Future Lawn v. Maumee Bay Landscape Contractors

• Decision Date: 01 April 2008
• Docket Number: Case No. 3:07CV1183.
• Parties: FUTURE LAWN, INC., Plaintiff, v. MAUMEE BAY LANDSCAPE CONTRACTORS, L.L.C., Defendant.
• Court: U.S. District Court — Northern District of Ohio

542 F.Supp.2d 769

FUTURE LAWN, INC., Plaintiff, v. MAUMEE BAY LANDSCAPE CONTRACTORS, L.L.C., Defendant.

Case No. 3:07CV1183.

United States District Court, N.D. Ohio, Western Division.

April 1, 2008.

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David C. Purdue, Purdue Law Offices, Toledo, OH, for Plaintiff.

Milton E. Pommeranz, Tim A. Ault, Malone, Ault & Farell, David W. Stuckey, Robison, Curphey & O'Connell, Toledo, OH, for Defendant.

ORDER

JAMES G. CARR, Chief Judge.

This is a suit over the use of phone numbers to designate the nature of the parties' businesses. Future Lawn, Inc. (Future Lawn) alleges four counts against Maumee Bay Landscape Contractors (Maumee Bay) arising out of Maumee Bay's use of (419) 720-TURF.

This court has jurisdiction under 15 U.S.C. § 1121 (actions arising under the Federal Trademark Act), 28 U.S.C. § 1338(a) (acts of Congress relating to trademarks) and. 28 U.S.C. § 1338(b) (pendent unfair competition claims).

Pending are counter-motions for summary judgment. [Docs. 13 & 14]. For the reasons that follow, plaintiffs motion shall be granted in part and denied in part, and defendant's motion shall be denied.

Background

Future Lawn is an Ohio corporation that provides landscaping, gardening and lawn care services. Maumee Bay is an Ohio corporation that provides commercial and residential property maintenance; landscape installation, design and maintenance; outdoor power equipment sales; athletic field design, construction, maintenance and supply; outdoor power equipment sales and service; and commercial snow removal.

Prior to November, 1996, Future Lawn used the mark "531-TURF" in connection with its landscaping, gardening and lawn care services. Since November, 1996, plaintiff has used the telephone number (419) 843-8873 (TURF).

Future Lawn is the owner of a service mark for "843-TURF" (for landscaping, gardening, and lawn care services in Class 42). It registered the mark, U.S. Service Mark Registration No. 2,422,699, on January 23, 2001. This registration remains valid and it is undisputed that Future Lawn has used the service mark 843-TURF continuously since January, 2001.

Defendant Maumee Bay acquired the telephone number (419) 720-8873 (TURF) when it acquired a telephone number for its new business.¹ Defendant displays 720-TURF on its vehicles, building and advertising materials. This, according to plaintiff, infringes on its 843-TURF service mark.

Future Lawn alleges infringement of plaintiffs federally registered service mark, false designation of origin under 15 U.S.C. § 1125, common law unfair competition and trademark infringement, and violation of Ohio's deceptive trade practices act, O.R.C. § 4165.02.

Maumee Bay argues that its use of the telephone number 720-TURF does not entitle Future Lawn to any relief. Defendant asserts that to succeed, Future Lawn must show 1) it had a valid mark that was entitled to protection and 2) Maumee Bay's action in using 720-TURF was likely to cause confusion with Future Lawn's 843-TURF service mark. Defendant contends that Future Lawn's service mark is generic and not entitled to the protection of the Lanham Act, or, in the alternative, that no likelihood of confusion exists between the use of telephone exchanges 720 and 843.

Summary Judgment

Summary judgment is appropriate "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). The moving party has the burden of showing an absence of evidence to support the non-moving party's case. Celotex Corp. v. Catrett, All U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party has met its burden of production, the non-moving party cannot rest on his pleadings, but must present significant probative evidence in support of his complaint to defeat the motion for summary judgment. Anderson v. Liberty Lobby, Inc., All U.S. 242, 248-49, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The mere existence of a scintilla of evidence to support the non-moving party's position will be insufficient; the evidence must be sufficient for a jury to reasonably find in favor of the non-moving party. Id. at 252, 106 S.Ct. 2505.

The standard of review for counter-motions for summary judgment does not differ from the standard when one party files such a motion. Taft Broad. Co. v. U.S., 929 F.2d 240, 248 (6th Cir.1991). "[T]hat both parties have moved for summary judgment does not mean that the court must grant summary judgment as a matter of law for one side or the other." Kennedy v. City of Zanesville, 505 F.Supp.2d 456, 477 (S.D.Ohio 2007). The court must evaluate each motion on its merits. Id.

