a discrete meaning in the minds of the publicfrom the generic words for which it stands requiresa different kind of evidence. The only evidence inthe record relevant to this question shows WeldingServices has not created a separate meaning for theabbreviation. Crucially, exhibit B to Welding Ser-

vices' statement of material facts shows the logowith the initials on advertising material displayedimmediately next to the words “Welding ServicesInc.” Thus, Welding Services' own motion papersindicate that the abbreviation is used in associationwith the generic words, rather than being used in away that would give rise to a meaning distinct fromthose words. Accordingly, we hold that WeldingServices had not shown “WSI” to be protectable.

[21] As for the stylized logo, a logo consisting of anonprotectable literal element combined with a dis-play or geometric design may be distinctive enoughto receive protection. In re Trail-R-Van, Inc., 188U.S.P.Q. 590, 591 (Trademark Trial & App.Bd.1975); 3 Callman, supra, § 18:4, at18-62-18-63; 2 McCarthy, supra, § 12:40. The WSIstylized logo is not particularly distinctive, consist-ing of the three letters in a circle. See Star Indus.,Inc. v. Bacardi & Co., 412 F.3d 373, 383 (2dCir.2005) (basic shapes not protectable, thoughstylized version of shapes and letters may be). Nev-ertheless, we will not hold that summary judgmentagainst Welding Services would have been properon this question, since another ground-no likelihoodof confusion-so obviously supports entry of sum-mary judgment against Welding Services on theclaim for infringement of the stylized logo.

IV.

[22][23][24] Likelihood of confusion is assessed byexamining seven factors: (1) distinctiveness of themark alleged to have been infringed; (2) similarityof the infringed and infringing marks; (3) similaritybetween the goods or services offered under thetwo marks; (4) similarity of the actual sales meth-ods used by the two parties, such as their sales out-lets and customer base; (5) similarity of advertisingmethods; (6) intent of the alleged infringer to mis-appropriate the proprietor's good will; and (7) exist-ence and extent of actual confusion in the consum-ing public. Conagra, Inc. v. Singleton, 743 F.2d1508, 1514 (11th Cir.1984); see also *1361CustomMfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d
































641, 646-47, 2007 WL 4165634, at *3 (11th Cir.Nov.21, 2007). The likelihood of confusion is aquestion of fact. Jellibeans, Inc. v. Skating Clubs,716 F.2d 833, 840 n. 16 (11th Cir.1983). In this cir-cuit, we are required to consider each of the sevenfactors. Dippin' Dots, Inc. v. Frosty Bites Distrib.,LLC, 369 F.3d 1197, 1207 (11th Cir.2004).

[25][26] The stronger or more distinctive a trade-mark or service mark, the greater the likelihood ofconfusion and the greater the scope of protectionafforded it, and conversely, the weaker the mark,the less protection it receives. See Amstar Corp. v.Domino's Pizza, Inc., 615 F.2d 252, 259 (5thCir.1980). While we decline to decide whether thelogo was sufficiently distinctive to be protectable,we can say that at most the extent of stylization wasmarginal. The result is a weak mark, entitled tovery little protection (if any). Star Indus., Inc. v.Bacardi & Co., 412 F.3d 373, 383 (2d Cir.2005).

[27] Visual comparison of the two logos shows thatthey are not similar. The WSI mark consists of styl-ized letters in an ordinary circle. The WTI markconsists of plain block letters with an orange“swoosh” design, meant to convey rotational move-ment, wrapping around the middle of the letters.The words “Welding Technologies, Inc” appear be-low the letters. There is not the least possibility ofconfusing the two stylized logos. Overwhelmingvisual dissimilarity can defeat an infringementclaim, even where the other six factors all weigh infavor of the plaintiff. Dippin' Dots, 369 F.3d at1208.

The next three factors weigh in favor of WeldingServices, since there is undisputed similarity of ser-vices offered, sales methods, and advertising meth-ods.

The record does not support Welding Services' con-tention that Welding Technologies intended tocause confusion in adopting its mark. The story ofhow the WTI logo was created by previous ownersto harmonize with the mark of its sister company isundisputed and shows an innocent origin for the

logo.

