Vision Center v. Opticks, Inc.

• Decision Date: 23 May 1979
• Docket Number: No. 78-2867,78-2867
• Citation: 202 U.S.P.Q. 333,596 F.2d 111
• Parties: The VISION CENTER, Plaintiff-Appellee, Cross Appellant, v. OPTICKS, INC., Will Ross, Inc. and G. D. Searle & Co., Defendants-Appellants, Cross Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 111

596 F.2d 111

202 U.S.P.Q. 333

The VISION CENTER, Plaintiff-Appellee, Cross Appellant, v. OPTICKS, INC., Will Ross, Inc. and G. D. Searle & Co.,

Defendants-Appellants, Cross Appellees.

No. 78-2867.

United States Court of Appeals,

Fifth Circuit.

May 23, 1979.

Jones, Walker, Weachter, Poitevent, Carrere & Denegre, Harry S. Hardin, III, Ewell E. Eagan, Jr., New Orleans, La., for defendants-appellants, cross appellees.

Deutsch, Kerrigan & Stiles, William W. Messersmith, III, Lloyd N. Shields, New Orleans, La., for plaintiff-appellee, cross appellant.

Appeals from the United States District Court for the Eastern District of Louisiana.

Before THORNBERRY, AINSWORTH and MORGAN, Circuit Judges.

LEWIS R. MORGAN, Circuit Judge:

This is an expedited appeal from an order of the district court granting a preliminary injunction which prevents Opticks, Inc., ¹ a Texas corporation, from using the trade name "Pearle Vision Center" in the New Orleans market area. The Vision Center, ² a Louisiana partnership, claimed that Opticks' proposed use of the words "vision" and "center" constituted trade name infringement and unfair competition. The action was originally filed in state court and was removed to federal court on the basis of diversity jurisdiction. The district court ³ found that the name "vision center" was either suggestive of the partnership's services or, if descriptive, had acquired a secondary meaning. Moreover, the court concluded that Opticks' conduct was tantamount to fraud. Opticks insists that these findings are clearly erroneous and argues that the district court erred in granting a preliminary injunction affording trade name protection to the phrase "vision center." We agree and therefore reverse the district court.

I.

The phrase "vision center" was first used in the New Orleans area in 1955 when Dr. Ellis Pailet, a New Orleans optometrist, adopted it as the name of his sole proprietorship. Subsequently, Dr. Pailet hired additional optometrists and in 1967 formed a partnership which continued, without interruption, to use "The Vision Center" name. That partnership is the plaintiff in this action. The partnership has six locations in the New Orleans area, all operating under the name "The Vision Center."

Dr. Pailet first registered the trade name with the Secretary of State of Louisiana under the Louisiana Trademark Law on April 19, 1955. ⁴ That registration was renewed in March 1965 and again in February 1975. Over the years, the partnership engaged in the limited advertising permitted under the ethics of the optometric profession and, with a change in the law in 1978, began media advertising in newspapers, magazines, and on the radio.

In 1969, Opticks acquired a New York Company which had dispensed optical goods and services since 1952 under the name "Vision Center." Opticks then began to operate similar stores using this name and, at present, operates a national chain of retail outlets for optical services and goods under the trade names "Vision Center," "Pearle Vision Center," "Rogers Vision Center," and "Hillman-Kohan Vision Center." On July 28, 1970, Will Ross, Inc. registered the words "vision center" as both a service mark and a trademark on the principal register of the U. S. Patent Office. Will Ross later assigned its rights in these marks to Opticks.

During 1977 Opticks formulated a plan to open three outlets in the New Orleans area under the name "Pearle Vision Center." ⁵ Opticks planned to identify its stores by a large green exterior sign showing the words "Pearle Vision Center" in large white letters, with "Pearle" being the largest word. In promoting its new stores, Opticks also planned to use its national advertising program and materials, including television and radio commercials, newspaper advertisements, and direct mail flyers. Although a percentage of Opticks' consumer-oriented advertising materials used in other parts of the country employs the words "Vision Center," without an identifying prefix, the advertising slated for use in New Orleans always used the words "Pearle Vision Center." ⁶ The partnership brought suit, and on August 25, 1978, the district court entered a preliminary injunction enjoining Opticks from using any combination of the words "vision" and "center" in the New Orleans area.

II.

