Vision Center Northwest, Inc. v. Vision Value, LLC

• Decision Date: 03 November 2009
• Docket Number: Cause No. 3:07-CV-183 RM.
• Citation: 673 F.Supp.2d 679
• Parties: VISION CENTER NORTHWEST, INC., d/b/a Vision Values by Dr. Tavel, Plaintiff v. VISION VALUE, LLC, d/b/a Eyeglass Express, Defendant.
• Court: U.S. District Court — Northern District of Indiana

673 F.Supp.2d 679

VISION CENTER NORTHWEST, INC., d/b/a Vision Values by Dr. Tavel, Plaintiff v. VISION VALUE, LLC, d/b/a Eyeglass Express, Defendant.

Cause No. 3:07-CV-183 RM.

United States District Court, N.D. Indiana, South Bend Division.

November 3, 2009.

COPYRIGHT MATERIAL OMITTED

Craig E. Pinkus, Peyton L. Berg, Bose McKinney & Evans LLP, Indianapolis, IN, for Plaintiff.

Paul B. Overhauser, Tami L. Napier, Dennis S. Schell, Overhauser & Lindman LLC, Greenfield, IN, for Defendant.

OPINION and ORDER

ROBERT L. MILLER, JR., Chief Judge.

This case is before the court on the motion of Vision Center Northwest, Inc., d/b/a Vision Values by Dr. Tavel ("Dr.Tavel"), for summary judgment on the claims of the amended complaint and on the claims of the counterclaim, and on the motion of Vision Value, d/b/a Eyeglass Express ("Vision Value"), for summary judgment on the claims of the amended complaint and its own counterclaim. For the reasons that follow, the court denies Dr. Tavel's motion and grants in part and denies in part Vision Value's motion.

FACTS

Dr. Tavel and Vision Value both are in the business of offering vision services and products. Dr. Tavel opened his South Bend, Indiana, store in the Broadmoor Plaza in 1991 as "Vision Values by Dr. Tavel;" in 1996, the business was renamed "Dr. Tavel." Eyeglass Express caught the attention of Dr. Tavel when that business changed its name to "Vision Value" in February 2007. Vision Value's store is located in Mishawaka, Indiana, eight miles or so from Dr. Tavel's South Bend location.

Dr. Tavel filed suit against Vision Value in April 2007, alleging unfair competition under the Lanham Act, 15 U.S.C. § 1125(a), and trademark infringement and unfair competition under common law and Indiana statutory law.¹ Dr. Tavel moved for a preliminary injunction to prohibit Vision Value's use of the "Vision Values" mark. After a hearing, the court issued a preliminary injunction enjoining Vision Value from using "Vison Value" or "Vision Values" in any "signage, telephone directories, billboards, broadcast advertisements, newspaper advertisements, or as a corporate name, trademark, service mark, or assumed name." Opinion and Ord., Nov. 1, 2007, at 20, 2007 WL 3256647. Dr. Tavel changed his store's name to "Vision Value$ by Dr. Tavel," and Vision Value filed a counterclaim for wrongful injunction.

In August 2007, Dr. Tavel obtained the rights to the mark "Vision Value$" from Luxottica, and in February 2008, Dr. Tavel filed an application with the Patent and Trademark Office to register the design mark "Vision Value$ by Dr. Tavel" and the word mark "Vision Value$." The design mark registration was issued on March 24, 2009; the PTO has stayed consideration of the word mark registration based on an objection having been filed by Vision Value and the litigation pending in this court.

The discovery process in this case hasn't been a smooth one, but the ongoing disputes between the parties and counsel that have resulted in numerous motions being filed aren't relevant to the court's consideration of the parties' summary judgment motions and so won't be recapped here. The motions are both ripe for review.

SUMMARY JUDGMENT STANDARD

Summary judgment is appropriate where the "pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." FED. R. CIV. P. 56(c). The court must construe the evidence and all inferences that reasonably can be drawn from the evidence in the light most favorable to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party bears the burden of informing the court of the basis for its motion, together with evidence demonstrating the absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party has met its burden, the party opposing the motion may not rest upon mere allegations or denials in the pleadings, but must set forth specific facts showing that there exists a genuine issue for trial. Anderson v. Liberty Lobby, 477 U.S. at 248, 106 S.Ct. 2505.

