Vision Ctr. v. Opticks, Inc.
| Decision Date | 25 August 1978 |
| Docket Number | Civ. A. No. 78-2458. |
| Citation | 461 F. Supp. 835 |
| Court | U.S. District Court — Eastern District of Louisiana |
| Parties | The VISION CENTER, Plaintiff, v. OPTICKS, INC., Will Ross, Inc., and G. D. Searle & Co., Defendants. |
William W. Messersmith, III, Lloyd N. Shields, New Orleans, for plaintiff.
Harry S. Hardin, III, Ewell E. Eagan, Jr., New Orleans, for defendants.
MOTION FOR PRELIMINARY INJUNCTION
INTRODUCTION
This is an action for injunctive relief by The Vision Center, a Louisiana partnership, against Opticks, Inc., a Texas corporation with its principal place of business in Dallas, Texas; Will Ross, Inc., a Delaware corporation with its principal place of business in Milwaukee, Wisconsin and G. D. Searle & Co., a Delaware corporation with its principal place of business in Skokie, Illinois. Plaintiff seeks to enjoin defendants from using the words "Vision Center" in the name of three places of business about to be opened in the Greater New Orleans area under the name "Pearle Vision Center."
The action was originally filed in state court and was removed by the defendants to federal court on the basis of diversity of citizenship of the parties and the required jurisdictional amount involved. The court has jurisdiction by virtue of citizenship of the parties. 28 U.S.C. § 1332.
Plaintiff's demand for a preliminary injunction was tried by this court on August 10 and 11, 1978.
Having heard the evidence presented at trial, having reviewed the documents, photographs and other items introduced as exhibits, and having considered the arguments of counsel, I make the following findings of fact and conclusions of law:
FINDINGS OF FACT
1. Plaintiff, The Vision Center, is a Louisiana partnership organized pursuant to Articles of Partnership, dated September 15, 1967, effective as of October 1, 1967.
2. The trade name, "The Vision Center," has been in continuous and uninterrupted use in the Greater New Orleans area since May, 1955 — a period of over twenty-three years — by plaintiff and its predecessor.
3. The first use of the trade name, "The Vision Center," in the New Orleans area was by Dr. Ellis Pailet, plaintiff's managing partner, who commenced using that name in May, 1955, as a sole proprietor engaged in the practice of optometry. Subsequently, Dr. Pailet hired other optometrists to work for The Vision Center, and, in September, 1967, he granted partnership status to some of the salaried optometrists. Pursuant to the Articles of Partnership, the partnership carried on the name, "The Vision Center." The partnership thereafter and without interruption continued, and still continues, the practice of optometry under that name.
4. The trade name, "The Vision Center," was first registered by Dr. Ellis Pailet with the Secretary of State of Louisiana under the Louisiana Trademark Law (R.S. 51:211 et seq.) on April 19, 1955. The registration was renewed on March 29, 1965, and again on February 14, 1975. The cost of the last renewal was borne by the plaintiff partnership.
5. The Vision Center, since its inception as a sole proprietorship in 1955, and from 1967 as a partnership, until the current time, placed its name before the public to the maximum extent allowed by the ethics of the optometric profession by use of eyeglass cases, lens wipers, lens cleaning solution, announcements of office openings, telephone book yellow pages, recall notices, letterheads, birthday cards, business cards, appointment notices, statements, other direct mailings and signs on and in front of offices. Over the years, The Vision Center has spent considerable sums on such items, and in the year 1977 alone spent over $30,000 for that purpose.
6. In 1978, since media advertising became permissible by optometrists, The Vision Center has advertised on radio and in newspapers and magazines. The Vision Center has, so far during the year 1978, spent about $15,000 for such "media advertising."
7. Plaintiff's volume of business has grown over the years and it has succeeded in expanding from one to six offices, with offices now located at 3901 Veterans Boulevard, Metairie, Jefferson Parish, Louisiana; 4301 Elysian Fields Avenue in the Gentilly section or neighborhood of New Orleans; 9235 Lake Forest Boulevard in the Eastern section of New Orleans, 2901 General De Gaulle Drive, in the Algiers section of New Orleans; Uptown Square, in the uptown section of New Orleans and Hammond Square, Hammond, Tangipahoa Parish, Louisiana.
8. Plaintiff is planning to expand its offices to: Slidell, St. Tammany Parish, Louisiana; Laplace, St. John the Baptist Parish, Louisiana; and to the Central Business District in New Orleans.
9. Plaintiff's market area includes the Louisiana Parishes of Orleans, Jefferson, St. Bernard, Plaquemines, St. Tammany, Tangipahoa, St. Charles and St. John the Baptist.
