Oleg Cassini, Inc. v. Cassini Tailors, Inc., Civ. No. A-90-CA-24.

• Decision Date: 10 December 1990
• Docket Number: Civ. No. A-90-CA-24.
• Citation: 764 F. Supp. 1104
• Parties: OLEG CASSINI, INC. v. CASSINI TAILORS, INC., and Ghassan Abdul Karim.
• Court: U.S. District Court — Western District of Texas

764 F. Supp. 1104

OLEG CASSINI, INC. v. CASSINI TAILORS, INC., and Ghassan Abdul Karim.

Civ. No. A-90-CA-24.

United States District Court, W.D. Texas, Austin Division.

December 10, 1990.

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Leon Komkov, Milgrim, Thomajan & Lee, Austin, Tex. and Joseph F. Schmidt, Laff, Whitesel, Conte & Saret, Chicago, Ill., for plaintiff.

John M. Kyser, Salmanson, Smith, Travis & Schrager, P.C., Austin, Tex., for defendants.

ORDER

NOWLIN, District Judge.

Before the Court is the Plaintiff's Motion for Summary Judgment and Brief in Support thereof, filed on August 15, 1990. Also before the Court is the Plaintiff's Motion for Leave to File Amended Declarations of Oleg Cassini and Marianne Nestor in Support of Plaintiff's Motion for Summary Judgment, filed on August 21, 1990. The Defendant filed a Response to Plaintiff's Motion for Summary Judgment on October 26, 1990, to which the Plaintiff filed a Reply on November 8, 1990. The Defendant filed a Motion for Leave to File Response to Plaintiff's Reply on November 21, 1990. The Court grants leave to both parties to file the declarations and the response requested, and the Court will consider all documents on file in this cause in rendering its decision.

This controversy arises under the trademark laws of the United States and under the common law of Texas. The Court has jurisdiction pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq. (1982), specifically 15 U.S.C. § 1121 and 28 U.S.C. § 1338. The Plaintiff has standing under section 32(1) of the Lanham Act, 15 U.S.C. § 1114 to prevent the infringement of its registered service marks. The Plaintiff claims that the Defendants have infringed on the Plaintiff's trademark under 15 U.S.C. § 1114(1)(a), have engaged in false designation of origin and false description under 15 U.S.C. § 1125(a), and have engaged in unfair competition under the common law of Texas.

The Plaintiff's causes of action are based on its claim that the Defendants' use of the name "Cassini" in the name of its custom tailor and design business, "Cassini Tailors," infringes on the Plaintiff's federal registrations and common law rights for its trademarks "CASSINI" and "OLEG CASSINI." Although the Defendants admit that they use the name "Cassini" in connection with custom tailoring and alteration of men's and women's clothing, they deny that such use infringes on the Plaintiffs rights. In their Motion for Summary Judgment, the Plaintiffs seek only to determine whether the Defendants' use of "Cassini" violates 15 U.S.C. §§ 1114 and 1125(a) of the Lanham Act and Texas common law. The Plaintiffs do not seek actual damages in the event that the Court finds that the Defendants have infringed on the Plaintiff's trademark.

The Plaintiff obtained its first United States Trademark Registration in 1957 for the mark "OLEG CASSINI." The mark covered men's shirts and ties, women's dresses, coats and suits, and children's dresses and snowsuits. In the following years, the Plaintiff acquired nineteen additional trademark registrations for "OLEG CASSINI," "CASSINI," and other marks in which the name "Cassini" is the dominant feature. The marks cover a variety of clothing and clothing-related goods. As many as seven of the Plaintiff's trademarks have become incontestable under 15 U.S.C. § 1065. The Plaintiff's first four registrations, which are incontestable, cover a broad range of men's and women's clothing and accessories. The Plaintiff has provided the Court with extensive documentation of the widespread use of its marks in these markets.

Under section 33(b) of the Lanham Act, 15 U.S.C. § 1115, the Plaintiff's service mark registrations constitute evidence of the Plaintiff's exclusive right to use its marks in commerce for the services covered by the registration, subject to the seven defenses enumerated in that section. See e.g., Park 'N Fly Inc. v. Dollar Park & Fly, 469 U.S. 189, 194-96, 105 S.Ct. 658, 661-63, 83 L.Ed.2d 582 (1985). The Plaintiff's federal registrations are at least prima facie evidence of its exclusive right to use the marks on the various clothing and clothing-related products set forth in the registrations, see 15 U.S.C. 1115(a), and further, the Plaintiff's exclusive right to use the marks "OLEG CASSINI" and "CASSINI" is conclusively established as a matter of law with respect to several of the registrations. See 15 U.S.C. § 1115(b); Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1184-85 (5th Cir.1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). Consequently, the Court agrees with the Plaintiff's assertion that the only issue for resolution by the Court is whether the Defendants' use of the name "Cassini" in connection with its custom tailoring and alteration business infringes on the Plaintiff's exclusive right.

