PUBLISHED OPINION
Case No.: 95-2596
Complete
Title
of
Case:MADISON
REPROGRAPHICS, INC., D/B/A MADISON REPRO, A WISCONSIN CORPORATION,
Plaintiff-Appellant,
v.
COOK'S REPROGRAPHICS, INC.,
FORMERLY REPRO PLUS, INC.,
A WISCONSIN CORPORATION,
MICHAEL S. COOK
AND DARLENE A. COOK,
Defendants-Respondents.
Oral
Argument: May 9, 1996
COURT COURT OF
APPEALS OF WISCONSIN
Opinion
Released: June 27, 1996
Opinion
Filed: June
27, 1996
Source
of APPEAL Appeal from a judgment
Full
Name JUDGE COURT: Circuit
Lower
Court. COUNTY: Dane
(If
"Special" JUDGE: Daniel
R. Moeser
so
indicate)
JUDGES: Gartzke,
P.J., Sundby and Vergeront, JJ.
Concurred:
Dissented:
Appellant
ATTORNEYSFor the plaintiff-appellant the
cause was submitted on the briefs of J. Thomas Haley and Kevin J.
Palmersheim of Haley Palmersheim, S.C. of Middleton. There was oral argument by Kevin J.
Palmersheim.
Respondent
ATTORNEYSFor the defendants-respondents the
cause was submitted on the brief of Richard A. Westley and David J.
Regele of Westley Law Offices, S.C. of Madison. There was oral argument by David J.
Regele.
COURT OF
APPEALS DECISION DATED AND
RELEASED June
27, 1996 |
NOTICE |
A party may file with the Supreme Court a petition to review an
adverse decision by the Court of Appeals.
See § 808.10 and Rule
809.62, Stats. |
This opinion is subject to further editing. If published, the official version will appear in the bound
volume of the Official Reports. |
No. 95-2596
STATE OF WISCONSIN IN
COURT OF APPEALS
MADISON
REPROGRAPHICS, INC., D/B/A MADISON
REPRO,
A WISCONSIN CORPORATION,
Plaintiff-Appellant,
v.
COOK'S
REPROGRAPHICS, INC.,
FORMERLY
REPRO PLUS, INC.,
A
WISCONSIN CORPORATION,
MICHAEL
S. COOK
AND
DARLENE A. COOK,
Defendants-Respondents.
APPEAL
from a judgment of the circuit court for Dane County: DANIEL R. MOESER, Judge. Affirmed.
Before
Gartzke, P.J., Sundby and Vergeront, JJ.
VERGERONT,
J. Madison Reprographics, Inc. appeals
from a judgment dismissing its claims against Cook's Reprographics, Inc.
(formerly known as Repro Plus, Inc.) for common law trade name infringement and
infringement of a mark registered under § 132.01, Stats. After a trial
to the court, the court dismissed the common law claim because it determined
that there was insufficient likelihood of confusion between "Madison
Repro" and "Repro Plus."
We affirm the dismissal of this claim.
The trial court also dismissed the statutory claim. We affirm the dismissal of the statutory
claim, concluding that Cook's Reprographics' logo does not meet the statutory
definition of a "counterfeit mark" under § 132.001(1), Stats.
FACTUAL BACKGROUND
Madison Reprographics
was incorporated in January 1977 under the name QDS, Inc. In 1982, it changed its name to Madison
Reprographics, Inc. Madison
Reprographics' primary business is providing the services of photographic
reproduction, document reduction and enlargement, blue-line printing, large
document copying, and general document reproduction. It provides these services to architects, engineers, graphic
artists, designers, law firms, accounting firms, insurance companies and
publishers. It also sells some drafting
supplies and printing materials. Its
business locations have been on the west side of Madison, Wisconsin, and in
Middleton, Wisconsin, and most of its business is within Dane County.