Cross-summary judgment motions don't imply that there are no genuine issues of material fact: "[p]arties have different burdens of proof with respect to particular facts; different legal theories will have an effect on which facts are material; and the process of taking the facts in the light most favorable to the non-movant, first for one side and then for the other, may highlight the point that neither side has enough to prevail without a trial." R.J. Corman Derailment Servs., LLC v. International Union of Operating Eng'rs, Local 150, 335 F.3d 643, 647-648 (7th Cir.2003). The court isn't required to grant summary judgment for either side when faced with cross-motions. "Rather, the court is to evaluate each motion on its merits, resolving factual uncertainties and drawing all reasonable inferences against the movant." Crespo v. Unum Life Ins. Co. of America, 294 F.Supp.2d 980, 991 (N.D.Ill.2003) (citations omitted); see also O'Regan v. Arbitration Forums, Inc., 246 F.3d 975, 983 (7th Cir.2001) ("With cross-motions, our review of the record requires that we construe all inferences in favor of the party against whom the motion under consideration is made."). Summary judgment "is the put up or shut up moment in a lawsuit, when a party must show what evidence it has that would convince a trier of fact to accept its version of the events." Springer v. Durflinger, 518 F.3d 479, 484 (7th Cir. 2008) (internal quotation and citation omitted).

DR. TAVEL'S MOTION

Dr. Tavel seeks summary judgment on the claims of his amended complaint and on the claims of Vision Value's counterclaim. Dr. Tavel maintains summary judgment in his favor is proper because he has established that the mark "Vision Values" is valid and protectable and that Vision Value's unlawful use of the mark has caused actual confusion. He says, too, that his entitlement to judgment on his claims would necessarily result in entry of judgment in his favor on Vision Value's claims for wrongful injunction. Vision Value has objected to evidence relied upon by Dr. Tavel, and Dr. Tavel has moved to strike those objections, but because none of the objections affect the court's consideration of the motion, the objections and motion to strike the objections will be denied.

Count I of Dr. Tavel's amended complaint is a claim for unfair competition under 15 U.S.C. § 1125(a), which prohibits the use in commerce of "any word, term, name, symbol, or device" or "any false designation of origin" that is "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." Federal registration of a mark isn't a prerequisite to an action under § 1125(a). See TMT North America, Inc. v. Magic Touch GmbH, 124 F.3d 876, 881 (7th Cir. 1997) ("Since the purpose of a trademark, whether federally registered or unregistered, is to designate the origin of goods, the infringement of such a trademark is actionable under section [1125(a)], provided the other requirements of the section are met.").

Dr. Tavel alleges in Count II of the amended complaint that the same facts support his claims for trademark infringement and unfair competition under the common law and unidentified Indiana statutes.² Therefore, the same analysis will govern Dr. Tavel's claims of unfair competition and trademark infringement because they all turn upon the same law and facts. See Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 428, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003) ("Traditional trademark infringement law is part of a broader law of unfair competition that has its sources in English common law, and was largely codified in the Trademark Act of 1946 (Lanham Act)." (internal citation omitted)); Indiana Cheer Elite, Inc. v. Champion Cheering Organization, LLC, No. 3:05-CV-125, 2005 WL 2219467, at *1 n. 1 (N.D.Ind. Sept. 13, 2005) ("The analysis under the Lanham Act for ... unfair competition also applies to claims for unfair competition under Indiana common law."); Felsher v. University of Evansville, 755 N.E.2d 589, 598 (Ind.2001) ("Indiana courts have created a cause of action for unfair competition, defined as the attempt to create confusion concerning the source of the unfair competitor's goods. This common law tort was historically considered a subspecies of the class of torts known as tortious interference with business or contractual relations." (internal citations omitted)).

To prevail on his claims, Dr. Tavel must prove, first, that he has a protectable mark, and, second, that the defendant's use of the mark is likely to cause consumer confusion. H-D Michigan, Inc. v. Top Quality Serv., Inc., 496 F.3d 755, 759 (7th Cir.2007); Packman v. Chicago Tribune Co., 267 F.3d 628, 638 (7th Cir. 2001). The first element requires a determination of whether a "word, term, name, symbol, or device" is entitled to protection. Trademarks are classified in categories of generally increasing distinctiveness: "(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). Marks that are suggestive, arbitrary, or fanciful "are deemed inherently distinctive and are entitled to protection. ... In contrast, generic marks— those that refer to the genus of which the particular product is a species—are not registrable as trademarks," and descriptive marks—those that are merely descriptive of a product—"are not inherently distinctive" but may acquire the distinctiveness, a ...