UNIVERSAL MONEY CENTERS v. AMERICAN TEL. & TEL., Civ. A. No. 90-2201-O.

• Decision Date: 16 June 1992
• Docket Number: Civ. A. No. 90-2201-O.
• Citation: 797 F. Supp. 891,24 USPQ 2d 1292
• Court: U.S. District Court — District of Kansas
• Parties: UNIVERSAL MONEY CENTERS, INC., Plaintiff, v. AMERICAN TELEPHONE & TELEGRAPH CO., Defendant.

797 F. Supp. 891

24 USPQ 2d 1292

UNIVERSAL MONEY CENTERS, INC., Plaintiff, v. AMERICAN TELEPHONE & TELEGRAPH CO., Defendant.

Civ. A. No. 90-2201-O.

United States District Court, D. Kansas.

June 16, 1992.

Terri L. Bezek, James R. Goheen, McAnany, Van Cleave & Phillips, P.A., Kansas City, Kan., Joseph B. Bowman, J. David

Wharton, Kokjer, Kircher, Bradley, Wharton, Bowman & Johnson, Kansas City, Mo., for plaintiff.

Patrick J. Stueve, Kirk T. May, Stinson, Mag & Fizzell, Kansas City, Mo., for defendant.

MEMORANDUM AND ORDER

EARL E. O'CONNOR, District Judge.

This matter is before the court on defendant American Telephone & Telegraph Co.'s ("AT & T's") motion for summary judgment (Doc. # 190). For the reasons set forth below, the motion is granted.

I. Background.

Plaintiff Universal Money Centers, Inc. ("UMC"), is a Missouri corporation with its principal offices in Shawnee Mission, Kansas. UMC provides electronic banking services and contracts with various financial institutions to issue plastic "debit" cards, similar in appearance to credit cards, which are used for accessing automatic teller machines ("ATM's") and for making retail purchases at selected locations.¹ UMC filed this action against defendant AT & T claiming trademark infringement² and unfair competition as a result of AT & T's use of the term "Universal" to describe its combination telephone and retail credit card.³

At the time it filed its complaint, plaintiff UMC also filed a motion for preliminary injunction in which it sought to enjoin defendant AT & T from using the term "Universal." After conducting a hearing on August 6-7, 1990, the court, in a written memorandum and order, denied plaintiff's motion for preliminary injunction. See Universal Money Centers, Inc. v. American Telephone & Telegraph Co., No. 90-2201, 1990 WL 136826 (D.Kan., August 30, 1990).

Because the material facts have not changed substantially since the time of the court's August 30, 1990 memorandum and order, the court finds it unnecessary to recite in detail the factual background of this case. Rather, the court will rely heavily on the lengthy recitation of facts contained in the previous memorandum and order, and, when necessary, will refer to additional facts developed during discovery.

II. Standards for summary judgment.

A moving party is entitled to summary judgment only when the evidence indicates that no genuine issue of material fact exists. Fed.R.Civ.P. 56(c); Maughan v. SW Servicing, Inc., 758 F.2d 1381, 1387 (10th Cir.1985). The requirement of a "genuine" issue of fact means that the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). The moving party has the burden of showing the absence of a genuine issue of material fact. This burden "may be discharged by `showing' — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 2554, 91 L.Ed.2d 265 (1986). "A party opposing a properly supported motion for summary judgment may not rest on mere allegations or denials of his pleading, but must set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 256, 106 S.Ct. at 2514. Thus, the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment. Id. The court must consider factual inferences tending to show triable issues in the light most favorable to the party opposing the motion. Bee v. Greaves, 744 F.2d 1387, 1396 (10th Cir.1984), cert. denied, 469 U.S. 1214, 105 S.Ct. 1187, 84 L.Ed.2d 334 (1985).

III. Discussion.

Defendant AT & T moves for summary judgment on four issues: (1) corrective advertising; (2) punitive damages; (3) attorney fees; and (4) likelihood of confusion. Because the fourth issue, likelihood of confusion, is dispositive of this action, the court will review only that issue.

