109 F.3d 275 (6th Cir. 1997), 96-3255, Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Center

Docket Nº:96-3255.
Citation:109 F.3d 275
Party Name:42 U.S.P.Q.2d 1173 DADDY'S JUNKY MUSIC STORES, INC., Plaintiff-Appellant, v. BIG DADDY'S FAMILY MUSIC CENTER, Defendant-Appellee.
Case Date:March 14, 1997
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

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109 F.3d 275 (6th Cir. 1997)

42 U.S.P.Q.2d 1173

DADDY'S JUNKY MUSIC STORES, INC., Plaintiff-Appellant,



No. 96-3255.

United States Court of Appeals, Sixth Circuit.

March 14, 1997

Argued Feb. 3, 1997.

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Gail L. Morrissey, argued and briefed, Standley & Gilcrest, Dublin, OH, Eleanor M. Musick, Kathleen A. Pasulka, Brown, Martin, Haller & McClain, San Diego, CA, for Plaintiff-Appellant.

David A. Yost (argued and briefed), Delaware, OH, for Defendant-Appellee.

Before: KENNEDY, NELSON, and GODBOLD [*], Circuit Judges.

KENNEDY, Circuit Judge.

Plaintiff appeals the order of the District Court granting summary judgment in favor of defendant and dismissing its federal claims of trademark infringement and false designation and state law claims of trademark infringement and deceptive trade practices. The District Court based its decision on a finding as a matter of law that there is little likelihood that consumers will become confused between the origin of the goods protected by plaintiff's trademarks and defendant's goods by reason of its use of the marks complained of. For the following reasons, we REVERSE the order of the District Court and find that there are genuine issues of material fact regarding whether a likelihood of confusion exists.

I. Procedural History and Facts

Plaintiff owns a chain of thirteen retail stores scattered throughout the Northeast, selling new and used musical instruments and related equipment. In addition to its retail stores, plaintiff maintains a national catalog and mail order business, through which it also sells new and used instruments and equipment. Plaintiff further advertises in several major music industry magazines.

Plaintiff holds three related U.S. trademark/service mark registrations: Registration No. 1,359,864, issued on September 10, 1985, for the mark "Daddy's Junky Music Stores," for retail music store services; Registration No. 1,594,679, issued on May 1, 1990, for the mark "Daddy's," for retail music store services; and Registration No. 1,579,993, issued on January 30, 1990, for the mark "Daddy's," for musical instruments. Plaintiff has used these marks in connection with its store and catalog business since 1975. Plaintiff entitles its extensive catalog, replete with thousands of listed items and accompanying prices, as "Daddy's Junky Mail."

Plaintiff mails its catalog to over 1,490 residents of Ohio; 381 of these individuals live within thirty miles of the store of defendant. Between February and July, 1995, plaintiff had about $92,551 in catalog sales in Ohio. Although plaintiff does not operate a store in Ohio, it has pursued preliminary negotiations to purchase a Columbus, Ohio company with four musical instrument retail

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stores. One resident of Ohio, when requesting a catalog from plaintiff over the telephone, mentioned that he was familiar with plaintiff's store in Delaware, Ohio. The store to which the customer referred was actually the store of defendant.

Since 1993, defendant has existed under the laws of the State of Ohio as a retail store entitled "Big Daddy's Family Music Center" in Delaware, Ohio, selling musical instruments and related equipment. 1 Greg Houston, the owner of defendant, named the store by using his own nickname, "Big Daddy," which he acquired during the 1991 Chicago Blues Festival. Defendant sells primarily new electronic instruments, but it also sells some used instruments and some traditional band instruments.

Although defendant does not maintain a catalog or mail order business, it does send direct mailings to 2,212 people, nearly all of whom reside in Delaware or contiguous counties. These single-page mailings generally consist either of announcements of music-related events organized by the store for the community and its own commercial purposes, or of advertisements listing goods and their prices. Defendant spent $7,625.84 on advertising during the first six months of 1995, spending about a quarter of this sum on its direct mailings and the rest on local cable and newspaper ads and other expenses. In its advertisements and mailings, defendant presents itself as "Big Daddy's Family Music Center," "Big Daddy's Music," "Big Daddy's," and "Big Daddy." Defendant further markets itself by becoming involved in various local community causes.