Madison
Reprographics started to use the name "Madison Repro" in connection
with advertising and the promotion of its business in 1982 or 1983. In October 1983, Madison Reprographics
registered the mark "Madison Repro" in a design format with the
Wisconsin Secretary of State. The
registered mark consists of a solid red rectangle surrounding the word
"repro" in lower-case, bold, sans serif white letters; above the red rectangle
is the word "MADISON" in upper-case, plain, sans serif red
letters. The application described the
business as "Reprographic Service and Sale of Printing Products:
Example--Blue-Line Printing Paper."
Cook's
Reprographics incorporated under the name of "Repro Plus, Inc." in
July 1992, and began doing business on the west side of Madison. Seventy percent of its business consists of
offering the services of plain paper copying, diazo printing, specification
copying, color copying, dry mounting and laminating. The remainder of its business consists of selling drafting and
plotting equipment and graphic arts equipment.
Cook's Reprographics' main client base consists of architects, engineers
and contractors; other clients are advertising agencies, law firms, graphic
artists and interior designers. Most of
its business is within Dane County.
Soon after it began operating, Cook's Reprographics began advertising
and promoting its business using the name "Repro Plus" and a logo
containing the words "Repro Plus Inc." The logo consists of the black outline of a scroll on a white
background. On the scroll,
"Repro" is written in red, serif, italicized letters above "Plus
Inc." in white, serif, italicized letters outlined in black.[1]
COMMON LAW TRADE NAME
INFRINGEMENT
Madison Reprographics
argues that the trial court erred in determining that there was insufficient
likelihood of confusion between the names "Madison Repro" and
"Repro Plus" because there are facts showing actual confusion. Cook's Reprographics responds that the trial
court's determination was correct, and alternatively argues that "Madison
Repro" is a generic term and therefore entitled to no protection at common
law regardless of any likelihood of confusion.
We conclude that the evidence supports both the trial court's implicit
finding that "Madison Repro" is descriptive and its finding that
there was insufficient likelihood of confusion.
Background on Common Law Infringement
Wisconsin recognizes a
cause of action at common law for infringement of a trademark or trade
name. First Wisconsin Nat'l Bank
v. Wichman, 85 Wis.2d 54, 63, 270 N.W.2d 168, 172-73 (1978).[2] In order to prevail on this claim, the
plaintiff must show that a designation meets the definition of trademark or
trade name and that the defendant's use of a similar designation is likely to
cause confusion. Id. at
64-66, 270 N.W.2d at 173-74; Restatement
(Third) of Unfair Competition § 20 (1995) [hereinafter Restatement].
Madison
Reprographics asserts that "Madison Repro" is entitled to protection
as a trade name. A trade name is a word
or other designation, or a combination of such designations, that is used in a
manner that identifies that business or enterprise and distinguishes it from
the business or enterprise of others. Restatement § 12.[3] Just as with trademarks, a designation is
protectable as a trade name only if the designation is distinctive. Restatement
§ 13 cmt. a. Designations can be
either inherently distinctive or can acquire distinctiveness through use in
connection with the business. Restatement § 13(a) and (b). Inherently distinctive designations are
designations that are likely to be perceived by prospective purchasers as
symbols of identification that indicate an association with a particular
source. Restatement § 13 cmt. b.[4]
Designations
that merely describe the nature or other characteristics of the business,
called descriptive designations, are not inherently distinctive but can acquire
distinctiveness through use. Restatement § 13(b). Acquired distinctiveness, also called
secondary meaning, occurs when the relevant consuming public has come to
recognize the designation as one that identifies the business. Id. Secondary meaning can be established through direct evidence,
such as consumer surveys and customer testimony, or through circumstantial
evidence, such as evidence of exclusivity of use, length and manner of the designation's
use, amount and manner of advertising, amount of sales, market share, and
number of customers. Spheeris
Sporting Goods, Inc. v. Spheeris on Capitol, 157 Wis.2d 298, 312, 459
N.W.2d 581, 587-88 (Ct. App. 1990).[5]
A
designation that is understood by prospective purchasers to denominate the
general category, type or class of the goods, services or business with which
it is used is a generic designation. Restatement § 15. The user of a generic designation can never
acquire rights in that designation as a trade name. Id.
