s3.amazonaws.com · Web viewSix months ago, Lisa Howard opened a family owned business named...

To: Supervising Attorney

From: A. Paralegal

Date: Friday, July 8, 2016 7:25 PM

Subject: Interoffice memorandum

QUESTION(S) PRESENTED

Would Mr. Sawyer be successful on his claim of trademark infringement against Ms. Howard?

Has Ms. Howard committed trademark infringement?

If Ms. Howard has committed trademark infringement, what legal ramifications could be

imposed upon her?

Is it advised that Ms. Howard change the name of her business or should it remain the same in

lieu of the evidence and information collected?

BRIEF ANSWER(S)

I will be able to further gather these answers upon my completion of legal research from LEXIS

Advance.

FACT(S)

Six months ago, Lisa Howard opened a family owned business named Sweet Lorraine’s Bakery,

LLC. The business is located in Charlotte, NC. Business has been very good since opening. The

business specializes in French and Italian inspired pastries, cakes, cookies and artisan breads.

They offer a daily menu in their one store location and also create special occasion cakes. The

business has a website, Facebook and Twitter account; however, it is used only for advertising

and no sales are conducted via the internet.

Lisa Howard recently received an e-mail from Greg Sawyer. Mr. Sawyer is the Vice President of

Sweet Lorraine’s, LLC out of Detroit, MI. Mr. Sawyer and his wife operate Sweet Lorraine’s

Café and Bar located in Detroit. Sweet Lorraine’s Café and Bar specializes in American fare and

also has some baked goods on its menu. Sweet Lorraine’s Café and Bar also have a website in

which they conduct business across the country selling salad dressings and apparel. Mr. Sawyer

and his wife have recently been opening franchises called “Sweet Lorraine’s Mac n’ Cheez

Kitchen.” The Sawyer’s currently have two mac n’ cheese establishments open and operating in

the Detroit area. Recently, the Sawyer’s have received interest from an individual to extend their

franchise to NC. This is the state in which Ms. Howard resides.

Mr. Sawyer e-mailed our client to inform her that he has a trademark on the phrase “Sweet

Lorraine’s” for all restaurants, baking and catering services in the United States. He further states

this trademark has been confirmed with the United States Patent and Trademark Office. Mr.

Sawyer has demanded Ms. Howard change the name of her business, and in the event she does

not, he has threatened to commence legal litigation against her in federal district court.

ANALYSIS

As per the directions for the entire portfolio project for this course, and the midterm directions

and expectations, I plan to research The Lanham Act, Federal District court cases, US Supreme

court cases and 6th Circuit cases in regards to trademark and patent infringement cases,

definitions and complete full case briefings for each item of relevance I find in regards to our

client’s case.

My intent is to find information in regards to the exact definition and exact actions in which

create an infringement and compare those to our client’s specific situation. I also will research

the various legal repercussions for the act of trademark and patent infringement to conclude

whether or not Ms. Howard would be in a better standpoint to maintain or alter her business

name.

Some terms I will use to look for information in my search within LEXIS will be “Trademark

Infringement”, “Patent Infringement” and “Lanham Act”. I will also look under the state of

Michigan and Federal jurisdictions for mandatory authority.

Through related cases and statues in similar situations, I intend to gather one US Supreme court

case, two 6th Circuit Cases, and one Federal District court case in which will be used as primary

sources of law, and depending on which cases I relate will hold mandatory or persuasive

authority in Ms. Howards case. I will be completing full case briefs on each case I chose to use

as evidence and will be completing a complete predictive in which will give us enough

information on which direction our firm should proceed in regards to this case.

CONCLUSION

If I am approved to research the above information related to Ms. Howard’s case in relation to

her possible Trademark and Patent Infringement, I expect to gather all of the information to

conclude what action we should take in order for the best outcome for her at a minimal of cost.

Researching and locating all relative pieces of information should take between 1 to 2 hours.

Briefing each individual case should take approximately 1 hour to 1.5 hours each, unless it is

extremely lengthy. I anticipate the compilation of all the information combined and written into

one document will take approximately 1 hour to 1.5 hours. My overall combination of time I will

need to utilize will be at most 9.5 hours for this entire case. My research will not extend 9.5

hours. The full completion will include the discovery of The Lanham Act, one US Supreme court

case, two 6th Circuit cases, one Federal District court cases. A summary of The Lanham Act, a

full case brief for each of the four cases I will be discovering, and a complete conclusion using

all of the sources I have located and relating those items to fully answer the legal questions

presented.


From: A. Paralegal


Subject: Interoffice memorandum





imposed upon her?



BRIEF ANSWER(S)

Mr. Sawyer would not be successful in his trademark infringement case against Ms. Howard.

Ms. Howard has not committed trademark infringement.

If Ms. Howard was guilty of trademark infringement she could be forced to change the name of

her business.

Ms. Howard should leave her business name as it is in lieu of the information provided.

FACT(S)


LLC. The business is located in Charlotte, NC. Business has been very good since opening. The

business specializes in French and Italian inspired pastries, cakes, cookies and artisan breads.

They offer a daily menu in their one store location and also create special occasion cakes. The

business has a website, Facebook and Twitter account; however, it is used only for advertising

and no sales are conducted via the internet.















ANALYSIS

The research I conducted, I have collected two 6th Circuit cases, and a Federal court case. I have

also collected a section of the Lanham act in which I intend to use in the Lisa Howard research.

What I have gathered is listed below and how each piece of information relates to Ms. Howard’s

case is as follows:

Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996)

This case is primary law and is a mandatory authority.

In this case, the two parties golf clubs were named the same exact name, and were both

similar in some ways, however different in location and features were different.

In this case, it had shown that there had not been an infringement because the main keys

in this specific case depended mostly on if there was an intentional infringement and if

there was a likelihood that there would be a confusion by the consumers or public at

large. The court ruled that because their goods or services were similar, the names of

their clubs were the same, but both were different and because of several other factors

such as marketing strategies, and purchaser degree of care only to name a couple, the

court felt that consumers would not confuse one club with the other and went on to

conclude that there were only a few isolated incidents in the history of twenty-one years

in business, and none of which had been by consumers. Both owners also named their

clubs the same for personal reasons and not as an attempt to gain business through the

theft or deceitful methods of the other.

Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 (6th

Cir. 1997)

This case is primary law and is a mandatory authority.

In this case, the “root” mark was “Daddy’s” and it was considered to be an arbitrary

mark. What made it arbitrary was because it was a name in which was not related to

musical instruments. While both businesses used the mark “Daddy’s,” the court found

that while both businesses use similar marks, both sell musical instruments, the parties

businesses are both very different. There was never any intentional act to deceive or

infringe on the other, and the names of the businesses both were named as they were

because of the “Daddy’s” was nicknames of the owners. The court uses eight different

factors in judging if a person is guilty of such infringement allegations. Both parties use

different marketing strategies and do not have any overlapping of consumers. No proof of

confusion by consumers have been shown in this case either, therefore making there

having been no trademark infringement.

Homeowners Grp., Inc. v. Home Mktg. Specialists, 931 F.2d 1100 (6th Cir. 1991)

This case is primary law and is of mandatory authority.

The findings in this case are similar to those as above. The decision was based upon eight

different factors to decipher whether or not there would be a chance of the likelihood of

confusion before the court decides if there in fact has been an infringement. In this case,

the mark is very similar, but because consumers are very well aware of the difference in

each other’s goods or services, the likelihood of confusion is unlikely. Both market to

different groups of specific types of people and also market in different areas and in

different ways. The services are different and are not similar in any way. Purchaser

degree of care also comes in to play here as well because persons are cautious when

purchasing larger ticket items.

CONCLUSION

Having provided the information in which I had analyzed, I feel that Lisa Howard would not be

found guilty of any type of trademark infringement because even in cases where the names were

identical, the services and goods in which both Mr. Sawyer and Ms. Howard are completely

different, they are both currently in different geographical locations, and both have completely

different ways of marketing. Ms. Howard is of a local customer basis, and should Mr. Sawyer

actually expand into the state of Ms. Howard, the chances he will expand into the same town as

Ms. Howard is unlikely. Because the customer basis will be aware of the business and goods Ms.

Howard provides, there should be no likeliness of any confusion on the behalf of consumers.

Yours Truly,

A. Paralegal

Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996)

FACTS

Jimmy Demaret, now deceased, and Jack Burke Jr. are two former professional golf champions

who retired in 1957 and opened a golf club in Houston, Texas and named the club “Champions

Golf Club” as suggested by an advertising and consulting agency. This club opened in 1959. The

mark was used starting in 1960, and December 13, 1978 Houston registered the mark

CHAMPIONS in the State of Texas. Houston hosts national tournaments for marketing and

promotion rather than for profit-making. Houston earns most of their revenue from its members.

In 1985 Thomas Heilbron began planning to build a residential subdivision and golf course in

Nicholasville, Kentucky. The name of the subdivision is “Champions.” Nicholasville first used

the mark CHAMPIONS on February 26, 1986. July 1, 1986 the mark was registered with the

Commonwealth of Kentucky. The club opened June 3, 1988. Like Houston, Nicholasville also

earns most of its revenue from its members.

In the late 1980’s, Houston learned that other clubs including Nicholasville had begun using the

CHAMPIONS mark. Houston applied for federal registration to protect the CHAMPIONS mark.

May 15, 1989 Houston sent a “cease and desist” letter to Nicholasville, March 6, 1990 The

CHAMPIONS mark was accepted on the principal register of the U.S. Patent & Trademark

Office as Houston’s service mark for “providing golfing and country club services.”

Nicholasville continued to use the mark, and Houston brought suit against Nicholasville for

injunctive relief and damages, alleging claims of service mark infringement and unfair

competition under the Lanham Act, common-law unfair competition and service mark

infringement under the laws of Kentucky and Texas.

