Autozone, Inc. v. Strick, 07-2136.

CourtUnited States Courts of Appeals. United States Court of Appeals (7th Circuit)
Writing for the CourtManion
Citation543 F.3d 923
PartiesAUTOZONE, INC. and Autozone Parts, Inc., Plaintiffs-Appellants, v. Michael STRICK, et al., Defendants-Appellees.
Docket NumberNo. 07-2136.,07-2136.
Decision Date11 September 2008

Alan S. Cooper (argued), Howrey LLP, Washington, DC, James D. Adducci, Adducci, Dorf, Lehner, Mitchell & Blankenship, Chicago, IL, for Plaintiff-Appellant.

Jeffrey R. Zehe, Brian G. Cunningham (argued), Ellison, Nielsen, Zehe & Antas, Chicago, IL, for Defendant-Appellee.

Before RIPPLE, MANION, and TINDER, Circuit Judges.

MANION, Circuit Judge.

Plaintiffs AutoZone, Inc., and AutoZone Parts, Inc. (collectively "AutoZone"), who together comprise one of the largest retailers of automotive parts in the United States, sued Michael Strick, Strick Enterprises, Inc., and Strick, Inc. (collectively "Strick") alleging that Strick's use of the trade names and service marks "Oil Zone" and "Wash Zone" in his automotive services businesses violated the Lanham Act, 15 U.S.C. § 1051 et seq., and Illinois statutory and common law. At the summary judgment stage, the district court held that AutoZone had failed to produce sufficient evidence to show a likelihood of confusion between AutoZone's and Strick's marks as a matter of law and dismissed AutoZone's suit. AutoZone appeals, and we reverse.


AutoZone operates approximately 3,500 stores nationwide. Its primary business is the sale of a wide variety of automotive products, though its stores also provide a few services in conjunction with the sale of those products, such as diagnostic advice, oil reclamation, and free battery testing. AutoZone stores do not have any service bays for car repairs, nor do they offer car washes or oil changes. They do, however, sell products related to washing cars and changing motor oil. AutoZone targets its products and services to two segments of the population: the general automotive-using public, and commercial automotive establishments that buy parts to make repairs for their customers. The vast bulk of AutoZone's business—90%—comes from the first category.

AutoZone operates under the federally registered trademark AutoZone with the design depicted below:


AutoZone refers to this mark as its "Speedbar Design."1 In color, the series of stripes preceding the "AutoZone" name are depicted in orange, and the lettering is in red. AutoZone first began using the speedbar mark in November 1987 and has used it in Illinois since the early 1990's. By 1996, AutoZone had approximately 100 stores in the Chicago area operating under that mark.

AutoZone has extensively advertised the mark across the country since 1987. AutoZone's marketing in the Chicago area began to take off in the early 1990's. From 1994 to 2001, AutoZone paired national television advertising with sponsorships of local sports teams, such as the Chicago Bulls and the Chicago White Sox. In 1996, AutoZone labeled the Chicago area a growth market, spending a disproportionate share of its advertising funds there. Along with the sports sponsorships, AutoZone's Chicago-area advertising included television advertising on Chicago stations and national cable television, advertisements in magazines such as Sports Illustrated and Hot Rodder, weekly or biweekly ads in Chicago newspapers, local radio advertising, commercial sales calls to local automotive businesses near AutoZone locations, direct mail advertising, outdoor advertising on billboards and city buses, and ads in the yellow pages.

While AutoZone was established and advertising heavily in the Chicago market, Strick, who had been working in the automotive goods and services industry, opened two businesses in the Chicago area, one in Wheaton2 and the other in Naperville. Those stores provide automotive services such as car washes, 10-minute oil changes, transmission services, rear differential services, and coolant flushes. Strick's primary customer base is members of the general public that live within a one to three-mile radius of one of Strick's two locations. Strick's businesses use the mark "Oil Zone," the appearance of which is depicted below:


A picture of Strick's Naperville Oil Zone location is below (along with two pictures in the record of an AutoZone store for comparison):


Strick also used the mark "Wash Zone" at his Naperville location, which provided car washes in addition to the other automotive services. That mark is very similar to Strick's Oil Zone mark, with the exception that when depicted in color, the letters of the Wash Zone mark are blue, as opposed to green for the Oil Zone mark. Strick began using the mark Oil Zone in July 1996, and the mark Wash Zone in 1998. At his deposition, Strick testified that he was completely unaware of AutoZone and its stores at the time he began using the Oil Zone mark. He also testified that the only step he took to determine whether he was legally entitled to use Oil Zone was to contact a search firm called "Lexis documents."