Once
the plaintiff has established that the designation it seeks to protect is
distinctive, either inherently so or through secondary meaning, it must prove that
the defendant's use of a similar designation will cause a likelihood of
confusion. This is also described as
proving "confusing similarity."[6] The factors pertinent to proving likelihood
of confusion are: the distinctiveness
or "strength" of plaintiff's trade name; similarity of the
defendant's designation to plaintiff's trade name; similarity and proximity of
the goods or services offered by plaintiff and defendant; overlap of marketing
channels; degree of care likely to be exercised by consumers in selecting the
product or service; evidence of actual confusion; and defendant's intent when
selecting its designation. See Spheeris
Sporting Goods, 157 Wis.2d at 309 n.4, 459 N.W.2d at 586.
Standard of Review
Whether a designation is
generic, descriptive or inherently distinctive is a question of fact, see
1 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 11.10[2] (3d ed. 1996) [hereinafter McCarthy on Trademarks], as is the
determination of whether there is secondary meaning, Spheeris Sporting
Goods, 157 Wis.2d at 311, 459 N.W.2d at 587. The parties dispute whether the question of likelihood of
confusion is a question of law or fact.
Madison Reprographics is correct that in Spheeris Sporting Goods
we stated that whether trade names are confusingly similar is a question of
law. Id. at 309, 459
N.W.2d at 586. We cited a federal court
decision, Gaston's White River Resort v. Rush, 701 F. Supp. 1431
(W.D. Ark. 1988), which represents the minority view among the federal
courts. See McCarthy on Trademarks §
23.22[2][d].
In
Spheeris Sporting Goods, we did not discuss First Wisconsin
Nat'l Bank, which upheld a trial court's finding of likelihood of
confusion because it was "not contrary to the great weight and clear
preponderance of the evidence."
The "great weight and clear preponderance" standard is
essentially the same as the "clearly erroneous" standard. Noll v. Dimiceli's, Inc., 115
Wis.2d 641, 643, 340 N.W.2d 575, 577 (Ct. App. 1983). Nor did we discuss Hirsch v. S. C. Johnson & Son, Inc.,
90 Wis.2d 379, 280 N.W.2d 129 (1979), in which the supreme court stated that
the question of likelihood of confusion is a question for the jury. Id. at 403, 280 N.W.2d at
140. When a court of appeals decision
conflicts with a supreme court opinion, we must follow the supreme court
opinion. State v. Clark,
179 Wis.2d 484, 493-94, 507 N.W.2d 172, 175 (Ct. App. 1993). Following First Wisconsin Nat'l Bank
and Hirsch, we conclude that the question of whether use of a
designation is likely to cause confusion with, or is confusingly similar to,
the trade name or trademark of another is a question of fact.
We
do not reverse a trial court's findings of fact unless they are clearly
erroneous. See § 805.17(2),
Stats. However, where the facts pertinent to a particular issue are
undisputed, the application of a legal standard to those facts is a question of
law, which we review de novo. Woodson
v. Kreutzer, 190 Wis.2d 189, 192, 526 N.W.2d 788, 790 (Ct. App. 1994).
Likelihood of Confusion—Strength of "Madison
Repro"
The
trial court did not decide whether "Madison Repro" is distinctive,
and therefore entitled to protection as a trade name, before deciding that
there was insufficient likelihood of confusion. However, because the distinctiveness of a designation is
pertinent both to likelihood of confusion as well as to the definition of trade
name, we first consider whether "Madison Repro" is a distinctive
designation.
The distinctiveness or
"strength" of a trade name is the first factor in determining
likelihood of confusion. Spheeris
Sporting Goods, 157 Wis.2d at 309 n.4, 459 N.W.2d at 586. The more distinctive a trade name is, the
stronger it is and the greater the likelihood of confusion and scope of
protection. McCarthy on Trademarks § 20.43. A trade name that is descriptive is generally considered weaker
than one that is inherently distinctive.
Restatement § 21 cmt.
i. However, this is not conclusive
because the strength of a descriptive designation is also related to the
strength of the showing of secondary meaning.
Id.; McCarthy on
Trademarks § 11.25[1][c].
