Oshna Icann Complaint

OLD SEMINOLE HEIGHTS NEIGHBORHOOD ASSN. INC., a Florida Corporation, Complainant v. SEMINOLE HEIGHTS FOUNDATION, INC., a Florida Corporation, and CHRISTIE HESS, individually Respondent

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In Re oldseminoleheightsfoundation.org

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.] [b.] [c.] [e.]

Name: Address: Telephone: E-Mail:

Old Seminole Heights Neighborhood Association, Inc. (OSHNA) P.O. Box 360022, Tampa, Florida 33673 813-857-5497 [email protected]

[2.2] COMPLAINANT COUNSEL Pursuant to ICANN Rule 3(b)(ii), all communication should be directed to the undersigned counsel. [a.] [b.]

Name: Address:

[c.] [d.] [e.]

Telephone: Fax: E-Mail:

Bradford A. Patrick, Esq. Chamberlin Patrick PA 3001 N. Rocky Point Dr. E, Suite 200, Tampa, Florida 33607 (813) 374-2216 (813) 234-4510 [email protected]

The Complainant’s preferred method for communications:

Electronic-Only Material [a.] Method: Email [b.] Address: [email protected] [c.] Contact: Bradford A. Patrick, Esq. Material Including Hard Copy [a.] Method: Fax [b.] Address/Fax: (813) 234-4510 [c.] Contact: Bradford A. Patrick, Esq. The Complainant selects a single-member administrative panel pursuant to ICANN Rule 3(b)(iv). [3.]

RESPONDENT INFORMATION [a.] [b.]

Name: Address:

[c.] [e.]

Telephone: E-Mail:

Christie Hess 1 Seminole Heights Foundation, Inc. 1011 E Broad Street, Tampa, Florida 33604 (813) 237-8808 [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.] [b.] [c.] [d.] [f.]

[c.]

Name: Organization: Address: Telephone: E-Mail:

Christie Hess Seminole Heights Foundation 2 1011 E Broad Street, Tampa, Florida 33604 (813) 237-8808 [email protected]

Trademark/Service Mark Information: ICANN Rule 3(b)(viii).

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.”

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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.

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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 Long 3 and Doreen DiBona 4 reported to the Board regarding the issues associated with converting from a 501c4 to a 501c3 versus creation of a 3 4

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

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new 501c3. In December, 2008, a meeting with counsel to discuss the options was planned for January. In January, 2009, Evan St. Ives 5, Greg Barnhill, Randy Baron 6, Doreen DiBona, Jeff Harmon 7, and Bill Hunter were appointed to the Committee by the Board. On February 10, 2009, counsel met with St. Ives, Barnhill, DiBona, and Harmon. Notes from the meeting were transcribed and circulated as part of the Committee minutes. Between February 10 and 13, St. Ives circulated draft articles of incorporation and bylaws for the proposed new foundation to the Committee and Board. On February 14, a second Committee meeting was held, with Barnhill, Baron, DiBona, Harmon and St. Ives in attendance. Minutes included discussion of names, non-profit status, directors, and methods of appointment for foundation board members. On February 17, 2009, the OSHNA Board approved a special board meeting for the Committee to present its conclusions, and report on the recommendations of counsel, tax consequences and so forth, and hear from members of OSHNA about the proposal. The domain at issue was intended by OSHNA to be the domain used in association with the creation of a new 501c3 organization. On February 23, 2009, the Committee received a presentation from a non-profit consultant. Long, Baron, St. Ives, Barnhill, DiBona, Harmon and Hunter were present. On February 26, 2009, SEMINOLEHEIGHTSFOUNDATION.ORG was registered anonymously through Domains-by-Proxy. On March 10, 2009, SEMINOLE HEIGHTS FOUNDATION, INC. was incorporated with the State of Florida, listing Respondent Hess 8, Long and Baron as directors, using articles of incorporation nearly identical to those prepared by St. Ives on behalf of the OSHNA Committee. On March 13, 2009, OSHNA received communication from the City of Tampa Neighborhood and Community Relations office erroneously congratulating OSHNA on the creation of the new foundation. On March 17, 2009, Hess registered OLDSEMINOLEHEIGHTSFOUNDATION.ORG, at 2:30PM (19:30UTC), hours before an OSHNA Board meeting at which Hess, Long, and Baron refused to discuss the matter and left. On March 25, 2009,9 SHF issued a press release detailing how its formation as a 501c3 would “fill in the gaps” of those things OSHNA “could not or would not do.” Local news coverage in the St. Petersburg Times and Tampa Tribune followed. On April 10, 2009, the undersigned counsel was retained to address this dispute. All efforts at further resolution of this matter were rejected by SHF. At a Board meeting on April 21, 2009, and a General Membership meeting on April 28, 2009, SHF representatives in attendance had no comment on why they had created their Foundation in secret, registered a domain anonymously, and registered OLDSEMINOLEHEIGHTSFOUNDATION.ORG at all. OSHNA’s Bylaws specifically provide that the Board is responsible for “preserving the good name and reputation of OSHNA” 9, “Approv[ing] the use of the OSHNA name and/or logo by other parties including, but not limited to, endorsements of products or businesses” 10, and may “Expel members whose actions or conduct embarrass or jeopardize the best interest of OSHNA.” 11 In light of the betrayal of the Committee (and Board’s) trust of Hess, Baron and Long, and their actions in creating a competing organization and usurping the domain name at issue, on May 19, 2009, the Board voted 5

St. Ives is the current OSHNA vice president. 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 6

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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.

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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

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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 (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 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.

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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

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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

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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

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ICANN | Rules for Uniform Domain Name Dispute Resolution Policy

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http://www.icann.org/en/udrp/udrp-rules-24oct99.htm

Rules for Uniform Domain Name Dispute Resolution Policy Policy Adopted: August 26, 1999 Implementation Documents Approved: October 24, 1999

Note: These rules are now in effect. See www.icann.org/udrp/udrp-schedule.htm for the implementation schedule.

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") (As Approved by ICANN on October 24, 1999) Administrative proceedings for the resolution of disputes under the Uniform Dispute Resolution Policy adopted by ICANN shall be governed by these Rules and also the Supplemental Rules of the Provider administering the proceedings, as posted on its web site. 1. Definitions In these Rules: Complainant means the party initiating a complaint concerning a domain-name registration. ICANN refers to the Internet Corporation for Assigned Names and Numbers. Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider. Panel means an administrative panel appointed by a Provider to decide a complaint concerning a domain-name registration. Panelist means an individual appointed by a Provider to be a member of a Panel. Party means a Complainant or a Respondent. Policy means the Uniform Domain Name Dispute Resolution Policy that is incorporated by reference and made a part of the Registration Agreement. Provider means a dispute-resolution service provider approved by ICANN. A list of such Providers appears at www.icann.org/udrp/approved-providers.htm.

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ICANN | Rules for Uniform Domain Name Dispute Resolution Policy

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Registrar means the entity with which the Respondent has registered a domain name that is the subject of a complaint. Registration Agreement means the agreement between a Registrar and a domain-name holder. Respondent means the holder of a domain-name registration against which a complaint is initiated. Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, the means for communicating with the Provider and the Panel, and the form of cover sheets. 2. Communications (a) When forwarding a complaint to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility: (i) sending the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and (ii) sending the complaint in electronic form (including annexes to the extent available in that form) by e-mail to: (A) the e-mail addresses for those technical, administrative, and billing contacts; (B) postmaster@; and (C) if the domain name (or "www." followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e-mail address shown or e-mail links on that web page; and (iii) sending the complaint to any address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other addresses provided to the Provider by Complainant under Paragraph 3(b)(v). (b) Except as provided in Paragraph 2(a), any written communication to

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Complainant or Respondent provided for under these Rules shall be made by the preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)), or in the absence of such specification (i) by telecopy or facsimile transmission, with a confirmation of transmission; or (ii) by postal or courier service, postage pre-paid and return receipt requested; or (iii) electronically via the Internet, provided a record of its transmission is available. (c) Any communication to the Provider or the Panel shall be made by the means and in the manner (including number of copies) stated in the Provider's Supplemental Rules. (d) Communications shall be made in the language prescribed in Paragraph 11. E-mail communications should, if practicable, be sent in plaintext. (e) Either Party may update its contact details by notifying the Provider and the Registrar. (f) Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made: (i) if delivered by telecopy or facsimile transmission, on the date shown on the confirmation of transmission; or (ii) if by postal or courier service, on the date marked on the receipt; or (iii) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable. (g) Except as otherwise provided in these Rules, all time periods calculated under these Rules to begin when a communication is made shall begin to run on the earliest date that the communication is deemed to have been made in accordance with Paragraph 2(f). (h) Any communication by (i) a Panel to any Party shall be copied to the Provider and to the other Party; (ii) the Provider to any Party shall be copied to the other Party; and (iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may be. (i) It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes.

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(j) In the event a Party sending a communication receives notification of non-delivery of the communication, the Party shall promptly notify the Panel (or, if no Panel is yet appointed, the Provider) of the circumstances of the notification. Further proceedings concerning the communication and any response shall be as directed by the Panel (or the Provider). 3. The Complaint (a) Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN. (Due to capacity constraints or for other reasons, a Provider's ability to accept complaints may be suspended at times. In that event, the Provider shall refuse the submission. The person or entity may submit the complaint to another Provider.) (b) The complaint shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall: (i) Request that the complaint be submitted for decision in accordance with the Policy and these Rules; (ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Complainant and of any representative authorized to act for the Complainant in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Complainant in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy; (iv) Designate whether Complainant elects to have the dispute decided by a single-member or a three-member Panel and, in the event Complainant elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider's list of panelists); (v) Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a); (vi) Specify the domain name(s) that is/are the subject of the complaint; (vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed; (viii) Specify the trademark(s) or service mark(s) on which the

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complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.); (ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, (1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and (3) why the domain name(s) should be considered as having been registered and being used in bad faith (The description should, for elements (2) and (3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable. The description shall comply with any word or page limit set forth in the Provider's Supplemental Rules.); (x) Specify, in accordance with the Policy, the remedies sought; (xi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (xii) State that a copy of the complaint, together with the cover sheet as prescribed by the Provider's Supplemental Rules, has been sent or transmitted to the Respondent (domain-name holder), in accordance with Paragraph 2(b); (xiii) State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction; (xiv) Conclude with the following statement followed by the signature of the Complainant or its authorized representative: "Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the dispute-resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as

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well as their directors, officers, employees, and agents." "Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."; and (xv) Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence. (c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. 4. Notification of Complaint (a) The Provider shall review the complaint for administrative compliance with the Policy and these Rules and, if in compliance, shall forward the complaint (together with the explanatory cover sheet prescribed by the Provider's Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a), within three (3) calendar days following receipt of the fees to be paid by the Complainant in accordance with Paragraph 19. (b) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant. (c) The date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent. (d) The Provider shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding. 5. The Response (a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider. (b) The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall: (i) Respond specifically to the statements and allegations contained in

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the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider's Supplemental Rules.); (ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Respondent (domain-name holder) and of any representative authorized to act for the Respondent in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy; (iv) If Complainant has elected a single-member panel in the Complaint (see Paragraph 3(b)(iv)), state whether Respondent elects instead to have the dispute decided by a three-member panel; (v) If either Complainant or Respondent elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider's list of panelists); (vi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (vii) State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and (viii) Conclude with the following statement followed by the signature of the Respondent or its authorized representative: "Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."; and (ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents. (c) If Complainant has elected to have the dispute decided by a single-member Panel and Respondent elects a three-member Panel, Respondent shall be required to pay one-half of the applicable fee for a three-member Panel as set forth in the Provider's Supplemental Rules. This payment shall be made together with the submission of the response to the Provider. In the event that the required

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payment is not made, the dispute shall be decided by a single-member Panel. (d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider. (e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. 6. Appointment of the Panel and Timing of Decision (a) Each Provider shall maintain and publish a publicly available list of panelists and their qualifications. (b) If neither the Complainant nor the Respondent has elected a three-member Panel (Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. The fees for a single-member Panel shall be paid entirely by the Complainant. (c) If either the Complainant or the Respondent elects to have the dispute decided by a three-member Panel, the Provider shall appoint three Panelists in accordance with the procedures identified in Paragraph 6(e). The fees for a threemember Panel shall be paid in their entirety by the Complainant, except where the election for a three-member Panel was made by the Respondent, in which case the applicable fees shall be shared equally between the Parties. (d) Unless it has already elected a three-member Panel, the Complainant shall submit to the Provider, within five (5) calendar days of communication of a response in which the Respondent elects a three-member Panel, the names and contact details of three candidates to serve as one of the Panelists. These candidates may be drawn from any ICANN-approved Provider's list of panelists. (e) In the event that either the Complainant or the Respondent elects a threemember Panel, the Provider shall endeavor to appoint one Panelist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) calendar days to secure the appointment of a Panelist on its customary terms from either Party's list of candidates, the Provider shall make that appointment from its list of panelists. The third Panelist shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties, the Provider's selection from among the five being made in a manner that reasonably balances the preferences of both Parties, as they may specify to the Provider within five (5) calendar days of the Provider's submission of the five-candidate list to the Parties. (f) Once the entire Panel is appointed, the Provider shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider. 7. Impartiality and Independence

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A Panelist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist's impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist. 8. Communication Between Parties and the Panel No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider's Supplemental Rules. 9. Transmission of the File to the Panel The Provider shall forward the file to the Panel as soon as the Panelist is appointed in the case of a Panel consisting of a single member, or as soon as the last Panelist is appointed in the case of a three-member Panel. 10. General Powers of the Panel (a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. (d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. 11. Language of Proceedings (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. (b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding. 12. Further Statements

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In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. 13. In-Person Hearings There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint. 14. Default (a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. (b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. 15. Panel Decisions (a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. (b) In the absence of exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment pursuant to Paragraph 6. (c) In the case of a three-member Panel, the Panel's decision shall be made by a majority. (d) The Panel's decision shall be in writing, provide the reasons on which it is based, indicate the date on which it was rendered and identify the name(s) of the Panelist(s). (e) Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider's Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 16. Communication of Decision to Parties (a) Within three (3) calendar days after receiving the decision from the Panel, the Provider shall communicate the full text of the decision to each Party, the

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concerned Registrar(s), and ICANN. The concerned Registrar(s) shall immediately communicate to each Party, the Provider, and ICANN the date for the implementation of the decision in accordance with the Policy. (b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published. 17. Settlement or Other Grounds for Termination (a) If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. (b) If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel. 18. Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. (b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above. 19. Fees (a) The Complainant shall pay to the Provider an initial fixed fee, in accordance with the Provider's Supplemental Rules, within the time and in the amount required. A Respondent electing under Paragraph 5(b)(iv) to have the dispute decided by a three-member Panel, rather than the single-member Panel elected by the Complainant, shall pay the Provider one-half the fixed fee for a threemember Panel. See Paragraph 5(c). In all other cases, the Complainant shall bear all of the Provider's fees, except as prescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shall refund the appropriate portion, if any, of the initial fee to the Complainant, as specified in the Provider's Supplemental Rules. (b) No action shall be taken by the Provider on a complaint until it has received from Complainant the initial fee in accordance with Paragraph 19(a). (c) If the Provider has not received the fee within ten (10) calendar days of receiving the complaint, the complaint shall be deemed withdrawn and the administrative proceeding terminated.

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(d) In exceptional circumstances, for example in the event an in-person hearing is held, the Provider shall request the Parties for the payment of additional fees, which shall be established in agreement with the Parties and the Panel. 20. Exclusion of Liability Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules. 21. Amendments The version of these Rules in effect at the time of the submission of the complaint to the Provider shall apply to the administrative proceeding commenced thereby. These Rules may not be amended without the express written approval of ICANN. Comments concerning the layout, construction and functionality of this site should be sent to [email protected]. Page Updated 05-Feb-2002 ©2000, 2002 The Internet Corporation for Assigned Names and Numbers. All rights reserved.

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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) (ii)

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(iii)

Postal mail will be deemed Submitted when received by the Forum

(g) Calendar Days means that all days, including weekends and international and national holidays, shall be counted in determining all deadlines and due dates. Exceptions-Deadlines: (i) In the event that a deadline falls on a United States federal holiday, as defined by 5 U.S.C. §6103, the deadline shall be extended to the following Calendar Day. (ii) In the event that a Calendar Day deadline falls on a Saturday or Sunday, the deadline shall be extended to the following Calendar Day. 2. Scope The Forum will apply the Rules, the Policy and the Forum’s Supplemental Rules in effect at the time a Complaint is Submitted. The Forum’s Supplemental Rules may be amended by the Forum in its sole discretion. 3. Communications All communications must be directed to the Forum and not to the Panel. 4. The Complaint (a) The Complaint must include all elements listed in Paragraph 3(b) of the Rules; and may not exceed fifteen (15) pages. (b) The Complainant must Submit three (3) hard copies of the Complaint to the Forum if the Complainant requests a single-member Panel. The Complainant must Submit five (5) hard copies of the Complaint if the Complainant requests a three (3) member Panel. If the Respondent requests a three-member Panel, the Complainant may be asked to Submit additional copies of the Complaint. (c) In accordance with Paragraph 3(b)(xii) of the Rules, the Complainant must send or transmit its Complaint to the Respondent under cover of the Complaint Transmittal Cover Sheet posted on the Forum's web site. (d) The Complaint must be sent to the Forum by e-mail ([email protected]), and either by fax or by mail. (e) Notification to Registrar and certification thereof. (i) The Complainant must provide a copy of the Complaint to the registrar of the disputed domain name at the same time the Complaint is sent to the Forum. (ii) The Complainant must certify in the Complaint that Complainant has complied with Supp. Rule 4(e)(i). National Arbitration Forum UDRP Supplemental Rules

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(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 email address provided for the Respondent in the Complaint;

(iv)

if none of these addresses are provided, the facsimile address provided for the Respondent in the Complaint; or

(v)

if none of these addresses are provided, the mail address provided for the Respondent in the Complaint.

(c) The Respondent must Submit three (3) hard copies of the Response to the Forum if the Complainant requested a single-member Panel. If the Complainant or Respondent requested a three-member Panel, the Respondent must Submit (5) hard copies of the Response to the Forum. (d) The Response must be sent to the Forum by e-mail ([email protected]), and by either fax or by mail. 6. Extensions and Stays (a) Extensions for Filing a Response National Arbitration Forum UDRP Supplemental Rules

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(i)

(ii)

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.

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.

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7. Submission of other Written Statements and Documents; No Amendment to the Complaint (a) A party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum, or, if no Response has been filed, the last date the Response was due to be received by the Forum. (b) Each additional submission pursuant to Supplemental Rule 7(a) must: (i)

be timely received by the Forum;

(ii)

be accompanied by an additional submission fee of $400;

(iii)

include proof of service of these submissions upon the opposing party(s); and

(iv)

be Submitted in either hard copy or electronic form.

(c) The party(s) not filing the original additional submission under 7(a) may file additional written statements and documents to the Forum within five (5) Calendar Days after the date the original additional submission was received by the Forum. (d) Each additional submission pursuant to Supplemental Rule 7(c) must: (i)

be timely received by the Forum;

(ii)

include proof of service of these submissions upon the opposing party(s); and

(iii)

be Submitted in either hard copy or electronic form.

(e) Each party is limited to one additional submission under either 7(a) or 7(c), but not both. (f) Additional submissions must not amend the Complaint or Response. 8. The Record of the Administrative Proceeding. The Complaint, Response, and additional written statements and documents provided in Paragraph 12 of the Rules and Paragraph 7 of the Supplemental Rules constitute the complete record to be considered by the Panel.

National Arbitration Forum UDRP Supplemental Rules

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Dispute Resolution for Domain Names Effective November 1, 2007

9. Appointment of the Panel and Timing of Decision (a) The Forum will maintain and publish a list of Panelists and their qualifications to which any party will be directed on the Forum's web site, http://domains.adrforum.com. the Forum will appoint a Panelist from this list to serve as a single-member Panel. (b) In cases involving a three-member Panel, the Forum will select a Chair for the three-member Panel and will endeavor to select a Chair who was not from the list of Panelist candidates provided by the parties pursuant to Paragraph 6(e) of the Rules. The Chair will sign all Orders and the Decision, coordinate and preside over the proceeding, and forward to the Forum the Panel’s decision, including any concurring or dissenting opinion as required by Paragraph 15 of the Rules. (c) In cases where the Complainant requested a three-member Panel and no Response was Submitted as required by Rule 5(a), the Complainant may be given the option of converting the three-member Panel to a single-member Panel: (i)

After the time for the Response has expired, the Forum will notify the Complainant that no response was Submitted and that the Complainant may convert its three-member Panel request to a single-member Panel request;

(ii)

Within five (5) Calendar Days of this notification, the Complainant, by e-mail to the Forum ([email protected]), may request that the three-member Panel be converted to a single-member Panel;

(iii)

If a single-member Panel is requested, the Forum will select a Panelist from its list of Panelists, not on the list of Panelists Submitted by the Complainant; and

(iv)

If a single-member Panel is appointed to decide the case, the Complainant will be reimbursed $1,000 of its fee.

(d) If the Complainant fails to request that the three-member Panel be converted to a single-member Panel as provided in paragraph 9(c)(ii) above, the selection of the three-member Panel will be as follows: (i)

The Complainant must provide a list of three candidates and the Forum will endeavor to select a Panelist from that list as provided in Rule 6(e);

National Arbitration Forum UDRP Supplemental Rules

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Dispute Resolution for Domain Names Effective November 1, 2007

(ii)

The Forum will select a Panelist from its list of Panel members; and

(ii)

The Forum will supply to the parties a list of five candidates and will select a Panelist as provided in Rule 6(e).

(e) In cases where the Respondent requested a three-member Panel and the Complaint is withdrawn prior to the appointment of a Panel, the Respondent will be reimbursed $1,000 of its fee. 10. Impartiality and Independence (a) All Forum Panelists will take an oath to be neutral and independent. (b) A Panelist will be disqualified if circumstances exist that create a conflict of interest or cause the Panelist to be unfair and biased, including but not limited to the following: (i)

The Panelist has a personal bias or prejudice concerning a party or personal knowledge of disputed evidentiary facts;

(ii)

The Panelist has served as an attorney to any party or the Panelist has been associated with an attorney who has represented a party during that association;

(iii)

The Panelist, individually or as a fiduciary, or the Panelist’s spouse or minor child residing in the Panelist’s household, has a direct financial interest in a matter before the Panelist;

(iv)

The Panelist or the Panelist’s spouse, or a person within the third degree of relationship to either of them, or the spouse of such a person: (1) Is a party to the proceeding, or an officer, director, or trustee of a Party; or (2) Is acting as a lawyer or representative in the proceeding.

(c) A party may challenge the selection of a Panelist, provided that a decision has not already been published, by filing with the Forum a written request stating the circumstances and specific reasons for the disqualification. (d) A request to challenge must be filed in writing with the Director of Arbitration within five (5) Calendar Days of the date of receipt of the notice of the selection. National Arbitration Forum UDRP Supplemental Rules

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Dispute Resolution for Domain Names Effective November 1, 2007

(e) Provided a decision has not already been published by the selected Panelist, the Forum will promptly review the challenge and determine whether circumstances exist requiring Panelist disqualification in accord with this rule. 11. Communications Between Parties and the Panel (a) No party may directly communicate with a Panelist. (b) The parties may communicate with the Case Coordinator assigned to their proceeding by phone, fax, e-mail, or mail through the United States Postal Service. (c) Any request by a party for any type of action by the Forum or Panel must be communicated in writing to the Forum and the opposing party(s). 12. Withdrawal (a) Prior to Commencement (i)

Before the five (5) Calendar Day deficiency period described in Rule 4(b) expires, the Complainant may withdraw the Complaint without prejudice. A withdrawal request must be Submitted to the Forum in writing and signed by the Complainant. Upon the Forum’s receipt of the withdrawal request, the Complaint will be withdrawn without prejudice and the administrative proceeding will be terminated.

(ii)

The Complainant may re-initiate a proceeding, which was properly with drawn pursuant to Supplemental Rule 12(a)(i), within thirty (30) Calendar Days. A re-initiation fee of $100 must accompany the request to re-initiate the proceeding.

(iii)

If the Complaint was withdrawn pursuant to Supplemental Rule 12(a)(i) and if the Complainant does not re-initiate the Complaint at the end of thirty (30) Calendar Days, a subsequent Complaint will be treated as a new Complaint and must be accompanied by payment of the appropriate fees.

(b) After Commencement and Prior to Response: (i)

After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn by the Complainant. A withdrawal request must be Submitted to the Forum in writing and signed by the

National Arbitration Forum UDRP Supplemental Rules

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Dispute Resolution for Domain Names Effective November 1, 2007

Complainant. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(i) will be dismissed without prejudice. (ii)

After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn pursuant to a joint request made by both parties. A withdrawal request must be Submitted to the Forum in writing and signed by both Parties. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(ii) will be dismissed with prejudice.

(c) After Response is Received: After a Response that complies with Supplemental Rule 5 has been received by the Forum, but before a Panel decision is published, the Complaint may be withdrawn if both parties agree to the withdrawal. A withdrawal request must be Submitted to the Forum in writing and signed by both parties. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(iii) will be dismissed with prejudice. (d) The Complaint cannot be withdrawn after a Panel decision is published. 13. Panel Decisions Panel decisions will meet the requirements set forth in Paragraph 15 of the Rules and will be of a length that the Panel deems appropriate. 14. Correction of Clerical Mistakes. Clerical mistakes or clerical errors in the Panel’s decision arising from oversight or omission by the Panel may be corrected by the Director of Arbitration for the Forum. 15. Communication of Decision to Parties; Publication of Decision. (a) The Forum will publish the decision by Submitting the Panel’s decision to the parties, ICANN, and the Registrar as required by the Rules, and by publishing the full decision on a publicly accessible web site. (b) All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is Submitted before the Panel’s decision is published. 16. Conclusion of the Proceedings. Once the Panel’s decision is issued, the case is closed with the Forum. No further submissions or requests will be considered.

National Arbitration Forum UDRP Supplemental Rules

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Dispute Resolution for Domain Names Effective November 1, 2007

17. Fees (U.S. Dollars) (a) Fees: Number of Disputed Domain Names 1–2 3–5 6 – 10 11 – 15 16 or more

(i)

Single-Member Panel

Three-Member Panel

$1,300 $1,450 $1,800 $2,250 Please contact the Forum for a fee quote.

$2,600 $2,900 $3,600 $5,000 Please contact the Forum for a fee quote.

If a Complainant alleges that a single Respondent is using multiple aliases and makes such arguments in the Complaint for Panel consideration per Supplemental Rule 4(f), the filing fee shall be increased proportionately to the number of aliases involved. Please contact the Forum at [email protected] with the number of domain names and the number of aliases to obtain a fee quote.

(b) Participatory hearings: As stated in the Rules, in exceptional circumstances (for example, in the event an in-person hearing is held), the Forum may require the Parties to pay additional fees, which will be established by agreement of the Parties and the Director of Arbitration for the Forum prior to the appointment of the Panel. (c) Non-refundable fees: Fees to be paid to the Forum as provided in these Supplemental Rules must be paid in U.S. Dollars and are non-refundable, except as provided in Supplemental Rule 9(c)(iv) and 9(e). (d) Forms of payment Payment shall be made in one of the following forms: (i)

Credit card;

(ii)

Certified check; or

National Arbitration Forum UDRP Supplemental Rules

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Dispute Resolution for Domain Names Effective November 1, 2007

(iii)

Personal/business check.

(e) If any form of payment is cancelled, stopped, returned unpaid or dishonored, without prior written authorization from the Forum, the Forum reserves the right to charge a service fee of $50 for each cancelled, stopped, returned or dishonored payment. 18. Effective Date These Supplemental Rules apply to all cases filed on or after November 1, 2007.

National Arbitration Forum UDRP Supplemental Rules

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Dispute Resolution for Domain Names Effective November 1, 2007

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Domain ID: D155640095-LROR Domain Name: OLDSEMINOLEHEIGHTSFOUNDATION.ORG Created On: 17-Mar-2009 19: 30: 14 UTC Last Updated On: 17-May-2009 03: 54: 50 UTC Expiration Date: 17-Mar-2011 19: 30: 14 UTC Sponsoring Registrar: GoDaddy.com, Inc. (R91-LROR) Status: CLIENT DELETE PROHIBITED Status: CLIENT RENEW PROHIBITED Status: CLIENT TRANSFER PROHIBITED Status: CLIENT UPDATE PROHIBITED Registrant ID: GODA-061117418 Registrant Name: Christie Hess Registrant Organization: Seminole Heights Foundation Registrant Street1: 1011 E Broad St Registrant Street2: Registrant Street3: Registrant City: TAMPA Registrant State/Province: Florida Registrant Postal Code: 33604 Registrant Country: US Registrant Phone: +1.8132378808 Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] Admin ID: GODA-261117418 Admin Name: Christie Hess Admin Organization: Seminole Heights Foundation Admin Street1: 1011 E Broad St Admin Street2: Admin Street3: Admin City: TAMPA Admin State/Province: Florida Admin Postal Code: 33604 Admin Country: US Admin Phone: +1.8132378808 Admin Phone Ext.: Admin FAX:

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Admin FAX Ext.: Admin Email: [email protected] Tech ID: GODA-161117418 Tech Name: Christie Hess Tech Organization: Seminole Heights Foundation Tech Street1: 1011 E Broad St Tech Street2: Tech Street3: Tech City: TAMPA Tech State/Province: Florida Tech Postal Code: 33604 Tech Country: US Tech Phone: +1.8132378808 Tech Phone Ext.: Tech FAX: Tech FAX Ext.: Tech Email: [email protected] Name Server: NS21.DOMAINCONTROL.COM Name Server: NS22.DOMAINCONTROL.COM Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server:

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You Searched For: "southseminoleheightsfoundation.org" WHOIS Details: NOTICE: Access to .ORG WHOIS information is provided to assist persons in determining the contents of a domain name registration record in the Public Interest Registry registry database. The data in this record is provided by Public Interest Registry for informational purposes only, and Public Interest Registry does not guarantee its accuracy. This service is intended only for query-based access. You agree that you will use this data only for lawful purposes and that, under no circumstances will you use this data to: (a) allow, enable, or otherwise support the transmission by e-mail, telephone, or facsimile of mass unsolicited, commercial advertising or solicitations to entities other than the data recipient's own existing customers; or (b) enable high volume, automated, electronic processes that send queries or data to the systems of Registry Operator or any ICANN-Accredited Registrar, except as reasonably necessary to register domain names or modify existing registrations. All rights reserved. Public Interest Registry reserves the right to modify these terms at any time. By submitting this query, you agree to abide by this policy.

Domain ID: D156022879-LROR Domain Name: SOUTHSEMINOLEHEIGHTSFOUNDATION.ORG Created On: 29-Apr-2009 16: 01: 13 UTC Last Updated On: 29-Apr-2009 16: 01: 15 UTC Expiration Date: 29-Apr-2010 16: 01: 13 UTC Sponsoring Registrar: Tucows Inc. (R11-LROR) Status: CLIENT TRANSFER PROHIBITED Status: CLIENT UPDATE PROHIBITED Status: TRANSFER PROHIBITED Registrant ID: tutRGQjVDZt25hXJ Registrant Name: Sherrill Simons Registrant Organization: Na Registrant Street1: 911 E. Shadowlawn Avenue Registrant Street2: Registrant Street3: Registrant City: Tampa Registrant State/Province: FL Registrant Postal Code: 33603 Registrant Country: US Registrant Phone: +1.8137899849 Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] Admin ID: tuO0B6hHwY5GjOE8 Admin Name: Sherrill Simons Admin Organization: Na Admin Street1: 911 E. Shadowlawn Avenue Admin Street2: Admin Street3: Admin City: Tampa Admin State/Province: FL Admin Postal Code: 33603 Admin Country: US Admin Phone: +1.8137899849 Admin Phone Ext.: Admin FAX: Admin FAX Ext.:

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Admin Email: [email protected] Tech ID: tu4uI4atpTFxjF47 Tech Name: Domain Administrator Tech Organization: IPOWER, Inc. Tech Street1: 70 Blanchard Road Tech Street2: Tech Street3: Tech City: Burlington Tech State/Province: MA Tech Postal Code: 01803 Tech Country: US Tech Phone: +1.8885114678 Tech Phone Ext.: Tech FAX: +1.7812726550 Tech FAX Ext.: Tech Email: [email protected] Name Server: NS2.IPOWER.COM Name Server: NS1.IPOWER.COM Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server:

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You Searched For: "southeastseminoleheightsfoundation.org" WHOIS Details: NOTICE: Access to .ORG WHOIS information is provided to assist persons in determining the contents of a domain name registration record in the Public Interest Registry registry database. The data in this record is provided by Public Interest Registry for informational purposes only, and Public Interest Registry does not guarantee its accuracy. This service is intended only for query-based access. You agree that you will use this data only for lawful purposes and that, under no circumstances will you use this data to: (a) allow, enable, or otherwise support the transmission by e-mail, telephone, or facsimile of mass unsolicited, commercial advertising or solicitations to entities other than the data recipient's own existing customers; or (b) enable high volume, automated, electronic processes that send queries or data to the systems of Registry Operator or any ICANN-Accredited Registrar, except as reasonably necessary to register domain names or modify existing registrations. All rights reserved. Public Interest Registry reserves the right to modify these terms at any time. By submitting this query, you agree to abide by this policy.

Domain ID: D156022854-LROR Domain Name: SOUTHEASTSEMINOLEHEIGHTSFOUNDATION.ORG Created On: 29-Apr-2009 15: 59: 10 UTC Last Updated On: 29-Apr-2009 15: 59: 11 UTC Expiration Date: 29-Apr-2010 15: 59: 10 UTC Sponsoring Registrar: Tucows Inc. (R11-LROR) Status: CLIENT TRANSFER PROHIBITED Status: CLIENT UPDATE PROHIBITED Status: TRANSFER PROHIBITED Registrant ID: tuc59YHaptmuizJr Registrant Name: Sherrill Simons Registrant Organization: Na Registrant Street1: 911 E. Shadowlawn Avenue Registrant Street2: Registrant Street3: Registrant City: Tampa Registrant State/Province: FL Registrant Postal Code: 33603 Registrant Country: US Registrant Phone: +1.8137899849 Registrant Phone Ext.: Registrant FAX: Registrant FAX Ext.: Registrant Email: [email protected] Admin ID: tuscrARLlc5erRLw Admin Name: Sherrill Simons Admin Organization: Na Admin Street1: 911 E. Shadowlawn Avenue Admin Street2: Admin Street3: Admin City: Tampa Admin State/Province: FL Admin Postal Code: 33603 Admin Country: US Admin Phone: +1.8137899849 Admin Phone Ext.: Admin FAX: Admin FAX Ext.:

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Admin Email: [email protected] Tech ID: tu7rDfMvfXCB3O4R Tech Name: Domain Administrator Tech Organization: IPOWER, Inc. Tech Street1: 70 Blanchard Road Tech Street2: Tech Street3: Tech City: Burlington Tech State/Province: MA Tech Postal Code: 01803 Tech Country: US Tech Phone: +1.8885114678 Tech Phone Ext.: Tech FAX: +1.7812726550 Tech FAX Ext.: Tech Email: [email protected] Name Server: NS2.IPOWER.COM Name Server: NS1.IPOWER.COM Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server: Name Server:

This database contains only .ORG domains. Other associated WHOIS resources include: Look up other TLDs (.COM, .NET, .INFO, .EDU, etc.) at InterNIC IANA's list of country-code TLDs and registrars * If you have performed a WHOIS query and have received an error message, please see FAQs 4 through 7 on the page WHOIS Lookup Service Questions. We regret any inconvenience. Registrants Find a Registrar >>

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6/24/2009 10:30 AM

Foundation To Fill In Gaps

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Foundation To Fill In Gaps

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Print AD VE R T I S E ME N T

Foundation To Fill In Gaps AD VE R T I S E ME N T

By KATHY STEELE [email protected] Published: March 25, 2009

SEMINOLE HEIGHTS - The idea floated around for a couple of years, in moments of, "Well, what if we did this?" or "Do we go ahead with this?" A workshop last month plotting out Seminole Heights' future growth crystallized the obvious. The neighborhood could use a nonprofit foundation if only to fill in funding gaps the city cannot bridge. So Christie Hess, Susan Long and Randy Baron incorporated the Seminole Heights Foundation with the state and filed for nonprofit status as a charity with the Internal Revenue Service.

MORE FROM THIS TOPIC • Money 911: As April 15 Approaches, Keep Tax Breaks In Mind • Gazebo Coming Soon • Accident Shuts Down Florida Avenue In Seminole Heights • Residents Hope To Take Back Streets • Heights Plans Need More Tweaking • City Sets Seminole Heights Tour • Pilot Project To Study Seminole Heights • Seminole Heights To Be Proving Ground

Hess is chairwoman of crime awareness for Old Seminole Heights Neighborhood Association; Long and Baron are past presidents of the association. But the new foundation is not affiliated with the neighborhood 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-member board of directors. The first appointment is Sherry Genovar-Simons, president of the Southeast Seminole Heights Civic Association.

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

Gandy area business owners oppose Crosstown extension

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

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The foundation's mission is to search out resources and funding for projects within the boundaries of the three Seminole Heights neighborhoods - Old Seminole, Southeast Seminole and South Seminole. Potential projects for the foundation might include crosswalks, gateways into the neighborhood, streetlights, signs and sidewalks. The foundation also could partner with the city in securing grants that require matching funds. Seminole Heights is in the second year of a pilot project to craft new zoning codes that during the next 20 to 50 years will guide the neighborhood's growth. Known as form-based zoning, the codes emphasize the size and appearance of buildings as well as the layout of streets and public spaces. The intent is to create more mixed-use, pedestrian-friendly neighborhoods. Traditional zoning generally separates areas based on land use and decisions of public health and safety, placing shops, homes and factories in different districts.

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The city's zoning staff is working on drafting the codes for review by city council members by the end of the year. Workshops have been held to get public input. "Form-based zones will go a long way, but some parts will need help," Hess said, as in financial help for even fairly small things such as trash cans, signs and benches. "That's where the foundation would fit in," she said. "We can do things that the neighborhood association doesn't want to do or can't do." And the reality, she said, is the city "is not going to pick up" some projects. The organizers are asking for projects or goals for Seminole Heights Foundation. Call Hess at (813) 237-8808 or e-mail info@seminoleheights foundation.org or chess@sem inoleheightsfoundation.org. Reporter Kathy Steele can be reached at (813) 259-7652. MORE FROM THIS CHANNEL

4/14/2009 10:02 AM

Foundation To Fill In Gaps

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TOPICS IN THIS ARTICLE internal revenue service • form based zoning • seminole heights • neighborhood group • south seminole • neighborhood association • popularity contest • susan long • crime awareness • nonprofit status • nonprofit foundation • charitable status • pilot project • legal expertise • civic association • new foundation • member board • matching funds • hess • nonprofit organizations

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4/14/2009 10:02 AM

Seminole Heights Foundation

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4/14/2009 10:00 AM

Seminole Heights Foundation, Inc.

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222 F.3d 895 222 F.3d 895, 141 Lab.Cas. P 59,055, 25 Employee Benefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048 (Cite as: 222 F.3d 895)

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95k116(1) k. In General. Most 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 CounterClaimants. No. 99-13836. Aug. 15, 2000. Corporation sued former employee for breach of non-compete agreement and trade name infringement. The United States District Court for the Northern District of Georgia, No. 96-00268-CV-WBH-1,Willis B. Hunt, Jr., J., granted summary judgment for employer, and employee appealed. The Court of Appeals, Alarcón, Circuit Judge, sitting by designation, held that: (1) noncompete provision in employment contract was enforceable; (2) employer's alleged breach of employment agreement did not excuse employee's failure to comply with non-competition provision where employee failed to give employer contractually required notice and opportunity to cure; and (3) trade name used by employee in competing business infringed employer's name. Affirmed. West Headnotes [1] Contracts 95

116(1)

95 Contracts 95I Requisites and Validity 95I(F) Legality of Object and of Consideration 95k115 Restraint of Trade or Competition in Trade 95k116 In General

Cited Cases Although non-competition covenants are generally disfavored under Pennsylvania law, exceptions to this rule exist for covenants that protect (1) buyer of goodwill of business and (2) goodwill acquired through efforts of employee. [2] Contracts 95

103

95 Contracts 95I Requisites and Validity 95I(F) Legality of Object and of Consideration 95k103 k. Contravention of Law in General. Most Cited Cases Contracts 95

108(1)

95 Contracts 95I Requisites and Validity 95I(F) Legality of Object and of Consideration 95k108 Public Policy in General 95k108(1) k. In General. Most Cited Cases For contract to be deemed unenforceable as illegal or contrary to public policy, its purpose or object must be contrary to law or policy of state. [3] Contracts 95

116(1)

95 Contracts 95I Requisites and Validity 95I(F) Legality of Object and of Consideration 95k115 Restraint of Trade or Competition in Trade 95k116 In General 95k116(1) k. In General. Most Cited Cases Under Pennsylvania law, non-compete provision of corporate president's employment contract was not rendered unenforceable as illegal or contrary to public policy by parent corporation's price fixing

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violation. [4] Contracts 95

[6] Contracts 95 143(4)

95 Contracts 95II Construction and Operation 95II(A) General Rules of Construction 95k143 Application to Contracts in General 95k143(4) k. Subject, Object, or Purpose as Affecting Construction. Most Cited Cases Contracts 95

147(1)

95 Contracts 95II Construction and Operation 95II(A) General Rules of Construction 95k147 Intention of Parties 95k147(1) k. In General. Most Cited Cases Contracts 95

154

95 Contracts 95II Construction and Operation 95II(A) General Rules of Construction 95k151 Language of Instrument 95k154 k. Reasonableness of Construction. Most Cited Cases In construing contract, intention of parties is paramount and court will adopt interpretation which under all circumstances ascribes most reasonable, probable, and natural conduct of parties, bearing in mind objects manifestly to be accomplished. [5] Contracts 95

147(2)

95 Contracts 95II Construction and Operation 95II(A) General Rules of Construction 95k147 Intention of Parties 95k147(2) k. Language of Contract. Most Cited Cases If language appearing in written agreement is clear and unambiguous, parties' intent is to be discerned solely from plain meaning of words used.

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143.5

95 Contracts 95II Construction and Operation 95II(A) General Rules of Construction 95k143.5 k. Construction as a Whole. Most Cited Cases Writings which comprise contractual agreement must be interpreted as a whole. [7] Contracts 95

202(2)

95 Contracts 95II Construction and Operation 95II(C) Subject-Matter 95k202 Trade and Business 95k202(2) k. Restriction of Competition. Most Cited Cases Corporations 101

308(3)

101 Corporations 101X Officers and Agents 101X(C) Rights, Duties, and Liabilities as to Corporation and Its Members 101k308 Compensation 101k308(3) k. Contracts or Resolutions Providing Therefor. Most Cited Cases Under Pennsylvania law, alleged constructive discharge of corporate president did not release him from non-compete agreement; terms of agreement, allowing avoidance only for employer's failure to cure breach after notice or upon termination “by employer,” indicated parties' intent to foreclose sort of unintentional invalidation that could result from constructive discharge. [8] Contracts 95

202(2)

95 Contracts 95II Construction and Operation 95II(C) Subject-Matter 95k202 Trade and Business 95k202(2) k. Restriction of Competition. Most Cited Cases Even if employer materially breached employment contract, breach did not excuse employee's failure

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to comply with non-competition provision where employee failed to give employer contractually required notice and opportunity to cure breach. [9] Contracts 95

202(2)

95 Contracts 95II Construction and Operation 95II(C) Subject-Matter 95k202 Trade and Business 95k202(2) k. Restriction of Competition. Most Cited Cases Contracts 95

318

95 Contracts 95V 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 in breach of employment agreement, communicated orally, in writing and through circumstances, was insufficient to satisfy contractual notice provision, which required written notice to be sent in particular manner to particular location, and thus did not relieve employee of obligations under agreement's non-compete provision. [10] Contracts 95

202(2)

95 Contracts 95II Construction and Operation 95II(C) Subject-Matter 95k202 Trade and Business 95k202(2) k. Restriction of Competition. Most Cited Cases Contracts 95

318

95 Contracts 95V 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 of breach provision would not have been futile, and

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thus employee who failed to comply was not relieved of obligations under contract's non-compete provision, absent showing that compliance would not have been useful to employer; employee failed to pursue available remedy for one breach, failed to give employer meaningful opportunity to cure another, and failed to give employer time to prepare for his departure following third, allegedly uncurable breach. [11] Trademarks 382T

1200(2)

382T Trademarks 382TVI Nature, Extent, and Disposition of Rights 382Tk1197 Transfer or Sale; Assignments 382Tk1200 Construction and Operation 382Tk1200(2) k. Duties, Rights, and Violations. Most Cited Cases (Formerly 382k116 Trade Regulation) Corporation, which acquired rights to acquired corporation's trade name at time of acquisition, did not subsequently lose those rights through criminal conduct or breach of associated employment contract, absent provision for such loss in asset purchase agreement. [12] Trademarks 382T

1691

382T Trademarks 382TIX Actions and Proceedings 382TIX(E) Trial and Judgment 382Tk1682 Questions of Law or Fact 382Tk1691 k. Similarity; Likelihood of Confusion. Most Cited Cases (Formerly 382k704 Trade Regulation) Although likelihood of confusion generally is question of fact, in trademark infringement action, it may be decided as matter of law. [13] Trademarks 382T

1081

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 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 there is likelihood of confusion, and hence trademark infringement, are: (1) strength of plaintiff's mark; (2) similarity between plaintiff's mark and allegedly infringing mark; (3) similarity between products and services offered by plaintiff and defendant; (4) similarity of sales methods; (5) similarity of advertising methods; (6) defendant's intent, e.g., does the defendant hope to gain competitive advantage by associating his product with plaintiff's established mark; and (7) actual confusion. [14] Trademarks 382T

1086

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1083 Nature of Confusion 382Tk1086 k. Actual Confusion. Most Cited Cases (Formerly 382k350.1 Trade Regulation) Trademarks 382T

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There was a likelihood of confusion between trade names “Hinely Aluminum, Inc.” and “Hinely Industries, Inc.”, and thus defendant's use of former name infringed plaintiff's rights in latter one; names were similar, companies were in same business, and there was ample evidence of actual confusion. *896 Richard N. Hubert,Chamberlain, Hrdlicka, White, Williams & Martin, Atlanta, GA, for Defendants-Counter-Claimants-Appellants. James N. Boudreau, Morgan, Lewis & Bockius LLP, Philadelphia, PA, for Alliance Metals, Inc., of Atlanta. *897 Appeal from the United States District Court for the Northern District of Georgia. Before BIRCH, BARKETT and ALARCÓN Circuit Judges.

