Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc.

• Decision Date: 29 October 1997
• Docket Number: No. 97-1963,97-1963
• Citation: 128 F.3d 1111
• Parties: MERIDIAN MUTUAL INSURANCE COMPANY, an Indiana corporation, Plaintiff/Appellant, v. MERIDIAN INSURANCE GROUP, INC., an Illinois corporation, Robert I. Schwimmer and David N. Schwimmer, Defendants/Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 1111

128 F.3d 1111

44 U.S.P.Q.2d 1545

MERIDIAN MUTUAL INSURANCE COMPANY, an Indiana corporation Plaintiff/Appellant, v. MERIDIAN INSURANCE GROUP, INC., an Illinois corporation Robert I. Schwimmer and David N. Schwimmer Defendants/Appellees.

No. 97-1963.

United States Court of Appeals Seventh Circuit.

Argued Sept. 23, 1997.

Decided Oct. 29, 1997.

Fred Foreman, Freeborn & Peters, Chicago, IL, Lisa A. Hiday, Daniel Leuders (argued), Woodard, Emhardt, Naughton, Moriarty & McNett, Indianapolis, IN, for Plaintiff-Appellant.

Richard R. Winter (argued), Thomas P. Arden, McBride, Baker & Coles, Chicago, IL, for Defendants-Appellees.

Before BAUER, FLAUM and EASTERBROOK, Circuit Judges.

BAUER, Circuit Judge.

This matter comes before us from the district court's denial of the plaintiff/appellant's motion for the issuance of a preliminary injunction. For the reasons discussed below, we reverse.

BACKGROUND

The cast of characters in the present case is as follows: Plaintiff/appellant Meridian Mutual Insurance Company ("plaintiff") is an insurance company headquartered in Indianapolis, Indiana, which currently offers both personal and commercial lines of insurance. This includes homeowner's insurance, worker's compensation insurance, car insurance, and the like. Defendant/appellee Meridian Insurance Group, Inc. ("defendant") ¹ is an Illinois-based insurance broker engaged in the sale of group life and health insurance plans. Defendant David Schwimmer is president and 97% shareholder of Meridian Insurance Group, and defendant Robert Schwimmer owns the remaining three percent of the company. With these opening credits behind us, we jump into the thick of the plot.

Plaintiff has been engaged in the insurance business since 1953 using the name "Meridian."

Plaintiff also holds a registration on the term "MERIDIAN," on the Principal Register, for "underwriting life, health, property and casualty insurance" in International Class 36. The mark was registered on January 31, 1978 and has become incontestable under the Lanham Trademark Act, 15 U.S.C. § 1065. Plaintiff markets its insurance in nine Midwestern states (Illinois, Indiana, Iowa, Kentucky, Michigan, Ohio, Pennsylvania, Tennessee, and Wisconsin) through independent insurance agents--that is, through agents who sell policies from a number of different companies.

On July 22, 1996, Robert Schwimmer filed the articles of incorporation for the defendant in Illinois, adopting a corporate name containing the word "Meridian." This name had been conceived by David Schwimmer, who at the time had no knowledge of the plaintiff's existence. Before incorporating, the defendants had run a corporate name search in Illinois and several contiguous states. This search turned up the fact that "Meridian" could not be used by the defendants in Indiana or California because the name was already being used in some manner in the insurance industry. At any rate, defendant was issued its articles of incorporation by the State of Illinois, and began its brokering of group health and life insurance policies in November 1996. Defendant's sales territory is limited to the Chicago metropolitan area, and it targets as clients only businesses employing between 20 and 1,000 persons.

In December, 1996, plaintiff discovered the defendants' use of the name "Meridian" when it was denied a certificate of authority to do business in Illinois. On January 31, 1997, plaintiff filed suit against the defendants, alleging that their use of "Meridian" constituted service mark infringement, unfair competition, and a deceptive trade practice. The plaintiff also sought a preliminary injunction, which was denied by the district court after a hearing on the merits on February 20, 1997. Following the district court's denial of the plaintiff's motion to alter or amend judgment on March 20, 1997, the plaintiff filed a timely notice of appeal. In this appeal, the plaintiff asserts that the district court wrongly found that there was no likelihood of confusion between the parties' marks and thus erroneously denied preliminary injunctive relief. Additionally, plaintiff argues that the district court erred in denying its motion to alter or amend judgment, which sought a narrower injunction. With this brief history in mind, we turn to the appellant's contentions.