Although
the trial court did not decide whether "Madison Repro" is
distinctive, it did state that it was assuming for purposes of argument that
the designation had acquired secondary meaning. This implies a determination that "Madison Repro" is
descriptive because secondary meaning is an issue only when a designation is
descriptive. We may review the record
to determine whether it supports the court's implicit finding that
"Madison Repro" is descriptive.
See Schneller v. St. Mary's Hospital Medical Ctr., 162
Wis.2d 296, 311-12, 470 N.W.2d 873, 879 (1991).
When
a designation consists of two or more words, the designation as a whole must be
considered to determine its distinctiveness, although each component part may
first be considered separately. See
McCarthy on Trademarks § 11.10[1]
and [2]. We agree with Cook's
Reprographics that "Repro" is generic but, considering "Madison
Repro" as a whole, we conclude that the court's implicit finding that the
trade name is descriptive is not clearly erroneous.
Bonnie
Young, an owner of Madison Reprographics, testified that
"reprographics" describes the type of business her company engages
in. It means the process of reproducing
various types of photographic materials, both by manual procedures and digital
publication. Young testified that
"repro" is a shortened form of "reprographics." Young stated that Madison Reprographics
belongs to an association which publishes the "Repro Report." Madison Reprographics began using
"Madison Repro" in connection with its business primarily because
that is how their customers referred to the business.
One
of Cook's Reprographics' owners testified that "repro" has become
just as common as "reprographics."
There was also evidence that another company, Reprographics, Limited,
operated on the westside and southwest side of Madison from 1971 until
1986. This company provided duplication
services for architects and engineers.
Its customers referred to it as "Repro Limited." An architect testified that
"reprographics" is the process used to duplicate architectural
drawings by photographic methods and that "reproduction" is a more
general term for making a copy. Any
architect would know that "repro" is short for either
"reprography" or "reproduction."
Although
the trial court did not make a finding that "reprographics" is
generic, we conclude as a matter of law, based on the undisputed facts, that it
is. It names the class or type of
services Madison Reprographics provides.
The court did find that "repro" is the commonly-used short
version of "reprographics."
An abbreviation of a generic term is also generic if the potential
purchasers recognize it as an abbreviation.
See G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873
F.2d 985, 993-995 (7th Cir. 1989); McCarthy
on Trademarks § 12.12[1]. We
conclude that "repro" is generic because it is recognized as an
abbreviation for
"reprographics" by the customers and potential customers of
reprographics service providers.
The
court did not make any findings on the distinctiveness of
"Madison." We conclude as a
matter of law that "Madison" is a descriptive term since it describes
the geographic location of Madison Reprographics' business. See Restatement
§ 14 (a geographical term descriptive of the location of the business is
descriptive). We also conclude that the
evidence supports a determination that "Madison," in combination with
"Repro," retains its descriptive character such that "Madison
Repro" is descriptive of the location of Madison Reprographics' business.[7]
As
a highly descriptive designation, "Madison Repro" is a weak mark,
unless there is strong evidence of secondary meaning. Although the court did not make a finding on secondary meaning,
its ruling that there was insufficient likelihood of confusion and its comments
on the use by others of "repro" implies that it found the evidence of
secondary meaning was not sufficient to make "Madison Repro" a strong
mark. The record supports this implicit
finding.[8]
The
direct evidence of secondary meaning was sparse. There was no consumer survey.
Direct consumer testimony consisted of the testimony of one architect
that he knew Madison Reprographics as "Madison Repro"; another
architect who testified that he knew Madison Reprographics as "Madison
Reprographics," "Madison Repro" and "Repro"; and
letters from two customers to "Madison Repro." A delivery person testified that he knew
Madison Reprographics as "Madison Repro." The direct consumer testimony does not show that a significant
number of prospective purchasers recognize "Madison Repro" as
distinctive. See Restatement § 13 cmt. e.
The
circumstantial evidence of secondary meaning consisted of the following
undisputed testimony. Madison
Reprographics has operated under the name "Madison Repro" since 1982
or 1983 and no other company in Madison has operated under that name, although
other firms have been known by names containing the word
"repro." "Madison
Repro" is displayed on letterhead, envelopes, business cards, signs,
vehicles and t-shirts worn by employees.
