WLWC Centers, Inc. v. Winners Corp.

• Decision Date: 12 May 1983
• Docket Number: 3-83-0169.,No. 3-83-0166,3-83-0166
• Citation: 563 F. Supp. 717
• Parties: WLWC CENTERS, INC., Plaintiff, v. WINNERS CORPORATION, Defendant.
• Court: U.S. District Court — Middle District of Tennessee

563 F. Supp. 717

WLWC CENTERS, INC., Plaintiff, v. WINNERS CORPORATION, Defendant.

Nos. 3-83-0166, 3-83-0169.

United States District Court, M.D. Tennessee, Nashville Division.

May 12, 1983.

Jay S. Bowen, Nashville, Tenn., for defendant.

John B. Link, III, James E. Kirby, Douglas E. Jones, Nashville, Tenn., for plaintiff.

MEMORANDUM

WISEMAN, District Judge.

The plaintiff, WLWC Centers, Inc. WLWC, brought this action for a declaratory judgment as to each party's use of the term "Winners" and seeking removal of the trademark of defendant, Winners Corporation Winners Corp., from the Principal Register of the United States Patent Office. Three days after the filing of WLWC's suit, Winners Corp. filed a suit alleging trademark infringement by WLWC¹ and asking the Court to grant a preliminary injunction. At a hearing on March 10, 1983, the Court consolidated the two cases and heard oral arguments with respect to the request by Winners Corp. for a preliminary injunction. The Court refused to issue a preliminary injunction at that time and took the matter under advisement.

Background

Winners Corp. is a Tennessee corporation having its principal place of business in Brentwood, Tennessee. On September 22, 1981, Volunteer Capitol Corporation Volunteer registered "Mrs. Winner's" as a service mark in fancy block and script letters on the Principal Register. On October 6, 1981, Volunteer registered the term "Mrs. Winner's" in block letters as its trademark. On October 20, 1981, Volunteer registered the term in block letters as a service mark and on December 22, 1981, the term was registered in fancy block and script letters as a trademark. On May 6, 1982, Volunteer changed its name to Winners Corporation. The term "Mrs. Winner's" has been in use since 1979 in connection with the sale of specific food products of Winners Corp. and its predecessor in name, Volunteer.

WLWC is a Tennessee corporation chartered on October 20, 1982, with its principal place of business in Nashville, Tennessee. WLWC submitted the service mark "Winners Weight Loss Centers" to the State Department of the State of Tennessee in late December, 1982. On December 28, 1982, the Secretary of State of the State of Tennessee authorized the exclusive use by WLWC of the term "Winners Weight Loss Centers" for use in connection with "weight loss centers and private brand labeled foods." WLWC immediately began an advertising campaign using "Winners Weight Loss Centers" as its trademark.

Validity of the Trademark

In an action for infringement of a registered trademark, the threshold question is whether the word or symbol is registerable or protectable. Any analysis of the validity of a trademark focuses upon four categories of terms: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. See 2 J. McCarthy, Trademarks and Unfair Competition, § 23:1A McCarthy. A generic term is the name of a particular genus or class of which an individual article or service is a member. A generic term is incapable of trademark protection. See Vision Center v. Optiks, Inc., 596 F.2d 111, 115 (5th Cir.1979). A descriptive term is valid and registerable upon a showing of "secondary meaning," that is, a showing that the public identifies the trademark with a particular "source" rather than the product. See 1 McCarthy, § 11.5. However, before a court can require a showing of secondary meaning for registration of a mark, the mark must be found to be "merely descriptive or deceptively misdescriptive." 15 U.S.C. § 1052. "A mark is descriptive if it is descriptive of: the intended purpose, function or use of the goods; of the size of the goods, of the class of users of the goods, of a desirable characteristic of the goods, or the end effect on the user." 1 McCarthy, § 11:5. A suggestive term does not require a finding of secondary meaning to be registered. Rather than describing an ingredient or characteristic of a product, a suggestive term requires the consumer to use imagination or perception to determine the nature of the goods. See Abercrombie & Fitch Company v. Hunting World, Inc., 537 F.2d 4, 10 (2d Cir.1976). Finally, arbitrary or fanciful marks bear no relationship to the product or services. They are valid without any further showing. 1 McCarthy, § 11:2.

Neither party to this action alleges that "Mrs. Winner's" is a generic term. Nor does the Court have difficulty ruling that the mark is not arbitrary or fanciful. Winners Corp. itself defines an arbitrary or fanciful mark as "one that is `coined' and has no meaning other than identifying a particular product or source thereof." See Defendant's Memorandum of Law in Support of Application for Preliminary Injunction, p. 11. In view of the common usage and understanding of the term "winners" and attempts by Winners Corp. to closely associate itself with the term through its advertising campaign,² the Court cannot say the mark "Mrs. Winner's" has no meaning other than identifying a particular product or source thereof.

