Wynn Oil Co. v. Thomas

• Decision Date: 25 June 1986
• Docket Number: No. 2-85-0127.,2-85-0127.
• Citation: 669 F. Supp. 831
• Parties: WYNN OIL COMPANY and Classic Car Wash, Inc. v. Michael F. THOMAS.
• Court: U.S. District Court — Middle District of Tennessee

669 F. Supp. 831

WYNN OIL COMPANY and Classic Car Wash, Inc. v. Michael F. THOMAS.

No. 2-85-0127.

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

June 25, 1986.

Roy S. Gordet, Hamrick, Hoffman, Guillot & Kazubowski, San Jose, Cal., John J. Mulrooney, Parrish & Mulrooney, Memphis, Tenn., for plaintiffs.

Floyd R. Hodge, Knoxville, Tenn., for defendant.

MEMORANDUM

MORTON, Senior District Judge.

Plaintiffs bring this action alleging federal trademark infringement under 15 U.S.C. § 1114; federal unfair competition under 15 U.S.C. § 1125(a); trademark dilution and injury to business reputation under T.C.A. § 47-25-512; violation of Tennessee Consumer Protection Act under T.C.A. § 47-18-104; fraudulent state service mark registration under T.C.A. §§ 47-25-510 and 47-25-503; and common law trademark infringement and unfair competition. The defendant counterclaims, seeking cancellation of plaintiffs' U.S. service mark, alleging infringement of a registered mark under T.C.A. § 47-18-104, and common law unfair competition and trademark infringement. Both parties seek injunctive relief, compensatory and punitive damages, and costs and attorney fees. For the reasons set forth hereinafter, judgment shall be entered for the defendant under the plaintiff's complaint and for the plaintiff in the defendant's counterclaim. Each party shall bear his own costs and attorney fees.

The plaintiff Wynn Oil Company (hereinafter Wynn), a California corporation, sells car care products, including solid and liquid waxes, cleaning kits, fragrances, and vinyl and leather finishers under the federally issued trademark CLASSIC. Wynn was issued the mark CLASSIC on September 9, 1975. Wynn also owns the service mark "Classic Car Wash," registered on January 22, 1983, for car wash services, although it neither owns nor operates any car washes. The plaintiff Classic Car Wash, Inc., a California corporation, owns car washes and franchises car washing services. Classic Car Wash, Inc., allegedly holds a license from Wynn to use the service mark "Classic Car Wash." The defendant, Michael F. Thomas, a Cookeville, Tennessee, resident, owns and operates five car wash operations under the name "Classic Car Wash" or "Classic Car Wash Systems," all of which are located in Tennessee.

WYNN OIL CO. V. THOMAS

The court will first examine Wynn's claim to exclusive use of the trademark "CLASSIC." Wynn has used the word "CLASSIC" in the sale of various car wash products since February 1952,¹ and it owns an incontestable U.S. trademark registration issued on September 9, 1975 for the mark "CLASSIC." This court does not pass directly on the issue of whether CLASSIC may become a trademark under any circumstances because of its common, descriptive nature. It is, at best, a "merely descriptive" term and thereby an inherently weak mark. See generally Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir.1984). Since the word "classic" describes a characteristic of a product, it becomes a valid trademark only by acquiring a secondary meaning; that is, by becoming distinctive of the plaintiff's goods. The term "classic" is not distinctive; it is a word of common usage. The policy of affording weak marks limited protection reflects the same goal as the policy that prevents registration of descriptive names—to prevent the monopolization or appropriation of common words. Truckstops of America v. C-Poultry Co., 596 F.Supp. 1094, 1098 (M.D.Tenn.1983) citing Standard Paint Co. v. Trinidad Asphalt Manufacturing Co., 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536 (1911). In the case at bar, it is unnecessary to hold specifically that "CLASSIC" is inappropriate for trademark protection since we find no infringement. Additionally, the strength or weakness of a mark is but one element to be considered in determining whether confusion is likely to result. Moreover, the Supreme Court recently held that the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the ground that the mark is merely descriptive. See Park 'N Fly v. Dollar Park And Fly, 469 U.S. 189, 205, 105 S.Ct. 658, 667, 83 L.Ed.2d 582, 594 (1985). Naturally, however, absence of likelihood of confusion remains a valid defense to an infringement claim. Therefore, we shall address the "merely descriptive" status of CLASSIC merely as one factor of many in determining likelihood of confusion.