Madison Reprographics has spent several thousand dollars annually, on
average, advertising the name "Madison Repro." This includes $27,500 spent to hire a
marketing firm, beginning in 1992. The
company had sales of over one million dollars in 1993. The primary method of advertising is word of
mouth. The company also does print
advertising under the name "Madison Repro" and has advertised in the
yellow pages under that name since 1984.
Newspaper articles on the company, using the name "Madison
Repro," appeared in 1993, the year Madison Reprographics filed suit.
Although
secondary meaning may be inferred from evidence of exclusive use, advertising
efforts and amount of sales, the trial court could properly have found that the
circumstantial evidence in this case does not show that the highly descriptive
"Madison Repro" has become a strong trade name for purposes of
determining "likelihood of confusion."
Likelihood of Confusion—Other Factors
The
court found the degree of similarity between "Madison Repro" and
"Repro Plus" to be minimal, observing that the word "repro"
is the commonly-used shortened version of "reprographics." When the word common to two designations is
generic, as we have held "repro" is, the focus of inquiry is upon the
confusing similarity of the non-generic portions. McCarthy on Trademarks
§ 23.15[7]. There is nothing similar
about "Madison" and "Plus." The court's finding of minimal similarity is not clearly
erroneous.
The
court found that Madison Reprographics and Cook's Reprographics are engaged in
similar businesses, and that, to a large extent, their customers are the
same. There is no dispute over these
findings. The court also found that the
customers of both companies are "expert consumers and less likely to be
confused than the average citizen."
Professionally and technically-trained consumers can be expected to
exercise a higher degree of care than "the ordinary purchaser" in
consuming products or services related to their profession, making confusion
less likely. See 3A Rudolph Callmann, Callmann Unfair Competition, Trademarks and
Monopolies § 20.12 (4th ed. 1996).
The record supports the court's finding on this factor. The court also found there was no
"intent to deceive" by Cook's Reprographics, and Madison
Reprographics does not challenge this finding.
Madison
Reprographics challenges the trial court's finding that "[t]here has been
some confusion among customers of the Plaintiff but the confusion has been
brief, temporary and quickly remedied."
It argues that because there was some evidence of actual confusion, this
finding is clearly erroneous. We do not
agree.
Although
evidence of actual confusion may be strong evidence of likelihood of confusion,
minimal evidence, such as isolated instances of actual confusion, does not
necessarily establish a likelihood of confusion. See McCarthy on
Trademarks § 23.02[2][a].
Rather, the number and nature of the instances of confusion must be
viewed in context to make an informed decision. Id.
The
evidence of actual confusion consisted of the following testimony. Two architects testified that when they
received a mailing from Repro Plus, Inc.,[9]
their initial impression was that it was from Madison Reprographics. These initial misimpressions were corrected,
in one case by a second look at the material, and in the other by an
inquiry. A graphic artist testified
that he confused the names "Madison Repro" and "Repro Plus"
when speaking to someone at Madison Reprographics. A delivery person testified that he arrived at Madison
Reprographics with a package for Repro Plus, Inc. because he did not read the
bill of lading completely; he saw the word "repro" and thought it
meant Madison Reprographics and did not read the address. One of the owners of Madison Reprographics
testified that other deliveries meant for Repro Plus, Inc. were misdelivered to
Madison Reprographics, but did not provide specifics.[10] The owner of Cook's Reprographics testified
that Cook's Reprographics has not experienced any instance of confusion between
its company and Madison Reprographics.
The record supports the trial court's finding that the instances of
confusion were minimal.
In
summary, although the similarity of the businesses and clients of each company
favors a finding of likelihood of confusion, the rest of the factors do
not: weakness of "Madison
Repro"; minimal similarity to "Repro Plus"; sophistication of
customers; lack of intent to deceive; and minimal evidence of actual
confusion. We conclude the trial
court's finding that there was no likelihood of confusion is not clearly
erroneous.
