JAY C. ZAINEY, District Judge.
Before the Court are a
Plaintiff Southern Snow and defendant SnoWizard are both engaged in the business of manufacturing ice-shaving machines and flavoring concentrates, and selling these products to vendors of "snowball" flavored ice confections. SnoWizard successfully registered a federal trademark for the snowball flavor ORCHID CREAM VANILLA. SnoWizard then sent Southern Snow a cease and desist letter asserting that Southern Snow was infringing the trademark. In response Southern Snow filed suit claiming that SnoWizard had obtained the trademark for ORCHID CREAM VANILLA by providing false information to the trademark registering authority. Southern Snow also included unfair competition claims for flavors ORCHID CREAM VANILLA and WHITE CHOCOLATE & CHIPS, and the term SNOBALL.
In 2009, plaintiff Parasol Flavors, LLC filed Civil Action 09-3394 after SnoWizard sent it a cease and desist letter. This lawsuit involved trademarks pertaining to flavors SNOSWEET®, HURRICANE, PRALINE, KING CAKE, BUTTERED POPCORN, MUDSLIDE, GEORGIA PEACH, DILL PICKLE, CAKE BATTER, and BUTTERCREAM. SnoWizard filed counterclaims in that action and the parties filed cross motions for summary judgment. Judge Lemmon was assigned the case at the time and she dismissed all of SnoWizard counterclaims as to HURRICANE, PRALINE, KING CAKE, BUTTERED POPCORN, MUDSLIDE, GEORGIA PEACH, DILL PICKLE, CAKE BATTER, and BUTTERCREAM, finding those terms to be generic and therefore unprotectable as trademarks. SNOSWEET® was not part of the ruling. (09-3394, Rec. Doc. 56). Judge Lemmon later transferred Civil Action 09-3394 to this Section for consolidation with 06-9170.
In March 2010, Southern Snow and Simeon, Inc. filed Civil Action 10-791 against SnoWizard for infringement of SOUTHERN SNOW® and FLAVOR SNOW® and challenging the validity of SnoWizard's trademarks for CAJUN RED HOT, CHAI LATTEA, COOKIE DOUGH, MOUNTAIN MAPLE®, SNOFREE®, SNOSOUR®, SNOBALLS (design), SWISS ALMOND COCO, TIRAMISU, and ZEPHYR. SnoWizard filed counterclaims in that action for cancellation of SOUTHERN SNOW® and FLAVOR SNOW® and for infringement of MOUNTAIN MAPLE®, CAJUN RED HOT, and GEORGIA PEACH.
SnoWizard also filed counterclaims in each of the actions for attorney's fees for groundless, bad-faith, and harassing main claims. Civil Action 10-791 was consolidated with 06-9170 and 09-3394.
Plaintiffs are seeking monetary and injunctive relief under the Lanham Act, as well as state law recovery pursuant to La. R.S. § 51:1405, et seq. (LUTPA)
Via their instant motion for partial summary judgment. Plaintiffs seek injunctive relief (and orders cancelling any registrations)SNOBALL, SNOSWEET®, HURRICANE, KING CAKE, BUTTERED POPCORN, GEORGIA PEACH, PRALINE, MUDSLIDE, CAKE BATTER, DILL
Plaintiffs' validity challenge to 22 of SnoWizard's claimed trademarks is really only a first stop on the road to the injunctive and other equitable relief that Plaintiffs ultimately seek via this motion.
SnoWizard, both in its opposition to Plaintiffs' motion and in its memorandum in support its own motion for partial summary judgment, challenges Plaintiffs' unfair competition/false advertising claims on several fronts. First, SnoWizard argues that neither the Lanham Act nor the LUTPA creates a cause of action for the act of improperly asserting trademark rights through the use of the TM symbol because use of the TM symbol does not create a false representation. Second, SnoWizard has taken great pains to address each of the 22 trademark names individually to persuade the Court that they are not generic in nature. Finally, SnoWizard contends that Plaintiffs cannot show that any alleged misrepresentation actually caused customers to be misled.
Trial in this matter is set for Monday, July 18, 2011.
The unfair competition claims at issue in the parties' motions are claims of false advertising and they have their genesis in Section 43(a) of the Lanham Act.