FN*

,

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

1096 ALARCÓN, Circuit Judge:

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1093 Relationship Between Marks 382Tk1096 k. Particular Marks, Similarity or Confusion Involving. Most Cited Cases (Formerly 382Tk1096(2), 382k350.1 Trade Regulation) Trademarks 382T

1103

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1100 Relationship Between Goods or Services Underlying Marks 382Tk1103 k. Particular Goods and Services, Relationship Between. Most Cited Cases (Formerly 382k350.1 Trade Regulation)

Robert F. Hinely, Jr., (“Hinely”) appeals from an order of summary judgment in favor of his former employer, Alliance Metals, Inc., of Atlanta (“Alliance Atlanta”), in an action Alliance Atlanta brought against Hinely for breach of his employment contract and trademark infringement. We have jurisdiction under 28 U.S.C. § 1291. We review the district court's grant of summary judgment de novo, applying the same standards used by the district court and viewing the facts in the light most favorable to the nonmoving party. See Jones v. Bill Heard Chevrolet, Inc., 212 F.3d 1356, 1360 (11th Cir.2000). Because the district court did not err in concluding Hinely was obligated to comply with the non-competition provision of his employment contract or in finding no genuine issue of material fact as to whether Hinely had infringed Alliance Atlanta's right to the trade name Hinely Aluminum,

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Inc., we affirm. I In March 1994, Alliance Atlanta, a wholly owned subsidiary of Alliance Metals, Inc., acquired the assets of Hinely's company, Hinely Aluminum, Inc., for $500,000 in cash. Among the assets acquired were the Hinely Aluminum, Inc., trade name and “all goodwill relating to the Business as a going concern.” Pursuant to a contractual condition of the acquisition, Alliance Atlanta and Hinely also entered into a five-year employment contract under which Hinely was to serve as Alliance Atlanta's president. In that position, Hinely reported directly to Bradley Evans (“Evans”), chairman and sole shareholder of both Alliance Atlanta and Alliance Metals, 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 Alliance Atlanta's net sales and net profits as incentive compensation. Under the terms of the employment contract, Hinely was entitled to review any information on which the calculation of his incentive compensation was based. The contract further provided that any dispute about the calculation of Incentive Compensation ..., the amount due the Employee, or any other matter described herein ... shall be promptly referred to a “Big Six” accounting firm that is mutually acceptable to the Employer and the Employee.... Such accounting firm shall be required to render a decision as to the appropriateness of the objections raised by the Employee within thirty (30) days after the submission of the dispute, and any such decision shall be final and binding on both parties. [1] The employment contract also contained a noncompetition provision providing that the Employee hereby agrees with Employer that while in the Employer's employ and through the

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period ending two (2) years after the termination of his employment hereunder for any reason, he will not (either for himself directly or in the service of or on behalf of any other person, firm, partnership, association, corporation or other business entity) ... [e]ngage in or render any services to, or be employed by, any business that competes in the Territory with the Business of the Employer, in the capacity of officer, manager or executive employee, director, consultant or shareholder. *898 The employment contract provided that it would be “governed by, and construed and enforced in accordance with the laws of the Commonwealth of Pennsylvania.” Although non-competition covenants are generally disfavored under Pennsylvania law, exceptions to this rule exist for covenants such as this one that protect the buyer of the goodwill of a business, see Piercing Pagoda, Inc. v. Hoffner, 465 Pa. 500, 351 A.2d 207, 210 (1976), and the goodwill acquired through the efforts of an employee, see Sidco Paper Co. v. Aaron, 465 Pa. 586, 351 A.2d 250, 252-53 (1976). Hinely received no incentive compensation for the 1994 fiscal year. According to Alliance Atlanta, Hinely was not entitled to any incentive compensation because the company sustained a net loss that year. Hinely suspected Alliance Atlanta had manipulated its records to hide Alliance Atlanta's net profit and eliminate Hinely's incentive compensation. Between February and May 1995, he repeatedly requested, through his attorney and accountant, information upon which the calculation of his incentive compensation was based. Although Hinely asserts that Alliance Atlanta failed to comply fully with its contractual duty to provide such information, he never pursued arbitration as required by the employment contract. On February 17, 1995, Hinely came to suspect the formation of a price fixing agreement between Evans and Alliance Atlanta's primary competitor, Wrisco Industries, Inc. On that day, Evans faxed Hinely a new price list with a cover note stating

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“[n]ew prices for March no exceptions let me know your feelings.” Evans later told Hinely that Wrisco Industries, Inc., was charging the same prices. On advice of his personal counsel, Hinely reported his suspicions to the United States Department of Justice on February 27, 1995. The Department of Justice initiated an investigation of Evans and Alliance Metals, Inc., for violations of the Sherman Act. Hinely continued to work at Alliance Atlanta and cooperated with the Department of Justice throughout the investigation. On August 14, 1995, John Webb, the executive vice president of Alliance Metals, Inc., hired Jack Barton to be the new sales manager of Alliance Atlanta's Texas office. As sales manager, Barton was to oversee day-to-day operations of that office. In an affidavit Hinely filed in opposition to Alliance Atlanta's motion for a preliminary injunction, Hinely alleged that he revealed he had been cooperating with the Department of Justice at an August 25, 1995, meeting with Alliance Atlanta's lawyers. On September 18, 1995, Webb told Hinely he no longer had responsibility for the operations of the Texas office. Webb told employees in the Texas office that Hinely was the cause of the troubles Alliance Atlanta was having with the Department of Justice. Hinely's salary and title were unaffected by what happened in the Texas office. In a September 28, 1995, letter to all Alliance Atlanta employees, Evans admitted violating the Sherman Act and stated that he and Alliance Metals, Inc., were cooperating with the Department of Justice. On September 29, 1995, the Department of Justice filed a criminal information charging Evans and Alliance Metals, Inc., with violations of Sherman Act, 15 U.S.C. § 1. In a letter to Evans dated October 2, 1995, Hinely stated that his own “employment with Alliance Metals of Atlanta, Inc. is terminated effective immediately.” He asserted in the letter that Alliance

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Atlanta had breached the employment contract and constructively discharged him. Hinely alleged that he was constructively discharged because (1) Alliance Atlanta had engaged in price fixing; (2) Alliance Atlanta denied him incentive compensation he was due for fiscal year 1994; (3) Alliance Atlanta would not supply him with information regarding the calculation of his incentive compensation; (4) Alliance Atlanta *899 relieved him of his duties at the Texas office; and (5) Alliance Atlanta blamed him for the company's legal troubles. On October 6, 1995, Hinely incorporated a competing enterprise offering similar products in the same territory serviced by Alliance Atlanta. He called his new venture Hinely Industries, Inc. On February 2, 1996, Alliance Atlanta filed this action, alleging breach of contract and trademark infringement. On May 28, 1996, the district court granted Alliance Atlanta's motion for a preliminary injunction prohibiting Hinely's new venture from going forward under the name Hinely Industries, Inc. Hinely subsequently renamed his new company Robert & Sons Aluminum, Inc. On August 22, 1997, after extensive discovery, Alliance Atlanta filed a motion for summary judgment on its breach of contract and trademark infringement claims. On February 19, 1998, the district court granted partial summary judgment in favor of Alliance Atlanta, finding Alliance Atlanta was entitled to summary judgment on the claim that Hinely breached the non-competition provision of his employment contract. The district court also concluded there was no genuine issue of material fact as to Alliance Atlanta's ownership of rights to the Hinely Aluminum, Inc., trade name or as to the likelihood of confusion between that name and Hinely Industries, Inc. On September 22, 1998, the district court denied Hinely's motion for reconsideration. On July 23, 1999, the parties stipulated to judgment on the remaining issues, including the amount of damages. The district court entered a final judgment in favor

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of Alliance Atlanta for $291,633, on August 31, 1999. Hinely filed a timely notice of appeal on September 28, 1999. II A Hinely does not dispute that his actions were contrary to the terms of the non-competition provision of his employment contract. Instead, he contends the district court erred in concluding he was obligated to comply with the non-competition provision. Hinely first argues that he was not obligated to comply with the non-competition provision because Alliance Atlanta's price fixing rendered his entire employment contract unenforceable as illegal and contrary to public policy. [2][3] For a contract to be deemed unenforceable as illegal or contrary to public policy, its purpose or object must be contrary to a law or policy of the state. See In re Mohler's Estate, 343 Pa. 299, 22 A.2d 680, 682 (1941) (“[T]here is general consent that contracts entered into for the purpose of rewarding criminal acts or effectuating some illegal object are void and the courts strike such contracts down.”); see also Zlotziver v. Zlotziver, 355 Pa. 299, 49 A.2d 779, 781 (1946) (“[A] contract is illegal if it has for its object the procurement of a divorce, as where the husband or the wife agrees to institute, or not to defend, a suit for that purpose.”). An agreement between Alliance Metals, Inc., and Wrisco Industries, Inc., to fix prices, for example, would be an unenforceable contract. See Ford Motor 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, is illegal.’ ”) (quoting Restatement (First) of Contracts § 517 (1932)) (emphasis added); see alsoRestatement (Second) of Contracts § 186(1) & (2) (1979) (“A promise is unenforceable on grounds of public policy if it is unreasonably in restraint of

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trade. A promise is in restraint of trade if its performance would limit competition in any business....”). The contract in issue here, however, had as its object the employment of Hinely as Alliance Atlanta's president, not price fixing. Additionally, Hinely incorrectly assumes that, if any term of his employment contract was unenforceable, that would necessarily render the entire contract unenforceable.*900 See Restatement (Second) of Contracts Chapter 8, Topic 1 introductory note (1979) (“Even where both parties make promises, the analysis usually begins with the question of the enforceability of one promise or term of [the contract]. Sometimes the unenforceability of that promise or term will result in the unenforceability of other promises and the denial of any relief to either party. The law, however, is not necessarily so severe.”); id. at § 178 (discussing “When a Term is Unenforceable on Grounds of Public Policy”). The “General Provisions” section of Hinely's employment contract expressly provided for the severability of any “particular provision of [the contract] adjudicated to be invalid or unenforceable.” Alliance Atlanta did not obtain a judgment against Hinely for breach of contract based on a refusal or failure by him to perform illegal acts in fulfillment of his contractual duties as president. Rather, the district court entered judgment for Alliance Atlanta based on Hinely's failure to comply with the noncompetition provision. Hinely does not challenge on appeal the district court's conclusion that the non-competition provision was enforceable. Hinely's argument that Alliance Atlanta's price fixing rendered the non-competition provision unenforceable as illegal and contrary to public policy therefore fails. B Hinely next argues that the non-competition provision was null and void by its own terms. In support of this argument, he points to the passage within the non-competition provision providing that it

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shall be null and void in the event Employee is terminated by Employer without cause or if the Employer materially breaches the terms of this agreement and fails to cure any such material breach within thirty (30) days after notice from the Employee specifying the breach and requiring it to be cured. Hinely contends that the non-competition provision was null and void because (1) he was constructively discharged from Alliance Atlanta; and (2) Alliance Atlanta materially breached the employment contract. 1 Hinely maintains that he was constructively discharged and that the constructive discharge rendered the non-competition provision null and void by its own terms as a “terminat[ion] by Employer without cause.” In rejecting Hinely's constructive discharge defense, the district court found that Hinely failed to meet his burden of “produc[ing] evidence from which a reasonable finder of fact could conclude that his working conditions were so intolerable that a reasonable person in his position would be compelled to resign.” See Highhouse 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 the question whether a constructive discharge constituted a “terminat[ion] by Employer without cause.” We may, however, affirm the grant of summary judgment on any ground fairly supported by the record. See Rozar v. Mullis, 85 F.3d 556, 564 (11th Cir.1996). Interpretation of a contract poses a question 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 prohibited predicating breach of an employment contract on a constructive discharge. Courts in other states, however, have recognized that a constructive

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discharge may constitute a breach of an employment contract permitting termination only for cause. See, e.g., Tennyson v. School Dist., 232 Wis.2d 267, 606 N.W.2d 594, 602 (1999) ( “Where, as here, an employer's written policy guarantees its employees that they will not be discharged without cause, a constructive discharge without cause constitutes a breach of contract.”); Turner v. AnheuserBusch, 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 a breach of an express or implied contract of employment.”); Hammond v. Katy Indep. Sch. Dist., 821 S.W.2d 174, 177 (Tex.App.1991). [4][5][6] To determine the effect of a constructive discharge on the rights and duties of the parties in this case, we must look to the contract in issue. See Warehime v. Warehime, 722 A.2d 1060, 1072 (Pa.Super.1998) ( “When the parties to an agreement have chosen to address a particular aspect of their legal relationship by contract, it is the terms of the agreement, as manifestly expressed, that is to determine the rights and liabilities of the parties.”); see also Turner, 32 Cal.Rptr.2d 223, 876 P.2d at 1030 (“Standing alone, constructive discharge is neither a tort nor a breach of contract, but a doctrine that transforms what is ostensibly a resignation into a firing. Even after establishing constructive discharge, an employee must independently prove a breach of contract or tort....”). “ ‘In construing a contract, the intention of the parties is paramount and the court will adopt an interpretation which under all circumstances ascribes the most reasonable, probable, and natural conduct of the parties, bearing in mind the objects manifestly to be accomplished.’ ” 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 appearing in the written agreement is clear and unambiguous, the parties' intent is to be discerned solely from the plain meaning of the words used. See id. “ ‘[W]ritings which comprise an agreement must be interpreted as a whole.’ ” Id. (quoting Village Beer,

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475 A.2d at 121). The non-competition provision of the employment contract reads as follows: 10. Non-Competition. A. The Employee hereby acknowledges the following: (1) That, as a shareholder of Hinely Aluminum, Inc., he has received substantial benefit from the purchase by Employer of substantially all of the assets of Hinely Aluminum, Inc. pursuant to the Asset Purchase Agreement; (2) That Employee's position with Employer places him in a position of confidence and trust with the customers and Employees of Employer and allows him access to “confidential or proprietary information” (as defined in paragraph 11 hereof) of the Employer; (3) That the type and periods of restrictions imposed by the covenants in this Section 10 are fair and reasonable and such restrictions will not prevent Employee from earning a livelihood; and (4) That the business of the Employer is, in general, a highly competitive business. B. Having acknowledged the foregoing matters in Section 10A above, the Employee hereby agrees with Employer that while in the Employer's employ and through the period ending two (2) years after the termination of his employment hereunder for any reason, he will not (either for himself directly or in the service of or on behalf of any other person, firm, partnership, association, corporation or other business entity): (1) Solicit, contact, call upon, communicate with or attempt to communicate with any customer (or prospective customer) of the Employer with whom Employee has had any contact during the two-year period immediately preceding the

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termination of his employment with the Employer, for the purpose of acquiring or obtaining the fabrication, distribution or sale of aluminum or other metal products from any business other than Employer; (2) Solicit, divert or hire away, or attempt to solicit, divert or hire away, any person (other than his sons) then *902 employed by the Employer (or employed at any time by the Employer in the two years prior to the termination of Employee's employment); (3) Engage in, or render any services to, or be employed by, any business that competes in the Territory with the Business of the Employer, in the capacity of officer, manager or executive employee, director, consultant or shareholder; (4) Invest in, loan money to, or guarantee all or any part of the obligations of, any person, firm, partnership, association, corporation or other business that competes in the Territory with the Business of the Employer.... (D) Paragraph 10(B) above shall be null and void in the event Employee is terminated by Employer without cause or if the Employer materially breaches the terms of this agreement and fails to cure any such material breach within thirty (30) days after notice from the Employee specifying the breach and requiring it to be cured. (emphasis added). [7] The language of the non-competition provision demonstrates that Alliance Atlanta bargained for a commitment from Hinely that he would not start, participate in, or assist any competitive enterprise for two years after his departure from Alliance Atlanta. The sweeping nature of this provision, including the fact that Hinely was obligated under paragraph 10(B) regardless of the reason for his termination, demonstrates that Alliance Atlanta bargained for assurance that Hinely would not leave Alliance Atlanta and appropriate for himself the

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business he had helped Alliance Atlanta build. The express terms of the two narrow “escape clauses” included in paragraph 10(D) indicate that Alliance Atlanta intended to foreclose the possibility that it might inadvertently forfeit the bargainedfor protection of the non-competition provision. One of the two escape clauses provided that the non-competition provision would become null and void if, after thirty days notice to Alliance Atlanta and its lawyer, Alliance Atlanta failed to cure a material breach of the employment contract. The inclusion of the thirty-day notice requirement manifests an intent to foreclose inadvertent invalidation of the non-competition provision by an unrecognized material breach. A “terminat[ion] by Employer without cause” was the second escape clause the parties included in paragraph 10(D). We think it significant that the parties inserted the language “by Employer” here instead of using a more common and generic phrasing like “termination without cause” or “termination for other than cause.” The latter phrasing was used elsewhere in the employment contract FN1 itself. A “terminat[ion] by Employer without cause,” as opposed to a “termination without cause” or “termination for other than cause,” contemplates a conscious choice by Alliance Atlanta to terminate Hinely without cause in order to free him from his contractual duty not to compete. FN1. Paragraph 9(C) of the employment contract provided: C. Payments in the Event of Termination for Other than Cause. If the Employee is terminated for reason other than cause, compensation payments shall continue for the remainder of the five (5) year Employment Period on the same basis as established in paragraph 4 hereof, including Base Salary, Incentive and Additional Incentive Compensation.

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We conclude that the language “terminat[ion] by Employer without cause” manifests the intent to foreclose the sort of unintentional invalidation of the non-competition provision that could result from a constructive discharge. See EEOC v. Massey Yardley Chrysler Plymouth, Inc., 117 F.3d 1244, 1250-51 (11th Cir.1997) (noting that a showing of employer willfulness is not required to establish a constructive discharge); see also *903Pittman v. Hattiesburg Mun. Separate Sch. Dist., 644 F.2d 1071, 1077 (5th Cir.1981) (stating that, to establish a constructive discharge, an employee does not need to prove that an employer subjectively intended to force the employee to resign); Bourque v. Powell Elec. Mfg. Co., 617 F.2d 61, 65 (5th Cir.1980) (noting that the conditions endured, rather than the employer's state of mind, are relevant to the constructive discharge inquiry). We therefore hold that an alleged constructive discharge would not constitute a “terminat [ion] by Employer without cause” so as to render null and void the non-competition provision of the employment contract. 2 Hinely next contends that he was not obligated to comply with the non-competition provision because Alliance Atlanta materially breached the employment contract by engaging in illegal price fixing, by depriving Hinely of his supervisory responsibility for the Texas office, and by failing to account fully for denying Hinely incentive compensation. In entering summary judgment for Alliance Atlanta on its breach of contract claim, the district court concluded that, even if Alliance Atlanta had materially breached the employment contract, the breach did not excuse Hinely's failure to comply with the noncompetition provision because Hinely failed to give Alliance Atlanta the requisite notice and opportunity to cure the breach. i

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[8] Hinely argues that Alliance Atlanta breached the employment contract before he did and that the company's antecedent breach excused him from any further performance under the contract, including adherence to the non-competition provision. If we were to so hold, we would effectively render meaningless contractual “notice and cure” requirements like the one included in the non-competition provision here. Hinely cites no Pennsylvania authority to support the adoption of such a rule, and we decline to do so. See Bethlehem Steel Corp. v. MATX, Inc., 703 A.2d 39, 42 (Pa.Super.1997) (“A court may not disregard a provision in a contract if a reasonable meaning may be ascertained therefrom. In construing a contract, each and every part of it must be taken into consideration and given effect, if possible ....”) (alterations, quotations, and citation omitted); see also In re Colony Square Co., 843 F.2d 479, 481 (11th Cir.1988) (rejecting a litigant's claim of breach because that litigant failed to comply with a contractual “notice and cure” provision) (citing Orkin Exterminating Co. v. Stevens, 130 Ga.App. 363, 203 S.E.2d 587, 593 (1973) (“The failure to give notice as required ... is an independent bar to the maintenance of a successful cause of action on the contract.”)). ii [9] In Hinely's brief filed in opposition to Alliance Atlanta's motion for summary judgment, he conceded that he “did not inform Alliance Atlanta of their breach prior to October 2nd.” On appeal, however, Hinely argues that he “effectively” gave Alliance Atlanta notice of the alleged material breaches well before he left Alliance Atlanta and started his competing venture. In support of this argument, Hinely contends (1) that Alliance Atlanta was aware of the price fixing investigation and his role in prompting it; (2) that a May 31, 1995, letter from Hinely's lawyer to Alliance Atlanta's lawyer notified them that the company was not in compliance with the employment contract because it failed to provide information relating to the denial of incentive compensation; and (3) that, on learning that

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he would no longer have supervisory responsibility for the Texas office, he orally informed Webb that he considered it a breach of his employment contract. “When parties define the terms used in a contract, those definitions govern the construction of the contract.” See *904Eannarino v. Eannarino, 294 Pa.Super. 81, 439 A.2d 760, 761 (1982); see also Colony Square Co., 843 F.2d at 481 (“Contracts which set forth the manner in which a party must exercise a remedy in the event of a default must be strictly adhered to.... Accordingly, when a default clause contains a notice provision, it must be strictly followed ....”) (citations omitted). Here, the “General Provisions” section of the employment contract included the following definition of the term “notice:” All notices, requests, and other communications to any party shall be in writing and sufficient if delivered personally, sent by registered or certified mail, postage prepaid, return receipt requested, or by nationally recognized overnight courier service, addressed as follows: If to the Employer, at: Alliance Metals, Inc. of Atlanta [address omitted] With a copy to: C. Barry Buckley, Esquire [address omitted] Hinely failed to demonstrate that he sent written notice to Alliance Atlanta and Buckley specifying a material breach and requiring it to be cured. The May 31, 1995, letter was addressed and sent only to Buckley and not to Alliance Atlanta. That letter read: Pursuant to paragraph (5)(b) of the Employment Agreement between Alliance Metals and Robert F. Hinely, Jr., Alliance is to provide Robert Hinely with copies of all information and materials he requires to complete his review of Alliance's calculation of Incentive Compensation. Robert's accountant, Barry Franklin, has yet to

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receive any response to his February 9, 1995, request for information from Mr. Gerald G. Storch, Alliance's accountant, in connection with Robert's review of the calculation of Incentive Compensation. Additionally, I have not received any response to my phone calls and letters to you regarding this matter. I would greatly appreciate it if you would favor me with a response as to the status of this matter as soon as possible. Even if the letter had been sent to Alliance Atlanta in addition to Buckley, it stops short of “specifying the breach and requiring it to be cured” as is necessary under the notice requirement of the noncompetition provision. We conclude that Hinely failed to demonstrate that he gave notice of any of the alleged breaches sufficient to satisfy the requirement of notice as that term is defined in the employment contract. iii Hinely next argues that notice would have been futile and that he was therefore excused from complying with the notice requirement of the noncompetition provision. Alliance Atlanta contends that Hinely did not raise the defense of futility before the district court and that this court should therefore decline to consider this defense. Hinely's brief in opposition to the motion for summary judgment included the following argument: Alliance Atlanta argues that Hinely did not give Alliance Atlanta an opportunity to cure their breach.... Even if Hinely was required to give Alliance Atlanta an opportunity to cure its breach, the damage resulting from the price-fixing had already occurred, making the breach “incurable” because damages could not have been mitigated at that point. Regarding the breach resulting from the reduction of Hinely's employment duties, after Hinely sent his October 2nd [resignation] letter to Alliance Atlanta, Alli-

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ance Atlanta failed to notify Hinely that it planned to cure the breach by reinstating his Texas responsibilities. Consequently, with regard to both breaches, Alliance Atlanta's opportunity to cure was either not utilized by Alliance Atlanta or no logical cure was available. *905 (emphasis added). In his unsuccessful motion for reconsideration, Hinely asserted that “any notice [he] could have given to [Alliance Atlanta] would have been futile.” Although the district court never squarely addressed Hinely's futility argument, we decline to deem it waived. See Damiano v. FDIC, 104 F.3d 328, 332-33 n. 6 (11th Cir.1997) (noting that waiver doctrine is a rule of practice the application of which is a matter of appellate court discretion). The futility doctrine flows out of the principle that “the law does not require the performance of vain or useless things.” Fishel v. Yorktowne Mut. Ins. Co., 254 Pa.Super. 136, 385 A.2d 562, 565 (1978) (quoting Forester v. Teutonia Fire Ins. Co., 60 Pa.Super. 151 (1915)); see also Wolff & Munier, Inc. v. Whiting-Turner Contracting Co., 946 F.2d 1003, 1009 (2d Cir.1991) (noting that a party to a contract may be excused from complying with a notice requirement if notice would be a “useless gesture”) (citing, among others, Craddock v. Greenhut Constr. Co., Inc., 423 F.2d 111, 115 (5th Cir.1970)). On summary judgment, Hinely bore the burden of introducing evidence to support a reasonable finding that giving notice of the alleged breaches would have been useless. See Gey v. Beck, 390 Pa.Super. 317, 568 A.2d 672, 680 (1990) (in a different context, stating that the party asserting futility 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 (11th Cir.1996) (noting that a litigant asserting a defense in opposition to summary judgment bears the burden of presenting evidence sufficient to establish that defense). The parties to this appeal agree that

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the futility of giving notice is an issue of fact. Both parties, however, urge this court to decide the issue as a matter of law in their respective favor. [10] In his brief filed in opposition to the motion for summary judgment and in his motion for reconsideration, Hinely failed to point to any evidence, or even argue, that notice would have been futile with respect to Alliance Atlanta's alleged failure to account fully for denying him any incentive compensation. Indeed, it was undisputed in the record before the district court that, when Hinely left Alliance Atlanta on October 2, 1995, he had not sought arbitration of his grievance as required by the incentive compensation provision of the employment contract. We conclude that Hinely failed to meet his burden of demonstrating that notice with respect to this alleged breach would have been useless. With regard to the futility of notifying Alliance Atlanta that he deemed the deprivation of his supervisory responsibility for the Texas office a material breach, Hinely asserted in his opposition brief that “after [he] sent his October 2nd letter to Alliance Atlanta, Alliance Atlanta failed to notify Hinely that it planned to cure the breach by reinstating his Texas responsibilities.” The mere fact that Alliance Atlanta did not attempt to cure the deprivation of responsibility after Hinely had already left the company does not support a reasonable conclusion that Alliance Atlanta could not or would not have cured this alleged breach had it been formally confronted with the threat of liberating Hinely from his obligations under the non-competition provision. Moreover, the loss of supervisory responsibility of which Hinely complains appears, on its face, to be reversible and therefore curable. We conclude that Hinely failed to meet his burden of demonstrating that notice with respect to this alleged breach would have been useless. Finally, with regard to the futility of notifying Alliance Atlanta that he deemed the company's price fixing a material breach, Hinely relies solely on the character of the alleged breach itself. He asserts that, once Alliance Atlanta entered into the price

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fixing conspiracy, there was no going back. Hinely's allegation would support a reasonable conclusion that giving notice *906 would have been useless to Hinely. It would not, however, support the conclusion that receiving notice would have been useless to Alliance Atlanta. Cf. L.K. Comstock & Co. v. United Eng'rs & Constructors, Inc., 880 F.2d 219, 232 (9th Cir.1989) (excusing contractor's failure to comply with a 48-hour “notice and cure” provision before terminating subcontract because “for [the contractor] to give 48-hour notice would have been a useless gesture in terms of any benefits to [the subcontractor ]”) (emphasis added). Here, even if the alleged breach proved to be incurable, the bargained-for requirement of notice the parties included in the non-competition provision served to prevent inadvertent invalidation of that provision by an unrecognized material breach. At a minimum, receiving notice would have given Alliance Atlanta thirty days to brace itself for Hinely's transition from compatriot to competitor. Depending on how early in the progression of events Hinely had given notice to Alliance Atlanta and its lawyer, receiving notice may even have induced Alliance Atlanta to abandon the price fixing conspiracy and minimize its exposure to criminal penalties and related consequences. That Alliance Atlanta could have benefitted from notice alone distinguishes this case from many cases in which courts have excused a party's failure to comply with a “notice and cure” provision on the ground of futility. In those cases, the party seeking to enforce the provision typically disavowed any further performance under the contract prior to the time 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 adherence to the ... two-day cure provision would have been a ‘useless act’ in the face of the [breaching party's] abandonment of the job and its unjustified ultimatums”); Solitron Devices, Inc. v. Honeywell, Inc., 842 F.2d 274, 278 (11th Cir.1988) (“By letter ... Solitron itself expressly repudiated

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222 F.3d 895 222 F.3d 895, 141 Lab.Cas. P 59,055, 25 Employee Benefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048 (Cite as: 222 F.3d 895)

the subcontract. Once Solitron had itself terminated the contract, a cure notice from Honeywell would have served no purpose.”); United States v. Digital Prods. 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 to follow the contractual requirement of notice and a ten-day curative period). In such circumstances, notice 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 demonstrating that notifying Alliance Atlanta that he considered the company's price fixing a material breach would have been useless to Alliance Atlanta. The district court therefore did not err in failing to find a genuine issue of material fact as to whether he was excused from complying with the notice requirement of the non-competition provision. III Hinely argues that the district court erred in concluding Alliance Atlanta was entitled to summary judgment on its claim of trademark infringement. To prevail on this claim, Alliance Atlanta had to establish (1) that it had a right to the trade name at issue, Hinely Aluminum, Inc.; and (2) that the trade name Hinely adopted, Hinely Industries, Inc., was confusingly similar to that trade name, such that Hinely's use of the name created a likelihood of confusion among consumers as to the origin of goods sold. See Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512 (11th Cir.1984). A [11] It is undisputed that Alliance Atlanta acquired the rights to the Hinely Aluminum, Inc., trade name when it acquired the assets of Hinely Aluminum, Inc., on March 22, 1994. Hinely argues, however, that Alliance Atlanta lost its *907 rights to the name when it breached the employment contract.

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Hinely's argument rests on the theory that the asset purchase contract and the employment contract were part of one transaction, and that the breaches of the employment contract he alleges therefore also constituted breaches of the asset purchase contract. Hinely further contends that perpetration of criminal conduct under the name of Hinely Aluminum, Inc., was a direct breach of the asset purchase contract. If a contract involves clear and unambiguous terms, we “need only examine the writing itself to give effect to the parties' understanding.” Harrity v. Medical College of Pennsylvania Hosp., 439 Pa.Super. 10, 653 A.2d 5, 10 (1994). The asset purchase contract provided, in pertinent part: 1.1 Purchase and Sale. (a) The Seller shall sell, convey, transfer and assign to the Purchaser, and the Purchaser shall purchase from the Seller, on the Closing Date (as defined below), the Acquired Assets. “Acquired Assets” shall mean all of the following real property, personal property assets (tangible or intangible), and rights of the Seller used or held in connection with the Business ... (i) all Seller's trade names, trademarks and service marks. .... 1.4 Closing. The closing (the “Closing”) for the consummation of the transactions contemplated by this Agreement shall take place ... at 10:00a.m. (east coast time) on March 22, 1994 or such other date and time agreed to by the Seller and the Purchaser.... 1.5 Instruments of Conveyance and Transfer. At the Closing, the Seller shall deliver to the Purchaser such bills of sale, endorsements, assignments and other instruments of transfer, con-

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veyance and assignment ... as shall be necessary to transfer, convey and assign the Acquired Assets to the Purchaser. Under the terms of the asset purchase contract, Alliance Atlanta fulfilled its contractual duties relating to the acquisition of the trade name Hinely Aluminum, Inc., at the closing that took place on March 22, 1994. Once Hinely sold the name to Alliance Atlanta, the company was free to use the name in any manner it deemed fit. The district court did not err in finding there was no genuine issue of material fact as to Alliance Atlanta's rights to the trade name Hinely Aluminum, Inc. B [12] Hinely also argues that the district court erred in deciding likelihood of confusion as a matter of law. In support of this argument, he first contends that likelihood of confusion is a jury question. Although likelihood of confusion generally is a question of fact, it may be decided as a matter of law. See Conagra, 743 F.2d at 1514-15. Indeed, this court has decided likelihood of confusion as a matter of law in the first instance. See id. at 1514. [13] The following factors are relevant in determining whether there is a likelihood of confusion: (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 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. See Conagra, 743 F.2d at 1514. The most persuasive evidence in assessing the likelihood of confusion is proof of actual confusion. See id. at 1514-15 (finding likelihood of confusion as a matter of law based on evidence of misdirected inquiries from distributors, suppliers, prospective employees and customers, as well as mis-

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directed billing invoices). *908 [14] The district court did not err in finding that the evidence before it compelled the conclusion that there was a likelihood of confusion between the trade names Hinely Aluminum, Inc., and Hinely Industries, Inc. There was no dispute that the two marks are similar. It was also undisputed that both companies distribute prefinished aluminum sheets and sign blanks in the same territory. Most importantly, there was ample undisputed evidence before the district court of actual confusion. Melissa Hough, Alliance Atlanta's controller, alleged in an affidavit that Alliance Atlanta received many payments from its former customers for goods those customers bought from Hinely Industries, Inc. Filed in support of Hough's affidavit were copies of more than a dozen checks Alliance Atlanta received for goods sold by Hinely Industries, Inc., that were made payable to “Hinely Aluminum.” One such check was made payable to “Hinely Aluminum Industries Inc.” In her affidavit, Hough also alleged that Alliance Atlanta received invoices from vendors and creditors billing “Hinely Aluminum” for goods and services purchased by Hinely Industries, Inc. She attached copies of seven such invoices. She also alleged that vendors delivered goods ordered by Alliance Atlanta to Hinely Industries, Inc., and vice versa. Additionally, Alliance Atlanta introduced the deposition testimony of aluminum buyers that demonstrated confusion. For example, when asked in a deposition whether he was “confused as to the difference between Hinely Industries and Hinely Aluminum and Alliance Metals, Inc. of Atlanta,” aluminum buyer Robert Goldstucker replied, “[e]xtremely.” Hinely argues that, in finding likelihood of confusion as a matter of law, the district court failed to consider his explanation for the evidence of confusion. He alleges that Alliance Atlanta received mail intended for Hinely Industries, Inc., because of a forwarding order Alliance Atlanta placed with the

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United States Postal Service after the company's July 1995 relocation. This factual allegation does not raise a genuine issue of material fact when placed beside the extensive evidence of confusion introduced by Alliance Atlanta. The numerous checks and invoices Alliance Atlanta received that were intended for Hinely Industries, Inc., were not simply misrouted; they referred to the wrong company, “Hinely Aluminum,” by name. Furthermore, the misdirected deliveries Hough described came directly from vendors, not the United States Postal Service. Lastly, the forwarding order could not explain testimony of customers like Goldstucker reporting confusion as to the difference between Hinely Industries, Inc., and Hinely Aluminum, Inc. The district court did not err in finding as a matter of law that there was a likelihood of confusion between Hinely Industries, Inc., and Hinely Aluminum, Inc. IV Hinely found himself in an unenviable position when he came to suspect his employer of unlawful anticompetitive activity. His decision to report his suspicions to the Department of Justice is to be commended. Neither the righteousness of that action nor the wrongfulness of Evans's and Alliance Metals, Inc.'s conduct, however, excuses Hinely's formation of a competing enterprise that violated both the non-competition provision of his employment contract and Alliance Atlanta's trademark rights. The judgment of the district court is AFFIRMED. C.A.11 (Fla.),2000. Alliance Metals, Inc., of Atlanta v. Hinely Industries, Inc. 222 F.3d 895, 141 Lab.Cas. P 59,055, 25 Employee Benefits Cas. 1801, 13 Fla. L. Weekly Fed. C 1048 END OF DOCUMENT

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Westlaw Delivery Summary Report for PATRICK,BRADFORD Date/Time of Request: Client Identifier: Database: Citation Text: Lines: Documents: Images:

Monday, July 6, 2009 12:01 Central OSHNA FSFIND 731 F.Supp. 480 657 1 0

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

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

United States District Court, S.D. Florida. AMERICAN UNITED LIFE INSURANCE COMPANY, 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 automobile insurer's alleged unfair competition, trade name infringement, and dilution of its trade name. The District Court, James Lawrence King, Chief Judge, held that: (1) plaintiff was entitled to injunctive relief under unfair competition provisions of Lanham Trade-Mark Act; (2) plaintiff was not guilty of any laches, such as would prevent it from suing to enjoin defendant's infringing activities; and (3) defendant was liable for over $95,000 in attorney fees and over $10,000 in costs based on its failure to make even the slightest inquiry regarding plaintiff's prior use of name. So ordered. West Headnotes [1] Trademarks 382T

1714(3)

382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of Relief 382Tk1714(3) k. Unfair Competition. Most Cited Cases (Formerly 382k646) Life and health insurance company was entitled to injunctive relief under the unfair competition provisions of the Lanham Trade-Mark Act to prevent automobile insurance company from using deceptively similar, ar-

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bitrary trade name which first company had previously used and under which it had built up good reputation for over 50 years. Lanham Trade-Mark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a). [2] 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 382k641) To prevail on claim for injunctive relief under unfair competition provisions of Lanham Trade-Mark Act, plaintiff must demonstrate that it is prior owner of trade name or service mark, and that defendant has adopted the same or a confusingly similar trade name or service mark, thereby creating a likelihood of customer confusion as to proper origin of goods or services, such that customer is likely to believe that defendant's goods or services are being sold with consent or authorization of plaintiff, or that defendant is affiliated with or connected to plaintiff. Lanham Trade-Mark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a). [3] Trademarks 382T

1714(3)

382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of Relief 382Tk1714(3) k. Unfair Competition. Most Cited Cases (Formerly 382k646) Life and health insurance company was entitled to injunction, on common-law unfair competition theory, to prevent automobile insurance company from using deceptively similar, arbitrary trade name which first company had previously used and under which it had built up good reputation for over 50 years.

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[4] Trademarks 382T

1421

382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases (Formerly 382k462) Elements which plaintiff must prove to prevail on common-law unfair competition claim based on trade name or service mark infringement are: that plaintiff is prior user of trade name or service mark; that trade name or service mark is arbitrary or suggestive or has acquired secondary meaning; that defendant is using confusingly similar trade name or service mark to indicate or identify some of the products or services in same trade area in which plaintiff has already established its trade name or service mark; and that consumer confusion is likely to result from defendant's action or threatened action. Lanham Trade-Mark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a). [5] Trademarks 382T

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382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of Relief 382Tk1714(4) k. Dilution. Most Cited Cases (Formerly 382k647) Life and health insurance company was entitled to injunction under Florida's antidilution statute to prevent automobile insurance company from using deceptively similar, arbitrary trade name which first company had previously used and under which it had built up good reputation for over 50 years. West's F.S.A. § 495.151. [7] Trademarks 382T

382T Trademarks 382TVIII Violations of Rights 382TVIII(B) Dilution 382Tk1461 k. Nature and Extent of Harm; Similarity, Competition, and Confusion. Most Cited Cases (Formerly 382k462) Neither competition nor confusion is required in order to state claim for dilution of trade name or service mark pursuant to Florida statute. West's F.S.A. § 495.151.

1421 [8] Trademarks 382T

382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases (Formerly 382k332) Elements required to prevail on claim of common-law trade name and service mark infringement are the same as those required to prevail under unfair competition provisions of Lanham Trade-Mark Act or under a claim for common-law unfair competition. Lanham TradeMark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a). [6] Trademarks 382T

1461

1714(4)

382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions

1715(1)

382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1715 Defenses or Objections 382Tk1715(1) k. In General. Most Cited Cases (Formerly 382k642.1, 382k642) Trade name holder was not guilty of any laches, such as might prevent it from suing to enjoin defendant's use of deceptively similar trade name, where trade name holder made demand on defendant to cease its infringing acts immediately after it learned thereof and waited to bring suit only in order to give defendant chance to voluntarily comply with its demands. [9] Trademarks 382T

1715(1)

382T Trademarks

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

382TIX Actions and Proceedings 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1715 Defenses or Objections 382Tk1715(1) k. In General. Most Cited Cases (Formerly 382k642.1, 382k642) Insurance company's incorporation in Florida under name deceptively similar to that of trade name holder, and its subsequent licensing by Florida Department of Insurance, were not defense to trade name holder's action to enjoin its trade name infringement, unfair competition, and dilution of trade name. Lanham TradeMark Act, § 43(a), as amended, 15 U.S.C.A. § 1125(a). [10] Trademarks 382T

1755

382T Trademarks 382TIX Actions and Proceedings 382TIX(G) Costs 382Tk1752 Attorney Fees 382Tk1755 k. Amount, Rate, and Items. Most Cited Cases (Formerly 382k729) Trademarks 382T

1751

382T Trademarks 382TIX Actions and Proceedings 382TIX(G) Costs 382Tk1751 k. Amount and Items in General. Most Cited Cases (Formerly 382k729) Insurance company which infringed on competitor's trade name without making even the slightest inquiry regarding competitor's prior use thereof was liable for over $95,000 in attorney fees and $10,000 in costs under federal statute authorizing such awards in infringement actions based on evidence of fraud or bad faith. Lanham Trade-Mark Act, § 35, as amended, 15 U.S.C.A. § 1117. *482 Janet T. Munn, Steel Hector & Davis, Miami, Fla., for plaintiff. Samuel R. Danziger, Goodhart, Rosner, Simon, Greenberg & Humbert, P.A., Miami, Fla., for defendant.

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FINDINGS OF FACT, CONCLUSIONS OF LAW, AND FINAL JUDGMENT JAMES LAWRENCE KING, Chief Judge. This cause was tried from November 28, 1989, through December 1, 1989, before this court sitting without a jury. The court has heard and considered the testimony of the witnesses and considered the exhibits and the arguments of counsel. In accordance with Rule 52(a), Federal Rules of Civil Procedure, this court now makes the following Findings of Fact and Conclusions of Law. FINDINGS OF FACT Plaintiff, American United Life Insurance Company (“Plaintiff”), is a mutual life insurance company whose services consist of underwriting life, universal life, health, income replacement, accident, pension, group, hospitalization, and credit insurance, as well as providing reinsurance. Defendant, American United Insurance Company (“Defendant”), is also in the business of providing insurance. Defendant sells private passenger and commercial 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 this trade name and service mark to market and sell its products and services. Plaintiff is an Indiana corporation with its principal place of business in Indianapolis, Indiana. Plaintiff was first licensed to conduct business in the state of Florida as an insurance company in 1937 under the name “American United Life Insurance Company” and has continuously maintained this license. Defendant is a Florida corporation, which was formed in November 1983, and has been licensed in Florida to sell insurance under the name “American United Insurance Company” since 1984. Plaintiff is the prior owner and user of the trade name

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and service mark “American United Life Insurance Company.” Plaintiff's origins date back to 1877, when one of plaintiff's predecessors first began doing business as an insurance company. Plaintiff's adoption in 1936 of the trade name and service mark “American United Life Insurance Company” occurred following the merger of its predecessor companies, American Central Life Insurance Company and United Mutual Life Insurance Company. The first word of each of the predecessor companies, “American” and “United,” was arbitrarily chosen as the name for the new company. Defendant's agent testified that the name “American United” was selected by defendant as the name for defendant's company because Saudi Arabians were serving as investors for a company which would be operated and managed by Americans in the United States. In the view of those individuals who formed the defendant corporation, the project demonstrated the unity of the two groups in this American venture. The words “American United” are arbitrary as applied to insurance. There is no relationship between the words “American United” and the product each company sells, which is insurance. Clearly, these words are not descriptive nor generic of insurance. Plaintiff's service mark, “American United Life Insurance Company,” is a federally registered service mark which is listed on the Principal Register of the United States Patent and Trademark Office (Reg. No. 1,556,096). Plaintiff's service mark was registered September 12, 1989. “American United Life Insurance Company” is also registered as a service mark with the state of Florida (State of Florida Reg. No. T1146). This registration occurred on July 24, 1989. *483 Defendant has not registered “American United Insurance Company” as a service mark, either federally or with the state of Florida. Plaintiff markets and sells its policies and services under the trade name and service mark “American United

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Life Insurance Company” throughout the United States, including Florida. Plaintiff uses its trade name and service mark, “American United Life Insurance Company,” in interstate commerce. Plaintiff maintains general agencies in Florida with a total of 35-40 sales representatives in Florida. Two of these general agencies are located in Tampa, Florida. One agency is located in Boca Raton, another in Melbourne, and one in Jacksonville, Florida. Since 1979, plaintiff has spent in excess of $5 million in advertising nationally its trade name and service mark, “American United Life Insurance Company,” and has built up extensive good will in its name and a good reputation over the fifty years that it has been using the name “American United Life Insurance Company.” Plaintiff advertises its trade name and service mark over the radio, on television, and in newspapers and other publications. In addition to the money expended directly by plaintiff for advertising, plaintiff's agents also advertise plaintiff's service mark and trade name in Florida. In addition, plaintiff prints and distributes to customers and prospective customers numerous pamphlets and brochures, which describe and promote plaintiff's products and services and advertise plaintiff's trade name and service mark, “American United Life Insurance Company.” Defendant has engaged in virtually no advertising of its name. The only use defendant makes of its name is the listing of its name on business forms and on a calendar printed by its managing agent. The calendar also contains the names of two other insurance companies as well as the name of the defendant's managing general agent, Public Assurance Group, Ltd., Inc. (“Public”). Defendant's business operations are conducted by its managing general agent, Public. Public performs every function of running defendant's company with the exception of handling claims. Public selects the individual agents who sell defendant's policies and Public makes all decisions as to acceptance or rejection of prospective insureds. Until some point in 1989, all claims were handled for the defendant by yet another company, the Apex Adjustment Bureau.

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Plaintiff conducts its own business operations, handles its own claims, trains its agents to ensure uniformity in service, and makes its own decisions as to acceptance or rejection of prospective insureds. Plaintiff was ranked in August 1988 by Best's Review. Best's Review is a publication of the A.M. Best Company and is considered to be a reliable and accurate source within the insurance industry, giving comparisons and ratings of insurance companies. Best's Review listed plaintiff as the nation's 66th largest life insurance company in terms of insurance in force, and the 73rd largest life insurance company in terms of assets. In 1988, plaintiff was ranked as the nation's 24th largest mutual life insurance company in terms of assets, and the nation's 20th largest mutual life insurance company in terms of life insurance in force. Plaintiff has consistently been awarded the highest rating an insurance company is given by the A.M. Best Company, the “A+ rating.” Since 1986, 2,507 consumer complaints have been filed with the Florida Department of Insurance against the defendant for its claim-handling delays. During this same period of time, plaintiff had only 35 complaints filed against it. The only difference between the plaintiff's trade name and service mark, “American United Life Insurance Company,” and the defendant's trade name and service mark, “American United Insurance Company,” is the presence of the word “Life” in the plaintiff's name. The virtual identity of the two names has led to numerous instances of actual consumer confusion. Plaintiff's agents testified that their offices *484 received in excess of 60 telephone calls per month from persons who are confused and believe they are calling defendant. These callers are often customers of the defendant who have confused the two companies. Many of those who call the plaintiff's agents are calling to express dissatisfaction with the defendant's service. One caller in particular, Janet Boynton, testified by deposition that because of the close similarity in the names, she called plaintiff's agent believing it was the defendant's agent. The testimony proving actual confusion was unrebutted by defendant.

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In addition, the state of Florida, as well as the state of New York, have required the plaintiff to respond to consumer complaints filed against the defendant. Plaintiff has also been served at its corporate headquarters in Indianapolis, Indiana, with lawsuits filed against defendant in Florida and other states. Defendant's wrongful acts thus have harmed plaintiff and are likely to continue to harm plaintiff in interstate commerce. Plaintiff and defendant occupy the same industry. Each sells the same product, insurance. Plaintiff also offered proof that it is not uncommon for life insurance companies to own or be affiliated with automobile insurance companies. Under such circumstances, the two companies are related and use the same or similar names. The plaintiff and defendant sell their products and services in a similar manner. Each sells insurance policies to purchasers of insurance through individual agents who operate out of individual insurance agencies. Defendant's use of the name “American United Insurance Company” is confusingly similar to plaintiff's trade name and service mark, “American United Life Insurance Company.” Plaintiff acted promptly in instituting this action. Upon learning of the defendant's existence, plaintiff immediately called and then wrote defendant asking defendant to cease its infringing acts. When defendant refused to cease infringement, plaintiff brought the instant action. Defendant admitted that it made no effort prior to its incorporation and licensing to discover the existence of plaintiff or of plaintiff's prior ownership of the trade name and service mark, “American United Life Insurance Company.” Defendant failed to make any effort to consult with the Florida Department of Insurance to determine if another insurance company was already doing business in Florida using the name “American United” prior to commencing business as an insurance company in 1984. Defendant could have easily called the Department of Insurance or consulted with public records of the department, which would have revealed that plaintiff was the only insurance company doing business in Florida using the words, “American

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United.” Defendant admitted it made no effort whatsoever to undertake even this simple investigation, despite defendant's knowledge of the existence of state of Florida publications, such as the Report of the Department of Insurance for the year ending June 30, 1983, which would have immediately revealed to defendant the plaintiff's prior use of the name “American United.” FN1 FN1. The Report of the Department of Insurance lists the names of insurance companies authorized to conduct business in Florida. Defendant's president, Mark Trafton III, worked for the Department of Insurance for over fifteen years. At one time during Mr. Trafton's employment with the Department of Insurance, he was the director of the Division of Insurance Rating, a section which, inter alia, regulated life insurance companies. Mr. Trafton, who impressed the court as a fine person and a credible witness, testified that he could not say that he had never heard of the plaintiff prior to the institution of the lawsuit. CONCLUSIONS OF LAW Plaintiff seeks to enjoin defendant from using the trade name and service mark, “American United Insurance Company.” Plaintiff asserts that defendant has violated*485 § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); that defendant has engaged in unfair competition and trade name and service mark infringement under the common law; and that defendant has violated the Florida anti-dilution statute, Florida Statute § 495.151. The court makes the following conclusions of law with respect to each of these claims: This court has jurisdiction over the Lanham Act claim pursuant to 15 U.S.C. § 1121; 28 U.S.C. § 1338, and 28 U.S.C. § 1331. The court has jurisdiction over the common law claims pursuant to 28 U.S.C. § 1338(b) and pursuant to the doctrine of pendent jurisdiction. In addition, diversity jurisdiction exists pursuant to 28 U.S.C. § 1332.

