Tisch Hotels, Inc. v. Americana Inn, Inc.

• Decision Date: 14 September 1965
• Docket Number: No. 14817.,14817.
• Citation: 350 F.2d 609
• Parties: TISCH HOTELS, INC., Americana Hotel Operating Corporation, Plaintiffs-Appellants, v. AMERICANA INN, INC., Americana Motor Courts, Inc., Americana Catering Company, Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

350 F.2d 609 (1965)

TISCH HOTELS, INC., Americana Hotel Operating Corporation, Plaintiffs-Appellants, v. AMERICANA INN, INC., Americana Motor Courts, Inc., Americana Catering Company, Defendants-Appellees.

No. 14817.

United States Court of Appeals Seventh Circuit.

August 5, 1965.

Rehearing Denied September 14, 1965.

Robert S. Hunt, Schiff, Hardin, Waite, Dorschel & Britton, Chicago, Ill., Jay H. Topkis, Neale M. Albert, Paul, Weiss, Rifkind, Wharton & Garrison, New York City, for appellants.

Benjamin M. Becker, Bernard Savin, Ronald N. Mora, Becker & Savin, Chicago, Ill., for appellees.

Before HASTINGS, Chief Judge, and CASTLE and KILEY, Circuit Judges.

KILEY, Circuit Judge.

This appeal presents the question whether plaintiffs are entitled to injunctive relief based on alleged trademark infringement and unfair competition by reason of defendants' adoption and use, without consent, of plaintiffs' registered service mark "Americana". The district court's findings and judgment were against plaintiffs. We reverse.

Plaintiffs own and operate a number of hotels, three of them bearing the name "Americana". They began construction of the Miami Beach, Florida Americana in May 1955 and opened that hotel in December 1956. The Americana of New York opened in September 1962 and the Americana of San Juan, Puerto Rico began operations in November 1962. These are large luxury hotels in the highest price class, catering chiefly to the resort and large convention trade. Defendants own and operate two motels in the Chicago area. Their Americana Motel opened in March 1957 and their Americana Inn opened in April 1961. These motels cater chiefly to businessmen and to families, at moderate rates, and have facilities for sales meetings and small conventions.

Late in 1960 plaintiffs learned of defendants' use of the word "Americana" in connection with hotel services. In February 1961 plaintiffs applied to the Patent Office for registration of Service Mark No. 177,926, consisting of the word "americana", in lower case type, superimposed on a hemispheric background of North and South America. Registration on the Principal Register was granted on September 11, 1962. In August 1961 plaintiffs wrote to defendants complaining of the latter's infringement of the trademark "Americana" and demanded cessation of its use. Defendants rejected this demand.

On September 7, 1962 plaintiffs applied for registration of Service Mark No. 152,729, consisting of the word "Americana" in connection with hotel, restaurant, banquet and catering services. Defendant rejected a second demand by plaintiffs in January 1963 that they cease use of the name, and plaintiffs filed this suit in March 1963. Registration on the Principal Register of the service mark "Americana" was granted on September 17, 1963 and plaintiffs subsequently amended their complaint to add a claim of infringement of this mark. There were no prior registrations of the name in connection with hotel services and no evidence of any such use of the name prior to plaintiffs' adoption of the name.

The district court dismissed the suit upon the merits after finding that plaintiffs' mark was "weak" and entitled only to narrow protection; that plaintiffs had not proved secondary meaning in the name "Americana"; that there was "negligible" evidence of actual or probable confusion; and that plaintiffs had unduly delayed filing suit after being put on notice of defendants' use of their mark. The court concluded ultimately that there was no infringement and that plaintiffs were guilty of laches precluding them from equitable relief.¹ We think that certain of the findings are clearly erroneous and that the conclusions are erroneous.

The court erred in concluding that "since `Americana' is a widely used common word, rather than a coined or fanciful name, it is a weak trademark and is only entitled to narrow, restricted protection".² The word "Americana", as applied to hotel and related services, is, in our opinion, an arbitrary mark, since it in no way suggests or describes hotel services, and it cannot be said that it is weak and entitled to little protection. Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 36 S.Ct. 269, 60 L.Ed. 629 (1916); Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 153-154 (9th Cir.), cert. denied 374 U.S. 830, 83 S.Ct. 1870, 10 L.Ed.2d 1053 (1963); National Lead Co. v. Wolfe, 223 F.2d 195 (9th Cir.), cert. denied 350 U.S. 883, 76 S.Ct. 135, 100 L.Ed. 778 (1955).