Finally, Welding Services contends that it hasshown actual confusion between the marks. Weld-ing Services offered the deposition of MichaelWelch, who said that at a trade show in 2005, hehad a number of customers come and ask about“who WTI was and whether they were affiliatedwith WSI.” Terry Forman, of Welding Technolo-gies, reported that she had been asked whetherWelding Technologies was a “spin-off of WSI.”These incidents have no explicit connection to thestylized logos. As the district court remarked, theirprobative value is very low because of the uncer-tainty about what might have prompted the inquir-ies. Welding Technologies' employees wereformerly associated with Welding Services, so theconfusion could just as likely have arisen becauseof the personnel rather than the logo. Moreover, thenature of the business at issue here requires that thepurchasers of the services must be sophisticatedconsumers, since the services are technical andlarge-scale. Such purchasers are less likely to beconfused than casual purchasers of small items. SeeFreedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176,1185 (11th Cir.1985).

Welding Services has not come forward with suffi-cient proof of likelihood of confusion of the logosto warrant a trial of the issue.

* * *

We AFFIRM the judgment of the district court.

C.A.11 (Ga.),2007.Welding Services, Inc. v. Forman509 F.3d 1351, 85 U.S.P.Q.2d 1233, 21 Fla. L.Weekly Fed. C 246

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Date/Time of Request: Monday, July 6, 2009 12:11 CentralClient Identifier: OSHNADatabase: USCACitation Text: 15 USCA s 1052Lines: 37624Documents: 1Images: 0


Effective: October 6, 2006

United States Code Annotated CurrentnessTitle 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 falselysuggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them intocontempt, 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 bythe applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) ofTitle 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 hiswritten consent, or the name, signature, or portrait of a deceased President of the United States during the life ofhis 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 fromthe continued use by more than one person of the same or similar marks under conditions and limitations as tothe 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 oftheir concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending orof any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued underthe Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July5, 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 ofsuch 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 thatmore 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 thegoods 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 registrableunder section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarilygeographically 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 thischapter 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 claimof distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used onor 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) ofthis title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. Aregistration 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 titleor 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. 502and Act Feb. 20, 1905, c. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by ActJuly 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) andthe 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, asthe 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 markwhich 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 wouldcause 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 onlypursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would belikely 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.”. SeeCodifications 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 provisionspreceding 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 indicationused in connection with wines or spirits which identifies a place other than the origin of the goods and is firstused on or after one year after the date on which the WTO Agreement enters into force with respect to theUnited 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 goodsof 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 ofthem, 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 thegoods 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 Patentand 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 todeceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely toresult 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 aresult of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applicationspending 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 onthat 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 ofcompetent jurisdiction has finally determined that more than one person is entitled to use the same or similarmarks 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 tothe 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 “fiveyears before the date on which the claim of distinctiveness is made.” for “five years next preceding the date ofthe 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 oftheir concurrent lawful use in commerce prior to the earliest of the filing dates of the applications pending or ofany registration issued under this chapter, or July 5, 1947, in the case of registrations previously issued under theAct of Mar. 3, 1881, or Feb. 20, 1905, and continuing in full force and effect on that date, or July 5, 1947, in thecase 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 concurrentlawful 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 themarks or the goods in connection with which such marks are used, for provisions which required issuance underconditions 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 inthe Official Gazette upon a decision to grant such a registration and permitted a court to order such a registrationunder § 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 ofthis 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 enactmentof 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 civilaction filed or proceeding before the United States Patent and Trademark Office commenced on or after suchdate relating to the registration of a mark, see section 201(b) of Pub.L. 105-330 set out as a note under section1051 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 yearafter 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 undersection 109 of Title 17] take effect on the date the Agreement [North American Free Trade Agreement] entersinto 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 allpatent applications that are filed on or after the date of the enactment of this Act [Dec. 8, 1993]: Provided, Thatan applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or usethereof, or other activity with respect thereto, in a NAFTA country, except as provided in sections 119 and 365of 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 ofCommerce, with certain exceptions, see 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64Stat. 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, 36Stat. 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 annexedto that Agreement, as referred to in 19 U.S.C.A. § 3511(d), entered into force with respect to the United Stateson 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 asa 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 havebecome 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 andrights under prior acts, and saving clause, see notes under § 1051 of this title.

CROSS REFERENCES

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