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UNFAIR COMPETITION PURSUANT TO SECTION 43(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), plaintiff must demonstrate (1) that it is the prior owner of the trade name or service mark, and (2) that defendant adopted a trade name and service mark that is the same or confusingly similar to plaintiff's trade name or service mark so that there exists a likelihood of confusion to consumers as to the proper origin of the goods or services, such that a consumer is likely to believe that defendant's goods or services are being sold with the consent or authorization of the plaintiff, or that defendant is affiliated 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 fact made above, the court concludes that plaintiff has met each of these requirements and is, therefore, entitled to injunctive relief, pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), to prevent defendant's use of the name “American United Life Insurance Company.” In making the determination of confusing similarity, this court considered and made factual findings with regard to the following seven factors: (1) the type of trade name or service mark used; (2) the similarity of the trade name or service mark; (3) the similarity of the product of service; (4) the similarity of the retail outlets and purchasers; (5) the similarity of advertising media used; (6) the existence of actual confusion; and (7) the defendant's intent. See Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 840 (11th Cir.1983); see also Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 259-264 (5th Cir.1980), cert. denied, 449 U.S. 899, 101 S.Ct. 268, 66 L.Ed.2d 129 (1980). Upon consideration of each of these factors, the court finds that the plaintiff is entitled to injunctive relief. Defendant contends that because the products or services which each party sells are not identical, life and health as compared with automobile insurance, it has not violated plaintiff's rights and is immune from suit by the plaintiff. The court finds this contention to be without merit. The law of unfair competition protects the prior owner of a mark from those who “ ‘sell their

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goods in such a way as to make it appear that they come from some other source.’ ” Boston Professional Hockey Assn., Inc. v. Dallas Cap & Emblem Mfg., 510 F.2d 1004, 1010 (5th Cir.1975) (quoting American-Marietta Co. 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 occupy the same industry. Both sell insurance. That one company is authorized to sell life insurance and another automobile insurance does not answer the problem of consumer confusion. The distinction defendant seeks to draw is not one made by consumers. The product or services sold by each are the kind the insurance consuming public 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 has occurred and continues to occur between the plaintiff and the defendant in this case amply supports this conclusion. Therefore, plaintiff is entitled to an injunction pursuant 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 findings of fact, the plaintiff has also proved its claim for common law unfair competition. Marathon Mfg. v. Enerlite Products Corp., 767 F.2d 214, 217 (5th Cir.1985). The elements a plaintiff must prove to prevail on a common law unfair competition claim based on trade name or service mark infringement are: (1) that plaintiff is the prior user of the trade name or service mark; (2) that the trade name or service mark is arbitrary or suggestive or has acquired secondary meaning; (3) that 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) that as a result of defendant's action or threatened action, consumer confusion as to the source or sponsorship of defendant's goods and services is likely. American Bank of Merritt Island v. First Am. Bank and Trust, 455 So.2d 443, 445-6 (Fla. 4th DCA 1984), review denied, 461 So.2d 114 (Fla.1985).

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The competition requirement has been interpreted by the 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 Florida Supreme Court held that a hotel corporation could not prohibit a real estate venture from using the words “Sun” and “Coast” in its name. Id. In reaching its decision, the court stated: We cannot see how the public could be deceived by appellees' use of the title “Suncoast” when there is not similarity in the businesses of the parties. In the case we have cited, and formerly approved, it was said that ‘the courts interfere solely to prevent deception.’ ...Further, the circumstances must lead to the conclusion that the business of the first user will suffer from the deceptive use, or that by reason of unfair competition there will be an imposition on the public. Id. (emphasis added). Under Florida law, the plaintiff must show either “that the public would be tricked” or that the plaintiff will be damaged because persons dealing with defendant are likely to believe they are dealing with the plaintiff. Id. at 806. For reasons set forth above, the court has found that the close similarity of the services offered by two businesses who both sell insurance has caused and is likely to continue to cause consumer confusion as to the source of origin or sponsorship of the defendant's goods and services. For reasons set forth in the findings above, plaintiff has established the elements necessary to support a claim for common law unfair competition, and plaintiff is entitled to injunctive relief on this count as well. COMMON LAW TRADE NAME AND SERVICE MARK INFRINGEMENT [5] The elements required to prevail on a claim of common law trade name and service mark infringement are the same as those required to prevail under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) or under a claim for 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 “infringing mark is likely to confuse consumers as to the source of the product, its endorsement by the trademark holder, or its connection with the holder,” through evaluation of the seven factors); see also American Bank, 455 So.2d at 445-446. For reasons stated above, plaintiff has met its burden on this claim as well and is entitled to injunctive relief. DILUTION [6] Finally, plaintiff has a claim for dilution of its trade name 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 reputation or of dilution of the *487 distinctive quality of the mark [or] name ... notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services. Fla.Stat. § 495.151. [7] Under this section of the Florida Statutes, neither competition nor confusion is required. Id. The court has found that plaintiff's trade name and service mark is distinctive and entitled to protection. The court has also found that defendant is using a virtually identical trade name and service mark, to promote the sale of services and goods to consumers of insurance. There is no doubt that the commercial value of the plaintiff's trade name and service mark is likely to be diluted by defendant's unauthorized use of a virtually identical trade name and service mark, and that this will create a likelihood of injury to plaintiff's business reputation. Freedom Savings and Loan Assn. v. Way, 757 F.2d 1176, 1186 (11th Cir.1985), cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1985). On the basis of its prior findings and in consideration of the requirements of the Florida anti-dilution statute, the court concludes that plaintiff is entitled to relief on this claim. AFFIRMATIVE DEFENSES

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Defendant raised affirmative defenses of laches and estoppel by incorporation and licensing. For reasons specified below, each of these defenses is without merit. LACHES [8] To prevail on the affirmative defense of laches, defendant must prove three elements: “(1) a delay in a right 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 (11th Cir.1984). Defendant failed to prove that plaintiff delayed in bringing its claims. The evidence at trial demonstrated the contrary. As soon as plaintiff learned about defendant, plaintiff immediately demanded that defendant cease its infringing acts. Defendant refused, assuring plaintiff that there could be no public confusion. When plaintiff experienced additional confusion, plaintiff renewed its demand, which defendant again rejected. Plaintiff then immediately brought suit. Therefore, since the defendant has not shown inexcusable delay, it has not sustained its burden of proving laches. ESTOPPEL BY VIRTUE OF INCORPORATION AND LICENSING [9] Defendant contends that its incorporation by the state of Florida and its licensing by the Florida Department of Insurance grants defendant immunity from suit. This contention is contrary to longstanding Florida law. As long ago as 1926, the Supreme Court of Florida held: The act of sovereignty in allowing incorporation under a particular name is permissive only. It sanctions the act of incorporation under the name chosen and for the business proposed, if that name and that business be otherwise lawful, but in granting a corporate charter the sovereign adjudges neither the legality of the business nor of the name chosen. That is a matter for judicial determination by a court of competent jurisdiction. An individual will be enjoined, in proper cases, from the fraudulent or deceptive use of his own natural name. With even greater justification will an artificial person, a corporation, be enjoined from such

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a use of a corporate name voluntarily chosen by it. 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 agency such as the Florida Department of State is not a defense to the claims brought in this lawsuit. American Auto., 618 F.Supp. at 797 (rejecting defendant insurance company's claim that licensing is a defense to Lanham Act claims and citing Children's Bootery, 107 So. at 349); see also Shatterproof Glass Corp. v. Buckmaster, 256 So.2d 531, 533 (Fla. 2d DCA), cert. denied, 264 So.2d 427 (Fla.1972). *488 In addition, the Florida Supreme Court's holding is reiterated in the Florida Administrative Code:

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ida. Id. Additionally, the Lanham Act was specifically intended by Congress to protect and make actionable the use of deceptive and misleading marks in commerce and to protect persons engaged in such commerce against unfair competition. 15 U.S.C. § 1127. Therefore, neither defendant's incorporation in Florida under the name “American United Insurance Company” nor its licensing by the Florida Department of Insurance constitutes a defense to plaintiff's action to enjoin trade name and service mark infringement, unfair competition, 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 decision in Children's Bootery, 107 So. at 349). ATTORNEYS' FEES AND COSTS

IN-1.002 Name Assignments. Any and all corporate names issued by this Division under chapters 607 and 617, Florida Statutes, are based only upon the records of this Division and the rules of this Division at the time of filing and are not based upon any other corporate entity filed by the United States government or its agencies or protected by Federal Law, nor are these filings based upon the records of any other state agency, nor is the Division responsible for those persons or groups of persons who style themselves as a corporation nor those who use a corporate suffix not of the Division's filing. The filing of any corporate entity is only a grant of authority to use such a name and does not include the adjudication of the legality of such use. Fla.Admin. Code Ann. r.1N-1.002 (1989) (emphasis added). Incorporation by the state of Florida, therefore, is not a defense to trade name or service mark infringement, unfair competition, or anti-dilution claims. Similarly, the permission to engage in business in Florida as an insurance company is not a defense under the Lanham Act or under state law. Children's Bootery, 107 So. at 349. As an agency of the state of Florida, the Florida Department of Insurance does not regulate or adjudicate the legality of the use of a particular name by any insurance company seeking to do business in Flor-

[10] Plaintiff has requested an award of attorneys' fees and costs. Pursuant to 15 U.S.C. § 1117, this court has the authority to award fees to a prevailing party where there 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. Skating Clubs of Georgia, Inc., 716 F.2d 833, 846 (11th Cir.1983). As the court has found above, this entire controversy and the harm the plaintiff has suffered could easily have been avoided had defendant made even the slightest inquiry. After carefully considering all of the evidence presented at trial this court finds under the facts of this case that the defendant's actions constitute bad faith under 15 U.S.C. § 1117, and accordingly the court awards the plaintiff its attorneys' fees. Both sides presented expert testimony at trial, regarding the reasonable amount of attorneys' fees. Since the trial, the plaintiff has submitted invoices supporting its claim and an affidavit from its expert regarding the reasonableness of the amount of fees incurred in trial preparation and for time spent in trial. Defendant's expert has reviewed the affidavit of the plaintiff's expert, as well as the invoices, and has submitted an affidavit regarding the claim for fees incurred by plaintiff in trial preparation and for time spent in trial. Plaintiff seeks an award of fees in the amount of $100,303.60. Defendant, while

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objecting to the award of fees, admits that $80,803.60 is a reasonable amount to be awarded to plaintiff. The court has carefully considered the testimony of the experts for each party, together with the documentation on fees provided by the plaintiff and hereby awards the plaintiff attorneys' fees in the amount of $95,803.60.

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603 F.Supp. 13, 19 (S.D.Fla.1984). The plaintiff has supplied its bill of costs, along with a supporting memorandum of law, and the defendant has filed its objections. Having carefully reviewed the plaintiff's itemized bill of costs, the defendant's objections, and the applicable law, the court finds that the following costs are taxable against the defendant:

Finally, the court determines that the plaintiff is entitled to its costs of prosecuting*489 this action. 15 U.S.C. § 1117(a); Rule 54(d), Federal Rules of Civil Procedure; see also Polo Fashions, Inc. v. Magic Trimmings, Inc., (A)

Fees of the Clerk

(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; subsistence and travel costs for plaintiff's witnesses at trial and deposition)

$ 1,790.90

(D)

Process server fees

(E)

Fees for exemplification and copies of papers necessarily obtained for use in the case

$ 1,655.65

(F)

Counsel's travel expenses

$ 1,210.79

Total:

CONCLUSION On the basis of the foregoing, the court concludes that plaintiff has demonstrated its entitlement to a permanent injunction for defendant's violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); for defendant's acts of unfair competition, trade name, and service mark infringement under common law; and for defendant's violation of Florida Statute § 495.151. In addition, the court awards attorneys' fees and costs of the action to the plaintiff. The terms and conditions of the injunction awarded to plaintiff are set forth below in the Final Judgment. FINAL JUDGMENT This cause came on for trial for permanent injunction before the court sitting without a jury. The court having heard and considered the testimony of the witnesses, the exhibits, and the argument of counsel, finds and concludes, for the reasons set forth in the findings of fact

$ 160.00

$ 978.00

$10,733.23 and conclusions of law, that plaintiff is entitled to a permanent injunction, attorneys' fees, and costs. Accordingly, it is ORDERED, ADJUDGED and DECREED that final judgment is entered in favor of the plaintiff, American United Life Insurance Company, and against the defendant, American United Insurance Company. The defendant, its officers, directors, agents, servants, employees, attorneys, and all persons, firms or corporations acting or claiming to act on their behalf or under their direction or authority, and all persons and firms acting or claiming to act in participation or concert with them, are hereby permanently enjoined: (1) from using on or in connection with the manufacture, sale, offering for sale, distribution or the advertisement, labeling or packaging of any products or services, plaintiff's trade name or service mark, “American United Life Insurance Company,” or any colorable imitation thereof or anything confusingly similar thereto; (2) from representing by any means whatsoever that any services sold, offered for sale, or advertised by defend-

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ant, are sponsored, licensed, authorized by, or originate with plaintiff, or from otherwise taking any action likely to cause confusion, mistake or deception on the part of the public as to the origin or sponsorship of such services; or

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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

(3) from passing off defendant's business and the services offered through that business as being owned, operated, or otherwise affiliated with plaintiff. That in ensuring compliance with the above, the defendant is hereby directed to effect a change of its corporate name with the Florida Department of State and the Florida Department of Insurance within 120 days of the entry of the permanent injunction, so that the words “American United” are no longer a part of the defendant's name. Until the effective date of the change of its corporate name, the defendant is hereby required to place on the face of all correspondence, including but not limited to invoices, envelopes and flyers used by defendant, the following disclaimer of affiliation with plaintiff: *490 “American United Insurance Company is not affiliated with or connected to American United Life Insurance Company.” Defendant is hereby directed to file with this court within 120 days of the entry of this permanent injunction, a written statement under oath, setting forth in detail the manner in which defendant has complied with the court's injunction and order. The plaintiff is hereby awarded attorneys' fees in the amount of $95,803.60, for which let execution issue. The plaintiff is hereby awarded its costs in the amount of $10,733.23, for which let execution issue. This court hereby retains jurisdiction to enforce the terms of this permanent injunction and final judgment and to award such other relief as this court may deem appropriate. DONE AND ORDERED.

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United States Court of Appeals, Eleventh Circuit. CARNIVAL BRAND SEAFOOD COMPANY, Plaintiff-Appellant, v. CARNIVAL BRANDS, INC., Defendant-Appellee. No. 98-4126. Sept. 3, 1999. Assignee of “CARNIVAL” trademark for shrimp and other seafood products brought trademark infringement action against seller of Creole and Cajun food products that also used “CARNIVAL” mark. The United States District Court for the Southern District of Florida, No. 97-8273-CV-JL, Joan A. Lenard, J., granted summary judgment for defendant, and plaintiff appealed. The Court of Appeals, Anderson, Chief Judge, held that: (1) fact issues existed as to whether first assignor's expansion into products sold by defendant would have been natural, and thus as to whether likelihood of confusion existed at time defendant entered market, for purpose of determining priority, and (2) district court was required to determine whether defendant's expansion into second assignor's product line would have been natural expansion, for priority purposes. Vacated and remanded. West Headnotes [1] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk776 k. Trial De Novo. Most Cited Cases Court of Appeals reviews the district court's grant of summary judgment de novo, with all facts and

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reasonable inferences therefrom reviewed in the light most favorable to the nonmoving party. Fed.Rules Civ.Proc.Rule 56(c), 28 U.S.C.A. [2] Trademarks 382T

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382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases (Formerly 382k332) To prevail on a trademark infringement claim, a plaintiff must show (1) that its mark has priority and (2) that the defendant's mark is likely to cause consumer confusion. [3]

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170A Federal Civil Procedure 170AXVII Judgment 170AXVII(C) Summary Judgment 170AXVII(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 it would have been natural for seller of raw shrimp products under “CARNIVAL” mark to expand into seafood gumbo and chicken gumbo, and, later, to expand into shrimp cakes, crawfish cakes, lobster cakes, and crab cakes, and thus whether competitor's use of “CARNIVAL” mark to sell those products created likelihood of confusion, precluded summary judgment for competitor in trademark infringement action brought against competitor by seller's assignee, which claimed it had acquired priority in mark. [4] Trademarks 382T

1102

382T Trademarks 382TIII Similarity Between Marks; Likelihood

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of Confusion 382Tk1100 Relationship Between Goods or Services Underlying Marks 382Tk1102 k. Similarity or Dissimilarity in General. Most Cited Cases (Formerly 382k363.1) A trademark owner cannot by the normal expansion of 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. [5] Trademarks 382T

1087

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1083 Nature of Confusion 382Tk1087 k. Time of Confusion. Most Cited Cases (Formerly 382k334.1) 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 382k334.1) Likelihood-of-confusion test, when applied to determine priority where there are issues of related use, does not substitute for the likelihoodof-confusion test that controls whether infringement of the plaintiff's trademark is occurring or has occurred; rather, inquiries are independent, and, once priority in the use of a mark for a particular class of goods or services has been established, then it is necessary to perform the likelihood-of-confusion test, as of the current time and as between the plaintiff's current products and the allegedly infringing

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products of the defendant, to determine whether the plaintiff ultimately prevails in a trademark infringement litigation. [6] Trademarks 382T

1081

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 k. Factors Considered in General. Most Cited Cases (Formerly 382k334.1) Seven factors used for determining the likelihood of confusion in trademark infringement action are (1) the type of mark; (2) the similarity of the two marks; (3) the similarity of the goods; (4) the identity of customers and similarity of retail outlets, sometimes called the similarity of trade channels; (5) the similarity of advertising; (6) the intent, that is, good or bad faith, of the alleged infringer; and (7) evidence of actual confusion, if any. [7] 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 382k334.1) 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 382k334.1) When using likelihood-of-confusion test to analyze a trademark priority question, by looking at whether senior user's rights would naturally expand to ju-

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nior user's use of mark, court must consider the state of events that existed at the time the intervening use commenced. [8] Trademarks 382T

1033

382T Trademarks 382TII Marks Protected 382Tk1033 k. Levels or Categories of Distinctiveness in General; Strength of Marks in General. Most Cited Cases (Formerly 382k10) The strength of a trademark depends on the logical correlation between a name and a product; if the seller of a product or service would naturally use a particular name, it is weakly protected. [9] Trademarks 382T

1039

382T Trademarks 382TII Marks Protected 382Tk1039 k. Arbitrary or Fanciful Terms or Marks. Most Cited Cases (Formerly 382k27) Trademark “CARNIVAL” would be arbitrary or fanciful as compared to product of raw shrimp because it was a word in common usage applied to a service unrelated to its meaning. [10] Trademarks 382T

1033

382T Trademarks 382TII Marks Protected 382Tk1033 k. Levels or Categories of Distinctiveness in General; Strength of Marks in General. Most Cited Cases (Formerly 382k331) Strength of trademark is diminished by fairly frequent use of that mark by third parties in other markets. [11]

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170Ak2493 k. Copyright, Trademark, and Unfair Competition Cases. Most Cited Cases (Formerly 382k722) Genuine issues of material fact as to whether it would have been natural for seller of chicken and seafood gumbo to expand into product line that included products such as competitor's shrimp, crawfish, and alligator products precluded summary judgment for seller, on its claim that it had priority in “CARNIVAL” trademark for those products, in action brought by assignee of “CARNIVAL” mark which had obtained rights in mark from competitor. Trademarks 382T

1800

382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases (Formerly 382k736) 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 the Southern District of Florida Before ANDERSON, Chief Judge, MARCUS, CirFN* cuit Judge, and MILLS , Senior District Judge. FN* Honorable Richard H. Mills, Senior U.S. District Judge for the Central District of Illinois, sitting by designation.

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170A Federal Civil Procedure 170AXVII Judgment 170AXVII(C) Summary Judgment 170AXVII(C)2 Particular Cases

ANDERSON, Chief Judge: Carnival Brand Seafood Company (“CBSC”) brought this trademark infringement action against Carnival Brands, Inc. (“CBI”). The district court

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granted summary judgment for defendant CBI on the ground that CBSC had failed to raise a genuine issue of material fact with respect to the likelihood of confusion to the extent of the products as to which CBSC had priority. Plaintiff CBSC now appeals. I. FACTS Beginning in 1980, Honduran company Mariscos de Bahia, S.A. de C.V. (“Mariscos”) began using the brand name “CARNIVAL” in connection with the sale of fresh and frozen boxed raw shrimp. Mariscos sold shrimp to various wholesalers and retailers, including food suppliers and restaurants, through Miami distributor Ludwig Shrimp Co. Ltd. (“Ludwig”). CBSC incorporated as a Delaware corporation (with its headquarters in Florida) in March 1996, and Mariscos assigned to CBSC all of its rights in the CARNIVAL mark on October 1, 1996 (“Mariscos Assignment”). CBSC registered the CARNIVAL mark with the Patent & Trademark Office. CBSC then expanded its CARNIVAL product line to include not merely raw shrimp, but also pre-packaged entrees such as bacon-wrapped shrimp, shrimp scampi, grouper, red snapper, Caribbean*1309 snapper marinated in lemon pepper sauce, mahi mahi fillets, yellow fin tuna, orange roughy, halibut, lobster tails, and “surf and turf” (lobster tails with beef tenderloin). In addition to the Mariscos Assignment, CBSC also received an assignment of rights in the CARNIVAL mark from Hi-Seas of Dulac, Inc. (“Hi-Seas”), a Louisiana corporation, on April 17, 1997 (“Hi-Seas Assignment”). Hi-Seas had begun using the mark “CARNIVAL!” in June 1992 in connection with the sale of fresh frozen shrimp, cooked shrimp, breaded shrimp, cooked crawfish, and breaded alligator. Following the Mariscos Assignment, CBSC sued Hi-Seas for trademark infringement. As part of a settlement of that litigation, Hi-Seas executed the Hi-Seas Assignment. Defendant CBI is a New Orleans, Louisiana com-

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pany that is engaged in the business of selling prepared Creole or Cajun-type food products. CBI, either by itself or as a sole proprietorship prior to FN1 its incorporation, has been engaged in this business since 1990. The original proprietorship sold only chicken gumbo and seafood gumbo, using the brand name “CARNIVAL” or “CARNIVAL CAJUN CLASSICS.” In December 1992, CBI incorporated and expanded into other pre-cooked seafood products such as shrimp cakes, crawfish cakes, lobster cakes, and crab cakes. CBI now sells an array of pre-cooked, pre-packaged, ready-to-eat seafood products and sauces with a Cajun or Creole theme; these products are available in grocery stores for retail purchase. CBI has promoted its products through a web page on the Internet and on the home shopping network cable television station QVC. FN1. For simplicity's sake, we use “CBI” herein to refer to CBI or the sole proprietorship that was its predecessor in interest. Plaintiff CBSC filed the instant action against defendant CBI on April 18, 1997, alleging that by using the CARNIVAL mark, CBI infringed upon CBSC's trademark. The complaint brought one count of statutory trademark infringement under the Lanham Act, 15 U.S.C. § 1114, one count of false designation of origin and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and one count of common law trademark infringement. Plaintiff later filed a motion for a preliminary injunction. The district court, finding no genuine issue of material fact as to the likelihood of confusion between the sources of plaintiff's and defendant's products, granted summary judgment for defendant CBI, and denied the motion for a preliminary injunction as moot. II. STANDARD OF REVIEW [1] We review the district court's grant of summary judgment de novo, with all facts and reasonable inferences therefrom reviewed in the light most fa-

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vorable to the nonmoving party. Hale v. Tallapoosa County, 50 F.3d 1579, 1581 (11th Cir.1995). Summary judgment was due to be granted only if the forecast of evidence before the district court showed that there was no genuine issue as to any material 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, a plaintiff must show (1) that its mark has priority and (2) that the defendant's mark is likely to cause consumer confusion. Lone Star Steakhouse & Saloon, 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 (11th Cir.1989), cert. denied, 498 U.S. 950, 111 S.Ct. 369, 112 L.Ed.2d 332 (1990)). Plaintiff CBSC itself did not begin to use the CARNIVAL mark until at least as late as 1996. Defendant CBI, on the other hand, used the CARNIVAL mark (or some variFN2 ation thereof) *1310 beginning in 1990. Therefore, any priority that CBSC claims over CBI with respect to the CARNIVAL mark must have been derived from one of CBSC's predecessors in interest. Cf. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1511 (11th Cir.1984) (plaintiff's interest in trademark derived entirely from predecessor company that it had acquired); see generally2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 16:5, at 16-7 & n. 3 (1998) (explaining that an assignee of a trademark steps into the shoes of the assignor and that a company may “buy[ ] the trademark and associated good will of a company with an early priority date in order to pre-date the priority of a rival”). That is, it must rest on either the Mariscos Assignment or the HiFN3 Seas Assignment. FN2. Until its incorporation in December 1992, CBI apparently used “CARNIVAL CAJUN CLASSICS.”

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FN3. CBI does not argue on appeal that either the Mariscos Assignment or Hi-Seas Assignment was invalid or ineffective. Indeed, the only arguments on appeal involve the scope of rights conveyed in each. A. The Mariscos Assignment [3] The Mariscos Assignment conveyed to CBSC any and all rights that Mariscos had gained from the use of the CARNIVAL mark in connection with Mariscos' sale of raw shrimp since 1980. In other words, if Mariscos would have had priority over CBI, then CBSC has priority over CBI as well because CBSC stepped into Mariscos' shoes. The issue for us to decide is whether CBI established beyond any genuine issue of material fact that it had priority over Mariscos, and thus over CBSC, with respect to the use of the CARNIVAL mark for processed seafood entrees and sauces of the type sold by CBI. Mariscos was unquestionably the senior user with respect to raw shrimp. However, because Mariscos never produced or sold processed, ready-to-eat seafood entrees as did CBI, priority in these goods depends on the application of the “related use” or “natural expansion” theory. As we explained in Tally-Ho, Inc. v. Coast Community College District, 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 a common law trademark may use its mark on related products or services and may enjoin a junior user's use of the mark on such related uses. The doctrine gives the trademark owner protection against the 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. Id. at 1023 (citations and internal quotation marks

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omitted); see also Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1406 (3d Cir.1985) (“[O]nce one has established a common law trademark in a product, the prior use of that trademark will apply as well to the use of the same trademark on related products in ascertaining priority of use.”(emphasis omitted)), cert. denied, 474 U.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 possesses rights in mark superior to those of “a subsequent user of the same or a similar mark for any goods which purchasers might reasonably be likely to assume emanate from [senior user] in the normal expansion of its business under the mark notwithstanding that the expansion to a particular product might be subsequent in time to that of another party”); see generally2 McCarthy § 16:5, at 16-7 (“When a senior user of a mark on product line A expands later into product line B and finds an intervening user, priority in product line B is determined by whether the expansion is ‘natural’ in that customers would have been confused as to source or affiliation at the time of the intervening user's appearance.”). [4] On the other hand, “a trademark owner cannot by the normal expansion of its business extend the use or registration *1311 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.” American Stock Exchange, Inc. v. American Express 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 on hard-bar soap did not extend to give defendant priority to use similar mark in connection with cosmetics and skin creams, and so intervening user with respect to cosmetics and skin creams had priority); Clark & Freeman Corp. v. Heartland Co. Ltd., 811 F.Supp. 137, 142 (S.D.N.Y.1993) (where

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plaintiff had senior rights to “HEARTLAND” mark with respect to women's boots, those rights did not extend to give plaintiff priority over defendant's intervening use of “HEARTLAND” with respect to shirts, sweaters, trousers, and jackets, because at the time the intervening use began, “there was no real likelihood that plaintiffs would bridge the gap by applying the ‘Heartland’ label to the types of products defendants were selling”). Thus, the determinative question is whether-as of the time CBI began using CARNIVAL (or some variation thereof) for seafood gumbo and chicken gumbo in 1990, and as a secondary matter, as of the time CBI began using CARNIVAL for shrimp cakes, crawfish cakes, lobster cakes, and crab cakes in 1992-the buying public might reasonably have been confused as between CBI's products and the raw shrimp sold by Mariscos under the CARNIVAL mark. To say that such confusion would have existed is another way of saying that the market for CBI's products would have been within the realm of natural expansion for Mariscos. [5] Tally-Ho instructs that in examining this question for the purpose of determining priority, we apply a variant of the familiar seven-factor test that FN4 pertains to the likelihood of confusion. TallyHo, 889 F.2d at 1027. As McCarthy explains, “[t]he ‘natural expansion’ thesis seems to be nothing more than an unnecessarily complicated application of the likelihood of confusion of source or sponsorship test to a particular factual situation. If the ‘intervening’ use was likely to cause confusion, it was an infringement, and the senior user has the right to enjoin such use, whether it had in fact already 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, dinnerware, glassware, and flatware extended to give plaintiff priority over intervening user in Judaica (i.e., household goods such as china commemorating Jewish culture) market, and applying a likeli-

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hood-of-confusion inquiry to determine whether Judaica products were “a natural expansion or continuation of [plaintiff's] existing product line”). FN4. The likelihood-of-confusion test, when applied at this stage in order to determine priority where there are issues of related use, does not substitute for the likelihood-of-confusion test that controls whether infringement of the plaintiff's trademark is occurring or has occurred. These are two independent inquiries. Once priority in the use of a mark for a particular class of goods or services has been established, then it is necessary to perform the likelihood-of-confusion test, as of the current time and as between the plaintiff's current products (i.e., those that inherit the priority with respect to the previously used mark) and the allegedly infringing products of the defendant, to determine whether the plaintiff ultimately prevails in a trademark infringement litigation. See Viking Boat Co., Inc. v. Viking Camper Supply, Inc., 191 U.S.P.Q. 297, 302-03 (T.T.A.B.1976) (distinguishing between the relevance of the likelihoodof-confusion test at the priority stage and at the stage of determining current confusion). [6][7] The seven factors that this Circuit uses for determining the likelihood of confusion are (1) the type of mark; (2) the similarity of the two marks; (3) the similarity of the goods; (4) the identity of customers and similarity of retail outlets, *1312 sometimes 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, 889 F.2d at 1027; Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1182 (11th Cir.), cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1985). Of course, when we use this test to analyze a priority question, we must consider the state of events that

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existed at the time the intervening use (i.e., CBI's FN5 use of CARNIVAL) commenced. See Viking Boat Co., Inc. v. Viking Camper Supply, Inc., 191 U.S.P.Q. 297, 303 (T.T.A.B.1976) (“[T]he question of natural expansion must be viewed not in light of present trade practices but rather what they were in 1961 when [the intervening user] began to do business under the mark ‘VIKING’.”). We conclude that there are genuine issues of material fact whether it would have been natural in 1990 for Mariscos to expand into seafood gumbo and chicken gumbo, and in 1992 for Mariscos to expand into shrimp cakes, crawfish cakes, lobster cakes, and crab cakes. Stated another way, we conclude that there are genuine issues of material fact whether there was a likelihood of confusion stemming from CBI's use of the CARNIVAL brand in 1990 in connection with seafood gumbo and chicken gumbo, and in 1992 in connection with shrimp cakes, crawfish cakes, lobster cakes, and crab cakes. FN5. Because there are really two separate instances of intervening use, we look both at 1990 (when CBI began selling chicken gumbo and seafood gumbo) and 1992 (when CBI began selling shrimp cakes, crawfish cakes, lobster cakes, and crab cakes). [8][9][10] We begin with the first factor of the seven-factor test. The strength of a mark depends on the logical correlation between a name and a product. Freedom Savings, 757 F.2d at 1182. If the seller of a product or service would naturally use a particular name, it is weakly protected. Id. The relationships between names and products fall into several classifications: generic, descriptive, suggestive, arbitrary or fanciful, and coined. Id. CARNIVAL would be arbitrary or fanciful as compared to raw shrimp because it is “a word in common usage applied to a service unrelated to its meaning.” Id. at FN6 FN7 1183 n. 5. Second, the marks are identical. Third, although, on the one hand, raw shrimp is certainly different from seafood gumbo and shrimp cakes, crawfish cakes, lobster cakes, and crab

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cakes; on the other hand, all of these are food FN8 products and are related to seafood. The very existence of the “related goods” or “natural expansion” doctrine contemplates that the goods need not be exactly alike, and that the senior user may reasonably expand into related goods. Cf. J.C. Penney Co., Inc. v. Security Tire & Rubber Co., Inc., 382 F.Supp. 1342, 1344 (E.D.Va.1974) (holding that under the natural expansion doctrine, plaintiff's priority that came from using the *1313 mark “SCAT-TRAC” in connection with bicycle tires extended to automobile tires, even though plaintiff did not actually start using “SCAT-TRAC” for automobile tires until after other parties did so). FN6. On the other hand, the strength of the CARNIVAL mark is diminished somewhat by the fairly frequent use of the CARNIVAL mark by third parties in other markets, as demonstrated by defendant CBI. See Sun Banks of Fla. v. Sun Fed. Sav. & Loan Ass'n, 651 F.2d 311, 316 (5th Cir.1981) (noting that the use of the word “Sun” by third parties in other lines of business tended to reduce the strength of the “SUN” mark with respect to financial services). FN7. Some evidence indicates that during its formative years, CBI used “CARNIVAL CAJUN CLASSICS” rather than “CARNIVAL.” Although CARNIVAL CAJUN CLASSICS is different from CARNIVAL, the word “carnival” is the most prominent identifying feature in the former. CBI has not argued to this Court that the presence of the additional words “cajun classics” prior to 1992 undermined the similarity, though CBI does contend that references on its packaging to Louisiana separate its mark apart. FN8. As aptly noted in CBSC's brief, CBI's reasoning emphasizing the distinction between shrimp and seafood gumbo could lead to untenable distinctions such as that

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“the Perdue chicken company cannot prevent another's use of the PERDUE mark for chicken pot pies, the Dole citrus company cannot prevent another's use of the DOLE mark for pineapple ice cream, and the Chiquita banana company cannot prevent another's use of the CHIQUITA mark for banana cream pie.” Appellant's Initial Brief at 27. The fourth factor involves the identity of purchasers and similarity of retail outlets. The evidence before the district court indicated that Mariscos sold its raw shrimp to distributor Ludwig, who in turn sold it to retail outlets and wholesalers including grocery stores (e.g., Winn Dixie and Giant), fish stores, and restaurants (e.g., Red Lobster and King Fish), which in turn would sell it to end consumers in piles of raw shrimp behind seafood counters (or, in the case of restaurants, would presumably incorporate it into a prepared dish). The evidence indicated that the name CARNIVAL was used in connection with these sales to retail outlets and wholesalers, but not that the word CARNIVAL was used at any further stage in the distribution FN9 chain. There is nothing to suggest that end users would have associated the CARNIVAL brand name with the high-quality raw shrimp sold by Mariscos. CBI sold its seafood gumbo, and later, its shrimp cakes, crawfish cakes, lobster cakes, and crab cakes, directly to retail outlets where those products would generally be purchased by end users while still in the packaging marked CARNIFN10 VAL. It would be unlikely for any confusion of source or sponsorship to arise at the level of the end user, since the end user would never see the CARNIVAL mark used in connection with Mariscos' high-quality raw shrimp. Rather, any possible confusion could arise only at the level of the retailers or wholesalers who purchased Mariscos' shrimp in boxes bearing the name CARNIVAL, and also were in the market for CBI's products. FN9. At oral argument, counsel for CBSC asserted that the CARNIVAL mark accom-

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panied the piles of raw shrimp that were displayed in grocery stores and fish markets for retail sale to end users. Counsel also informed us that Mariscos had sold some shrimp in retail packaging bearing the CARNIVAL name. Counsel for CBI contended in his rebuttal that these statements lacked factual support in the record. We have reviewed the summary judgment record, and find the following. First, there is no evidence that the CARNIVAL mark accompanied the piles of raw shrimp sold at retail. Second, while there is evidence to the effect that some shrimp were sold by Mariscos in one-pound retail packaging bearing the CARNIVAL name, the same evidence indicates that said retail packaging began in or around 1996, either at the initiative of CBSC after it was assigned Mariscos' rights, or only a few months before the Mariscos Assignment. In either event, retail packaging and the resultant exposure of retail consumers to the CARNIVAL name is not relevant to our analysis of priority because we must focus on the state of events that existed in 1990 and 1992. See Viking Boat, 191 U.S.P.Q. at 303 (“[T]he question of natural expansion must be viewed not in light of present trade practices but rather what they were in 1961 when [the intervening user] began to do business under the mark ‘VIKING’.”). FN10. The affidavit of CBI's principal said, “I have always sold Louisiana Creole or Cajun specialties that are prepared, prepacked, ready-to-eat specialty food products.... I have always packaged my Carnival Brands New Orleans prepared food products in retail-type packaging. I also offer the identical products in food service quantity but always under the same name. My products are not meant to be repackaged after sale and I am not aware of a single person or entity repackaging my

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products for resale.” An inference can be drawn from this affidavit that some food service establishments might sell CBI's products to the ultimate consumer without the CARNIVAL label affixed thereto. However, the primary way in which CBI's products appear to have reached the public is sales to grocery stores followed by sales to end users with the CARNIVAL name still attached. The district court acknowledged that “there may be some overlap between customers of the Plaintiff and the Defendant,” but explained that “such overlap would be limited to a situation in which a grocery store purchased boxes of the Plaintiff's raw shrimp from Ludwig to sell in the fresh fish department and that same grocery store purchased the Defendant's prepackaged, prepared foods for resale to consumers in the frozen food department.” District Court Order at 17. The court continued that “[t]his type of overlap is insignificant to the Court's likelihood of *1314 confusion analysis, in the absence of evidence which conflicts with the Defendant's characterization of its primary customers as consumers and not resellers of any kind.” Id. Somewhat contrary to the district court opinion, the case law indicates that confusion at pre-end consumer stages of the distribution process may be actionable. See Yarmuth-Dion, Inc. v. D'ion Furs, Inc., 835 F.2d 990, 994 (2d Cir.1987) (where designer who made fur coats sold them to department stores who then marketed them to end customers without the designer's identifying mark, it was error for district court to focus exclusively on the retail market (in which department store patrons would not recognize the designer's mark and therefore there would be no likelihood of confusion) because the wholesale market (i.e., the possibility of confusion among the department stores who bought the fur 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 defendant did not affix the mark to its product and therefore

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the end consumer was never made aware of the mark, but defendant promoted the mark to wholesalers, “[t]here is no reason in law or equity why [plaintiff] would not be entitled to forestall confusion at the wholesale level. The test of course is whether one-in this case a retailer-who had seen [plaintiff's] product under the mark [in question], would later know the difference when presented with an identical [product] offered to him under the [confusingly similar mark].”). The forecast of evidence indicates at least some degree of overlap between the type of customers, i.e., grocery chains, restaurants, etc., who bought from Mariscos and CBI. While it may ultimately turn out that no such overlap existed, and/or that there was no likelihood of confusion, we cannot say based on the current status of the record that there is no genuine issue of material fact on this point. We are hampered in our attempted review in this regard because the district court's analysis of the potential confusion at this wholesale level was limited to the cursory stateFN11 ments quoted above. FN11. On remand, the parties may wish to explore whether the purchasing agents of the commercial institutions buying Mariscos' shrimp were likely to be sophisticated businesspeople who would not be easily confused by the dual use of the CARNIVAL mark. Indeed, the case law and commentary indicate that this is frequently the case with respect to conflicting marks in wholesale markets. See Electronic Data Sys. Corp. v. EDSA Micro Corp., 23 U.S.P.Q.2d 1460, 1465 (T.T.A.B.1992); 3 McCarthy §§ 23:101, 23:102. Fifth, the evidence showed little with respect to advertising by either party in the critical time frame of FN12 1990, so the fifth factor is neutral in impact. Sixth, there is no evidence in the record that would indicate bad faith on the part of CBI's principal in his decision to use the name CARNIVAL or CARNIVAL CAJUN CLASSICS when he started doing business as a sole proprietorship in 1990. Rather,

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the unrebutted evidence suggests that he adopted the name to evoke the spirit of the Mardi Gras festivities in New Orleans, a city whose culture was closely associated with the cuisine of his product. Seventh, there is no evidence of actual confusion in FN13 the relevant time frame, i.e., 1990. FN12. The declaration of James Rukin, Mariscos' principal, indicates that Mariscos engaged in some advertising of its highquality raw shrimp but fails to give specific facts in this regard. FN13. It is at this point that the distinction between performing the likelihoodof-confusion test for purposes of determining priority via the natural expansion theory, on the one hand, and performing the likelihood-of-confusion test for purposes of determining whether current infringement has occurred, on the other hand, becomes highly significant. The former test focuses on the time frame when the intervening use began to occur-in this case, 1990, when CBI began doing business under the CARNIVAL name with respect to chicken gumbo and seafood gumbo, and 1992, with respect to shrimp cakes, crawfish cakes, lobster cakes, and crab cakes. See Viking Boat, 191 U.S.P.Q. at 303 (“[T]he question of natural expansion must be viewed not in light of present trade practices but rather what they were in 1961 when [the intervening user] began to do business under the mark ‘VIKING’.”). Thus, the various instances of actual confusion occurring at the FMI Show in Chicago and at the San Francisco trade show in 1997 are not relevant. *1315 Based on the totality of these factors, we conclude that there are genuine issues of material fact regarding the likelihood of confusion of source, sponsorship, or affiliation with respect to Mariscos' product compared to CBI's product, at the time CBI began doing business, and two years thereafter

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

when it began to sell processed seafood products other than gumbo. Cf. Tally-Ho, 889 F.2d at 1027 (senior use of “You and the Law” mark in connection with the title of an instructional television series in the educational telecourse market extended to the broadcast cable television market, because it was reasonable for consumers to be confused as to the relationship between the two users). The first and second factors-the strength of the mark and the similarity of the marks-clearly weigh in favor of CBSC. The fifth factor-advertising-is neutral. The sixth and seventh factors-intent and actual confusion-weigh in favor of CBI. With respect to the third factor-the similarity of the goods-raw shrimp and seafood gumbo are not so dissimilar that confusion is unlikely; the likelihood of confusing the instant goods would seem to depend upon the other relevant factors, including the context in which the potential victim of confusion comes into contact with the goods (which implicates the fourth FN14 factor). However, as we have seen, the other relevant factors are closely balanced, and there are genuine issues of material fact with respect to the fourth factor, the similarity of trade channels. In this particular case, we believe that the appropriate resolution of the remaining genuine issues of fact may be crucial to a proper disposition of this case; and we believe that further analysis by the district court in the first instance is appropriate. FN14. For example, when a retail customer in a grocery store sees a pile of raw shrimp at the fish counter, with no brand name at all, there is little likelihood that such end user would confuse the source or sponsorship of the raw shrimp with that of CBI's packaged seafood gumbo or shrimp cakes (bearing the CARNIVAL mark) even though located in another part of the same store. On the other hand, depending upon factors not yet analyzed by the district court, there may be a likelihood of confusion at the level of the retailers or wholesalers who purchased Mariscos' shrimp in boxes bearing the name CARNIVAL, and

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who were also in the market buying CBI's products bearing the same CARNIVAL mark. B. Hi-Seas Assignment [11] Second, plaintiff CBSC may have obtained rights in the CARNIVAL mark through the Hi-Seas Assignment. Because CBSC stepped into Hi-Seas' shoes, CBSC's priority depends on the priority as between Hi-Seas and CBI. Hi-Seas began using the CARNIVAL mark in June 1992 for fresh frozen shrimp, cooked shrimp, breaded shrimp, cooked crawfish, and breaded alligator. At that time, CBI had been operating since 1990 as an unincorporated sole proprietorship, and had been selling chicken gumbo and seafood gumbo. However, at that time, CBI had not yet expanded into other processed seaFN15 food products. FN15. CBI expanded into other processed seafood products, in particular shrimp cakes, crawfish cakes, lobster cakes, and crab cakes, in December 1992. Because CBI was using the CARNIVAL mark before Hi-Seas with respect to a different good, priority as between CBI and Hi-Seas turns on the same “natural expansion” concept that was explored supra in the context of Mariscos' priority and the Mariscos Assignment. That is, CBI is unquestionably the senior user with respect to seafood gumbo and chicken gumbo. The senior user's, i.e., CBI's, priority “may extend into uses in ‘related’ product or service markets,” i.e., the market for the products sold by Hi-Seas, because a trademark owner has protection “against the use of its mark on any product or service which would reasonably be thought by the buying public to come from the *1316 same source, or thought to be affiliated with, connected with, or sponsored by, the trademark owner.” Tally-Ho, 889 F.2d at 1023 (internal quotation marks omitted). If Hi-Seas' product was one into which CBI could have naturally expanded, then CBI could have enjoined Hi-Seas at that time, and

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

CBI would have priority. The issue is whetherwhen Hi-Seas started using the CARNIVAL mark in June 1992 for fresh frozen shrimp, cooked shrimp, breaded shrimp, cooked crawfish, and breaded alligator-there was a likelihood of confusion as between Hi-Seas' products and CBI's seafood gumbo which had been sold under the CARNIVAL mark since 1990. The existence of such likelihood of confusion, in turn, is determined by applying the familiar seven-factor test to Hi-Seas and CBI as of June 1992. The district court disregarded the Hi-Seas Assignment on the ground that “[a]ny rights received by Plaintiff via the assignment are legally insignificant ... because [the record] indicates that Hi-Seas' rights to the mark extended back only to June 10, 1992 .... [and] [h]aving used the ‘Carnival’ mark since 1990 in connection with the manufacture and sale of seafood gumbo and chicken gumbo, the Defendant's rights in the mark are senior to those assigned by Hi-Seas to the Plaintiff.” District Court Order at 8 n. 4. This ruling implicitly assumes that the natural expansion or related goods doctrine operated to extend CBI's priority from the seafood gumbo market to the market for the products sold by Hi-Seas. However, there is nothing in the district court's order to suggest that it applied the seven-factor test in analyzing this question, as directed by Tally-Ho, and we are not inclined to do so for the first time on appeal. Thus, on remand, the district court should conduct further proceedings, e.g., perform the proper analysis to decide whether there is any genuine issue of material fact as to whether the priority generated by CBI's senior use extended to give CBI priority in the use of the CARNIVAL mark in connection with the products sold by Hi-Seas.

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the mark CARNIVAL, we vacate. The order granting summary judgment is vacated and the cause is remanded for further proceedings in accordance with 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

IV. CONCLUSION Because we have determined that on this record, genuine issues of material fact remain outstanding regarding whether plaintiff CBSC may have derived priority (via either the Mariscos Assignment or the Hi-Seas Assignment) in the subject uses of

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

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382Tk1712 Permanent Injunctions 382Tk1714 Grounds and Subjects of United States Court of Appeals, Eleventh Circuit. CONAGRA, INC., a corporation, Plaintiff-Appellant, v. Robert C. SINGLETON, an individual, d/b/a SINGLETON SHRIMP BOATS, Singleton Shrimp Boats, Inc., a corporation, Defendants-Appellees. No. 83-3037. Oct. 11, 1984. Successor in interest in shrimp processing business brought action against predecessor's son alleging trademark infringement based on son's use of family name in business that was unrelated but similar to business father had established and which also used family name. The United States District Court for the Middle District of Florida, William J. Castagna, J., granted successor partial relief and fashioned injunction prohibiting son from using labels that were copies from product labels belonging to plaintiff, and plaintiff appealed. The Court of Appeals, R. Lanier Anderson, III, Circuit Judge, held that: (1) family surname had acquired secondary meaning as designation of father's shrimp processing business, and therefore, successor acquired trademark in name which it could assert against alleged infringing use; (2) likelihood of confusion existed between plaintiff and defendant's marks; (3) father did not abandon mark; and (4) doctrine of laches was not available to son in connection with the sale of processed shrimp. Reversed and remanded with instructions. West Headnotes [1] Trademarks 382T

1714(1)

382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions

Relief 382Tk1714(1) k. In General. Most Cited Cases (Formerly 382k870(2), 382k870.1 Trade Regulation) In order to merit injunctive relief under section of Lanham Act prohibiting false designation of origin, plaintiff must show that it has trademark rights in mark or name at issue and that defendant adopted mark or name that was same, or confusingly similar to plaintiff's mark, such that there was likelihood of confusion for consumers as to proper origin of goods created by defendant's use of name in his trade. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [2] Trademarks 382T

1419

382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1419 k. In General. Most Cited Cases (Formerly 382k870(2), 382k870.1 Trade Regulation) Use of another's unregistered, that is, common-law trademark can constitute violation of section of Lanham Act prohibiting false designation or origin where alleged unregistered trademarks used by plaintiff are so associated with its goods that use of same or similar marks by another company constitutes false representation that its goods came from same source. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [3] Trademarks 382T

1042

382T Trademarks 382TII Marks Protected 382Tk1040 Names as Marks

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382Tk1042 k. Persons, Names Of. Most Cited Cases (Formerly 382k34 Trade Regulation) Where alleged trademark was surname, trademark laws protected plaintiff's right to exclusive use of name only to extent that name had acquired secondary meaning. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

quisition of business by current owner, market surveys revealed that surname was strongly identified with products of business; thus, when current owner acquired business, it acquired trademark rights in name which it could assert against allegedly infringing users.

[4] Trademarks 382T

382T Trademarks 382TII Marks Protected 382Tk1040 Names as Marks 382Tk1042 k. Persons, Names Of. Most Cited Cases (Formerly 382k10 Trade Regulation) Factors to consider in determining whether surname has acquired secondary meaning entitling it to trademark protection are: length and manner of its use; nature and extent of advertising and promotion; efforts made by plaintiff to promote conscious connection in public's mind between name and plaintiff's product or business; and extent to which public actually identifies name with plaintiff's product or venture.

