KJ Korea, Inc. v. Health Korea, Inc.
66 F. Supp. 3d 1005
N.D. Ill.2014Background
- Plaintiffs allege three Health Korea marks (two Korean-English, one English-only) used since 2008 in health products; '033 Mark' is USPTO-registered in Supplemental Register.
- Plaintiffs claim a second mark, 'HEALTH KOREA,' under Illinois common law; a third mark, '691 Mark,' in USPTO application stage (Serial No. 86040691).
- Defendants operate a Chicago health store since 2013 and published newspaper ads using 'HEALTH KOREA.'
- Plaintiffs allege Kay Park visited KJ Korea stores in Los Angeles and stated HEALTH KOREA was well recognized, intending to use the mark in her store.
- Plaintiffs claim ongoing use, substantial advertising (over $1 million), and alleged actual confusion; cease-and-desist letters were ignored.
- Court denies Defendants' Rule 12(b)(6) motion to dismiss all counts, applying the same elements across claims and addressing protectability, likelihood of confusion, and defenses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Protectable right in marks | KJ Korea claims protectable marks with secondary meaning. | Marks are descriptive and lack secondary meaning. | Plaintiffs' protectability allegations survive at pleading; secondary meaning shown. |
| Likelihood of confusion framework | Seven-factor test supports likelihood of confusion between marks and store branding. | Arguments about non-identical marks and markets reduce confusion likelihood. | Seven factors guide analysis; allegations suffice to raise possibility of relief at pleadings. |
| Common law unfair competition standard | Unfair competition mirrors trademark infringement elements; not solely 'shocks sensibilities'. | Wilson standard is elusive and broader. | Court declines Wilson-based standard; treats common-law unfair competition as overlapping with trademark infringement elements. |
| Fair use defense | Not required to negate defenses in complaint. | Fair use should defeat some claims. | Fair use defense raised belatedly; court declines dismissal on fair-use grounds. |
Key Cases Cited
- CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660 (7th Cir.2001) (outlines elements of trademark infringement and unfair competition)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir.2001) (describes factors for likelihood of confusion)
- Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891 (7th Cir.2001) (seven-factor test for confusion and marketplace considerations)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (Supreme Court, 1992) (automatic protection for inherently distinctive marks)
- Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934 (7th Cir.1986) (describes descriptive/secondary meaning concepts in trade dress)
- Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423 (7th Cir.1985) (damages/hostage of goodwill concept in trademark context)
- Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir.2000) (strength of mark and distinctiveness considerations)
- Platinum Home Mortgage Corp. v. Platinum Fin. Group, Inc., 149 F.3d 722 (7th Cir.1998) (descriptive marks and secondary meaning framework)
- Mil-Mar Shoe Co., Inc. v. Shonac Corp., 75 F.3d 1153 (7th Cir.1996) (description of protectability and distinctiveness levels)
- Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901 (7th Cir.1983) (unfair competition and trademark overlap premise)
- Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029 (N.D. Ill. 2001) (unfair competition and trademark claims analysis coherence)