Applicable Law

CLASSIC's line of car wash products have been sold to a limited degree in the distant past in Tennessee, and Wynn therefore claims that the defendant has infringed its exclusive claim to the mark CLASSIC by operating car washes under the name Classic Car Wash.² Wynn charges the defendant with violations of two sections of the Lanham Act, section 32, 15 U.S.C. § 1114 (trademark infringement) and section 43, 15 U.S.C. § 1125 (false designation of origin). Section 32(1)(a) provides in pertinent part:

Any person who shall, without the consent of the registrant use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale ... of any goods or services or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant.

15 U.S.C. § 1114(1) (emphasis added.)

Section 43(a) provides in pertinent part:

Any person who shall affix, apply, or annex, or use in connection with any goods or services, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce ... shall be liable to a civil action ... by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.

15 U.S.C. § 1125(a).

While unfair competition is a broad field within which lies the concept of trademark infringement,³ the standard for relief is substantially identical—likelihood of confusion. Therefore, the alleged violations of unfair competition and trademark infringement will be addressed jointly.

Title 15, U.S.C. § 1115 provides that registration of any trademark is admissible in evidence and is prima facie evidence of the registrant's exclusive right to use the mark in commerce on the goods or services specified in the registration. A mark which has become incontestable⁴ is conclusive evidence of the registrant's exclusive right to use the mark. The major purpose for (and benefit of) federal trademark registration is protection of the registrant from cancellation of its mark. Even a registrant with an incontestable mark retains the burden of proving infringement in order to prevail in a suit brought under the Lanham Act.

The Sixth Circuit Court of Appeals has adopted from the Ninth Circuit the following eight factors which are relevant to a determination of likelihood of confusion:

1. strength of the plaintiff's mark;

2. relatedness of the goods;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. likely degree of purchaser care;

7. defendant's intent in selecting the mark; and

8. likelihood of expansion of the product lines.

Frisch's Restaurants v. Elby's Big Boy, 670 F.2d 642, 648 (6th Cir.1982).

Each of the eight elements set out above is not necessarily entitled to equal consideration in the analysis of likelihood of confusion. Naturally the factors outlined above are to be evaluated in light of the circumstances of each individual factual scenario; therefore, some factors may be weighed more heavily than others.

Strength of Mark

As addressed herein supra, CLASSIC is an inherently weak mark. Standing alone, the word "classic" is frequently used in its generic sense to describe a virtual panoply of goods and services. Additionally, the record is devoid of evidence tending to show that CLASSIC has acquired a secondary meaning. Wynn's sales revenues and advertising expenses do not prove secondary meaning. See Truckstops Corp. of America v. C-Poultry Co., 596 F.Supp., at 1099. Such an ineffective mark is entitled to little, if any protection.

Relatedness of Goods

The car care products sold by Wynn under the mark CLASSIC—waxes, finishes, and the like—bear a moderate degree of similarity to the services provided by the defendant.⁵ The court recognizes that similarity may exist between goods and services, but where a plaintiff sells car care products for consumer use and a defendant provides full-service washing and waxing, the relatedness naturally diminishes. The defendant's sales of bulk car wax bears a greater degree of similarity to the plaintiff's products. However, sales of industrial bulk wax intended for use in an automatic operation differs markedly from sales of individual cans of wax for consumer use. Additionally, defendant sells bulk wax to a very limited number of customers for reuse only in their car wash operations. Therefore, while the goods involved herein are alike in the broad sense of their connection to automobile care, they are distinctively dissimilar because of the markets to which they appeal, in particular the individual consumer versus the industrial purchaser.

Similarity of the Marks

It is clear that both marks prominently display the word "classic." However, similarity of appearance is determined on the basis of the total effect of the designation rather than a comparison of individual features. The "overall impression" is the critical consideration. WLWC Centers Inc. v. Winners Corp., 563 F.Supp. 717, 725 (M.D. Tenn.1983). Initially, a disparity in the marks is apparent since the defendant's mark appears in print type lettering with a mixture of upper and lower case letters, while the plaintiff's mark is designed in script lettering similar to calligraphy. A reproduction of the marks below illustrates...