Degidio v. West Group Corp.

• Decision Date: 14 January 2004
• Docket Number: No. 02-3739.,02-3739.
• Citation: 355 F.3d 506
• Parties: Anthony J. DeGIDIO, Plaintiff-Appellant, v. WEST GROUP CORPORATION; The Thomson Corporation; West Licensing Corporation, Defendants-Appellees.
• Court: U.S. Court of Appeals — Sixth Circuit

355 F.3d 506

Anthony J. DeGIDIO, Plaintiff-Appellant, v. WEST GROUP CORPORATION; The Thomson Corporation; West Licensing Corporation, Defendants-Appellees.

No. 02-3739.

United States Court of Appeals, Sixth Circuit.

Argued: December 5, 2003.

Decided and Filed: January 14, 2004.

Appeal from the United States District Court for the Northern District of Ohio, David A. Katz, J Anthony J. DeGidio, Jr. (argued and briefed), Toledo, OH, for Appellant.

Robert L. Raskopf (Argued and Briefed), Jennifer Johnson Millones (briefed), Carol A. Witschel, White & Case, New York, NY, for Appellee. Richard M. Kerger (briefed), Kerger & Kerger, Toledo, OH, for Appellee.

Before KENNEDY, MARTIN, and MOORE, Circuit Judges.

KENNEDY, J., delivered the opinion of the court, in which MARTIN, J., joined. MOORE, J. (pp. 514-15), delivered a separate opinion concurring in part and concurring in the judgment.

OPINION

KENNEDY, Circuit Judge.

Plaintiff appeals the district court's order granting summary judgment to Defendants. Plaintiff DeGidio argues that the district court erred when it determined that his mark, LAWOFFICES, was descriptive and that it had not acquired secondary meaning. We affirm.

BACKGROUND

This case represents an attempt by Plaintiff, Anthony DeGidio, to obtain trademark protection for the mark LAWOFFICES.¹ Plaintiff is the registrant of the domain name "lawoffices.net" and alleged founder and owner of the corresponding website,² which provides a directory of forty attorneys, legal information relating to cyberlaw issues, a vanity e-mail service,³ listing of domain names for sale,⁴ and a hosting service for legal related websites. Plaintiff, however, does not own either a federal or state registration for the LawOffices.net designation.⁵

Defendants, West Group Corporation, The Thompson Corporation, and West Licensing Corporation, utilize the designation Law office.com⁶ and the domain name "lawoffice.com"⁷ to market the West Legal Directory, which serves as an online resource for various legal information.⁸

Plaintiff filed this trademark action on August 24, 1999 alleging violations of the Ohio Deceptive Trade Practices Act, OHIO REV.CODE ANN. § 4165.01 et seq. (Count I); unauthorized use of trademark pursuant to OHIO REV.CODE ANN. § 1329 et seq. (Count II);⁹ common law unfair competition (Count III); false designation of origin under 15 U.S.C. § 1125(a) (Count IV); federal trademark dilution (Count V); common law dilution (Count VI); and the tort of misappropriation (Count VII). Both parties moved for summary judgment. The district court found that LAWOFFICES was not a protectible mark because it was descriptive and it had not acquired a secondary meaning. Accordingly, the district court granted Defendants' motion for summary judgment as to counts I-VI, but not VII. Plaintiff dismissed count VII and thereafter timely appealed.

STANDARD OF REVIEW

We review a district court's grant of summary judgment de novo. Terry Barr Sales Agency, Inc. v. All-Lock Co., 96 F.3d 174, 178 (6th Cir.1996). In deciding a summary judgment motion, this court cannot weigh the evidence, judge the credibility of witnesses, or determine the truth of the matter asserted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). We view the evidence and draw all "justifiable inferences" in the light most favorable to the non-movant. Id. Summary judgment is appropriate where "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). "[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment...." Anderson, 477 U.S. at 247-48, 106 S.Ct. 2505 (emphasis in original). Mixed questions of law and fact are reviewed de novo. Williams v. Mehra, 186 F.3d 685, 689 (6th Cir.1999) (en banc).

