Wynn Oil Co. v. Thomas

• Decision Date: 24 February 1988
• Docket Number: No. 86-5824,86-5824
• Citation: 839 F.2d 1183,5 USPQ2d 1944
• Parties: WYNN OIL COMPANY and Classic Car Wash, Inc., Plaintiffs-Appellants, v. Michael F. THOMAS, Defendant-Appellant.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 1183

839 F.2d 1183

5 U.S.P.Q.2d 1944

WYNN OIL COMPANY and Classic Car Wash, Inc., Plaintiffs-Appellants, v. Michael F. THOMAS, Defendant-Appellant.

No. 86-5824.

United States Court of Appeals, Sixth Circuit.

Submitted Dec. 1, 1987.

Decided Feb. 24, 1988.

Robert O. Guillot, Hamrick, Hoffman, Guillot, Kazubowski, San Jose, Cal., John J. Mulrooney, Memphis, Tenn., Claude A.S. Hamrick, Rosenblum, Parrish & Bacigalupi, San Jose, Cal., David H. Jaffer, for plaintiffs-appellants.

Floyd R. Hodge, Knoxville, Tenn., for defendant-appellant.

Before LIVELY, Chief Judge; KENNEDY, Circuit Judge; PECK, Senior Circuit Judge.

CORNELIA G. KENNEDY, Circuit Judge.

Appellants Wynn Oil Company ("Wynn") and Classic Car Wash, Inc. ("CCWI") brought this action against appellee Michael Thomas alleging federal trade mark infringement under 15 U.S.C. Sec. 1114; federal unfair competition under 15 U.S.C. Sec. 1125(a); and trademark dilution and injury to business reputation under the Tennessee Code, Sec. 47-25-512. After a bench trial, the court entered judgment for Thomas on the infringement, unfair competition and trademark dilution allegations. Both Wynn and CCWI now appeal the District Court's judgment, 669 F.Supp. 831 (1986), claiming that the trial court erred (1) by failing to consider a prior opinion of the United States Trademark Office Examiner that a likelihood of confusion exists between appellants' and Thomas' use of the marks CLASSIC and CLASSIC CAR WASH on their goods and services; (2) by finding no likelihood of confusion between these marks; and (3) by determining that Thomas' use of the marks does not dilute appellants' rights in the marks. Because we agree with appellants that there is a likelihood of confusion between the products and services sold by the parties, we REVERSE the decision of the court below, and REMAND to the District Court with directions to grant appropriate injunctive relief.

FACTS

Appellant Wynn, with headquarters in California, sells car care products, including solid and liquid waxes, cleaning kits, fragrances, and vinyl and leather finishers. These products are sold under the trade name CLASSIC, which was registered as a federal trademark on September 9, 1975. Wynn sells these products nationally through mass merchandisers, warehouse outlets, chain stores and small retail stores. Joint Appendix at 112.

In addition to the CLASSIC mark, Wynn also owns the rights to the service mark CLASSIC CAR WASH, which it registered on January 22, 1983. Wynn allegedly granted a license to CCWI to exclusively use its CLASSIC CAR WASH mark. While this mark was not registered until 1983, CCWI had purchased the rights to the mark in 1979, from Wynn's predecessor in interest, Classic Chemical Company. Id. at 74-75, 80-81, 113.

Using the service mark CLASSIC CAR WASH, CCWI has attempted to develop a nationwide network of franchise car washes. At the time of trial, CCWI had expanded to approximately sixteen franchises in six different states. These franchise car washes were more elaborate than most of their competitors, allowing customers to get their shoes shined, drink free coffee or cider, and enjoy the elaborate theme decorations, while waiting for their cars to be washed. CCWI had not yet expanded into Tennessee, but had recently opened a franchise in Alabama, and used national publications, such as the Wall Street Journal to advertise for additional franchises.

The defendant-appellee Thomas, owns or operates six car washes in Tennessee under the name of CLASSIC CAR WASH or CLASSIC CAR WASH SYSTEMS. These car washes are much simpler operations where customers simply follow their cars down a corridor while waiting for them to be washed. Although Thomas testified to first considering use of the mark in December of 1979, he did not open the first of these businesses until May, 1980 in Cookeville, Tennessee. He did not open his second car wash, in Cleveland, Tennessee, until 1983, four months after the mark CLASSIC CAR WASH was registered by Wynn.