Under the Lanham Trade-Mark Act³ the test of infringement is likelihood of confusion. 15 U.S.C. § 1114(1); G. D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385, 388 (7th Cir.), cert. denied 361 U.S. 819, 80 S.Ct. 64, 4 L.Ed.2d 65 (1959). The test of actual confusion, followed by this court in Rytex Co. v. Ryan, 126 F.2d 952 (7th Cir. 1942), is no longer the law. Barbasol Co. v. Jacobs, 160 F.2d 336 (7th Cir. 1947).⁴ Likelihood of confusion can be proved without any evidence of actual confusion, Keller Products, Inc. v. Rubber Linings Corp., 213 F.2d 382, 386, 47 A.L.R.2d 1108 (7th Cir. 1954); Independent Nail & Packing Co. v. Stronghold Screw Products, Inc., 205 F.2d 921, 925 (7th Cir.), cert. denied 346 U.S. 886, 74 S.Ct. 138, 98 L.Ed. 391 (1953), and since reliable evidence of actual confusion is difficult to obtain in trademark and unfair competition cases, any such evidence is substantial evidence of likelihood of confusion. Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F.2d 755, 761 (2d Cir. 1960).

We are to determine, as was the district judge, from the evidence in this record, which was uncontroverted, the "purchaser's patron's state of mind when confronted" by plaintiffs' registered mark and defendants' mark, whether likelihood of confusion exists. G. D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d at 388; National Van Lines, Inc. v. Dean, 288 F.2d 5, 9 (7th Cir. 1951); Colburn v. Puritan Mills, Inc., 108 F.2d 377, 378 (7th Cir. 1939); Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F.2d at 757.

Plaintiffs do not contend that they and defendants are in direct competition or that there is a likelihood that a traveler will become confused and register at defendants' motel in Chicago thinking it is the Miami Beach Americana. Their position is that a prospective patron seeing the "americana" mark on defendants' motel would be likely to confuse it with the same mark used by plaintiffs, and that, being confused as to the source of the services, if the patron is dissatisfied with defendants' services, plaintiffs would suffer, since their "reputation is no longer within their own control and there is an injury, unless there is a clear distinction between the marks." Yale Electric Corp. v. Robertson, 26 F.2d 972, 973 (2d Cir. 1928). As the Ninth Circuit, in Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d at 159, said as to infringement, "The question is, are the uses related so that they are likely to be connected in the mind of a prospective purchaser." We conclude, "as our reactions persuade us," Colburn v. Puritan Mills, Inc., 108 F.2d at 378, that there was, and is, this likelihood.

After adopting the name in 1955, plaintiffs spent about $500,000 in a preopening promotion for their Miami Beach hotel in order to identify the mark in the public mind with luxurious hotel service. They sent out 50,000 21-page brochures to travel agents and prospective patrons and advertised and received free publicity throughout the country. Much of this activity was carried on in Chicago, which is one of plaintiffs' largest markets.⁵ During the opening week at the Miami Beach Americana in December 1956 the hotel was host for the convention of the National Broadcasting Company, and a number of network television shows, including the Perry Como and Steve Allen "Tonight" shows, were televised from the hotel, all prominently featuring the hotel and pictures of its distinctive sign. In all of this promotion, publicity and advertising, the name "americana" was used, in lower case letters, with a five-point star over the "i" and usually with a white line running through the first "a". There is no evidence that anyone else had ever given these distinctive notes to the common word.

Three months after the opening of the Miami Beach Americana defendants adopted the name "Americana" and have used it in the identical style employed extensively by plaintiffs, as the following illustration shows.

Defendants knew of plaintiffs' use of the name, at the time they selected it through trade papers, advertising, and from one of their officer's personal observation of the Miami Beach hotel, which, the evidence shows, prominently displayed the name "Americana" in the distinctive form shown above. Defendants' officers rejected their sign designer's suggested simple "dot" over the "i" in their motel sign and had him substitute for it a five-point star. They testified that this was merely to permit the use of a particular type of flashing light in the sign and that the signmaker independently created the design which was accepted. Defendants introduced expert testimony that the plaintiffs' use of lower case letters, stars over "i's" and lines through letters are common advertising devices, and an exhibit prepared by the expert, consisting of advertisements employing some of these devices; but there are in the exhibit no examples of the distinct form of lower case "a" used by plaintiffs and defendants and none showing a white line through the center of any letters. We find incredible the suggestion that the identity between plaintiffs' and defendants' designs and use of the word "americana" was arrived at independently or by coincidence. Cf. Thompson v. Alpine Motor Lodge, Inc., 296 F.2d 497 (5th Cir. 1961); Travelodge Corp. v. Siragusa, 228 F.Supp. 238 (N.D. Ala. 1964).

The district court found as a fact and concluded that defendants acted in good faith in adopting the name "Ameri...