15 U.S.C.A. § 1125(a)(1)(B) (West 2009). This section provides protection against a "myriad of deceptive commercial practices," including false advertising or promotion. Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1383 (5th Cir.1996) (quoting Resource Dev. v. Statue of Liberty-Ellis Island Found., 926 F.2d 134, 139 (2nd Cir.1991)). Section 43(a) of the Lanham Act has been characterized as a remedial statute that should be broadly construed. Id. (citing Gordon & Breach Science Pub. v. Am. Inst. of Physics, 859 F.Supp. 1521, 1532 (S.D.N.Y.1994)). While the congressional purpose for the Lanham Act is to provide remedies for unfair and misleading use of trademarks, it is now clear that § 43(a) extends beyond mere trademark protection. Schlotzsky's, Ltd. v. Sterling Purch. & Nat'l Distrib. Co., 520 F.3d 393, 399 (5th Cir.2008) (citing Procter & Gamble Co. v. Amway Corp., 242 F.3d 539, 563 (5th Cir.2001); Dastar Corp. v. Twentieth Cent. Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003)).
However, Section 43(a) "does not have boundless application as a remedy for unfair trade practices." Dastar, 539 U.S. at 29, 123 S.Ct. 2041 (quoting Alfred Dunhill, Ltd. v. Inter Cigar Co., 499 F.2d 232, 237 (2nd Cir.1974)). "[B]ecause of its inherently limited wording. Section 43(a) can never be a federal `codification' of the overall law of `unfair competition,'" but can only apply to certain unfair trade practices prohibited by its text. Id. (quoting 4 J. McCarthy, Trademarks & Unfair Competition § 27:7, p. 27-14 (4th ed. 2002)).
The plaintiff must establish five elements to make out a prima facie case of false advertising under the Lanham Act:
IQ Prods. Co. v. Pennzoil Prods. Co., 305 F.3d 368, 375 (5th Cir.2002) (citing Pizza Hut, Inc. v. Papa John's Int'l, Inc., 227 F.3d 489, 495 (5th Cir.2000)). The failure to prove the existence of any element of the prima facie case is fatal to the plaintiff's claim'. Pizza Hut, 227 F.3d at 495 (citing Taquino v. Teledyne Monarch Rubber, 893 F.2d 1488, 1500 (5th Cir. 1990)).
In order to obtain monetary damages or equitable relief in the form of an injunction for a false advertising claim, a plaintiff must demonstrate that the commercial advertisement or promotion is either literally false, or if not literally false, that it is likely to mislead and confuse customers. Pizza Hut, 227 F.3d at 495 (quoting Seven-Up, 86 F.3d at 1390). If the statement at issue is shown to be literally false, then the court must assume that it actually misled customers, without requiring any evidence of such deception from the plaintiff IQ Prods., 305 F.3d at 375 (citing Pizza Hut, 227 F.3d at 495). But if, on the other hand, the statement is shown to be only misleading or ambiguous, then the plaintiff must demonstrate actual deception through direct evidence of consumer reaction to the advertising, referred to as materiality, or evidence of consumer surveys or consumer tests. Id. In such a case, actual deception and materiality cannot be presumed. Thus, the plaintiff's burden of proof is significantly impacted by whether the statements at issue are literally false or simply misleading.
The type of evidence needed to prove materiality varies depending on what type of recovery the plaintiff seeks. Plaintiffs looking to recover monetary damages for false or misleading advertising that is not literally false must prove actual deception. Pizza Hut, 227 F.3d at 497 (citing Balance Dynamics Corp. v. Schmitt Ind., 204 F.3d 683, 690 (6th Cir. 2000)). Plaintiffs hoping to prove actual deception must produce evidence of actual consumer reaction to the challenged advertising or surveys showing that a substantial number of consumers were actually misled by the advertisement. Id. (citing PPX Enters., Inc. v. Audiofidelity Enters., Inc., 818 F.2d 266, 271 (2nd Cir.1987)). Plaintiffs seeking injunctive relief must prove that the defendant's representations "have a tendency to deceive consumers." Pizza Hut, 227 F.3d at 497 (quoting Balance Dynamics, 204 F.3d at 690). Although this standard requires less proof than actual deception, the plaintiff must
Furthermore, in the absence of a literally false statement, the plaintiff may not rely on the judge or the jury to determine "based solely upon his or her own intuitive reaction, whether the advertisement is deceptive." Pizza Hut, 227 F.3d at 497 (quoting Johnson & Johnson v. Smithkline Beecham, Corp., 960 F.2d 294, 297 (2nd Cir.1992)). The "common sense" belief of an expert will likewise be insufficient. IQ Prods., 305 F.3d at 376.
