Appleseed Foundation v. Appleseed Institute, Inc., CIV. 97-1332 (TFH).

Citation981 F.Supp. 672
Decision Date30 July 1997
Docket NumberNo. CIV. 97-1332 (TFH).,CIV. 97-1332 (TFH).
CourtUnited States District Courts. United States District Court (Columbia)

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981 F.Supp. 672
No. CIV. 97-1332 (TFH).
United States District Court, District of Columbia.
July 30, 1997.

Page 673

Hugh Latimer, Wiley, Rein & Fielding, Washington, DC, for Plaintiff.

Deborah M. Lodge, Patton, Boggs, L.L.P., Washington, DC, for Defendant.


THOMAS F. HOGAN, District Judge.

Pending before the Court is plaintiff's motion for a preliminary injunction. The parties submitted briefs and exhibits on the motion, and the Court held a hearing on July 28, 1997. After considering the submissions of the parties and the arguments made at the hearing, the Court will grant plaintiff's motion and will enjoin defendant from continuing to use plaintiff's mark.

I Background

This case involves allegations of trademark infringement and dilution by one non-profit organization against another. Plaintiff Appleseed Foundation, Inc., ("Foundation") was founded in 1993 by a group of Harvard Law School alumni, who sought to "mobilize lawyers and other professionals to utilize their skills and experience to engage in public service advocacy." The Foundation operates by organizing local affiliates to pursue public advocacy projects. There are now affiliates in nine states and in the District of Columbia, and the Foundation is organizing affiliated; in three more states. These local affiliates are allowed to choose their own names, but each must incorporate the word "Appleseed;" all do so in a prominent manner.

Although the Foundation characterizes itself as primarily a legal advocacy and service group, local affiliates are permitted to pursue their own areas of interest; therefore, the extent and character of the Foundation's overall involvement in the public service field is largely defined by the individual interests of the local affiliates. Some local affiliates are involved in educational issues; in particular, D.C. Appleseed has worked to prevent the city's Control Board from taking over the District's public schools.

The Foundation applied for and received a federal service mark registration for "Appleseed Center for Law and Justice" in 1995 (Registration No. 1, 924, 249). In August of 1996, it applied for a service mark for "Appleseed." The Patent and Trademark Office approved this application, and the registration can become final at the end of the mandatory comment period, which is now underway.

The Foundation has received national and local press coverage since 1993, and has been featured in articles in the New York Times, Washington Post, Christian Science Monitor, Wall Street Journal, and International Herald Tribune, among others. Several

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prominent persons on its board also give the Foundation a certain amount of notoriety, and the Foundation has received moderate grants (most in the $10,000-$30,000 range) from several charitable foundations.

Defendant Appleseed Institute ("Institute") was incorporated in Massachusetts in August 1996 by its founder, William McCarthy. Mr. McCarthy declares that he chose the name "Appleseed" for his group because of his lifelong admiration for the legendary hero Johnny Appleseed,1 and because the name and the legend fit his organization's mission of improving public school education by promoting charter schools. Mr. McCarthy states that he has spent over $250,000 and countless hours developing his organization. Although it currently concentrates its efforts on the development of charter schools in the District of Columbia, the Institute has stated its plans to expand efforts into other cities.

Plaintiff states that it began to get telephone calls in March 1997 expressing confusion and concern with its stance on charter schools. These calls demonstrated that people were confusing the Institute's work with that of the Foundation. The Foundation states that it has never worked to support charter schools, and that it was alarmed by the confusion.2 Plaintiff states that it has continued to receive such calls and that several of its board members, teachers, and members of the DC community have expressed concern and confusion on the issue. The Foundation informed its counsel of the problems, and on May 14, 1997, counsel informed defendant of the alleged infringement. Defendant responded that it did not plan to change its name, and plaintiff then filed suit. Defendant has subsequently changed its name — to the "Johnny Appleseed Institute, Inc." — but it maintains that the change was not expressly motivated by the legal action.

