Nat'l Council of the U.S. Soc'y of St. Vincent De Paul, Inc. v. St. Vincent De Paul Cmty. Ctr. of Portage Cnty., Inc.

Decision Date29 December 2017
Docket Number16-cv-423-bbc
CourtU.S. District Court — Western District of Wisconsin

This is an action for trademark infringement and unfair competition, brought under the Lanham Act, 15 U.S.C. §§ 1051-112l. Plaintiff National Council of the United States Society of St. Vincent de Paul, Inc., which is a Catholic charitable organization dedicated to raising money for the poor, contends that defendant St. Vincent de Paul Community Center of Portage County, Inc. has used plaintiff's trademarks and service marks illegally. It seeks injunctive relief, damages and disgorgement of profits. Defendant has asserted the affirmative defenses of laches, acquiescence, waiver, equitable estoppel, abandonment and classic fair use and has brought a counterclaim of unjust enrichment.

Now before the court are plaintiff's motion for summary judgment on its Lanham Act claim for injunctive (but not monetary) relief and defendant's counterclaim and affirmative defenses, dkt. #52, and defendant's motion for summary judgment with respect to laches, dkt. #36. Also before the court is the parties' joint motion to amend or correct the pretrial order, in which the parties ask that the court vacate the remaining pretrial deadlines and set a later trial date. Dkt. #83. For the following reasons, I am (1) denying plaintiff's motion with respect to its Lanham Act claim and defendant's affirmative defenses of laches and classic fair use; (2) granting plaintiff's motion with respect to defendant's unjust enrichment counterclaim and affirmative defenses of acquiescence, waiver, equitable estoppel and abandonment; (3) denying defendant's motion for summary judgment with respect to laches; and (4) granting the parties' joint motion to reset the remaining pretrial deadlines and trial date.

From the parties' proposed findings of fact, I find that the following facts are undisputed, unless otherwise noted. I have not considered the additional proposed findings of fact, dkt. #77, that plaintiff filed in conjunction with its reply brief in support of its motion because defendant did not have the opportunity to dispute or otherwise respond to those proposed findings.

A. The Parties
1. Plaintiff

Plaintiff National Council of the United States Society of St. Vincent de Paul, Inc. is a non-profit, charitable, Catholic lay organization that was founded in the United States in 1845. It provides services to the needy in 4,600 communities across the United States,including several communities in Wisconsin. Plaintiff began operating in Wisconsin in 1849, and it formally incorporated under the laws of the state of Delaware on June 13, 1946.

Plaintiff's main office is in St. Louis, Missouri, but it is affiliated with approximately 5,000 independently-operated local "councils" and "conferences" that carry out plaintiff's mission of providing charitable services to individuals in their homes and operating thrift stores, meal programs, housing programs and free pharmacies across the United States. The conferences operate within a specific council area, and both councils and conferences are distinct legal entities. For example, the District Council of Madison, Inc., Society of St. Vincent de Paul was incorporated in 1941; the St. Vincent de Paul Society of Portage, Inc. was incorporated in 1973; the St. John, Marshfield Conference was incorporated in 1982; the St. Vincent de Paul Cabrini Conference in Wausau, Wisconsin was incorporated in 2008; and the St. Vincent de Paul Society St. Joseph Conference, Inc. (or the "Baraboo Conference") has been operating since 1911 and incorporated in 1961.

For most of its history, plaintiff was loosely organized, with only a volunteer, part-time chief executive and three or four full-time employees working out of the St. Louis office. In 2006, plaintiff attempted to form a more sophisticated system of corporate governance and management by making the executive director a paid position; this later became the position of chief executive officer. Plaintiff also organized its operations into several regions that were overseen by volunteer regional vice presidents who serve as liaisons between plaintiff and the local affiliates in their regions. Plaintiff currently has 19 employees in its St. Louis office.

2. Defendant

Defendant St. Vincent de Paul Community Center of Portage County, Inc. was organized and incorporated under the laws of Wisconsin in 1984. It is not affiliated or associated with plaintiff. Beginning in 1984, defendant maintained and operated a "St. Vincent de Paul Thrift Store" in Plover, Wisconsin. In 2014, defendant moved the thrift store four miles away, to Stevens Point, Wisconsin, where it sells goods at discount prices using the name "St. Vinnies Thrift Store." It also operates a food pantry and flea market using a similar name.