Following a bench trial, the district court concluded that Houston failed to show a likelihood of

confusion in the parties’ dual use of the CHAMPIONS mark. The court disposed of Houston’s

unfair competition claim because the same proofs are also required in an infringement claim.

Houston appealed.

ISSUE(S)

Is the Nicholasville’s use of the CHAMPIONS mark likely to cause confusion?

Did Nicholasville commit trademark infringement by the use of Houston’s CHAMPION mark?

Did Nicholasville violate the Lanham Act by use of the name CHAMPION?

RULE(S)

When deciding if one has committed trademark infringement, under 15 U.S.C 1114(1) there are

eight factors in which mainly determine if use of a trademark causes confusion. Those eight

factors are

1. The strength of the plaintiff’s mark;

2. The relatedness of the service;

3. The similarity of the marks;

4. The evidence of actual confusion;

5. The marketing channels used;

6. The likely degree of purchaser care;

7. The defendant’s intent in selecting the mark; and

8. The likelihood of expansion of the product lines.

Below is listed how the rules apply to the case in question:

1. Strength of Mark

(1) generic or common descriptive,

(2) merely descriptive,

(3) suggestive and

(4) arbitrary or fanciful.

Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984). Whether

a mark is weak or strong, it has no matter, only the fact in which it is likely to confuse.

Little Caesar Enterprises, Inc. v. Pizza Caesar, Inc., 834 F.2d 568,571 (6th Cir. 1987)

A generic term is the weakest type of mark and is commonly used to describe the relevant

type of goods or services and “cannot become a trademark under any circumstances.”

Induct-O-Matic, 747 F.2d at 362.

“A merely descriptive term specifically describes a characteristic or ingredient of an

article” Induct-O-Matic, 747 F.2d at 362.

A suggestive mark suggests rather than describes an ingredient or characteristic of the

goods and requires the observer or listener to use their imagination or perspective to

determine the nature of the goods. Induct-O-Matic, 747 F.2d at 362. A suggestive mark

does not require a secondary meaning.

Fanciful and arbitrary marks are the strongest. Little Caesar, 834 F.2d at 571. An

arbitrary mark has a significance as recognized by consumers in everyday life, but

usually is an unrelated object to which the product or service is attached. Examples

include CAMEL cigarettes, APPLE Computer. A fanciful mark is a combination of

symbols or letters signifying nothing other than the product or service, such as KODAK

or EXXON.

The district court is believed to have erred in concluding that the mark CHAMPIONS

was arbitrary in that the term “champions” has a general meaning in everyday life and

also is not unrelated to the sport of golf. If the district court determines that the mark is in

fact descriptive, the mark must also have a secondary meaning which then would entitle

it to protection under the Lanham Act.

2. Relatedness of Services

This factor contains three different scenarios:

(1) Confusion is likely when the marks are sufficiently similar of the parties when in

direct competition;

(2) services that are similar but not competitive so confusion may or may not result

depending on the other factors; and

(3) Where the services are not related, in which confusion is unlikely. Homeowners

Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991). Services

are related if the services are marketed and consumed that the buyers believe that the

similarly marked services or goods come from the same source or a connected to a

common company. Homeowners Group, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991). Id. at

1109.

The district court concluded that Houston and Nicholasville provide almost identical

services. Nicholasville disagrees because while they do both own and operate private

member golf clubs, the relatedness ends there. Nicholasville also adds that the

geographical locations, course layout, buildings and climates are different. This leaves

the question of whether or not the services are competitive or somewhat related as the

“relatedness” factors are discussed in Homeowners.

3. Similarity of Marks

In determining the similarity of marks, the court must determine whether the mark will be

confusing to the public when singly presented Wynn Oil Co. v. American Way Service

Corp., 943 F.2d 595, 604 (6th Cir. 1991) (Wynn II). The analysis of such includes also the

pronunciation, appearance, and verbal translation of the conflicting marks. In Wynn I, the

court noted that “both parties use the exact term CLASSIC, which obviously is

pronounced, and verbally translated in exactly the same way.” Id. Thrifty Rent-a-Car

Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177, 1179 (1st Cir. 1987). Here the court found

that although the courts found that the marks were nearly identical does not mean the

marks are likely to be confused, see, e.g. Electronic Design & Sales, Inc. v. Electronic

Data Sys. Corp., 954 F.2d 713, 715 (Fed. Cir. 1992)

4. Actual Confusion

Courts have held that evidence of actual confusion is the best evidence of future

confusion. Wynn II, 943 F.2d at 601. Actual confusion is only one factor because such

evidence is difficult to prove and is usually unclear. Houston produced four incidents

where confusion had occurred, however these had only been with suppliers sending items

to the wrong clubs from the manufacturers. Only confusion of the consumers is

important.

The Lanham Act was created to protect consumers at the point of sale. The Lanham Act

was created in 1946 and was limited to the use of marks that were “likely to cause

confusion or mistake or to deceive purchasers as to the source of origin of such goods and

services” In 1967 Congress changed and broadened the language of the act to include the

marks “likely to cause confusion or mistake or to deceive.” Because of this, Congress

intended the changes to control the commerce by not allowing marks to be deceptive or

misleading in commerce against unfair competition. 15 U.S.C. 1127.

The four mistakes to Houston proved to be minimal and isolated incidents in where are

less than probable to show an actual confusion.

5. Marketing Channels Used

“This factor…consists of considerations of how and to whom the respective goods or

services of the parties are sold.” Homeowners, 931 F.2d at 1110. Since both Houston and

Nicholasville’s receive most of their revenue from local based memberships and are

located 1100 miles apart. I was dismissed that both clubs host national level tournaments

that act as marketing devices and in the extent that the clubs would have overlapping

marketing devices. It was not clear if the court considered all of the evidence in the

record relevant to this factor.

Additional evidence that should have also been noted was that not only did the both clubs

have members from local areas, that they also had customers from other states and they

also rely on visiting gofers for revenue. Both clubs also must solicit from the same

organizations for their national tournaments for marketing purposes and this factor places

the two clubs in direct competition of each other.

6. Likely Degree of Purchaser Care

When services are expensive or unusual, the buyer is usually expected to exercise a

greater care in their purchases. When items or services are more costly, persons are

generally more cautious as to avoid confusion. The district court noted that would be

more likely to believe that the two clubs were affiliated over the fact of which club was a

certain club or the other.

7. Defendant’s Intent of Selecting the Mark

“Although intentional infringement is not necessary for a finding of likely confusion, the

presence of that factor strengthens the likelihood of confusion.” Wynn II, 943 F.2d at 602.

The evidence suggests that Nicholasville did not act with the intent to infringe on

Houston’s goodwill. Additionally, it concluded that the subdivision in which

Nicholasville is situated in is also named Champions, and there was also no evidence in

which the course was a copy of Houston. The owner of Nicholasville also adds that he

also had individual reasoning for also choosing the mark which were that he was the

champion caliber of different sports as well.

There had been some evidence at trial, however; not enough to create a probability of

intentional infringement. The finding of intentional infringement would only be

significant only in that it would show that Nicholasville intended to capitalize on the

value of the mark that he did not own, and only if Nicholasville believed that this

confusion was likely. The finding of intentional infringement was not intentional and

have no significance for the inquiry of confusion.

8. Likelihood of Expansion of Product Lines

The inquiry is not limited to the geographical expansion rather than the expansion of

services offered by the parties. A trademark owner is afforded greater protection against

services that directly compete or are in the same channels of trade making it a strong

possibility that either party will expand his business to compete with the other or to be

marketed to the same consumers will weigh in favor that the present use is infringing.

The district court found that this factor was not particularly important in this case because

“both clubs are local entities that do not franchise.” The court decided that while they

both host national tournaments and events, that both clubs received the majority of its

revenue from their customer’s memberships.

B. Additional Information

The plaintiff also brought claim to the infringement of the service mark, he also brought

the claim of unfair competition under section 43 of the Lanham Act, which states that any

person who, on or in connection with any goods or services…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 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… shall be liable in a civil action by any person who believes that he or

she is likely to be damaged by such act. 15 U.S.C 1125 (a)(1).

The district court disposed of Houston’s unfair claim because the unfair competition

claim is parallel to the Lanham infringement claim. Since Houston has not demonstrated

a likelihood of confusion, both the Lanham Act and unfair competition claims must fail

together.

Additionally, the court concluded that Houston had “abandoned” its false designation

claim “by failing to pursue it at a trial or in post-trial briefing. “False designation is a

species of unfair competition. 15 U.S.C. 1125(a) The two claims act as one and are made

clear by the language of the statue, and by many cases. See, eg. McCoy v. Mitsuboshi

Cutlery, Inc., 67 F.3d 917, 923 (Fed. Cir. 1995), cert. denied, 116 S. Ct. 1268, 1996 U.S.

LEXIS 1809 (U.S. 1996) The district court could have believed that the unfair

competition claim had been made under only state law, and was different from the federal

false designation claim; if it did this was incorrect. Since the claims were the same, and

since the district court observed, the unfair competition claim was unquestionably

preserved, there had been no abandonment of the false designation claim.

ANALYSIS

Even though the clubs were both named exactly the same, and use the same methods to advertise

and promote their clubs, both are unquestionably different. The geographical location is

different, the layout of the golf courses are different and their buildings and such are different.

While yes, both have similarities, both clubs are different, and therefore the general public or

consumers know the difference between the two. The main point to remember in trademark

infringement is that it is when it causes confusion to the consumers. While there had been a few

isolated incidents of confusion, it did not suffice to prove actual confusion because the confusion

was not with potential customers, it was between different companies who sold supplies to the

clubs directly. The court also found that there was no intent to make anyone believe they were in

any way affiliated with the other owner’s club, nor were they deceitful or trying to take business

from the other.

