Security Center, Ltd. v. First Nat. Sec. Centers
| Decision Date | 21 January 1985 |
| Docket Number | No. 84-3120,84-3120 |
| Citation | 225 U.S.P.Q. 373,750 F.2d 1295 |
| Parties | SECURITY CENTER, LTD. A Louisiana Corporation, SCL Limited Partnership Through Its General Partner The Security Center, Ltd., Plaintiffs-Appellees, v. FIRST NATIONAL SECURITY CENTERS, A Joint Venture, Donna C. Richards, Charles P. Stroble, Jeffrey L. Saus, Louis A. Rubenstein, John W. Godsey, Winston R. Youngblood, Virgil E. Morris, Jr., Albert L. Diaz, Dewey M. Metts, and William H. Richards, Individually and as Joint Venturers, Defendants-Appellants. |
| Court | U.S. Court of Appeals — Fifth Circuit |
Barham & Churchill, Charles F. Thensted, New Orleans, La., for defendants-appellants.
Liskow & Lewis, Julie E. Schwartz, New Orleans, La., Hopgood, Calimafde, Kalil, Blaustein & Judlowe, Paul T. Meiklejohn, New York City, for plaintiffs-appellees.
Appeal from the United States District Court for the Eastern District of Louisiana.
Before REAVLEY, TATE and HILL, Circuit Judges.
This case involves the susceptibility to trademark protection of the phrase "security center," when used in reference to a business housing private storage vaults. The business in question also includes pick-up and delivery services, leasing office space, and mail services.
The primary issue is whether the mark "security center" is so distinctive as to be protected under trademark law. The trial court held it to be a distinctive mark and accorded it protection. Securities Center, Ltd. v. First National Securities Centers, 592 F.Supp. 723 (E.D.La.1984). Finding that the name is not a protectable mark, we reverse the judgment of the court below and render judgment for First National Security Centers.
The Security Center opened in downtown New Orleans in the fall of 1980, and received nationwide publicity focusing on its fortress-like building, formerly the Federal Reserve Bank building. It was one of the first businesses to provide an array of services such as storage of valuables in private vaults, the leasing of office space, pick-up and delivery services, and the receipt and forwarding of mail.
In May 1982, the appellant began using the name First National Security Centers. In January 1983, a sign appeared at a construction site in Metairie, Louisiana, announcing to the public that the building under construction would house First National Security Centers. The services to be offered by First National were virtually identical with those of the Security Center.
In December 1983, the Security Center sought to enjoin First National from using "security center(s)" in its name. A preliminary injunction was granted. On February 10, 1984, the district court issued a judgment and opinion stating that the mark "The Security Center" is suggestive, and that it is liable to confusion with "First National Security Centers." The court therefore permanently enjoined First National from using the phrase "security center(s)" in its name.
Security Center brought suit under the Lanham Act, 15 U.S.C. Secs. 1051-1127 (1982), basing jurisdiction on 15 U.S.C.A. Sec. 1121 (West Supp.1984). 1 It relied substantively on 15 U.S.C. Sec. 1125 (1982), 2 which makes actionable a person's use of a false designation of origin for goods or services. Registration of a trademark or service mark is not a prerequisite for recovery under this provision. Boston Professional Hockey Association, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir.), cert. denied, 423 U.S. 868, 96 S.Ct. 132, 46 L.Ed.2d 98 (1975).
The categorization of a term as distinctive or nondistinctive is a factual issue. 3 Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 792 (5th Cir.1983); Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 n. 12 (5th Cir.1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). Hence, we review the district court's findings on this issue under the clearly erroneous standard of Fed.R.Civ.P. 52(a). Zatarains, 698 F.2d at 792.
