is recognized by the public when associated with the Genovese name. (See Ex. P20-23). Plaintiff has not shown, however, that the slogan by itself has any commercial recognition. The phrase merely advertises the type of service plaintiff intends to provide its customers. Similar to other commercial phrases, such as "We'll Treat You Right," plaintiff's mark requires no customer imagination and does not conjure up purely arbitrary connotations. Therefore, the Court concludes that plaintiff's mark merely has descriptive strength, and therefore is only entitled to protection if it has secondary meaning.
There are no determinate elements to be considered by the court when analyzing secondary meaning. Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 292 (3d Cir.), cert. denied, 502 U.S. 939, 116 L. Ed. 2d 324, 112 S. Ct. 373 (1991) (quotation omitted). "Secondary meaning is demonstrated where, 'in the minds of the public, the primary significance of a product feature or terms is to identify the source of the product itself.'" Id. Hence, the court may consider "the extent of sales and advertising leading to buyer association, length of use, exclusivity of use, the fact of copying, customer surveys, customer testimony, the use of the mark in trade journals, the size of the company, the number of sales, the number of customers, and actual confusion." Id.
In the instant matter, plaintiff has spent millions of dollars on advertising its mark. (Tr. at 7:6-13). Plaintiff's advertising has appeared in newspapers, circulars, and on radio and television for the past nine years. (Tr. at 7:3-5). The Court notes, however, that said advertising always and primarily advertised the company name, Genovese. (Tr. 16:15-22; 55:21-56:2). However, the expenditure of large sums of money alone does not establish secondary meaning "unless the moving party explains how its efforts were effective in causing the relevant group of consumers to associate the mark with itself." FM 103.1, 929 F. Supp. at 196. Hence, after considering all of these factors, this Court finds they weigh in favor of finding that plaintiff's mark does not have secondary meaning.
c. Actual Confusion
Two of the Scott factors require the Court to examine the length of time the defendant has used the mark, and evidence of actual customer confusion. Scott, 589 F.2d at 1229. Plaintiff concedes that there has been no reported incidence of actual confusion between plaintiff's slogan and defendant's store name. (Tr. 28:6-12; 93:14-21; 94:1-8). Plaintiff argues, however, that confusion is inevitable because defendant has only been open to the public for approximately four months, defendant anticipates opening a total of thirty stores, and plaintiff plans to expand its business to include DMEs. The law requires that the Court not draw a negative inference from the lack of evidence when the defendant has only been operational for a short period of time. Versa, 50 F.3d at 205 (quoting AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 353 (9th Cir. 1979)); see also Ford Motor Co., 930 F.2d at 292 (citing Opticians Ass'n, 920 F.2d at 195) (holding that proof of actual confusion is not necessary). Hence, these factors do not weigh in favor of either party.
d. Defendant's State of Mind
Plaintiff opines that defendant acted in bad faith when choosing a name so closely related to its slogan. Even if defendant innocently chose the mark, plaintiff asserts that defendant acted in bad faith in not conducting an appropriate name search. See Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983).
The mark chosen by defendant was created by the Next Group, a marketing company, as part of a $ 126,000 project. (Tr. at 106:23-107:11). The name ranked first on a list of many generated by the Next Group. (See Ex. P30). Robert O'Connell, President of defendant, testified at the hearing that defendant's attorneys checked the registered trademarks, and discovered plaintiff's slogan. (Tr. at 171:9-25). After careful consideration, however, defendant determined that there was no conflict between its mark and plaintiff's slogan. (Tr. 107:23-108:13; 171:9-174:19). Because plaintiff has not presented any conflicting evidence, the Court finds that defendant did not act in bad faith when choosing its name.
Finally, four of the Scott factors look to similarities and differences between the parties marketing channels, customers, advertising and other factors that might suggest an association between plaintiff and defendant.
As discussed above, the Court finds that plaintiff and defendant do not directly compete in the same markets.