CONCLUSION

No there was not a reason to confuse the two different golf clubs owned by Nicholasville and

Houston. No there had not been an infringement of any kind and No there had not been a

violation of the Lanham Act by Nicholasville. The Order was vacated and the district court’s

judgement was remanded for further proceedings consistent with the opinion.

Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 (6th Cir.

1997)

FACTS

The plaintiff owns a chain of thirteen retail stores scattered through the Northeast, selling new

and used musical instruments and related equipment. Plaintiff also maintains a national catalog

and mail order business in which also sells new and used musical instruments and equipment.

Plaintiff advertises in several major music industry magazines.

The plaintiff holds three related U.S. trademark/service mark registrations: Registration No.

1,359,864, issued on September 10, 1985 for the mark “Daddy’s Junky Music Stores,” for retail

music store services; Registration No. 1,594,679, issued on May 1, 1990, for the mark

“Daddy’s,” for retail music store services; and Registration No. 1,579,993, issued on January 30,

1990 for the mark “Daddy’s, “for musical instruments. Plaintiff has used these marks since 1975.

Plaintiff entitles its extensive catalog of replete with thousands of listed items and accompanying

prices as “Daddy’s Junky Mail.”

Plaintiff mails its catalog to 1,490 residents of Ohio, and 381 of these persons live within a

thirty-mile radius of the store of the defendant. The plaintiff had about $92,551 in catalog sales

from February to July, 1995 in Ohio. While the plaintiff does not operate a store in Ohio, he has

pursued in negations to purchase a Columbus, Ohio company with four musical instrument retail

stores. It was mentioned upon a telephone conversation with a person requesting a catalog that

there was another store named “Big Daddy’s Family Music Center” located in Delaware, Ohio.

This is the store of the defendant.

“Big Daddy’s Family Music Center” in Delaware, Ohio has existed under the laws of Ohio since

1993 as a retail store in which sells musical instruments and related equipment. Greg Houston,

the owner named the store by using his own nickname, “Big Daddy,” which he had acquired in

1991. Defendant primarily sells new electronic instruments, some used instruments and some

traditional band equipment.

Defendant does not maintain a mail order business, it does send advertisements to 2,212 people

who live in Delaware, Ohio or neighboring counties. These advertisements also list music related

events organized by the store for the community or listing various goods and prices in which it

offers. Defendant spent $7,625.84 on advertising during the first six months of 1995. A quarter

of this expense was for direct mailings and the rest on local cable and newspaper ads and other

expenses. In his advertisements, the defendant presents himself as “Big Daddy’s Family Music

Center,” “Big Daddy’s Music,” “Big Daddy’s,” and “Big Daddy.” The defendant is also

involved in various local community causes.

Plaintiff filed his complaint March 29, 1995 alleging defendant using the name “Big Daddy’s

Family Music Center” constitutes trademark infringement and false designation under the

Lanham Act. 15 U.S.C. 1114 and 1125. The plaintiff also alleges a claim of state common law

trademark infringement and a claim under the Deceptive Trade Practices Act (“DTPA”) of Ohio.

See OHIO REV. CODE ANN. 4165.02 (Anderson 1991)

On August 24, 1995 the plaintiff filed a motion for partial summary judgement requesting a

judgement as a matter of law on trademark infringement claim. Defendant in turn then filed a

motion for summary judgement against every claim in the complaint on August 31, 1995. Both

parties contested in their motions of whether or not there would be a likelihood of confusion

between the marks used by the plaintiff and those of the defendant.

January 31, 1996, the District Court granted the summary judgement of the defendant. See

Daddy’s Junky Music Stores v. Big Daddy’s Family Music Ctr., 93 F. Supp. 1065 (S.D. Ohio

1996). The District Court found that there is no likelihood of confusion between the marks of the

parties. Plaintiff then in turn filed an appeal of the judgement against it.

ISSUE

Did the defendant commit trademark infringement by using “Big Daddy’s Family Music

Center?”

Was there likelihood of there being a confusion between the plaintiff’s and defendant’s

businesses?

Did the defendant violate the Lanham Act in regards to the plaintiff?

RULE(S)

The District Court failed to find any facts that could create a likelihood of confusion. The Sixth

Circuit clearly reviews for errors when examining factual findings and reviews de novo when

determining if the findings indicate a likeliness of confusion. See e.g., Champions Golf Club,

Inc. v. Champions Golf Club, Inc., 78 F.3d 1111, 1116 (6th Cir. 1996). The District Court did not

conduct a bench trial, but it used cross-motions for the summary judgement; therefore, that is the

reason the Sixth Circuit applies an entirely de novo standard of review as they do to every

summary judgement. See WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir. 1983)

(traditional principals of summary judgement apply in trademark infringement cases.); see also

Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1104 (6th Cir.

1991) Summary judgement may be granted to defendant only if the record, when viewed in the

light is most favorable to the plaintiff and contains no genuine issue of material fact.

In regards to the Federal Trademark Infringement Claim under the Lanham Act 15 U.S.C. 1114,

The main part of the liability under 1114 is if the defendant’s use of the disputed mark is likely

to cause confusion regarding the origin of the goods offered by the parties. See e.g., id at

1141(1); Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358,361 (6th Cir. 1984). When a

court determines whether a likeliness of confusion exists, it examines and weighs the following

eight different factors:

(1) Strength of the senior mark;

(2) relatedness of the goods or services;

(3) similarity of the marks;

(4) evidence of the actual confusion;

(5) marketing channels used;

(6) likely degree of purchaser care;

(7) The intent of the defendant’s selection of the mark; and

(8) the likelihood of expansion of the product lines. See, e.g., Frich’s Restaurants, Inc. v Elby’s

Big Boy, Inc., 670 F.2d 642,648 (6th Cir. 1982) (Frisch I)

1. Strength of Marks

The district court found that the “Daddy’s Music Store” and the “Daddy’s” marks are arbitrary

marks. See 913 F. Supp. At 1071. The parties do not contest to this factor of it being an arbitrary

mark as the phrases “Daddy’s,” and “Daddy’s Junky,” even though having words in everyday

speech and having recognized meaning do not have any connection to the sale of musical

instruments. This factor shows that the District Court was correct in its finding that this was in

fact an arbitrary mark, and therefore the plaintiff does draw strength from its arbitrary nature. Cf.

Genny’s Diner & Pub, Inc. v. Sweet Daddy’s, Inc. 812 F. Supp. 744, 746-47 (W.D.Ky. 1993)

(“Sweet Daddy” is an arbitrary name for fast food product).

The next issue is the existence of similar third-party registrations. The U.S. Patent & Trademark

Office revealed fifteen registered marks with the phrase of “Daddy’s” and another three marks

pending registration. The mark “Daddy’s” alone is thus weakened due to the dilution of the

mark. See 913 F. Supp. At 1072. As the Homeowners Group court stated “merely showing the

existence of marks in the records of the Patent & Trademark Office will not materially affect the

distinctiveness of another’s mark which is actively used in commerce. In order to be accorded

weight, a defendant must show what actually happens in the marketplace.” 931 F.2d at 1108

Although frequent third-party registrations may reduce the strength of a common mark, they do

not do so if they “are [not] nearly as closely related to the activities of the parties as the virtually

identical uses of [the marks by] the parties are to each other”; cf. Amstar Corp. v. Domino’s

Pizza, Inc., 615 F.2d 252,260 (5th Cir. 1980) (although the mark for sugar and sugar-related

products of plaintiff is distinctive and well-known, existence of seventy-two third-party

registrations of the same mark demonstrates that strength of mark is limited to particular use to

which plaintiff already has put it.)

The District Court stated that the “Daddy’s” mark lacks strength because the phrase “Daddy’s”

standing alone is “abundant in American nomenclature.” See 913 F. Supp. At 1072.

The incontestability of marks occurs when a trademark is not successfully challenged within five

years of its registration. See 15 U.S.C. 1065. “As the Supreme Court concluded in Park ‘N Fly,

Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,105 S. Ct. 658, 83 L. Ed. 2d 582 (1985) an

infringement action may not be defended on the grounds that a mark is nearly descriptive, if that

mark has met the requirements of incontestability.” Wynn Oil Co. v. Thomas, 839 F.2d 1183,

1187 (6th Cir. 1988) (“Wynn Oil I”) Therefore; an incontestable mark has to be at least

descriptive and also have a secondary meaning, and therefore a relatively strong mark. Wynn Oil

Co. v. American Way Serv. Co., 943 F.2d 595,600 (6th Cir. 1991) (“Wynn Oil II”) (quoting

Dieter v. B & H Indus., 880 F.2d. 322, 329 (11th Cir. 1989)) Although incontestable status

constitutes conclusive evidence that a mark is valid, see 15 U.S.C. 1115(b), an incontestable

mark still can be an infringing mark.

Because “Daddy’s Junky Music Store” used the mark continuously for a period of five years, the

mark is incontestable and therefore carries a presumption of strength. See 913 F. Supp. At 1071.

The District Court found conversely that the “Daddy’s” marks were not incontestable and

therefore not entitled to a presumption of strength.

The purpose of assessing strength during an infringement action, incontestable status serves to

confer upon a mark the strength accorded to a descriptive mark with a secondary meaning. In

contestable status benefits those marks without secondary meaning.

Consumer recognition is restricted mostly to the Northeast in regards to the plaintiff, thus

making the strength less of the mark of the plaintiff See 913 F. Supp. At 1071-72. The district

court was right in that the strength of a mark can vary geographically. See Ameritech, Inc. v.

American Info. Techs. Corp., 811 F.2d 960, 967 (6th Cir. 1987).

2. Relatedness of good or services

Relatedness of the goods generally fits into one of three categories regarding the goods and

services provided by the parties. If the parties compete with the same goods or services with a

similar mark, then confusion is likely. If the goods are somewhat related but not competitive then

the likelihood of confusion will turn on other factors, and if the goods or services are totally

different then the likelihood of confusion is not likely. See, e.g., Champions Golf Club, 78 F.3d

at 1118. Goods and services are related when it is believed by consumers that the product comes

from the same source, not from the type of services or goods in which one supplies.

