Nat'l Council of the U.S. Soc'y of St. Vincent De Paul, Inc. v. St. Vincent De Paul Cmty. Ctr. of Portage Cnty., Inc., 16-cv-423-bbc

NATIONAL COUNCIL OF THE UNITED STATES SOCIETY OF ST. VINCENT DE PAUL, INC., Plaintiff, v. ST. VINCENT DE PAUL COMMUNITY CENTER OF PORTAGE COUNTY, INC., Defendant.

16-cv-423-bbc

UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WISCONSIN

September 5, 2018

OPINION AND ORDER

This action for trademark infringement and unfair competition brought under the Lanham Act, 15 U.S.C. §§ 1051, et seq., is scheduled for trial on October 9, 2018. In an order entered on December 29, 2017, I found that plaintiff National Council of the United States Society of St. Vincent de Paul, Inc. was entitled to summary judgment with respect to defendant St. Vincent De Paul Community Center of Portage County, Inc.'s unjust enrichment counterclaim and many of defendant's affirmative defenses. Dkt. #84. However, I determined that plaintiff had failed to adduce sufficient evidence to prove as a matter of law that its claimed marks are protectable under the Lanham Act or that I should rule in its favor with respect to defendant's affirmative defenses of classic fair use and laches. Dkt. #84. Subsequently, plaintiff filed a motion to reconsider that order with respect to the distinctiveness and protectability of two of plaintiff's registered marks, defendant's affirmative defenses of prior use and classic fair use, who is the senior user of various marks and plaintiff's trade name infringement claim. In an order entered on July 9, 2018, I found plaintiff's word mark (the '794 registration) to be distinctive and protectable as a matter of law and found that defendant may not rely on the affirmative defenses of prior use in 15 U.S.C. § 1115(b) or classic fair use. Dkt. #119. I denied plaintiff's motion in all other respects. However, I allowed plaintiff to submit further evidence to show that its design mark (the '318 registration) is incontestable as a matter of law and to explain what it believes to be the reach or scope of the '318 and '794 registrations and defendant's use of those specific marks. The parties' responses to that order are now before the court. Dkt. ##123, 126.

Because plaintiff has submitted evidence, which defendant has not disputed, that it met the requirements of 15 U.S.C. § 1065(3) by filing an affidavit with the director of the United States Patent and Trademark Office regarding its continued use of its design mark, I conclude that the '318 registration is incontestable as a matter of law. Now that plaintiff has established that its '318 and '794 registrations are protectable, the next step in proving its Lanham Act claims is showing that defendant's use of those marks are likely to cause confusion among consumers. CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 673-74 (7th Cir. 2001). In addition, a few questions remain as to who is the senior user of plaintiff's protected marks, whether defendant may assert the affirmative defense of laches and whether defendant's use of the protected marks is likely to cause "inevitable confusion," which would revive plaintiff's claim from estoppel by laches. Although I did not addressthese issues in the initial summary judgment order because plaintiff had not yet shown any of its marks to be protectable as a matter of law, the parties had an opportunity to brief these issues in conjunction with plaintiff's motion for summary judgment and also discussed them in their responses to my latest order regarding plaintiff's motion for reconsideration. Therefore, in an effort to streamline issues for the October trial, I will revisit plaintiff's motion for summary judgment, dkt. #52, and address the issues of likelihood of confusion, senior user, laches and inevitable confusion, as they relate to the protected marks in the '318 and '794 registrations.

After reviewing all of the parties' submissions, I find that plaintiff is entitled to summary judgment with respect to: (1) liability on its Lanham Act claims regarding defendant's use of the marks that are the subject of plaintiff's '318 and '794 registrations; and (2) defendant's affirmative defense of laches, based on the fact that defendant's use of the marks would result in inevitable confusion. Although plaintiff seeks a permanent injunction under 15 U.S.C. § 1116(a), it has not satisfied the standard for obtaining one or discussed any proposed terms. Plaintiff also has not made clear whether it will be seeking any damages. Accordingly, I will give the parties an opportunity to brief these issues, identify whether there are any other issues remaining and inform the court whether the jury trial is necessary or if any remaining issues may be resolved after an opportunity for further briefing.

