Barrios v. American Thermal Instruments, Inc.

• Decision Date: 30 June 1988
• Docket Number: No. C-3-85-619.,C-3-85-619.
• Citation: 712 F. Supp. 611
• Parties: Alfred A. BARRIOS, Ph.D., dba SPC Center, SPC Press, and Self-Programmed Control Center, Plaintiff, v. AMERICAN THERMAL INSTRUMENTS, INC., Defendant.
• Court: U.S. District Court — Southern District of Ohio

712 F. Supp. 611

Alfred A. BARRIOS, Ph.D., dba SPC Center, SPC Press, and Self-Programmed Control Center, Plaintiff, v. AMERICAN THERMAL INSTRUMENTS, INC., Defendant.

No. C-3-85-619.

United States District Court, S.D. Ohio, W.D.

June 30, 1988.

Thomas M. Pyper, Dayton, Ohio, and Eliot G. Disner and Andra M. Finkel, Los Angeles, Cal., for plaintiff.

B. Joseph Schaeff and Michael W. Krumholtz, Dayton, Ohio, for defendant.

DECISION AND ENTRY SUSTAINING IN PART AND OVERRULING IN PART THE MOTION OF THE PLAINTIFF, ALFRED A. BARRIOS, Ph.D., FOR PARTIAL SUMMARY JUDGMENT (DOC. # 21)

RICE, District Judge.

This case is before the Court on the Motion of the Plaintiff, Alfred A. Barrios, Ph.D., for Partial Summary Judgment (Doc. # 21). For the reasons set forth below, Plaintiff's motion is sustained in part and overruled in part.

The Plaintiff, Alfred A. Barrios, Ph.D., has brought this action against the Defendant, American Thermal Instruments, Inc., (ATI), pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1332, 1338. Plaintiff's Complaint (Doc. # 1) sets forth five claims for relief against the Defendant. However, the Motion for Partial Summary Judgment currently before the Court relates only to Count III of Plaintiff's Complaint.

In Count III, Plaintiff asserts that Defendant has infringed upon certain common-law trademarks allegedly held by the Plaintiff. The Plaintiff alleges that in or before 1973, Plaintiff developed a stress control program known as "Self-Programmed Control." (Doc. # 1, ¶ 7). As part of this program, Plaintiff created and marketed a card which purports to indicate the stress levels of its user (Doc. # 1, ¶¶ 7-8). Plaintiff asserts that in the course of marketing his stress card and other related products, Plaintiff acquired certain common-law trademarks. Count III alleges that "prior to April 1, 1985, Barrios acquired common-law trademarks in Ohio as to the tab design mark, `Stress Card,' `Stress Card Biofeedback Card' and `Biofeedback Card,' ... by adoption and actual use." (Doc. # 1, ¶ 33). Plaintiff further asserts that prior to April 1, 1985, he also acquired common-law trademarks in Ohio as to "the trade dress comprising a diagonal corner of any color with a four color band thereunder (the `trade dress').... and the logo consisting of black, red, green, and blue rectangles juxtapositioned in a band (the `band logo')." (Doc. # 1, ¶¶ 8, 33).

Plaintiff further asserts that "with full knowledge of Barrios' rights to these Marks and without his consent, Defendant has manufactured and sold in the State of Ohio and in other places articles which infringe Barrios' trademarks...." (Doc. # 1, ¶ 35). Specifically, Plaintiff claims that 200,000 infringing stress cards were manufactured by Defendant and sold to Abril Cultural in Sao Paulo, Brazil (Doc. # 1, ¶ 36). In Count III, Plaintiff alleges that "Defendant's conduct constitutes a deceptive trade practice in violation of O.R.C. Section 4165.02." (Doc. # 1, ¶ 39). The allegations contained within Count III are also sufficient to make out a federal claim under the Lanham Trade-Mark Act, § 43(a), 15 U.S.C. § 1125(a).

In his Motion for Partial Summary Judgment made pursuant to Fed.R.Civ.P. 56(c), Plaintiff "moves this Court for partial summary judgment ... on the issue of defendant's liability for infringement of three of plaintiff's trademarks: (a) `STRESS CONTROL BIOFEEDBACK CARD'; (b) `the trade dress consisting of diagonal corner of any color with a four color band thereunder'; and (c) `the logo consisting of black, red, green and blue rectangles interposed in a band.'" (Doc. # 21, at 1). Plaintiff argues that there is no genuine issue of material fact concerning Defendant's infringement of said trademarks as the card manufactured by Defendant and distributed in Brazil (hereinafter referred to as the "red card") creates a likelihood of confusion as to its origin. (Doc. # 21, at 1).