"Trademark cases often involve line drawing in areas that are inherently 'fuzzy.' " Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1182 (5th Cir.1980), cert. denied, 450 U.S. 981, 101 S.Ct. 1516, 67 L.Ed.2d 816 (1981). This case is no exception. In order to bring these indistinct lines into better focus, this circuit has reduced the inquiry to two basic questions. The first is "whether the plaintiff has a protectable property right in the name it seeks to defend from use by others." Bank of Texas v. Commerce Southwest, Inc., 741 F.2d 785, 786 (5th Cir.1984). The second question--and the ultimate issue--is infringement, as judged by likelihood of confusion. Falcon Rice Mill, Inc. v. Community Rice Mill, Inc., 725 F.2d 336, 345 (5th Cir.1984). Only when a trademark "rises to the level of trademark protectability--either by a showing that it is sufficiently distinctive or has acquired secondary meaning--does the question of likelihood of confusion become relevant." Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 425 (5th Cir.1984) (footnote omitted).
To ascertain whether the mark is distinctive, we must first categorize it: Is the mark generic, descriptive, suggestive, or fanciful? These categories indicate different levels of protectability. Vision Center v. Opticks, Inc., 596 F.2d 111, 115 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668, 62 L.Ed.2d 646 (1980). The lower court aptly noted that "security center" could be neither a generic 4 nor a fanciful name, so our analysis must focus on determining whether it is descriptive or suggestive.
The Vision Center court distinguishes descriptive from suggestive terms thus:
A descriptive term identifies a characteristic or quality of an article or service and, though ordinarily not protectable, may become a valid trade name if it acquires a secondary meaning. A suggestive term suggests, rather than describes, a characteristic of the goods or services and requires an effort of the imagination by the consumer in order to be understood as descriptive. A suggestive term requires no proof of secondary meaning in order to receive trade name protection.
Id. at 115-116 (citations and footnotes omitted). This distinction is widely accepted and has met with approval in other cases of this circuit. See, e.g., Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790-91 (5th Cir.1983); Sun Banks of Florida, Inc. v. Sun Federal Savings & Loan Association, 651 F.2d 311, 315 (5th Cir.1981).
From the caselaw we distill two overarching questions to be considered in determining whether a mark is descriptive or suggestive. First, we must inquire how much imagination is required on the consumer's part in trying to cull some indication from the mark about the qualities, characteristics, effect, purpose, or ingredients of the product or service. See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 792 (5th Cir.1983); Vision Center v. Opticks, Inc., 596 F.2d 111, 116 (5th Cir.1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668, 62 L.Ed.2d 646 (1980). Second, we determine whether sellers of similar products are likely to use, or actually do use, the term in connection with their goods. Zatarains, 698 F.2d at 793; Vision Center, 596 F.2d at 116-17. The other questions elaborated by commentators 5 and mentioned by the courts are subsumed within, and subordinated to, these larger questions. The weight of these two considerations, taken together, determines the proper classification of the mark.
On the issue of imaginativeness, we read "security center[s]" without saddling the phrase with unlikely meanings to demonstrate that it is ambiguous, hence imaginative, hence suggestive. A plausible interpretation of the phrase--not in vacuo, but in its natural setting--would be "a center where security is afforded one's property." To arrive at this definition, one must jettison all patently extraneous definitions of either "security" or "center." Even so, the phrase is not unambiguous. It is less ambiguous, however, when one adds into the equation the context and environment in which the mark is used--the natural environment in which the consumer would meet with the phrase. Nevertheless, there is no reason why a descriptive phrase could not be ambiguous--many, if not most, are. 6
To be descriptive, a term need only describe the essence of a business, rather than to spell out comprehensively all its adjunct services. The essence of both the Security Center and First National Security Centers is that they provide secured storage facilities. They also engage in various related activities, but safekeeping is the gist of the trade. No English word would "describe" all the activities engaged in; and yet this fact alone would not make the uncomprehensive term "security" suggestive, merely because it might take imagination to deduce that the other activities play a part in the business. Indeed, even the most fecund imagination might not arrive at such a conclusion, though it might readily surmise accurately about certain characteristics of the business. For instance "center," modified as it is by "security," must needs be a place, probably a building. And "security," vague though it is, does connote certain qualities and characteristics about this "center." We conclude, then, that the mark, though hardly transparent, does give the unknowing consumer some idea of the function, quality, or components of the business. Still, we note that "security center" is just as likely to suggest a jail as a private vault.
The imagination test might usefully be reversed by inquiring whether...
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