Ice Cold Auto Air v. Cold Air & Accessories

• Decision Date: 07 June 1993
• Docket Number: No. 93-149-CIV-ORL-22.,93-149-CIV-ORL-22.
• Citation: 828 F. Supp. 925
• Parties: ICE COLD AUTO AIR OF CLEARWATER, INC., a Florida corporation d/b/a Ice Cold Auto Air; Ice Cold Auto Air, a Florida corporation d/b/a Ice Cold Auto Air; Oakridge Auto Air, Inc., a Florida corporation d/b/a Ice Cold Auto Air; Ice Cold Auto Air of Daytona, Inc., a Florida corporation d/b/a Ice Cold Auto Air; CASC, Inc., a Florida corporation d/b/a Ice Cold Auto Air d/b/a Muffler City; Colonial Auto Air, Inc., a Florida corporation d/b/a Ice Cold Auto Air; Florida Auto Air, Inc., a Florida corporation d/b/a Ice Cold Auto Air, Plaintiffs, v. COLD AIR & ACCESSORIES, INC., a Florida corporation d/b/a Cold Air & Accessories, Inc.; Lawrence A. Powalisz, an individual; Fioravanti Enterprises, Inc., a Florida corporation d/b/a Cold Air & Accessories, Inc.; C & L Auto Air, Inc., a Florida corporation d/b/a Cold Air & Accessories, Inc. d/b/a Muffler Man, Defendants.
• Court: U.S. District Court — Middle District of Florida

828 F. Supp. 925

ICE COLD AUTO AIR OF CLEARWATER, INC., a Florida corporation d/b/a Ice Cold Auto Air; Ice Cold Auto Air, a Florida corporation d/b/a Ice Cold Auto Air; Oakridge Auto Air, Inc., a Florida corporation d/b/a Ice Cold Auto Air; Ice Cold Auto Air of Daytona, Inc., a Florida corporation d/b/a Ice Cold Auto Air; CASC, Inc., a Florida corporation d/b/a Ice Cold Auto Air d/b/a Muffler City; Colonial Auto Air, Inc., a Florida corporation d/b/a Ice Cold Auto Air; Florida Auto Air, Inc., a Florida corporation d/b/a Ice Cold Auto Air, Plaintiffs, v. COLD AIR & ACCESSORIES, INC., a Florida corporation d/b/a Cold Air & Accessories, Inc.; Lawrence A. Powalisz, an individual; Fioravanti Enterprises, Inc., a Florida corporation d/b/a Cold Air & Accessories, Inc.; C & L Auto Air, Inc., a Florida corporation d/b/a Cold Air & Accessories, Inc. d/b/a Muffler Man, Defendants.

No. 93-149-CIV-ORL-22.

United States District Court, M.D. Florida, Orlando Division.

June 7, 1993.^*

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Terry C. Young, Lowndes, Drosdick, Doster, Kantor & Reed, P.A., Orlando, FL, for plaintiffs.

Marc P. Ossinsky, Marc P. Ossinsky, P.A., Winter Park, FL, for defendants.

ORDER

CONWAY, District Judge.

I. INTRODUCTION

On October 10, 1983, Plaintiff Ice Cold Auto Air of Clearwater, Inc. and Plaintiff Ice Cold Auto Air, Inc. registered the following mark in the State of Florida:

ICE COLD AUTO AIR

The words "Ice Cold Auto Air" are flanked by a drawing of a penguin on the right and an igloo on the left.

The mark was registered as both a trademark and a servicemark, and the registration specified that the mark was "to be used in connection with the installation and after market repair of automotive air conditioning systems."

On February 26, 1991, Plaintiff Ice Cold Auto Air of Clearwater, Inc. registered with the United States Patent and Trademark Office two different servicemarks. Plaintiff's first registration, for "ICE COLD AIR," provides that "no claim is made to the exclusive right to use `air', apart from the mark as shown." This first registration reflects that the servicemark "ICE COLD AIR" was first used January 31, 1990. Plaintiff's second registration for "ICE COLD AUTO AIR," provides that "no claim is made to the exclusive right to use `auto air', apart from the mark as shown." The second registration reflects that the servicemark "ICE COLD AUTO AIR" was first used March 31, 1979. Both registrations provide:

FOR: INSTALLATION AND REPAIR OF AUTOMOBILE AIR CONDITIONING SYSTEMS AND PERFORMING OTHER GENERAL AUTO AIR REPAIRS.

According to the Complaint, Plaintiff Ice Cold Auto Air of Clearwater, Inc. gave Plaintiff Ice Cold Auto Air, Inc. an exclusive license to use the second federally registered servicemark, "Ice Cold Auto Air." Plaintiff Ice Cold Auto Air, Inc., in turn, granted sublicenses to use the "Ice Cold Auto Air" mark to each of the other Plaintiffs in this action,¹ including Plaintiff Oakridge Auto Air, Inc., Plaintiff Ice Cold Auto Air of Daytona, Inc., Plaintiff CASC, Inc., Plaintiff Colonial Auto Air, Inc.² and Plaintiff Florida Auto Air, Inc. Each of Plaintiffs does business as Ice Cold Auto Air,³ and Plaintiffs hereinafter collectively shall be referred to as "ICAA." According to the Complaint, ICAA owns and operates stores involving goods and services connected with the installation and repair of automotive air conditioning services. Although ICAA operates stores in Clearwater, Orlando, Daytona Beach and Fern Park, the issues in this case involve primarily stores located in the Orlando area.