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 k. Factors Considered in General. Most Cited Cases (Formerly 382k870(2), 382k870.1 Trade Regulation) Likelihood of confusion for purposes of section of Lanham Act prohibiting false destination of origin is determined by analysis of number of factors, including strength of plaintiff's mark; similarity between plaintiff's mark and allegedly infringing mark; similarity between products and services offered by plaintiff and defendant, similarity of advertising methods, defendant's intent, and proof of actual confusion. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

[5] Trademarks 382T

[7] Trademarks 382T

1042

1628(2)

382T Trademarks 382TIX Actions and Proceedings 382TIX(C) Evidence 382Tk1620 Weight and Sufficiency 382Tk1628 Secondary Meaning 382Tk1628(2) k. Particular Cases. Most Cited Cases (Formerly 382k587 Trade Regulation) Secondary meaning of surname and its clear identification with shrimp packing business was established, where shrimp processing company had prominently displayed surname on virtually all of its seafood products for over 25 years, had expended over $400,000 annually in worldwide markets in its promotion of name, promotional efforts were consciously directed at establishing surname trademark in its relationship to business, and prior to ac-

[6] Trademarks 382T

1081

1086

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1083 Nature of Confusion 382Tk1086 k. Actual Confusion. Most Cited Cases (Formerly 382k870(2), 382k870.1 Trade Regulation) Trademarks 382T

1096

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1093 Relationship Between Marks 382Tk1096 k. Particular Marks, Similarity or Confusion Involving. Most Cited Cases

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

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

1526

382T Trademarks 382TVIII Violations of Rights 382TVIII(D) Defenses, Excuses, and Justifications 382Tk1521 Justified or Permissible Uses 382Tk1526 k. Use of Own Name. Most Cited Cases (Formerly 382k870(2), 382k870.1 Trade Regulation) Defendant adopted business name confusingly similar to plaintiff's trademark, where most distinctive aspect of defendant's business name was his surname, which was identical to plaintiff's mark, and customers and people in seafood trade actually confused defendant's business with that of plaintiff. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [8] Trademarks 382T

1207

382T Trademarks 382TVI Nature, Extent, and Disposition of Rights 382Tk1202 Licenses 382Tk1207 k. Implied Licenses. Most Cited Cases (Formerly 382k73 Trade Regulation) Acquiescence in use of trade name is analogous to implied license to use name which generally can be revoked at will of licensor. [9] Equity 150

67

150 Equity 150II Laches and Stale Demands 150k67 k. Nature and Elements in General. Most Cited Cases Equity 150

84

150 Equity 150II Laches and Stale Demands

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150k84 k. Application of Doctrine in General. Most Cited Cases Laches is equitable doctrine committed to sound discretion of district court and it depends on careful balancing of several factors. [10] Trademarks 382T

1171

382T Trademarks 382TV Duration and Termination of Rights 382Tk1167 Evidence 382Tk1171 k. Weight and Sufficiency. Most Cited Cases (Formerly 382k585 Trade Regulation) Defense of abandonment of trademark is one requiring strict proof. [11] Trademarks 382T

1165

382T Trademarks 382TV Duration and Termination of Rights 382Tk1162 Use by Others 382Tk1165 k. Objections; Laches, Acquiescence, and Delay. Most Cited Cases (Formerly 382k73 Trade Regulation) Permitted infringement on mark holder's exclusive rights for some period of time does not constitute nonuse of marks sufficient to support abandonment of trademark. [12] Trademarks 382T

1164

382T Trademarks 382TV Duration and Termination of Rights 382Tk1162 Use by Others 382Tk1164 k. Permission; Voluntary Arrangements. Most Cited Cases (Formerly 382k73 Trade Regulation) Where trademark holder's predecessor in interest evidenced no intent to abandon mark, but rather, used mark continuously and widely for 25 years preceding litigation, trademark was not abandoned even though trademark was family name and predecessor in interest had allowed his son's use of family name in unrelated but similar business. [13] Equity 150

72(1)

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

150 Equity 150II Laches and Stale Demands 150k68 Grounds and Essentials of Bar 150k72 Prejudice from Delay in General 150k72(1) k. In General. Most Cited Cases Laches defense requires proof of three elements: delay in asserting right or claims; that delay was not excusable; and that delay caused defendant undue prejudice. [14] Trademarks 382T

1534

382T Trademarks 382TVIII Violations of Rights 382TVIII(D) Defenses, Excuses, and Justifications 382Tk1533 Delay in Assertion of Rights; Laches 382Tk1534 k. In General. Most Cited Cases (Formerly 382k385.1, 382k385 Trade Regulation) Court determining whether doctrine of laches estops plaintiff from asserting its rights to trademark must consider public's interest in trademark as definite designation of single source of goods. [15] Trademarks 382T

1534

382T Trademarks 382TVIII Violations of Rights 382TVIII(D) Defenses, Excuses, and Justifications 382Tk1533 Delay in Assertion of Rights; Laches 382Tk1534 k. In General. Most Cited Cases (Formerly 382k386 Trade Regulation) Trademarks 382T

1535

382T Trademarks 382TVIII Violations of Rights 382TVIII(D) Defenses, Excuses, and Justifications

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382Tk1533 Delay in Assertion of Rights; Laches 382Tk1535 k. Knowledge of Facts. Most Cited Cases (Formerly 382k386 Trade Regulation) Laches defense was not available in trademark infringement action based on son's use of family name in sale of processed shrimp, where father had established similar business, family name was trademark of father's business, and father did not become aware of son's direct competition in processed shrimp market until after lawsuit began. *1510 Thomas T. Steele, Tampa, Fla., for plaintiffappellant. Jeffrey L. Myers, Largo, Fla., for defendants-appellees. Appeal from the United States District Court for the Middle District of Florida. Before HILL and ANDERSON, Circuit Judges, and TUTTLE, Senior Circuit Judge. R. LANIER ANDERSON, III, Circuit Judge: This case presents a somewhat unique issue regarding a son's right to use a family name in a business that is unrelated, but similar to the business his father had established. Conagra, Inc. appeals from the district court's ruling on its claim to enjoin the defendants, Singleton Shrimp Boats, Inc. and FN1 Robert C. Singleton, from using the Singleton name in the shrimp trade. Conagra, as a successor in interest to the trademark rights of Singleton Packing Corporation, brought the instant action under § 43(a) of the Lanham Act (15 U.S.C. § 1125), Florida's common law of unfair competition, and Fla.Stat. § 495.151, which prohibits unfair competition and dilution of an established trade name. The district court granted Conagra partial relief and fashioned an injunction prohibiting the defendants from using labels that were copied from the product labels belonging to Singleton Packing. On this appeal, we consider whether the court's remedy was

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

adequate protection for Conagra's trademark rights in light of the evidence adduced at trial. FN1. We will hereinafter primarily refer to the individual defendant, Robert C. Singleton, in discussing the actions of or positions asserted collectively by both defendants. I. FACTS Henry C. Singleton, Sr. began selling shrimp over 25 years ago in Tampa, Florida. The business was incorporated as Singleton Packing Corp., which through the years has engaged in procuring, packing, and processing shrimp. Although Singleton Packing sells some unprocessed and unlabeled products to a variety of customers, its primary product line consists of processed seafood products, which it markets either directly to large food service customers or through independent food brokers around the world. In the years preceding this litigation, Singleton Packing achieved annual sales of over $100,000,000 and was spending $400,000 a year on advertising and promotion. It ranks as the largest packer-processor of shrimp in the *1511 United States. With the exception of its sales of fresh or unprocessed shrimp, all of Singleton Packing's products are distributed with labels prominently displaying the Singleton name. Conagra, through a subsidiary corporation, acquired the operating assets and business of Singleton Packing from Henry C. Singleton on January 9, 1981. Under the purchase contract, Singleton transferred to Conagra all rights, title, and interest in and to any trademarks, trade names, and good will associated with Singleton Packing. Singleton Shrimp Boats is a Florida corporation, organized in 1978 with its principal place of business in Pinellas County, Florida, across the Bay from Singleton Packing's headquarters in Tampa. Robert C. Singleton, the individual defendant, is a founder, chief executive, and principal owner of Singleton

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Shrimp Boats. Robert C. Singleton is also the son of Henry C. Singleton, the founder of Singleton Packing and Conagra's predecessor in interest in that corporation. Singleton Shrimp Boats is engaged in the wholesale and retail marketing of fresh and processed shrimp products in Florida. At the time this litigation began, Singleton Shrimp Boats had 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 regarding the defendant's continued use of the Singleton name. Conagra claimed that the Singleton name, although not registered as a trademark, had acquired secondary meaning among consumers of seafood products, and thus was entitled to protection under the trademark laws. Because the defendants were subsequent users of the name, Conagra sought to prohibit the defendant's prominent display of the name in connection with Singleton Shrimp Boats' business. Robert C. Singleton defended primarily on the grounds that Henry C. Singleton and Singleton Packing had acquiesced in his use of the Singleton name in connection with his business. He argued to the district court that he had been selling fresh shrimp and shrimp products since 1972, first from a retail outlet under the name Singleton Seafood Center, and later through the defendant corporation. As further proof of acquiescence, Robert C. Singleton argued that his father knew of his activities in the shrimp business and, rather than objecting to his use of the Singleton name, had encouraged the son's business by selling shrimp to Singleton Shrimp Boats under a steadily increasing line of credit. The district court held that the defendant could continue to use the Singleton name in the shrimp trade. The court first found that the name had not acquired secondary meaning to consumers. Alternatively, it found that Singleton Packing Company had acquiesced in Robert C. Singleton's use of the name in the shrimp trade. Finally, with respect to the labels which Robert C. Singleton admitted copying from Singleton Packing, the district court found that the

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

defendant's use of the copied labels created a likelihood of confusion, and the court enjoined the defendant from using those labels on the processed shrimp products of Singleton Shrimp Boats.

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laches issue, and affording greater protection to Conagra's trademark rights in the Singleton name than was granted in the court's previous order. III. DISCUSSION

II. INTRODUCTION The defendant has not cross-appealed the district court's judgment enjoining use of the copied labels. Thus, we consider only Conagra's claim that the district court's refusal to enjoin the defendant's use of the Singleton name failed to adequately protect Conagra's right to exclusive use of that name in the shrimp trade. Conagra argues that the district court's findings-(1) that the Singleton name had not acquired secondary meaning, and (2) that Singleton Packing had acquiesced in the defendant's use of the name-were clearly erroneous. We first evaluate the secondary meaning issue and determine that the district court's finding on this issue was contrary to the strong evidence in the record. We further conclude that Conagra established facts that entitled it to greater protection for its exclusive use of the Singleton name than was afforded by the district court's order. *1512 We next consider the affirmative defense of acquiescence. Because the district court did not specify findings relating to either of the two doctrines argued by the defendant, abandonment or laches leading to equitable estoppel, we look at those doctrines. We conclude that the defendant presented insufficient evidence to carry the burden on the abandonment issue. We also conclude that the laches defense cannot support the defendant's continued use of the Singleton name in connection with the sale of processed shrimp. However, the defendant may have established a laches defense with regard to his use of the Singleton name in connection with the sales of fresh shrimp, and therefore we remand to the district court for further proceedings on this aspect of the laches defense. Accordingly, we leave it to the district court to fashion an appropriate remedy, consistent with its finding on the

A. Conagra Has An Interest in the Singleton Name that Entitles it to Protection Under the Trademark Laws [1] Our cases have established two elements that Conagra had to prove to merit injunctive relief unFN2 der § 43(a) of the Lanham Act: (1) that it has trademark rights in the mark or name at issue-i.e., Singleton, see, e.g., Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540, 1545 (11th Cir.1984); and (2) that the defendant adopted a mark or name that was the same, or confusingly similar to the plaintiff's mark, such that there was a likelihood of confusion for consumers as to the proper origin of the goods created by the defendant's use of the Singleton name in his trade. See, e.g., id. at 1547; Jellibeans, Inc. v. Georgia Skating Clubs, Inc., 716 F.2d at 839-46; John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 981 (11th FN3 Cir.1983). FN2. Section 43(a) provides in pertinent part: Any person who shall fix, apply, or annex, to any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols intending to falsely describe or represent the same ... shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin ... or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation. 15 U.S.C. § 1125(a). In essence, Cona-

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

gra's claim in this litigation is that the defendant's use of the Singleton name in the shrimp business is a false designation of the origin of the defendant's goods because consumers would be led to believe either that the defendant's products were produced by Singleton Packing, or that Singleton Shrimp Boats and Singleton Packing were somehow affiliated. As such, Conagra states a claim similar to those previously recognized as falling within the scope of § 43(a). See, e.g., Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833 (11th Cir.1983); cf. Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1163 (11th Cir.1982) (discussing standards for recovery under § 32(1)(a) of the Lanham Act, a provision closely analogous to § 43(a)). For purposes of this opinion, we draw no distinction between the cases relying upon § 43(a), which applies to unregistered but protectable marks, and § 32(a), which applies to registered marks. See Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d at 839 n. 14. FN3. Because of the similarity between Conagra's claim under the Lanham Act and its state common law and statutory claims, see Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir.1982); Amstar Corp. v. Domino's Pizza, 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 we find for Conagra on its Lanham Act claim, we do not address the state law claims separately. 1. Conagra's Right to the Singleton Name [2][3] With respect to the first element, Conagra's right to the exclusive use of the Singleton name in

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the shrimp trade, there is no dispute that Conagra purchased the full trademark rights to the name that belonged to Henry C. Singleton and Singleton Packing, whatever those rights might be. Although the Singleton name was not registered, the use of another'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 goods that the use of the same or similar marks by another company constitutes a [false] representation that its goods came from the same source.’ ” Boston Professional Hockey Ass'n v. Dallas Cap & Emblem FN4 Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir.1975) (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 laws protect Singleton Packing's (and thus Conagra's) right to exclusive use of the name only to the extent that the name has acquired “secondary meaning.” See Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 702 (5th Cir.1981) (the trademark laws require proof of secondary meaning when the trademark is not sufficiently distinctive to identify the product as tied to a specific producer, as in the case of a family surname; in such cases the courts require a showing that the public identifies the name with the producer as the source of the FN5 product). The district court's ruling, that the Singleton name had not acquired secondary meaning, is a finding of fact that we evaluate under the clearly erroneous standard. See Brooks Shoe Mfg., Inc. v. Suave Shoe Corp., 716 F.2d 854, 860 (11th Cir.1983); Fed.R.Civ.P. 52. FN4. In Bonner v. City of Prichard, 661 F.2d 1206 (11th Cir.1981) (en banc), this court adopted as binding precedent all of the decisions of the former Fifth Circuit handed down prior to the close of business on September 30, 1981. Id. at 1209. FN5. As noted in Original Appalachian Art Works, Inc. v. Toy Loft, Inc., 684 F.2d

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821, 831 n. 14 (11th Cir.1982), Chevron Chemical is not binding authority in this circuit because it was decided by a Unit A panel of the former Fifth Circuit after October 1, 1981. See Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir.1981) (en banc); Stein v. Reynolds Securities, Inc., 667 F.2d 33, 34 (11th Cir.1982). Nevertheless, Chevron Chemical is persuasive authority because it relies directly on former Fifth Circuit cases which are binding precedent on this court. [4] The factors to consider in determining whether a name such as Singleton has acquired secondary meaning are: (1) the length and manner of its use; (2) the nature and extent of advertising and promotion; (3) the efforts made by the plaintiff to promote a conscious connection in the public's mind between the name and the plaintiff's product or business; and (4) the extent to which the public actually identifies the name with the plaintiff's product or venture. See Brooks Shoe Mfg., Inc. v. Suave Shoe Corp., 716 F.2d at 860; Volkswagenwerk Aktiengesellschaft v. Rickard, 492 F.2d 474, 477-78 (5th Cir.1974). [5] In the instant case, the secondary meaning of the Singleton name and its clear identification with FN6 Singleton Packing was hardly in dispute. The first three factors supporting a finding of secondary meaning were clearly set forth in the record. Singleton Packing has prominently displayed the Singleton name on virtually all of its seafood products for over 25 years. It expended over $400,000 annually in worldwide markets in its promotion of the name. According to the current president of Singleton Packing, the promotional efforts were consciously directed at establishing the Singleton mark and its relationship to Singleton Packing's business. As an example, Conagra introduced a promotional film, which tied the Singleton name to the group of seafood products that Singleton Packing marketed. The film, which emphasized the extensive efforts at quality control de-

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veloped by Singleton Packing, had been widely displayed to brokers and retailers in the seafood business for over three years preceding the instant litigation. FN6. Indeed, in his opening remarks to the court below, counsel for the defendant stated that “the name Singleton did, in fact, obtain a secondary meaning.” Trial Transcript at 21. We note this statement not as a binding concession by the defendants, cf. Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 263 n. 9 (5th Cir.1980), but rather to emphasize that defense counsel correctly perceived the strength of the plaintiff's proof on this issue. Finally, on the fourth and most telling factor, there was ample evidence that Singleton Packing had achieved the recognition for the Singleton name that it had sought. A representative of Conagra testified*1514 that prior to the acquisition of Singleton Packing, market surveys revealed that the Singleton name was strongly identified with the products of Singleton Packing. An independent broker testified that he merely had to mention the Singleton name and customers knew that he was speaking of Singleton Packing. Henry C. Singleton testified that the Singleton name had achieved wide recognition in the industry by 1970. Even the individual defendant, Robert C. Singleton, referred to Singleton Packing as “Singleton” and testified that the name was recognized in the industry as referring to his father's company. By this uncontradicted evidence at trial, it is clear that the Singleton name had acquired secondary meaning as the designation of the business of Singleton Packing. The district court was clearly erroneous in finding to the contrary. Thus, when Conagra acquired Singleton Packing, it acquired trademark rights in the Singleton name, which it could assert against allegedly infringing users. 2. Likelihood of Confusion

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We now turn to a consideration of the defendant's use of the name to determine whether it caused a likelihood of confusion, such that Conagra was entitled to enjoin the defendant's continued use of the name in connection with the shrimp trade. The district court, because of its findings on the secondary meaning issue, did not have occasion to consider the likelihood of confusion question in the context FN7 of the defendant's general use of the name. Because likelihood of confusion is a fact question, see Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d at 840 & n. 16, we ordinarily would remand for findings on this issue. In the instant case, however, the plaintiff's proof on this issue was so strong that any finding other than one of likely confusion would be clearly erroneous. Therefore, we decide the issue. FN7. The district court did find a likelihood of confusion in the limited area of the defendant's use of the copied labels. [6] Likelihood of confusion for purposes of § 43(a) of the Lanham Act is determined by analysis of a number of factors, including: (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 defendant; (4) the similarity of the sales methods, i.e., retail outlets or customers; (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) the most persuasive factor on likely confusion is proof of actual confusion. See, e.g., Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d at 739-46. We find that the similarity between the Singleton mark and the defendant's business name, Singleton Shrimp Boats, and, most persuasively, the proof that Conagra offered on actual confusion compelled a fact finding of likely FN8 confusion. FN8. The remaining factors, although not as overwhelmingly established in the re-

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cord, do not undermine our conclusion that a finding of likely confusion was compelled, and we do not address these factors separately. a. Similarity of the Marks [7] The distinctive aspect of the defendant's business name, Singleton Shrimp Boats, is the name Singleton, which of course is identical to the plaintiff'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 found to infringe the trade name “Safeway; ” the words “Discount Center” or “Discount Drugs” were found to be merely descriptive). The Singleton name is set out, apart from the words “Shrimp Boats,” on all of the defendant's trucks, signs, media advertising, and business cards. We have no trouble concluding that the defendant has adopted a business name confusingly similar to the plaintiff's mark. Cf. *1515Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d at 841-42 (trade names “Jellibeans” and “Lollipops” were found to be confusingly similar); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 975-76 (11th Cir.1983) (upholding lower court's finding that names “Memory Stub” and “Entry Stub” were found to be confusingly FN9 similar). FN9. With regard to the defendant's adoption of a nondescriptive name, such as Singleton, we note that the defendant's action generally would support a finding of intent to trade on the reputation of the plaintiff'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 using his own name in the shrimp trade. In such a case, the courts are less likely to find intentional infringement. An individual generally will be given some opportunity to use his own name and establish a reputa-

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tion for that name, even in the face of a prior user's trademark rights in the name, so long as the person using the name distinguishes his business and use of the name from the business owning the trademark rights. See, e.g., Taylor Wine Co. v. Bully Hill Vineyards, Inc., 569 F.2d 731, 735-36 (2d Cir.1978). It appears from the record that Robert C. Singleton did make some attempt to disassociate Singleton Shrimp Boats from his father's business and develop a reputation in the shrimp trade independent from Singleton Packing. Thus, although some facts in the case point to an intent on the part of Singleton Shrimp Boats to ride on the coattails of Singleton Packing, i.e., copying the Singleton Packing labels, the evidence was not alone so strong that the district court would have been compelled to find that the defendant intended to infringe on the Singleton mark. Contrary to Conagra's assertion on appeal, the evidence on intent was not strong enough, by itself, to compel a finding of likely confusion. However, even without proof of intent, the evidence on the similarity of the marks and the proof of actual confusion was strong enough to compel such a finding. b. Actual Confusion The most persuasive proof of likely confusion in the instant case was Conagra's proof of actual confusion. See Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d at 1166-67. In response to interrogatories propounded by Conagra, the defendant reported numerous instances where people, sometimes customers, assumed that defendant's business was affiliated with, or actually was, FN10 Singleton Packing. In addition, Conagra introduced evidence that it received inquiries from its distributors about competing direct sales of Singleton products to restaurants and retailers; Singleton Packing made no such direct sales, but

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Singleton Shrimp Boats did. In short, Conagra established that customers and people in the seafood trade actually confused the defendant's business with that of the plaintiff. FN10. Singleton Shrimp Boats received calls from customers complaining about shrimp purchased from a grocery chain that sold the products of Singleton Packing, not Singleton Shrimp Boats. Suppliers would often call Singleton Shrimp Boats attempting to sell them products under the assumption that Singleton Shrimp Boats was in fact Singleton Packing. Prospective employees had contacted Singleton Shrimp Boats in response to “help wanted” ads placed by Singleton Packing Corporation. Customers had made comments to the defendant that “Conagra had bought out” the defendant's business, when in fact Conagra purchased Singleton Packing. Finally, the defendant had received invoices billing him for purchases that had been made by Singleton Packing. Conagra's proof of actual confusion resulting from the defendant's use of a confusingly similar mark was such strong evidence of likely confusion that the district court could not have reasonably found otherwise. Conagra thus established in the lower court that it had a trademark right to the Singleton name, which preceded the defendant's use of that name, and that the defendant's use of the name led to a likelihood of confusion. Absent any justification for the defendant's infringing use by way of some affirmative defense, Conagra was entitled to protection under § 43(a) of the Lanham Act against FN11 the defendant's infringing use. FN11. This is not to say that Robert C. Singleton must be totally foreclosed from use of his proper surname in the shrimp business. Thus far we have considered only the defendant's actual use of that name, i.e., the prominent display of the Singleton name accompanied only by the

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descriptive words “Shrimp Boats.” We have found this use to be infringing. However, as we have noted, see supra note 9, the courts have been reluctant to absolutely prohibit an individual from using his proper name in connection with a business. The important consideration in this context is whether the defendant can use the name in a fashion that will not lead to likely confusion with the plaintiff's business, for which the plaintiff has exclusive right to use the Singleton trade name. We do not decide whether the defendant's use of his full name, Robert C. Singleton, or use of the Singleton name with some disclaimer disavowing any affiliation with Singleton Packing, would lead to likely confusion. The district court is free to consider this issue on remand. *1516 B. Acquiescence The defendant raises the affirmative defense of acquiescence. The district court, as an alternative to its finding of no secondary meaning, found that Conagra's predecessors in interest to the name, Henry C. Singleton and Singleton Packing, had authorized the defendant's use of the name in the shrimp trade and that this authorization precluded Conagra from terminating that use. Conagra does not deny that Henry C. Singleton was aware of and did not object to his son's shrimp businesses using the Singleton name. Conagra further concedes that Singleton Packing was a significant supplier of fresh shrimp to Robert C. Singleton's various businesses. Conagra, however, argues that these facts did not support a ruling that Singleton Packing is now unable to prevent the defendant's continued use of the Singleton trademark. [8][9] A finding of acquiescense, as such, in the defendant's use of the name, was not sufficient to foreclose Conagra's rights to terminate that use. Acquiescence alone is analogous to an implied license to use the name. Cf. Menendez v. Holt, 128 U.S.

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514, 524, 9 S.Ct. 143, 145, 32 L.Ed. 526 (1888) ( “where consent by the owner to use of his trademark by another is to be inferred from his knowledge and silence merely, ‘it lasts no longer than the silence from which it springs; it is, in reality, no more than a revocable license.’ ”). An implied license is generally terminable at the will of the licensor. Id. See also, University of Pittsburgh v. Champion Products, Inc., 686 F.2d 1040, 1045 (3d Cir.), 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). To continue in its use of the Singleton name subsequent to the mark holder's desire to terminate that use, the defendant bore the burden of establishing one of the affirmative defenses of either abandonment or laches leading to equitable estoppel. See 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies § 79.1 (1982). We examine FN12 each of these doctrines seriatim. FN12. As we have noted, the district court made no specific findings on either abandonment or laches, although it did grant relief on the defendant's acquiescence claim. We assume arguendo that abandonment is a fact issue, and we analyze the record to determine whether a finding of abandonment would be clearly erroneous. Laches is an equitable doctrine committed to the sound discretion of the district court and it depends on the careful balancing of several factors. Environmental Defense Fund, Inc. v. Alexander, 614 F.2d 474, 477-79 (5th Cir.), cert. denied, 449 U.S. 919, 101 S.Ct. 316, 66 L.Ed.2d 146 (1980). We thus consider the laches defense by analyzing the underlying factors under the clearly erroneous standard, and assuming arguendo that the lower court exercised its discretion in affording the defendant relief on this claim.

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1. Abandonment [10][11][12] The defense of abandonment is one for which we require strict proof. See Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d at 1545. Under this doctrine: Defendants must show that the plaintiff actually abandoned the use of the mark, and, also, that the plaintiff 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 exclusive rights for some period of time does not constitute nonuse of the mark sufficient to support an abandonment. See United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 139 (3d Cir.1981). Furthermore, the plaintiff's predecessor in the instant case, Singleton Packing, evidenced no intent to abandon the mark; it used the mark continuously and widely over the 25 years preceding the litigation. The doctrine of abandonment *1517 generally applies only when the plaintiff mark holder relinquishes his exclusive rights to the world, not merely to a single user, see Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 363 (2d Cir.1959) (abandonment occurs only when mark holder fails to use its mark anywhere in the nation) FN13 ; the latter case is more appropriately classified as a license. See Menendez v. Holt, 128 U.S. at 524, 9 S.Ct. at 145. A finding that Henry C. Singleton and Singleton Packing, as Conagra's predecessors, abandoned the mark would have been clearly erroneous in light of the evidence at trial. FN13. We discuss a narrow exception to this general rule infra at note 15, and find that exception inapplicable in the instant case. 2. Laches Leading to Estoppel [13][14] The question of laches, which can lead to estoppel of the plaintiff's exclusive claim to use the mark, creates a much closer issue on the facts of

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this case. The laches defense requires proof of three elements: (1) a delay in asserting a right or claim; (2) that the delay was not excusable; and (3) that the delay caused the defendant undue FN14 prejudice. Environmental Defense Fund v. Alexander, 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 delay and the prejudice caused by that delay. See Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d at FN15 1546. In addition, a court determining whether the doctrine of laches estops the plaintiff from asserting its rights also must consider the public's interest in the trademark as a definite designation of a single source of the goods. Thus, although a defendant suffers some prejudice, the public interest in avoiding confusion might outweigh that prejudice. See James Burrough Ltd. v. Sign of the Beefeater, Inc., 572 F.2d 574, 578 (7th Cir.1978). FN14. With regard to the prejudice factor, a defendant's intent to wrongfully infringe on the plaintiff's mark undermines the weight to be given this factor. See University of Pittsburgh v. Champion Products, Inc., 686 F.2d 1040, 1044 n. 14 (3d Cir.1982). FN15. In University of Pittsburgh v. Champion Products, Inc., the court noted that the laches defense actually consists of two classes of cases: one in which the plaintiff's delay has been so outrageous, unreasonable, or unexcusable as to constitute virtual abandonment, and a second, more common class of cases, in which the delay is not so unreasonable and the defendant must show the type of prejudice leading to estoppel. 686 F.2d at 1044-45. The instant case falls into this second class of cases and thus the list of factors set forth above properly govern the analysis of this defense. To properly consider the laches defense in the in-

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stant case, we must separate the two aspects of the defendant's business. We conclude that laches defense cannot support the defendant's continued use of the Singleton name in connection with the sale of processed shrimp. A contrary finding by the district court would have been an abuse of discretion. The defendant's continued use of the name in connection with the sale of fresh shrimp, however, requires a remand to the district court for more detailed consideration of the laches defense. [15] With regard to the defendant's use of the Singleton mark in the sale of processed shrimp, there was complete justification for the delay; in effect, there was no acquiescence. The father did not become aware of the defendant's direct competition in the processed shrimp market until after this lawsuit began. Thus, the evidence in the case does not support a finding that Singleton Packing inexcusably delayed in asserting its exclusive right to the Singleton mark as it related to the defendant's sale of processed shrimp. See supra note 12 (facts underlying laches defense reviewed under clearly erroneous standard). Because one of the requisite elements of the defense was not met, a finding of laches with respect to processed shrimp would be an abuse of discretion. The defendant's use of the Singleton name for his sales of fresh shrimp presents a more difficult question. The facts governing*1518 the lower court's discretion on this issue are not clearly apparent from the record and we are unable to determine whether application of the laches doctrine to this aspect of the defendant's business would constitute an abuse of discretion. The defendant's father was aware of his son's use and prominent display of the Singleton name in various shrimp businesses for over 10 years. The corporate defendant, Singleton Shrimp Boats, began operations in 1978. Thus, it can properly be said that the father delayed in asserting his exclusFN16 ive rights to the name. This delay was accompanied by encouragement in the form of sales to the defendant by Singleton Packing on an established

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line of credit. See, e.g., Ambrosia Chocolate Co. v. Ambrosia Cake Bakery, 165 F.2d 693, 695 (4th Cir.1947) (sales of raw materials by the plaintiff mark holder to the defendant infringer deemed relevant to the defendant's permissive use of the mark). In addition, with regard to fresh shrimp sales, no justification for the delay appears in the record. FN16. The proof at trial showed that the defendant's use of the Singleton name was not continuous over the 10-year period. Singleton Seafood Center, which the individual defendant operated from 1972 to 1977, was a distinct business from Singleton Shrimp Boats in its operation, location, and facilities. For over 6 months after Singleton Seafood Center ceased operation, Robert C. Singleton was not engaged in the shrimp trade. The court on remand must decide whether there was sufficient connection between the two businesses to support a finding that Singleton Shrimp Boats, a business formed in 1978, can assert the prior existence of Singleton Seafood Center in support of its continued right to use the Singleton name. With regard to the prejudice issue, the record shows that Robert C. Singleton and Singleton Shrimp Boats spent $120,000 from 1978 until 1981 advertising the business. All of the advertising clearly and prominently displayed the Singleton name. However, we cannot determine from the record how much of that advertising was directly related to fresh shrimp sales, rather than the nonconsensual use of the Singleton name on copied labels or advertising related to processed shrimp products, which could not properly be considered in evaluating the defendant's prejudice. There is little evidence in the record on which we could base a conclusion regarding the detriment the defendant would suffer from a change in name. Moreover, the case before us lacks any factfindings regarding the issue of the defendant's intent in using the

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Singleton name in his fresh shrimp business. See supra note 14.

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

Finally, although the evidence in the record clearly showed likely confusion stemming from the defendant's use of the Singleton name, we cannot determine whether this confusion would persist if that use was limited to fresh shrimp sales, and whether public confusion from such use would outweigh the prejudice to the defendant.

We also leave to the district court's determination the proper scope of injunctive relief, consistent with its finding on the laches issue and our holding that the defendants may not use the Singleton trademark in connection with sales of processed shrimp. In molding its injunctive order, the district court is free on remand to consider whether the defendant might be able to continue using his surname, both in connection with fresh and processed shrimp, but in a fashion not likely to cause confusion with Singleton Packing's exclusive rights to that name. See supra notes 9 and 11.

Careful consideration of these factors, the possible need for additional evidence, the finding of facts on the elements of the laches defense, and the sound exercise of discretion based on the facts are matters best left to the district court on remand. IV. CONCLUSION We have concluded that Conagra possesses trademark rights in the name “Singleton,” because that name has acquired secondary meaning among consumers. The district court's finding to the contrary was clearly erroneous. We have further concluded, based primarily on the evidence of actual confusion, that the defendant's use of the Singleton name in connection with Singleton Shrimp Boats infringes on Conagra's trademark rights to that name and causes likely confusion.

The case is REVERSED and REMANDED with instructions. C.A.Fla.,1984. Conagra, Inc. v. Singleton 743 F.2d 1508, 224 U.S.P.Q. 552 END OF DOCUMENT

With regard to the acquiescence defense, we have determined that a finding of abandonment would be clearly erroneous on these facts. We have further determined that the laches defense cannot apply to authorize the defendant's continued use of the Singleton name in connection with his sales of processed shrimp. The laches defense may apply, however, to permit the defendant's continued use of the Singleton name in connection with fresh shrimp sales. We therefore remand to the district court *1519 for purposes of determining whether, upon balancing the factors we have discussed and any additional evidence the court may wish to consider, the defendant sufficiently established a laches defense that estops Conagra from preventing his use

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Westlaw Delivery Summary Report for PATRICK,BRADFORD Date/Time of Request: Client Identifier: Database: Citation Text: Lines: Documents: Images:

Monday, July 6, 2009 12:01 Central OSHNA FEDFIND 931 F.2d 1519 510 1 0

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

United States Court of Appeals, Eleventh Circuit. INVESTACORP, INC., Plaintiff-Appellant, v. ARABIAN INVESTMENT BANKING CORPORATION (INVESTCORP) E.C. d/b/a Investcorp and Investcorp International, Inc., a Delaware Corporation, Defendants-Appellees. No. 89-6060. May 29, 1991. Financial services company brought service mark infringement action against investment bank and wholly owned subsidiary. The United States District Court for the Southern District of Florida, No. 88-01962-CIV-TES,Thomas E. Scott, J., 722 F.Supp. 719, entered summary judgment in favor of bank and subsidiary. Company appealed. The Court of Appeals, Edward S. Smith, Senior Circuit Judge, sitting by designation, held that: (1) service mark, “Investacorp,” was descriptive and could be protected only if it acquired secondary meaning before bank and subsidiary used similar term “Investcorp,” and (2) service mark did not acquire secondary meaning during five years prior to bank's use of mark. Affirmed. West Headnotes [1] Trademarks 382T

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382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases (Formerly 382k462)

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To prove service mark infringement, plaintiff must show that defendant used term in commerce, that defendant's term was used in connection with defendant's services, and that defendant's term is likely to be confused with term in which plaintiff possesses right to use to designate plaintiff's services. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [2] Trademarks 382T

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382T Trademarks 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1030 k. In General. Most Cited Cases (Formerly 382k11, 382k10) Business does not automatically obtain rights in mark by using it and will obtain rights in mark upon first use only if mark is inherently distinctive, but if mark is not inherently distinctive, business may obtain rights in mark when it attains secondary meaning. Fed.Rules Civ.Proc.Rule 56(c), 28 U.S.C.A. [3] Trademarks 382T

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382T Trademarks 382TII Marks Protected 382Tk1034 k. Generic Terms or Marks. Most Cited Cases (Formerly 382k23) Generic term is typically incapable of achieving service mark protection because it has no distinctiveness. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [4] Trademarks 382T

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382T Trademarks 382TII Marks Protected 382Tk1035 Descriptive Terms or Marks 382Tk1037 k. Acquired Distinctiveness; Secondary Meaning. Most Cited Cases

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(Formerly 382k13) Because descriptive service mark is not inherently distinctive, it may be protected only if it acquires secondary meaning. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [5] Trademarks 382T

1042

382T Trademarks 382TII Marks Protected 382Tk1040 Names as Marks 382Tk1042 k. Persons, Names Of. Most Cited Cases (Formerly 382k34) If personal name mark acquires secondary meaning, it is afforded strength of inherently distinctive mark. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [6] Trademarks 382T

1047(1)

382T Trademarks 382TII Marks Protected 382Tk1045 Geographical Terms or Names as Marks 382Tk1047 Descriptiveness 382Tk1047(1) k. In General. Most Cited Cases (Formerly 382k32.1, 382k32) Trademarks 382T

1048

382T Trademarks 382TII Marks Protected 382Tk1045 Geographical Terms or Names as Marks 382Tk1048 k. Acquired Distinctiveness; Secondary Meaning. Most Cited Cases (Formerly 382k32.1, 382k32) Marks which are descriptive of geographic location of source of service are treated in same manner as personal name marks and are afforded strength of inherently distinctive mark, if they acquire secondary meaning. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [7] Trademarks 382T

1038

Page 2

382T Trademarks 382TII Marks Protected 382Tk1038 k. Suggestive Terms or Marks. Most Cited Cases (Formerly 382k25) “Suggestive term” suggests characteristics of service and requires effort of imagination by consumer in order to be understood as descriptive of the service. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [8] Trademarks 382T

1038

382T Trademarks 382TII Marks Protected 382Tk1038 k. Suggestive Terms or Marks. Most Cited Cases (Formerly 382k25) Because suggestive service mark is inherently distinctive, no proof of secondary meaning is required for it to be protected. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [9] Trademarks 382T

1039

382T Trademarks 382TII Marks Protected 382Tk1039 k. Arbitrary or Fanciful Terms or Marks. Most Cited Cases (Formerly 382k24) Arbitrary or fanciful terms are inherently distinctive and can be protected without proof of secondary meaning. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [10] Trademarks 382T

1036

382T Trademarks 382TII Marks Protected 382Tk1035 Descriptive Terms or Marks 382Tk1036 k. In General. Most Cited Cases (Formerly 382k16) Trademarks 382T

1038

382T Trademarks

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382TII Marks Protected 382Tk1038 k. Suggestive Terms or Marks. Most Cited Cases (Formerly 382k16) Trademarks 382T

1039

382T Trademarks 382TII Marks Protected 382Tk1039 k. Arbitrary or Fanciful Terms or Marks. Most Cited Cases (Formerly 382k16) Financial services company's service mark, “Investacorp,” was “descriptive,” rather than “suggestive,”“arbitrary” or “fanciful,” and, therefore, could be protected only if it acquired secondary meaning; customer observing the service mark did not need to exercise imagination to perceive nature of company's services as advising customers in corporate investment opportunities. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [11] Trademarks 382T

1036

382T Trademarks 382TII Marks Protected 382Tk1035 Descriptive Terms or Marks 382Tk1036 k. In General. Most Cited Cases (Formerly 382k13) Trademarks 382T

1058

382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1058 k. Multiple Elements; Combinations. Most Cited Cases (Formerly 382k13) Third-party usage and idea conveyed to observer by plain dictionary definition of formatives comprising mark are probative to determine whether term is descriptive. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [12] Administrative Law and Procedure 15A

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753 15A Administrative Law and Procedure 15AV Judicial Review of Administrative Decisions 15AV(D) Scope of Review in General 15Ak753 k. Theory and Grounds of Administrative Decision. Most Cited Cases Court of Appeals will not defer to ethereal determination that is not affirmatively stated by administrative agency. [13] Trademarks 382T

1032

382T Trademarks 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1032 k. Acquired Distinctiveness and Secondary Meaning in General. Most Cited Cases (Formerly 382k11) Financial services company's service mark, “Investacorp,” did not acquire secondary meaning during five-year period before investment bank began using service mark, “Investcorp,” and, thus, company could not acquire protected interest in the mark, even though company experienced expansive growth and showed high ratio of sales dollars to advertising dollars during the five-year period; evidence did not indicate that public actually identified mark with company's business. Lanham TradeMark Act, § 43(a), 15 U.S.C.A. § 1125(a). [14] Trademarks 382T

1156

382T Trademarks 382TV Duration and Termination of Rights 382Tk1155 Extent of Use; Discontinuance and Non-Use 382Tk1156 k. In General. Most Cited Cases (Formerly 382k71) To establish abandonment of service mark, plaintiff must prove nonuse and intent not to resume use. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. §

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1125(a). [15] Trademarks 382T

1158

382T Trademarks 382TV Duration and Termination of Rights 382Tk1158 k. Discontinuance or Transfer of Business or Assets. Most Cited Cases (Formerly 382k72) Investment bank's reorganization to create wholly owned subsidiary to continue to use service mark was not abandonment of mark. Lanham TradeMark Act, § 43(a), 15 U.S.C.A. § 1125(a). [16] Trademarks 382T

1032

382T Trademarks 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1032 k. Acquired Distinctiveness and Secondary Meaning in General. Most Cited Cases (Formerly 382k11) “Secondary meaning” is connection in consumer's mind between mark and provider of service. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [17] Trademarks 382T

1608

382T Trademarks 382TIX Actions and Proceedings 382TIX(C) Evidence 382Tk1601 Presumptions and Burden of Proof 382Tk1608 k. Marks Protected; Secondary Meaning. Most Cited Cases (Formerly 382k574) Plaintiff has burden of sustaining high degree of proof in establishing secondary meaning for descriptive term. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [18] Trademarks 382T 382T Trademarks

1032

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382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1032 k. Acquired Distinctiveness and Secondary Meaning in General. Most Cited Cases (Formerly 382k11) Absent consumer survey evidence, four factors can be considered in determining whether particular mark has acquired secondary meaning: length and manner of its use; nature and extent of advertising and promotion; efforts made by plaintiff to promote conscious connection in public's mind between name and plaintiff's business; and extent to which public actually identifies name with plaintiff's service. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). Trademarks 382T

1800

382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases (Formerly 382k736) Investacorp., *1520 Richard Ross, Richard S. Ross, P.A., Miami, Fla., for plaintiff-appellant. John Millian, Washington, D.C., Rudolph F. Aragon, Coffey, Aragon, Martin & Bulington, P.A., Miami, Fla., and Wesley Howell, Jr., Gibson, Dunn & Crutcher, Washington, D.C., for defendants-appellees. Appeal from the United States District Court for the Southern District of Florida. Before JOHNSON and HATCHETT, Circuit FN* Judges, and SMITH , Senior Circuit Judge. FN* Honorable Edward S. Smith, Senior U.S. Circuit Judge for the Federal Circuit, sitting by designation.

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*1521 EDWARD S. SMITH, Senior Circuit Judge: Plaintiff, Investacorp, Inc. (Investacorp), appeals the grant of summary judgment entered in favor of defendants, Arabian Investment Banking Corporation (Investcorp E.C.) and Investcorp, International, Inc. (Investcorp International) on the claims of service mark infringement and unfair competition. 722 F.Supp. 719. Because the undisputed facts show appellant does not have a protectable interest in its claimed service mark, we affirm the judgment of the United States District Court for the Southern District of Florida. Facts Appellant, Investacorp, is a Florida corporation whose primary business is providing financial services as a broker/dealer and as a financial intermediary between individuals, corporations and institutions seeking investment opportunities. There are two appellees in this case: Investcorp E.C., the parent corporation, and its wholly owned subsidiary, Investcorp International. Investcorp E.C. is an investment bank headquartered in Bahrain which began doing business in the United States under that name in 1983. Investcorp International was created by Investcorp E.C. in November of 1986 to continue conducting the business of its parent in the United States. Hereinafter, the two co-appellees will be referred to as “Investcorp”. Investcorp filed for federal service mark registration in June of 1987. The Patent and Trademark Office (PTO) allowed the Investcorp service mark to pass for potential opposition to registration. Four months later, in October 1987, Investacorp filed for federal service mark registration. In February, 1988, Investacorp filed a Notice of Opposition with the Trademark Trial and Appeal Board of the PTO, opposing registration of the Investcorp service mark. Later in 1988, Investacorp sued Investcorp on several counts of service mark infringement and unfair

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competition. The district court granted summary judgment in favor of defendant on all counts of the complaint, because it determined that plaintiff does not have a proprietary interest in the mark “Investacorp”. Plaintiff appeals to this Court asserting that genuine issues of material fact are involved in the trial court's summary resolution of the claims. Issue We must determine whether the district court's finding involved the resolution of an issue of material fact. As an appellate court, we must also determine the applicable law, independent of that interpretation rendered by the district court. If no issue of material fact was presented and the independently determined applicable law supports the grant of summary judgment ordered by the district court, FN1 then we must affirm. FN1. Fed.R.Civ.P. 56(c). Opinion Plaintiff, Investacorp, alleges that defendants, Investcorp, unfairly competed by infringing on plaintiff's unregistered service mark. Appellant asserts that the district court should have found genuine issues of material fact presented in the followFN2 ing counts: Federal service mark infringement, Florida common law service mark infringement, Florida common law unfair competition, and violaFN3 tion of the Florida anti-dilution law. As the parties do in their briefs, we evaluate the federal service mark infringement claim as a measuring stick for the whole host of claims that appellant asserts. If the federal service mark claim fails in this case for the reason cited by the district court, that plaintiff had no proprietary interest in the “Investacorp” mark, then all of appellant's claims will fail. FN2. Lanham Act § 43(a), 15 U.S.C. § 1125(a) (1988).

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

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ed. 1984). FN7. Id.

Prima Facie Service Mark Infringement FN8. Id. at § 16:2. [1] To prove service mark infringement in this case, plaintiff must prove (1) that *1522 defendant used a term in commerce (2) in connection with their services (3) which is likely to be confused with the term (4) in which plaintiff possesses the right to use FN4 to designate their services. Appellee concedes that elements (1) and (2) are present. The district court, however, found that plaintiff did not own the right to designate its services with the term “Investacorp” and hence had no protectable interest that could be infringed. Consequently, summary judgment 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's mark, plaintiff must have a protectable property inFN5 terest in the mark “Investacorp”. Ordinarily, such an interest is derived when a business uses a FN6 mark to represent its services. Each time a business uses a mark, it enhances the customer recognition of the mark and its association with the service, thereby inuring to the business greater FN7 rights in the mark. However, a business does not automatically obtain rights in a mark by using it. A business will obtain rights in a mark upon first FN8 use only if the mark is “inherently distinctive.” If the mark is not inherently distinctive, a business may obtain rights in the mark when it attains a secFN9 ondary meaning. Therefore, to determine if and when plaintiff obtained rights in the mark “Investacorp,” we must determine if the mark “Investacorp” is inherently distinctive. FN5. American Television & Communications Corp. v. American Communications & Television, Inc., 810 F.2d 1546, 1548, 1 U.S.P.Q.2d 2084, 2085 (11th Cir.1987). FN6. 1 J. McCarthy, TRADEMARKS AND UNFAIR COMPETITION § 16:1 (2d

FN9. Id. The Categories of Distinctiveness [3][4][5][6][7][8][9] There are four categories of distinctiveness in which a service mark may be FN10 classified. In ascending order they are: (1) Generic; (2) descriptive; (3) suggestive; and (4) arFN11 bitrary or fanciful. The demarcation between each category is more blurred than it is FN12 definite. A term which suggests the basic FN13 nature of the service is generic. The term “Milk Delivery” is an example of a generic service FN14 mark for a hypothetical milk delivery service. A generic term is typically incapable of achieving service mark protection because it has no distinctFN15 iveness. A descriptive term merely identifies a FN16 characteristic or quality of a service. An example of a descriptive service mark might be “BarnMilk.” Because a descriptive service mark is not inherently distinctive, it may be protected only FN17 if it acquires a secondary meaning. The personal name component of a service mark such as “Barney's” to denote a milk delivery service is also considered not inherently distinctive and hence FN18 merely descriptive. However, if the personal name mark acquires secondary meaning, it is afforded the strength of an inherently distinctive FN19 mark. Marks which are descriptive of geographic location of the source of the service are treated in the *1523 same manner as personal name FN20 marks. A suggestive term suggests the characteristics of the service “and requires an effort of the imagination by the consumer in order to be underFN21 stood as descriptive” of the service. “Barn-Barn” is an example of a suggestive term. Because a suggestive service mark is inherently distinctive, no proof of secondary meaning is required FN22 for it to be protectable. “An arbitrary or fanci-

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ful [term] bears no relationship to the service.” FN23 Arbitrary and fanciful terms are also inherently distinctive, so they are protectable without proof of secondary meaning. “Barnbarnfish” is an example of an arbitrary or fanciful service mark. FN10. American Television, 810 F.2d at 1548, 1 U.S.P.Q.2d at 2085.

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The district court determined that the term “Investacorp” was descriptive. Because the distinctiveness categorization given a term is a question of FN24 fact, we must determine whether the district court's finding involved a genuine issue of material FN25 fact. FN24. Soweco, 617 F.2d at 1183 n. 12, 207 U.S.P.Q. at 282 n. 12.