A threshold question essential to any claim under § 43(a) of the Lanham Act is a determination of whether the challenged statement is one of fact — actionable under § 43(a) — or one of general opinion, which is not actionable under § 43(a). Pizza Hut, 227 F.3d at 496. For instance, bald assertions of superiority or general statements of opinion cannot form the basis of Lanham Act liability. Id. (citing Presidio Enters., Inc. v. Warner Bros. Distrib. Corp., 784 F.2d 674, 685 (5th Cir. 1986); Groden v. Random House, Inc., 61 F.3d 1045, 1051 (2nd Cir.1995)). In order to be actionable, the statements at issue must be a "specific and measurable claim, capable of being proved false or of being reasonably interpreted as a statement of objective fact." Id. (quoting Coastal Abstract Serv., Inc. v. First Am. Title Ins. Co., 173 F.3d 725, 731 (9th Cir.1999)). "[A] statement of fact is one that (1) admits of being adjudged true or false in a way that (2) admits of empirical verification." Pizza Hut, 227 F.3d at 496 (quoting Presidio, 784 F.2d at 679). It is well-settled that puffery, i.e., exaggerated advertising, blustering and boasting upon which no reasonable buyer would rely, is a category of statement not actionable under the Lanham Act. Id. Similarly, statements of opinion will rarely be the basis for Lanham Act liability. Id. at 496 n. 6.
In order to obtain permanent injunctive relief pursuant to § 43(a) the plaintiff must show, in addition to the other elements that make a prima facie case of false advertising, that he will suffer irreparable harm if the injunction is not granted. Seven-Up, 86 F.3d at 1390 (citing McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1548-49 (2nd Cir.1991)). Of course, in order to obtain preliminary injunctive relief, the plaintiff must show 1) a substantial likelihood of success on the merits, 2) a substantial threat of irreparable injury if the injunction is not issued, 3) that the threatened injury if the injunction is denied outweighs any harm that will result if the injunction is granted, and 4) that the grant of an injunction will not disserve the public interest. Speaks v. Kruse, 445 F.3d 396, 399-400 (5th Cir.2006). Irreparable harm and irreparable injury are not assumed but must be proven by the party seeking injunctive relief.
Summary judgment is appropriate only if "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any," when viewed in the light most favorable to the non-movant, "show that there is no genuine issue as to any material fact." TIG Ins. Co. v. Sedgwick James, 276 F.3d 754, 759 (5th Cir.2002) (citing Anderson v. Liberty
Moreover, where Plaintiffs seek summary judgment on claims on which they bear the burden of proof at trial, the burden is understandably heavier because Plaintiffs must show the absence of a genuine issue of material fact as to each element of the claims for which they seek summary judgment. Trautmann v. Cogema Mining, Inc., No. 5:04-117, 2006 WL 2716156, at *2 (S.D.Tex. Sept. 20, 2006). Plaintiffs must support their motion with credible evidence that if uncontradicted would entitle them to a directed verdict at trial. Id. (citing Irby v. Bittick, 44 F.3d 949, 953 (11th Cir.1995); Wasserman v. Bressman, 327 F.3d 229, 238 (3rd Cir.2003)).
The Court begins its analysis with the threshold question of whether Plaintiffs state a claim for unfair competition under the Lanham Act. SnoWizard has consistently maintained that neither the Lanham Act nor the LUTPA creates a cause of action for the act of improperly asserting trademark rights through the use of the TM symbol, and that neither statutory scheme contains any prohibition against claiming a trademark through the use of the TM symbol. SnoWizard emphasizes that there is no caselaw to support Plaintiffs' "overreaching theory." (Rec. Doc. 281-1, at 5).