B. The Contested Marks
1. Plaintiff's undisputed use of marks

Plaintiff registered the following design mark on September 14, 1999:

Image materials not available for display.

Plaintiff registered the "Society of St. Vincent de Paul" word mark on July 29, 2014; the "St. Vinnys Bistro" mark on October 19, 2015; and the "Mini Vinnies" word mark on February 23, 2016. It filed a trademark application for "St. Vinnie's" on February 8, 2016, and the United States Patent and Trade Office issued a notice of publication with respect to that mark on June 8, 2016. However, defendant has opposed the registration of the St. Vinnie'smark in a separate proceeding.

Plaintiff gives verbal authorization to properly established local councils and conferences in good standing to license and use its trade name, trademarks, service marks and logo upon written request, in accordance with its policies and directives. On September 2, 2006, plaintiff's national council issued a resolution providing in relevant part that "approval and authorization to use the name and or logo can only be secured through a written request and provided by a written response. Properly established Conferences and Councils are permitted to use the Society's name and logo consistent with this policy." Dkt. #55, exh. C.

The Madison Council uses the contested marks to advertise and promote its thrift store goods and services. In 2006, the Madison Council issued a press release with the title "Vinnie's to Vend Variety of Vinyl," and in 2008, it started a program called "Vinny's Lockers," which provides a safe location for people without permanent housing to secure and protect their personal items. The Madison Council's Waunakee thrift store advertises and promotes its goods and services through a Facebook page entitled "Vinnys Waunakee." In 2011, the Madison Council decided to increase its use of the St. Vinny's mark in advertising its thrift stores because members of the public already used the term and identified it with the thrift stores. It created commercials called "Let's Go Shop St. Vinny's" and "Shop St. Vinny's" that air on television and YouTube. Also in 2011, the Madison Council registered the internet domain names and, which direct users to the website Around 2014, the Madison Council purchased and installed alarge street sign entitled "St. Vinny's Thrift Store," which is also featured on the Madison Council's website.

2. Defendant's use of marks

Defendant began using the names "St. Vincent de Paul Community Center, Inc.," "St. Vincent de Paul's Thrift Center," "St. Vincent de Paul," "St. Vincent de Paul Store" and "St. Vincent de Paul Thrift Store" to refer to its thrift store and services in 1984 and 1985. In 1986, it used the name "St. Vincent de Paul Society" on its donation receipts. Defendant had the following sign on its thrift store in Plover:

Image materials not available for display.

In 1993, defendant published a quarterly newsletter titled "Vinnie's Newsletter." In one of these newsletters, defendant stated:

Yes, we are much older than we look. For example, did you know that:
** The St. Vincent de Paul Society was organized in Paris in 1833?
** The Society first appeared in the U.S. in St. Louis, Missouri in 1845?

* * *

Well, our figures have changed, our organization structure is different, but our goals have remained the same.

Dkt. #54, exh. 6.

In November 2014, defendant moved its thrift store from Plover to Stevens Point, Wisconsin, which Tom Fahl, a member of plaintiff's board of directors, viewed as a greater threat to plaintiff's marks. (Defendant disagrees with this characterization, and the parties dispute the size and scope of the Stevens Point market.) Defendant named the new store "St. Vinnies Thrift Store" and displayed signs with that name. On November 28, 2014, the Stevens Point Journal published an article about defendant's new thrift store location, stating that "[t]he local store is a part of the St. Vincent de Paul Society," a "Catholic volunteer organization dedicated to serving the poor and disadvantaged." Dkt. #55, exh. 5.

Defendant also promotes and markets its services online. From 2007 to 2015, defendant operated the website and currently has the websiste and a Facebook page.

Although defendant has been aware of plaintiff's existence and the process of affiliating with plaintiff since defendant first started operating its thrift store, it never received permission from plaintiff to use these names or logos. Approximately every three months, members of the public inquire whether defendant is affiliated with plaintiff and defendant responds that it is not. However, defendant does not otherwise inform the public that it does not have an affiliation with plaintiff.

C. Plaintiff's Interactions with Defendant

In 1984, Joe Jersey became chairman of defendant's board of directors. At that time, the community center was...

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