In January, 1984, Wynn and CCWI learned of Thomas' use of the marks CLASSIC and CLASSIC CAR WASH. They sent a cease and desist letter to Thomas, which Thomas did not respond to until August 1984. In the meantime, Thomas applied for a state of Tennessee service mark for CLASSIC CAR WASH SYSTEMS, which was granted. Thomas also opened two new franchises in Knoxville, and Oak Ridge before responding to appellants' letter. Finally, Thomas applied for a federal service mark from the United States Patent and Trademark Office on November 21, 1984. On the statement submitted to the Trademark office, Thomas affirmed that "to the best of my knowledge and belief no other ... corporation or association has the right to use the mark in commerce." Id. at 334. In spite of this protestation, the Trademark Office rejected the application because Thomas' mark "so resembles the mark(s) cited below [including appellants' marks] as to be likely to cause confusion." Id. at 339.

The District Court held that because there was no substantial "likelihood of confusion" between appellants' marks and Thomas' mark, there could be no trademark infringement. This Circuit considers the question of whether there is a likelihood of confusion a mixed question of fact and law. When reviewing a lower court's decision in these cases, we apply a clearly erroneous standard to findings of fact supporting the likelihood of confusion factors, but review de novo the legal question whether, given the foundational facts as found by the lower court, those facts constitute a "likelihood of confusion." Frisch's Restaurant, Inc. v. Shoney's, Inc., 759 F.2d 1261, 1264 (6th Cir.1985).

In another case involving Frisch's Restaurant, Frisch's Restaurants v. Elby's Big Boy, Inc., 670 F.2d 642 (6th Cir.1982), we set out the factors that courts should examine to determine whether the alleged infringement of a trade or service mark causes a "likelihood of confusion" among consumers. These factors include the

1. strength of plaintiff's mark;

2. relatedness of the goods;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. likely degree of purchaser care;

7. defendant's intent in selecting the mark;

8. likelihood of expansion of the product lines.

Id. at 648.

These factors are simply a guide to help determine whether confusion would be likely to result from simultaneous use of the two contested marks. They imply no mathematical precision, and a plaintiff need not show that all, or even most, of the factors listed are present in any particular case to be successful. As we said in Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 834 (6th Cir.1983), "[t]he general concept underlying likelihood of confusion is that the public believe that 'the mark's owner sponsored or otherwise approved of the use of the trademark.' " [citations omitted].

In applying these general concepts to the sometimes confusing facts in this case, we must evaluate both whether Thomas infringed Wynn's mark CLASSIC as well as CCWI's mark CLASSIC CAR WASH. This is required because Thomas began using CLASSIC CAR WASH before CCWI registered its service mark. Unless Thomas infringed the CLASSIC trade mark, he would be entitled to use CLASSIC CAR WASH for car washes in existence before the service mark CLASSIC CAR WASH was registered even if the CLASSIC CAR WASH service mark is infringed.

Wynn v. Thomas

Wynn claims that Thomas has infringed Wynn's trademark CLASSIC in two separate ways. First; Thomas sells bulk wax to other car washes under the name of CLASSIC CAR WASH. Second, Thomas operates car washes under the same name.In order to determine whether Thomas' use of the term CLASSIC CAR WASH infringes on Wynn's trademark CLASSIC, we examine the eight factors identified in Elby's Big Boy, 670 F.2d at 648.

1. Strength of Mark

Unless a registered mark is successfully challenged within five years of registration, Sec. 14 of the Lanham Act, 15 U.S.C. Sec. 1065 makes clear that the trademark becomes incontestable. ¹ As the Supreme Court recently concluded in Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985), an infringement action may not be defended on the grounds that a mark is merely descriptive, if that mark has met the requirements of incontestability.

Here Wynn registered the mark CLASSIC with the Patent and Trademark Office on September 9, 1975--nearly ten years before the commencement of this litigation. Yet in spite of the mark's incontestability, the District Court reasoned that CLASSIC is merely a descriptive term, and therefore a weak mark deserving "little, if any protection." Joint Appendix at 26. Permitting Thomas to relitigate the original strength or weakness of the mark runs afoul of Park 'N Fly's requirement that courts give full effect to incontestable trademarks. Therefore, while the strength of plaintiffs' mark will still be at issue in cases involving contestible marks, once a mark has been registered for five years, the mark must be considered strong and worthy of full protection.

2. Relatedness of the Goods

Because Thomas both sells bulk car wax for use in car washes, and provides a complete car washing service using the name CLASSIC CAR WASH, we must examine how both the products and the services are related to Wynn's car care products. In our view it is clear that Wynn's car care products are closely related to the car wax sold by Thomas. Both products perform the same function--protecting the finish of cars. The only difference between the products is that one is adapted to be applied in bulk by machine. Keeping in mind that we are trying to determine whether consumers will be confused as to the origin of the product, this difference is insignificant compared to the similarities which could easily lead a purchaser of the bulk wax to believe that it is buying a product affiliated with Wynn's CLASSIC car care...