OPINION

Under the Lanham Act, a party may assert claims for trademark infringement, 15 U.S.C. § 1114(1) (registered marks), or unfair competition, 15 U.S.C. § 1125(a) (common law marks and trade names). "To prevail on either claim, a plaintiff must establish that (1) its mark is protectable and (2) the defendant's use of the mark is likely to cause confusion among consumers." CAE, 267 F.3d at 673-74. See also Epic Systems Corp. v. YourCareUniverse, Inc., 244 F. Supp. 3d 878, 889 (W.D. Wis. 2017) (federal trademark infringement and unfair competition subject to same standard). As discussed above, I have found that plaintiff's '318 and '794 registrations are protectable as a matter of law. The '794 registration is for the word mark "Society of St. Vincent de Paul." The '318 registration is for a composite mark that includes the text "Society of St. Vincent de Paul U.S.A." and graphic element using the letters S, T, V, de and P.

In my previous order, I questioned the scope of protection of the '318 registration because defendant had used only the words appearing in the composite mark and not the composite mark as a whole. In re Save Venice New York, Inc., 259 F.3d 1346, 1353 (Fed. Cir. 2001) ("A registered mark is incontestable only in the form registered and for the goods or services claimed."); 6 McCarthy on Trademarks and Unfair Competition § 32:152 (5th ed.) (discussing exceptions to incontestability and the scope of presumption as to goods and format). Although the parties argue whether plaintiff may rely solely on the words "Society of St. Vincent de Paul" in the composite mark in proving infringement or unfair competition, plaintiff points out correctly that it does not need to "bootstrap" a claim thata single component of the '318 registration (i.e., the name "Society of St. Vincent de Paul") is distinctive and protectable by itself because I have held that plaintiff has a protectable word mark in that name, which is the subject of the '794 registration. Therefore, I will consider both plaintiff's word and composite marks in determining whether defendant's use of them is likely to cause confusion.

Before turning to the likelihood of confusion analysis and defendant's affirmative defense of laches, one other matter deserves attention. In the previous order, I declined to consider plaintiff's contention that it was entitled to judgment as a matter of law with respect to its being the senior user of all of its claimed marks, because even though plaintiff had adduced some evidence showing that it had been using the name "St. Vincent de Paul" since the 1800s and some version of the nickname "St. Vinnies" since the 1940s, it did not make that showing with any certainty, particularly with respect to its use of the marks prior to the early 2000s. However, plaintiff is correct that no reasonable jury could conclude that defendant was an innocent user of the St. Vincent de Paul name because defendant had knowledge of plaintiff's use of the mark when defendant began using it in the 1980s. In response to plaintiff's motion for summary judgment, defendant did not dispute that it has been aware of plaintiff's existence and the process of affiliating with plaintiff since defendant first started operating its thrift store in 1984. Summ. Jmt. Ord., dkt. #84 at 6. Defendant also did not dispute that without receiving permission from plaintiff, it began using the "St. Vincent de Paul" name in 1984 or 1985, identified itself as the "St. Vincent de Paul Society" on donation receipts in 1986, published the "Vinnie's Newsletter" in 1993 and renamed itsstore "St. Vinnies Thrift Store" in November 2014. Id. at 5-6. Because defendant was well aware at the time it took these actions that plaintiff had been using the "St. Vincent de Paul" name, I agree that a reasonable jury would conclude that plaintiff is the senior user of the St. Vincent de Paul mark.

A. Likelihood of Confusion

"The 'keystone' of trademark infringement is 'likelihood of contusion' as to source, affiliation, connection or sponsorship of goods or services among the relevant class of customers and potential customers." Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992). "To decide whether there is a likelihood of confusion . . . a court must ask whether consumers, and specifically consumers who would use either product, would be likely to attribute them to a single source." Board of Regents of University of Wisconsin System v. Phoenix Int'l Software, Inc., 653 F.3d 448, 455 (7th Cir. 2011). "Possible confusion is not enough; rather, confusion must be 'probable.'" Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir. 2015) (internal citation omitted).

The Court of Appeals for the Seventh Circuit uses the following seven factors to determine the likelihood of confusion: (1) the similarity between the parties' 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 evidence of actual confusion; and (7) the intent of the defendant to "palm off" his product as that of another. Id. No single factor is dispositive,but three are especially important: the similarity of the marks, the intent of the defendant...