Home » Trademark Law Updates » New Judicial Opinions » Current Summary
Trademark Law Summary
Trial Court Finds Maumee Bay's "720-TURF" Number Infringes “Turf” Mark
Future Lawn, Inc. v. Maumee Bay Landscape Contractors, L.L.C.
No. 3:07CV1183, 2008 WL 918282, District Court for the Northern District of Ohio , 04/01/2008
Companies Mentioned: Future Lawn, Inc., Maumee Bay Landscape Contractors, LLC
Holding
The U.S. District Court for the Northern District of Ohio ruled that defendant Maumee Bay’s telephone number bearing “720-TURF” infringed plaintiff Future Lawn’s “853-TURF” service mark. Specifically, the district court rejected for lack of basis defendant’s assertion that plaintiff’s mark was merely descriptive and generic. Plaintiff’s mark was therefore entitled to protection under the Lanham Act. Applying the eight-factor test laid down under Frisch's Restaurants, Inc. v. Elby's Big Boy of Steubenville, Inc.( 670 F.2d 642, 648 (6th Cir.1982)), such as the factor of relatedness of services, the district court found that no genuine issue of fact existed as to the likelihood of confusion arising from defendant’s use of “720-TURF.” In so stating, the district court granted Future Lawn’s motion for summary judgment on its Lanham Act claim.
Detailed Summary
At the time of the institution of the complaint, Future Lawn, Inc. (“Future Lawn”) was an Ohio corporation engaged in landscaping, gardening and lawn care services. Defendant Maumee Bay Landscape Contractors, L.L.C. (“Maumee Bay”) was likewise an Ohio-based company involved in commercial and residential property maintenance; landscape installation, design and maintenance; outdoor power equipment sales; athletic field design, construction, maintenance and supply; outdoor power equipment sales and service; and commercial snow removal.
Prior to November, 1996, Future Lawn used the mark “531-TURF” in connection with its landscaping, gardening and lawn care business. Since November 1996, plaintiff had used the telephone number (419) 843-8873 (TURF). Future Lawn was the owner of a service mark for “843-TURF” (for landscaping, gardening, and lawn care services in Class 42). It registered the mark, U.S. Service Mark Registration No. 2,422,699, on January 23, 2001. It was undisputed that Future Law had used the service mark 843-TURF continuously since January 2001. This registration remained valid.
On the other hand, defendant Maumee Bay acquired the telephone number (419) 720-8873 (TURF) when it acquired a new telephone number for its new business. Defendant displayed 720-TURF on its vehicles, building and advertising materials. Plaintiff alleged that this use infringed on its 843-TURF service mark. Particularly, it asserted infringement of its federally registered service mark, false designation of origin under 15 U.S.C. § 1125, common law unfair competition and trademark infringement, and violation of Ohio’s deceptive trade practices act, O.R.C. § 4165 .02. Maumee Bay responded that its use of the telephone number 720-TURF should not entitle Future Lawn to any relief.
The district court rejected Maumee Bay’s argument that Future Lawn’s service mark was generic or descriptive. According to the district court, this “(was) not a case where a product (was) referred to so frequently by brand name that brand identity is lost; 843-TURF (was) not understood by the relevant public as a generic name for landscaping, gardening and/or lawn maintenance services. Plaintiff’s service mark is not descriptive.” The district court added that “the fact that a mark is registered on the principal register creates a presumption that the mark is not descriptive.” Champions Golf Club v. Champions Golf Club, 78 F.3d 1111, 1118 (6th Cir.1996). Further, a 2006 letter from the USPTO (U.S. Patent and Trademark Office) was persuasive proof that the registered mark was not merely descriptive. There is no basis therefore for Maumee Bay’s assertion that 843-TURF was generic or descriptive.
At issue in this action is the existence of likelihood of confusion, generally the key question in trademark infringement cases. Bird v. Parsons, 289 F.3d 865, 877 (6th Cir .2002). Proof of infringement requires a showing that the “defendant’s actual practice is likely to produce confusion in the minds of consumers about the origin of the goods or services in question.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 117, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004).