Homeowners Group, 931 F.2d at 1109.

The district court found that although the plaintiff sells mostly used musical instruments and the

defendant does not, that since they both sell musical instruments in general could cause a

confusion for buyers. See 913 F. Supp. At 1073.

3. Similarity of the marks

When analyzing the similarity of marks, courts should examine the pronunciation, appearance

and translation of conflicting marks. Wynn Oil I, 839 F.2d at 1188. The given mark does not

portray market conditions. Also courts must decide if a given mark would confuse the public

when viewed alone against similar marks to avoid the possibility of confusion. The District

Court determined that the parties’ marks bear little similarity to each other, and this significantly

reduced the likelihood of confusion. See 913 F. Supp. At 1074. The District Court, however

ignored the “Daddy’s” marks when assessing similarity. See 913F. Supp. at 1073-74 Since

“Daddy’s” is not just simply a component of the marks, and it is the marks, the failure to fully

consider “Daddy’s” alone was essentially detrimental to the extent that the defendant represents

himself as “Big Daddy’s Music,” “Big Daddy’s” and “Big Daddy,” all of which are all similar to

“Daddy’s” than the full name of the defendant. See MCCARTHY, at 23.15[8] (“The common

propensity to abbreviate names can contribute to a finding of likely confusion when parties drop

qualifying words, leaving only the confusingly similar root terms”). Upon remand The District

Court must compare every mark of the plaintiff with each name used by the defendant.

4. Evidence of the actual confusion

There had only been one isolated incident of actual confusion by a consumer in a twenty-one-

year period, therefore since it was a single isolated instance, this is not enough evidence in which

could be used to prove an actual confusion between the plaintiff and defendant. The fifth factor

requires the court to consider the similarities or differences in the marketing of the parties’ goods

or services. See Homeowners Group, 931 F.2d at 1110, and the court also must determine which

marketing approaches resemble each other. See Wynn Oil I, 839 F.2d at 1188.

5. Marketing channels used

The court had determined that the marketing channels of the parties are almost completely

different and that greatly reduces the likeliness for confusion. See 913 F. Supp. at 1074. The

defendant relies on personal interaction and direct mailings to local customers; whereas, the

plaintiff relies on a national mail order and catalog business in the geographical where the

parties’ customers overlap.

6. Likely degree of purchaser care

The likely degree of purchaser care is generally higher when buyers are purchasing higher priced

items such as musical instruments in comparison unlike fast food. See Little Caesar, 834 F.2d at

572. When a person choses to purchase an expensive item, the customer generally researches a

company or specific item. One also uses caution in regards to the purchase from unknown sellers

and also limits the confusion of such marks. See Champions Golf Club, 78 F.3d at 1120-21.

7. The intent of the defendant’s selection of the mark

The court did not find that the defendant had copied the marks of the plaintiff due to the fact that

the defendant had used his own long time nick name as his mark. The record also shows no

evidence to prove that the mark was intentionally copied. The intent to use one’s nick name for a

mark is out of good intent and not to allegedly infringe.

8. The likelihood of expansion of the product lines

Similarity of marks is a factor of considerable weight. See Champions Golf Club, 78 F.3d at

1119. The last of the eight factors is the expansion of product lines. While the plaintiff did have

preliminary negotiations regarding the possible purchase of a company in Columbus, Ohio which

operates a chain of four music stores, the potential purchase was too speculative to bear any

weight. The court also felt that this purchase would decrease or increase any confusion by

consumers by the expansion of the plaintiff.

The remaining claims allege that defendant is committing false designation under the Lanham

Act, see 15 U.S.C. 1125(a), violating the prohibition under Ohio Common Law against

trademark infringement, and violating the Deceptive Trade Act of Ohio. See OHIO REV. CODE

ANN. 4165.02 (Anderson 1991). The District Court correctly explained that these claims mirror

the previously discussed federal claim of trademark infringement by also requiring proof of a

likelihood of confusion. See, e.g., Homeowners Group, 931 F.2d at 1105 (false designation claim

of origin claim under 15 U.S.C. 1125(a) requires proof of likelihood of confusion) No likeliness

of confusion exists for the purposes of the federal trademark infringement claim, The District

Court accordingly granted summary judgement against the federal false designation claim and

the state law claims as well.

ANALYSIS

The court found that there could be the possibility of confusion between the parties because of

the same use of the “root word” contained in the marks “Daddy’s” could cause confusion, and

also because the goods offered were similar, the court is going to reverse the summary

judgement and further review the facts. That was the only discrepancy in this case in which

raised a red flag to whether or not the two parties use of their marks could cause any confusion.

The court used the eight different factors in coming to the conclusion on which it did.

The findings also show that the consumers of both parties are not overlapping. The marketing

strategies of each are different. There also has only been one isolated incident of a possible

confusion, therefore; not sufficient enough to declare that a confusion has been proven. While

both persons partake in business related to the service of selling musical instruments, both are

different in that one sells mostly used instruments and the other mostly new. Both persons also

have their own certain target area in which they seek consumers for their products which also is

very different from the other.

While both parties use the same root word of “Daddy’s,” it is unlikely to cause consumer

confusion. The main key is willful intent to infringe or gain the other person’s revenue or to

make the consumers believe the two businesses are connected or derive from the same. Another

key factor is to confuse buyers. None of these key factors are present in this case. There had also

been only one actual confusion between the parties in a 21-year time span.

CONCLUSION

No the defendant did not commit trademark infringement by using “Big Daddy’s Family Music

Center.” The court found that there was a very slight likelihood that the marks could cause any

confusion. The court found that the defendant did not violate the Lanham Act. The court

ultimately reversed the summary judgement and remanded them to the District Court for further

proceedings.


Facts

The mark was first used nationally and in Michigan beginning in July 1987 and continues to the

present. In 1988, Homeowners was formed and in July 1988 the service marks belonging to

Services were assigned to Homeowners and was recorded with the U.S. Patent and Trademark

Office. These marks also HMS initials with a design, Homeowners and Services both claim they

each used the initials HMS alone as a service mark.

Defendant-appellant Specialists is a licensed real estate broker providing real estate brokerage

services on a non-commission, flat-fee basis to the general public. Although Specialists competes

directly with Homeowners' customers, who are commissioned real estate brokers, Specialists'

primary customers are individual home sellers. Specialists was formed in Michigan in 1986 and

continues to do almost 100% of its business in Michigan although it has plans to franchise its

brokerage services in other states.

Specialists claims that it has used this mark continuously since March 1986. Specialists also uses

the initials HMS alone as a mark.

At the end of July 1987, Homeowners' first learned of Specialists and of their use of the marks

containing the initials HMS. Homeowners alleges that it investigated the matter and concluded

that no confusion was likely. Shortly thereafter, both Homeowners and Specialists filed

applications for federal registration of their respective HMS-roof design service marks.

Specialists' application was filed in the U.S. Patent and Trademark Office on September 14,

1987, and Homeowners' application was filed September 17, 1987.

The Office notified Homeowners of a potential conflict with Specialists' pending registration.

The examiner was concerned that section 2(d) of the Lanham Act would bar Homeowners'

registration. This section bars registration of a mark that “so resembles a mark registered in the

[Office] or a mark or trade name previously used in the United States by another and not

abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to

cause mistake, or to deceive…”

Homeowners in turn wrote a memorandum to the Office arguing that there was little likelihood

of confusion for two reasons. First, the companies were in different businesses with substantial

differences in the channels of trade, and second, the two HMS-roof design marks were very

different in appearance. Apparently convinced that no confusion was likely, the Office allowed

registration by both Specialists and Homeowners on July 26, 1988 and September 27, 1988.

Homeowners claims that later in October 1988, it learned of several instances of actual confusion

by its customers. According to Homeowners, some of its customers saw newspaper

advertisements for Specialists and mistakenly believed that Homeowners was sponsoring or was

otherwise affiliated with Specialists. According to Homeowners, the confusion was caused by

the use of the initials HMS in Specialists' service mark.

Homeowners notified Specialists of the confusion and requested Specialists to cease and desist

from using the initials HMS in a service mark. These requests yielded no results and, in April

1989, Homeowners brought this complaint. A bench trial was scheduled for June 1990. After

extensive discovery both parties filed motions for summary judgment. Homeowners' claim is that

they have priority of use of the service mark HMS and that the use of marks with the initials

HMS by Homeowners and Specialists, when applied to their respective services, is likely to

cause confusion in the marketplace. Specialists denied infringing on Homeowners' service mark

and argued, that there is no likelihood of confusion between the parties' respective HMS-roof

design service marks and, even if there was confusion caused by the parties' use of those two

marks, Homeowners was infringing on Specialists' mark because Specialists first used an HMS-

roof design mark and possesses a valid prior federal registration.

The District Court granted summary judgment in favor of Homeowners and denied Specialists'

motion. Summary judgment de novo and the denial of summary judgment for abuse of discretion

has been reviewed, and under Pinney Dock & Transport Co. v. Penn Cent. Corp., 838 F.2d 1445,

1472 (6th Cir.), cert. denied, 488 U.S. 880, 102 L. Ed. 2d 166, 109 S. Ct. 196 (1988).

Issue(s)

Did Specialists’ infringe on the rights of Homeowners’ by the use of the HMS marks with the

use of the roof design?

Who legally holds the rights to the use of the marks?

Was there an actual infringement of trade mark usage by either party?

Rule(s)

The District Court held that the Michigan statutory and common law involved the same

questions as the federal Lanham Act. This is a question of state law, and parties do not challenge

on appeal. Therefore, we treat this holding as correct. The determination of whether the District

Court properly decided the Lanham Act will apply to the Michigan statutory and common law.