STATUTORY CLAIM
Madison Reprographics'
statutory claim turns on an interpretation of §§ 132.033 and 132.001, Stats.[11] The interpretation of a statute and the
application of that statute to a set of facts presents a question of law which
we review de novo. Tahtinen v.
MSI Ins. Co., 122 Wis.2d 158, 166, 361 N.W.2d 673, 677 (1985).
Section
132.033(1), Stats., provides that
every person "using a mark may ... enjoin the ... use ... of any
counterfeit mark identical to or substantially identical to that mark." Section 132.033(2), Stats., specifies the remedies available in addition to an
injunction.
Section
132.001, Stats., provides in
part:
(1) "Counterfeit mark" means a
spurious mark that is identical to or substantially identical to a genuine mark
and that is used or intended to be used on or in connection with goods or
services for which the genuine mark is registered and in use....
(2) "Mark"
means a label, trademark, trade name ... that is adopted or used by any person
to designate, make known or distinguish any goods or service as having been
made, prepared or provided by that person and that is registered by that person
under s. 132.01.
Madison
Reprographics contends that because it has registered "Madison Repro"
in a design format with the Secretary of State, it is entitled to an
injunction, monetary damages and attorney fees under § 132.033(1), (2)(b)
and (2)(d), Stats. Cook's Reprographics responds that its Repro
Plus logo is not identical or substantially identical to the registered mark,
as required by the definition of counterfeit, and therefore its logo is not a
counterfeit mark. The parties' dispute
centers on the degree of similarity required and the factors that should be
considered in making the determination of "identical to or substantially
identical to." Because this is not
clear from the language of the statute, we may look to the scope, history,
context, subject matter and object of the statute in order to ascertain the
intent of the legislature. See Ball
v. Dist. No. 4, Area Bd., 117 Wis.2d 529, 538, 345 N.W.2d 389, 394
(1984).
Since
the enactment of the first version of this statute in 1891[12]
until amendments in 1985, the statute permitted injunctions against use of
"counterfeits or imitations" without defining either term. 1985 Wis. Act 181 added § 132.001, Stats., defining "counterfeit
mark," and deleted reference to "imitations" in § 132.033, Stats., and related sections.[13] These and other changes to § 132.033 and
related sections were made in the context of repealing and recreating
§ 132.20, Stats.
("Trafficking in counterfeit marks"), which was the focus of 1985
Wis. Act 181.[14] Section 132.20 provides criminal penalties
for intentionally trafficking in counterfeits marks, or in goods or services
bearing counterfeit marks. Memoranda
accompanying the various drafts of 1985 Wis. Act 181 show that federal
legislation creating criminal penalties for trafficking in counterfeit marks
was the impetus for the legislative proposals finally passed in 1985 Wis. Act
181.[15]
The
definition of "counterfeit mark" in § 132.001(1), Stats., closely tracks the definition
of "counterfeit mark" in the federal counterfeit trafficking statute,
18 U.S.C. § 2320(d), which was taken from the definition in the federal
trademark statute, 15 U.S.C. §§ 1114-1127 (Lanham Act). 15 U.S.C. § 1127 defines "counterfeit"
as "a spurious mark which is identical with, or substantially
indistinguishable from, a registered mark." This definition is in contrast to the Lanham Act's definition of
"colorable imitation," which "includes any mark which so
resembles a registered mark as to be likely to cause confusion or mistake or to
deceive." 15 U.S.C. § 1127. "`Colorable imitation' is an archaic
formulation of the traditional likelihood of confusion basis for infringement
and is the legal theory of most civil trademark infringement
litigation.... [T]he Lanham Act carves
out `counterfeit' as a more egregious type of `colorable imitation.'" McCarthy
on Trademarks § 25.01[5][a].
Colorable imitations are "merely infringements, judged by whether
they are likely to cause the public to associate the copying mark with the
recorded mark. [Counterfeit] marks ...
not only infringe but in addition are such close copies that they amount to
counterfeits." Montres
Rolex, S.A. v. Snyder, 718 F.2d 524, 528 (2d Cir. 1983), cert. denied,
465 U.S. 1100 (1984) (referring to federal custom laws and regulations which
track the Lanham Act definitions). See
also Pepe (U.K.) Ltd. v. Ocean View Factory Outlet Corp., 770 F.