10. Plaintiff is engaged in the practice of full scope optometry which includes complete visual analysis (including external and internal diagnosis of eye disease, and refractions) and includes dispensing of eyeglasses, contact lenses, eyeglass frames and other visual aids, and all things which optometrists are permitted by law to do.
11. The nature of plaintiff's profession is such that many patients seek out plaintiff as a result of patient and professional referrals. These referrals are normally made to "The Vision Center" or "Vision Center," rather than to a particular optometrist. However, when referrals are made to a particular optometrist, generally, the connection is made to identify that practitioner as a part of plaintiff's office (e. g., "See Dr. ____ at `The Vision Center,' or at `Vision Center'").
12. Plaintiff has over the years obtained and presently obtains patients from its listings in the telephone book yellow pages and from signs on and in front of its offices.
13. During 1978, plaintiff's media advertising of its name has attracted business.
14. Plaintiff's name, "The Vision Center," is well established and is, and has been, well known to the public in its market area for over twenty-three years.
15. No one else in plaintiff's market area uses the combination of the words "Vision" and "Center."
16. There have been instances of confusion between plaintiff's name and the name of others in similar businesses using only the word "Vision" as part of the trade name, including mail being delivered to the wrong place; e. g., such confusion with "Vision Plaza."
17. There has been confusion between plaintiff's business and certain of defendants' Pearle Vision Centers; e. g., there was actual confusion in the mind of a witness who confused defendants' Biloxi, Mississippi facility as being a "Vision Center" connected with plaintiff, and there was confusion by someone who tried to have plaintiff, The Vision Center, honor an eyeglass guarantee of defendants' Pearle Vision Center.
18. Plaintiff's partners first heard rumors that defendants may be opening facilities in the New Orleans area in August, 1977 and, through its attorney, wrote to defendants asking if this were the case. In March, 1978, defendants responded to that inquiry and informed plaintiff that they did intend to open such facilities.
19. By letter dated May 25, 1978, plaintiff, through its attorney, made formal demand on defendants not to use both the words "Vision" and "Center" in its trade name in plaintiff's market area, and by letter of June 21, 1978, plaintiff's attorney made a follow-up demand on defendants therefor.
20. Defendant G. D. Searle & Company is the parent corporation of defendants Will Ross, Inc., and Opticks, Inc. Opticks is considered Searle's "Optical Group" and is doing business under the names Vision Center, Pearle Vision Center, and other Vision Centers.
21. In 1969 Opticks, Inc., acquired a New York City company which had done business since 1952 under the name "Vision Center." This company continued to dispense optical equipment and services after its acquisition by Opticks, Inc.
22. Shortly after the acquisition, Opticks, Inc., began operating similar stores in other areas of the country using the words "vision center" as a trade name or in combination with a prefix.
23. In 1969 Opticks, Inc., was merged into Will Ross, Inc.
24. On July 28, 1970 Will Ross, Inc., registered the words "Vision Center" as a service mark in the principal register of the United States Patent & Trademark Office (No. 895,663). On November 17, 1975 affidavits pursuant to Section 8 and Section 15 of the Lanham Act were filed and accepted with respect to the service mark.
25. On July 13, 1971 Will Ross, Inc., registered the words "Vision Center" as a trademark on the principal register of the U.S. Patent Office (No. 916,280). On November 23, 1976 a Section 15 Affidavit was filed with the U.S. Patent Office with respect to the trademark. On October 5, 1976 a Section 8 Affidavit was accepted by the U.S. Patent Office with respect to the trademark.
26. Opticks, Inc., was recently spun off as a separate corporate entity, and Service mark No. 895663 and Trademark No. 916,280 were assigned by Will Ross, Inc., to Opticks, Inc., as recorded in the U.S. Patent Office on October 1, 1977.
27. Defendant Opticks, Inc., owns and operates over 300 retail outlets for optical goods and services throughout the United States under the trade names "PEARLE Vision Center," "ROGERS Vision Center," and "HILLMAN-KOHAN Vision Center."
28. Defendants use, anywhere, of the words "Vision Center" as part of a trade name was subsequent to plaintiff's use of the words "The Vision Center" as a trade name — plaintiff and its predecessors having used it since May, 1955.
29. Defendants have not heretofore used the words "Vision Center" as part of a trade name in the plaintiff's market area.
30. Defendants are in the business of selling optical goods such as eyeglass frames and lenses, and employ opticians to fit and sell such eye-wear goods.
31. Defendants use eyeglass cases with only the...
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