The District Court correctly stated the requirements necessary to make a claim for infringement

under 15 U.S.C. § 1125(a) as follows:

(1) ownership of a specific service mark in connection with specific services;

(2) continuous use of the service mark;

(3) establishment of secondary meaning if the mark is descriptive; and

(4) a likelihood of confusion amongst consumers due to the use of the parties' service marks in

connection with the parties' respective services.

The District Court held that Homeowners had satisfied these requirements and therefore was

entitled to judgment as a matter of law. The District Court was found to have erred in two

respects. First, the court's determination of ownership of the relevant marks was improper,

resulting in an incorrect comparison of the parties' marks for purposes of determining whether a

likelihood of confusion exists. Second, the court's likelihood of confusion analysis was

insufficient.

1.OWNERSHIP OF SERVICE MARKS

Service mark ownership is not acquired by federal or state registration. Ownership rights flow

only from prior appropriation and actual use. See 1 J. McCarthy, Trademarks and Unfair

Competition, § 16:5, at 733 (2d ed. 1984). However, while registration of a service mark is not

dispositive on the question, it is at least prima facie evidence of the registrant's ownership and

exclusive right to use of a mark. 15 U.S.C. §§ 1057(b), 1115(a).

The difficulty of this case is deciding which marks are owned by whom, and whether a

likelihood of confusion exists. The main argument is of the use of the roof symbol with the HMS

initials. The District Court agreed, but failed to make a finding as to which party has ownership

of the roof symbol, but did find that Homeowners’ had ownership of the initials HMS. The

problem arose in the next step of the District Court's analysis where the court held that "the first

party to use the mark HMS would logically have the right to use the mark HMS with a rooftop

design… Since [Homeowners] has shown prior and continuous use of the mark HMS,

[Specialists] has no rights to the mark HMS with or without a rooftop design." This is not a

question of logic, instead it is a question of fact and law.

Ownership of a mark includes both the right to use a particular mark and the right to prevent

others from using the same or a confusingly similar mark. The prevention of others to use the

same mark as the District Court ruled Homeowners, to be a matter of "logic,” but in this case the

use of the similar mark will lead to a likeliness of confusion. The District Court found that

Homeowners owned the mark HMS, Homeowners had the right to prevent Specialists from using

the mark only if the court found that a likelihood of confusion would be created in the

marketplace. The District Court failed to undertake this analysis.

The mark consisting of the letters HMS alone is the only mark that was used by Homeowners

prior to Specialists' use of its HMS and HMS-roof design marks. Homeowners argues that since

it has ownership of the mark consisting of the initials HMS, such ownership extends to other

marks containing those initials along with other words or designs. This argument was accepted

by the District Court without proper analysis. Homeowners cannot make an infringement case

against Specialists by showing ownership of one mark (the initials HMS alone) and a likelihood

of confusion based on a comparison between a different mark (the HMS-roof design mark) and

Specialists' marks.

On remand of Homeowners' claim, if Homeowners cannot show first use of an HMS-roof design

mark, the comparison will be between Homeowners' HMS mark and Specialists' HMS and HMS

roof design marks. If Homeowners can show first use of an HMS-roof design mark, then a

comparison of the parties' HMS-roof design marks will be proper.

II. LIKELIHOOD OF CONFUSION

Specialists also believes the District Court erred in finding that no issues of fact are present to

cause a likelihood of confusion in the marketplace.

In Frisch's Restaurant, Inc. v. Shoney's Inc., 759 F.2d 1261, 1266, 225 U.S.P.Q. (BNA) 1169

(6th Cir. 1985). It is stated: In assessing the likelihood of confusion, a court's concern is "the

performance of the marks in the commercial context." This means appearance of the marks side

by side in the courtroom does not accurately portray actual market conditions. There are also

other factors in which the court uses to determine market conditions, and these are:

1. strength of the plaintiff's mark;

2. relatedness of the services;

3. similarity of the marks;

4. evidence of actual confusion;

5. marketing channels used;

6. likely degree of purchaser care and sophistication;

7. intent of the defendant in selecting the mark; and

8. likelihood of expansion of the product lines using the marks.

See Shoney's, 759 F.2d at 1264 (citing Frisch's Restaurants, Inc. v. Elby's Big Boy, Inc., 670

F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916, 74 L. Ed. 2d 182, 103 S. Ct. 231 (1982)).

These factors are only a guide to help determine whether confusion is likely. They are also

interrelated in effect. The main question remains whether relevant consumers are likely to

believe that the products or services offered by the parties are affiliated in some way.

This Circuit considers whether there is a likelihood of confusion using a mixed question of fact

and law. Factual findings must be made with respect to the likelihood of confusion factors set out

above. Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988). This case is presented

after a grant of summary judgment; the task is to determine whether the District Court correctly

held that no issues of material fact were presented regarding the likelihood of confusion factors.

To resist summary judgment in a case where the likelihood of confusion is the dispositive issue,

a nonmoving party must prove, through pleadings, depositions, answers to interrogatories,

admissions and affidavits in the record, that there are genuine factual disputes concerning those

of the Frisch's factors which may be material in the context of the specific case at hand. In

examining the record to determine whether a genuine issue of material fact exists, a court must

review all evidence in the light most favorable to the nonmoving party. Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 255, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986).

a. Strength of the Plaintiff's Mark

The strength of a mark is a determination of the mark's distinctiveness and degree of recognition

in the marketplace. "'A mark is strong if it is highly distinctive, i.e., if the public readily accepts

it as the hallmark of a particular source; it can become so because it is unique, because it has

been the subject of wide and intensive advertisement, or because of a combination of both.'"

Shoney's, 759 F.2d at 1264 (quoting 3A R. Callmann, Unfair Competition, Trademarks &

Monopolies, § 20.43, at 345 (4th ed. 1983)).

The District Court found that Homeowners' mark was widely known in 48 states by thousands of

member broker offices. Homeowners indicated that it spent over $ 7 million in advertising and

promotion between 1981 and October 1989 in connection with its various marks containing the

initials HMS. The District Court found the mark HMS to be an arbitrary mark and, therefore is

inherently distinctive. As a result of these findings, the District Court held that Homeowners'

mark HMS is "sufficiently strong and well established." The District Court was correct in relying

on this type of information, but the court failed to consider other information which is also

relevant to the strength-of-mark determination.

The District Court's finding that HMS was an arbitrary and inherently distinctive mark is only a

first step in determining the strength of a mark in the marketplace. HMS may indeed be arbitrary

but still have little customer recognition or "strength" in the market, or perhaps have high

recognition which is limited to a particular product or market segment as in Fruit of the Loom,

Inc. v. Fruit of the Earth, Inc., 3 U.S.P.Q.2d 1531, 1533-34 [1108] (T.M.T.A.B. 1987) ("Fruit of

the Loom" is distinctive, but fame is limited to the underwear field and does not extend to

general apparel); See also Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 260 (5th Cir.),

cert. denied, 449 U.S. 899, 101 S. Ct. 268, 66 L. Ed. 2d 129, 208 U.S.P.Q. (BNA) 464 (1980)

("Domino" is a strong mark only for sugar and related products). Although Homeowners’

showed evidence of marketing costs, it did not show that consumers in the marketplace

recognize the HMS mark of Homeowners’ because HMS deals strictly with real estate brokers.

Specialists offered a research report dated April 25, 1989, which indicated numerous third-party

registrations of the mark HMS, either alone or in conjunction with other words or designs, in the

U.S. Patent and Trademark Office and in different states. In the research, it showed that many of

there were real estate firms. As stated in comment g to the Restatement of Torts § 729 (1938), It

shows that the more persons that use a mark, the less strength the mark has due to the act of

dilution in the marketplace. See, e.g., Amstar, 615 F.2d at 259-60 (multiple uses of "Domino"

discussed in finding mark weak outside of specific uses); Empire Nat'l Bank v. Empire of

America, 559 F. Supp. 650, 655 (W.D. Mich. 1983) (multiple uses of "Empire" discussed in

finding mark to be relatively weak); 3A R. Callmann, § 20.44. The District Court failed to

consider the information proffered by Specialists, finding that "the exhibit is not probative of the

facts it attempts to assert. Specifically, the exhibit fails to disclose prior, current, or continuous

use of the various marks by the owners." What this means is that while there may be many uses

of the same mark in the general marketplace, it should have been closer examined thus allowing

the conclusion to be more probable than not.

b. Relatedness of the Services

The District Court's complete findings with respect to relatedness are as follows:

Both the plaintiff and defendant operate in the area of real estate brokerage. Plaintiff

offers marketing and advertising support services for real estate brokers. Defendant

renders real estate brokerage services on a non-commission or flat fee basis. Plaintiff's

customers are commission real estate brokers. As a result, defendant directly competes

with plaintiff's customers.

Courts have recognized that there are basically three categories of cases:

(1) direct competition of services, in which case confusion is likely if the marks are sufficiently

similar;

(2) services are somewhat related but not competitive, so that likelihood of confusion may or

may not result depending on other factors; and

(3) services are totally unrelated, in which case confusion is unlikely. See Sleekcraft Boats, 599

F.2d at 348. These categories are helpful in determining the likeliness of confusion.

