Humanly Possible, Inc. v. Manpower, Inc.

HUMANLY POSSIBLE, INC. Plaintiff,

v.MANPOWER, INC., d/b/a MANPOWERGROUP, and RIGHT MANAGEMENT INC. Defendants.

No. 11 C 4977

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION

DATED: February 19, 2013

OPINION AND ORDER

Plaintiff Humanly Possible, Inc. is a consulting and education services company located in Illinois. Defendant Manpower, Inc., doing business as ManpowerGroup ("Manpower"), is a global company providing various workplace recruitment and human resource services. Defendant Right Management Inc. is a subsidiary of Manpower that provides business management consulting. There is no need to distinguish between the two defendants as to liability. Since 2011, defendants have used the words "humanly possible" in promotional materials. Plaintiff alleges that defendants' use constitutes trademark infringement and falsein violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a). Plaintiff has registered as a trademark the words HUMANLY POSSIBLE in solid capital letters. Plaintiff uses the words Humanly Possible in its corporate name with initial capitals followed with the abbreviation Inc. Plaintiff also brings state law claims for common law trademark infringement, common law unfair competition, and violations of the Illinois Deceptive Trade Practices Act, 815 ILCS 510/2.¹ Presently pending are cross motions for summary judgment.

Plaintiff describes its activities as follows:

Humanly Possible, Inc. works with mid-size nonprofit organizations in the Chicago area and beyond. We believe that your people—your directors, yoru leaders, your staff, and your volunteers—are the key to your organization's success. We seek clients who

• Wish to expand their impact

• Want to be confident of their organizations's sustainability

• Will work cooperatively to plan their future and implement their plan.

Below we list a selection of our nonprofit and government clients and their projects in order to give a sense of the great variety of challenges on which we enjoy working:

• Spertus Institute of Jewish Studies

Organizational Improvement focused on internal unity and cooperation with regard to mission, vision and programming

• National Kidney Foundation of Illinois

Design and evaluation of corporate and factory workplace education aimed at increasing organ donation

• North West Hospital (Australia)

Organizational assessment of staff and patient satisfaction and well-being, culminating in recommendations for future services, organizational innovation, and management and training initiatives

• Chapin Hall

Management coaching, dyadic coaching, and performance coaching aimed at improving supervisory effectiveness, clarifying roles and responsibilities, and helping staff meet performance expectations

• United States Customs and border Protection

Leadership training and development focused on change and innovation

Plaintiff also describes itself and identifies its clients as follows:

Humanly Possible® was founded in 1991 by Jackie Gnepp and Joshua Klayman. Joshua Klayman has been on the faculty ofthe University of Chicago Graduate School of Business for over 20 years and is an expert in organizational change, knowledge management, and decision making. [C]lients have included Ameritech - IBM - Royal Dutsch Shell - L'Oreal -Accenture - The Interpublic Group - Bell South - Market Day - Northern Indiana Power (NIPSCO) - North West Hospital, Australia - The University of Chicago Hospitals - The University of Chicago Graduate School of Business - The Bank Administration Institute - Le Centre European d'Education Permanente (CEDEP), France.

On a motion for summary judgment, the entire record is considered with all reasonable inferences drawn in favor of the nonmovant and all factual disputes resolved in favor of the nonmovant. Crawford v. Metro. Gov't of Nashville & Davidson Cnty., Tenn., 555 U.S. 271, 274 n.l (2009); Malen v. MTD Prods., Inc., 628 F.3d 296, 303 (7th Cir. 2010); Stokes v. Bd. of Educ. of City of Chicago, 599 F.3d 617, 619 (7th Cir. 2010). The burden of establishing a lack of any genuine issue of material fact rests on the movant. Ponsetti v. GE Pension Plan, 614 F.3d 684, 691 (7th Cir. 2010); Outlaw v. Newkirk, 259 F.3d 833, 837 (7th Cir. 2001). The nonmovant, however, must make a showing sufficient to establish any essential element for which it will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Montgomery v. Am. Airlines, Inc., 626 F.3d 382, 389 (7th Cir. 2010). The movant need not provide affidavitsor deposition testimony showing the nonexistence of such essential elements. Celotex, 477 U.S. at 324; Freundt v. Allied Tube & Conduit Corp., 2007 WL 4219417 *2 (N.D. Ill. Nov. 29, 2007); O'Brien v. Encotech Constr., 2004 WL 609798 *1 (N.D. Ill. March 23, 2004). Also, it is not sufficient to show evidence of purportedly disputed facts if those facts are not plausible in light of the entire record. See Lorillard Tobacco Co. v. A & E Oil, Inc., 503 F.3d 588, 594-95 (7th Cir. 2007); Yasak v. Ret. Bd. of Policemen's Annuity & Benefit Fund of Chicago, 357 F.3d 677, 679 (7th Cir. 2004); Lampley v. Mitcheff 2010 WL 4362826 *6 (N.D. Ind. Oct. 27, 2010). As the Seventh Circuit has summarized:

The party moving for summary judgment carries the initial burden of production to identify "those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact." Logan v. Commercial Union Ins. Co., 96 F.3d 971, 978 (7th Cir. 1996) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548 (1986) (citation and internal quotation omitted)). The moving party may discharge this burden by "'showing'—that is, pointing out to the district court—that there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 325, 106 S. Ct. 2548. Once the moving party satisfies this burden, the nonmovant must "set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P. 56(e). "The nonmovant must do more, however, than demonstrate some factual disagreement between the parties; the issue must be 'material.'" Logan, 96 F.3d at 978. "Irrelevant or unnecessary

facts do not preclude summary judgment even when they are in dispute." Id. (citation omitted). In determining whether the nonmovant has identified a "material" issue of fact for trial, we are guided by the applicable substantive law; "[o]nly disputes that could affect the outcome of the suit under governing law will properly preclude the entry of summary judgment." McGinn v. Burlington Northern R.R. Co., 102 F.3d 295, 298 (7th Cir. 1996) (citation omitted). Furthermore, a factual dispute is "genuine" for summary judgment purposes only when there is "sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S. Ct. 2505 (1986). Hence, a "metaphysical doubt" regarding the existence of a genuine fact issue is not enough to stave off summary judgment, and "the nonmovant fails to demonstrate a genuine issue for trial 'where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party ...."' Logan, 96 F.3d at 978 (quoting Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S. Ct. 1348 (1986)).

Outlaw, 259 F.3d at 837.

Because defendants are entitled to summary judgment dismissing plaintiff's cause of action, it is unnecessary to separately address plaintiff's motion. Defendants contend they are entitled to summary judgment because plaintiff fails to meet its burden of providing evidence supporting a genuine factual dispute that defendants' use of humanly possible is likely to confuse. Alternatively, defendants contend undisputed evidence supports the affirmative defense of fair use. Thefacts set forth below resolve all genuine factual disputes and draw all reasonable inferences in plaintiff's favor.

All the claims require the same two elements: (1) a protectable mark and (2) that the use of the mark is likely to cause confusion among consumers. Packman v. Chicago Tribune Co., 267 F.3d 628, 638 & n.8 (7th Cir. 2001); Bd. of Regents of Univ. of Wise. Sys. v. Phoenix Int'l Software, Inc., 653 F.3d 448, 471 (7th Cir. 2011); Coach, Inc. v. Diva's House of Style, 2012 WL 6049722 *4 (N.D. Ind. Dec. 5, 2012). Defendants contend the second element is not satisfied. Factors to consider in determining whether there is a likelihood of confusion include: " 1. the similarity between the marks in appearance and suggestion; 2. the similarity of the products; 3. the area and manner of concurrent use; 4. the degree of care likely to be exercised by consumers; 5. the strength of the plaintiff's mark; 6. any actual confusion; and 7. the intent of the defendant to 'palm off his product as that of another." Phoenix Int'l, 653 F.3d at 454. Accord AutoZone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008); Packman, 267 F.3d at 643. "No single factor is dispositive. Courts may assign varying weight to each of the factors depending on the facts presented, though usually the similarity of the marks, the defendant's intent, and actual confusion are particularly important."AutoZone, 543 F.3d at 929. Accord Packman, 267 F.3d at 643; Deckers Outdoor Corp. v. Does 1-100, 2013 WL 169998 *3 (N.D. Ill. Jan. 16, 2013).

Defendant Manpower is a global staffing company that provides contingent and permanent staffing solutions to its clients. It operates through four brands: Manpower, ManpowerGroup Solutions, Experis, and Right Management. Right Management provides business management consulting solutions, including talent and career management and outplacement services. Right Management's target customers are large corporate clients with worldwide operations.

Plaintiff's staff consists of two employees, both located in Illinois,...