FN11. Id. FN25. Fed.R.Civ.P. 56(c). FN12. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183, 207 U.S.P.Q. 278, 282 (5th Cir.1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). FN13. American Television, 810 F.2d at 1548, 1 U.S.P.Q.2d at 2086. FN14. The examples given in this paragraph are believed to be a hypothetical service marks for a fictional milk delivery service. The examples are given strictly for pedagogical reasons and have no legal effect. FN15. American Television, 810 F.2d at 1548, 1 U.S.P.Q.2d at 2086. FN16. Id.

[10] Investacorp is a corporation in the business of advising their customers in corporate investment opportunities. Pursuant to a customer's desires, Investacorp sells stocks, bonds and other securities which are often initially issued by corporations. The two key formatives in the term “Investacorp” are “invest” and “corp”. “Invest” is the verb “to commit (money) in order to earn a financial return,” FN26 and “corp” is the widespread abbreviation for a corporation. It is beyond doubt that the term “Investacorp” bears a relationship to the type of services being offered by plaintiff. Hence, it cannot FN27 be an arbitrary or fanciful term. The only two categories remaining that are eligible for service mark protection are the descriptive and suggestive categories. Thus, we must determine whether the mark is descriptive or suggestive. FN26. WEBSTER'S NEW COLLEGIATE DICTIONARY, 603 (1979).

FN17. Id. FN18. J. MCCARTHY, supra note 6, § 13:2.

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

FN19. Id. FN20. Id. at § 14:1. FN21. American Television, 810 F.2d at 1549, 1 U.S.P.Q.2d at 2086. FN22. Id. FN23. Id. Distinctiveness Inquiry

[11] To determine whether a term is descriptive, FN28 third party usage by competitors is probative. We reject appellant's argument that third party usage is not relevant to the distinctiveness inquiry because there is a plethora of authority embracing the FN29 relevancy of third party usage. FN28. Vision Center v. Opticks, Inc., 596 F.2d 111, 116, 202 U.S.P.Q. 333, 338 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668, 62 L.Ed.2d 646 (1980).

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FN29. In re Bongrain Int'l Corp., 894 F.2d 1316, 1317, 13 U.S.P.Q.2d 1727, 1728 (Fed.Cir.1990); Burke-Parsons-Bowlby Corp. 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.2d 1295, 1298-1299, 225 U.S.P.Q. 373, 375-76 (5th Cir.1985); Telemed Corp. v. Tel-Med, Inc., 588 F.2d 213, 218, 200 U.S.P.Q. 427, 432 (7th Cir.1978). The likelihood of prospective use by competitors is high. Both of the two formatives “invest” and “corp” pervade the lexicon of business terminology. Because the two formatives are indispensable to the investment services industry, we agree that it is very likely that competitors will need to use these terms. Moreover, the popularity of actual use of the two key formatives also indicates that the mark is deFN30 scriptive. Over eighty competing broker-dealers use the word “invest” in their mark, and there are a handful of businesses who use some combination of the formatives “invest” and “corp” in their mark. We find the popularity of use by competitors is extreme. FN30. Vision Center, 596 F.2d at 117, 202 U.S.P.Q. at 339. Also probative of the descriptiveness of a mark is the idea that is conveyed to the observer by the plain dictionary definition *1524 of the formatives FN31 comprising the mark. In this case, the two formatives combined in the term “Investacorp” literally convey to the observer that appellant is in the business of investing in corporations. Because the customer who observes the term can readily perceive the nature of plaintiff's services, without having to exercise his imagination, the term cannot be FN32 considered a suggestive term. The only remaining categorization that is eligible for protection is the descriptive category. Accordingly, “Investacorp” must be merely descriptive.

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FN31. Id. at 116, 202 U.S.P.Q. at 338. FN32. Id. Plaintiff relies on the inaction of the Patent and Trademark Office to inject an issue of fact into the district court's determination of distinctiveness. When the defendant submitted the “Investcorp” mark application, the PTO passed the mark on to publication. Because a finding of descriptiveness is one of the grounds for refusal of registration, appellant argues that the PTO must have decided that “Investcorp” was not merely descriptive; otherwise, the PTO would not have passed the mark on to publication according to Section 1209 of the TRADEMARK MANUAL OF EXAMINING PROCEDFN33 URE. Moreover, appellant notes, the PTO opted to reject plaintiff's subsequent application to register “Investacorp” because the similar “Investcorp” application was pending, instead of on the ground that it was merely descriptive. Plaintiff argues that this indicates that the PTO found the similar mark also not descriptive. FN33. (6th rev. 1986). Plaintiff asserts that these two facts negatively imply that the PTO found that both marks, “Investacorp” and “Investcorp,” were not merely descriptive. Consequently, because it is proper to defer to any determination made by the agency “entrusted with the duty of administering the Lanham Act,” appellant argues that we must accept the determination made by the PTO in accord with FN34 Wynn Oil Co. v. Thomas. FN34. 839 F.2d 1183, 1190, 5 U.S.P.Q.2d 1944, 1949 (6th Cir.1988). [12] The soft spot in appellant's argument is that there is no recorded finding by the PTO that either service mark was not descriptive. Consequently, all that this Court can do is guess at what the PTO's determinations were while evaluating the merit of each mark. We do not know whether the PTO even considered the descriptiveness of either mark. Al-

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though we will bestow proper respect to the determinations of the PTO, we will not defer to an ethereal determination that is not affirmatively stated by the administrative agency. Therefore, withstanding the implications that appellant points out, the finding that “Investacorp” is merely descriptive involved no genuine issue of material fact. Consequently, in heeding the proposition that the descriptiveness category encompasses a broad FN35 range, the term “Investacorp” is merely descriptive and hence is not inherently distinctive. FN35. Vision Center, 596 F.2d at 116, 202 U.S.P.Q. at 338. Secondary Meaning [13] Because the term is not inherently distinctive, for appellant to have a protectable interest in the term “Investacorp,” it must have attained secondary meaning before the date that appellee used the simFN36 ilar term “Investcorp”. The district court determined that the term “Investacorp” did not attain secondary meaning by the time appellees first used it. Because the existence of a secondary meaning is FN37 a question of fact, we determine whether this determination required the resolution of a genuine factual issue. FN36. Co-Rect Products, Inc. v. Marvy! Advertising Photography, Inc., 780 F.2d 1324, 1330, 228 U.S.P.Q. 429, 431 (8th Cir.1985). FN37. Aloe Creme Laboratories, Inc. v. Milsan, Inc., 423 F.2d 845, 849, 165 U.S.P.Q. 37, 41 (5th Cir.)cert. denied, 398 U.S. 928, 90 S.Ct. 1818, 26 L.Ed.2d 90,reh'g denied, 400 U.S. 856, 91 S.Ct. 23, 27 L.Ed.2d 95 (1970). *1525 Because secondary meaning must attach to the mark before appellee first used the mark, we must determine the date that appellee first used the mark “Investcorp”. The district court decided that appellee first used the mark in March of 1983. Ap-

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pellant disputes this finding by pointing out certain facts. Investcorp E.C. first began using the service mark in March of 1983. In June of 1987, Investcorp E.C. created a subsidiary entitled Investcorp International to be responsible for conducting all of Investcorp's business in the United States. Investcorp E.C., the parent, licensed to Investcorp International the right to use the “Investcorp” service mark in the United States. Appellant asserts that because the parent, Investcorp E.C., intended not to use the mark in the United States, it had abandoned the use of the mark. The argument goes that the previous use by the parent corporation between 1983 and 1987 does not count because it had abandoned the mark. Hence, appellant argues that appellee's first use did not occur until 1987, when the subsidiary, Investcorp International, first began using the mark in the United States. [14][15] To establish abandonment, appellant must prove (1) nonuse and (2) intent not to resume FN38 use. Appellant's argument is disingenuous because although Investcorp E.C. did not intend to use the mark in the United States, it intended Investcorp International, its wholly-owned subsidiary, to continue the use of the mark in its place. All that occurred was a reorganization of Investcorp's structure; the intent was for Investcorp to continue to use the mark through its subsidiary, Investcorp International. Therefore, Investcorp never intended to cease using the “Investcorp” mark and there was no abandonment. Thus, Investcorp's first use of their mark occurred in March of 1983, and the secondary meaning of “Investacorp” must attach by that date. FN38. E. Remy Martin & Co., S.A. v. Shaw-Ross International Imports, Inc., 756 F.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 connection in the consumer's mind between the mark and the FN39 provider of the service. Plaintiff has the bur-

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den of sustaining a high degree of proof in establishing a secondary meaning for a descriptive FN40 term. This requisite high degree of proof must be considered by the court when ruling on a motion FN41 of summary judgment. Absent consumer survey evidence, as is the case here, four factors can be considered in determining whether a particular mark has acquired a secondary meaning:

period, appellant's advertising expenditures did not exceed one-hundred dollars per month. Although, appellant emphasizes that they had expansive growth and *1526 showed a high ratio of sales dollars to advertising dollars during the relevant period, this fact does not indicate that appellant's bantam advertising campaigns made major inroads to the consumer psyche.

FN39. AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1536 n. 14, 1 U.S.P.Q.2d 1161 (11th Cir.1986).

The evidence that the public actually identifies the mark with appellant's business is also lacking. Although instances of consumer confusion are probatFN43 ive of secondary meaning, the few isolated instances cited by appellant are not adequate to present a genuine issue of material fact. Consequently, we agree that the undisputed facts show that the mark “Investacorp” did not acquire secondary meaning before the end of the relevant time period.

FN40. Vision Center, 596 F.2d at 119, 202 U.S.P.Q. at 341. FN41. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). (1) [T]he length and manner of its use; (2) the nature and extent of advertising and promotion; (3) the efforts made by the plaintiff to promote a conscious connection in the public's mind between the name and the plaintiff's ... business; and (4) the extent to which the public actually identifies the name with the plaintiff's FN42 [service]. FN42. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513, 224 U.S.P.Q. 552, 555 (11th Cir.1984). Appellant began designating their services with the “Investacorp” mark in January of 1978. Thus, the length of appellant's use of the mark was five years prior to the appellee's use of their mark. However, there is nothing significant about the manner of appellant's use of the mark, other than appellant merely “displayed its service mark on nearly all of its transactional documents.” The nature and extent of appellant's advertisement and promotion and its achievement of a conscious connection in the public mind between the mark and the appellant's business during the relevant time period is far short of spectacular. During this

FN43. McCarthy, supra note 6, § 15:3. Conclusion In order to prove all of its claims, appellant must establish ownership of the right to use the mark to designate its services. Because the undisputed facts show that the “Investacorp” mark is not inherently distinctive, a protectable interest does not attach until the mark acquires a secondary meaning. The district court found that the undisputed facts established that “Investacorp” did not acquire secondary meaning before appellee commenced use of their similar service mark, “Investcorp”. Therefore, appellant does not own a protectable interest in the “Investacorp” service mark. We agree with the district court's view of the evidence. Accordingly, as a matter of law, appellee did not infringe on the appellant's service mark or unfairly compete with appellant because appellant never owned a protectable interest in the mark, “Investacorp”, and appellee is entitled to judgment. Affirmed. C.A.11 (Fla.),1991. Investacorp, Inc. v. Arabian Inv. Banking Corp.

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

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226 So.2d 393 226 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 registration 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

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382T Trademarks 382TII Marks Protected 382Tk1022 Subject Matter Underlying Trademarks 382Tk1023 k. In General. Most Cited Cases (Formerly 382k1) Trademarks 382T

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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, whereas “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 predicated 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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226 So.2d 393 226 So.2d 393, 163 U.S.P.Q. 500 (Cite as: 226 So.2d 393)

against subsequent use of the same or similar name by another, and the extent of the zone of territorial protection is determined by the nature of the first appropriator's business. [5] Trademarks 382T

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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

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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 convenience 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

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1083 Nature of Confusion 382Tk1086 k. Actual Confusion. Most Cited Cases (Formerly 382k462) Trademarks 382T

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382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General

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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 appropriator 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 confused 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 conflict 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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226 So.2d 393 226 So.2d 393, 163 U.S.P.Q. 500 (Cite as: 226 So.2d 393)

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 registrant with the exception of distinguishing words in lettering so small as to be not readily visible to passersby. *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 between 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 identification 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 franchise agreement with respondent, and, as a condition of this franchise, respondent changed the names of its

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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 generally similar to that of the respondent. Both signs emphasized the abbreviation ‘Jr.‘ and both featured a boy's face, although the faces depicted were considerably 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. Petitioner'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 respondent had one or more stores in Bay (its initial locale), Gulf, Franklin, Washington, Calhoun, Jefferson, Escambia, 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 established 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 neighborhoods; 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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226 So.2d 393 226 So.2d 393, 163 U.S.P.Q. 500 (Cite as: 226 So.2d 393)

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 increasing 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 advertising 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.

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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 exclusive 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 registration 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 manufacturer or dealer and applies to a business and its goodwill, whereas a trademark, in a technical sense, is applicable only to vendable commodities. For discussion 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 instantaneously 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 revision, and note that they are without statutory antecedent 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-

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

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 registration 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 respondent'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 operates 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, Okaloosa 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

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which is protected, but the business.’ Federal Securities 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 tradename 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, potential customers of the first appropriator of a tradename 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 reliance 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 common law. The Chancellor was referring to the fact that certain invoices and merchandise had been misdirected 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 consequence 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 Securities 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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226 So.2d 393 226 So.2d 393, 163 U.S.P.Q. 500 (Cite as: 226 So.2d 393)

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 customers 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 diminution 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 respondent. 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 Niceville 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 protection 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, National 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-

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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 territory for the purpose of securing an increasing volume 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 established 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 including 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 presented 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

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

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 tradename it chose. But we do think that it was unreasonable for petitioner to adopt the sign design it registered with the Secretary of State for the simple reason 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. Richard's Warehouse Sales & Auction Gallery, Inc., 63 So.2d 502 (Fla.1953); McGhan v. McGhan, Supra;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 determine 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 equities of the case may require. It is so ordered. ERVIN, C.J., and ROBERTS, DREW and ADKINS, JJ., concur. Fla. 1969. Junior Food Stores of West Florida, Inc. v. Junior Food Stores, Inc. 226 So.2d 393, 163 U.S.P.Q. 500 END OF DOCUMENT

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Westlaw Delivery Summary Report for PATRICK,BRADFORD Date/Time of Request: Client Identifier: Database: Citation Text: Lines: Documents: Images:

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

522 F.3d 1211 522 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)

United States Court of Appeals, Eleventh Circuit. NORTH AMERICAN MEDICAL CORPORATION, Adagen Medical International, Inc., Georgia corporations, Plaintiffs-Appellees, v. AXIOM WORLDWIDE, INC., a Florida corporation, James Gibson, Jr., Nicholas Exarhos, residents of Florida, Defendants-Appellants. No. 07-11574.

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that competitor's false statements were material to consumers' purchasing decisions; (5) the district court erred when it presumed that plaintiffs would suffer irreparable harm in the absence of a preliminary injunction merely because competitor's advertisements were literally false; and (6) remand was required for the district court to address the effect of the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. on the “irreparable harm” analysis with respect to plaintiffs' trademark infringement claims. Affirmed in part and vacated and remanded in part.

April 7, 2008. West Headnotes Background: Manufacturer and authorized distributor of physiotherapeutic spinal or “traction” device brought action against competitor, its president, and its vice president, alleging that defendants engaged in unfair competition by infringing manufacturer's trademarks and by issuing false advertising regarding competitor's own physiotherapeutic device. The United States District Court for the Northern District of Georgia, No. 06-01678-CV-JTC-1,Jack T. Camp, Chief Judge, granted a preliminary injunction in favor of plaintiffs, prohibiting competitor from using manufacturer's “IDD Therapy” and “Accu-Spina” trademarks within its website's meta tags and prohibiting competitor from making the challenged statements about its device. Defendants appealed. Holdings: The Court of Appeals, Anderson, Circuit Judge, held that: (1) competitor's use of manufacturer's trademarks within its website's meta tags was a “use in commerce” within the meaning of the Lanham Act; (2) the district court's finding of a likelihood of confusion was not clearly erroneous, for purposes of plaintiffs' trademark infringement claims; (3) the district court did not clearly err in finding that competitor made literally false statements in its advertising; (4) the district court did not clearly err in finding

[1] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)4 Discretion of Lower Court 170Bk814 Injunction 170Bk815 k. Preliminary Injunction; Temporary Restraining Order. Most Cited Cases Court of Appeals will reverse a grant of a preliminary injunction only if the district court abused its discretion. [2] Federal Courts 170B

850.1

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)5 Questions of Fact, Verdicts and Findings 170Bk850 Clearly Erroneous Findings of Court or Jury in General 170Bk850.1 k. In General. Most Cited Cases Court of Appeals reviews the district court's findings of fact under a clearly erroneous standard. [3] Federal Courts 170B

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522 F.3d 1211 522 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)

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)5 Questions of Fact, Verdicts and Findings 170Bk850 Clearly Erroneous Findings of Court or Jury in General 170Bk853 k. Definite and Firm Conviction of Mistake. Most Cited Cases District court's findings of fact is “clearly erroneous” only when, although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed. [4] Federal Courts 170B

776

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk776 k. Trial De Novo. Most Cited Cases Court of Appeals reviews the district court's conclusions of law de novo, understanding that application of an improper legal standard is never within a district court's discretion. [5] Federal Courts 170B

915

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)7 Waiver of Error in Appellate Court 170Bk915 k. In General. Most Cited Cases Issues not raised on appeal are abandoned. [6] Injunction 212

138.1

212 Injunction 212IV Preliminary and Interlocutory Injunctions 212IV(A) Grounds and Proceedings to Procure 212IV(A)2 Grounds and Objections

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212k138.1 k. In General. Most Cited Cases District court may grant a preliminary injunction only if the movant establishes the following: (1) a substantial likelihood of success on the merits of the underlying case, (2) the movant will suffer irreparable harm in the absence of an injunction, (3) the harm suffered by the movant in the absence of an injunction would exceed the harm suffered by the opposing party if the injunction issued, and (4) an injunction would not disserve the public interest. [7] Trademarks 382T

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382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases To prevail on a claim of trademark infringement under the Lanham Act, plaintiffs must establish that: (1) they possess a valid mark, (2) defendants used the mark, (3) defendants' use of the mark occurred “in commerce,” (4) defendants used the mark “in connection with the sale or advertising of any goods,” and (5) defendants used the mark in a manner likely to confuse consumers. Lanham Act, § 32(1)(a), 15 U.S.C.A. § 1114(1)(a). [8] Commerce 83

62.12

83 Commerce 83II Application to Particular Subjects and Methods of Regulation 83II(C) Monopolies and Trade Regulation 83k62.12 k. Trade Regulation in General; Trade-Marks and Unfair Competition. Most Cited Cases Trademarks 382T

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382T Trademarks 382TIX Actions and Proceedings 382TIX(A) In General

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382Tk1557 Jurisdiction 382Tk1558 k. In General. Most Cited Cases Lanham Act defines “commerce” broadly, for jurisdictional purposes, as all commerce which may lawfully be regulated by Congress. Lanham Act, § 45, 15 U.S.C.A. § 1127. [9] Commerce 83

62.12

83 Commerce 83II Application to Particular Subjects and Methods of Regulation 83II(C) Monopolies and Trade Regulation 83k62.12 k. Trade Regulation in General; Trade-Marks and Unfair Competition. Most Cited Cases Trademarks 382T

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382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1435 k. Internet Use. Most Cited Cases Competitor's use of physiotherapeutic spinal device manufacturer's “IDD Therapy” and “Accu-Spina” trademarks within its website's meta tags, as part of its effort to promote and advertise its own products on the Internet, was a “use in commerce” within the meaning of the Lanham Act; although the meta tags were never viewed by consumers, when a consumer entered the trademarks into a search engine, competitor caused the trademarks to be displayed to the consumer in the search results' description of competitor's site. Lanham Act, § 32(1)(a), 15 U.S.C.A. § 1114(1)(a). [10] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 k. Factors Considered in General. Most Cited Cases Factors relevant to determination of whether there

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is likelihood of confusion, and hence trademark infringement, are: (1) strength of plaintiff's mark, (2) similarity between plaintiff's mark and the allegedly infringing mark, (3) similarity between the products and services offered by plaintiff and defendant, (4) similarity of the sales methods, (5) similarity of advertising methods, (6) defendant's intent, for example, whether defendant hopes to gain competitive advantage by associating his product with plaintiff's established mark, and (7) actual confusion. Lanham Act, § 32(1)(a), 15 U.S.C.A. § 1114(1)(a). [11] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)5 Questions of Fact, Verdicts and Findings 170Bk855 Particular Actions and Proceedings, Verdicts and Findings 170Bk860 k. Copyrights, Patents and Trade Regulation. Most Cited Cases District court's findings as to each of the seven factors considered in determining whether a likelihood of confusion exists, for purposes of a trademark infringement claim, and as to the ultimate conclusion regarding whether or not a likelihood of confusion existed, are subject to the clearly erroneous standard of review. Lanham Act, § 32(1)(a), 15 U.S.C.A. § 1114(1)(a). [12] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1116 k. Internet Cases. Most Cited Cases District court's finding that competitor's use in its website's meta tags of physiotherapeutic spinal device manufacturer's trademarks resulted in a likelihood of confusion was not clearly erroneous, for purposes of manufacturer's trademark infringement claims; competitor's meta tags precisely mimicked

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manufacturer's “IDD Therapy' and Accu-Spina” trademarks, it was apparent that competitor intended to gain a competitive advantage by associating its product with manufacturer's trademark, and though the meta tags were never viewed by consumers, when a consumer entered the trademarks into a search engine, competitor caused its competing website to be displayed, together with a brief description of the website which included and highlighted manufacturer's trademarked terms, such that consumers would be led to believe that competitor's products had the same source as manufacturer's products 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 29T 104(1) 29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(C) Relief 29Tk101 Injunction 29Tk104 Preliminary or Temporary Relief, Grounds, Subjects, and Scope 29Tk104(1) k. In General. Most Cited Cases To establish a likelihood of success on the merits of a false advertising claim under the Lanham Act, for purposes of obtaining a preliminary injunction, movant must demonstrate that: (1) the ads of the opposing party were false or misleading, (2) the ads deceived, or had the capacity to deceive, consumers, (3) the deception had a material effect on purchasing decisions, (4) the misrepresented product or service affects interstate commerce, and (5) the movant has been, or is likely to be, injured as a result of the false advertising. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). [14] Antitrust and Trade Regulation 29T

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29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(A) In General 29Tk21 Advertising, Marketing, and Promotion

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29Tk22 k. In General. Most Cited Cases Antitrust and Trade Regulation 29T

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29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(C) Relief 29Tk101 Injunction 29Tk105 k. Proceedings to Impose; Evidence. Most Cited Cases Once a court deems an advertisement to be literally false within the meaning of the Lanham Act, a movant seeking a preliminary injunction need not present evidence of consumer deception, but, in contrast, if the court deems an ad to be true but misleading, the movant, even at the preliminary injunction stage, must present evidence of deception. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). [15] Antitrust and Trade Regulation 29T

30

29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(A) In General 29Tk30 k. Sponsorship, Approval, or Connection, Representations Concerning. Most Cited Cases District court did not clearly err in finding that competitor of physiotherapeutic spinal device manufacturer made literally false statements in its advertising, for purposes of manufacturer's false advertising claims; though competitor claimed an affiliation with the National Aeronautics and Space Administration (NASA), having one engineer with NASA training or experience participate in the development of competitor's device did not constitute joint collaboration between NASA and competitor, nor did it support the claim that NASA engineers developed the device or discovered part of it, fact that device used some components that NASA also used did not mean that device contained or embodied NASA technology, and though competitor claimed that its device was Food and Drug Administration (FDA) “approved,” device, as a Class II medical device, was only eligible for FDA

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“clearance,” which was a different process than approval. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a); Medical Device Amendments of 1976, § 2, 21 U.S.C.A. §§ 360c, 360e. [16] Antitrust and Trade Regulation 29T

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29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(B) Actions and Proceedings 29Tk85 Proceedings; Trial 29Tk87 k. Questions of Law or Fact. Most Cited Cases Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)5 Questions of Fact, Verdicts and Findings 170Bk855 Particular Actions and Proceedings, Verdicts and Findings 170Bk860 k. Copyrights, Patents and Trade Regulation. Most Cited Cases Whether a statement is literally false, for purposes of a false advertising claim under the Lanham Act, is a finding of fact which is reviewed only for clear error. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). [17] Health 198H

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198H Health 198HI Regulation in General 198HI(E) Drugs; Medical Devices and Instruments 198Hk303 k. Drugs and Devices Regulated. Most Cited Cases Regulation of medical devices is governed by the Federal Food, Drug, and Cosmetic Act. Federal Food, Drug, and Cosmetic Act, § 1, 21 U.S.C.A. § 301. [18] Antitrust and Trade Regulation 29T 29T Antitrust and Trade Regulation 29TII Unfair Competition

30

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29TII(A) In General 29Tk30 k. Sponsorship, Approval, or Connection, Representations Concerning. Most Cited Cases District court did not clearly err in finding that false statements made by competitor of physiotherapeutic spinal device manufacturer were material to consumers' purchasing decisions, for purposes of manufacturer's false advertising claims; type of claims at issue, regarding competitor's purported affiliation with the National Aeronautics and Space Administration (NASA) and its device's alleged “approval” by the Food and Drug Administration (FDA), logically would have influenced a doctor's decision to purchase competitor's device over a competing machine without those qualities. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). [19] Antitrust and Trade Regulation 29T

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29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(A) In General 29Tk21 Advertising, Marketing, and Promotion 29Tk22 k. In General. Most Cited Cases Even when a court finds that a defendant's ads are literally false, the plaintiff, to succeed on a claim of false advertising, must still establish that the defendant's deception is likely to influence the purchasing decision. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). [20] Antitrust and Trade Regulation 29T

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29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(A) In General 29Tk21 Advertising, Marketing, and Promotion 29Tk22 k. In General. Most Cited Cases Lanham Act's requirement that a false ad be material to consumers' purchasing decisions is based on the premise that not all deceptions affect consumer

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

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of Cause 170Bk943 Ordering New Trial or Other Proceeding

[21] Antitrust and Trade Regulation 29T 105 29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(C) Relief 29Tk101 Injunction 29Tk105 k. Proceedings to Impose; Evidence. Most Cited Cases District court erred when it presumed that manufacturer and authorized distributor of physiotherapeutic spinal device would suffer irreparable harm in the absence of a preliminary injunction merely because competitor's advertisements about its own device were literally false; although competitor's statements were false, they did not mention manufacturer's products by name or in any way compare competitor's products with manufacturer's products, and so manufacturer and authorized distributor were not entitled to the presumption's benefits. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). [22] Antitrust and Trade Regulation 29T 105 29T Antitrust and Trade Regulation 29TII Unfair Competition 29TII(C) Relief 29Tk101 Injunction 29Tk105 k. Proceedings to Impose; Evidence. Most Cited Cases In false advertising cases, proof of falsity is generally only sufficient to sustain a finding of irreparable injury when the false statement is made in the context of comparative advertising between the plaintiff's and defendant's products. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). [23] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(L) Determination and Disposition

170Bk947 k. Further Evidence, Findings or Conclusions. Most Cited Cases Remand was required for the district court to address the effect of the Supreme Court's decision in eBay Inc. v. MercExchange, L.L.C. on the “irreparable harm” analysis with respect to trademark infringement claims brought by manufacturer and authorized distributor of physiotherapeutic spinal device against competitor; although the Court of Appeals' prior cases extended a presumption of irreparable harm once a plaintiff seeking a preliminary injunction established a likelihood of success on the merits of its trademark infringement claim under the Lanham Act, the Supreme Court decision, despite dealing with permanent injunctive relief and a different but similar statute, was applicable to the instant case and called this presumption into question. Lanham Act, § 43(a), 15 U.S.C.A. § 1125(a). Trademarks 382T

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382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases Accu-Spina. Trademarks 382T

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382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases IDD Therapy. *1215 L. Joseph Shaheen, Jr., Gardner, Wilkes, Shaheen & Candelora, Tampa, FL, Jonathan R. Granade, George P. Shingler, Casey, Gilson, Leibel, P.C., W. Scott Mayfield, Duane Morris, LLP, Atlanta, GA, for Defendants-Appellants.

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Stephen M. Dorvee, Andrew Blaine Flake, Jonathan T. Barr, Arnall, Golden & Gregory, LLP, Atlanta, GA, for Plaintiffs-Appellees. Appeal from the United States District Court for the Northern District of Georgia. Before ANDERSON, BLACK and HILL, Circuit Judges.

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viewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.” Id. (quoting Univ. of Ga. Athletic Ass'n v. Laite, 756 F.2d 1535, 1543 (11th Cir.1985)). We review the district court's conclusions of law de novo,“understanding that ‘[a]pplication of an improper legal standard ... is never within a district court's discretion.’ ” Id. (quoting Am. Bd. of Psychiatry & Neurology, Inc. v. Johnson-Powell, 129 F.3d 1, 2-3 (1st Cir.1997)).

*1216 ANDERSON, Circuit Judge: II. BACKGROUND Defendants-Appellants Axiom Worldwide, Inc. (“Axiom”), James Gibson, Jr., and Nicholas Exarhos appeal the district court's grant of a preliminary injunction in favor of the Plaintiffs-Appellees, North American Medical Corporation (“NAM”) and Adagen Medical International, Inc. FN1 (“Adagen”). The district court enjoined the Defendants-Appellants from engaging in certain alleged acts of trademark infringement and false advertising. We now affirm the district court's order in part and vacate and remand it in part. FN1. Defendant-Appellant Ren Scott originally participated in this appeal as well, but we previously granted a joint motion to voluntarily dismiss him from the case after he reached a settlement agreement with the Plaintiffs-Appellees. Accordingly, we need not address Scott's argument that the district court lacked personal jurisdiction over him. I. STANDARD OF REVIEW [1][2][3][4] We will reverse a grant of a preliminary injunction only if the district court abused its discretion. Johnson & Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d 1242, 1246 (11th Cir.2002). We review the district court's findings of fact under a clearly erroneous standard, noting that a finding of fact is clearly erroneous only when “although there is evidence to support it, the re-

NAM designs and manufacturers physiotherapeutic spinal devices, commonly known as traction devices, which are used, for example, to treat lower back pain. Adagen is an authorized distributor of NAM's devices. Axiom, a competitor of NAM's, manufacturers a physiotherapeutic device known generally as the DRX 9000. Gibson and Exharhos are, respectively, the president and vice president of Axiom. In the present lawsuit, NAM and Adagen allege that Axiom engaged in unfair competition by infringing NAM's trademarks and by issuing false advertising regarding the DRX 9000. The trademark infringement claims stem from Axiom's use of two of NAM's registered trademarks: the terms “Accu-Spina” and “IDD Therapy.” Axiom included these terms on its website within meta FN2 tags. Although Axiom's website never displayed NAM's trademarked terms to visitors and never mentioned NAM or NAM's products, Axiom nonetheless included the terms within its meta tags to influence Internet search engines. For instance, evidence in this case indicated that, before Axiom removed these meta tags from its website, if a computer user *1217 entered the trademarked terms into Google's Internet search engine, Google listed Axiom's website as the second most relevant search result. In addition, Google provided the searcher with a brief description of Axiom's website, and the description included these terms and highlighted FN3 them.

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FN2. Meta tags consist of words and phrases that are intended to describe the contents of a website. These descriptions are embedded within the website's computer code. Although websites do not display their meta tags to visitors, Internet search engines utilize meta tags in various ways. First, when a computer user enters particular terms into an Internet search engine, the engine may rank a webpage that contains the search terms within its meta tags higher in the list of relevant results. Second, when a particular webpage is listed as a relevant search result, the search engine may use the meta tags to provide the searcher a brief description of the webpage. 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 exists to establish that the meta tags affected the search results. We disagree. The evidence indicates that nowhere in Axiom's website do NAM's two trademarked terms appear (e.g., in comparative advertising). Rather, the terms appear only in Axiom's meta tags. We cannot conclude that the district court's implied finding of a causal relationship is clearly erroneous. [5] The false advertising claims stem from certain statements that Axiom made about its product, the DRX 9000. In particular, two representations by FN4 Axiom are relevant to this appeal. First, Axiom represented in various ways that an affiliation exists between NASA and Axiom or between NASA and the DRX 9000. Second, Axiom asserted in advertisements that the DRX 9000 is FDA “approved.” FN4. A third representation by Axiom, that Axiom patented the DRX 9000 or any portion or feature thereof, was also deemed literally false by the district court. Because Axiom's brief on appeal fails to challenge

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this aspect of the district court's ruling, however, Axiom has waived the issue. This circuit has consistently held that issues not raised on appeal are abandoned. See, e.g., Greenbriar, Ltd. v. City of Alabaster, 881 F.2d 1570, 1573 n. 6 (11th Cir.1989). The district court issued a preliminary injunction in favor of NAM and Adagen, prohibiting Axiom from using NAM's trademarks within meta tags and prohibiting Axiom from making the challenged statements about the DRX 9000. Among other things, the district court specifically found that Axiom's use of NAM's trademarks created a likelihood of confusion, and the court also found that Axiom's advertising statements are literally false and material to consumers' purchasing decisions. III. DISCUSSION [6] At the outset, we note that a district court may grant a preliminary injunction only if the movant establishes the following: “(1) a substantial likelihood of success on the merits of the underlying case, (2) the movant will suffer irreparable harm in the absence of an injunction, (3) the harm suffered by the movant in the absence of an injunction would exceed the harm suffered by the opposing party if the injunction issued, and (4) an injunction would not disserve the public interest.” Johnson & Johnson, 299 F.3d at 1246-47. Axiom challenges the district court's order on multiple grounds. First, Axiom argues that NAM and Adagen failed to establish a substantial likelihood of success on the merits of their trademark infringement claims. Specifically, Axiom urges that its use of NAM's trademarks in invisible meta tags is not a “use in commerce” and does not create a likelihood of confusion. Second, Axiom argues that NAM and Adagen also failed to establish a substantial likelihood of success on the merits of their false advertising claims. Specifically, Axiom asserts that its advertising statements are not literally false and are not material to consumers' purchasing decisions. Third

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and finally, Axiom argues that, even assuming NAM and Adagen are likely to succeed on the merits of these unfair competition claims, the district court erred by categorically presuming that any plaintiff with a viable unfair competition claim will always suffer irreparable harm in the absence of a preliminary injunction. We address each point in turn. *1218 A. Likelihood of Success on the Merits of the Trademark Infringement Claims [7] Because Axiom's use of NAM's trademarks constitutes a “use in commerce” in connection with the advertisement of goods, and because the district court did not clearly err in its factual finding that a likelihood of confusion exists, NAM and Adagen demonstrated a likelihood of success on the merits of their trademark infringement claims. Regarding trademark infringement, the Lanham Act provides, in relevant part, as follows: (1) Any person who shall, without the consent of the registrant(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant for the remedies hereinafter provided. 15 U.S.C. § 1114(1)(a) (2006). To prevail on a claim of trademark infringement in this case, plaintiffs must establish: (1) that they possess a valid mark, (2) that the defendants used the mark, (3) that the defendants' use of the mark occurred “in commerce,” (4) that the defendants used the mark “in connection with the sale ... or advertising of any goods,” and (5) that the defendants used the mark in a manner likely to confuse consumers. See 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400,

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406-07 (2d Cir.2005); People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir.2001). [8] Axiom does not challenge the validity of NAM's marks, nor does Axiom dispute that its use of NAM's trademarks affects interstate FN5 commerce. Thus, although Axiom purports to challenge whether its placing of NAM's trademarks in its meta tags is a “use in commerce” and whether such use is likely to confuse consumers, Axiom's arguments actually focus only on the second, fourth, and fifth elements. Moreover, because Axiom separates its “use” challenge from its “likelihood of confusion” challenge, we first address the second and fourth elements together (i.e., whether there was a “use ... in connection with the sale ... or advertising of any goods”), and we then address the fifth element (i.e., whether such use was in a manner “likely to confuse consumers”). FN5. The Lanham Act defines “commerce” broadly for jurisdictional purposes as “all commerce which may lawfully be regulated by Congress.” 15 U.S.C. § 1127 (2006); see also Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir.2005) (describing “use in commerce” as a “jurisdictional predicate”); Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1194-95 (11th Cir.2001) (same). 1. Use in Commerce in Connection with the Sale or Advertising of Any Goods [9] Axiom briefly argues that placing a competitor's trademarks within meta tags, which consumers never view, does not constitute a “use” as required to find trademark infringement under the Lanham Act. However, we readily conclude that the facts of the instant case do involve a “use” as contemplated in the Lanham Act-that is, a use in connection with the sale or advertisement of goods. In deciding whether Axiom has made an infringing “use,” we

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focus on the plain language of § 1114(1)(a), which, as noted above, requires a “use in commerce ... of a registered mark in connection with the sale ...*1219 or advertising of any goods.” 15 U.S.C. § 1114(1)(a). The facts of the instant case are absolutely clear that Axiom used NAM's two trademarks as meta tags as part of its effort to promote and advertise its products on the Internet. Under the plain meaning of the language of the statute, such use constitutes a use in commerce in connection with the advertising of any goods. Accordingly, we readily conclude that plaintiffs in this case have satisfied that (1) they possessed a valid mark, (2) that the defendant used the mark, (3) that the defendant's use of the mark occurred “in commerce,” and (4) that the defendant used the mark “in connection with the sale ... or advertising of any goods.” In an effort to avoid the foregoing plain meaning of the statutory language, Axiom places its sole reliance on the Second Circuit's 1-800 Contacts case. In that case, whenever a consumer who had installed the defendant's computer program clicked on or searched for the plaintiff's website address, the program generated on the consumer's screen not only the website sought (e.g., plaintiff's), but also a second window displaying pop-up ads for the defendant's alternative, competing products. 414 F.3d at 404-05. The Second Circuit ultimately held, as a matter of law, that such use of the web address is not a “use in commerce.” Id. at 403. In so holding, the Second Circuit emphasized that the defendant did not use plaintiff's trademark, but rather used its website address, which differed slightly from the mark. Id. at 408-09. Indeed, the court explicitly declined to express an opinion on the appropriate result if defendant had in fact used plaintiff's trademark. Id. at 409 n. 11. Even more crucial to the Second Circuit's holding, the court emphasized repeatedly the fact that the defendant never caused plaintiff's trademarks to be displayed to a consumer. Id. at 408-10. The court explained that the defendant used plaintiff's web address merely in the internal directory of its proprietary

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software, which was “inaccessible to both the Cuser and the general public.” Id. at 409. Explaining the significance of the fact that the defendant never caused plaintiff's trademark to be displayed to the consumer, the court stated that defendant's use of plaintiff's “website address in the directory does not create a possibility of visual confusion with 1-800's mark.” Id. In rejecting Axiom's invitation to rely on 1-800 Contacts, we initially note that the above two key facts are not present in the case before us. First, unlike the defendant in 1-800 Contacts, Axiom in the instant case did use NAM's two trademarks in its meta tags; it did not merely use NAM's unprotected website address. Second, and again unlike in 1-800 Contacts, the defendant-Axiom in this case did cause plaintiff's trademark to be displayed to the consumer in the search results' description of deFN6 fendant's site. Thus, the facts of the instant case stand in stark contrast to those in 1-800 Contacts, and Axiom's reliance on the Second Circuit's opinion is therefore misplaced. FN6. As described more fully below, when a consumer in this case entered NAM's trademarks into a search engine, the search results displayed Axiom's website along with a description thereof, which description included NAM's trademarks in a manner likely to confuse consumers and suggest some relationship between Axiom and NAM. Furthermore, to the extent the 1-800 Contacts court based its “use” analysis on the fact that the defendant did not display the plaintiff's trademark, we think the Second Circuit's analysis is questionable. Although we believe that the absence of such a display is relevant in deciding whether there is a likelihood of confusion, we believe that, when the analysis separates the *1220 element of likelihood of confusion from the other elements, this fact is not relevant in deciding whether there is a use in commerce in connection with the sale or advertising of any goods. Because the Second Circuit did separate

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its analysis in this manner, and did purport not to address the likelihood of confusion issue, see id. at 406, its reliance on the fact that there was no display of the plaintiff's trademark (and thus no possibility of confusion) undermines the persuasiveness of its analysis of the separate elements of use in commerce in connection with the sale or advertising of any goods. In sum, we conclude that Axiom's reliance on the Second Circuit decision in 1-800 Contacts is misFN7 placed. We conclude that the plain meaning of the statutory language clearly indicates that Axiom's use of NAM's trademarks as meta tags constitutes a “use in commerce ... in connection with the sale ... or advertising of any goods” under the facts of this case. Thus, we turn to the fifth, and final, element that plaintiffs' must establish-that such use was “likely to cause confusion.” FN7. We also note that several cases, including 1-800 Contacts, refer to 15 U.S.C. § 1127 with respect to the definition of “use in commerce” in the infringement context. See, e.g., 1-800 Contacts, 414 F.3d at 407, 409. However, a leading treatise on trademarks notes that § 1127“defines the kind of ‘use’ needed to acquire registerable trademark rights-not to infringe them.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:11.50 (4th ed.2003). McCarthy explains that § 1127 harked back to the common law “affixation” requirement, a formalistic prerequisite to achieving technical trademark status. Id. By contrast, McCarthy observes that § 1114(1) merely requires that a plaintiff's proof of infringement establish a use in commerce “in connection with the sale ... or advertising of any goods.” Id. In any event, McCarthy notes that the cases that inappropriately cite § 1127 in the context of an infringing “use” analysis do not apply that section's affixation limitations. Id. Finally, Mc-

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Carthy cites Ninth Circuit opinions as correctly construing § 1127. Id. (citing, for example, Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir.2005)). In Kremer, the Ninth Circuit noted that § 1127 is expressly prefaced with the caveat: “unless the contrary is plainly apparent from the context.” 403 F.3d at 677. Thus, the Kremer court held that the appropriate issue was whether the use was “in connection with the sale of goods or services.” Id.; see also Playboy Enters., Inc. v. Netscape Commc'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 likelihood of confusion exists is not clearly erroneous. Seven factors are relevant when determining whether a likelihood of confusion exists: (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 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. Alliance Metals, Inc., of Atlanta v. Hinely Indus., Inc., 222 F.3d 895, 907 (11th Cir.2000). “The findings as to each factor, and as to the ultimate conclusion regarding whether or not a likelihood of confusion existed, are subject to the clearly erroneous standard of review.” Frehling Enters., Inc. v. Int'l Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir.1999). [12] The district court expressly acknowledged the foregoing factors, but it made an explicit finding only with respect to the ultimate conclusion that there was a likelihood of confusion. Regarding that

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issue, Axiom's brief on appeal did not challenge*1221 the district court's implied findings with respect to any of the subsidiary factors (i.e., the foregoing seven factors). Rather, Axiom challenged only: (1) the district court's implied finding that Axiom's use of NAM's two trademarks as meta FN8 tags caused the Internet search results at issue, and (2) the district court's reliance on Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir.1999), and Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808 (7th Cir.2002), with respect to the nature of meta tags and search engines. Axiom argues that those opinions erroneously misled the district court to find a likelihood of confusion; Axiom contends that its use of the meta tags was instead analogous to a store placing its own generic brand next to a brand name product on the store's shelf. Because Axiom has not challenged the district court's implied findings with respect to the subsidiary factors, any such challenge is deemed abandoned. Indeed, it is apparent that the marks are not only similar, but identical; Axiom's meta tags precisely mimic NAM's “IDD Therapy” and “Accu-Spina” trademarks. Axiom concedes that it is a direct competitor of NAM. It is also apparent that Axiom intended to gain a competitive advantage by associating its product with NAM's trademark. Finally, the litigation on appeal has proceeded on the assumption that there would be a likelihood of confusion, unless Axiom's arguments about the nature of meta tags and search engines (i.e., Axiom's challenge to Brookfield and Promatek) prevailed. FN8. As noted above, we summarily reject this argument. See supra note 3. NAM's trademarks appeared in the Google search result as part of the description of Axiom's website. Because on this record the only possible cause for this is Axiom's use of the trademarks as meta tags, we readily conclude that the district court was not clearly erroneous in its implicit finding that the meta tags caused the search result and thus the likelihood of confusion.

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Therefore, we address Axiom's challenge to Brookfield and Promatek. In the leading case on this issue, the Ninth Circuit concluded that the Lanham Act bars a defendant from including in its meta tags a competitor's trademark or confusingly similar terms. Brookfield, 174 F.3d at 1065. Accordingly, the Brookfield court enjoined one online video store, West Coast, from using in its meta tags the trademark (and similarly confusing terms) of a competing online video store, Movie Buff. Id. at 1066-67. Despite its ultimate conclusion, the Brookfield court conceded that even when a consumer who enters a company's trademark into a search engine sees a list displaying a competitor's website in addition to the trademark holder's website, the consumer will often be able to find the particular website he is seeking by simply scanning the list of results. Id. at 1062. The court also acknowledged that even if the web user chooses the competitor's website from the list, assuming the allegedly infringed trademark is not actually displayed by the competitor, “it is difficult to say that a consumer is likely to be confused about whose site he has reached or to think that [the plaintiff] somehow sponsors [the competitor's] web site.” Id. Nevertheless, the Brookfield court concluded that the competitor's use of the trademark “in metatags will still result in what is known as initial interest confusion.” Id. That is, “[a]lthough there is no source confusion in the sense that consumers know they are patronizing [the competitor] rather than [the plaintiff], there is nevertheless initial interest confusion in the sense that, by using [the trademark] to divert people looking for [the plaintiff's] web site, [the competitor] improperly benefits from the good will that [the plaintiff] has developed in its mark.” Id. *1222 In the other case relied upon by the district court, the Seventh Circuit faced facts similar to those in Brookfield and agreed with the Brookfield court's analysis. Promatek, 300 F.3d at 810-13. Other courts, however, have criticized various aspects of the Brookfield opinion. See, e.g., 1-800 Contacts, 414 F.3d at 410-11; Playboy Enters., Inc.

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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. Settlement Funding LLC, No. 06-0597, 2007 WL 30115, at *6-*7 (E.D.Pa. Jan. 4, 2007); see alsoJ. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:69 (4th ed.2003) (discussing meta tags, initial interest confusion, and criticisms of the Brookfield court's approach). Like the Brookfield and Promatek courts, we ultimately conclude that a company's use in meta tags of its competitor's trademarks may result in a likelihood of confusion. However, because NAM and Adagen have demonstrated a likelihood of actual FN9 source confusion, we need not decide, as those courts did, whether initial interest confusion alone may provide a viable method of establishing a likelihood of confusion. Unlike those courts, we are not faced with a situation where the trademarks are used without being displayed to consumers. FN9. “Source confusion” exists because consumers are likely to be confused as to whether Axiom's products have the same source or sponsor as NAM's or whether there is some other affiliation or relationship between the two. As has been noted by the Eighth Circuit, “[i]f the products are closely related, and it is reasonable for consumers to believe the products come from the same source, confusion is more likely.” Davis v. Walt Disney Co., 430 F.3d 901, 904 (8th Cir.2005). In Brookfield and Promatek, consumers who entered the plaintiff's trademarks into a search engine saw a list displaying the competitor's website in addition to the trademark holder's website without any other indication from the search results that the competitor's website is sponsored by the plaintiff or related to the plaintiff's trademarks. In contrast, in the instant case, when consumers entered NAM's trademarks into a search engine, the search results not only displayed Axiom's competing website, but they also included a brief descrip-

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tion of Axiom's website, which description included and highlighted NAM's trademarked terms. That is, the evidence in the instant case specifically shows that if consumers searched with Google for the terms “IDD Therapy” and “Accu-Spina,” the first listed result was a legitimate website sponsored by NAM, the owner of these trademarks, and the second entry in the search results was Axiom's competing website. Furthermore, and in contrast to Brookfield and Promatek, as noted above, the search results not only listed the competitor's (i.e., Axiom's) web address, but they also included a brief description of the Axiom's site, and this description included and highlighted both of NAM's trademarked terms, “IDD Therapy” and “Accu-Spina,” in addition to Axiom's competing products. Consumers viewing these search results would be led to believe that Axiom's products have the same source as the products of the owner of the “IDD Therapy” and “Accu-Spina” trademarks, or at least that Axiom distributed or sold all of the products to which the brief description referred, or that Axiom was otherwise related to NAM. This, of course, is misleading to the consumer because Axiom is not related in any way to NAM, nor does Axiom distribute or sell the products of NAM. Moreover, there was nothing in Axiom's website itself to disabuse consumers of the notion (suggested by the Google search) that there is some relationship between Axiom and *1223 NAM. In other words, if consumers accessed Axiom's website after viewing the Google search results, they would be told all about Axiom's products but would be met with utter silence with respect to NAM's products. For example, there was no comparative advertising in Axiom's website which would have made clear to consumers that NAM's and Axiom's products are competing items. Thus, the factual situation in the instant case is that Axiom's use of the meta tags caused a likelihood of actual consumer confusion as to source. The instant case is more like Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir.2004), than Brookfield or Promatek.