Homeowners' and Specialists' services are the same nor are they directly competitive. The

companies operate at different levels in the broad real estate market and sell to two completely

different sets of buyers. Homeowners and Specialists are not competitors but they do both

operate in the real estate market. What makes the services related are if consumers believe that

the source is of the same. Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 159

(9th Cir.), cert. denied, 374 U.S. 830, 83 S. Ct. 1870, 10 L. Ed. 2d 1053, 137 U.S.P.Q. (BNA)

913 (1963); Wynn Oil, 839 F.2d at 1187 The District court did not consider this aspect in its

determination of relatedness

c. Similarity of the Marks

The District Court found that "the marks of both parties are similar. Both parties use the letters

HMS. Both parties also use the letters HMS with a rooftop design." In trademark law a side by

side approach does not answer the question, but must be measured in the context of how the

affect and work within the marketplace when used.'" 839 F.2d at 1187 (quoting Levi Strauss &

Co. v. Blue Bell, Inc., 632 F.2d 817, 822 (9th Cir. 1980)). " Id. at 1187 (quoting Beer Nuts, Inc.

v. Clover Club Foods Co., 711 F.2d 934, 941 (10th Cir. 1983)). See Safeway Stores, Inc. v.

Safeway Discount Drugs, Inc., 675 F.2d 1160, 1165 (11th Cir. 1982).

While two marks consisting solely of the letters HMS could be very similar in appearance,

confusion does not always occur. Homeowners itself, “when seeking federal registration of its

HMS-roof design mark, argued that "the [parties' respective HMS-roof design] marks, when

considered in their entireties, create substantially different commercial impressions, which would

be readily distinguished in the market place."

d. Evidence of Actual Confusion

The District Court found that in 1988 Homeowners could only support this with a letter from one

letter from a real estate broker having been the only evidence of actual confusion.

Evidence of actual confusion is the best evidence of likelihood of confusion but in areas where

individuals actively advertise continuously in the same areas for long period of times, the

likeliness of confusion is less possible. See, e.g., Sun Banks, Inc. v. Sun Fed. Savs. & Loan, 651

F.2d 311, 319 (5th Cir. 1981) (nineteen reports over three years held insufficient); Amstar, 615

F.2d at 263 (three instances over fifteen years held insufficient); Armstrong Cork Co. v. World

Carpets, Inc., 597 F.2d 496, 506 & n.15 (5th Cir.), cert. denied, 444 U.S. 932, 100 S. Ct. 277, 62

L. Ed. 2d 190, 204 U.S.P.Q. (BNA) 608 (1979) (three instances of confusion insufficient). Even

in persons where only smaller numbers of isolated incidents have occurred, it still does not give

enough weight to determine whether a confusion has happened. See Amstar, 615 F.2d at 263.

Safeway Stores, 675 F.2d at 1167, shows that while there may have been some minor confusion,

there are bigger matters at hand in other cases that leave there to be a lesser weight in these

minor incidents of confusion.

e. Marketing Channels Used

The District Court made no finding with respect to the marketing channels used, when it is in

fact of large importance. Obviously if for example one sells products in a commercial type of

industry, then it is thought that one would not find the same products in a department store chain.

The difference in the marketing channels would greatly change the consumers of such products.

“If one mark user sells exclusively at retail and the other exclusively to commercial buyers, then

there may be little likelihood of confusion since no one buyer ever buys both products. For

example, if one user sells food only at retail to consumers and the other sells only to commercial

food brokers (and the product never reaches consumers under the mark), then there is no one

buyer who will be faced with both products, and hence no confusion.” 2 J. McCarthy,

Trademarks and Unfair Competition § 24:7, at 190-91 (2d ed. 1984). See also American

Cyanamid Co. v. S.C. Johnson & Son, Inc., 729 F. Supp. 1018 (D.N.J. 1989) (no likelihood of

confusion between similar insecticides sold under distinguishable marks where one is sold

primarily through industrial channels and the other through retail channels); Oxford Indus. v. JBJ

Fabrics, Inc., 1988 U.S. Dist. LEXIS 953, 6 U.S.P.Q.2d (BNA) 1756 (S.D.N.Y. 1988) (Plaintiff

sells JBJ garments through retail channels to consumers while defendant, a fabric printer doing

business under the JBJ mark, sells its fabric to garment manufacturers. The parties' products are

marketed through distinctly different channels of commerce; no likelihood of confusion found.);

In re Shipp, 4 U.S.P.Q.2d (BNA) 1174 (T.M.T.A.B. 1987) (Applicant's use of PURITAN for

laundry and dry cleaning services rendered to consumers will not likely cause confusion with

cited trademark PURITAN for commercial dry cleaning filters sold only to dry cleaning

professionals. It is unlikely that applicant's customers would ever encounter any of the

commercial goods sold under the cited mark.) These cases clearly show that the marketing

channels one uses greatly affects the possibility or unlikeliness of confusion when marks are

similar. The District Court failed to adequately analyze this factor.

Homeowners' services are sold only to real estate brokers and its marketing efforts are targeted to

that group which consists of telemarketing, production of special brochures and newsletters for

brokers, and attending real estate conventions. Specialists' services are sold only to owners of

real estate and its marketing efforts are targeted to individuals who want help in selling their

property. Specialists' marketing consists of advertisements in the real estate section of

newspapers and direct mail advertisements to property owners. Homeowners and Specialists

market and sell their services to two different sets of potential customers and appears to have

little to no overlap in customers or potential customers of each parties’ distinctive services.

f. Likely Degree of Purchaser Care/Sophistication

The District Court also declined to make a finding as to purchaser sophistication, stating that

little evidence exists to allow adequate consideration of this element. As shown in the marketing

channels factor, we find more than enough information in the record to warrant a finding.

In assessing this, the cost of certain items or services the buyer always uses a great level of

regard to the services or goods in which they inquire of because of the cost factor. One does not

seek to spend thousands of dollars when they have not closely examined all of the facts. See 3A

R. Callmann, §§ 20.11 -.12; 2 J. McCarthy, §§ 23:28 -:29. This law is also stated in the two

following cases in comparison to the buyers of Homeowners’ and Specialists’, in that they would

be expected to also exercise a higher level of regard: Communications Satellite Corp. v. Comcet,

Inc., 429 F.2d 1245, 1252 (4th Cir.), cert. denied, 400 U.S. 942, 91 S. Ct. 240, 27 L. Ed. 2d 245,

167 U.S.P.Q. (BNA) 705 (1970).

Homeowners sells its services only to real estate brokers – which consists of experienced

commercial buyers who are purchasing business services or services for resale in the course of

their business. When the purchasers are comprising of experienced persons, confusion is lower.

That is, "while two marks might be sufficiently similar to confuse an ordinary consumer, a

professional buyer or an expert in the field may be more knowledgeable and will not be

confused." 2 J. McCarthy, § 23:29, at 135. Specialists is also selling a business service, only to

non-business customers. However, because selling one's property is a rare occurrence that rarely

happens in one’s life, Specialists' customers are likely to carefully select the provider of sales

services. See Magnaflux Corp. v. Sonoflux Corp., 43 C.C.P.A. 868, 231 F.2d 669, 671, 109

U.S.P.Q. (BNA) 313 (1956) Confusion is less likely when large sums of money are at hand.

g. Intent of Defendant in Selecting Mark

The District Court also declined to make a finding on the issue of Specialists' intent in selecting

its marks. If a party chooses a mark with the intent of causing confusion, that fact alone may be

sufficient to justify an inference of confusing similarity. Wynn Oil, 839 F.2d at 1189.

h. Likelihood of Expansion of Product Lines

Homeowners did submit that while a likelihood of expansion does exist in its plans to establish

franchises in Florida, Georgia and 22 other states, currently it had no franchises. Even though

expansion may be relevant, the services are not closely related or competitive, but rather the

question of the other party other than the trademark owner (who is afforded greater protection) to

compete with the other or to be marketed to the same customers will bear on whether or not the

use of the mark is infringing. See Restatement of Torts § 731(b) & comment c (1938). The

District Court did not address this significant question in this case.

III. SPECIALISTS' MOTION FOR SUMMARY JUDGMENT

Specialists also appeals the District Court's denial of its motion for summary judgment because

Specialists argues that if there is a likelihood of confusion between the HMS-roof design marks,

then Homeowners is the infringing party since Specialists was the first to use such a mark. In

agreeance with the District Court that there is an issue of fact as to which party actually first used

an HMS-roof design mark in commerce. This factual question alone makes summary judgment

for Specialists inappropriate.

Analysis

In light of all of the rules listed above, it is shown that there actually has not been an

infringement involved in the usage of the HMS mark and also with the use of the roof design

when used by both parties due to the fact that both parties have very different services and

should not be confused with each other in the market and also because of the amount of money

involved in both services of each. Purchasers demonstrate a much higher level of care when

making costly decisions. Both parties also market to two entirely different type of consumers and

this in no way affects either of the parties involves and does not create a likeliness of confusion.

Conclusion

The District Court's mistaken conclusion that Homeowners' ownership of the mark HMS

included the right to an HMS-roof design mark was the predicate for comparing Homeowners'

HMS-roof design mark with Specialists' HMS-roof design mark. This comparison was incorrect

by the District Court. Review of the record shows that genuine issues of material fact were raised

with respect to whether a likelihood of confusion exists in the marketplace due to the parties' use

of their respective marks, and therefore;

The District Court's grant of summary judgment in favor of Homeowners on the Lanham Act,

section 1125(a) claim has been reversed.

The grant of summary judgment against Specialists on the Michigan Consumer Protection Act

and Michigan common law claims also have been reversed and vacated both the injunction

entered against Specialists and the order cancelling Specialists' federal registration number for

the HMS-roof design service mark.

Lastly was remanded for further proceedings not inconsistent with this opinion.

15 U.S.C.S. § 1125 (LexisNexis, Lexis Advance through PL 114-189, approved 7/6/16)

Civil action.

States that anyone who when involved in any connections with the sale of any goods or

services uses any word, term, name, symbol or device or in any order to deceive another

into believing that the original service or goods is from that other than the actual source

of the goods is liable in a civil action by anyone who believes they have been affected by

this such misrepresentation or falsity of the facts. This also includes and state, employee

of a state acting in official capacity and are expected to act in the same compliance as a

non-governmental entity. For trade dress infringement not registered on the principal

register, the person who asserts protection has the burden of proof that the matter needs to

be protected.