In resolving this issue, the district court applied the eight factor test for determining likelihood of confusion: 1) strength of plaintiff’s mark, 2) relatedness of the goods or services, 3) similarity of the marks, 4) evidence of actual confusion, 5) marketing channels used, 6) likely degree of purchaser care, 7) defendant’s intent in selecting its mark, and 8) likelihood of expansion of the product lines. Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.1982).
On the first Frisch factor, the strength of Future Lawn’s mark, the district court found that it weighed in favor of plaintiff. Maumee Bay claimed the 843-TURF mark is not strong because it is generic and/or descriptive. Infringement action however may not be defended on the grounds that it is merely descriptive when it has met the requirements of incontestability. Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186-87 (6th Cir.1988). Because Future Lawn’s mark had been registered since January 2001 and met the requirements for incontestability, the district court considered it to be a strong mark and entitled to the protection of the Lanham Act.
For the second Frisch factor, relatedness of the goods, the district court again found in favor of Future Lawn. According to the district court, Future Lawn’s mark was registered for landscaping, gardening and lawn maintenance services. Defendant argued that plaintiff’s service mark was not similar to defendant’s business of commercial and residential property maintenance. The district court rejected such assertion, stating that the services offered by both parties were related. Future Lawn and Maumee Bay both provided landscaping, gardening and lawn maintenance services. To be sure, defendant provided services beyond residential lawn care (such as athletic field services and snow removal); however, the parties’ residential lawn care services overlapped in the areas of landscaping, gardening, and lawn maintenance.
The district court found the third factor weighed heavily in favor again of Future Lawn. For over eleven years in the Toledo region, Future Lawn has denominated its phone number with the term TURF. The district court found “it quite likely that a customer with a “general, vague, or ... hazy” recollection of plaintiff’s advertising could understand Maumee Bay’s use of 720-TURF as another derivation of Future Lawn’s mark.” At the very least, persons seeking residential lawn care might assume that Future Lawn and Maumee Bay were somehow related.
On the fourth factor, plaintiff admitted that at that stage of litigation there was no evidence of actual confusion. While evidence of actual confusion is the best evidence of likelihood of confusion, the absence of actual confusion evidence is inconsequential.
The fifth factor weighed slightly in favor of Future Lawn. The district court recognized that defendant prominently displayed its business name, Maumee Bay Landscape Contractors, on its building. Although the non-numeric portion of the marks was similar, such prominent display of defendant’s trade name on its building, vehicle signs, and advertising material reduced the likelihood of customer confusion. As for word of mouth marketing, both parties used telephone numbers ending in 8873 (TURF). “This ‘catchy’ part created possible customer confusion and misapprehension,” the court wrote.
With respect to the sixth factor, the district court found again in Future Lawn’s favor. The district agreed that purchasers of landscaping services may be likely to exercise more than ordinary care in some circumstances. However, consumers selecting residential landscapers on the basis of a catchy phone number “were likely to be exercising only ordinary caution.”
Regarding defendant’s intent in selecting the mark in dispute, the district court did not find any evidence that defendant chose its TURF number to “piggyback on plaintiff’s reputation.” Hence, the seventh factor favored Maumee Bay.
To sum up, the district court found no genuine issue of material fact as to the likelihood of confusion arising from defendant’s use of 720-TURF. The district court made similar rulings on the claims of common law infringement, common law unfair competition, and Ohio Deceptive Trade Practices Act, all in favor of plaintiff. However, on the claim of actual damages, the district court found the existence of a genuine issue of material fact.
The district court issued injunctive relief. Congress elected to grant certain rights to the owners of a service marks; “it is virtually axiomatic that the public interest can only be served by upholding” these protections. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1255 (3rd Cir.1983). The injunction enjoined defendant from using the “TURF” mark to designate its phone number within the Toledo-area market served jointly with plaintiff. The court dismissed plaintiff’s claims for attorney fees, costs, and punitive damages since defendant’s acts of infringement were not malicious, fraudulent, deliberate or willful.
View a PDF of the judicial opinion.Service
Link to this article · 
Send via E-mail · 
Printable Version (opens in new window)