I. DISCUSSION

A. The Propriety of Summary Judgment Under Fed.R.Civ.P. 56(c)

Before examining Plaintiff Barrios' specific allegations, the Court notes that the United States Supreme Court has set forth specific standards with regard to the propriety of a motion for summary judgment made under Fed.R.Civ.P. 56(c), to wit:

Under Rule 56(c), summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." ... One of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses, and we think it should be interpreted in a way that allows it to accomplish this purpose.

Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 2552-53, 91 L.Ed.2d 265 (1986). With respect to the specific type of claim currently before the Court, the Sixth Circuit has held that "summary judgment is as appropriate in a trademark infringement case as in any other case and should be granted or denied on the same principles." WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir.1983) (citing Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494 (2d Cir.1962); Beef/Eater Restaurants, Inc. v. James Burrough, Ltd., 398 F.2d 637 (5th Cir.1968)).

Based upon the foregoing, the Court concludes that partial summary judgment may be awarded in the case at bar if (and only if) no genuine issues of material fact are in existence.

Rule 53(c) places the burden of establishing that there are no genuine issues of material fact upon the moving party, to wit: the Plaintiff. Felix v. Young, 536 F.2d 1126, 1134 (6th Cir.1976). The burden is also upon the moving party to establish that he is entitled to judgment as a matter of law. Id. However, once "the initial burden has been supported by additional materials, the non-moving party must then come forward with specific facts which demonstrate to the court that there is a genuine issue for trial." Id. at 1134-35. See also Federal Deposit Ins. Corp. v. Seymour, No. 84-1137, slip op. at 5-6 (6th Cir.1985) 779 F.2d 50 (table).

B. The Applicable Law

Plaintiff is basically asserting that Defendant's red card is so similar to Plaintiff's stress control biofeedback card (the "Barrios card") that a likelihood of confusion as to the red card's origin is created. Such confusion is prohibited by both Ohio's state deceptive practices statutes¹ and the federal Lanham Trade Mark Act, § 43(a), 15 U.S.C.A. § 1125(a).² Because both the Ohio Deceptive Trade Practices statutes and the Lanham Act focus upon confusion as to origin "the analyses to be applied by the courts in regard to these bases of relief are essentially the same...." See Jewel Cos., Inc. v. Westhall Co., 413 F.Supp. 994, 999 (N.D.Ohio 1976) (citing Mr. Gasket Co. v. Travis, 35 Ohio App.2d 65, 299 N.E.2d 906 (1973), aff'd, 575 F.2d 1176 (6th Cir. 1978); Younker v. Nationwide Mutual Insurance Co., 175 Ohio St. 1, 191 N.E.2d 145 (1963)). See also Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 963 (6th Cir.1987). As a result, with one exception which will be discussed later, this Court will not differentiate between Ohio law and federal law.

"The touchstone of trademark law is the `likelihood of confusion.'" Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 570 (6th Cir.1987). "Likelihood of confusion is a question of law and thus an appropriate issue for summary judgment." See WSM, Inc., 709 F.2d at 1086. However, "the legal conclusion that confusion is likely must rest on the particular facts of the case...." Id. The Sixth Circuit has set forth eight foundational factors which are to be weighed in deciding upon whether a likelihood of confusion exists. Little Caesar Enters., Inc., at 570-71. The eight factors to be considered "are factual and subject to a clearly erroneous standard of review ..." Id. (quoting Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 833 (6th Cir.1983)).

The eight foundational factors adopted by the Sixth Circuit in Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, 670 F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916, 103 S.Ct. 231, 74 L.Ed.2d 182 (1982), are these:

1. strength of the 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.

Little Caesar Enters., Inc., at 570-71. However, before the Court can even reach the issue of confusion, certain preliminary requirements must be met.

C. Preliminary Requirements

As previously noted, the first factor to be considered in making a determination as to whether there is a likelihood of confusion is the strength of the Plaintiff's mark. A key consideration with regard to the strength of a particular mark is the category into which it falls. "A term for which trademark protection is claimed will fit somewhere in the spectrum which ranges from (1) generic or common descriptive and (2) merely descriptive to (3) suggestive and (4) arbitrary or fanciful." INDUCT-O-MATIC Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir.1984) (quoting Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.1977), cert. denied 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978)). "Generic terms, have no trademark significance and therefore are not entitled to protection." Sir Speedy, Inc. v. Speedy Printing Centers, Inc., 746 F.2d 1479 (6th Cir.1984), cert. denied, 469 U.S. 1217, 105 S.Ct. 1195, 84 L.Ed.2d 341 (1985). Thus, if a term is found to be generic, a court need not even reach the issue of the likelihood of confusion for no trademark protection exists.

1. The "Stress Control Biofeedback Card"

In its response to Plaintiff's Motion for Partial Summary Judgment, Defen...