Importation.

Goods in which are marked within the provisions shall not be allowed into the United

States or at any customhouse. The origin of the goods is entitled to any recourse as a

protest under the customs revenue laws involving refused entry of goods.

Dilution by blurring or tarnishment:

Injunctive relief:

One is entitled to injunctive relief when another uses another’s mark after it has become

famous in which it dilutes the strength of the mark and or causes negative consequences

for the original owner of the marks regardless of any confusion, competition or injury.

Definitions described:

“Famous marks” are widely used by the consumers of the United States as an owner of

other than the original actual owner. The court may consider advertising, extent of sales,

actual recognition, and which act the mark was registered under.

"Dilution by blurring" is the combination of factors related to the use of marks or names

in which takes away from a distinctive famous mark. These include the similarity of the

mark, the extent of the use of mark, what they are specifically using the mark for, the

popularity of the famous mark, if the user claims to be the original source, and if there is

an actual association between the mark and the famous mark

“Dilution by tarnishment" is using the famous mark in an effort to damage the reputation

of the famous mark.

Exclusions.

The following are not actionable under “blurring” or “tarnishing”

Any fair use in which one does not claim to be the original of the owned

mark, advertising in comparisons, personal opinions of another’s goods or

services. All forms of news reporting or commentary, and any non-

commercial use of the mark.

Burden of proof.

Trade dress dilution in a civil action is when not registered on principal

register and the person who asserts the protection had the burden to prove

the trade dress was copied in entirety, not famous or functional registered

or unregistered when used as a whole is separate from any fame of the

registered marks.

Additional remedies.

In an action brought under this subsection, the owner of the famous mark

shall be entitled to injunctive relief as in section 34. The owner of the

famous mark shall also be entitled to the remedies set forth in sections

35(a) and 36 of 15 USCS § 1117(a) and 1118, subject to the discretion of

the court and the principles of equity if-- the mark or trade name probable

to cause dilution by blurring or dilution by tarnishment was first used in

the market by the person against whom the injunction is sought after the

date of enactment of the Trademark Dilution Revision Act of 2006

[enacted Oct. 6, 2006]; and in a claim under this subsection—with willful

intent for gain and willful intent to harm the owner of the famous mark.

Ownership of valid registration a complete bar to action.

The ownership by a person with valid registration under the Act of March

3, 1881, or the Act of February 20, 1905, or on the principal register under

this Act shall be a complete bar to an action against that person, with

respect to that mark, that-- is brought by another person under the

common law or a statute of a State; and wants to prevent dilution or

tarnishment or brings any claim of actual or likely harm to the mark.

Savings clause.

Nothing in this subsection shall be construed to change or override the

applicability of the patent laws of the United States.

Cyberpiracy prevention.

A person shall be liable in a civil action by the owner of a mark, including a

personal name which is protected as a mark under this section, if, without regard

to the goods or services of the parties, that person-- has a bad faith intent to profit

from that mark, including a personal name which is protected as a mark under this

section; and registers, traffics in, or uses a domain name that is distinctive at the

time of registration of the domain name that is identical or confusingly similar to

the mark of the famous that is famous at the time is identical, similar or dilutive of

the mark and is a trademark, word or name protected by section 706 of title 18,

United States Code, or section 220506 of title 36, United States Code.

Determining whether a person has a bad faith a court may consider factors

such as, but not limited to—the trademark or other intellectual property

rights of the owner, extent of use of the person or name that is used to

identify the person, the persons prior use of the domain name in

connection of the offering of goods or services, the non-commercial or fair

use of the name in a site accessible under the domain name, intent to drive

customers from the mark owners online location or to harm the mark with

the likelihood to cause confusion of the mark, the persons offer to sell or

trade the mark to a third party for financial gain, misleading or false

information when applying for the domain name, the registration of such

domain names knowingly that are identical and also to the extent that the

domain name is no longer distinctive and famous.

Bad faith intent shall not be found in any case in which the

court determines that the person believed and had

reasonable grounds to believe that the use of the domain

name was a fair use or otherwise lawful.

In any civil action involving the registration, trafficking, or use of a

domain name under this paragraph, a court may order the forfeiture or

cancellation of the domain name or the transfer of the domain to the

original owner of the mark.

A person shall be liable for using a domain if that person is the domain

name registrant or that registrant's authorized licensee.

Trafficking is the act of transferring of services or goods through sale,

trade or other consideration.

The owner of a mark may file an in rem civil action against a domain name in the

judicial district in which the domain name registrar, domain name registry, or

other domain name authority that registered or assigned the domain name is

located if the domain name violates any right of the owner registered with the

U.S. Patent and Trademark Office and the court finds that the owner is not able to

obtain in personam jurisdiction over a person who would have been a defendant

in a civil action or through due diligence was not able to find a person who would

have been a defendant in a civil action by sending notice of the alleged violation

and intent to proceed under this paragraph to the registrant of the domain name at

the postal and e-mail address provided by the registrant to the registrar; and by

publishing notice of the action as the court may direct promptly after filing the

action.

The actions above shall constitute service of process. An in rem action

shall be deemed to have its situs in the judicial district in which the

domain name or authority that registered the domain name is located or is

sufficient to gain control and authority regarding the disposition of the

domain name and are deposited with the court.

The remedies in an in rem action shall be limited to a court order for the

forfeiture or cancellation of the domain name or the transfer of the domain

name to the owner of the mark. When received, a filed, stamped copy of a

complaint filed by the owner of a mark in a United States district court the

domain name registrar, domain name registry, or other domain name

authority shall deposit the court documents to establish the courts control

using the registration of the domain name to the court, and not change or

cancel the domain name under the pending action unless deemed by the

court.

The domain name authority shall not be liable for

injunctive or monetary relief except in the case of bad faith

or reckless disregard, which includes contempt to follow

said order.

The civil action in rem action and any remedy available under either such action,

shall be added to any other civil action or remedy otherwise applicable.

The in rem jurisdiction shall be in addition to any other jurisdiction that otherwise

exists, whether in rem or in personam.


From: A. Paralegal


Subject: Predictive memorandum RE: Sweet Lorraine’s





imposed upon her?



BRIEF ANSWER(S)

Most likely no.

No.

Ordered to change the name of her business and no longer use the mark.

Continue with the same business name.

FACT(S)


LLC. in Charlotte, NC. The business specializes in French and Italian inspired pastries, cakes,

cookies and artisan breads. They offer a daily menu in their one store location and also create

special occasion cakes. The business has a website, Facebook and Twitter account; however, it is

used only for advertising and no sales are conducted via the internet.















ANALYSIS

I have been able to find and analyze two sixth circuit cases and one federal case to support my

analysis.

In Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996)

(primary law, mandatory authority and is a Sixth Circuit case) one party was the owner of the

mark “CHAMPIONS.” Upon discovering the other club was named the same exact name

“Champions Golf Club, Inc.,” the plaintiff similarly to this case of “Sweet Lorraine’s” also

threatened to sue for infringement of the use of the owned mark. When the case of Champions

went to trial, it was discovered that even though the two businesses offered golf memberships to

the public, both hosted public tournaments for advertising and promotion, derived most of their

revenue from its members and did the exact name, the court found that it was not infringement

because both businesses were different. The geographical locations are different, the buildings

and features are different, and there is no likelihood of confusion between either of the

businesses.

In the Sweet Lorraine’s situation, yes the name “SWEET LORRAINES” is an owned mark by

Mr. Sawyers, however because the situation is the same as the Champions case, I don’t feel there

would be an infringement. Ms. Howard is primarily a bakery, only advertises on Facebook,

Twitter and a webpage, but does not sell items through the internet. All sales are generated

through her store only. Her store is a family owned business, and is doing well in her current

area.

Mr. Sawyers wants to open another franchise of his Sweet Lorraine’s Mac-n-Cheez in Ms.

Howard’s current state of North Carolina. Even if Mr. Sawyer offered the same goods in his

potential expansion as he currently sells in his Detroit location, it is very clear that the two both

have very different businesses and offer different products and services in its entirety. The

environment of both businesses are different, the advertising and sales are from different sources

as well. If in Champions, the businesses had the exact same name, in this case the names state

what general idea their business is in addition to the “Sweet Lorraine’s” I don’t foresee

consumers to be confused between the two businesses now or in the future.

In Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 (6th Cir.

1997) (primary law, mandatory authority and is a Sixth Circuit case) some of the same criteria is

also the same as the Sweet Lorraine’s issue and as noted in Champions. Both use the name

“DADDY’S.” The mark “DADDY’S” is owned by the plaintiff in this case also. Both use the

name “Daddy’s” in their business name. Both also sell musical instruments. One sells mostly

used while the other sells mostly new. Both are in the same geographic location, however they

both have differences in the ways they advertise and sell their products. Even with the similar

use of a root name (Daddy’s), consumers are not confused and know the difference between the

two businesses. Both have their own distinct customers.

Likewise, in Daddy’s as to Sweet Lorraine’s, they both use the same name, but again, offer

different items. Consumers are likely to know the difference between the two. If locals are

familiar with Ms. Howard’s store, then that makes the likeliness of confusion even greater. It’s

logical that one would not confuse a bar with a bakery, or macaroni and cheese with cakes. Even

if Mr. Sawyers did expand to South Carolina, it does not even mean he will be in the same

general area, but they both have very different means of advertising and sales generations. Ms.

Howard does not sell anything online, only to locals.


(primary law, mandatory authority, and from the Federal District of Michigan) found that even

though names are similar, it does not mean there will be confusion to buyers of the businesses. In

this case, it was discovered that Specialist’s had taken over the HMS initials with the roof pattern

that was an owned mark by Homeowner’s. In this case it did cause actual confusion, and

Specialist’s was ordered to cease the use of the HMS roof mark.