Trademark infringement occurs whenever, without consent of the registrant, a person uses in commerce "any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114(1)(a). The test for determining whether the Defendant has infringed on the Plaintiff's mark, therefore, is the likelihood of consumer confusion. See Sun-Fun Products, Inc. v. Suntan Research & Development Inc., 656 F.2d 186, 189 (5th Cir.1981); Professional Golfers Ass'n of America v. Bankers Life & Casualty Co., 514 F.2d 665, 669-70 (5th Cir.1975). Actual confusion is not necessary. See Sun-Fun Products, 656 F.2d at 191; Frostie Co. v. Dr. Pepper Co., 341 F.2d 363, 366 (5th Cir.1965). Moreover, the likelihood of confusion is not limited to confusion as to the actual source of a product or service. The use of a name or mark that suggests an affiliation or connection with a trademark owner, or that causes a likelihood of confusion as to sponsorship or endorsement, also constitutes infringement. See Professional Golfers Ass'n of America, 514 F.2d at 669-70.

The Fifth Circuit has held that a variety of factors should be considered in determining whether a likelihood of confusion exists, including:

1. The strength of the plaintiff's mark;

2. The degree of similarity between the plaintiff's and the defendant's marks;

3. The similarity of the plaintiff's and the defendant's goods or services;

4. The nature of customers and retail outlets of the plaintiff and the defendant;

5. The similarities in advertising by the plaintiff and the defendant;

6. The defendant's knowledge and intent in adopting its mark; and,

7. Actual confusion as a result of the defendant's mark.

See e.g., Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir.1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1980). It is not necessary to a finding of service mark infringement that a majority of the factors be present in a given case. See e.g., Armco, Inc. v. Armco Burglar Alarm Co., Inc., 693 F.2d 1155, 1159-60 (5th Cir.1982) (finding a likelihood of confusion based on strength of mark and actual confusion). The Court will consider each of the foregoing factors in turn to determine whether a likelihood of confusion exists, and then will consider the affirmative defense raised by the Defendant in its Response to the Plaintiff's Motion for Summary Judgment.

1. The Strength of the Plaintiff's Mark

The strength of the mark depends upon its degree of arbitrariness in relation to the products or services with which it is used. The case law generally identifies four categories of marks to determine the appropriate scope of protection against infringement. In ascending order of protection, the categories are: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary. See Soweco, 617 F.2d at 1183-84. A "generic" term is a common descriptive name for a type of product or service (e.g., "car," "bread," or "shoes"), and is entitled to no trademark protection. See Soweco, 617 F.2d at 1183. A "descriptive" term is one that directly describes a characteristic or ingredient of a product or service, and is entitled to protection only if it is shown to have acquired a degree of distinctiveness in identifying the plaintiff's product or service. Id. A "suggestive" term does not directly describe, but rather requires the exercise of thought or imagination to connect the mark to the corresponding product or service. See Artcraft Novelties Corp. v. Baxter Lane Co., 685 F.2d 988, 991 (5th Cir.1982) (explaining that "Texas" is suggestive rather than descriptive of oversized products). A suggestive mark is entitled to protection without a showing of distinctiveness. Id. Finally, an "arbitrary" mark is one which neither describes nor suggests the nature of the product or service with which it is used. It is, therefore, considered inherently distinctive, and is entitled to the broadest protection against infringement. See Waples-Platter Cos. v. General Foods Corp., 439 F.Supp. 551, 576 (N.D.Tex.1977); see also Armco, Inc. v. Armco Burglar Alarm, Inc., 693 F.2d 1155, 1159 (5th Cir.1982).

Because the terms "CASSINI" and "OLEG CASSINI" do not describe or suggest the nature of the Plaintiff's products, and are not generic terms, the Court finds that the Plaintiff's mark is arbitrary in connection with its products. Therefore, the Plaintiff's mark is entitled to the broadest protection against infringement.

As previously stated, the Plaintiff in its Motion has provided the Court with vast documentation to support the strength of its trademark. The Defendant does not dispute the strength of the mark, and in fact, seems to rely on the strength of the Plaintiff's mark in many of its arguments.¹ Therefore, the Court is not inclined to elucidate further on the strength and distinctiveness of the mark, and instead, takes judicial notice of the Plaintiff's widespread use of its mark across the...