Plaintiff provides DMEs through a supplier. (Tr. at 46:5-20; 91:1-6). Plaintiff does not have DMEs, such as wheelchairs or crutches, immediately available at the store, nor can customers demonstrate the equipment before making a purchase. (Tr. at 78:12-20; see Ex. D16). Rather, customers are directed to call a toll-free telephone number where the equipment can be purchased from a catalog. (Tr. at 46:5-20). Defendant, on the other hand, has all such equipment immediately available and displayed in the store. (Tr. at 100:14-19). Customers are encouraged to experiment with the different DMEs in the store before making an investment. (Id.). The interior of defendant's store, in fact, is specifically designed to make such trials, e.g., ramp for testing wheelchairs, stairs for testing canes, operating seat chair lift. (Tr. at 102:23-103:12). While plaintiff asserts that it intends to expand its stores to inventory DMEs (Tr. at 34:1-3; 78:21-79:5), plaintiff has not expressed an intent to change the configuration of its stores nor its relevant customer base.
Moreover, defendant offers services associated with the use of DMEs, such as counseling and fittings. (Tr. at 101:6-20; 102:10-22). Whereas, plaintiff has no direct contact with the customer and the purchase of the DMEs. (Tr. at 87:2-7). Rather, plaintiff concentrates on the provision of pharmaceuticals, and offers customers an indirect system of obtaining DMEs.
In addition, plaintiff primarily markets to women between the ages of twenty-four and fifty-four, and secondarily senior citizens. (Tr. at 20:3-16). Defendant, in contrast, markets itself toward physically challenged and infirm persons and their care givers. (Tr. at 98:20-99:14; 105:2-15). Also, defendant's customers are attentive and detail-oriented, in that they are looking for specific medical equipment to make one's life more comfortable or accessible.
Finally, plaintiff spent an exorbitant amount of time emphasizing that both stores carry many of the same low-priced items, e.g., vitamins, back braces, health care books, batteries, adult diapers, Dr. Sholls, Neosporin ointment. (Tr. at 67:19-68:6; 74:13-75:7; see Ex. P25). However, defendant only provides those small-ticket items which in some way provide a health benefit to its customers, and these items account for less than 2% of defendant's total sales. (Tr. at 155:17-20). These items constitute only a minuet portion of defendant's sales, as compared to the same percentage of plaintiff's profits. (Tr. at 116:2-7). In contrast, plaintiff's sales of DMEs only amount to less than 1.8% of its total sales, while one-third of its sales are from health and beauty care products. (Tr. at 39:10-23; 96:2-3). Moreover, defendant does not sell the majority of items usually sold in a drug store, such as pet food, automotive products, school supplies, and seasonal items. (Tr. 106:12-18). Plaintiff admits that at most there is only a 20% over lap between the products sold by both stores. (Tr. 130:14-23).
After weighing the Scott factors, the Court finds that plaintiff has not proven that it is likely to succeed on the merits of an action pursuant to the Lanham Act. The Court is strongly persuaded by the factual finding that the marks are not confusing similar and the parties are not direct competitors in the same field. See Fisons, 30 F.3d at 476 (holding that similarity of the two marks is the most important of the ten factors). Accordingly, the Court will not grant a preliminary injunction based on trademark infringement.
The Lanham Act was amended on January 16, 1996, to provide a remedy for the dilution of famous marks. 15 U.S.C. § 1125, historical & statutory notes. Section 1125(c)(1) provides, in pertinent part:
The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.
15 U.S.C. § 1125(c)(1) (Supp. 1996). In analyzing whether a mark is distinctive or famous, the Court must consider:
(A) the degree of inherent or acquired distinctiveness of the mark; (B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (C) the duration and extent of advertising and publicity of the mark; (D) the geographical extent of the trading area in which the mark is used; (E) the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought; (G) the nature and extent of use of the same or similar marks by third parties; and (H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
Id. This section does not require that the plaintiff prove likelihood of customer confusion. Sunbeam Prods., Inc. v. The West Bend Co., 1996 U.S. Dist. LEXIS 12274, 39 U.S.P.Q.2D (BNA) 1545, 1549, 1555 (S.D. Miss. 1996).
