Blau Plumbing, Inc. v. S.O.S. Fix-It, Inc.

• Citation: 228 USPQ 519,781 F.2d 604
• Decision Date: 14 January 1986
• Docket Number: INC,No. 85-2475,FIX-I,A-AAAABAAB,85-2475
• Parties: BLAU PLUMBING, INC., Plaintiff-Appellant, v. S.O.S., d/b/a's Root Rodders, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

Page 604

781 F.2d 604

228 U.S.P.Q. 519

BLAU PLUMBING, INC., Plaintiff-Appellant, v. S.O.S. FIX-IT, INC., d/b/a A-AAAABAAB's Root Rodders Defendant-Appellee.

No. 85-2475.

United States Court of Appeals, Seventh Circuit.

Argued Dec. 2, 1985.

Decided Jan. 14, 1986.

Richard S. Marcus, Godfrey & Kahn, Milwaukee, Wis., for plaintiff-appellant.

James E. Bauman, Michael, Best & Friedrich, Milwaukee, Wis., for defendant-appellee.

Before BAUER and POSNER, Circuit Judges, and GRANT, Senior District Judge. ^*

POSNER, Circuit Judge.

The parties to this trademark suit are competing providers of sewer and drain cleaning services to consumers in Milwaukee. Blau, the plaintiff, alleges that S.O.S., the defendant, infringed Blau's "trade dress" in a "location box" which appears in the plaintiff's advertisement in the Yellow Pages, thereby violating section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a). A pendent claim charges violation of Wisconsin's false-advertising law. The district judge, finding no merit in either claim, granted S.O.S.'s motion for summary judgment, and Blau has appealed.

Here is Blau's advertisement:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The rectangle divided into segments labeled "North," "South," "East," and "West," with street intersections and phone numbers in each section, is the location box. Contrary to appearances, the intersections are not addresses of Blau service locations, and the different phone numbers ring in the same place, from which Blau dispatches its trucks to consumers who phone in for service. The location box divides the city into quadrants identified not only by compass point but also by major intersections, known to the consumer. The consumer glances at the box, recognizes from his proximity to one of the intersections which quadrant he is in, and calls the corresponding phone number for service. Blau may be trying to create the illusion that it has dispatch points at each intersection, thus assuring prompt service; if so it is deceiving consumers; but this point has not been pursued, no doubt because S.O.S. is engaged in the same little deception.

Here now is S.O.S.'s advertisement:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Again there is a location box, and it is the same size as Blau's and has the same directions in the same order reading from left to right (though it is the order that any person asked to name the cardinal points of the compass would use) and the same number of intersections. Moreover, five of the intersections are identical to Blau's, while several others have one street or avenue in common with an intersection in Blau's box. S.O.S. lists only one phone number but again the impression is created of multiple dispatch points. S.O.S. does not deny having copied Blau's location box and there is some, though weak, evidence that some consumers have confused the two firms, which are as we have said competitors and appear in the same section of the Yellow Pages.

Blau insists that it is claiming an infringement of "trade dress," not "trademark," but there is probably no substantive legal difference between these terms, and certainly none that helps Blau. It is of course true that section 43(a) of the Lanham Act is not limited to trademark infringement. In fact it does not mention trademarks. It provides a remedy for trademark infringement only because that is a type of unfair competition, and it provides a remedy for other types as well. "Trade dress," a commonly used term in the law of unfair competition, denotes the form in which a producer presents his brand to the market; thus a label, a package, even the cover of a book might be trade dress. See, e.g., 1 McCarthy, Trademarks and Unfair Competition Sec. 8:1 (2d ed. 1984). If a seller adopts a trade dress confusingly similar to a competitor's, this is unfair competition actionable under section 43(a). See id. at pp. 284-85.

Because the statute is not limited to trademark infringement and in any event protects unregistered (common law) trademarks as well as federally registered trademarks, courts have generally not thought it important whether trade dress is a form of trademark; but it is, as Blau implicitly acknowledges by its heavy reliance on Chevron Chemical Co. v. Voluntary Purchasing, Inc., 659 F.2d 695 (5th Cir.1981). The plaintiff's trade dress in that case consisted of its registered trademark (the brand name) plus the distinctive design that formed the background on which the name was printed on the package in which the plaintiff's product was sold to the consumer. Hence the suit was essentially one to enforce a common law trademark in an ensemble consisting of the trade name and the background design. The court of appeals applied the principles of trademark law, see id. at 702, prompting one commentator to remark that the case "brought trade dress cases into the mainstream of trademark law." 1 McCarthy, supra, at 287. See also CPG Products Corp. v. Pegasus Luggage, Inc., 776 F.2d 1007, 1011-12 (Fed.Cir.1985); University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1541 and n. 14 (11th Cir.1985); LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71, 75 (2d Cir.1985); Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 425 n. 3 (5th Cir.1984); John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980-81 and n. 25 (11th Cir.1983).