In December 1998, AutoZone became aware of Strick's businesses and directed Kirby & Associates, a private investigation firm, to investigate them. The investigators prepared their report on Strick's operations and submitted it to AutoZone the same month. AutoZone did not contact Strick about his use of the Oil Zone and Wash Zone marks until February 18, 2003, when it sent him a letter. It then filed this suit on November 14, 2003, alleging that Strick engaged in service mark and trademark infringement in violation of 15 U.S.C. § 1114(1), trade name infringement in violation of Illinois common law, unfair competition in violation of 15 U.S.C. § 1125(a) and Illinois common law, and service mark and trademark dilution in violation of 15 U.S.C. § 1125(c) and 765 ILCS 1036/65. AutoZone sought a permanent injunction enjoining Strick from using the Oil Zone and Wash Zone marks, as well as attorneys' fees and costs. After AutoZone amended its complaint, Strick filed an answer asserting a few counterclaims and affirmative defenses, none of which is relevant to this appeal.

The parties then filed cross-motions for summary judgment. AutoZone sought partial summary judgment on some of Strick's counterclaims and affirmative defenses. Strick, on the other hand, moved for summary judgment on all of AutoZone's claims. Strick asserted that all of AutoZone's claims failed because the undisputed facts showed that there was no likelihood of confusion between the AutoZone mark and the Oil Zone and Wash Zone marks. Strick also maintained that it was entitled to summary judgment on the issue of laches because of AutoZone's four-year delay in filing suit.

The district court, in a comprehensive opinion, granted Strick's motion for summary judgment and denied AutoZone's motion.3 The district court found that AutoZone's claims failed because the AutoZone mark and the Oil Zone and Wash Zone marks were "not similar enough for a reasonable finder of fact to find that there is a likelihood of confusion."4 It did not reach the issue of laches. The district court entered final judgment on May 2, 2007. AutoZone appeals.


On appeal, AutoZone challenges the district court's ruling, at the summary judgment stage, that AutoZone's infringement and unfair competition claims failed as a matter of law. Specifically, AutoZone claims that to avoid summary judgment it presented sufficient evidence that Strick's use of the Oil Zone and Wash Zone marks is likely to cause confusion with the AutoZone mark.

A. Summary Judgment Standard

We review de novo the district court's decision to grant summary judgment to Strick, viewing the facts in the light most favorable to AutoZone, the nonmovant. Trask-Morton v. Motel 6 Operating L.P., 534 F.3d 672, 676-77 (7th Cir.2008). According to Federal Rule of Civil Procedure 56, summary judgment is proper "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). "[I]f there is any genuine material issue of fact, we must remand." AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 615 (7th Cir. 1993).

B. Likelihood of Confusion

is that there be a likelihood of confusion between the AutoZone mark and the Oil Zone and Wash Zone marks. CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 673-74 (7th Cir.2001); see also Stuart Hale Co., 1 F.3d at 615. We analyze seven factors to determine whether consumers are likely to be confused:

(1) the similarity between the marks in appearance and suggestion;

(2) the similarity of the products;

(3) the area and manner of concurrent use;

(4) the degree and care likely to be exercised by consumers;

(5) the strength of the plaintiff's mark;

(6) any actual confusion; and

(7) the intent of the defendant to "palm off" his product as that of another.

Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir.2001). No single factor is dispositive. Courts may assign varying weight to each of the factors depending on the facts presented, though usually the similarity of the marks, the defendant's intent, and actual confusion are particularly important. Id.

Whether consumers are likely to be confused about the origin of a defendant's products or services is ultimately a question of fact. McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1167 (7th Cir.1986); see also Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir.2000); Reed-Union Corp. v. Turtle Wax, Inc., 77 F.3d 909, 912 (7th Cir.1996). That question of fact may be resolved on summary judgment only "if the evidence is so one-sided that there can be no doubt about how the question should be answered." Packman, 267 F.3d at 637 (quoting ...

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