Defendant Lawrence A. Powalisz was formerly the general manager and shareholder of two of the Plaintiffs in this case.⁴ According to the Complaint, Mr. Powalisz and the two Plaintiff corporations ended their relationship in early February 1992, and then Mr. Powalisz formed Defendant Cold Air & Accessories, Inc. less than two months later. Also named as Defendants are Fioravanti Enterprises, Inc. and C & L Auto Air, Inc., both of which do business as Cold Air & Accessories.⁵

On February 2, 1993, ICAA filed a Complaint in state court setting forth the following claims:

Count I: federal trademark infringement under 15 U.S.C. § 1114(1)

Count II: use of false designation of origins, false descriptions and false representations (i.e., trade dress infringement) under 15 U.S.C. § 1125(a)

Count III: common law unfair competition

Count IV: common law palming off

Count V: state trademark dilution under Florida Statutes § 495.151

Count VI: violation of a non-compete agreement under Florida Statutes § 542.33

Count VII: violation of the Uniform Trade Secrets Act under Florida Statutes § 688.001.

ICAA also sought temporary injunctive relief. After a two-hour hearing on the temporary injunctive relief requested by ICAA on February 9, 1993, the state court scheduled a second hearing for March 9, 1993. On February 26, 1993, Defendant removed this case to federal court. The Court held a hearing on ICAA's motion for preliminary injunction on April 12, 1993.

II. PRELIMINARY INJUNCTION STANDARD

A movant for a temporary restraining order or preliminary injunction must show:

(1) a substantial likelihood that he will eventually prevail on the merits; (2) that he will suffer irreparable injury unless the injunction issues; (3) that the threatened injury to the movant outweighs whatever damage the proposed injunction may cause the opposing party; and (4) that the injunction, if issued, would not be adverse to the public interest.

Zardui-Quintana v. Richard, 768 F.2d 1213, 1216 (11th Cir.1985) (citation omitted).

III. FEDERAL LAW: INFRINGEMENT OF A MARK

The key issue in determining whether a preliminary injunction should issue on the infringement claim⁶ is whether a plaintiff is likely to prevail on the merits.

a. Threshold Inquiry

The first issue the Court must address is whether the mark is distinctive enough to deserve protection under the Trademark Act of 1946 (commonly known as the Lanham Act), 15 U.S.C. § 1051 et seq., specifically § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). Freedom Sav. and Loan Ass'n v. Way, 757 F.2d 1176 n. 1 (11th Cir. 1985), cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1985). See also, Discount Muffler Shop, Inc. v. Meineke Realty Corp., 535 F.Supp. 439, 444 (N.D.Ohio, 1982) (citing Vision Center v. Opticks, Inc., 596 F.2d 111 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668, 62 L.Ed.2d 646 (1980)). There are four categories of distinctiveness in which a mark may be classified:

In ascending order they are: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. The demarcation between each category is more blurred than it is definite. A term which suggests the basic nature of the service is generic. The term "Milk Delivery" is an example of a generic service mark for a hypothetical milk delivery service. A generic term is typically incapable of achieving service mark protection because it has no distinctiveness. A descriptive term merely identifies a 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 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 merely descriptive. However, if the personal name mark acquires secondary meaning, it is afforded the strength of an inherently distinctive mark. Marks which are descriptive of geographic location of the source of the service are treated in the same manner as personal name marks. A suggestive term suggests the characteristics of the service and requires an effort of the imagination by the consumer in order to be understood 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 for it to be protectable. `An arbitrary or fanciful term bears no relationship to the service.' 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.

Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F.2d 1519, 1522-23 (11th Cir.1991) (footnotes omitted), cert. denied, ___ U.S. ___, 112 S.Ct. 639, 116 L.Ed.2d 657 (1991).

As the Eleventh Circuit made clear in Investacorp, the categorization of a term as generic, suggestive or arbitrary typically resolves the issue of whether a mark is protectable. By contrast, the categorization of a mark as descriptive is just the first step in a two-stage inquiry. A term that is descriptive may still be protectable if it has acquired secondary meaning. Secondary meaning is the connection in the consumer's mind between the mark and the provider of the product or service. Investacorp, 931 F.2d at 1525. "A high degree of proof is necessary to establish secondary meaning for a descriptive term which suggests the basic nature of the product or service." Am. Television and Communications Corp. v. Am. Communications and Television, Inc., 810 F.2d 1546, 1549 (11th Cir.1987) (conducting the threshold inquiry in a case alleging unfair competition through infringement of a trade name). A plaintiff may meet its burden by consumer survey evidence. Investacorp., 931 F.2d at 1525. Absent survey evidence, the factors to consider in whether a mark 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 a plaintiff to promote a conscious connection in the public's mind between the mark and the plaintiff's product or service. See Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 (11th Cir.1984) (addressing trade...