The Court has always found the argument that Plaintiffs fail to state a claim because neither § 43(a) nor the LUTPA contains any express prohibition against claiming a trademark through the use of the TM symbol unpersuasive because neither scheme purports to enumerate the universe of potential unfair trade practices that are actionable. While § 43(a) is more limited on its face to certain classes of unfair trade practices, it remains that the statute makes no attempt to enumerate the specific instances of when a symbol may constitute a false or misleading representation of fact about a characteristic of a product. Surely, it is for this reason that the Fifth Circuit has expressly recognized the broad construction to which the statute is entitled. And the LUTPA contains even broader wording than § 43(a).
It is now clear, however, that Plaintiffs' unfair competition false advertising claims are grounded on a legal theory that tests much more than whether the Lanham Act allows for a cause of action for improper use of trademark symbols. Plaintiffs' theory even goes beyond whether the use of trademark symbols can constitute a misleading statement. Plaintiffs' theory is that when a competitor like SnoWizard uses an ® or TM symbol in conjunction with a generic mark — which can never be the subject of a trademark — then a literally false statement has been made. And when those marks with their impressive ®s and TMs appear on something like a product list directed at customers then false advertising — clearly a type of unfair competition — has occurred. Plaintiffs recognize that there are no reported decisions specifically supporting their theory of false advertising but they also point out that "[t]here is also not any reported caselaw saying that asserting bogus trademarks is not unfair competition." (Rec. Doc. 293, at 1).
In order to determine whether placing an ® symbol or a TM next to a generic term is actionable as a literally false statement under § 43(a), it is important to understand how trademarks are classified.
A descriptive mark describes the qualities or characteristics of a good or service. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). Marks which are merely descriptive of a product are not inherently distinctive because when used to describe a product they do not inherently identify a particular source. Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753. But descriptive marks may acquire the distinctiveness which will allow them to be protected. Id. A descriptive mark may serve as a trademark if it "has become distinctive of its applicant's goods in commerce."
Generic marks stand in contrast to the inherently distinctive categories of marks (suggestive, arbitrary, fanciful) and to descriptive marks, which may acquire distinctiveness. A generic term is one that refers to the genus of which the particular product is a species or to a common descriptive name. Park 'N Fly, 469 U.S. at 195, 105 S.Ct. 658 (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir.1976)). Generic terms are not registerable nor protectable as trademarks and even a registered trademark is subject to cancellation at any time if it becomes generic. Id. (citing 15 U.S.C. § 1064(3)).
The "genericness doctrine" also recognizes that trademark law protects a phrase only if and to the extent it is necessary to enable consumers to distinguish one producer's goods from others and even then only if the grant of such a "monopoly" will not substantially disadvantage competitors by preventing them from describing the nature of their goods. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 305 (3rd Cir.1986) (citing Ideal Toy Corp. v. Plawner Toy Mfg. Corp., 685 F.2d 78, 84 (3rd Cir.1982)). Thus, if a term is necessary to describe a product characteristic that a competitor has a right to copy, a producer may not effectively preempt competition by claiming that term as its own. Id.
In sum, an identifying mark is distinctive and capable of being protected if it is either inherently distinctive or has acquired distinctiveness through secondary meaning. Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753 (citing Restatement (Third) of Unfair Competition § 13, pp. 37-38 & cmt. a). Generic marks need not apply.
Considering how marks are typically categorized along the distinctiveness continuum ranging from fanciful to generic, it becomes apparent why Plaintiffs' case for literal falsity is grounded on the marks at issue being generic as opposed to perhaps merely descriptive. Merely descriptive marks can attain protected status if the proponent of the mark can present sufficient evidence of secondary meaning. In other words, unlike generic marks, descriptive marks are not ipso facto inconsistent with trademark protection, it is just more difficult to obtain protection for a descriptive mark. Thus, even where the USPTO or a court determines that a party has failed to establish secondary meaning for a descriptive mark, it would not be fair to say that his assertion of the trademark via the TM was a literally false statement. The problem may be one simply of failed proof at the time that the claim is pressed. Therefore, if a trademark symbol is ever to constitute a literally false statement grounded solely on the classification to which the mark belongs, it could only arise with respect to generic marks.