Supp. 754, 758 (D. P.R. 1991).
Because
1985 Wis. Act 181 deleted reference to "imitations" in
§ 132.033, Stats., and
adopted a definition for "counterfeit mark" that closely tracks the
Lanham Act definition of counterfeit, we conclude that "identical to or
substantially identical to" in § 132.001, Stats., means that the challenged designation must be an
exact copy of the registered mark or substantially indistinguishable from
it. This requires a higher degree of
similarity between the registered mark and the challenged mark than is required
for an ordinary trademark infringement claim.
The
trial court did not determine whether the registered mark and the Repro Plus
logo were identical or substantially identical. However, because the pertinent facts are undisputed, we determine
this issue as a matter of law.
The
registered mark and the Repro Plus logo are not identical. They are also not substantially identical or
substantially indistinguishable. Each
has a word or words the other does not have.
They have different fonts, reverse color schemes and different overall
shapes. While there are some
similarities--red and white color schemes and the word "repro"--the
registered mark and the Repro Plus logo are readily distinguishable.
By
the Court.—Judgment affirmed.
AN
EXHIBIT HAS BEEN ATTACHED TO THIS OPINION.
THE EXHIBIT CAN BE OBTAINED UNDER SEPARATE COVER BY CONTACTING THE
WISCONSIN COURT OF APPEALS.
COURT OF APPEALS
OF WISCONSIN
ROOM 231, STATE
CAPITOL EAST
POST OFFICE BOX
1688
MADISON,
WISCONSIN 53701-1688
TELEPHONE: (608) 266-1880
FAX: (608) 267-0640
Marilyn L. Graves,
Clerk
Court of Appeals
[2] The supreme court in First Wisconsin
Nat'l Bank v. Wichman, 85 Wis.2d 54, 270 N.W.2d 168 (1978), adopted the
definitions, rules and rationale of this cause of action in Restatement (Second) of Torts, tentative draft no. 8, §§ 715-17
(1963), which at that time addressed the law of unfair competition, including
the law of trademarks and trade names. Id.
at 63, 270 N.W.2d at 172-73. The
American Law Institute has more recently issued a separate title on the law of
unfair competition, Restatement (Third)
Of Unfair Competition (1995), which contains revisions and additions to
the Restatement (Second) Of Torts
sections that the supreme court adopted in First Wisconsin Nat'l Bank. We refer in this opinion to the pertinent
sections of Restatement (Third) Of
Unfair Competition using the shorthand "Restatement."
[3] A trademark is a word or other designation,
or combination of such designations, that is distinctive of a person's goods or
services and that is used in a manner that identifies those goods or services
and distinguishes them from the goods or services of others. A service mark is a trademark that is used
in connection with services. Restatement § 9. The standard of common law trade name
infringement is analogous to that applicable to trademarks, and the provisions
of the Restatement relating to infringement apply to trade names as
well as trademarks. Restatement § 12 cmt. b. Because "Madison Repro" is used in
connection with reprographic services, it could be considered a service
mark. See Restatement § 9. However, since both parties call it a trade
name, and since the analysis is the same, we consider it a trade name in this
opinion.
[4] Inherently distinctive designations include
fanciful (a coined term having no meaning other than identifying the source,
such as EXXON); arbitrary (an existing word whose dictionary meaning has no
apparent application to the particular product or service, such as SHELL for
petroleum products); and suggestive (suggestive of the nature or
characteristics of the product or business without being clearly descriptive,
such as HERCULES for girders). Restatement § 13 cmt. c.