II Preliminary Injunction

Plaintiff has moved for a preliminary injunction against defendant's continued use of the mark "Appleseed." The standard for a preliminary injunction in trademark cases is the same as in other cases. Sears, Roebuck and Co. v. Sears Financial Network, Inc., 576 F.Supp. 857, 864 (D.D.C.1983). Therefore, in order to prevail on its motion, plaintiff must show (1) that it has a likelihood of success on the merits, (2) that plaintiff would suffer irreparable injury without the injunction, (3) that the injunction would not substantially harm other parties, and (4) that the public interest is served by the injunction. Washington Metropolitan Area Transit Commission v. Holiday Tours, Inc., 559 F.2d 841, 843 (D.C.Cir.1977); Sears, 576 F.Supp. at 864.

III Likelihood of Success on the Merits

Plaintiff presents two claims to support its motion for preliminary injunction. First, plaintiff claims that defendant's use of "Appleseed" is trademark infringement under 15 U.S.C. § 1114(1). Second, plaintiff argues that defendant's use is trademark dilution under 15 U.S.C. § 1125(c). The Court may grant plaintiff's motion for preliminary injunction only if it finds a likelihood of success on the merits of at least one of these two claims.

A. Trademark Infringement

Under the Lanham Act, a trademark's owner is protected from use, imitation, or copy of the mark if such use is likely to cause consumer confusion. 15 U.S.C. § 1114(1). This confusion need not necessarily result from direct competition between the entities; instead, the statute requires a showing of "source confusion" where consumers

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in the relevant product market are likely to believe that defendant's products or services come from the same source or are affiliated with plaintiff. Foxtrap Inc. v. Foxtrap, Inc., 671 F.2d 636, 639 (D.C.Cir.1982).

In order to prove its claim for infringement, plaintiff must show (1) that it owns a valid trademark, (2) that the mark is distinctive on its own or that it has acquired a secondary meaning, and (3) that there is a likelihood of confusion. Sears, Roebuck, 576 F.Supp. at 861; American Ass'n for the Advancement of Science v. Hearst Corp., 498 F.Supp. 244, 254 (D.D.C.1980). There is no dispute that plaintiff holds a valid trademark, so the Court need only evaluate the remaining two elements.

1. Distinctiveness

In order to receive trademark protection, a mark must be distinctive. Therefore, generic terms — such as "aspirin" or "cola" — cannot be protected. American Ass'n for the Advancement of Science, 498 F.Supp. at 254. However, a mark is presumptively distinctive if it is either fanciful, arbitrary, or suggestive. Id. Furthermore, a mark that is merely descriptive may attain protection if it has acquired a secondary meaning associated with a specific source (e.g. "Science" magazine). Id.

The moniker "Appleseed" is arbitrary, and therefore is distinctive. It is not a generic term that is used to describe the services that plaintiff provides; while there may be a metaphorical connection, there is no literal connection between the legend of Johnny Appleseed and the public advocacy performed by plaintiff and its affiliates. There is no linguistic reason for plaintiff to choose this name to identify its product; the word itself carries little meaning outside the produce business. Instead, plaintiff chose the name for arbitrary reasons, so use of the name itself is distinctive, even without considering the secondary meaning that the name has acquired.3

2. Likelihood of Confusion.

In assessing the likelihood of confusion, the Court looks at the effect that defendant's use of the mark has or would have on prospective consumers within the relevant product market. Sears, Roebuck, 576 F.Supp. at 861: American Ass'n for the Advancement of Science, 498 F.Supp., at 258. Of course, evidence of actual confusion is substantial proof of this element. Malarkey-Taylor Associates. Inc. v. Cellular Telecommunications Industry Ass'n, 929 F.Supp. 473, 477 (D.D.C.1996). In the absence of such hard evidence, however, the Court can assess the likelihood of confusion by examining factors such as (1) the strength of the senior user's mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, and (4) the intent of the junior user. Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), cert. denied 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). See also Sears, Roebuck, 576 F.Supp. at 861.

Plaintiff has presented evidence of existing confusion. Its declarants describe confused, concerned telephone calls from board members, teachers, and local citizens who mistakenly attributed the actions of defendant to plaintiff. While plaintiff's evidence is not overwhelming, it is substantial evidence that the dual use of "Appleseed" may cause confusion.

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