The granting or denying of a preliminary injunction rests in the sound discretion of the district court, and its decision will be overturned only for abuse. Johnson v. Radford, 449 F.2d 115 (5th Cir. 1971). A preliminary injunction is an extraordinary remedy, however, and the boundaries within which the district court must exercise its discretion are clearly marked. State of Texas v. Seatrain International, S.A., 518 F.2d 175 (5th Cir. 1975); Canal Authority v. Callaway, 489 F.2d 567 (5th Cir. 1974). The district court should issue the injunction only if the moving party clearly satisfies what we have recognized as the four prerequisites to such relief. ⁷ These are: (1) a substantial likelihood that the movant will ultimately prevail on the merits; (2) a showing that the movant will suffer irreparable injury unless the injunction issues; (3) proof that the threatened injury to the movant outweighs whatever damage the proposed injunction may cause the opposing party; and (4) a showing that the injunction, if issued, would not be adverse to the public interest. Seatrain, supra, 518 F.2d at 179, and cases cited therein. The remedy should not be granted unless the movant carries the burden of persuasion concerning all four of these criteria.

Because removal to federal court was premised entirely upon diversity of citizenship, we look to state substantive law in assessing the merits of both the trade name infringement and unfair competition claims. The fact that Opticks' Lanham Act registration may be a defense to a state trade name infringement claim affords no basis for original federal question jurisdiction. ⁸ Gully v. First Nat'l Bank, 299 U.S. 109, 57 S.Ct. 96, 81 L.Ed. 70 (1936); La Chemise Lacoste v. Alligator Co., 506 F.2d 339 (3rd Cir. 1974). Although we apply Louisiana law, we note that both parties have relied on federal precedents as announcing generally accepted principles of substantive trademark law. Except where we discern a difference between local law and the general law on the subject, we will also employ relevant federal decisions. See Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 113 n. 1, 59 S.Ct. 109, 83 L.Ed. 73 (1938).

III.

The threshold question in any trade name infringement action is whether the word or phrase was initially registerable or protectable. ⁹ American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 10 (5th Cir. 1974). To assist in making this determination, the courts have traditionally divided the universe of potential trade names into various categories of legal protectability. A trade name is generally classified as being either (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. ¹⁰ Miller Brewing Co. v. G. Heilman Brewing Co., 561 F.2d 75, 79 (7th Cir. 1977), Cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976); American Heritage, supra, 494 F.2d at 11. Although these categories are meant to be mutually exclusive, they are spectrum-like and tend to merge imperceptibly from one to another. For this reason, they are difficult to define and, quite frequently, difficult to apply. Miller Brewing Co. v. G. Heilman Brewing Co., supra, 561 F.2d at 79.

A generic term is the name of a particular genus or class of which an individual article or service is but a member. Most courts hold that a generic term is incapable of achieving trade name protection. A descriptive term ¹¹ identifies a characteristic or quality of an article or service and, though ordinarily not protectable, may become a valid trade name if it acquires a secondary meaning. A suggestive term suggests, rather than describes, a characteristic of the goods or services and requires an effort of the imagination by the consumer in order to be understood as descriptive. General Shoe Corp. v. Rosen, 111 F.2d 95, 98 (4th Cir. 1940). A suggestive term requires no proof of secondary meaning in order to receive trade name protection. An arbitrary or fanciful term bears no relationship to the product or service and is also protectable without proof of secondary meaning.

The partnership urges, and the district court found, that "The Vision Center" name is suggestive and therefore entitled to full trade name protection without proof of secondary meaning. We are convinced, however, that the trade name "Vision Center" is descriptive ¹² of a clinic providing optical goods and services, and we hold that the partnership has failed to prove secondary meaning as required under Louisiana law. For these reasons, we reverse.

We begin with the proposition that "(t)he concept of descriptiveness must be construed rather broadly" 3 R. Callman, The Law of Unfair Competition, Trademarks and Monopolies, § 70.2 (3d ed. 1969). Whenever a word or phrase naturally directs attention to the qualities, characteristics, effect, or purpose of the product or service, it is descriptive and cannot be claimed as an exclusive trade name. Id. at § 71.1. Webster's Third New International Dictionary (1964) ¹³ defines the word "vision" as

the act or power of seeing; visual sensation or the capacity for it.

The word "center" means

a concentration of requisite facilities for an activity, pursuit, or interest along with various adjunct conveniences (e. g. shopping center, medical center, amusement center).

Used in combination, the words imply a place where there is a concentration of requisite facilities relating to the power of seeing or the capacity for it. Because the name does not require "imagination, thought and perception to reach a conclusion as to the nature of the goods" or...