[5] In some portions of its brief, Madison
Reprographics appears to assume that all trade names are protectable only with
proof of secondary meaning. That is not
the holding of First Wisconsin Nat'l Bank v. Wichman, 85 Wis.2d
54, 270 N.W.2d 168 (1978). The court
there was presented with the argument that "First Wisconsin" was an
arbitrary, fanciful or nondescriptive designation, but it expressly did not
decide that issue because it was undisputed that the designation had acquired a
secondary meaning. First Wisconsin
Nat'l Bank, 85 Wis.2d at 64, 270 N.W.2d at 173. The courts in Spheeris Sporting Goods,
Inc. v. Spheeris on Capitol, 157 Wis.2d 298, 314, 459 N.W.2d 581, 588
(Ct. App. 1990), and Leon's Frozen Custard, Inc. v. Leon Corp.,
182 Wis.2d 236, 239, 513 N.W.2d 636, 638 (Ct. App. 1994), each required proof
of secondary meaning for the trade names at issue. That was correct because, although neither case addressed this
issue, the personal name of a person connected with a business is descriptive,
not inherently distinctive. Restatement § 14.
[6] See 3
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §
23.01[3] (3d ed. 1996). The trial court
used the term "deceptively similar" in addition to "likelihood
of confusion." We understand the
court to have used these terms interchangeably.
[7] First Southern Fed. Sav. & Loan
Ass'n of Mobile v. First Southern Sav. & Loan Ass'n of Jackson County,
614 F.2d 71 (5th Cir. 1980), is to the contrary. That case holds that the combination of a generic term and a
geographic term is not subject to protection under Mississippi trade name
infringement law. Id. at
74. This appears to be the minority
view and we do not adopt it. Numerous
other courts have held that a designation consisting of a geographic term
combined with a generic term is protectable upon proof of secondary meaning. See, e.g., Bank of Texas v. Commerce
Southwest, Inc., 741 F.2d 785, 787 (5th Cir. 1984) ("Bank of
Texas"); Shames v. Coontz, 882 F. Supp. 1173, 1174 (D. Mass.
1995) ("Newbury Dental"); Trans Pacific Ins. Co. v.
Trans-Pacific Ins. Co., 739 F. Supp. 240, 244 (E.D. Pa. 1990)
("Trans Pacific Insurance"); Midwest Research Inst. v. S &
B Promotions, Inc., 677 F. Supp. 1007, 1011-12 (W.D. Mo. 1988); Great
Southern Bank v. First Southern Bank, 625 So.2d 463, 469 (Fla. 1993).
[8] Evidence on secondary meaning may be enough
to qualify a descriptive designation as a trademark or trade name but not
enough to make the designation strong enough to prevent a particular
defendant's use. McCarthy on Trademarks §
11.25[1][c].
[9] The former name of Cook's Reprographics,
Repro Plus, Inc., is used in this paragraph because that was the company's name
at the time this incident occurred.
[10] The testimony of a friend of a shareholder in
Madison Reprographics who is not a customer or potential customer is not
relevant. See Coherent,
Inc. v. Coherent Technologies, Inc., 736 F. Supp. 1055, 1066 (D. Colo.
1990), aff'd, 935 F.2d 1122 (10th Cir. 1991).
[11] Apparently, before the trial court, Madison
Reprographics referred to § 132.01, Stats.,
as the basis for its cause of action, and requested relief under
§ 132.033, Stats. Therefore, the trial court considered the
language in § 132.01 that the affidavit to be filed with the Secretary of State
must state that no other entity has the right to use the mark sought to be
registered either in identical form or "in any such near resemblance
thereto as may be calculated to deceive."
The court also considered the language in § 132.02(3), Stats., that makes it unlawful to
"make use, with intent to deceive, of that mark or any counterfeit mark
which is identical to or substantially identical to that mark." The court found that Cook's Reprographics
did not intend to deceive in using its logo and therefore dismissed the
statutory claim. The court did not
consider the definition of "counterfeit" in § 132.001(1), Stats.
Cook's
Reprographics asserts that Madison Reprographics must show Cook's Reprographics
intended to deceive in order to recover under § 132.033, Stats.
Because of our conclusion that the Repro Plus logo is not identical or
substantially identical to the registered mark, we do not decide the meaning of
"spurious" in § 132.001, Stats.,
or whether relief under § 132.033(1), (2)(b) and (2)(d) require proof of intent
to deceive.