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In Playboy, the defendant, Netscape, sold advertisements to competitors of Playboy and then caused its search engine to pop up banner ads of its advertisers. Playboy, 354 F.3d at 1023. The ads appeared when the consumer-searcher typed in the search terms “Playboy” and/or “Playmate,” which are trademark terms owned by Playboy. Id. The search engine operated in this manner by using “keying” words in its software. Id. at 1022-23. A competitor's ad could be keyed to pop up in a banner ad along the margin of the search result when the searcher entered “Playboy” and/or “Playmate.” Id. at 1023. Thus, the keying words operated in hidden fashion, much like the meta tags in this case. Because the banner ads appeared immediately after the searcher typed in the Playboy trademarks, and invited the user to “click here,” id. at 1023, and especially because the banner ads did not clearly identify a source (i.e., the sponsor of the ad), id. at 1025 n. 16, 1030, the user was likely to be confused regarding the sponsorship of the unlabeled advertisements. Thus, the Playboy case involved some actual confusion as to source, unlike the situation in Brookfield where there was never any confusion as to source or affiliation. The instant case is more like Playboy than Brookfield. We note, however, that the source confusion in the instant case is considerably more pronounced than in Playboy. In Playboy, there was no explicit representation of a relationship between the source of the ad and Playboy, while there is an explicit representation in this case of some relationship between Axiom and NAM. Judge Berzon wrote a concurring opinion in Playboy in which he highlighted this distinction from Brookfield. Id. at 1035-36 (Berzon, J., concurring). Judge Berzon criticized Brookfield, arguing that it involved merely a distraction of a potential customer with another choice in a situation in which the customer was never confused as to source. Id. Rather, the potential customer merely was provided an opportunity for another choice, which clearly was not the sponsor of the original search. Id. Such distraction, Judge Berzon pointed out, was very

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much like the product placement in a department store. Id. at 1035. When a customer walks in, asks for the Calvin Klein section, and is directed to the second floor, no one thinks that there is a trademark infringement because the store has placed its own (or another competitor's) clothing line in a more prominent place as a distraction. Id. Because Axiom's use of NAM's trademarks as meta tags caused the Google search to suggest that Axiom's products and NAM's products had the same source, or that Axiom sold both lines, or that there was some other relationship between Axiom and NAM, Axiom's use of the meta tags caused a likelihood of actual source confusion. Thus, the instant case is very different from the product placement in a department store. This case is also very different from Brookfield where there was never source confusion. Finally, the instant case is not subject to the criticism leveled by Judge Berzon. *1224 For the foregoing reasons, and under the particular factual circumstances of this case, we cannot conclude that the district court's finding of a likeliFN10 hood of confusion is clearly erroneous. Because the district court in this case was not clearly erroneous in finding (1) that plaintiffs possessed valid trademarks; (2) that defendants used those marks, (3) in commerce, (4) in connection with the advertisement of defendant's goods; and (5) that such use caused a likelihood of confusion to consumers, we conclude that the district court did not err in concluding that plaintiffs demonstrated a likelihood of success with respect to the trademark infringement claim. FN10. We note that our holding is narrow, and emphasize what kind of case and what kind of facts are not before us. This is not a case like Brookfield or Promatek where a defendant's use of the plaintiff's trademark as a meta tag causes in the search result merely a listing of the defendant's website along with other legitimate websites, without any misleading descriptions. This is also not a case where the defendant's

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website includes an explicit comparative advertisement (e.g., our product uses a technology similar to that of a trademarked product of our competitor, accomplishes similar results, but costs approximately half as much as the competitor's product). Although we express no opinion thereon, such a defendant may have a legitimate reason to use the competitor's trademark as a meta tag and, in any event, when the defendant's website is actually accessed, it will be clear to the consumer that there is no relationship between the defendant and the competitor beyond the competitive relationship. Resolution of the foregoing, as well as other factual situations not before us, appropriately await the day that such factual situations are presented concretely. B. Likelihood of Success on the Merits of the False Advertising Claims [13][14] The district court did not clearly err in its factual findings that Axiom's representations are literally false and material to consumers' purchasing decisions, and thus NAM and Adagen demonstrated a likelihood on success on the merits of their false advertising claims. Regarding false advertising, section 43(a) of the Lanham Act provides, in relevant part, as follows: (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,

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shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 15 U.S.C. § 1125(a) (2006). To establish a likelihood of success on the merits of a false advertising claim under this section, the movant must demonstrate the following: “(1) the ads of the opposing party were false or misleading, (2) the ads deceived, or had the capacity to deceive, consumers, (3) the deception had a material effect on purchasing decisions, (4) the misrepresented product or service affects interstate commerce, and (5) the movant has been-or is likely to be-injured as a result of the false advertising.” Johnson & Johnson, 299 F.3d at 1247. Axiom only challenges the district court's conclusions regarding the first and third elements-that is, whether Axiom's statements are FN11 literally false and whether the statements*1225 have a material effect on purchasing decisions. FN11. In the present case, we may only sustain the preliminary injunction as it pertains to literally false statements, as opposed to those that are merely misleading. As we have explained before, “once a court deems an advertisement to be literally false, the movant need not present evidence of consumer deception,” but in contrast, “[i]f the court deems an ad to be true but misleading, the movant-even at the preliminary injunction stage-must present evidence of deception.” Johnson & Johnson, 299 F.3d at 1247. Here, the district court ruled that NAM and Adagen have not offered evidence of deception at this stage of the proceedings, and therefore the district court acknowledged that it could only enjoin those advertising statements that are literally false, not those that are merely misleading. Even if the statements are misleading (but not false), which would satisfy the first element, the second element would remain unsatisfied at this stage, and

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a preliminary injunction would be inappropriate. Accordingly, if we rule that any of Axiom's representations are not literally false, we would have to reverse that aspect of the preliminary injunction. 1. Literal Falsity [15][16] The district court did not clearly err when it concluded that Axiom made literally false stateFN12 ments in its advertising. First, the district court did not clearly err when it ruled that Axiom's claims about an affiliation with NASA are literally false. Although one engineer with NASA training or experience participated in Axiom's development of the DRX 9000, this does not constitute a joint collaboration between NASA and Axiom, nor does it support the claim that NASA engineers developed the DRX 9000 or discovered part of the DRX 9000. Similarly, although the DRX 9000 used some components that NASA also uses, that does not mean the DRX 9000 contains or embodies NASA technology. Perhaps these statements could properly be characterized as misleading rather than literally false, but it is a fine line, and we will only reverse the district court if its findings are clearly erroneous. Based on the entire evidence, we are not left with the definite and firm conviction that the FN13 district court clearly erred. FN12. Whether a statement is literally false is a finding of fact, which is reviewed only for clear error. Scotts Co. v. United Indus. Corp., 315 F.3d 264, 274 (4th Cir.2002) (noting that literal falsity of an advertisement is a factual question subject to the clearly erroneous standard); see also Time 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) (“The first element of the Lanham Act test requires that the plaintiff show that the statements at issue were either ‘(1) commercial claims that are literally false as a factual

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matter ....’ ” (quoting United Indus. Corp. v. Clorox, 140 F.3d 1175, 1180 (8th Cir.1998))). FN13. Furthermore although Axiom objects that several of its statements regarding NASA only appeared in a video that was never released to any potential consumers, the record contains ample evidence of additional statements, beyond those in the video, that support the district court's ruling of literal falsity. [17] Second, the district court likewise did not clearly err when it ruled that Axiom's claims about the DRX 9000 being FDA “approved” are literally false. The DRX 9000 is a Class II medical device, which is only eligible for FDA “clearance” rather than FDA “approval;” FDA approval is a separate FN14 process that applies only to Class III devices. See*122621 U.S.C. §§ 360c, 360e (2006). Compare21 C.F.R. § 807.81(a)(1) (2006), with21 C.F.R. § 814.1(c) (2006). As such, Axiom's statements that the DRX 9000 is FDA “approved” are literally false. In fact, FDA regulations state that it “is misleading and constitutes misbranding” to claim FDA approval when a device is merely FDA cleared. See21 C.F.R. § 807.97 (2006). Although these regulations use the term “misleading,” they also describe such a misrepresentation as “misbranding,” and again, it is often a matter of degree whether a statement is literally false or merely misleading. Based on the entire evidence, we are convinced that the district court did not clearly err FN15 in judging Axiom's statements literally false. FN14. Regulation of medical devices is governed by the Federal Food, Drug, and Cosmetic Act, 52 Stat. 1040, as amended by the Medical Device Amendments of 1976, 90 Stat. 539, 21 U.S.C. § 301 et seq. See Buckman Co. v. Plaintiffs' Legal Comm., 531 U.S. 341, 345, 121 S.Ct. 1012, 1015, 148 L.Ed.2d 854 (2001). Under these regulations, medical devices are divided into three categories: “Class I

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devices are those that present no unreasonable risk of illness or injury and therefore require only general manufacturing controls; Class II devices are those possessing a greater potential dangerousness and thus warranting more stringent controls; Class III devices ‘presen[t] a potential unreasonable risk of illness or injury’ and therefore incur the FDA's strictest regulation.” Id. (quoting § 360c(a)(1)(C)(ii)(II) (1994 & Supp. V)). FN15. Furthermore, despite Axiom's arguments to the contrary, the district court did not step into the FDA's shoes when it ruled that the DRX 9000 was not approved. The district court was not making a determination whether the device should be approved, it merely noted what the FDA had already determined. 2. Materiality to Consumers' Purchasing Decisions [18][19][20] The evidence amply supports the district court's conclusion that Axiom's statements are material to consumers' purchasing decisions. Even when a court finds that a defendant's ads are literally false, the plaintiff, to succeed on a claim of false advertising, must still “establish that ‘the defendant's deception is likely to influence the purchasing decision.’ ” Johnson & Johnson, 299 F.3d at 1250 (quoting Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 311 (1st Cir.2002)). “The materiality requirement is based on the premise that not all deceptions affect consumer decisions.” Id. The types of false claims that the district court enjoined-regarding NASA affiliation and FDA approval-logically would influence a doctor's decision to purchase the DRX 9000 over a competing machine without those qualities. These statements not only represent the quality of the device, but they provide marketing opportunities to the purchasing doctor when he or she in turn is advertising to pro-

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spective patients. In fact, after the onset of litigation against Axiom, several doctors who had purchased DRX 9000s sent letters to Axiom expressing their dissatisfaction with the possibility that they might not be able to use Axiom's claims, if the claims proved untrue, to attract patients. These letters provide clear evidence that Axiom's representations would affect doctors' decisions whether to purchase a DRX 9000. Based on this and all other evidence currently in the record, the district court did not err in its conclusion that these false statements are material to consumers' purchasing decisions. C. Presumptions of Irreparable Harm Even though we hold that NAM and Adagen have established a substantial likelihood of success on the merits of their trademark infringement and false advertising claims, we must still evaluate whether NAM and Adagen have demonstrated, with respect to each claim, that they will suffer irreparable harm in the absence of an injunction. In reaching its conclusion that NAM and Adagen satisfied this element of the preliminary injunction test, the district court relied on two presumptions, one regarding the infringement claims and one regarding the false advertising claims. For the reasons that follow, we vacate the preliminary injunction with respect to both the trademark claims and the false advertising claims. 1. Irreparable Harm in False Advertising Cases [21][22] The district court erred when it presumed that NAM and Adagen would *1227 suffer irreparable harm in the absence of a preliminary injunction merely because Axiom's advertisements are literally false. The district court cited a case out of the Northern 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 sufficient to sustain a finding of irreparable injury for

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purposes of a preliminary injunction.’ ” This quote, however, is an incomplete statement of the law. Proof of falsity is generally only sufficient to sustain a finding of irreparable injury when the false statement is made in the context of comparative advertising between the plaintiff's and defendant's products. SeeMcCarthy, supra, § 27:37 (“Where the challenged advertising makes a misleading comparison to a competitor's product, irreparable harm is presumed. But if the false advertising is noncomparative and makes no direct reference to a competitor's product, irreparable harm is not presumed.”(internal footnotes omitted)). Although some cases, such as the one cited by the district court, employ language that may suggest a more expansive presumption, such quotes take the original principle out of context without explanation. Once this presumption is properly stated, it becomes evident that NAM and Adagen are not entitled to the presumption's benefits because Axiom's statements, although false, do not mention NAM's products by name or in any way compare Axiom's FN16 products with NAM's products. This is not to say that NAM and Adagen could not demonstrate, absent the presumption, that they will suffer irreparable harm from Axiom's false advertising, but the district court abused its discretion by relying solely on the presumption to find irreparable harm. Accordingly, we vacate the preliminary injunction to the extent it proscribes Axiom's false advertising, and we remand to the district court to determine whether NAM and Adagen will suffer irreparable harm in the absence of a preliminary injunction. FN16. In reaching this conclusion, we need not address whether this conclusion is also indicated by eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). 2. Irreparable Harm in Trademark Infringement Cases [23] Regardless of whether NAM deserves a pre-

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sumption of irreparable harm on its false advertising claims, our prior cases do extend a presumption of irreparable harm once a plaintiff establishes a likelihood of success on the merits of a trademark infringement claim. Our circuit has acknowledged as 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 in trademark infringement cases that (1) there is not [an] adequate remedy at law to redress infringement and (2) infringement by its nature causes irreparable harm.’ ” (quoting Processed Plastic Co. v. Warner Commc'ns, 675 F.2d 852, 858 (7th Cir.1982))); McDonald's Corp. v. Robertson, 147 F.3d 1301, 1310 (11th Cir.1998). Nonetheless, although established law entitles NAM and Adagen to this presumption in the trademark infringement context, a recent U.S. Supreme Court case calls into question whether courts may presume irreparable harm merely because a plaintiff in an intellectual property case has demonstrated a likelihood of success on the merits. See generally eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). In eBay, after a jury had found patent infringement by the defendant, the district court denied the plaintiff's motion for permanent*1228 injunctive relief. Id. at 390-91, 126 S.Ct. at 1839. In so doing, the district court “appeared to adopt certain expansive principles suggesting that injunctive relief could not issue in a broad swath of cases.” Id. at 393, 126 S.Ct. at 1840. On appeal, the Federal Circuit reversed the denial of injunctive relief, articulating a categorical rule that permanent injunctions shall issue once infringement is established. Id. at 393-94, 126 S.Ct. at 1841. The Supreme Court reversed the Federal Circuit and admonished both the district and appellate courts for applying categorical rules to the grant or denial of injunctive relief. Id. at 394, 126 S.Ct. at 1841. The Court stressed that the Patent Act indicates “that injunctive relief ‘may’ issue only ‘in accordance with the principles of equity.’ ” Id. at 393, 126 S.Ct. at 1839. Because the Court concluded “that neither court below correctly ap-

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plied the traditional four-factor framework that governs the award of injunctive relief, [it] vacated the judgment of the Court of Appeals, so that the District Court may apply that framework in the first instance.” Id. at 394, 126 S.Ct. at 1841. The Supreme Court held that while “the decision whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, ... such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.” Id. Although eBay dealt with the Patent Act and with permanent injunctive relief, a strong case can be made that eBay's holding necessarily extends to the grant of preliminary injunctions under the Lanham Act. Similar to the Patent Act, the Lanham Act grants federal courts the “power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable.” 15 U.S.C. § 1116(a) (2006). Furthermore, no obvious distinction exists between permanent and preliminary injunctive relief to suggest that eBay should not apply to the latter. Because the language of the Lanham Act-granting federal courts the power to grant injunctions “according to the principles of equity and upon such terms as the court may deem reasonable”-is so similar to the language of the Patent Act, we conclude that the Supreme Court's eBay case is applicable to the instant case. However, we decline to express any further opinion with respect to the effect of eBay on this case. For example, we decline to decide whether the district court was correct in its holding that the nature of the trademark infringement gives rise to a presumption of irreparable injury. In other words, we decline to address whether such a presumption is the equivalent of the categorical rules rejected by the Court in eBay. We decline to address such issues for several reasons. First, the briefing on appeal has been entirely inadequate in this regard. Second, the district court has not addressed the effect of eBay. Finally, the district court may well conclude on remand that it can readily reach an appropriate de-

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cision by fully applying eBay without the benefit of a presumption of irreparable injury, or it may well decide that the particular circumstances of the instant case bear substantial parallels to previous cases such that a presumption of irreparable injury is an appropriate exercise of its discretion in light of the historical traditions. See eBay, 547 U.S. at 394-97, 126 S.Ct. at 1841-43 (concurring opinions of Chief Justice Roberts and Justice Kennedy, representing the views of seven Justices). Accordingly, we also vacate the preliminary injunction as it applies to the trademark infringement claim, and remand to the district court for further proceedings not inconsistent with this opinion, and with eBay. *1229 IV. CONCLUSION

FN17

FN17. We also reject Axiom's argument that the district court failed to exercise its discretion with respect to the bond issue. The district court did exercise its discretion not to require a bond. In sum, we affirm the district court's findings with respect to the likelihood of success on the merits of the trademark claims and the false advertising claims. However, we vacate the preliminary injunction with respect to both, and we remand to the district court for further proceedings not inconsistent with this opinion. AFFIRMED IN PART, VACATED AND REMANDED IN PART. C.A.11 (Ga.),2008. North American Medical Corp. v. Axiom Worldwide, Inc. 522 F.3d 1211, 2008-1 Trade Cases P 76,124, 86 U.S.P.Q.2d 1462, 21 Fla. L. Weekly Fed. C 552 END OF DOCUMENT

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United States Court of Appeals, Eleventh Circuit. PLANETARY MOTION, INC., PlaintiffCounter-Defendant-Appellee, v. TECHSPLOSION, INC., Michael Gay a.k.a. Michael Carson, Defendants-Counter-Claimants-Appellants. No. 00-10872. Aug. 16, 2001. Owner of trademark for e-mail checking service sued competitor for infringement. The United States District Court for the Southern District of Florida, No. 99-06511-CV-DTKH, Daniel T.K. Hurley, J., held for owner, and competitor appealed. The Court of Appeals, Restani, Judge, United States Court of International Trade, sitting by designation, held that: (1) owner's distribution of software for end-users over Internet, even absent any sales thereof, was sufficient to establish trademark rights in software's name; (2) owner's initial trademark rights in e-mail notification software extended to its subsequent service allowing users to check email via telephone line; and (3) award of attorney fees was abuse of discretion. Affirmed in part; vacated in part. West Headnotes [1] Federal Courts 170B

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170BVIII(K) Scope, Standards, and Extent 170BVIII(K)3 Presumptions 170Bk802 k. Summary Judgment. Most Cited Cases Review of district court's grant of summary judgment is de novo, with all facts and reasonable inferences therefrom reviewed in light most favorable to non-moving party. [2] Trademarks 382T

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382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1411 Constitutional and Statutory Provisions 382Tk1413 k. Purpose and Construction in General. Most Cited Cases (Formerly 382k331 Trade Regulation) Lanham Act provision forbidding trademark infringement is remedial in nature and should be interpreted and applied broadly so as to effectuate its remedial purpose. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [3] Trademarks 382T

1421

382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases (Formerly 382k332 Trade Regulation) To prevail under Lanham Act, trademark infringement claimant must show that (1) it had prior rights to mark at issue and (2) defendant had adopted mark or name that was same, or confusingly similar to its mark, such that consumers were likely to confuse the two. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [4] Trademarks 382T

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382T Trademarks

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382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1420 k. Unfair Competition. Most Cited Cases (Formerly 382k403 Trade Regulation) Court may use analysis of federal trademark infringement claim as “measuring stick” in evaluating merits of state law claim of unfair competition. Lanham TradeMark Act, § 43(a), 15 U.S.C.A. § 1125(a). [5] Trademarks 382T

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382T Trademarks 382TIV Creation and Priority of Rights 382Tk1142 k. Affixation. Most Cited Cases (Formerly 382k64 Trade Regulation) Affixation requirement for trademark protection was met where software in question was distributed under filename that was also claimed mark, was promoted under same mark, was accompanied by user manual bearing mark, and was sold in compilation under mark. Lanham Trade-Mark Act, §§ 43(a), 45, 15 U.S.C.A. §§ 1125(a), 1127.

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satisfied “use in commerce” jurisdictional predicate for application of Lanham Act, and was sufficiently public to create ownership rights in mark. Lanham Trade-Mark Act, §§ 43(a), 45, 15 U.S.C.A. §§ 1125(a), 1127. [7] Trademarks 382T

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382T Trademarks 382TIV Creation and Priority of Rights 382Tk1142 k. Affixation. Most Cited Cases (Formerly 382k64 Trade Regulation) There is no requirement that, for trademark in software to be valid, mark must appear on box containing product incorporating it, that mark must be displayed on screen when program is running, or that software bearing mark be selling point for the product into which it is incorporated; there is no requirement that public come to associate mark with product in any particular way or that public be passive viewers of mark for sufficient public association to arise. Lanham Trade-Mark Act, § 45, 15 U.S.C.A. § 1127. [8] Trademarks 382T

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382T Trademarks 382TIV Creation and Priority of Rights 382Tk1132 Use of Mark 382Tk1136 Nature and Extent of Use 382Tk1136(2) k. Particular Cases. Most Cited Cases (Formerly 382k65 Trade Regulation)

382T Trademarks 382TV Duration and Termination of Rights 382Tk1162 Use by Others 382Tk1164 k. Permission; Voluntary Arrangements. Most Cited Cases (Formerly 382k65 Trade Regulation) Fact that software had been distributed pursuant to “GNU General Public License” did not defeat ownership of trademark in software's name, or in any way compel finding that owner abandoned his rights in trademark.

Trademarks 382T

[9] Trademarks 382T

[6] Trademarks 382T

1136(2)

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382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1435 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 establish trademark rights in software's name; distribution both

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382T Trademarks 382TVI Nature, Extent, and Disposition of Rights 382Tk1187 Persons Entitled to Assert Rights 382Tk1188 k. In General. Most Cited Cases (Formerly 382k61 Trade Regulation) Eleemosynary individual that uses trademark in connection with good or service may nonetheless acquire ownership rights in mark if there is sufficient evidence of

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competitive activity. Lanham Trade-Mark Act, §§ 43(a), 45, 15 U.S.C.A. §§ 1125(a), 1127. [10] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 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 consumer confusion, and hence trademark infringement, are: (1) type of mark; (2) similarity of mark; (3) similarity of products marks represent; (4) similarity of parties' retail outlets and customers; (5) similarity of advertising media; (6) defendant's intent; and (7) actual confusion. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [11] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1100 Relationship Between Goods or Services Underlying Marks 382Tk1101 k. In General. Most Cited Cases (Formerly 382k363.1 Trade Regulation) Scope of protection enjoyed by trademark owner is not restricted to owner's original use; under “natural expansion” doctrine, owner's rights vis-a-vis junior user extend to goods on which mark has already been used or that lie within realm of natural expansion. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [12] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1100 Relationship Between Goods or Services Underlying Marks 382Tk1101 k. In General. Most Cited Cases (Formerly 382k363.1 Trade Regulation)

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Court determines proper scope of protection of trademark in context of intervening uses by applying “source or sponsorship test,” under which mark owner has protection against use of its mark on any product or service which would reasonably be thought by buying public to come from same source, or thought to be affiliated with, connected with, or sponsored by, mark owner. [13] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1100 Relationship Between Goods or Services Underlying Marks 382Tk1103 k. Particular Goods and Services, Relationship Between. Most Cited Cases (Formerly 382k363.1 Trade Regulation) First user's trademark rights in e-mail notification software extended to its subsequent service allowing users to check e-mail via telephone line, for purpose of determining whether second user's use of mark for e-mail checking service was infringing; consumers reasonably could have attributed software and service under same name to same source. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a). [14] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk763 Extent of Review Dependent on Nature of Decision Appealed from 170Bk767 k. Provisional Remedies; Injunctions; Receivers. Most Cited Cases Appellate court will not set aside injunction unless it is so vague that it has no reasonably specific meaning. Fed.Rules Civ.Proc.Rule 65(d), 28 U.S.C.A. [15] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent

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170BVIII(K)1 In General 170Bk763 Extent of Review Dependent on Nature of Decision Appealed from 170Bk767 k. Provisional Remedies; Injunctions; Receivers. Most Cited Cases Appellate court determines propriety of allegedly vague injunctive order by inquiring into whether parties subject thereto understand their obligations under order. [16] Trademarks 382T

1717(2)

382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1717 Scope and Extent of Relief 382Tk1717(2) k. Infringement in General. Most Cited Cases (Formerly 382k645 Trade Regulation) Trademarks 382T

1717(5)

382T Trademarks 382TIX Actions and Proceedings 382TIX(F) Injunctions 382Tk1712 Permanent Injunctions 382Tk1717 Scope and Extent of Relief 382Tk1717(5) k. Misuse of Internet Domain Names; Cybersquatting. Most Cited Cases (Formerly 382k645 Trade Regulation) Injunction prohibiting trademark infringement defendant from using name “Coolmail” or any similar mark in connection with e-mail or other Internet-related services, in connection with software, and as part of domain name of its website, was neither vague nor overbroad; order contained no contextual ambiguities or alternate readings prohibiting legal conduct. [17] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)4 Discretion of Lower Court 170Bk830 k. Costs, Attorney Fees and Other Allowances. Most Cited Cases

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(Formerly 382k729 Trade Regulation) Award of attorney fees in trademark infringement suit is reviewable only to determine if trial court abused its discretion in granting or denying them. Lanham TradeMark Act, § 35(a), 15 U.S.C.A. § 1117(a). [18] Trademarks 382T

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382T Trademarks 382TIX Actions and Proceedings 382TIX(G) Costs 382Tk1750 k. In General. Most Cited Cases (Formerly 382k728.1 Trade Regulation) Trademarks 382T

1754(2)

382T Trademarks 382TIX Actions and Proceedings 382TIX(G) Costs 382Tk1752 Attorney Fees 382Tk1754 Grounds 382Tk1754(2) k. Exceptional Cases; Intent or Bad Faith. Most Cited Cases (Formerly 382k728.1 Trade Regulation) Owner of trademark for e-mail checking service, having prevailed in infringement action against competitor, was entitled to recover costs, but not attorney fees absent showing that competitor's conduct was malicious, fraudulent, deliberate, or willful. Lanham Trade-Mark Act, § 35(a), 15 U.S.C.A. § 1117(a). Trademarks 382T

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382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases (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 Appellee.

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Appeal from the United States District Court for the Southern District of Florida. Before TJOFLAT and WILSON, Circuit Judges, and FN* RESTANI , Judge. FN* Honorable Jane A. Restani, Judge, United States Court of International Trade, sitting by designation. RESTANI, Judge: Planetary Motion, Inc. (“Planetary Motion” or “Appellee”) sued Techsplosion, Inc. and Michael Gay a/k/a Michael Carson (respectively “Techsplosion” and “Carson”; collectively “Appellants”) for infringement and dilution of an unregistered trademark under Section 43(a) and (c) of the Federal Trademark Act, 15 U.S.C. § 1051 et seq. (1994) (“Lanham Act”), and for violation of Florida's unfair competition law. Fla. Stat. Ann. § 495.151 (West 2000). Finding that Planetary Motion had established priority of use and a likelihood of confusion, the United States District Court for the Southern District of Florida entered summary judgment in favor of Planetary Motion.*1191 We affirm the judgment and vacate the award of attorney fees. Facts I. Development and Distribution of the “Coolmail” Software In late 1994, Byron Darrah (“Darrah”) developed a UNIX-based program (the “Software”) that provides email users with notice of new e-mail and serves as a gateway to the users' e-mail application. On December 31, 1994, Darrah distributed the Software over the Internet 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 this designation appeared on the announcement sent to the end-users on Sunsite as well as on the Software usermanual, both of which accompanied the release.

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The Software was distributed without charge to users pursuant to a GNU General Public License that also accompanied the release. A GNU General Public License allows users to copy, distribute and/or modify the Software under certain restrictions, e.g., users modifying licensed files must carry “prominent notices” stating that the user changed the files and the date of any change. After the release of the Software, Darrah received correspondence from users referencing the “Coolmail” mark and in some cases suggesting improvements. In 1995, Darrah released two subsequent versions of the Software under the same mark and also pursuant to the GNU General Public License. In early 1995, a German company named S.u.S.E. GmbH sought permission from Darrah to include the Software in a CD-ROM package sold as a compilation of Unix-based programs. Darrah consented and, pursuant to the GNU licensing agreement, S.u.S.E. distributed the Software in its compilation product and in subsequent versions thereof. S.u.S.E. sold and continues to sell the software compilation in stores in the United States and abroad, as well as over the Internet. II. Launch of Techsplosion's “CoolMail” E-mail Service In 1998, Appellant Carson formed Techsplosion, for the purpose of operating a business based on an e-mail service that he had developed. On April 16, 1998, Techsplosion began offering the e-mail service on the Internet under the mark “CoolMail.” Two days later, Techsplosion activated the domain name “coolmail.to” Techsplosion delivered an e-mail solicitation under the “CoolMail” mark to approximately 11,000 members of the Paramount Banner Network, an Internet advertising network, also created and operated by Carson. Techsplosion charged no fee to subscribe to the service and generated revenues through the sale of banner advertisements on its web site. III. Planetary Motion's E-mail Service & Application for Trademark Registration Appellee Planetary Motion is a computer software and

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telecommunications company that developed and owns an electronic mail service called “Coolmail.” As part of its service, Planetary Motion enables a person to check e-mail via telephone without logging onto a computer. On April 24, 1998, Planetary Motion filed three intentto-use applications to register the mark “Coolmail” with the United States Patent and Trademark Office. Though Planetary Motion was aware that Darrah's Software also bore the mark “Coolmail,” it represented in its applications that it was not aware of any mark upon which its proposed registered mark would infringe. Planetary Motion launched its Coolmail e-mail service to subscribers on June 8, 1998.

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mark “steps into the shoes of the assignor.” Premier Dental Prods. Co. v. Darby Dental Supply Co., 794 F.2d 850, 853 (3d Cir.), cert. denied, 479 U.S. 950, 107 S.Ct. 436, 93 L.Ed.2d 385 (1986). Appellants do not contest the validity of the assignment from Darrah, nor do they dispute that in purchasing rights to Darrah's software, Planetary Motion succeeded to all rights possessed by Darrah. V. Disposition of Planetary Motion's Complaint

On April 22, 1999, Planetary Motion filed a complaint against Techsplosion. In the complaint, Planetary Motion alleged infringement of the alleged mark “Coolmail” for use in connection with e-mail services. Planetary alleged federal trademark infringement and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as injury to business reputation and dilution under Florida Statute § 495.151.

On January 31, 2000, the district court entered an Order granting Planetary Motion's motion for summary judgment and denying Carson's and Techsplosion's motion for summary judgment. The district court based the Order on two findings: (1) that the alleged mark was affixed to Darrah's software, and that Darrah's distribution of the software over the Internet constituted a “transport in commerce,” resulting in the creation of trademark rights and priority, and (2) there was a likelihood of confusion because the marks “are essentially the same.” The district court did not reach the issue of whether Techsplosion's use of “CoolMail” in connection with its e-mail service diluted Planetary Motion's mark.

On June 10, 1999, Techsplosion filed an Answer, Affirmative Defenses, and Counterclaims. The counterclaims alleged infringement of the mark “Coolmail” for use in connection with e-mail services. Techsplosion alleged unfair competition, false designation, description, and representation under the Lanham Act, common trademark infringement, common law unfair competition, and injury to business reputation and dilution.

On the same date, the district court entered final judgment granting Planetary Motion permanent injunctive relief. See15 U.S.C. § 1116. The order also awarded Planetary Motion profits and damages, as well as attorney fees and costs, pursuant to section 35 of the Lanham Act, 15 U.S.C. § 1117. The district court requested a report and recommendation from a magistrate judge fixing the amounts to be awarded.

In July of 1999, Planetary Motion purchased from Darrah all rights, title, and interest to the Software including all copyrights, trademarks, patents and other intelFN1 lectual property rights. On August 31, 1999, Planetary filed an Amended Verified Complaint, adding a claim for dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and alleging violation of trademark rights assigned from Darrah.

A Notice of Appeal was filed on February 15, 2000. On February 15, 2000, Techsplosion filed an Emergency Motion to Stay Pending Appeal, reasserting that Darrah never established any rights in the alleged mark. This motion was denied on February 17, 2000.

*1192 IV. Planetary Motion's Complaint and Subsequent Acquisition of Darrah's Rights

FN1. The assignee of a trade name or service

On May 9, 2000 the magistrate judge entered his report recommending that Planetary Motion be awarded $275,508 in attorneys' fees and $6,562.34 in costs, but that 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 order adopting the report and recommendation in its entirety. On July 7, 2000, Techsplosion*1193 filed a Notice of Appeal from the order adopting the magistrate FN2 judge's report and recommendation. FN2. Planetary Motion does not appeal the district court's adoption of the recommendation of the magistrate judge denying damages. Standard of Review [1] Review of a district court's grant of summary judgment is de novo, with all facts and reasonable inferences therefrom reviewed in the light most favorable to the non-moving party. Carnival Brand Seafood Co. v. Carnival Brands, Inc., 187 F.3d 1307, 1309 (11th Cir.1999). Discussion [2][3][4] Section 43(a) of the Lanham Act forbids unfair trade practices involving infringement of trade dress, service marks, or trademarks, even in the absence of FN3 federal trademark registration. 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 in nature and should be interpreted and applied broadly so as 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.2d 76, 79 (2d Cir.1981)). To prevail under this section, a claimant must show (1) that it had prior rights to the mark at issue and (2) that the defendant had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse FN4 the two. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 360 (11th Cir.1997) (citing Conagra Inc. v. Singleton, 743 F.2d 1508, 1512 (11th Cir.1984)), modified, 122 F.3d 1379 (1997). Appellants argue that the district court erred in finding that Planetary Motion had established both elements. Appellants also dispute the scope of injunctive relief, as well as the award of attorney fees and costs.

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FN3. Section 43(a) provides in pertinent part: (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 15 U.S.C. § 1125(a). FN4. Courts may use an analysis of federal infringement claims as a “measuring stick” in evaluating the merits of state law claims of unfair competition. See Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1521 (11th Cir.), cert. denied, 502 U.S. 1005, 112 S.Ct. 639, 116 L.Ed.2d 657 (1991). I. Prior Use in Commerce [5][6] Under common law, trademark ownership rights are “appropriated only through actual prior use in commerce.” Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d 1018, 1022 (11th Cir.1989) (citation

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FN5 omitted). Under the Lanham Act, the term “use in commerce” is *1194 defined in relevant part as follows: FN5. “In the absence of registration, rights to a mark traditionally have depended on the very same elements that are now included in the statutory definition: the bona fide use of a mark in commerce that was not made merely to reserve a mark for later exploitation.” Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 357 (6th Cir.1998). Common law and statutory trademark infringements are merely specific aspects of unfair competition. 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 Engelhard Vacuum, Inc., 395 F.2d 457, 461 (3d Cir.), 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 of trade, and not made merely to reserve a right in a mark.... [A] mark shall be deemed to be in use in commerce ... on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce .... FN6 15 U.S.C. § 1127. The district court found that because the statute is written in the disjunctive (i.e., “sale or transport”), Darrah's wide distribution of the Coolmail software over the Internet, even absent any sales thereof, was sufficient to establish ownership rights in the “CoolMail” mark. Appellants contend that “transport in commerce” alone-here, Darrah's free distribution of software over the Internet “with no existing business, no intent to form a business, and no sale under the mark”-is insufficient to create trademark rights. Appellants' Brief at 13. Appellants' argument lacks merit. FN6. Appellants appear to have conceded that if Darrah sent out original programs and related manuals, this would satisfy the affixation re-

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quirement: MR. GIGLIOTTI [counsel for Techsplosion]: [The mark] has to be on the product or on the associated documentation. It is on neither. THE COURT: It is not on the associated documentation[?] How about the original programs Darrah sent out and manuals that went with it, and all that material, wasn't that enough for affixation? MR. GIGLIOTTI: Yes, Your Honor, that is affixation; however, he did not meet the sale requirement. R3-85-19 to 20. In any case, the affixation requirement is met because the Software was distributed under a filename that is also the claimed mark, was promoted under the same mark, was accompanied by a user manual bearing the mark, and was sold in a compilation under the mark. The parties do not make clear the two different contexts in which the phrase “use in commerce” is used. The term “use in commerce” as used in the Lanham Act “denotes Congress's authority under the Commerce Clause rather than an intent to limit the [Lanham] Act's application to profit making activity.” United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86, 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 Congress's authority under the Commerce Clause extends to activity 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 definition of “commerce” is concomitantly broad in scope: “all commerce which may lawfully be regulated by Congress.” 15 U.S.C. § 1127. See also Steele v. Bulova Watch Co., 344 U.S. 280, 283-84, 73 S.Ct. 252, 97 L.Ed. 319 (1952); Larry Harmon Pictures Corp. v. Williams Rest. Corp., 929 F.2d 662, 666 (Fed.Cir.)

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(allowing registration for an intrastate provider of restaurant services with an undefined interstate clientele), cert. denied, 502 U.S. 823, 112 S.Ct. 85, 116 L.Ed.2d 58 (1991). The distribution of the Software for endusers over the Internet satisfies *1195 the “use in commerce” jurisdictional predicate. See, e.g., Planned Parenthood Fed'n of Am., Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1434, 1997 WL 133313 (S.D.N.Y.1997) ( “The nature of the Internet indicates that establishing a typical home page on the Internet, for access to all users, would satisfy the Lanham Act's ‘in commerce’ requirement.”), aff'd, 152 F.3d 920 (2d Cir.), cert. denied, 525 U.S. 834, 119 S.Ct. 90, 142 L.Ed.2d 71 (1998). Nevertheless, the use of a mark in commerce also must be sufficient to establish ownership rights for a plaintiff to recover against subsequent users under section 43(a). See New England Duplicating Co. v. Mendes, 190 F.2d 415, 417-18 (1st Cir.1951) (after finding “use in commerce” jurisdiction predicate satisfied, court noted that “[t]he question remains whether the plaintiff has established that he was the ‘owner’ of the mark, for under [15 U.S.C. § 1051] only the ‘owner’ of a mark is entitled to have it registered.”). The court in Mendes set forth a two part test to determine whether a party has established “prior use” of a mark sufficient to establish ownership: FN7 [E]vidence showing, first, adoption, and, second, use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidFN8 ence of actual sales. FN7. It is uncontested that Darrah adopted the mark “Coolmail” before Appellants' use of the mark in connection with their e-mail service. FN8. This ownership test is not for the purpose of establishing the “use in commerce” jurisdictional 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.

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Id. at 418. See also New West, 595 F.2d at 1200.

FN9

FN9. This ownership requirement parallels the statutory definition of “trademark”: “any word, name, symbol, or device, or any combination thereof ... used by a person ... to identify and distinguish his or her goods ... from those manufactured or sold by others ....”15 U.S.C. § 1127. The Seventh Circuit has held that a higher quantum of use may be necessary to establish ownership rights under common law than under the statute because the notice function of registration is lacking. See Zazu Designs v. L'Oreal, S.A., 979 F.2d 499, 503-04 (7th Cir.1992). In addition, the continuity of a user's commercial activities in connection with the mark is also relevant to determining whether use is sufficient to establish common law ownership. Circuit City Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1054-55 (6th Cir.1999) (“A party establishes a common law right to a trademark only by demonstrating that its use of the mark was ‘deliberate and continuous, not sporadic, casual or transitory.’ ”). Courts generally must inquire into the activities surrounding the prior use of the mark to determine whether such an association or notice is present. See, e.g., Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 F.3d 427, 433 (7th Cir.1999) (“The determination of whether a party has established protectable rights in a trademark is made on a case by case basis, considering the totality of the circumstances.”), cert. denied, 528 U.S. 1188, 120 S.Ct. 1241, 146 L.Ed.2d 100 (2000). Under the “totality of circumstances” analysis, a party may establish “use in commerce” even in the absence of sales. “[A]lthough evidence of sales is highly persuasive, the question of use adequate to establish appropriation remains one to be decided on the facts of each case ....” 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 of use,” but found that promotional mailings coupled with advertiser and distributor solicitations met the Mendes “public identification” ownership *1196 requirement.

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Id. at 1200. Thus, contrary to Appellants' assertions, the existence of sales or lack thereof does not by itself determine whether a user of a mark has established ownerFN10 ship rights therein. Compare Marvel Comics Ltd. v. Defiant, 837 F.Supp. 546, 549 (S.D.N.Y.1993) (finding announcement of “Plasmer” title to 13 million comic book readers and promotion at annual trade convention sufficient to establish trademark ownership rights, notwithstanding lack of any sales) with WarnerVision Entm't Inc. v. Empire of Carolina Inc., 915 F.Supp. 639, 645-46 (S.D.N.Y.) (finding toy manufacturer's promotional efforts insufficient to establish priority of use where only a few presentations were made to industry buyers, even though one resulted in a sale to a major toy retailer), aff'd in part, vacated in part, 101 FN11 F.3d 259 (2d Cir.1996). 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 proposition that there must be a sale in order to satisfy the “use in commerce” requirement. Future Domain, however, turned not on the existence of sales but whether the extent of the purported mark owner's activities created a public association between the mark and the product. There, the court determined that a computer software manufacturer's promotion of a mark at a trade show-where at most 7,000 persons actually received or requested information about the mark and where no orders were taken-was not sufficient to create such an association. Id. at 1293-95. FN11. Courts applying the “totality of circumstances” approach routinely have found evidence of a few sales of goods to which the mark had been affixed insufficient to establish trademark ownership. For example, in Zazu Designs, 979 F.2d at 503-04, the plaintiff hair salon had sold a few bottles of shampoo bearing the mark “Zazu” both over the counter and mailed over state lines. The court found that such limited sales “neither link the Zazu mark with [the plaintiff's] product in the minds of

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consumers nor put other producers on notice.” Id. at 503. Similarly, not every transport of a good is sufficient to establish ownership rights in a mark. To warrant protection, use of a mark “need not have gained wide public recognition,” but “[s]ecret, undisclosed internal shipments are generally inadequate.” Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th FN12 Cir.1975). In general, uses that are de minimis may not establish trademark ownership rights. See, e.g., Paramount Pictures Corp. v. White, 31 U.S.P.Q.2d 1768, 1772-73, 1994 WL 484936 (Trademark Tr. & App. Bd.1994) (finding no bona fide use in ordinary course of trade where mark was affixed to a game consisting of three pieces of paper and distributed for the purpose of promoting musical group). FN12. In Bonner v. City of Prichard, 661 F.2d 1206 (11th Cir.1981) (en banc), the Eleventh Circuit adopted as binding precedent all decisions handed down by the former Fifth Circuit prior to October 1, 1981. We find that, under these principles, Darrah's activities under the “Coolmail” mark constitute a “use in commerce” sufficiently public to create ownership rights in the mark. First, the distribution was widespread, and there is evidence that members of the targeted public actually associated the mark Coolmail with the Software to which it was affixed. Darrah made the software available not merely to a discrete or select group (such as friends and acquaintances, or at a trade show with limited attendance), but to numerous end-users via the Internet. The Software was posted under a filename bearing the “Coolmail” mark on a site accessible to anyone who had access to the Internet. End-users communicated with Darrah regarding the Software by referencing the “Coolmail” mark in their e-mails. Appellants argue that only technically-skilled UNIX-users made use of the Software, but there is no evidence that they were so few in *1197 number to warrant a finding of de minimis use. Third, the mark served to identify the source of the Software. The “Coolmail” mark appeared in the subject

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field and in the text of the announcement accompanying each release of the Software, thereby distinguishing the Software from other programs that might perform similar functions available on the Internet or sold in software FN13 compilations. The announcements also apparently indicated that Darrah was the “Author/Maintainer of Coolmail” and included his e-mail address. The user manual also indicated that the Software was named FN14 “Coolmail.” The German company S.u.S.E. was able to locate Darrah in order to request permission to use his Software in its product under the mark “Coolmail.” Appellants do not assert that S.u.S.E. was unaware that the Software was called “Coolmail” when it contacted Darrah. FN13. Darrah testified that “[m]ost of the source files ... have [the mark] in them. Also there's a copyright notice included with the software that has the name Coolmail. And the name of the executable file itself is Coolmail.” R2-47-Exh. 3 at 67. FN14. Darrah: The Coolmail name always comes with the documentation that comes with the software. *** Q: What documentation are you talking about? A: There's a user manual that comes with it. ***

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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 that the mark was in use in connection with Darrah's Software. In investigating whether the mark Coolmail existed before submitting its trademark registration application for its e-mail service, Planetary Motion was able to discover that Darrah was using the mark to designate his Software product. [7] Fifth, the Software was incorporated into several versions of a product that was in fact sold worldwide and specifically attributed ownership of the Software to Darrah under the “Coolmail” mark. Any individual using the S.u.S.E. product, or competitor of S.u.S.E., that wanted to know the source of the program that performed the e-mail notification function, could do so by referring to the user manual accompanying the FN15 product. There is no support for the argument that for a trademark in software to be valid, the mark must appear on the box containing the product incorporating it, that the mark must be displayed on the screen when the program is running, or that the software bearing the mark be a selling point for the product into which it is incorporated. There is no requirement that the public come to associate a mark with a product in any particular way or that the public be *1198 passive viewers of a mark for a sufficient public association to arise. FN15. The user manual for the S.u.S.E. Linux 4.3 product includes a list of application packages that contains the following attribution:

Q: Does it say “Coolmail” on page 1? coolmail “Cool” XBiff Clone A. Yes. Q: Where does it say “Coolmail” on page 1? A: At the top.

Shows if new mail has arrived. The main advantage of this program is that you can click into the window to fire up the mailer of your choice.

... and on the header of every page. Q: What does it say, exactly?