Plaintiff filed its complaint in this case on March 29, 1995. In its complaint, plaintiff alleged that the use by defendant of its name "Big Daddy's Family Music Center" constitutes trademark infringement and false designation under the Lanham Act. See 15 U.S.C. §§ 1114 and 1125(a). The complaint further alleged a claim of state common law trademark infringement and a claim under the Deceptive Trade Practices Act ("DTPA") of Ohio. See OHIO REV.CODE ANN. § 4165.02 (Anderson 1991).

Plaintiff filed a motion for partial summary judgment on August 24, 1995, requesting judgment as a matter of law on its federal trademark infringement claim. Defendant in turn filed a motion for summary judgment against every claim in the complaint on August 31, 1995. Both parties essentially contested in their motions whether there is a likelihood that consumers will be confused between the marks of plaintiff and the names used by defendant.

On January 31, 1996, the District Court granted the summary judgment motion of defendant. See Daddy's Junky Music Stores v. Big Daddy's Family Music Ctr., 913 F.Supp. 1065 (S.D.Ohio 1996). The District Court found that, as a matter of law, there is no likelihood of confusion between the marks of the parties. Plaintiff filed this timely appeal of the judgment against it.

II. Standard

The parties contest the standard of review to be applied. Plaintiff asserts that we should review the factual findings of the District Court under a clearly erroneous standard, but review de novo the final legal conclusion of the District Court that those foundational facts collectively fail to demonstrate a likelihood of confusion. In contrast, defendant insists that the clearly erroneous standard applies to every ruling by the District Court, including the ultimate finding of no likelihood of confusion.

Both parties suggest an improper standard. Plaintiff is correct to the extent that a decision following a bench trial regarding likelihood of confusion constitutes a mixed question of fact and law which the Sixth Circuit reviews for clear error when examining the underlying factual findings, but reviews de novo when determining whether those findings overall reveal a likelihood of confusion. See, e.g., Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111, 1116 (6th Cir.1996). The District

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Court, however, did not conduct a bench trial; rather, it decided this case solely on the basis of cross-motions for summary judgment. We therefore apply an entirely de novo standard of review to this appeal, just as we would to any other grant of summary judgement. See WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir.1983)(traditional principles of summary judgment apply in trademark infringement cases); see also Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1104 (6th Cir.1991)(applying de novo standard of review to grant of summary judgment on federal trademark claim). We therefore may affirm the grant of summary judgment to defendant only if the record, when viewed in the light most favorable to plaintiff, contains no genuine issue of material fact. See, e.g., FED.R.CIV.P. 56(c); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986).

III. Federal Trademark Infringement Claim

Plaintiff alleges a claim of trademark infringement under the Lanham Act. See 15 U.S.C. § 1114. The touchstone of liability under § 1114 is whether the defendant's use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties. See, e.g., id. at § 1114(1); Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 361 (6th Cir.1984). When determining whether a likelihood of confusion exists, a court must examine and weigh the following eight factors:

  1. strength of the senior mark;

  2. relatedness of the goods or services;

  3. similarity of the marks;

  4. evidence of actual confusion;

  5. marketing channels used;

  6. likely degree of purchaser care;

  7. the intent of defendant in selecting the mark; and

  8. likelihood of expansion of the product lines.

    See, e.g., Frisch's Restaurants, Inc. v. Elby's Big Boy, Inc., 670 F.2d 642, 648 (6th Cir.1982)("Frisch I"). When applying these factors to a given case, a court must remember that

    [t]hese factors imply no mathematical precision, but are simply a guide to help determine whether confusion is likely. They are also interrelated in effect. Each case presents its own complex set of circumstances and not all of these factors may be particularly helpful in any given case. But a thorough and analytical treatment must nevertheless be attempted. The ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.

    Homeowners Group, 931 F.2d at 1107 (footnote omitted).

    1. Strength of the marks

    "The strength of a mark is a factual determination of the mark's distinctiveness. The more distinct a mark, the more likely is the confusion resulting from its infringement, and therefore, the more protection it is due." Frisch's Restaurant, Inc. v. Shoney's Inc., 759 F.2d 1261, 1264 (6th Cir.1985)("Frisch II"). A mark is strong and distinctive when "the...

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