And high time. Labels should not determine rights. It would not do to give Blau more protection for its location box conceived as "trade dress" than it would be entitled to if the box were called a common law trademark. Some cases, it is true, hold that in a trade dress case the plaintiff must always prove secondary meaning, rather than just when the trade dress is descriptive, which is the rule in a conventional trademark case. See, e.g., Vibrant Sales, Inc. v. New Body Boutique, Inc., 652 F.2d 299, 303-04 (2d Cir.1981). But these holdings may just reflect the fact that trade dress may be undistinctive without being descriptive; in such a case "secondary meaning" may be a synonym for "distinctive." If any of these cases stands for the broader proposition that secondary meaning must be shown even if the trade dress is a distinctive, identifying mark, then we think they are wrong, for the reasons explained by Judge Rubin for the Fifth Circuit in Chevron. At all events, decisions that impose a heavier burden of proof on plaintiffs in trade dress cases than in conventional trademark cases cannot help Blau.

The goal of trademark protection is to allow a firm to affix an identifying mark to its product (or service) offering that will, because it is distinctive and no competitor may use a confusingly similar designation, enable the consumer to discover in the least possible amount of time and with the least possible amount of head-scratching whether a particular brand is that firm's brand or a competitor's brand. W.T. Rogers Co. v. Keene, 778 F.2d 334 (7th Cir.1985); Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423 (7th Cir.1985). The mark need not be the name of the brand; it need not even be a word; it can be a slogan, a symbol, a combination of words and symbols, an ornamental feature, a distinctive shape, or something else intended to remind the consumer of the brand. See 1 McCarthy, supra, ch. 7.

But it is no purpose of trademark protection to allow a firm to prevent its competitors from informing consumers about the attributes of the competitors' brands. That is why trademarks that are fanciful (i.e., made up, like "Kodak" or "Exxon"), or arbitrary (e.g., "Black & White" scotch), or suggestive (e.g., "Business Week," "Coppertone") are favored, why generic words (names of products rather than brands--"airplane," for example, or "decaffeinated coffee") may not be trademarked at all, and why descriptive words (e.g., "bubbly" champagne) may be trademarked only if they have acquired secondary meaning, that is, only if most consumers have come to think of the word not as descriptive at all but as the name of the product ("Holiday Inn," for example). See the helpful discussion in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir.1976) (Friendly, J.). To allow a firm to use as a trademark a generic word, or a descriptive word still understood by the consuming public to describe, would make it difficult for competitors to market their own brands of the same product. Imagine being forbidden to describe a Chevrolet as a "car" or an "automobile" because Ford or Chrysler or Volvo had trademarked these generic words, or an after-shave lotion as "bracing" because the maker of one brand of aftershave lotion had trademarked this descriptive word.

Thus if Blau adopted as its trademark the slogan, "We serve all of Milwaukee," it would have to prove secondary meaning. For that is a descriptive slogan, which anyone who serves all of Milwaukee should be free to use unless (improbably) consumers came to identify the slogan with Blau Plumbing Company. Otherwise it would be very difficult for city-wide competitors of Blau to convey to the consumer the fact that they, too, provide service city-wide. Maybe there is a class of slogans so indispensably informative that, by analogy to generic words, i.e., product names, they can never be appropriated. We need not pursue that question here. On the trademarking of slogans generally see 1 McCarthy, supra, Sec. 7:5.

The location box is a schematic, graphic, or metaphoric representation of the hypothetical slogan. Instead of Blau's saying that it serves all of Milwaukee it says that it serves north, south, east, and west--all the cardinal points of the compass--and it gives intersections so that the consumer can figure out which quadrant he is in. Though schematic, it is descriptive; it amounts to saying, here are the four parts of Milwaukee--we serve all four. Competitors should be free to say, we serve the same four parts. And they should be free to say it in a...