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Docu: man coolmail Copyright:

(c) 1994 Byron C. Darrah

Author:

Byron C. Darrah , Randall K. Sharpe

Version:

1.3

Supp. Exh. 1 at 14-72 and 42-110. [8] Sixth, software is commonly distributed without charge under a GNU General Public License. The sufficiency of use should be determined according to the customary practices of a particular industry. SeeS. Rep. 100-515 at 44 (1988) (“The committee intends that the revised definition of ‘use in commerce’ [see note 13, supra ] be interpreted to mean commercial use which is typical in a particular industry.”) (emphasis added). That the Software had been distributed pursuant to a GNU General Public License does not defeat trademark ownership, nor does this in any way compel a finding that Darrah abandoned his rights in trademark. Appellants misconstrue the function of a GNU General Public License. Software distributed pursuant to such a license is not necessarily ceded to the public domain and the licensor purports to retain ownership rights, which may FN16 or may not include rights to a mark. FN16. Because a GNU General Public License requires licensees who wish to copy, distribute, or modify the software to include a copyright notice, the license itself is evidence of Darrah's efforts 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 protection. Heinemann is factually distinguishable from the case at hand. The plaintiff in Heinemann used a mark in connection with his automobile before an automobile manufacturer independently had adopted the same name for a new model. The court held that the plaintiff had not established common law ownership rights based on two findings. First, the court found that because Heinemann's purpose in using the mark was to “open [at a

later date] an automobile equipment shop which would have capitalized upon the slogan,” he merely attempted to “reserve a trade or service mark pending the creation of a trade or business ....” 342 F.Supp. at 207. The court reasoned as follows: While the law does not require a nationwide business; an old, established business; or even a profitable business for the acquisition of property interests in trade or service marks, it does require a presently existing trade or business for such acquisition. The exhibits disclose that Plaintiff had only a desire to open a business in futuro. To hold otherwise would make a trade mark a property right in gross, instead of a right appurtenant. Id. (emphasis in original). The Heinemann court also found that plaintiff Heinemann's activities consisted merely of occasionally racing or displaying the automobile at fairs as a hobby, as evidenced by his testimony that he was employed at an oil company. Id. Here, Darrah did not attempt to “warehouse” the mark by promoting a product he merely intended to develop and distribute at a later date. Darrah's use of the mark to designate the distributed Software and each subsequent version thereof indicates that his use was not mere FN17 sporadic or token use. Furthermore,*1199 unlike Heinemann, Darrah activities pertained to his chosen profession. Darrah is employed as a computer systems administrator, which entails the management and oversight of computer networks and systems as well as the development of software in support thereof. FN17. Appellants contend that the district court erred in “ignoring” the first sentence of the present definition of “use in commerce” (“the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark”), which was added pursuant to the Trademark Law Revision Act of 1988

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(“Revision Act”), Pub.L. No. 100-667, 102 Stat. 3935 (1988). The court in Allard found that a magistrate judge's reliance on case law that antedated the revision was proper because the language of the revised definition is “entirely consistent with the traditional rules governing common-law ownership of trademarks.” 146 F.3d at 357. The Allard court noted that “the purpose of this revision ‘was to eliminate “token use” as a basis for registration, and that the stricter standard contemplates instead commercial use of the type common to the particular industry in question.’ ” Id. (citation omitted). The reason “token use” was expressly eliminated was that the Revision Act had created an “intent-to-use” application system that rendered such a “commercial sham” unnecessary. See134 Cong. Rec. 32,053 (Oct. 20, 1988) (Sen.DeConcini). The revision did not alter the meaning of the phrase “sold or transported in commerce” or in any way increase the quantum of use necessary to acquire trademark ownership as developed by common law. See id. (“Congress' intent that the revised definition still encompass genuine, but less traditional, trademark uses must be made clear. For example, such uses as clinical shipments of a new drug awaiting FDA approval, test marketing, or infrequent sales of large or expensive or seasonal products, reflect legitimate trademark uses in the normal course of trade and are not to be excluded by the House language.”). There is no evidence to support the contention that Darrah's purpose was merely to secure trademark rights to reserve the mark for future use. [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 individual and therefore unworthy of protection under un-

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fair competition laws. The DeCosta court did not hold that the that the absence of a profit-oriented enterprise renders one an eleemosynary individual, nor did it hold that such individuals categorically are denied protection. Rather, the DeCosta court expressed “misgivings” of extending common law unfair competition protection, clearly available to eleemosynary organizations, to FN18 eleemosynary individuals. Id. The court's reluctance to extend protection to eleemosynary individuals was based on an apparent difficulty in establishing a line of demarcation between those eleemosynary individuals engaged in commerce and those that are not. But as the sufficiency of use to establish trademark ownership is inherently fact-driven, the court need not have based its decision on such a consideration. Mendes, 190 F.2d at 418. Common law unfair competition protection extends to non-profit organizations because they nonetheless engage in competition with other FN19 organizations. See Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc., 683 F.Supp. 50 (S.D.N.Y.1988), aff'd, 859 F.2d 148 (2d Cir.). Thus, an eleemosynary individual that uses a mark in connection with a good or service may nonetheless acquire ownership rights in the mark if there is sufficient evidence of competitive activFN20 ity. FN18. It is unlikely that the plaintiff's activities in De Costa-costumed performances and distribution of his picture at local rodeos, parades, hospitals, etc.-would generate a “public association” sufficient to confer him common law trademark ownership rights. The court assumed arguendo, however, that the plaintiff's activities did warrant protection, and went on to find that the evidence did not support a finding of likelihood of confusion. FN19. The DeCosta court recognized that “the law of unfair competition ... protects ‘eleemosynary organizations (which) function in commerce and, in form, resemble business enterprises .... The happenstance that they are nonprofit-seeking ventures, and therefore removed, as such, from the rigors of business competition, neither eliminates the element of

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competition nor disentitles them to protection against the unfair competition of similar organizations.’ ” 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 inherent limitations: the existence of a trade, business, or profession where the “good will” to be protected has been subject to the acid test of the willingness of people to pay for goods or services; or, in the case of nonprofit institutions, the voluntary investment in time, effort, and money of many individuals to create and maintain a program of sufficient interest to consumers, members, and sponsors to warrant protection. 520 F.2d at 513. We find that such an “inherent limitation,” if it in fact exists, is inapplicable in this context. One individual can invest time, effort and money in developing software or other technologically-based goods or services that would be of interest to a multitude of users, other developers, and retail establishments. In fact, the program was of sufficient interest for S.u.S.E. to put effort into including it in its own software which was sold for profit, including the effort of obtaining Darrah's permission under the GNU General Public License. *1200 Here, Darrah's activities bear elements of competition, notwithstanding his lack of an immediate profit-motive. By developing and distributing software under a particular mark, and taking steps to avoid ceding the Software to the public domain, Darrah made efforts to retain ownership rights in his Software and to ensure that his Software would be distinguishable from other developers who may have distributed similar or related Software. R2-47-Exh. 3 at 67. Competitive activity need not be fueled solely by a desire for direct

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monetary gain. Darrah derived value from the distribution because he was able to improve his Software based on suggestions sent by end-users. Just as any other consumers, these end-users discriminate among and share information on available software. It is logical that as the Software improved, more end-users used his Software, thereby increasing Darrah's recognition in his profession and the likelihood that the Software would be improved even further. In light of the foregoing, the use of the mark in connection with the Software constitutes significant and substantial public exposure of a mark sufficient to have created 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 FN21 (“CoolMail”) ; (2) both marks are used in connection with e-mail services; (3) both plaintiff and defendants 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 these findings. Rather, Appellants claim the district court improperly based its analysis on a comparison of the parties' respective e-mail services, rather than on a comparison of Techsplosion's “CoolMail” e-mail service to the “Coolmail” Software. Appellants argue that the latter comparison is required *1201 because Planetary Motion acquired its rights to the “Coolmail” mark by assignment of rights in Darrah's Software, and under the “natural expansion” doctrine this is a use unrelated to Planetary Motion's current use of e-mail services. Thus, Appellants' argument in essence goes to whether the scope of trademark protection enjoyed by Planetary Motion extends from the initial use (in connection with the Software) to the current use (in connection with Planetary Motion's e-mail services). FN21. The Ninth Circuit in Brookfield Communications, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1055 (1999), explained that the do-

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main name “moviebuff.com” was virtually identical to “MovieBuff,” because “Web addresses are not caps-sensitive.” FN22. This Court considers the following seven factors in assessing whether or not a likelihood of consumer confusion exists: (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties' retail outlets (trade channels) and customers; (5) similarity of advertising media; (6) defendant's intent; and (7) actual confusion. See Lone Star, 122 F.3d at 1382. Of these, the type of mark and the evidence of actual confusion are the most important. See Dieter v. B&H Indus. 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). In this case, there is evidence that end-users subscribed to Techsplosion's e-mail service under the impression they were subscribing to Planetary Motion's service. See R2-46-Exh. 1-G. [11] 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; “[t]his appears to be no more than a specific application of the familiar ‘related goods' test.” J. McFN23 Carthy, § 24:20. See also Carnival, 187 F.3d at 1310-11. FN23. The theory of “natural expansion” as applied to determinations of the scope of protection “relates to a situation where the senior user of mark A on product line X expands use of mark A to product line Z and conflicts with an ‘intervening junior user’ who has already been using mark A on product line Z.” J. McCarthy, § 24:20. This differs from the “natural expansion” doctrine as applied to determining the geographical delimitation of common law

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trademark rights. See id. § 26:20; Tally-Ho, 889 F.2d at 1023, 1027-29. The “natural expansion” thesis seems to be nothing more than an unnecessarily complicated application of the likelihood of confusion of source or sponsorship test to a particular factual situation. If the intervening use was likely to cause confusion [with respect to the mark owner's previous use], it was an infringement and the senior user has the right to enjoin such use, whether it had in fact already expanded itself or not. J. McCarthy, § 24:20. The court in Tally-Ho explained that a senior user's rights “may extend into uses in ‘related’ product or service markets (termed the ‘related goods doctrine’),” and that “an owner of a common law trademark may use its mark on related products or services and may enjoin a junior 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. 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.” 187 F.3d at 1310-11 (citations and internal quotation marks omitted) (emphasis added). [12] 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 FN24 mark is affixed. Carnival, 187 F.3d at 1312. The

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court in Tally-Ho explained *1202 that “related use” is “merely a facet of the likelihood of confusion test and therefore requires an inquiry into [the] seven factors afFN25 fecting the likelihood of confusion ....” 889 F.2d at 1027. FN24. Techsplosion, the junior user in this case, first used the mark “CoolMail” in connection with its e-mail service in April 16, 1998, before Planetary motion filed its intent-to-use application. FN25. The court in Carnival explained the “source or sponsorship” inquiry in this context as follows: The likelihood-of-confusion test, when applied at this stage in order to determine priority where there are issues of related use, does not substitute for the likelihood-of-confusion test that controls whether infringement of the plaintiff's trademark is occurring or has occurred. These are two independent inquiries. Once priority in the use of a mark for a particular class of goods or services has been established, then it is necessary to perform the [liability stage] likelihood-of-confusion test, as of the current time and as between the plaintiff's current products (i.e., those that inherit the priority with respect to the previously used mark) and the allegedly infringing products of the defendant, to determine whether the plaintiff ultimately prevails in a trademark 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 of finding likelihood of confusion for the purposes of establishing liability, but may nonetheless serve as a guide for determining the scope of protection. [13] We find that the relatedness between e-mail notification software and a service that allows users to

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check e-mail via telephone line is not so attenuated that the district court mistakenly failed to limit Planetary Motion's rights in the mark to its use in connection with the Software. Consumers reasonably could attribute the Software and an e-mail service under the same name to FN26 the same source for several reasons. Both the Software and the e-mail service belong to the same general field of commerce, i.e., information technology, and FN27 both deal more specifically with e-mail. Appellants do not dispute Planetary Motion's contention that major firms in this field sell e-mail software as well as FN28 provide e-mail service. See Darrah Affidavit, R2-46-Exh. 2 at ¶ 34. Both the Software and the e-mail service involve sending messages over the Internet: the former provides a functionality that enables a user with e-mail capability to receive notification of new mail, and the latter enables subscribers to the service to send and receive e-mail. Both the Software and the e-mail service were promoted over the Internet to those who make use of e-mail. FN26. The extension of Planetary Motion's rights to the mark in connection with its e-mail service does not, as Appellants assert, hinge on whether Darrah intended to launch, or even was capable of launching, an e-mail service similar to those of the parties. For goods or services to be “related,” they need not have exactly the same customer base or be in direct competition with one another. FN27. Cf. Commerce Nat'l Ins. Servs., Inc. v. Commerce Insurance Agency, Inc., 214 F.3d 432, 438, 441-43 (3d Cir.2000). The court in Commerce Nat'l found clear error in the district court's “likelihood of confusion” analysis that had been based “primarily on the assumption that banking and insurance are similar industries in the minds of consumers and that consumers would expect banks to expand into the insurance industry,” where evidence of such perception consisted of an affidavit and an “unpersuasive report” and where state law limited banks from engaging in the general insurance industry. 214 F.3d at 441.

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FN28. See Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1174-75 (2d Cir.1976). The court in Scarves by Vera found a use of mark on cosmetics to infringe on use on apparel and household linens, even though plaintiff had no plans to enter the former market. The court reasoned that other fashion designers were commonly involved in both markets, such that customers would likely assume that defendant's use was a similar expansion by plaintiff. Furthermore, the equities do not necessarily favor TechFN29 splosion. Techsplosion's *1203 “CoolMail” e-mail service had not been in operation for an extended period of time before Planetary Motion entered the market under the name “Coolmail,” and Planetary Motion is not merely attempting to reserve the mark for a future business endeavor. Accordingly, we sustain the district court's finding of “likelihood of confusion.” FN29. See Rosenthal A.G. v. Ritelite, Ltd., 986 F.Supp. 133, 141 (E.D.N.Y.1997) (“[A]bsent equities in a defendant's favor, courts should enjoin defendants ‘from using a similar trademark whenever the non-competitive products are sufficiently related that customers are likely to confuse the source of origin.’ ”) (citation omitted). The court in Rosenthal, relying on “undisputed evidence and basic common sense,” found the two markets at issue to be sufficiently related and noted that the equities did not tip in the defendant's favor where the plaintiff had in fact entered the defendant's market. Id. (“[T]he interest at stake is more than plaintiff's interest in being able to enter a related 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. See Burger 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 at 1022.

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A. Injunctive Relief Appellants assert that the injunctive relief awarded by the district court is impermissibly vague and overbroad. Appellants contend that the language “imposes a grossly unfair burden on Techsplosion, as it does not allow for a determination of what is and is not permitted under the injunctive provisions.” Appellants' Brief at 40. Federal Rule of Civil Procedure 65(d) states in relevant part: “Every order granting an injunction ... shall be specific in terms [and] shall describe in reasonable detail ... the act or acts sought to be restrained ....” FN30 Fed.R.Civ.P. 65(d). A clear and unambiguous order is one that leaves “ ‘no uncertainty in the minds of those to whom it is addressed,’... who must be able to ascertain from the four corners of the order precisely what 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 specificity requirements of Rule 65(d): “to prevent uncertainty and confusion on the part of those faced with injunctive orders, ... to avoid the possible founding of a contempt citation on a decree too vague to be understood ... [and] for an appellate tribunal to know precisely what it is 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 to do or not to do. A court order should be phrased in terms of objective actions, not legal conclusions. An injunction which merely forbids a defendant from performing “acts of unfair competition,” or from “infringing on plaintiff's trademarks and trade secrets” adds nothing to what the law already requires. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 984-985 (11th Cir.1983) (quoting J. McCarthy, at § 30.13) (emphasis added). [14][15] Notwithstanding these strictures, appellate courts do not set aside injunctions under Rule 65(d)“unless they are so vague that they have no reas-

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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, appellate courts determine the propriety of an injunctive order by inquiring into whether the parties subject thereto understand their obligations under the order. Williams v. City of Dothan, 818 F.2d 755, 761 (11th Cir.1987) (citing Combs v. Ryan's Coal Co., 785 F.2d 970, 978-79 (11th Cir.), 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, the degree of particularity required depends on the nature of the 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 prevent further violations where a proclivity for unlawful conduct has been shown).

(11th Cir.1986) (“An injunction can be therapeutic as well as protective. In fashioning relief against a party who has transgressed the governing legal standards, a court of equity is free to proscribe activities that, standing alone, would have been unassailable.”) (citation omitted), cert. denied, 481 U.S. 1041, 107 S.Ct. 1983, 95 L.Ed.2d 822 (1987). Nor do Appellants explain how the *1205 wording of the injunction could lend itself to alternate interpretations. In the absence of any apparent contextual ambiguities or alternate readings prohibiting legal conduct, it is unlikely that Appellants will misapprehend what conduct is proscribed, or will incur liability to contempt citations for activities not contemplated by this order.

[16] Here, although several parts of the order are phrased in terms of legal conclusions, the order, read as a whole, clearly indicates what Techsplosion is forbidFN31 den from doing. According to the order, Techsplosion is permanently enjoined from using the name “Coolmail” in connection with “e-mail or other Internet-related services,” in connection with software, and as part of the domain name of its website. These limitations sufficiently define the scope of the injunction and give context to the arguably legally conclusory language included therein. Furthermore, the use of “any similar mark” after references to “Coolmail” does not detract from this level of specificity. See Planned Parenthood, 152 F.3d 920 (upholding preliminary injunction that prohibited defendant from using mark or “any colorable imitation of [that] mark” anywhere on the Internet and from taking actions “likely to cause confusion” among Internet users regarding Planned Parenthood's endorsement or sponsorship of defendant's site). Appellants do not propose any reading of the language in the injunction that would impermissibly prohibit conduct that Techsplosion arguably has the right to do. Cf. B.H. Bunn Co. v. AAA Replacement Parts Co., 451 F.2d 1254, 1269 (5th Cir.1971) (finding injunction impermissible where broad reference to opinion's findings of fact “[appeared to] enjoin perfectly legal acts”). But see AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1547-48

[Techsplosion is] permanently enjoined from (a) Using the name “Coolmail,” or any similar mark, in connection with the offer, promotion, distribution, sale, advertisement or provision of services relating to e-mail or other Internet-related services; (b) Using the name “Coolmail,” or any similar mark, in connection with the offer, promotion, distribution, sale, advertisement or provision of software; (c) Using Coolmail.com as the domain name of their website; (d) Using any logo, trade name, trademark or servicemark which may be calculated to represent falsely that the services or products of defendants are affiliated, connected, or associated with Planetary Motion; (e) Using any logo, trade name or servicemark which may be calculated to falsely represent that the services or products of defendants are sponsored by, authorized by, approved by, or originate from Planetary Motion; (f) Using the name “Coolmail” in any fashion that would damage the business reputation of Planetary Motion, or any of its successors, assigns, affiliates, subsidiaries, or parents, or that would dilute the value of the “Coolmail” mark; (g) Otherwise infringing on the “Coolmail” mark; (h) Unfairly com-

FN31. The injunction reads, in relevant part as follows:

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peting with Planetary Motion; and Aiding, abetting or assisting any other person or entity in engaging in or performing any activities stated in paragraphs (a) through (h) above.

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FN33 award. Furthermore, there is nothing in the record to support a finding of “malicious, fraudulent, deliberate, or willful” conduct on the part of Planetary motion. Remand is therefore unnecessary on this issue. Accordingly, we find that the award of attorney fees is an abuse of discretion and vacate the award.

R2-63. Sections (g) and (h) are conclusory catch-all provisions. Although sections (d) through (f) use legal terminology, they are linked to Planetary Motion and its rights in the “Coolmail” mark such that Techsplosion likely will not violate the injunction if it completely ceases the use of “Coolmail” in connection with e-mail services or markets related thereto.

FN33. Planetary Motion asserts that Techsplosion learned in early 1999 of its use of the “Coolmail” mark, and that “Planetary Motion possessed senior rights in the Coolmail mark.” Since Techsplosion reasonably could have assumed that Planetary Motion lacked priority in the mark, such knowledge in this case does not invariably give rise to a finding of deliberate or malicious infringement.

B. Attorney Fees

C. Award of Costs

[17] Awards of attorney fees are reviewable only to determine if the trial court abused its discretion in grantFN32 ing or denying them. 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 Section 35(a) of the Lanham Act, however, courts may award reasonable attorney fees to the prevailing party “in exceptional cases.” 15 U.S.C. § 1117(a). See also Montgomery, 168 F.3d at 1304. Exceptional cases are those where the infringing party acts in a “malicious, fraudulent, deliberate, or willful manner.” Burger King Corp. v. Pilgrim's Pride Corp., 15 F.3d 166, 168 (11th Cir.1994) (quoting S.R. Rep. 93-1400 (1974), reprinted in 1974 U.S.C.C.A.N. 7132, 7133) (internal quotation marks omitted).

Under the Lanham Act, a successful party “subject to the principles of equity” may recover: “(1) defendant's [the infringer's] profits; (2) any damages sustained by the plaintiff, and (3) the costs of the action.” 15 U.S.C. § 1117(a). See Babbit Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161, 1182 (11th Cir.1994). To recover costs under the Lanham Act, therefore, a plaintiff need not establish that the alleged infringer acted maliciously, fraudulently, deliberately, or willfully. Because it was within the district court's discretion to award costs, and in the absence of any evidence that would warrant a finding that the balance of equities necessarily tipped in favor of Techsplosion, we uphold the award of costs to Planetary Motion.

FN32. As Techsplosion timely filed an appeal from the order fixing the amount of attorney fees and costs, and we may reach the issue. See Budinich 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 fees without articulating a basis for doing so, let alone the factual circumstances that would warrant such an

Conclusion Accordingly, the district court's order and final judgment are AFFIRMED, except that the order adopting the magistrate judge's report and recommendation, with respect 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.2d 1894, 14 Fla. L. Weekly Fed. C 1159

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END OF DOCUMENT

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jury to nonmovant; and that injunction would not disserve public interest. United States Court of Appeals, Eleventh Circuit. 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 registered its “You and the Law” mark under Florida's trademark law, brought trademark infringement and unfair competition action against community college district, which used the “You and the Law” mark for educational telecourses. The United States District Court for the Southern District of Florida, No. 88-501-CIV-SMA, Sidney M. Aronovitz, J., denied preliminary injunctive relief. Producer/distributor appealed. The Court of Appeals, held that district's common-law trademark rights in the educational community college market did not extend into county cable television market. Reversed and remanded. West Headnotes [1] Injunction 212

147

212 Injunction 212IV Preliminary and Interlocutory Injunctions 212IV(A) Grounds and Proceedings to Procure 212IV(A)4 Proceedings 212k147 k. Evidence and Affidavits. Most Cited Cases To prevail on motion for preliminary injunction, movant has burden of proving substantial likelihood of success on the merits, substantial threat of irreparable injury, that its own injury outweighs in-

[2] Federal Courts 170B

754.1

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk754 Review Dependent on Whether Questions Are of Law or of Fact 170Bk754.1 k. In General. Most Cited Cases (Formerly 170Bk754) Federal Courts 170B

815

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)4 Discretion of Lower Court 170Bk814 Injunction 170Bk815 k. Preliminary Injunction; Temporary Restraining Order. Most Cited Cases District court's denial of preliminary injunction is reviewed to determine whether district court abused its discretion; however, if district court misapplied law, the Court of Appeals must review and correct error without deference to district court's determination of the legal issue. [3] Federal Courts 170B

850.1

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)5 Questions of Fact, Verdicts and Findings 170Bk850 Clearly Erroneous Findings of Court or Jury in General 170Bk850.1 k. In General. Most Cited Cases (Formerly 170Bk850) Factual findings will be reversed only if clearly er-

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roneous. [4] Trademarks 382T

1136(1)

382T Trademarks 382TIV Creation and Priority of Rights 382Tk1132 Use of Mark 382Tk1136 Nature and Extent of Use 382Tk1136(1) k. In General. Most Cited Cases (Formerly 382k65 Trade Regulation) Trademarks 382T

1156

382T Trademarks 382TV Duration and Termination of Rights 382Tk1155 Extent of Use; Discontinuance and Non-Use 382Tk1156 k. In General. Most Cited Cases (Formerly 382k65 Trade Regulation) Under common law, trademark rights are appropriated only through actual prior use in commerce; trademark ownership is always appurtenant to commercial activity, and actual and continuous use is required to acquire and retain protectible interest in mark. [5] Trademarks 382T

1153

382T Trademarks 382TV Duration and Termination of Rights 382Tk1153 k. Abandonment in General. Most Cited Cases (Formerly 382k68 Trade Regulation) Trademarks 382T

1156

382T Trademarks 382TV Duration and Termination of Rights 382Tk1155 Extent of Use; Discontinuance and Non-Use 382Tk1156 k. In General. Most Cited Cases (Formerly 382k71 Trade Regulation) Trademarks 382T

1208

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382T Trademarks 382TVI Nature, Extent, and Disposition of Rights 382Tk1202 Licenses 382Tk1208 k. Control Over Use or Quality; “Naked” Licenses. Most Cited Cases (Formerly 382k73 Trade Regulation) Rights in trademark can be lost through abandonment, nonuse, or naked license without control over product quality. [6] 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 382k66.1, 382k66 Trade Regulation) First to use mark on product or service in particular geographic market, the senior user, acquires rights in the mark in that market; junior users, who subsequently use same or similar mark on similar products or services, may also establish commonlaw rights to perhaps even the same mark provided there is no competitive overlap with the senior user, but the senior user may enjoin uses that infringe upon its prior rights. [7] 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 382k67 Trade Regulation) Owner of common-law trademark may use its mark on related products or services and may enjoin junior user's use of mark on such related uses; “related goods” doctrine gives trademark owner protection against the use of its mark on any product or ser-

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vice 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. [8] 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 382k67 Trade Regulation) Senior user's rights are geographically limited to only those territories in which it actually uses its mark or into which it might naturally expand (the “zone of natural expansion”). [9] Trademarks 382T

1259

382T Trademarks 382TVII Registration 382TVII(A) In General 382Tk1256 State Registration 382Tk1259 k. Effect. Most Cited Cases (Formerly 382k262, 382k255 Trade Regulation) Mark registered under the Florida Trademark Act has prima facie validity but is subject to another's bona fide use of the same or similar mark under common law. West's F.S.A. §§ 495.011-495.171. [10] Trademarks 382T

1603

382T Trademarks 382TIX Actions and Proceedings 382TIX(C) Evidence 382Tk1601 Presumptions and Burden of Proof 382Tk1603 k. Infringement in General. Most Cited Cases (Formerly 382k574 Trade Regulation) Trademarks 382T

1607

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382T Trademarks 382TIX Actions and Proceedings 382TIX(C) Evidence 382Tk1601 Presumptions and Burden of Proof 382Tk1607 k. Creation and Priority of Rights. Most Cited Cases (Formerly 382k574 Trade Regulation) Trademarks 382T

1612

382T Trademarks 382TIX Actions and Proceedings 382TIX(C) Evidence 382Tk1601 Presumptions and Burden of Proof 382Tk1612 k. Defenses, Excuses, and Justifications. Most Cited Cases (Formerly 382k574 Trade Regulation) In infringement action, plaintiff must initially demonstrate right to trademark and actual geographic and product competition with alleged infringer; defendant must then establish some defense to defeat plaintiff's infringement claim. West's F.S.A. §§ 495.011-495.171. [11] Trademarks 382T

1527

382T Trademarks 382TVIII Violations of Rights 382TVIII(D) Defenses, Excuses, and Justifications 382Tk1521 Justified or Permissible Uses 382Tk1527 k. Other Particular Uses. Most Cited Cases (Formerly 382k574 Trade Regulation) In establishing prior use defense to trademark infringement claim, defendant must prove that its competing use of contested mark predates competitor's use. West's F.S.A. §§ 495.011-495.171. [12] Trademarks 382T

1421

382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General

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382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases (Formerly 382k332 Trade Regulation) Elements of common-law and statutory trademark infringement under Florida law are the same. West's F.S.A. §§ 495.011-495.171.

“Related use,” for trademark protection purposes, is merely facet of the likelihood of confusion test and requires inquiry into seven factors affecting the likelihood of confusion among consumers: type of trademark, similarity of the two marks, similarity of services, identity of customers and facilities, similarity of advertising, intent of alleged infringer, and actual confusion.

[13] Trademarks 382T

[15] Trademarks 382T

1101

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1100 Relationship Between Goods or Services Underlying Marks 382Tk1101 k. In General. Most Cited Cases (Formerly 382k363.1, 382k363 Trade Regulation) “Related goods,” for trademark protection purposes, are those that a consumer is likely to believe come from the same source and are somehow connected with common company. [14] Trademarks 382T

1081

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 k. Factors Considered in General. Most Cited Cases (Formerly 382k363.1, 382k363 Trade Regulation) Trademarks 382T

1108

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1107 Nature and Circumstances of Use of Marks 382Tk1108 k. In General. Most Cited Cases (Formerly 382k363.1, 382k363 Trade Regulation)

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 382k363.1, 382k367, 382k363 Trade Regulation) Related use doctrine expands trademark protections to uses in related product and service markets but does not expand trademark protections to geographically remote markets; thus, finding of related use is not finding of state-wide trademark protection, but rather, related use doctrine expands trademark protections to related product or service markets in existing geographic markets. [16] 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 382k367 Trade Regulation) Territorial extent of trademark protection is limited to those geographic areas in which mark is actually used in commerce and zone of reasonable future expansion. [17] Trademarks 382T

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1137(1)

889 F.2d 1018 889 F.2d 1018, 58 USLW 2392, 13 U.S.P.Q.2d 1133 (Cite as: 889 F.2d 1018)

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 382k367 Trade Regulation) Zone of natural expansion, for trademark protection purposes, does not necessarily include all areas where senior user has in fact expanded because such uses may infringe upon junior users' bona fide trade areas; instead, junior users whose uses are in good faith and “remote” are protected, and extent of zone is generally considered as of date of junior user's first use. [18] 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 382k350.1, 382k350 Trade Regulation) Trademarks 382T

1137(2)

382T Trademarks 382TIV Creation and Priority of Rights 382Tk1132 Use of Mark 382Tk1137 Scope and Priority of Use; Multiple Users, Markets, or Territories 382Tk1137(2) k. Particular Cases. Most Cited Cases (Formerly 382k350.1, 382k350 Trade Regulation) Community college district, which began using the “You and the Law” mark in connection with educational telecourses in October of 1983 but which did not register its mark, infringed on trademark rights of television program producer/distributor, which registered its “You and the Law” mark in December

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of 1985 and which used its mark for television program, by injecting its “educational” programming series into the county in which the producer/distributor had statutory and common-law trademark protection; district's common-law trademark rights in the educational community college market did not extend into the county cable television market. West's F.S.A. §§ 495.011-495.171. Trademarks 382T

1800

382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases (Formerly 382k736 Trade Regulation) You and the Law. *1020 Bret Shawn Clark, Miami Shores, Fla., for plaintiff-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 defendantcounter-plaintiff-appellee. Appeal from the United States District Court for the Southern District of Florida. Before CLARK and COX, Circuit Judges, and HENDERSON, Senior Circuit Judge. PER CURIAM: Appellant Tally-Ho, Inc. appeals an order denying it preliminary injunctive relief on its complaint of trademark infringement and unfair competition against Coast Community College District under the Lanham Act, 15 U.S.C.A. § 1051 et seq. (1976), and FLA.STAT.ANN. § 495.011 et seq. (West 1988). Because the district court misapplied the law when it denied Tally-Ho's motion for a preliminary injunction we exercise our broad powers of review, see E. Remy Martin & Co. v. Shaw-Ross Int'l Im-

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ports, Inc., 756 F.2d 1525, 1529 (11th Cir.1985), and reverse and remand. I. BACKGROUND A. Facts Tally-Ho, Inc. (Tally-Ho) produces and distributes a program entitled “You and the Law” that has been broadcast in South *1021 Florida since 1984 on a public television station, WLRN, and on a cable television system. The program is hosted by a moderator who discusses with guests topics of current interest in the law. Tally-Ho registered its “You and the Law” trademark with the State of Florida on December 20, 1985, and its certificate indicates the mark was first used in January, 1984. Coast Community College District (Coast) is one of the nation's largest producers and distributors of educational telecourses. It distributes “You and the Law,” a series of twenty-six videotaped lectures and discussions concerning various legal issues and FN1 concepts. Coast produced and copyrighted this series in 1980 and 1981. Coast, however, has not registered the “You and the Law” trademark under state or federal trademark statutes. Following negotiations, in February 1984, the State of Florida and Coast entered a licensing contract which gave the state the right to use, broadcast and distribute Coast's video lecture series. The license also permitted the state to duplicate and distribute the series by any means. The state included the series in a list of video courses available to community colleges. The video series was first shown during the first week of January 1984. Use of the telecourse was very limited. The video series was shown only at Daytona Beach Community College, Valencia Community College and Florida Keys Community College. None of these uses were in the same viewer market in which Tally-Ho's programming was shown. FN1. This is a trademark case and whether and when Coast registered its copyright is

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legally irrelevant for trademark purposes. Tally-Ho became aware of Coast's video series when a local community access cable channel, MDTV, advertised that it was going to present the Coast “You and the Law” series in upcoming broadcasts. MDTV acquired the Coast series from the state after learning about it from WLRN. Coast had not previously broadcast its courses over any television systems anywhere in Florida. B. District Court Proceedings In March 1988, Tally-Ho filed a two-count complaint for declaratory and permanent injunctive relief and for damages under federal and state tradeFN2 mark and unfair competition laws. On June 1, 1988, Coast answered and filed a four-count counterclaim. Coast also sought declaratory and permanent injunctive relief and damages for Tally-Ho's alleged violation of federal and state unfair competiFN3 tion laws. In June 1988, Tally-Ho filed a motion seeking preliminary injunctive relief to prevent Coast from broadcasting its course to the general public. FN2. Count I alleges service mark infringement under the Lanham Act, 15 U.S.C. § 1051, et seq., and FLA.STAT.ANN. § 495.131 (West 1988) (infringement). Count II alleges unfair competition in violation of federal and state law. The Lanham Act infringement claim has no merit. Tally-Ho has not registered its trademark under 15 U.S.C.A. §§ 1051-72, and consequently is not entitled to relief under 15 U.S.C.A. § 1114. FN3. Counts I and II allege unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and the common law, respectively. Count III seeks a declaration that Tally-Ho's state registration is invalid. Count IV alleges violation of Florida's an-

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tidilution statute, FLA.STAT. § 495.151 (1988). Following an evidentiary hearing, the district court issued an order denying Tally-Ho's motion for a preliminary injunction. The court held that Coast FN4 was the first to “use” the mark in Florida based on an October 4, 1983, internal Florida Department of Education memorandum indicating approval for a proposed contract with Coast. The district court rejected Tally-Ho's argument that Coast relinquished its right by granting to the Department of Education a “naked license” to use the mark. The court also rejected Tally-Ho's arguments that Coast's prior use was in a substantially different geographic market than the market occupied by Tally-Ho, and that Coast could not support its claim of *1022 superior right because it could not show that its “You and the Law” telecourse was in direct competition with Tally-Ho's program. The court specifically held that Coast's “prior” educational use of the mark gives it the right to use the mark in the “related” broadcast market and that Tally-Ho was not entitled to a preliminary injunction because “the court does not find [Tally-Ho] to have a subFN5 stantial likelihood of success on the merits.” FN4. FLA.STAT.ANN. § 495.011(11) states that “a service mark shall be deemed to be ‘used’ in this state when it is used or displayed in the sale or advertising of services in this state or in connection with services rendered in this state.” FLA.STAT.ANN. § 495.011(11) (West 1988). FN5. The district court's opinion also concludes summarily that Tally-Ho has not demonstrated entitlement to the issuance of a preliminary injunction because it could not meet the other prerequisites for injunctive relief-namely, a likelihood of irreparable injury, a balance of harms weighing in favor of Tally-Ho, and absence of disservice to the public interest.

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Tally-Ho filed a notice of appeal and moved for a preliminary injunction pending appeal. The district court granted the motion in part and enjoined Coast's broadcast of its program for twenty days. After this court denied Tally-Ho's motion to extend the injunction, Coast and the Dade County Attorney informed Tally-Ho that the broadcast of the telecourse would begin on July 25, 1988. Tally-Ho filed a motion for reconsideration to this court for an injunction pending appeal, which was denied. II. DISCUSSION [1] The sole issue on appeal is whether the district court erred in denying Tally-Ho's motion for a preliminary injunction. To prevail on its motion for a preliminary injunction, Tally-Ho has the burden of proving: (1) a substantial likelihood of success on the merits; (2) a substantial threat of irreparable injury; (3) its own injury outweighs the injury to Coast; and (4) the injunction would not disserve the public interest. Canal Authority of the State of Florida v. Callaway, 489 F.2d 567, 572 (5th Cir.1974). The district court held that Tally-Ho failed to meet its burden on each of these elements. [2][3] We review the district court's denial of a preliminary injunction to determine whether that court abused its discretion. Remy Martin, 756 F.2d at 1529. However, if the trial court has misapplied the law, we must review and correct the error without deference to that court's determination of the legal issue. Id. Factual findings will be reversed only if clearly erroneous. Id. Our review of the district court opinion reveals two errors of law. First, the district court erred when it determined that Coast was not required to show actual competition with Tally-Ho in order to successfully assert a prior use defense. Second, the district court ignored the geographic component of trademark protection that gives Coast priority only in limited geographic and product markets in which it did not compete with Tally-Ho. At the outset, it is important to note that neither

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Tally-Ho nor Coast has registered the “You and the Law” trademark under the federal registration system. Tally-Ho has registered its mark under the Florida statute while Coast has not filed on any registry. Thus, neither party can claim nationwide protection under the federal statute. Instead, Coast has only common law trademark protection while Tally-Ho has common law trademark protections in addition to those provided under the Florida statute. As discussed below, because the Florida statute provides little additional protection beyond that provided at common law, this action is almost exclusively governed by common law trademark principles. A. Common Law Trademark Principles [4][5] Because of the importance of common law trademark principles under Florida's statutory system, we first identify the basic concepts necessary to determine the extent of Coast's common law trademark rights. Under the common law, trademark rights are appropriated only through actual prior 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 appurtenant to commercial activity. Thus, actual and FN6 continuous use is required*1023 to acquire and retain a protectible interest in a mark. FN6. Rights in a mark can be lost through abandonment, non-use, or a naked license without control over product quality. In fact, as an alternative ground for relief Tally-Ho contends that even if Coast has superior rights to the “You and the Law” mark, it forfeited its rights by granting a “naked license” to the Department of Education. We believe the district court correctly rejected this argument. [6] Ownership of a distinctive mark is further limited by priority of use. The first to use a mark on a product or service in a particular geographic mar-

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ket, the senior user, acquires rights in the mark in that market. Junior Food Stores of W. Fla. v. Junior Food Stores, Inc., 226 So.2d 393, 396 (Fla.1969). Junior users, who subsequently use the same or similar mark on similar products or services, may also establish common law rights to perhaps even the same mark provided there is no competitive overlap with the senior user. Id. at 398. The senior user, however, may enjoin such uses that infringe upon its prior rights. The extent of the senior user's rights in the mark are also governed by a few additional 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 law trademark may use its mark on related products or services and may enjoin a junior user's use of the mark on such related uses. The doctrine “gives the trademark owner protection against the 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.” Id. at 166. In this case, the district court concluded that Coast's use of its telecourse in the cable broadcast market is “related” to use in the community college educational telecourse market. [8] A senior user's rights also are geographically limited to only those territories in which it actually uses its mark or into which it might naturally expand (the “zone of natural expansion”). For instance, if a senior user cannot prove that it directly competes in a geographic market with a junior user, it can still demonstrate that the junior user is operating in a market into which the senior user should be allowed to expand at a later time. B. Florida's Trademark Act [9] Tally-Ho's preliminary injunction is based, in part, on Coast's alleged violation of Florida's Trademark Act which provides for state trademark regis-

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FN7 tration. In Florida, registration under the trademark statute is “prima facie evidence of the validity of the registration, registrant's ownership of the mark, and of registrant's exclusive right to use the mark in this state in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein.” FN8 FLA.STAT.ANN. § 495.061(2) (West 1988); Abner's Beef House Corp. v. Abner's Int'l, Inc., 227 So.2d 865, 866 (Fla.1969). The Florida Trademark Act however explicitly preserves common law rights in marks acquired in good faith. FLA.STAT.ANN. § 495.161 (West 1988) (“Nothing herein shall adversely affect or diminish the rights or the enforcement of rights in marks acquired in good faith at any time at common law.”). Thus, a registered mark has prima facie validity but is subject to another's bona fide use of the same or similar mark under the common law. The statute therefore does not abrogate the common law rights of owners of marks. Instead, a registrant's rights are limited by *1024 the bona fide rights of common law users. In this action, Tally-Ho's registration is prima facie evidence of its right to use the “You and the Law” trademark in Florida subject only to Coast's common law rights. FN7. FLA.STAT.ANN. §§ 495.011-.171 (West 1988). FN8. Subsection (2) provides: Any certificate of registration issued by the department of state under the provisions hereof or a copy thereof duly certified by the department of state shall be admissible in evidence as competent and sufficient proof of the registration of such mark in any action of judicial proceedings in any court of this state, and shall be prima facie evidence of the validity of the registration, registrant's ownership of the mark, and the registrant's exclusive right to use the mark in this state in connection with the goods or services specified in the certificate, sub-

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ject to any conditions and limitations stated therein. The Act permits a registrant to sue for infringement under FLA.STAT.ANN. § 495.131 (West 1988) FN9 and pursue remedies under FLA.STAT.ANN. § 495.141 (West 1988). Common law owners of unregistered marks are limited to common law remedies in infringement actions. The Florida statute also permits an “antidilution” claim under section FN10 495.151. This provision permits any trademark owner, whether registered or unregistered, to prohibit either a non-competitor's or competitor's use of a similar mark if there is a likelihood of injury to business reputation or dilution of the mark's distinctive quality. The antidilution statute's purpose is to prevent the weakening of a distinctive trademark. FN9. This section, entitled “Infringement,” provides: Subject to the provisions of § 495.161, any person who shall: (1) Use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under this chapter on any goods or in connection with the sale, offering for sale, distribution or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or (2) Reproduce, counterfeit, copy or colorably imitate any such mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in conjunction with the sale, offering for sale, distribution or advertising in this state of goods or services;

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Shall be liable in a civil action by the owner of such registered mark for any or all of the remedies provided in § 495.141, except that under subsection (2) hereof the registrant is not entitled to recover profits or damages unless the acts have been committed with knowledge that such mark was intended to be used to cause confusion or mistake or to deceive. FN10. This section, entitled “Injury to business reputation; dilution,” provides: Every person, association, or union of workingmen adopting and using a mark, trade name, label or form of advertisement may proceed by suit, and all courts having jurisdiction thereof shall grant injunctions, to enjoin subsequent use by another of the same or similar mark, trade name, label or form of advertisement if it appears to the court that there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the mark, trade name, label or form of advertisement of the prior user, notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services. FLA.STAT.ANN. 1988).

§

495.151

(West

It is critical to note the distinction between a trademark infringement action and a trademark dilution action. At common law, a trademark was intended to differentiate between different sources of competing goods. Thus, an infringement action is based on the likelihood of consumer confusion between suppliers of competing goods in the same geographic locale. In contrast, a dilution action is based on the concept that a strong trademark has value beyond its ability to distinguish a good or service's source. A strong, distinctive trademark may

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become a symbol of consumer loyalty and goodwill rather than merely an indicator of supplier identity. A dilution action protects the owners of such strong, distinctive marks from the diminution of consumer goodwill by competitors or nonFN11 competitors. Thus, dilution analysis is fundamentally different from infringement analysis; the former focuses on the dilution of a mark's distinctive quality while the latter focuses on the likelihood of consumer confusion. In addition, a dilution action eliminates the requirement of competition; an infringement action does not. FN11. “The underlying rationale of the dilution doctrine is that the gradual diminution or whittling away of the value of a trademark, resulting from use by another, constitutes an invasion of the senior user's property right and good will in his mark and 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 dilution theory to support its conclusion that Coast did not have to demonstrate competition in order to establish a prior use defense. In an infringement action, the *1025 plaintiff must initially demonstrate the right to a trademark and actual geographic and product competition with the alleged infringer. The defendant must then establish some defense, in this case priority of usage, to defeat the plaintiff's infringement claim. In establishing prior use, the defendant has essentially the same burden as the plaintiff: to prove that its competing use of the contested mark pre-dates the competitor's use. In other words, a defendant's prior use defense also requires a showing of competition. The district court erred in failing to distinguish between an infringement action and a dilution action. The district court relied upon and misinterpreted a passage from Abner's Beef House Corp. v. Abner's Int'l, Inc., 227 So.2d 865 (Fla.1969). In

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full, this passage states: F.S., Section 495.151, F.S.A., does, however, obviate the necessity in an injunction suit to enjoin a subsequent use of a similar mark that plaintiff show there is competition between the parties or a confusion as to the source of goods and services, which showing was a requisite under the common law. See El Modello Cigar Manufacturing 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 was discussing Florida's antidilution statute, section 495.151, which by its plain language eliminates the requirement of competition in a dilution FN12 action. The court clearly was not discussing either state statutory or common law trademark infringement actions. In fact, the passage makes apparent that the common law requires a showing of competition between the parties in an infringement FN13 action. Similarly, in American Bank v. First American Bank & Trust, 455 So.2d 443 (Fla. 5th Dist.Ct.App.1984), the court stated: FN12. See also Tio Pepe, Inc. v. El Tio Pepe de Miami Restaurant, Inc., 523 So.2d 1158, 1160 (Fla.3d Dist.Ct.App.1988) (“Under the statute, the common law requirement of establishing competition between the parties or confusion as to the source of the services has been eliminated ... thus the need to inquire into the territorial scope of the business to determine whether competition or confusion is present has also been dispensed with.”) (citations omitted). FN13. At common law, trademark law had no role absent competition. Unless two or more owners of similar marks competed within the same geographic market or between similar goods or services, no possibility of consumer confusion existed. Thus, there was no need for trademark protection.

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Because one's goodwill or reputation may be harmed by another's use of a tradename similar to that of the first, it is often stated that under most of the more recent cases actual or direct competition is no longer essential to injunctive relief from infringement of a tradename, trademark or unfair competition. However, actual or intended competition appears to be essential to potential customer confusion, when the issue is the sameness or similarity in kind of the services or goods involved (substantive scope of protection) and when the issue is the territorial scope of tradename (or mark) protection. Id. at 446 n. 4 (citations omitted). As the American Bank court holds, the common law requirement of demonstrating actual or intended competition is still a requisite in a trademark infringement action. The proper interpretation of the Florida Trademark Act and Florida case law leads to the conclusion that a defendant in a trademark infringement action based on common law principles shoulders the same burden as the plaintiff in establishing priority of use in defending against an infringement claim. This burden includes a showing that the prior use is also a competing use. The district court's conclusion to the contrary provides defendants in infringement actions with greater protections than those provided at common law. The Florida Trademark Statute is emphatic in preserving common law trademark rights, and there is no indication that such rights were to be preserved only in the acquisition of trademarks and not in their defense. D. Infringement [12] The elements of common law and statutory FN14 trademark infringement are the *1026 same. A cause of action for injunctive relief on the common law of unfair competition based on tradename or trademark infringement requires the following elements to be alleged and proved: FN14. Tally-Ho has also set forth a claim for unfair competition. The district court

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recognized that an unfair competition claim based only upon alleged trademark infringement is practically identical to an infringement claim. See Freedom Savings and Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir.1985). Because we conclude that Tally-Ho is entitled to a preliminary injunction on its trademark infringement claim, we need not address whether it is entitled to injunctive relief on the unfair competition claim. (1) The plaintiff first adopted and used a certain name (or mark or symbol or logo or design) in a certain market or trade area, as a means of establishing good will and reputation and to describe, identify or denominate particular services rendered or offered by it (or goods made or sold by it) and to distinguish them from similar services rendered or offered (or similar goods marketed) by others, and (2) through its association with such services or goods the plaintiff's tradename (or mark, etc.) has acquired a special significance as the name of the services rendered (or goods marketed) by the plaintiff in its trade area because plaintiff's tradename (or mark, etc.) (a) is inherently distinctive (fanciful, novel or arbitrary), or (b) while generic, descriptive, or geographic, plaintiff's tradename (or mark, etc.) has, by actual usage, acquired in a certain trade area, a secondary, special or trade meaning as indicating, describing, identifying or denominating the plaintiff as the source of certain services (or goods), and (3) the defendant has commenced, or intends to commence, the use of an identical or confusingly similar tradename (or mark, etc.) to indicate or identify similar services rendered (or similar goods marketed) by it in competition with plaintiff in the same trade areas in which the

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plaintiff has already established its tradename (or mark, etc.) and (4) as a consequence of the defendant's action, or threatened action, customer confusion of source or as to the sponsorship of the services (or goods) offered, or to be offered, by the defendant is probable (likely) or inevitable. American Bank, 455 So.2d at 445-46. The requirements for the issuance of a preliminary injunction require that Tally-Ho demonstrate a substantial likelihood of success on the merits of its infringement claim. It therefore must establish each of these four elements. Neither party disputes that Coast's broadcast of its “You and the Law” telecourse will inevitably cause consumer confusion in the Dade County cable broadcast marketplace. Nor do the parties claim that the “You and the Law” mark is not protectible (i.e. generic, descriptive, or geographic). The central dispute is whether TallyHo or Coast has priority of use of the “You and the Law” mark in this particular market. The evidence compels the conclusion that Tally-Ho has priority. The record demonstrates that Coast was the first to use the “You and the Law” trademark. However, Tally-Ho correctly asserts that Coast never used the trademark in the Dade County cable broadcast market where Tally-Ho had been broadcasting its “You and the Law” series for four years. The district court agreed with Coast that an internal Department of Education memorandum dated October 1983 provides a sufficient basis for granting Coast a statewide monopoly on the “You and the Law” trademark in both the educational community college and cable broadcast markets. The record and the case law, however, establish that, at most, Coast has common law trademark protection in very limited geographic markets and that its expansion into the Dade County market infringes on Tally-Ho's protected trademark rights. The district court relies upon the related use doctrine to expand Coast's limited common law rights

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in the community college telecourse market to the cable broadcast market. Without discussion the district *1027 court further expands Coast's common law rights to encompass the entire state of Florida through the zone of natural expansion doctrine. This holding is contrary to the principle that actual use is necessary to establish common law trademark rights. The next two sections of this opinion therefore describe the related use doctrine and the doctrine of natural expansion, and analyze the district court's reasoning. 1. Related Use [13][14] The district court found that Coast's expansion into the broadcast market is “related to” the use of video courses in the educational telecourse market. Related goods are those that a consumer is likely to believe come from the same source and are somehow connected with a common company. “Related use” is merely a facet of the likelihood of confusion test and therefore requires an inquiry into seven factors affecting the likelihood of confusion among consumers: (1) type of trademark; (2) similarity of the two marks; (3) similarity of services; (4) identity of customers and facilities; (5) similarity of advertising; (6) intent of the alleged infringer; and (7) actual confusion. See Freedom Savings and Loan Ass'n v. Way, 757 F.2d 1176, 1182 (11th Cir.1985). Tally-Ho claims that the cable broadcast market is not a related use because the cable broadcast market is a separate and distinct market from the educational telecourse market and that these markets are composed of distinct customers-that is, students versus the general viewing public. Tally-Ho further argues that it advertises its “You and the Law” program differently than Coast advertises its telecourse. Tally-Ho also asserts that it had no intent to invade Coast's telecourse markets when it began its cable broadcasts and finally that there was no actual confusion prior to Coast's entry into the broadcasting market. Thus, Tally-Ho argues that almost all of these factors favors its position that Coast's expan-

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sion into the broadcasting market is not a “related use.” The district court concluded that the public broadcast of Coast's video courses was “complementary” with the educational use of its courses. Freedom Savings, 757 F.2d at 1184. Although this is one measure of relatedness, it is not the sole measure. Instead, the case law requires a more detailed approach as described above. Nevertheless, the district court's conclusion that the cable broadcast market is related to the educational telecourse market is supportable. The test for relatedness is whether consumers are likely to believe that a broadcast of “You and the Law” over a cable channel is from the same source or is somehow affiliated with Coast's educational telecourse series, “You and the Law.” Under this standard, the district court's findings are not clearly erroneous. The inquiry, however, does not end at this point. [15] Even assuming that Coast has common law rights in the related cable broadcast market, TallyHo still has a protectible trademark in the Dade County cable broadcast market because the related use doctrine expands trademark protections to uses in related product and service markets. The doctrine does not expand trademark protections to geographically remote markets. Thus, a finding of related use is not a finding of state-wide trademark protection. Instead, the related use doctrine expands trademark protections to related product or service markets in existing geographic markets. 2. Zone of Natural Expansion [16][17] The territorial extent of trademark protection is limited to those geographic areas in which a mark is actually used in commerce and a zone of FN15 reasonable future expansion. “[U]nder common law principles, the senior user of a mark cannot monopolize markets that neither his trade nor his reputation has reached.” *1028J. McCarthy, supra, § 26:1, at 284. This “zone of natural expansion” doctrine provides the senior user with some

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limited “breathing space” in which to expand beyond its current actual use. J. McCarthy, supra, § 26:8, at 302. FN15. “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 similar name by another.” Junior Food Stores, 226 So.2d at 396 (emphasis added). This theory has been seized upon by senior users to argue that defendant is occupying territory within its natural zone of expansion, even though it has not yet entered that market and defendant was concededly first in that remote area. In most cases, the courts have rejected this argument on the facts, narrowly defining the senior user's zone of natural expansion. If the senior user is static, and has restricted use to only one small area, such as one city, a goodfaith junior user may expand into a nationwide use of the mark, subject only to an exception in the small area occupied by the senior user. However, if the senior user has constantly expanded its business by the date of the junior user's adoption of the mark, and if distances are not great, it may be that the senior user is entitled to exclusive rights in a zone of natural expansion which includes the junior user's area, even though no actual sales have yet been made in that area by the senior user. Id. at 302-03 (citations omitted). The zone of natural expansion, of course, does not necessarily include all areas where a senior user has in fact expanded because such uses may infringe upon junior users' bona fide trade areas. Id. Instead, junior users whose uses are in good faith and “remote” are protected. The extent of the zone is generally considered as of the date of the junior user's first use. See Burger King of Florida, Inc. v. Brewer, 244 F.Supp. 293 (W.D.Tenn.1965).