Even though generic marks are never protectable as trademarks, it is quite another matter to conclude that a competitor's use of a trademark symbol with a generic mark constitutes a literally false statement of fact. Food flavor names cannot be ipso facto generic in nature because the learned examining attorneys at the USPTO were willing to register several of
The glaring problem with Plaintiffs' theory of the case is that classifying marks into one of the five categories is really somewhat of a subjective exercise, particularly at the descriptive/generic end of the category continuum where flavor names are often found. Courts, commentators, and our own Fifth Circuit "have recognized the difficulties of distinguishing between suggestive, descriptive, and generic marks." Canfield, 808 F.2d at 296-97 (citations omitted); Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 115 n. 11 (5th Cir.1979) (citing Am. Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 11 (5th Cir.1974) ("Some courts see little difference between the generic and the descriptive categories and tend to meld the two concepts into one.")). In Canfield, the Third Circuit noted that one commentary had even found the distinction between descriptive and generic marks to be "artificial and unworkable." Canfield, 808 F.2d at 296-97 (quoting Folsom & Teply, Trademarked Generic Words, 89 Yale L.J. 1323, 1351 (1980)). "Any given term's correct classification is a factual issue." Xtreme Lashes, 576 F.3d at 227 (quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 n. 12 (5th Cir.1980)). It is hard to escape the conclusion that in the lower end of the categorization continuum some marks could be classified as either descriptive or generic depending upon who does the classifying. Classification is by no means an exact science.
A perfect example of this phenomenon can be found in the A.J. Canfield Co. situation demonstrated by A.J. Canfield Co. v. Honickman, supra, which is a Third Circuit decision, and A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903 (7th Cir. 1986), out of the Seventh Circuit. Both Canfield decisions involved a soft drink manufacturer's ability to trademark the flavor name "chocolate fudge" for its highly successful diet soda. The district court for the Northern District of Illinois granted a preliminary junction in Canfield's favor precluding a competitor from using the term for a competing diet soda. A.J. Canfield Co. v. Vess Beverages, Inc., 612 F.Supp. 1081 (N.D.Ill.1985). The district court had concluded that "chocolate soda" was merely descriptive of the flavor but that Canfield had demonstrated that it could likely show secondary meaning so as to earn trademark protection. The Seventh circuit affirmed that decision, and while the court noted that secondary meaning would be difficult to establish with such a highly descriptive flavor name, it was nevertheless willing to let Canfield try. Canfield, 796 F.2d at 906-07.
Canfield had also filed suit in the Eastern District of Pennsylvania against another competitor and the district court in that case also found "chocolate fudge" to be descriptive. A.J. Canfield Co. v. Concord Beverage Co., 629 F.Supp. 200 (E.D.Pa. 1985). The district court refused, however, to issue a preliminary injunction and Canfield appealed. The Third Circuit affirmed but it did so based on its conclusion that the term was generic and therefore could never serve as a trademark regardless of any potential evidence as to secondary
The Canfield decisions demonstrate the sometimes inexact and uncertain nature of classification with respect to marks. Five learned federal judges (three appellate judges on the Seventh Circuit and two district judges) considered the term "chocolate fudge" and found that it should be classified as descriptive. Three other learned federal judges (appellate judges on the Third Circuit) considered the same term and found it to be generic. Thus, it would seem that the term "chocolate fudge" is potentially trademarkable in one geographic region (if secondary meaning is shown) and never subject to trademark protection in another geographic region. But genericness, unlike secondary meaning, does not differ based on the geographic region at issue or at least it is not intended to. For Plaintiffs' theory to succeed, a mark would either have to be generic or not but the Canfield decisions demonstrate the fallacy of this otherwise axiomatic statement.
Likewise, the fact that the USPTO has denied registration of a flavor name as generic need not deter a party from seeking trademark protection. The USPTO's refusal to register a mark is subject to reversal by a federal court. See 15 U.S.C.A. § 1071. Further, marks that were once considered descriptive and subject to protection can with time become generic and lose their protected status. See 15 U.S.C. § 1064(3). Further, a mark might be generic in one context but perhaps descriptive in another. See In re Seats, Inc., 757 F.2d 274, 277-78 (Fed.Cir. 1985) ("The term `seats' may be generic in relation to chairs or couches or bleachers. It is clearly not generic to reservation services."). Clearly, genericness is not an intrinsic, immutable characteristic of a mark.