The critical decision is whether the mark is merely descriptive or suggestive. Courts have long noted that the distinction between merely descriptive and suggestive marks is "nebulous" and "there is a thin line between a suggestive and a merely descriptive designation...." In re Gourmet Bakers, 173 U.S.P.Q. 565 (TMT App.Bd. 1972) ("the long one" for bread held suggestive); In re Morton-Norwich Products, 209 U.S.P.Q. 791 (TMT App.Bd.1981) ("color care" for laundry bleach held suggestive). Courts now hold that registration of a trademark by the Patent and Trademark Office, without requiring proof of secondary meaning, establishes a rebuttable presumption that the mark is suggestive rather than merely descriptive. See, e.g., Proctor and Gamble v. Johnson and Johnson, 205 U.S.P.Q. 697, 707 (S.D.N.Y.1979) ("sure" for deodorant held suggestive); Abercrombie and Fitch, 537 F.2d at 11.

The mark "Mrs. Winner's" does not convey an immediate idea of the ingredients, qualities or characteristics of their goods. Rather, the term, with slight help from thought and imagination of consumers, conjures up the belief that this is a good or winning product. While attempting to define suggestive terms and evaluating the mark "jewel," one court noted:

Such terms, indeed, shed some light upon the characteristics of the goods, but so applied they involve an element of incongruity, and in order to be understood as descriptive, they must be taken in a suggestive or figurative sense through an effort of the imagination on the part of the observer. Such words do not stand primarily descriptive of kind or quality except in a figurative way for excellence or quality or grade or class and may be marks of origin and not of quality. The court is of the opinion that insofar as the word jewel is concerned, however, no clear line of demarkation can be drawn between a descriptive or suggestive category, and it would appear in such a situation that proof, if any, of secondary meaning would more accurately evaluate the plaintiff's rights.

Jewel Tea Company v. Kraus, 88 F.Supp. 1003, 1006 (N.D.Ill.E.D.1950), aff'd, 187 F.2d 278 (7th Cir.1951). Given the presumption favoring suggestive categorization and the nebulous distinction between suggestive and merely descriptive marks, the Court cannot hold that "Mrs. Winner's" is merely descriptive. The Court is in agreement with the Jewel court, that a more proper method of limiting a mark is through affording it only limited protection if it is a "weak" mark.

WLWC also contends that "Mrs. Winner's" should be removed from the Principal Register because it is "primarily merely a surname." See 15 U.S.C. § 1052(e)(3). Courts have applied either of two tests in determining whether a mark is primarily merely a surname. Some decisions prohibit registration if the principal or ordinary significance of a word is that of a surname.

As one court noted:

... if the word has ordinary meanings as a word and its use as a surname is relatively unimportant, it may be registered without regard to the fact that it might have been used as a surname.

Ex parte Wayne Pump Co., 88 U.S.P.Q. 437 (Comm.Pat.1951). Other courts hold that a mark is primarily merely a surname only if the only impact on customers is the impression that the mark is a surname. See 1 McCarthy, § 13:11. In other words:

If the mark has well known meanings as a word in the language and the purchasing public, upon seeing it on the goods, may not attribute surname significance to it, it is not primarily merely a surname. "King," "Cotton" and "Boatman" fall in this category.

Ex parte Rivera Watch Corp., 106 U.S.P.Q. 145 (Comm.Pat.1955).

Under either test, "Mrs. Winner's" is not primarily merely a surname. The word "winners" has a definite meaning as a word other than as a surname. Although the addition of the courtesy prefix "Mrs." may serve to enhance the surname significance of a name, similar marks have been held not to be primarily merely a surname. See 1 McCarthy § 13:11. Winners Corp. asserts the name is "fanciful" and there has been no assertion that "Mrs. Winner's" is the name of an individual involved with Winners Corp. In view of the common usage of the word "winners" and the efforts by Winners Corp. to take advantage of that usage, the Court cannot find that "Mrs. Winner's" is primarily merely a surname. Thus, the mark shall remain listed on the Principal Register.

Likelihood of Confusion

The second inquiry in this action is whether Winners Corp. may prohibit use of the term "Winners" in any other mark. Two facts must be noted at the outset. First, WLWC has not attempted to use the entire mark "Mrs. Winner's" as part of their own mark. Rather, they use only the common word "Winners" coupled with the additional words "Weight Loss Centers." Second, the Court is now concerned with the amount of protection which shall be afforded the Winners Corp. mark, not the validity of the mark. The fundamental inquiry in a...