DISCUSSION

In reviewing a district court's grant or denial of a preliminary injunction, we review the court's findings of fact for clear error, its balancing of factors for an abuse of discretion, and its legal conclusions de novo. Grossbaum v. Indianapolis Marion County Building Authority, 100 F.3d 1287, 1292 (7th Cir.1996), cert. denied, --- U.S. ----, 117 S.Ct. 1822, 137 L.Ed.2d 1030 (1997) (citations omitted). When considering a motion for a preliminary injunction, a district court must weigh a number of factors. First, it must determine whether the moving party has demonstrated 1) some likelihood of prevailing on the merits, and 2) an inadequate remedy at law and irreparable harm if the injunction does not issue. If the party has done so, the court must next consider 3) the irreparable harm the nonmovant will suffer if the injunction is granted balanced against the irreparable harm to the movant if relief is denied, and 4) the effect granting or denying the injunction will have on nonparties (the "public interest"). Id. at 1291. An examination of these factors reveals that the district court erroneously found that there was no likelihood of confusion in this case and that its denial of the plaintiff's motion for a preliminary injunction must be reversed.

1. Likelihood of Prevailing on the Merits

In order to prevail on its motion for a preliminary injunction, the plaintiff first needed to demonstrate that it has a likelihood of success on the merits of its case. In the preliminary injunction context, a "likelihood of success" exists if the party seeking injunctive relief shows that it has a "better than negligible" chance of succeeding on the merits. International Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079 In the Seventh Circuit, the following seven factors are used to evaluate whether a likelihood of confusion exists in trademark (and service mark) cases:

1084 (7th Cir.1988), citing Curtis v. Thompson, 840 F.2d 1291, 1296 (7th Cir.1988) (other citations omitted). In the trademark/service mark/unfair competition field, the movant shows a likelihood of success by establishing that 1) he has a protectable mark, and 2) that a "likelihood of confusion" exists between the marks or products of the parties. International Kennel, 846 F.2d at 1079, citing A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 906 (7th Cir.1986) (other citations omitted). It is undisputed in this case that the plaintiff has registered the mark "Meridian" with regard to at least some aspects of the insurance field; therefore, we need only turn our attention to the district court's determination that there was no likelihood of confusion by the parties' concurrent use of the mark "Meridian."

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

(2) similarity of the products;

(3) area and manner of concurrent use;

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

(5) strength of complainant's mark;

(6) actual confusion; and,

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

Smith Fiberglass Products, Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir.1993) (citations omitted); International Kennel, 846 F.2d at 1087. None of these factors considered alone is dispositive of the matter, and the weight each is to be accorded varies from case to case. Id. Furthermore, at this preliminary stage of the litigation, "the plaintiff must at a minimum establish that his or her chances of demonstrating a 'likelihood of confusion' are better than negligible." International Kennel, 846 F.2d at 1087. With these standards in mind, we turn our attention to the district court's analysis.

A. Similarity of Marks

In its ruling on the plaintiff's motion, the district court noncommittally found that there was "some similarity" in the names used by the parties but, drawing "some significance to the manner in which these names are being used," also found that there was some dissimilarity between the names. The court found dissimilarity because the defendant's use of Meridian was "distinct in the sense that it's using Meridian Insurance Group, Inc.," because it used teal markings, and because of "everything else that surrounds" its use of the name. Tr. at 142. The factors weighing in favor of similarity were that the plaintiff's mark, "Meridian," was clearly being used by the defendant and that its use of that mark was in the insurance industry. The court did not enunciate whether this factor ultimately weighed for or against the plaintiff's motion, and as such we assume that the court did not weigh it strongly in favor of either party. However, the record shows that the parties' marks are similar, and the district court's finding was erroneous.

In comparing two marks to determine whether they are confusingly similar, this Circuit follows the rule that "if one word or feature of a composite trademark is the salient portion of the mark, it may be given greater weight than the surrounding elements." International Kennel, 846 F.2d at 1087-88, quoting Henri's Food Products Co., Inc. v. Kraft, Inc., 717 F.2d 352, 356 (7th Cir.1983). However, when the public does not encounter the two marks together, it is inappropriate to focus on minor stylistic differences to determine if confusion is likely. International Kennel, 846 F.2d at 1088, citing Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d 186 (5th Cir.1981). Courts must therefore make their comparison "in light of what happens in the marketplace," not merely by looking at the two marks side-by-side. James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 275 (7th...