All of the foregoing points serve to demonstrate the difficulty in imposing liability on a party who uses a trademark symbol with a generic term. Ascertaining whether a mark is generic or descriptive is not the same as ascertaining whether a word is a noun or a verb — there is no dictionary of marks that gives the definitive answer because there is no definitive answer. So any determination as to genericness will necessarily come after the fact, meaning after a party has been the subject of legal action challenging his use of the TM symbol, and after he has perhaps exposed himself to civil liability under the Lanham Act for unfair competition. The function and purpose of the TM symbol in commerce, which is explained in greater detail below, are not consistent with a punitive legal scheme that chills competitors from using the TM symbol to claim trademark rights or forces risk averse and well-funded competitors to flood the courts with declaratory judgment actions prior to using the TM symbol with hopes of avoiding potential civil liability should the mark turn out to be generic. Of course, the Canfield decisions demonstrate why a competitor could not even rely upon a favorable court ruling as to non-genericness when hoping to avoid potential liability for the cause of action that Plaintiffs urge in this case. Even a federal appellate court cannot bind courts located in another circuit.
Simply, depending on how descriptive the mark is, reasonable minds could differ as to whether a term is generic. Whether a cause of action for false advertising grounded on a literally false statement exists could depend on how the specific judge presiding views the mark. For all of the foregoing reasons, the Court is unpersuaded that a party who has used a trademark symbol with a term later found to be generic has made a literally false statement.
That said, the Court recognizes that some marks are so incredibly common and descriptive that it would be intellectually dishonest to believe that its categorization as generic vel non could ever be a close call. And it would seem that no party would ever be justified in believing that he could claim that mark as his own to the exclusion of others. Flavors like peppermint and chocolate are perfect examples, and probably no court would indulge a party's attempt to present evidence of secondary meaning in the hope of commandeering these flavors for itself See Andes, 478 F.2d at 1266 ("Clearly, `peppermint' or `chocolate' would be incapable of designating origin of candy and would therefore not be registerable."). And in this case, Plaintiffs surely believe that SnoWizard's claims of trademark to flavors such as praline and dill pickle fit squarely into this category. So if a party decides to use a TM symbol with an unarguably generic flavor term like "vanilla," does the conclusion change — in other words is the phrase "Vanilla™" a literally false statement?
In order to determine if "Vanilla™" is actionable as a literally false statement, it is necessary to ascertain exactly what information or statement can fairly be attributed to placing a ® or TM next to any product name. With respect to the ® symbol the answer is clear. The owner of a trademark registered in the USPTO may give notice that his mark is registered by displaying "the letter R enclosed within a circle, thus ®." 15 U.S.C.A. § 1111 (West 2009). Improper use of a registration notice in connection with an unregistered mark may be grounds for denying the registration of an otherwise registerable mark. Copelands' Enters., Inc. v. CNV, Inc., 945 F.2d 1563, 1566 (Fed.Cir.1991) (citing Fed. Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1101 (C.C.P.A. 1976)). Thus, use of the ® symbol conveys to the customer and to other competitors that the trademark is in fact registered with the USPTO.
With respect to the TM symbol the statement made is not statutorily defined as is the case with the ® symbol. The Court has found no specific statutory authority that either authorizes the use of the TM symbol, limits its use, or states definitively what it does or does not convey to the public. But the USPTO documentation called Basic Facts About Trademarks helps to answer the question. In response to the question, "[w]hen can I use the trademark symbols TM, SM, and ®?" the document states as follows:
(Rec. Doc. 239-12, at 2) (emphasis in original). SnoWizard's expert. Professor Stacey L. Dogan, explains that businesses commonly use the TM symbol to put the public on notice that they have adopted a term as a trademark, with the hope that the mark will gain traction in the minds of the relevant public. (Dogan rpt. at 6, Rec. Doc. 281-7). Thus, the statement or message that a party conveys by putting the TM symbol next to a product name is that he claims trademark rights to the term. Whether a party actually has a valid and enforceable trademark in the term is a wholly different question and one that a court will likely determine at some juncture.