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The zone of natural expansion doctrine is admittedly a legal fiction created to provide senior users with expansion areas. Thus, there are few firm guidelines to define the senior user's imaginary zone of natural expansion. However, several criteria seem relevant: (1) How great is the geographical distance from the senior user's actual location to a point on the perimeter of the zone of expansion? (2) What is the nature of the business? Does it already have a large or small zone of actual market penetration or reputation? (3) What is the history of the senior user's past expansion? Has it remained static for years, or has it continually expanded into new territories? Extrapolating prior expansion, how long would it take the senior user to reach the periphery of the expansion zone he claims? (4) Would it require an unusual ‘great leap forward’ for the senior user to enter the zone, or is the zone so close to existing locations that expansion would be (or is) a logical, gradual, step of the same length as those previously made? J. McCarthy, supra, § 26:9, at 304-05. In addition, the “zone of territorial protection is determined by the nature of the [user's] business.” Junior Food Stores, 226 So.2d at 396. Based upon these criteria, and assuming Coast is a senior user, Coast's zone of natural expansion as of January 1984 does not include Dade County. Coast had not even officially entered its licensing agreement with the Florida Department of Education at this time. Nor had Coast used its mark in any identifiable geographic market. Thus, Coast had no penetration in the Dade County cable broadcast market at the time Tally-Ho was actively using its mark in commerce in Dade County. Furthermore, Coast's history of expansion within Florida is static. Over the four years following its licensing agreement, Coast's telecourse had extremely limited use in

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889 F.2d 1018 889 F.2d 1018, 58 USLW 2392, 13 U.S.P.Q.2d 1133 (Cite as: 889 F.2d 1018)

three community colleges, outside the Dade County area. No use was made or attempted on cable broadcast systems in Florida either prior to or after Tally-Ho's registration of its “You and the Law” mark. In sum, Coast's zone of natural expansion cannot include the Dade County market where Tally-Ho has been using the “You and the Law” mark for four years. Thus, the district court erred in granting Coast statewide common law rights in the *1029 “You and the Law” mark through its broad application of the related use doctrine and disregard of the geographical component of trademark protections. 3. Preliminary Injunction The analysis above reveals that the district court misapplied the law and therefore reached an erroneous conclusion regarding Tally-Ho's likelihood of success on the merits of its claims. Tally-Ho had priority of usage in the Dade County market. Although the district court summarily concluded that the other prerequisites for granting a preliminary injunction were not present, we believe that the record may support contrary findings. For example, it is undisputed that there was a substantial likelihood of confusion if Coast's telecourse were broadcast. Thus, Tally-Ho faced a substantial threat of irreparable injury to its protected trademark and to viewer's goodwill resulting from the broadcast of Coast's course. Processed Plastic Co. v. Warner Communications, 675 F.2d 852, 858 (7th Cir.1982) (“It is generally recognized in trademark infringement cases that (1) there is not adequate remedy at law to redress infringement and (2) infringement by its nature causes irreparable harm.”). Furthermore, the injury to Tally-Ho seems outweighed by any asserted injury to Coast. Tally-Ho's four year investment in its course and trademark is subject to reputational and financial injury from Coast's infringing videocourse. Additionally, an injunction would have no direct financial effect on Coast because Coast does not receive any compensation from the broadcast of its telecourse. Finally, the injunction

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would be in the public interest by avoiding the inevitable viewer confusion that would otherwise result. III. CONCLUSION [18] Tally-Ho has a state-registered trademark on “You and the Law” and has been telecasting its programming in Dade County for almost five years. Coast infringed on Tally-Ho's trademark by injecting its “educational” programming series, which uses the same service mark as Tally-Ho, into the Dade County market in which Tally-Ho has statutory and common law trademark protection. The district court erred by neglecting the geographic component of trademark law and effectively grants Coast state-wide protection for its mark despite Coast's never having used its mark in Florida other than in three community colleges' courses. Coast's common law trademark rights in the educational community college market simply do not extend into the Dade County cable television market. The district court therefore erred in refusing to grant Tally-Ho's request for a preliminary injunction. Accordingly, we REVERSE the district court's denial of Tally-Ho's motion for a preliminary injunction and REMAND with instructions to the district 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.2d 1133 END OF DOCUMENT

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509 F.3d 1351 509 F.3d 1351, 85 U.S.P.Q.2d 1233, 21 Fla. L. Weekly Fed. C 246 (Cite as: 509 F.3d 1351)

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Affirmed. United States Court of Appeals, Eleventh Circuit. WELDING SERVICES, INC., Plaintiff-Appellant, v. Terry FORMAN, Welding Technologies, Inc., Robert Henson, Charles Jones, Rod Forman, Defendants-Appellees. No. 06-13174. Dec. 17, 2007. Background: Corporation brought suit against its competitor for allegedly infringing its service mark, and the United States District Court for the Northern District of Georgia, No. 05-00096-CV-WCO-2,William C. O'Kelley, J., entered summary judgment against plaintiff based on absence of likelihood of consumer confusion. Plaintiff appealed, and defendant asserted that district court should have found that plaintiff's mark was generic mark not entitled to service mark protection. Holdings: The Court of Appeals, Gibson, Circuit Judge, sitting by designation, held that: (1) name “Welding Services,” as applied to company whose business was offering welding services, was “generic” and not eligible for service mark protection; (2) abbreviation “WSI,” as used in logo of corporation whose primary business was offering welding services, was not shown to have acquired any meaning distinct from the generic terms that it abbreviated; and (3) even assuming that welding service corporation's logo was sufficiently distinctive to be eligible for service mark protection, allegedly infringing logo of its competitor, consisting of the abbreviation “WTI” with an orange “swoosh” design wrapping around the middle of these letters, was so visually dissimilar as to foreclose claim of likelihood of confusion with first company's weak mark.

West Headnotes [1] Federal Courts 170B

776

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk776 k. Trial De Novo. Most Cited Cases Court of Appeals reviews de novo a district court's grant of summary judgment. [2] Federal Courts 170B

759.1

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk759 Theory and Grounds of Decision of Lower Court 170Bk759.1 k. In General. Most Cited Cases Court of Appeals may affirm on any ground supported by record. [3] Trademarks 382T

1421

382T Trademarks 382TVIII Violations of Rights 382TVIII(A) In General 382Tk1418 Practices or Conduct Prohibited in General; Elements 382Tk1421 k. Infringement. Most Cited Cases To establish a claim for service mark infringement, service mark holder must show: (1) that its service marks are entitled to protection; and (2) that alleged infringer's marks are either identical to its service marks or so similar that they are likely to confuse consumers. Lanham Trade-Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).

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[4] Federal Courts 170B

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170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk752 k. Matters or Evidence Considered. Most Cited Cases Court of Appeals ordinarily does not review materials outside the record on appeal, but has equitable power to do so in interests of justice. [5] Federal Courts 170B

752

170B Federal Courts 170BVIII Courts of Appeals 170BVIII(K) Scope, Standards, and Extent 170BVIII(K)1 In General 170Bk752 k. Matters or Evidence Considered. Most Cited Cases On appeal from district court's grant of summary judgment against service mark holder on its infringement claim, Court of Appeals would not deviate from normal rule against review of materials outside the record on appeal, and would not in the interests of justice consider evidence that, since district court's order was entered, service mark holder had obtained registration for its service marks, where service mark holder had not moved to reopen district court proceedings to enlarge the record, and it was service mark holder, as plaintiff, that commenced case, and filed motion for summary judgment, before registration of its marks was complete. [6] Trademarks 382T

1030

382T Trademarks 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1030 k. In General. Most Cited Cases Trademark or service mark protection is available only to “distinctive” marks, i.e., marks that serve purpose of identifying source of goods or services. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. §

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1051 et seq. [7] Trademarks 382T

1030

382T Trademarks 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1030 k. In General. Most Cited Cases Some marks are inherently distinctive, and thus eligible for trademark or service mark protection, while some marks that are not inherently distinctive can still acquire a distinctiveness by becoming associated in minds of public with products or services offered by proprietor of mark, and still other marks can never become distinctive. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [8] Trademarks 382T

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382T Trademarks 382TIX Actions and Proceedings 382TIX(E) Trial and Judgment 382Tk1682 Questions of Law or Fact 382Tk1689 k. Marks Protected. Most Cited Cases Trademarks 382T

1690

382T Trademarks 382TIX Actions and Proceedings 382TIX(E) Trial and Judgment 382Tk1682 Questions of Law or Fact 382Tk1690 k. Secondary Meaning. Most Cited Cases Whether a mark is distinctive, and thus eligible for trademark or service mark protection, is question of fact, regardless of whether question is inherent distinctiveness or acquired distinctiveness. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [9] Trademarks 382T

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382T Trademarks

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382TII Marks Protected 382Tk1033 k. Levels or Categories of Distinctiveness in General; Strength of Marks in General. Most Cited Cases Trademark law distinguishes four gradations of distinctiveness of marks, in descending order of strength: “fanciful marks” or “arbitrary marks,” which bear no logical relationship to product or service that they are used to represent; “suggestive marks,” which refer to some characteristic of the product that they are used to represent goods, but for which a leap of imagination is required to get from the mark to the product; “descriptive marks,” which identify a characteristic or quality of the service or product; and generic marks. Lanham TradeMark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [10] Trademarks 382T

1034

382T Trademarks 382TII Marks Protected 382Tk1034 k. Generic Terms or Marks. Most Cited Cases Genericness of term, for purpose of deciding whether it is eligible for trademark protection, lies not in term itself, but in use of term; word may be generic of some things and not of others. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [11] Trademarks 382T

1034

382T Trademarks 382TII Marks Protected 382Tk1034 k. Generic Terms or Marks. Most Cited Cases Generic use of word may not be registered as trademark. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [12] Trademarks 382T

1037

382T Trademarks 382TII Marks Protected 382Tk1035 Descriptive Terms or Marks 382Tk1037 k. Acquired Distinctiveness;

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Secondary Meaning. Most Cited Cases Descriptive 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 or service. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [13] Trademarks 382T

1032

382T Trademarks 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1032 k. Acquired Distinctiveness and Secondary Meaning in General. Most Cited Cases Term has acquired “secondary meaning,” for purposes of trademark law, when primary significance of term in minds of consuming public is not product, but the producer. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [14] Trademarks 382T

1032

382T Trademarks 382TII Marks Protected 382Tk1029 Capacity to Distinguish or Signify; Distinctiveness 382Tk1032 k. Acquired Distinctiveness and Secondary Meaning in General. Most Cited Cases Whether name has acquired “secondary meaning,” for purposes of trademark law, depends on length and nature of name's use, nature and extent of advertising and promotion of name, efforts of proprietor to promote conscious connection between name and business, and degree of actual recognition by public that name designates the proprietor's product or service. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [15] Trademarks 382T 382T Trademarks 382TII Marks Protected

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382Tk1034 k. Generic Terms or Marks. Most Cited Cases Generic mark cannot achieve true secondary meaning, and become eligible for trademark protection, even if it becomes in some degree associated with its source. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [16] Trademarks 382T

1034

382T Trademarks 382TII Marks Protected 382Tk1034 k. Generic Terms or Marks. Most Cited Cases

to kind of services it and its competitors provide is powerful evidence that the words in putative mark are being used generically. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [18] Trademarks 382T

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382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1052 k. Letters or Initials; Abbreviations. Most Cited Cases Trademarks 382T

Trademarks 382T

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1057(1)

1052

382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1052 k. Letters or Initials; Abbreviations. Most Cited Cases Trademarks 382T

1058

382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1058 k. Multiple Elements; Combinations. Most Cited Cases Name “Welding Services,” as applied to company whose business was offering welding services, was “generic” and not eligible for service mark protection, and did not become non-generic simply because company included the abbreviation “Inc.” at end of its name. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [17] Trademarks 382T

1034

382T Trademarks 382TII Marks Protected 382Tk1034 k. Generic Terms or Marks. Most Cited Cases Would-be proprietor's use of words in mark to refer

382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1057 Nonliteral Elements 382Tk1057(1) k. In General. Most Cited Cases Abbreviation “WSI,” as used in logo of corporation whose primary business was offering welding services, was not shown to have acquired any meaning distinct from the generic terms, “Welding Services, Inc.,” that it abbreviated, as required for abbreviation to be eligible for service mark protection, where abbreviation appeared in logo immediately next to generic terms themselves. Lanham TradeMark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [19] Trademarks 382T

1052

382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1052 k. Letters or Initials; Abbreviations. Most Cited Cases Abbreviations of generic words may become protectable, if the party claiming trademark or service mark protection for abbreviation shows that abbreviation has meaning distinct from underlying words in mind of public. Lanham Trade-Mark Act, § 1 et

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seq., 15 U.S.C.A. § 1051 et seq. [20] Trademarks 382T

1052

382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1052 k. Letters or Initials; Abbreviations. Most Cited Cases While investment in advertising is generally relevant to question of whether a mark has acquired secondary meaning, for purposes of federal trademark law, question of whether abbreviation of generic words has a discrete meaning in minds of public from the generic words for which it stands requires a different kind of evidence. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [21] Trademarks 382T

1058

382T Trademarks 382TII Marks Protected 382Tk1050 Format or Components of Term or Mark 382Tk1058 k. Multiple Elements; Combinations. Most Cited Cases Logo consisting of nonprotectable literal element combined with a display or geometric design may be distinctive enough to receive trademark protection. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [22] Trademarks 382T

1081

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 k. Factors Considered in General. Most Cited Cases Whether marks are sufficiently similar to give rise to likelihood of confusion is assessed, for purpose of trademark or service mark infringement claim, by examining seven factors: (1) distinctiveness of mark alleged to have been infringed; (2) similarity of the allegedly infringed and allegedly infringing

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marks; (3) similarity between goods or services offered under the two marks; (4) similarity of actual sales methods used by the two parties, such as their sales outlets and customer base; (5) similarity of advertising methods; (6) intent of alleged infringer to misappropriate proprietor's good will; and (7) existence and extent of actual confusion in the consuming public. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [23] Trademarks 382T

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382T Trademarks 382TIX Actions and Proceedings 382TIX(E) Trial and Judgment 382Tk1682 Questions of Law or Fact 382Tk1691 k. Similarity; Likelihood of Confusion. Most Cited Cases Whether marks are sufficiently similar to give rise to likelihood of confusion, for purpose of trademark or service mark infringement claim, is question of fact for factfinder. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [24] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1081 k. Factors Considered in General. Most Cited Cases In assessing whether marks are sufficiently similar to give rise to likelihood of confusion for purposes of trademark or service mark infringement claim, court must consider each of the seven factors, such as distinctiveness of mark allegedly infringed, similarity 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. [25] Trademarks 382T

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382T Trademarks 382TII Marks Protected 382Tk1033 k. Levels or Categories of Distinctiveness in General; Strength of Marks in Gen-

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eral. Most Cited Cases 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 The stronger or more distinctive a trademark or service mark, the greater the likelihood of confusion and the greater the scope of protection afforded it; conversely, the weaker the mark, the less protection it receives. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [26] 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 Trademarks 382T

1098

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1093 Relationship Between Marks 382Tk1098 k. Appearance, Sound, and Meaning. Most Cited Cases Trademarks 382T

1112

382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1112 k. Persons Confused; Circumstances of Sale. Most Cited Cases Even assuming that welding service corporation's logo, consisting of an abbreviation, “WSI,” of generic terms that it used in its name enclosed within simple circle, was sufficiently distinctive to be eligible for service mark protection, allegedly in-

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fringing logo of its competitor, consisting of the abbreviation “WTI” with an orange “swoosh” design wrapping around the middle of these letters, was so visually dissimilar as to foreclose claim of likelihood of confusion with first company's weak mark, where second company had hired advertising company to design its logo, and where businesses using the two companies' services were sophisticated, large-scale purchasers, that were less likely to be confused than casual purchasers of small items. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. [27] Trademarks 382T

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382T Trademarks 382TIII Similarity Between Marks; Likelihood of Confusion 382Tk1093 Relationship Between Marks 382Tk1098 k. Appearance, Sound, and Meaning. Most Cited Cases Overwhelming visual dissimilarity can defeat an infringement claim, by demonstrating that there is no likelihood of confusion, even though other factors bearing on the likelihood of such confusion all weigh in favor of party asserting infringement claim. Lanham Trade-Mark Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq. Trademarks 382T

1800

382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases Welding Services Inc. Trademarks 382T

1800

382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases WSI.

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Trademarks 382T

1800

382T Trademarks 382TXI Trademarks and Trade Names Adjudicated 382Tk1800 k. Alphabetical Listing. Most Cited Cases WTI. *1354 Amanda S. Thompson, David Wayne LongDaniels, Ernest L. Greer, James Jay Wolfson, Dorsey E. Hopson, II, Greenberg Trauig, LLP, Atlanta, GA, for Plaintiff-Appellant.

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Robert Henson, infringed Welding Services' service marks in violation of the Lanham Act, 15 U.S.C. § 1125(a). Welding Services contends that there are triable issues of fact as to whether the companies' service marks are confusingly similar, whether there has been actual confusion about which company was designated by Welding Technologies' marks, and whether Welding Technologies intended to infringe on Welding Services' marks. We affirm the judgment of the district court. I.

Charlene R. Swartz, Steven G. Hill, Hill, Kertscher & Wharton, LLP, Atlanta, GA, for Defendants-Appellees. Appeal from the United States District Court for the Northern District of Georgia. Before EDMONDSON, Chief Judge, and TJOFN* FLAT and GIBSON, Circuit Judges. FN* Honorable John R. Gibson, United States Circuit Judge for the Eighth Circuit, sitting by designation. *1355 GIBSON, Circuit Judge: Welding Services, Inc. appeals from the district court's entry of summary judgment against it on its claim that Welding Technologies, Inc., its General Manager, Terry Forman, and its Vice President,

Welding Technologies was founded in 2003. In May 2005, a group of former Welding Services employees bought Welding Technologies from the ori-

Welding Services and Welding Technologies are rival companies providing services for maintaining equipment used in heavy industry. Since 1990 Welding Services has been using the FN1 abbreviation “WSI,” and since February 1994, it has been using a stylized logo consisting of the initials WSI, surrounded by a circle, as shown in the margin. FN1. We use the term “abbreviation” rather than “acronym” because an acronym is a kind of abbreviation that is pronounced as a word, rather than as letters. See 3 Louis Altman, Callmann on Unfair Competition, Trademarks and Monopolies § 18:12 n. 27 (4th ed. 2004). Obviously, WSI cannot be pronounced as a word.

ginal owners. The individual defendants Terry Forman and Robert Henson are former employees of Welding Services who moved to Welding TechFN2 nologies. When Welding Technologies was

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created in 2003, the original owners had a sister company, Orbital Tool Technologies, Inc., a machining business. The owners hired an advertising company, Fetelli, Inc., to design twin logos for the two companies. The logos for both companies showed the company's initials with an orange “rotational symbol intended to convey the rotational movement of [Orbital Tool's] machining equipment.” The Welding Technologies logo is shown in the margin.

Welding Services brought this suit alleging federal trademark infringement on its abbreviation and stylized logo under section 4 of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A), as well as state law causes of action for unfair competition, false and deceptive trade practices, misappropriation of trade secrets, tortious interference with *1356 business relations, and other related theories. Welding Services and Welding Technologies made cross-motions for summary judgment on the Lanham Act claim, and Welding Technologies also moved for summary judgment on the state deceptive trade practices and unfair competition claims. The district court granted summary judgment to Welding Technologies on the only federal claim and on the state law claims for unfair competition and deceptive trade practices. The court declined to exercise supplemental jurisdiction over the remaining state law claims and so dismissed those claims. On appeal, Welding Services' argument focuses on its federal Lanham Act claim. It argues that the district court erred in holding that Welding Services had not adduced a genuine question of material fact

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FN2. Rod Forman and Charles Jones were named as defendants in the complaint, but were not included in the Lanham Act count.

as to whether Welding Technologies' use of “WTI” and the logo above created a likelihood of confusion. Welding Technologies, on the other hand, argues that the district court should have held that Welding Services has not shown that the abbreviation “WSI” was entitled to trademark protection. II. [1][2] We review de novo a district court's grant of summary judgment. Stewart v. Booker T. Washington Ins., 232 F.3d 844, 848 (11th Cir.2000). Summary judgment is proper only if the record before the district court shows that there is no genuine issue as to any material fact and Welding Technologies is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). We must view the evidence in the light most favorable to Welding Services, rather than weighing the evidence ourselves or making credibility determinations. Stewart, 232 F.3d at 848. Upon motion and after adequate discovery, a district court may enter judgment “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden

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of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). This court may affirm on any ground supported by the record. Bircoll v. Miami-Dade County, 480 F.3d 1072, 1088 n. 21 (11th Cir.2007). [3] To make a claim for infringement of its service marks, Welding Services must show: (1) that its service marks were entitled to protection and (2) that Welding Technologies' abbreviated name and logo were identical to those marks or so similar that they 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 whether Welding Services' marks were protected, but declined to enter summary judgment against Welding Services on that ground because the court was concerned that there was some evidence that the marks had acquired secondary meaning (although as to the abbreviation mark, the court's holding is ambiguous and may be read to mean that the abbreviation was not protected). On appeal, Welding Technologies argues that the abbreviation “WSI” is not protectable because it is generic. [4][5] At the outset, we observe that at the time of the district court's decision, Welding Services had not successfully registered either the abbreviation WSI or the stylized logo. Its application to register “Welding Services Inc.” had been refused by the Patent and Trademark Office's examining attorney on the ground that the proposed mark was merely descriptive or generic as applied to the welding services identified. Its application to register “WSI” was refused on the ground that the *1357 mark was confusingly similar to a prior registered WSI mark used to sell highly related services. In its reply brief before this court, Welding Services first advised us that after the date of the district court's decision, the abbreviation and logo had been accepted by the Patent and Trademark Office for registration. Fur-

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ther, at oral argument, Welding Services' counsel advised us that it had successfully registered the abbreviation “WSI” and the stylized logo. We ordinarily do not review materials outside the record on appeal as designated by Fed. R.App. P. 10(a), although we have the equitable power to do so if it is in the interest of justice. See Schwartz v. Millon Air, Inc., 341 F.3d 1220, 1225 n. 4 (11th Cir.2003). However, Welding Services has neglected to address before this court the ramifications that registration would have on allocation of the burden of proof on the issues of protectability and strength of FN3 the marks. Nor has Welding Services moved to reopen the district court proceedings to enlarge the record. In light of these omissions and of the fact that Welding Services as plaintiff filed this case and also filed a summary judgment motion before the registration was complete, we conclude that justice does not require us to deviate from the ordinary rule that the appeal is decided on the record before us. See Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 381-83 (2d Cir.2005) (where mark not registered until after district court entered judgment and district court declined to reopen the trial record to include new evidence of registration, court considered protectability without reference to registration), cert. denied, 547 U.S. 1019, 126 S.Ct. 1570, 164 L.Ed.2d 298 (2006). FN3. Registration establishes a rebuttable presumption that the marks are protectable or “distinctive.” 15 U.S.C. § 1057(b). The sort of presumption appropriate depends on whether or not the Patent and Trademark Office has required proof of secondary meaning. See Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 117 & n. 2 (1st Cir.2006) (If no proof of secondary meaning is provided, presumption is that mark is inherently distinctive; if proof of secondary meaning is provided, presumption is that mark has secondary meaning.). [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 the source of the goods or services, see Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 705 (1st Cir.2007). Some marks are inherently distinctive; some marks, though not inherently distinctive, acquire distinctiveness by becoming associated in the minds of the public with the products or services offered by the proprietor of the mark; and some marks can never become distinctive. Two Pesos, 505 U.S. at 768-69, 112 S.Ct. 2753; Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1560 (11th Cir.1991). Distinctiveness is a question of fact, whether the question is inherent distinctiveness or acquired distinctiveness. Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519, 1523 (11th Cir.1991); Coach House, 934 F.2d at 1560. [9] Trademark law distinguishes four gradations of distinctiveness of marks, in descending order of strength: fanciful or arbitrary, suggestive, descriptive, and generic. An arbitrary or fanciful mark bears no logical relationship to the product or service it is used to represent. Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1184 (5th Cir.1980) (giving example of “Kodak”). A suggestive mark refers to some characteristic of the goods, but requires a leap of the imagination to get from the mark to *1358 the product. Id. (giving example of “Penguin” for refrigerators). A descriptive mark identifies a characteristic or quality of the service or product. Id. at 1183-84 (giving example of “Vision Center” for eyeglasses store). [10] There are several different approaches to defining “generic.” By one test, a generic name refers to “a particular genus or class of which an individual article or service is but a member.” Soweco, 617 F.2d at 1183 (internal quotation marks omitted). By another measure, a generic name is the term by which the product or service itself is commonly known. See Nat'l Conference of Bar Exam'rs v.

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Multistate Legal Studies, 692 F.2d 478, 487 (7th Cir.1982). Still other courts say a generic name depicts the product or service as a whole, rather than any particular feature, quality, or characteristic of the whole. Blinded Veterans Ass'n v. Blinded Am. Veterans Found., 872 F.2d 1035, 1039 (D.C.Cir.1989) (citing Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir.1983)). Genericness lies not in the term itself, but in the use of the term: “A word may be generic of some things and not of others: ‘ivory’ is generic of 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 not be registered as a trademark. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). A descriptive name, on the other hand, though not inherently distinctive, can acquire distinctiveness or “secondary meaning” by becoming associated with the proprietor's product or service. Am. Television & Communications Corp. v. Am. Communications & Television, Inc., 810 F.2d 1546, 1548-49 (11th Cir.1987). 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.” Id. at 1549 (quoting Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir.1979) (quoting Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 83 L.Ed. 73 (1938))). A proprietor can make a prima facie showing of “secondary meaning” by showing that the name has been used in connection with the proprietor's goods or service continuously and substantially exclusively for five years. 15 U.S.C. § 1052(f). 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. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 (11th Cir.1984).

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[15] Courts have generally held that a term used generically cannot be appropriated from the public domain; therefore, even if the name becomes in some degree associated with the source, a generic mark cannot achieve true secondary meaning. See Soweco, 617 F.2d at 1185 n. 20 (secondary meaning not relevant to generic mark); Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 115 & n. 11 (5th Cir.1979) (“Most courts hold that a generic term is incapable of achieving trade name protection”; courts refuse to allow proof of secondary meaning to elevate generic term to trademark status); see also Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974 (8th Cir.2006); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790-91 (5th Cir.1983); Nat'l Conference of Bar Exam'rs, 692 F.2d at 487; 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:24 (4th ed.2007). But see *1359Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 11 (5th Cir.1974) (generic name will be protected if it acquires secondary meaning). [16][17] The record indicates that when Welding Services applied to register the name “Welding Services Inc.,” registration was refused on the ground that the proposed mark was “generic as applied” and that it was descriptive. As the Patent and Trademark Office concluded upon reviewing the application, “Clearly the applicant is providing welding services and [the] proposed mark is generic for the applicant's services.” In the service mark registration application for “WSI” in the record before us, Welding Services itself describes the kind of services it offers as “[w]eld metal overlay services and fabrications.” Similarly, in a page from the Welding Services website attached as an exhibit to the registration application, Welding Services states: “Welding Services is the largest producer and supplier of weld metal overlay services and fabrications in the world.” This statement assumes that the company is one of many suppliers of “weld ... services.” Even in its statement of material facts in the district court, Welding Services used the phrase to denote the services that both it and Weld-

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ing Technologies provide: “The parties' Marks are used in connection with identical servicesnon-nuclear welding services that compete directly with the other”; “Defendant Welding Technologies, Inc. (‘WTI’) is an Illinois corporation that provides welding services in direct competition with WSI” (emphasis added). A would-be proprietor's use of the words in the mark to refer to the kind of services it and its competitors provide is powerful evidence that the words in the putative mark are being used generically. See Retail Servs. Inc. v. Freebies Publ'g, 364 F.3d 535, 545 (4th Cir.2004); 2 McCarthy, supra, at § 12.13. Here, Welding Services has used “welding services” to denote both what it does and what Welding Technologies does for customers; we can only conclude that its use of FN4 these words is generic. FN4. The mere inclusion of “Inc.” at the end of the name does not make generic words protectable. In re Patent & Trademark Servs. Inc., 49 U.S.P.Q.2d 1537, 1539 (Trademark Trial & App. Bd.1998); 3 Louis Altman, Callmann on Unfair Competition § 18:4, at 18-67 (4th ed. 2003). [18] Although we conclude that the words “welding services” are not protectable, this does not decide the precise question before us because Welding Services, Inc. does not seek protection for the words themselves, but for the abbreviation “WSI” and the stylized logo using that abbreviation. The protectability of the initials and of the stylized logo present different issues, so we will consider them in turn. [19] Abbreviations of generic words may become protectable if the party claiming protection for such an abbreviation shows that the abbreviation has a meaning distinct from the underlying words in the mind of the public. G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 993-94 (7th Cir.1989) (“heavy burden” on trademark claimant seeking to show an independent meaning for initials of descriptive words apart from the fact that they are abbreviations for the descriptive words); 2 Mc-

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509 F.3d 1351 509 F.3d 1351, 85 U.S.P.Q.2d 1233, 21 Fla. L. Weekly Fed. C 246 (Cite as: 509 F.3d 1351)

Carthy, supra, § 12:37 (distinguishing between abbreviations “which still convey[ ] to the buyer the original generic connotation of the abbreviated name” and those which are “not recognizable as the original generic term”). But cf. Anheuser-Busch, Inc. v. Stroh Brewery Co., 750 F.2d 631, 635-36 (8th Cir.1984) (abbreviation of generic words protectable if “some operation of the imagination is required to connect the initials with the product”); *1360Modern Optics, Inc. v. Univis Lens Co., 43 C.C.P.A. 970, 234 F.2d 504, 506 (C.C.P.A.1956) ( “[I]nitials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.”). Welding Services introduced the affidavit of its marketing director, Michael Welch, stating that the company had used the abbreviation since 1990 and the stylized logo for nine years before Welding Technologies began using its marks. Welch said Welding Services had spent $5 million advertising its marks over the course of fourteen years (from 1990 to 2004) and had generated more than $1 billion in revenues. Welch said that the WSI marks are recognized as a “highly significant indicator of WSI's welding services.” On the basis of this evidence, the district court declined to hold that Welding Services' marks were not protectable. [20] But Welch's affidavit does not address the question of whether the company's investment in advertising its marks served to give the abbreviation “WSI” a meaning distinct from the words “Welding Services Inc.” While investment in advertising is relevant to the question of secondary meaning generally, Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519, 1525 (11th Cir.1991), the question of whether the abbreviation has a discrete meaning in the minds of the public from the generic words for which it stands requires a different kind of evidence. The only evidence in the record relevant to this question shows Welding Services has not created a separate meaning for the abbreviation. Crucially, exhibit B to Welding Ser-

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vices' statement of material facts shows the logo with the initials on advertising material displayed immediately next to the words “Welding Services Inc.” Thus, Welding Services' own motion papers indicate that the abbreviation is used in association with the generic words, rather than being used in a way that would give rise to a meaning distinct from those words. Accordingly, we hold that Welding Services had not shown “WSI” to be protectable. [21] As for the stylized logo, a logo consisting of a nonprotectable literal element combined with a display or geometric design may be distinctive enough to receive protection. In re Trail-R-Van, Inc., 188 U.S.P.Q. 590, 591 (Trademark Trial & App. Bd.1975); 3 Callman, supra, § 18:4, at 18-62-18-63; 2 McCarthy, supra, § 12:40. The WSI stylized logo is not particularly distinctive, consisting of the three letters in a circle. See Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 383 (2d Cir.2005) (basic shapes not protectable, though stylized version of shapes and letters may be). Nevertheless, we will not hold that summary judgment against Welding Services would have been proper on this question, since another ground-no likelihood of confusion-so obviously supports entry of summary judgment against Welding Services on the claim for infringement of the stylized logo. IV. [22][23][24] Likelihood of confusion is assessed by examining seven factors: (1) distinctiveness of the mark alleged to have been infringed; (2) similarity of the infringed and infringing marks; (3) similarity between the goods or services offered under the two marks; (4) similarity of the actual sales methods used by the two parties, such as their sales outlets and customer base; (5) similarity of advertising methods; (6) intent of the alleged infringer to misappropriate the proprietor's good will; and (7) existence and extent of actual confusion in the consuming public. Conagra, Inc. v. Singleton, 743 F.2d 1508, 1514 (11th Cir.1984); see also *1361Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d

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509 F.3d 1351 509 F.3d 1351, 85 U.S.P.Q.2d 1233, 21 Fla. L. Weekly Fed. C 246 (Cite as: 509 F.3d 1351)

641, 646-47, 2007 WL 4165634, at *3 (11th Cir. Nov.21, 2007). The likelihood of confusion is a question of fact. Jellibeans, Inc. v. Skating Clubs, 716 F.2d 833, 840 n. 16 (11th Cir.1983). In this circuit, we are required to consider each of the seven factors. Dippin' Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197, 1207 (11th Cir.2004). [25][26] The stronger or more distinctive a trademark or service mark, the greater the likelihood of confusion and the greater the scope of protection afforded 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 (5th Cir.1980). While we decline to decide whether the logo was sufficiently distinctive to be protectable, we can say that at most the extent of stylization was marginal. The result is a weak mark, entitled to very 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 that they are not similar. The WSI mark consists of stylized letters in an ordinary circle. The WTI mark consists of plain block letters with an orange “swoosh” design, meant to convey rotational movement, wrapping around the middle of the letters. The words “Welding Technologies, Inc” appear below the letters. There is not the least possibility of confusing the two stylized logos. Overwhelming visual dissimilarity can defeat an infringement claim, even where the other six factors all weigh in favor of the plaintiff. Dippin' Dots, 369 F.3d at 1208.

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logo. Finally, Welding Services contends that it has shown actual confusion between the marks. Welding Services offered the deposition of Michael Welch, who said that at a trade show in 2005, he had a number of customers come and ask about “who WTI was and whether they were affiliated with WSI.” Terry Forman, of Welding Technologies, reported that she had been asked whether Welding Technologies was a “spin-off of WSI.” These incidents have no explicit connection to the stylized logos. As the district court remarked, their probative value is very low because of the uncertainty about what might have prompted the inquiries. Welding Technologies' employees were formerly associated with Welding Services, so the confusion could just as likely have arisen because of the personnel rather than the logo. Moreover, the nature of the business at issue here requires that the purchasers of the services must be sophisticated consumers, since the services are technical and large-scale. Such purchasers are less likely to be confused than casual purchasers of small items. See Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1185 (11th Cir.1985). Welding Services has not come forward with sufficient proof of likelihood of confusion of the logos to warrant a trial of the issue. *** We AFFIRM the judgment of the district court.

The next three factors weigh in favor of Welding Services, since there is undisputed similarity of services offered, sales methods, and advertising methods.

C.A.11 (Ga.),2007. Welding Services, Inc. v. Forman 509 F.3d 1351, 85 U.S.P.Q.2d 1233, 21 Fla. L. Weekly Fed. C 246

The record does not support Welding Services' contention that Welding Technologies intended to cause confusion in adopting its mark. The story of how the WTI logo was created by previous owners to harmonize with the mark of its sister company is undisputed and shows an innocent origin for the

END OF DOCUMENT

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15 U.S.C.A. § 1052

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Effective: October 6, 2006 United States Code Annotated Currentness Title 15. Commerce and Trade Chapter 22. Trademarks (Refs & Annos) Subchapter I. The Principal Register § 1052. Trademarks registrable on principal register; concurrent registration No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it--

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of Title 19) enters into force with respect to the United States. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent re-

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gistrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons. (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional. (f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant'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 continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made. Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993. A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.

CREDIT(S) (July 5, 1946, c. 540, Title I, § 2, 60 Stat. 428; Oct. 9, 1962, Pub.L. 87-772, § 2, 76 Stat. 769; Jan. 2, 1975, Pub.L. 93-596, § 1, 88 Stat. 1949; Nov. 16, 1988, Pub.L. 100-667, Title I, § 104, 102 Stat. 3937; Dec. 8, 1993, Pub.L. 103-182, Title III, § 333(a), 107 Stat. 2114; Dec. 8, 1994, Pub.L. 103-465, Title V, § 522, 108 Stat. 4982; Oct. 30, 1998, Pub.L. 105-330, Title II, § 201(a)(2), (12), 112 Stat. 3069, 3070; Aug. 5, 1999, Pub.L. 106-43, § 2(a), 113 Stat. 218; Nov. 29, 1999, Pub.L. 106-113, Div. B, § 1000(a)(9) [Title IV, § 4732(b)(1)(B)], 113 Stat. 1536, 1501A-583; Oct. 6, 2006, Pub.L. 109-312, § 3(a), 120 Stat. 1732.) HISTORICAL AND STATUTORY NOTES Revision Notes and Legislative Reports 1946 Acts. Senate Report No. 1333, see 1946 U.S. Code Cong. Service, p. 1274.

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1962 Acts. Senate Report No. 2107, see 1962 U.S. Code Cong. and Adm. News, p. 2844. 1975 Acts. Senate Report No. 93-1399, see 1974 U.S. Code Cong. and Adm. News, p. 7113. 1988 Acts. Senate Report No. 100-515 and House Report No. 100-887(Parts I and II), see 1988 U.S. Code Cong. and Adm. News, p. 5577. 1993 Acts. House Report No. 103-361(Parts I-III), see 1993 U.S. Code Cong. and Adm. News, p. 2552. 1994 Acts. House Report No. 103-826(Parts I and II) and Statement of Administrative Action, see 1994 U.S. Code Cong. and Adm. News, p. 3773. 1999 Acts. Statement by President, see 1999 U.S. Code Cong. and Adm. News, p. 290. 2006 Acts. House Report No. 109-23, see 2006 U.S. Code Cong. and Adm. News, p. 1091.

References in Text The date on which the WTO Agreement enters into force with respect to the United States, referred to in subsec. (a), is Jan. 1, 1995, see section 3511(b) of Title 19, Customs Duties. Acts March 3, 1881, and February 20, 1905, referred to in subsec. (d), are Act Mar. 3, 1881, c. 138, 21 Stat. 502 and Act Feb. 20, 1905, c. 592, 33 Stat. 724, which were repealed insofar as inconsistent with this chapter by Act July 5, 1946, c. 540, § 46(a), 60 Stat. 444. Act Feb. 20, 1905, was classified to sections 81 to 109 of this title.

Codifications Amendment by Pub.L. 109-312, § 3(a), which directed the deletion of the last two sentences of subsec. (f) and the addition of two new sentences at the end of subsec. (f), was executed by striking the undesignated flush paragraph at the end of this section and inserting the new sentences as an undesignated flush paragraph at the end, as the probable intent of Congress. See 2006 Amendments note set out under this section.

Amendments 2006 Amendments. Pub.L. 109-312, § 3(a), in the undesignated flush paragraph at the end, struck out “A mark which when used would cause dilution under section 1125(c) of this title may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which when used would cause dilution under section 1125(c) of this title may be canceled pursuant to a proceeding brought under either

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section 1064 of this title or section 1092 of this title.” and inserted “A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be refused registration only pursuant to a proceeding brought under section 1063 of this title. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title.”. See Codifications note under this section. 1999 Amendments. Pub.L. 106-113 [§ 4732(b)(1)(B)], struck out “Commissioner” and inserted “Director” throughout the section. Pub.L. 106-43, § 2(a), added the flush paragraph at the end. 1998 Amendments. Pub.L. 105-330, § 201(a)(12), substituted “trademark” for “trade-mark” in the provisions preceding subsec. (a). Subsec. (e)(3). Pub.L. 105-330, § 201(a)(2), struck “or” following “them”. Subsec. (e)(5). Pub.L. 105-330, § 201(a)(2), added par. (5). Subsec. (f). Pub.L. 105-330, § 201(a)(2), struck “paragraphs (a), (b), (c), (d), and (e)(3)” and inserted “subsections (a), (b), (c), (d), (e)(3), and (e)(5)”. 1994 Amendments. Subsec. (a). Pub.L. 103-465, § 522, inserted provision relating to a geographical indication used in connection with wines or spirits which identifies a place other than the origin of the goods and is first used on or after one year after the date on which the WTO Agreement enters into force with respect to the United States. 1993 Amendments. Subsec. (e). Pub.L. 103-182, § 333(a)(1), amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: “Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, or (3) is primarily merely a surname.” Subsec. (f). Pub.L. 103-182, § 333(a)(2), inserted “, and (e)(3)” following “(a), (b), (c), (d)”, and inserted at end “Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant's goods in commerce before December 8, 1993.” 1988 Amendments. Subsec. (d). Pub.L. 100-667, § 104(1), amended subsec. (d) generally. Prior to amendment,

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subsec. (d) read as follows: “Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That when the Commissioner determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (i) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; or (ii) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (iii) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Concurrent registrations may also be issued by the Commissioner when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Commissioner shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods in connection with which such mark is registered to the respective persons.” Subsec. (e). Pub.L. 100-667, § 104(2), substituted “used on or in connection with” for “applied to” in two instances. Subsec. (f). Pub.L. 100-667, § 104(3), substituted “used on or in connection with” for “applied to”, and “five years before the date on which the claim of distinctiveness is made.” for “five years next preceding the date of the filing of the application for its registration.”. 1975 Amendments. Subsec. (d). Pub.L. 93-596 substituted “Patent and Trademark Office” for “Patent Office”. 1962 Amendments. Subsec. (d). Pub.L. 87-772, among other changes, substituted provisions authorizing the issuance of concurrent registrations to persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to the earliest of the filing dates of the applications pending or of any registration issued under this chapter, or July 5, 1947, in the case of registrations previously issued under the Act of Mar. 3, 1881, or Feb. 20, 1905, and continuing in full force and effect on that date, or July 5, 1947, in the case of applications under the Act of Feb. 20, 1905, and registered after July 5, 1947, for provisions which restricted issuance of concurrent registrations to persons entitled to use such mark as a result of their concurrent lawful use thereof in commerce prior to any of the filing dates of the applications involved, and provisions directing that issuance of the mark be upon such conditions and limitations as to the mode or place of use of the marks or the goods in connection with which such marks are used, for provisions which required issuance under conditions and limitations as to the mode or place of use of the goods in connection with which such registrations may be granted, and eliminated provisions which limited confusion, mistake, or deception to purchasers, required written notice of applications for concurrent registrations and of hearings thereon, and publication in the Official Gazette upon a decision to grant such a registration and permitted a court to order such a registration under § 4915 of the Revised Statutes.

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Effective and Applicability Provisions 1999 Acts. Amendment by Pub.L. 106-113 [§ 4732(b)(1)(B)], effective 4 months after the date of enactment of this Act [Nov. 29, 1999, which is the date of enactment of Pub.L. 106-113, 113 Stat. 1501, which in Div. B, § 1000(a)(9), enacted into law this Act as an Appendix], see Pub.L. 106-113 [§ 4731], set out as a note under section 1 of Title 35. Pub.L. 106-43, § 2(e), Aug. 5, 1999, 113 Stat. 218, provided that: “The amendments made by this section [amending this section and sections 1063, 1064, and 1092 of this title] shall take effect on the date of enactment of this Act [Aug. 5, 1999] and shall apply only to any application for registration filed on or after January 16, 1996.” 1998 Acts. Amendments by Pub.L. 105-330, § 201(a), effective Oct. 30, 1998, and applicable only to any civil action filed or proceeding before the United States Patent and Trademark Office commenced on or after such date relating to the registration of a mark, see section 201(b) of Pub.L. 105-330 set out as a note under section 1051 of this title. 1994 Acts. Section 523 of Pub.L. 103-465 provided that: “The amendments made by this subtitle [subtitle B (§§ 521-523 of title V of Pub.L. 103-465, amending this section and section 1127 of this title] take effect one year after the date on which the WTO Agreement enters into force with respect to the United States [Jan. 1, 1995].” 1993 Acts. Section 335 of title III of Pub.L. 103-182 provided that: “(a) In general.--Subject to subsections (b) and (c), the amendments made by this subtitle [subtitle C (§§ 331-335) of title III of Pub.L. 103-182, enacting section 104A of Title 17, Copyrights, amending this section, section 1091 of this title and section 104 of Title 35, Patents, and amending provisions set out as a note under section 109 of Title 17] take effect on the date the Agreement [North American Free Trade Agreement] enters into force with respect to the United States [Jan. 1, 1994]. “(b) Section 331.--The amendments made by section 331 [amending section 104 of Title 35] shall apply to all patent applications that are filed on or after the date of the enactment of this Act [Dec. 8, 1993]: Provided, That an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a NAFTA country, except as provided in sections 119 and 365 of title 35, United States Code, that is earlier than the date of the enactment of this Act. “(c) Section 333.--The amendments made by section 333 [amending this section and section 1091 of this title] shall apply only to trademark applications filed on or after the date of the enactment of this Act.” 1988 Acts. Amendment by Pub.L. 100-667 effective on the date which is one year after Nov. 16, 1988, see section 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 under § 1111 of this title.

Transfer of Functions For transfer of functions of other officers, employees, and agencies of Department of Commerce to Secretary of Commerce, with certain exceptions, see 1950 Reorg. Plan No. 5, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appendix to Title 5, Government Organization and Employees.

Prior Provisions Acts Feb. 20, 1905, c. 592, § 5, 33 Stat. 725; Mar. 2, 1907, c. 2573, § 1, 34 Stat. 1251; Feb. 18, 1911, c. 113, 36 Stat. 918; Jan. 8, 1913, c. 7, 37 Stat. 649; Mar. 19, 1920, c. 104, § 9, 41 Stat. 535; June 7, 1924, c. 341, 43 Stat. 647.

Uruguay Round Agreements: Entry Into Force The Uruguay Round Agreements, including the World Trade Organization Agreement and agreements annexed to that Agreement, as referred to in 19 U.S.C.A. § 3511(d), entered into force with respect to the United States on Jan. 1, 1995. See note set out under 19 U.S.C.A. § 3511.

Definitions For definition of “WTO Agreement” and “WTO member country”, see section 501 of Pub.L. 103-465, set out as a note under section 101 of Title 17, Copyrights.

Marks Registered Under Ten Year Proviso of Trademark Act of 1905 Marks registered under the “ten-year proviso” of § 5 of the Act of Feb. 20, 1905, as amended, deemed to have become distinctive of the registrant's goods in commerce under par. (f) of this section, see § 46(b) of Act July 5, 1946, set out as a note under § 1051 of this title.

Repeal and Effect on Existing Rights Repeal of inconsistent provisions, effect of this chapter on pending proceedings and existing registrations and rights under prior acts, and saving clause, see notes under § 1051 of this title. CROSS REFERENCES

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