Discussion

Under the Lanham Act, 15 U.S.C. § 1053, service marks, used to identify the source of services, though technically distinct from trademarks, enjoy the same legal protections. See Dranoff-Perlstein Assocs. v. Sklar, 967 F.2d 852, 855 (3d Cir.1992). The terms "service mark" and "trademark" are often used interchangeably, with no significant legal consequences. Id. at 855.

1. Protection Under the Lanham Act

The Lanham Act provides that marks registered on the U.S. Patent & Trademark Office's (USPTO) Principal Register "shall be prima facie evidence" of the validity of the registered mark, its registration, the registrant's ownership, and the registrant's exclusive right to use the mark on the goods or services specified in the registration. 15 U.S.C. § 1115(a). Although registration is prima facie evidence of an exclusive right, section § 1115(a) specifies that "registration shall not preclude an opposing party from proving any legal or equitable defense or defect ... which might have been asserted if such mark had not been registered." Id.

Trademark law recognizes four categories of marks, based on their levels of inherent distinctiveness: 1) arbitrary terms, 2) suggestive terms, 3) descriptive terms, and 4) generic terms. Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 594 (6th Cir. 1989). Descriptive marks merit protection only if an additional showing or secondary meaning can be established, id.; generic marks, generally, merit no protection under the Lanham Act, 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); Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 513 (6th. Cir.2007); Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619, 636 (6th Cir.2002).

Telephone numbers may be protected as service marks, and telephone numbers that correlate with marks may be entitled to protection. See Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 678 (2d Cir.1989); Chicago World's Fair-1992 Corp. v. 1992 Chicago Worlds' Fair Comm'n, No. 83-C-3424, slip op. (N.D.Ill. Aug. 16, 1983). Future Lawn's registration of "843-TURF" establishes a presumption that it is a valid service mark.

This presumption of validity, however, is rebuttable. See Burke-Parsons-Bowlby Corp., supra, 871 F.2d 590, 596 (6th Cir.1989); Schwinn Bicycle Co. v. Murray Ohio Mfg. Co., 470 F.2d 975, 977 (6th Cir.1972). To rebut the presumption of validity, defendant must "put something more into the scales than the registrant." Aluminum Fabricating Co. of Pittsburgh v. Season-All Window Corp., 259 F.2d 314, 316 (2d Cir.1958).

Maumee Bay argues that Future Lawn's service mark is not protected by the Lanham Act. In its answer, defendant asks me to declare the registration of 843-TURF invalid and order the USPTO to cancel registration no. 2,422,699 on the grounds that 843-TURF is generic and/or merely descriptive.²

In this case, the USPTO mailed Future Lawn a Notice of Acceptance and Acknowledgment of §§ 8 & 15 on December 14, 2006, which read:

The combined declaration of use and incontestability filed in connection with the registration identified below meets the requirements of Sections 8 and 15 of the Trademark Act, 15 U.S.C. § 1058 and 1065. The combined declaration is accepted and acknowledged. The registration remains in force.

Future Lawn's service mark has not become generic. This is not a case where a product is referred to so frequently by brand name that brand identity is lost; 843-TURF is not understood by the relevant public as a generic name for landscaping, gardening and/or lawn maintenance services.

Plaintiffs service mark is not descriptive. In the Sixth Circuit, "the fact that a mark is registered on the principal register creates a presumption that the mark is not descriptive." Champions Golf Club v. Champions Golf Club, 78 F.3d 1111, 1118 (6th Cir.1996); see also Schwinn Bicycle Co., supra, 470 F.2d at 977. Further, the 2006 letter from the USPTO is persuasive proof that the registered mark is not merely descriptive. Maumee Bay cannot, therefore, defend this suit on the ground that 843-TURF is generic or descriptive.

In response to the request to cancel registration no. 2,422,699, I agree that in a case such as this, "courts should not overrule the action of the Patent Office to whose care Congress has entrusted the preliminary determination as to whether a mark fulfills the requirements of the statute." Aluminum Fabricating Co., supra, 259 F.2d at 316. The USPTO determined that 843-TURF was strong enough to deserve protection under the Lanham Act in 2001. It affirmed its decision in 2006. Accordingly, I "accept the conclusion of the agency which is entrusted with the duty of administering the Lanham Act, and which is undoubtedly expert in these matters." Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1190 (6th Cir.1988).

2. Infringement

A competitor's use of a confusingly similar telephone number may be enjoined as both infringement (under both the Lanham Act and common law) and unfair competition. See Dial-A-Mattress Franchise Corp., supra, 880 F.2d at 678 (citing Chicago...