In the previous order, the court concluded that plaintiff's marks were valid and protectable under the Lanham Act. In so doing, the court noted that: (1) the defendant did not contest the validity of plaintiff's marks; and (2) the defendant did not dispute the fact that the mark "UNIVERSAL MONEY CARD" has become incontestable under 15 U.S.C. §§ 1065 and 1115(b). Having reviewed the evidence presented by both parties, the court finds no reason to depart from those conclusions.⁴

Notwithstanding the fact that plaintiff's marks are valid and protectable, plaintiff must "still show likelihood of confusion as an element of its infringement claims." Coherent, Inc. v. Coherent Technologies, Inc., 935 F.2d 1122, 1124 (10th Cir.1991); see GTE Corp. v. Williams, 904 F.2d 536, 539 (10th Cir.1990), cert. denied, ___ U.S. ___, 111 S.Ct. 557, 112 L.Ed.2d 564 (1990). Specifically, to prevail on its infringement claims, UMC must prove that AT & T's use of the term "Universal" creates a likelihood of confusion among consumers as to the source of the "AT & T Universal Card." Alternatively, UMC could prove "reverse confusion," that is, that AT & T's use of the term "Universal" creates a likelihood of confusion among consumers as to the source of UMC's products.⁵ See Big O Tire Dealers v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 1371-72 (10th Cir.1977), cert. dismissed, 434 U.S. 1052, 98 S.Ct. 905, 54 L.Ed.2d 805 (1978).

Although likelihood of confusion is a question of fact, Coherent, 935 F.2d at 1125, "summary judgment is appropriate where there is no genuine dispute about the facts material to the likelihood of confusion analysis, and those facts could lead to only one reasonable conclusion." Lang v. Retirement Living Publishing Co., Inc., 759 F.Supp. 134, 137 (S.D.N.Y.1991) (Lang I), aff'd, 949 F.2d 576, 582 (2d Cir.1991); see also Boston Athletic Ass'n. v. Sullivan, 867 F.2d 22, 24 (1st Cir.1989); Warner Bros. v. American Broadcasting Cos., 720 F.2d 231, 246 (2d Cir.1983).

The resolution of the likelihood of confusion issue requires the consideration of the following factors:

(a) the degree of similarity between the designation and the trade-mark or trade name in

(i) appearance;

(ii) pronunciation of the words used;

(iii) verbal translation of pictures or designs involved;

(iv) suggestion;

(b) the intent of the actor in adopting the designation;

(c) the relation in use and manner of marketing between the goods or services marketed by the actor and those marketed by the other;

(d) the degree of care likely to be exercised by purchasers.

Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 925 (10th Cir.1986) (Beer Nuts II). These factors are not exhaustive; the facts of a particular case may require consideration of other additional variables. Id.

A. Similarity of the marks.

The similarity of the marks is tested on three levels as encountered in the marketplace: sight, sound and meaning. Beer Nuts I, 711 F.2d at 940. In considering the characteristics of the marks, similarities weigh more heavily than differences. Id. Further, in evaluating similarity, the court must not engage in a side-by-side comparison. Id. at 941. Rather, "the court must determine whether the alleged infringing mark will be confusing to the public when singly presented." Id.

In the memorandum and order denying plaintiff's motion for preliminary injunction, the court made the following findings:

The court finds that the degree of similarity between UMC's registered trademarks and the mark "AT & T Universal Card" is minimal. First, although both the AT & T and the UMC marks use the word "universal," the court believes that the dominant portion of each mark is different. Specifically, the court finds that the dominant portion in each of the UMC marks is the word "UNIVERSAL." In contrast, the court finds that the dominant portion of AT & T's mark is the term "AT & T." Second, the marks have different sounds and cadences. Third, the court notes that there are significant differences in the overall design of the two cards, including the lettering styles, logos, and color schemes. Moreover, a significant number of the cards issued by UMC display the name of an affiliate bank on the front of the card, thus further differentiating such cards from the "AT & T Universal Card." Finally, although there was no evidence presented on this matter, the court does not believe that the two marks convey the same idea or stimulate the same mental reaction. Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 74 (10th Cir.1958).

Universal Money, No. 90-2201 (D.Kan., August 30, 1990).

Viewing the evidence in the light most favorable to the plaintiff, the court finds no reason to depart from its previous findings concerning the similarity of the marks. In short, the court finds that reasonable jurors could only conclude that the degree of similarity between the two marks is minimal and that there is little chance that consumers will confuse the marks.

B. Intent of AT & T in adopting the term "Universal."

In Beer Nuts I, the Tenth Circuit discussed at length the "intent" factor:

"Intent on the part of the alleged infringer to pass off its goods as the product of another raises an inference of likelihood of confusion...." (citations omitted). "Proof that a defendant chose a mark with the intent of copying plaintiff's mark, standing alone, may justify an inference of confusing similarity." (citation omitted). One who adopts a mark similar to another already established in the marketplace does so at his peril, (citation omitted), because the court presumes that he "can accomplish his purpose: that is, that the public will be deceived." (Citations omitted.) All doubts must be resolved against him. (Citation omitted.)

711 F.2d at 941.

Here, the record is void of any evidence indicating that AT & T chose the term "Universal" with the intent of...