The purpose of the law is "'to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it, even in the absence of a likelihood of confusion.'" 937 F. Supp. 204, 1996 U.S. Dist. LEXIS 9778, 1996 WL 391886, at *3 (S.D.N.Y. 1996), reh'g denied, 1996 U.S. Dist. LEXIS 11079, 1996 WL 438174 (S.D.N.Y. Aug. 2, 1996). Through the federal law, "Congress sought to discourage forum-shopping and give authority to federal courts to issue nationwide injunctions based upon trademark dilution." Id. (citation omitted).
To date, there is only one reported case which discusses the new law. See Dr. Seuss Enterprises, L.P. v. Penguin Book USA, Inc., 924 F. Supp. 1559 (S.D. Cal. 1996). That court, however, did not address the issue of "famous" marks because it was not disputed by the parties. Id. at 1573. Earlier this year, however, in an unreported opinion, the Southern District of Mississippi addressed a plaintiff's claim that the defendant violated the new law by selling a stand mixer which infringed on plaintiff's mixer. Sunbeam, 39 U.S.P.Q.2D (BNA) at 1546. The court noted that the plaintiff had marketed essentially the same mixer for almost seventy years. Id. at 1547. In fact, the court concluded, the design of the plaintiff's mixer remained unchanged since 1979. Id. at 1551. In essence, the court found that the plaintiff's mixer "can certainly be identified as a unique and viable product configuration which has evolved into its present shape." Id. None of the other mixers, the court determined, even closely resembled the overall appearance of the plaintiff's mixer, and each mixer had its own individual personality. Id. Based on these findings, the court concluded that the plaintiff's mixer qualified as a famous mark. Id. at 1555.
Subsequently, the District Court for the Southern District of New York determined that the phrase "The Greatest Show On Earth" was a famous mark of Ringling Brothers circus. Ringling Bros., supra, at *5-6. In a brief dissertation, the court found that the slogan had "become a famous mark which the public at large immediately associates with the Ringling Bros.-Barnum & Bailey Circus." Id. at 5. The court concluded, however, that the defendant was not employing the plaintiff's mark when it used "The Greatest Bar on Earth" to promote its restaurant. Id. at *6.
Finally, earlier this month the Eastern District of Pennsylvania addressed the claim of plaintiff Wawa, Inc. that the defendant's use of the name "Haha 24 Hr. Market" violated the Federal Trademark Dilution Act of 1995. Wawa, Inc. v. Haaf, 1996 U.S. Dist. LEXIS 11494, No. 96-4313 (CJC), 1996 WL 460083, at *1-2 (E.D. Pa. Aug. 7, 1996). The court found that "Wawa is an arbitrary or fanciful mark and not descriptive of goods and services its owner markets." Id. at 2. The mark, the court determined, had been used by the plaintiff for almost ninety years, and was extensively advertised. Id. Therefore, the court concluded that the Wawa mark was famous. Id.
Unlike the cases above, this Court finds that plaintiff's mark is not famous and unworthy of protection under the new federal law. The slogan has only been used by plaintiff for nine years. (Tr. at 6:24-25). Also plaintiff only uses the slogan in association with the store name Genovese. (Tr. 16:15-18; 55:21-56:2). Therefore, in and of itself, the slogan is not inherently distinctive. Defendant is not employing plaintiff's mark by using the words "take good care." Moreover, as discussed above, the parties are not in direct competition. Hence, the Court finds that plaintiff is unlikely to succeed on the merits of its dilution claims.
3. False Designation of Origin, False Description & Representation, False Advertising
Plaintiff's final cause of action is for violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). The federal law provides:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or