But Plaintiffs' claims for improper use of the ® symbol are not based on SnoWizard having appended the ® symbol to unregistered marks. As the Court appreciates the case, SnoWizard only appended the ® symbol to those marks for which it had in fact obtained registration through the USPTO. Plaintiffs' assertion that a statement such as ORCHID CREAM VANILLA® is literally false is grounded on the allegation that SnoWizard was only able to obtain the registration via fraudulent assertions made to the USPTO during the application process. 15 U.S.C. § 1120, of which Plaintiffs have availed themselves in this case, is the remedy that Congress devised for malevolent competitors who obtain registration via falsity.
In contrast, Vanilla™ does not make a statement that admits of being adjudged true or false in a way that "admits of empirical verification." Vanilla™ makes the statement that the party is claiming rights to the flavor name as a trademark, as preposterous as that assertion might be. But the TM symbol does not mean that the
Plaintiffs argue that the customers at issue in this case-owners of snowball stands — are not familiar with trademark law and are therefore likely to overvalue the assertions of intellectual property rights. In other words, snowball stand owners are not likely to appreciate the nuances of trademark law that the Court has explained above and therefore will not understand that a trademarking symbol like the TM may be nearly meaningless when applied to certain flavor names or that the status granted by ® is subject to cancellation.
This argument is of no moment when determining if the statements at issue are literally false. A statement is either literally false or it is not. The determination as to literal falsity cannot depend on who hears the statement and the meaning that the unsophisticated listener might attach. The intended audience may be relevant to determining the tendency of a statement to deceive but it is not relevant to determining whether a statement is in fact literally false.
For all of the foregoing reasons, the Court finds that Plaintiffs have no claim for unfair competition under the Lanham Act or LUTPA insofar as they rely on the legal assertion that use of trademarking symbols with a generic term constitutes a literally false statement.
Because the Court has left open the possibility that use of trademark symbols in some instances could constitute a misleading or ambiguously deceiving statement for purposes of the Lanham Act, Plaintiffs only avenue for relief is by proving all five elements of the prima facie case for false advertising under the Lanham Act, including materiality and the tendency to deceive — nothing is presumed.
As explained in Part 1 supra, Plaintiffs must produce evidence that the advertisements they challenge tend to deceive consumers. Even under the lesser burden of demonstrating a tendency to deceive. Plaintiffs must show that at least some consumers were confused by the trademark symbols and although consumer surveys or testimony demonstrating actual deception are not required, evidence of some sort demonstrating that consumers were misled is necessary. Plaintiffs cannot simply rely on legal argument that appeals to the fact finder's intuition.
Plaintiffs' contention that the customers' lack of familiarity with trademark law causes them to give inordinate weight to the TMs is wholly a matter of speculation. Plaintiffs cannot demonstrate what significance, if any, the parties' customer base attaches to various trademarking symbols. Without an understanding of the materiality of the trademarking symbols to the customer base, it is impossible to determine whether the statements made by such symbols have a tendency to deceive, much less that anyone was actually deceived. While Plaintiffs' customers may not know enough about trademark law to simply ignore the TMs when making purchasing decisions, they could just as easily know so little about trademark law so as to assume that the TM means "Totally Magnificent," as opposed to having any relation to a trademark. The lack of sophistication argument cuts both ways but as the proponent of the theory it is Plaintiffs' burden to prove which way it cuts.
Consequently, under the facts and circumstances of the case and the evidence offered in support of and in opposition to the parties' motions. Plaintiffs' false advertising claims cannot survive summary judgment. SnoWizard's motion for summary judgment is granted as to Plaintiffs' false advertising claims.
Plaintiffs' motion for summary judgment is denied in its entirety because Plaintiffs have not demonstrated that they are entitled to the injunctive relief that they seek. As part of their motion Plaintiffs hoped to have the Court declare most of the marks at issue in their motion invalid as being generic. The Court agrees with SnoWizard's contention that the marks cannot be treated in globo as Plaintiffs have attempted to do. For instance, MOUNTAIN MAPLE® is federally registered, which entitles the mark to a strong presumption of validity. The Court is not persuaded that this mark is generic on its face. Another example is CAJUN RED HOT, which while not federally registered, is likewise not generic on its face. TIRAMISU, on the other hand, would surely be generic under the reasoning applied by Judge Lemmon when she previously found several of the marks in this case to be generic.
Accordingly, and for the foregoing reasons;
15 U.S.C.A. § 1120 (West 2009).