ANALYSIS

As the district court correctly noted, in order to prevail on any of the first six counts, Plaintiff must establish that the designation "LawOffices.net" is indeed a valid and legally protectable trademark. See DeGidio v. West Group Corp., 191 F.Supp.2d 904, 908 (N.D.Ohio 2002) (citing Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 308 (6th Cir.2001), Am. Online, Inc. v. AT&T Corp., 243 F.3d 812, 819 (4th Cir. 2001); Sunbeam Products Inc. v. The West Bend Co., 123 F.3d 246, 251 (5th Cir. 1997), overruled in part on other grounds sub nom., TrafFix Devices, Inc. v. Mktg. Displays Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001)) The district court also correctly noted that the Lanham Act offers protection against infringement of both registered and unregistered marks. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). To determine whether an unregistered mark is entitled to protection under § 43(a), the courts look to the general principles qualifying a mark for registration under § 2 of the Lanham Act. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 921 (6th Cir.2003) (citing Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753). As this Court has previously indicated, we employ the same analysis to alleged trademark violations under Ohio law, as we do under the federal law. Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 354-55 (6th Cir.1998); Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 626 n. 2 (6th Cir.2002); Leventhal & Assoc., Inc. v. Thomson Cent. Ohio, 128 Ohio App.3d 188, 714 N.E.2d 418, 423 (1998). Finally, the same federal trademark principles apply to analogous federal and state common law claims. Daddy's Junky Music v. Big Daddy's Family Music, 109 F.3d 275, 288 (6th Cir.1997).

As the district court observed, "whether Plaintiff's mark qualifies for trademark protection is determined by where the mark falls along the established spectrum of distinctiveness." DeGidio, 191 F.Supp.2d at 910 (citing Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir.1993)). Putative trademarks may either: (1) be inherently distinctive or (2) acquire distinctiveness through secondary meaning. See Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753. Professor McCarthy, in his treatise, further explains that:

Within the two basic categories are sub-categories that form the complete spectrum of distinctiveness of marks. Arrayed in an ascending order roughly reflecting their eligibility to trademark status and the degree of protection afforded, the categories are: (1) generic terms; (2) descriptive; (3) suggestive; (4) arbitrary or fanciful. Generic terms can never be trademarks, descriptive terms are not inherently distinctive and suggestive, arbitrary and fanciful terms are regarded as being inherently distinctive.

2 McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:2 (4th ed.2003). See also Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir.1984).

In the present case, neither party is arguing that Plaintiff's mark is either generic or arbitrary or fanciful. Because suggestive marks are inherently distinctive, whereas descriptive marks can only acquire distinctiveness through secondary meaning, we first consider into which sub-category, Plaintiff's mark falls.

1. Plaintiff's mark is descriptive

"A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods." Induct-O-Matic, 747 F.2d at 362. As this Circuit explained earlier, examples of a suggestive term include "CITIBANK, which connotes an urban or modern bank, or GOLIATH, for wood pencils, connoting a large size." Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1117 (6th Cir.1996). On the other hand, a trademark is merely descriptive if it describes one, or more, of the following: "the intended purpose, function or use of the goods ... the class of users of the goods; a desirable characteristic of the goods; or the end effect upon the user." Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1190 (6th Cir.1988). As the Champions Golf Club court explained, "examples of descriptive marks are BEST, SUPERIOR, and PREFERRED." Champions Golf Club, 78 F.3d at 1117.

The district court found that Plaintiff's mark was, at best, descriptive. DeGidio, 191 F.Supp.2d at 912. To aid in its determination, the court relied on a following six-factor test that was articulated by Professor McCarthy¹⁰ and accepted by the parties:

(1) How much imagination on the buyer's part is required in trying to cull a direct message from the mark about the quality, ingredients or characteristics of the product or service? In doing this, it must be kept in mind that the ordinary consumer does not spend much time in the marketplace lingering over such problems. On the other hand, if the potential buying class at issue are experts or professionals, a more critical examination is reasonable.

(2) Does the mark directly convey a real and unequivocal idea of some characteristic, function, quality or ingredient of the product or service to a reasonably informed potential buyer? That typical buyer will already have some knowledge about the product or service and is neither an expert nor a totally uninformed about the product. Is some reflection or multi-stage reasoning process necessary to cull some direct information about the product from the term used as a mark?

(3) Does the mark so closely tell something about the product or service that other sellers of like products would be likely to want to use the term in connection with their goods? Perhaps a more realistic way to pose this question is to ask whether, without any prior knowledge of this mark, others would be likely to want to use it to describe their products?

(4) Are, in fact, other sellers now using this term to describe their products? Even if the mark is...