In the Sweet Lorraine’s issue, neither knew about each other prior to Mr. Sawyer’s research into

expansion. Obviously Lorraine has to have a secondary meaning or reason to both as to why they

named their businesses Sweet Lorraine’s. There was no intent to deceive or confuse buyers. Even

with the standing above in Homeowner’s, Specialist’s was just ordered to stop using the mark

with the roof design and initials. This shows proof of the worst case scenario for Ms. Howard

should she continue to use her same business name. Additionally, there is proof that she had no

intent to defraud because she ultimately had assistance with a lawyer to set up her business and

also immediately came to us upon receiving the e-mail from Mr. Sawyer.

The 15 U.S.C.S. § 1125 (LexisNexis, Lexis Advance through PL 114-189, approved 7/6/16) Is

the Lanham Act. The Lanham Act sets out the different criteria to determine if a mark used is

likely to cause confusion. I do not find any relevance in Ms. Howards case to suggest that there

would be any confusion or a trademark infringement under the rules of Section 1125.

CONCLUSION

There is a 95% chance that Ms. Howard has not, nor is causing a trademark infringement or

violation of the Lanham Act into Mr. Sawyer’s trademark “Sweet Lorraine’s” There has been no

intent to deceive, or malice intent to use Mr. Sawyer’s mark to gain profit from his mark, nor is

there any likelihood of confusion should he decide to expand into Ms. Howard’s state of North

Carolina. While both Use the name “Sweet Lorraine’s,” they also use a description of the

services or goods in which they offer in the names of their very different business names. Ms.

Howard should not change the name of her business because without Mr. Sawyers proof of

actual confusion to consumers, Mr. Sawyers has no case against Ms. Howard. If Mr. Sawyers did

have a case against Ms. Howard, the only ramification she would face would be to change the

name of her business, however with the above given law, I do not think the court will rule

against Ms. Howard.

Howard & Mills, P.C.1234 Downtown Blvd.Charlotte, NC 00000000-000-0000August 8, 2016

Ms. Christine Donnelly125 Wilkes Blvd.Charlotte, NC 00000

Dear Ms. Donnelly:

I hope this letter finds you well. I have had time to review information related to your possible trademark infringement concerns in relation to Mr. Sawyers recent e-mail to you. It is my professional opinion your business name should remain “Sweet Lorraine’s Bakery, LLC.” after review of the law, I have not seen any facts that could pose an infringement of Mr. Sawyer’s trademark. In the event Mr. Sawyer should pursue this matter in court, the worst case scenario would be that you would no longer be able to use the name “Sweet Lorraine’s” and would have to change the name of your business. I discuss my findings in this letter.

Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996 ) is case law from the Sixth Circuit. Since this case would be brought forth in the same circuit, this court has already ruled this as a law, so will be a powerful defense to your situation because it came from the same court. In this case there were two different owners of two different golf clubs. Their businesses both were named exactly the same, they both offered memberships to the public for their clubs, they also both hosted public tournaments for advertising and promotion. Similar to your case, one party was the owner of the mark “CHAMPIONS.” Upon discovering the other club was named the same exact name “Champions Golf Club, Inc.,” the plaintiff also threatened to sue for infringement for the use of the owned mark. When the case of Champions went to trial, it was discovered that even though the two businesses offered golf memberships to the public, both hosted public tournaments for advertising and promotion, derived most of their revenue from its members and even had the same exact name, the court found that it was not infringement because both businesses were different. The geographical locations are different, the buildings and features are different, and there is no likelihood of confusion between either of the businesses.

In your situation with “Sweet Lorraine’s Bakery, LLC.,” the name “SWEET LORRAINES” is an owned mark by Mr. Sawyers, but because the situation is the same as the Champions case, I don’t feel there is an infringement. Your business is primarily a bakery, only advertises on Facebook, Twitter and a webpage, but does not sell items through the internet. All sales are generated through your store only. Your store is a family owned business, and has been doing well in your current local area. This means that customers are already familiar of you and the services in which you have to offer. This allows for no confusion because the services in which you and Mr. Sawyer offer because they are completely different. The main key to remember is trademark infringement occurs when there is a

likelihood to confuse the public, or to portray as you are the original owner of the mark as to collect money with the intent to deceive. I have not found any evidence to support this determination.

Mr. Sawyers wants to open another franchise of his Sweet Lorraine’s Mac-n-Cheez in your current state of North Carolina. Even if Mr. Sawyer offered the same goods in his potential expansion as he currently sells in his Detroit location, it is very clear that the two are very different businesses and offer different products and services in its entirety. The environment of both businesses is different, the advertising and sales are also different. In the Champions case, the businesses had the exact same name, but in your case the names state an additional general idea of your businesses offer to the public in the added terms “bar and café” and “bakery.” It seems logical that one would not go to a bar for cake.

Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) is also case law from the Sixth Circuit. Similar, to “Champions” and “Sweet Lorraine’s,” both use the name “DADDY’S.” The mark “DADDY’S” is owned by the plaintiff in this case. Both use the name “Daddy’s” in their business name. Both also sell musical instruments. One sells mostly used while the other sells mostly new. Both are in the same geographic location, however they both have differences in the ways they advertise and sell their products. Even with the similar use of a root name (Daddy’s), consumers are not confused and know the difference between the two businesses. Both have their own distinct customers.

Likewise, in Daddy’s as to Sweet Lorraine’s, they both use the root name, but again, offer different items. Consumers are likely to know the difference between the two even if Mr. Sawyers did expand to North Carolina, it is still undetermined what city Mr. Sawyers is expanding to, but both have very different means of advertising and sales generations. Mr. Sawyers sells online, whereas you do not. Only the direct general public would be familiar with your services, and because of that, purchasers are not likely to be confused. There is also another factor which is “degree of purchaser care.” People generally know more information about the goods or services when paying with money.

Homeowners Grp., Inc. v. Home Mktg. Specialists, 931 F.2d 1100 (6th Cir. 1991) Is case law from the District Federal Court for the State of Michigan, also a very important item in regards to your case. In this case, it was discovered that Specialist’s had taken over the HMS initials with the roof pattern that was an owned mark by Homeowner’s. In this case it did cause actual confusion, and Specialist’s was ordered to cease the use of the HMS roof mark.

In your case, neither knew about the other business prior to Mr. Sawyer’s research into expansion. Lorraine has to have a secondary meaning or reason to both as to why your businesses are named “Sweet Lorraine’s.” There was no intent to deceive or confuse buyers. Additionally, there is proof that there had been no intent to defraud because you retained an attorney to assist with the starting of your business and immediately contacted our firm upon receiving the e-mail from Mr. Sawyer.

In the Homeowner’s case, where Specialist’s had infringed, it was ordered to stop using the mark with the roof design and initials. This shows proof of the worst case scenario for your business should you continue to use “Sweet Lorraine’s Bakery.” To date, there has not been any cases of actual confusion, and in cases where there had been confusion, the court only takes notice to severe cases of confusion. Cases of actual proven confusion was the main supporting factor for the court to rule in favor of Homeowner’s.

The 15 U.S.C.S. § 1125 (LexisNexis, Lexis Advance through PL 114-189, approved 7/6/16) Is the Lanham Act. The Lanham Act sets out the different criteria to determine if a mark used is likely to cause confusion. I do not find any relevance in Ms. Howards case to suggest that there would be any confusion or a trademark infringement under the rules of Section 1125.

In conclusion, I suggest you maintain your business name as “Sweet Lorraine’s Bakery.” I have not found law in which you have caused trademark infringement. If Mr. Sawyer does proceed with his claim in court, the worst that would happen would be to change the name of your business and no longer use the name “Sweet Lorraine’s.” Because changing a business name is very costly, I suggest you continue to use the name. I also believe the court would find in your favor having given the law at hand. If you have any further questions or concerns, please don’t hesitate to contact us at 000-000-0000. Thank you.

Sincerely,

A. ParalegalParalegal

The value of what I have learned throughout this project is how to better myself with case

briefing, how to be more concise when writing, and the different ways to write the various legal

memorandums associated in the legal field. This will allow me to be more successful in the

workplace because with my knowledge gained I will be able to distinguish the various types of

legal documents. This will set me ahead of others because I will already have had practice in

these legal writings. I will use these daily in my new career as a paralegal.

My work process has changed through the course of this project in that I need to plan ahead in

the event of unexpected emergencies on the home front. I have had a lot of family issues and

medically related issues arise, and it caused a couple of my assignments to be late. I had to work

more quickly to complete my assignments due to these unexpected setbacks. I feel my work was

not as good as I would have envisioned it to be and this is disappointing to me. I generally prefer

to take my time and do a thorough perfected job when completing any task in life. I know there

will be many deadlines to hit in my future career, however I am sure I will gain speed and

perfection in time with practice.

The advice I would give to a new student just starting this project is to start the midterm as soon

as possible. I was not able to fully complete my assignment and I was not able to submit it in

time because I did not know the extent of this assignment. Also, ask for assistance if needed. I

could not locate my supreme court case for this project at first, but when I did find one I did not

understand it and I became very frustrated and overwhelmed. Because I had the problems I did

not adequately plan my time in case of setbacks which caused me to not have the time to request

help. This cost me a good deal of my points for this assignment and also on my midterm.

The program outcomes I believe that were fulfilled by this project are to further learn to decipher

primary law from secondary, mandatory from persuasive authority, and learn how to figure

where a law comes from by reading the series of letters and numbers following the case name.

We further expanded into becoming familiarized with writing briefs and learned the different

types of memos used in the legal profession. We learned to utilize Lexis Advance to look for

different cases related to legal issues to further analyze law. In addition, we learned to

Shepardize to be sure our legal research is top-notch and is of good law, and not substandard.

But most importantly, we learned how to express our findings and analysis of the law by using

proper writing and research skills which include, but not limited to being very clear and concise,

and with the use of proper legal terminology.

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