Serenity Springs v. The LaPorte County Convention and Visitors Bureau
2013 Ind. App. LEXIS 171
| Ind. Ct. App. | 2013Background
- Serenity Springs and Laura Ostergren appeal a trial court ruling enjoining Serenity from using the Visit Michigan City LaPorte designation and ordering transfer of the visitmichigancitylaporte.com domain to the LaPorte County Convention and Visitors Bureau.
- The Bureau is the local destination marketing organization promoting LaPorte County tourism and competed with Serenity, which operates a local hotel resort.
- In 2009 the Bureau announced Visit Michigan City LaPorte as the area branding; Serenity immediately registered the domain visitmichigancitylaporte.com to redirect to its site.
The Bureau later registered Visit Michigan City LaPorte as a trademark and sent cease-and-desist letters; Serenity argued the mark was not valid, was merely descriptive, and that Serenity had first use.
The trial court held Serenity violated trademark law and cybersquatting by using the domain, but the appellate court reversed, holding the mark was geographically descriptive, lacked secondary meaning, and thus was not protectable; the court remanded for the trial court to address remaining claims and denied appellate attorney fee relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the Visit Michigan City LaPorte designation a protectable mark? | Bureau argued the mark is valid and protected despite governmental status. | Serenity argued the mark is primarily geographically descriptive and lacking secondary meaning; Serenity had first use. | Geographically descriptive; lacked secondary meaning; not protectable. |
| Did Serenity commit cybersquatting in light of the mark's protectability? | Bureau contends Serenity infringed and cybersquatted using the domain name. | Serenity argues no infringement because the mark is not protectable. | No cybersquatting liability absent a protectable mark. |
| Should remaining claims (e.g., common-law unfair competition) be addressed on remand? | Bureau suggests broader unfair competition theories may apply regardless of trademark validity. | Serenity disputes remaining theories and argues against trademark-based relief. | Remanded to address remaining claims; trial court to limit to evidence already presented. |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (Supreme Court, 1992) (distinctiveness categories; inherently distinctive marks have protection)
- Kohler Co. v. Moen Inc., 12 F.3d 632 (7th Cir. 1993) (descriptive marks require secondary meaning for protection)
- Felsher v. Univ. of Evansville, 755 N.E.2d 589 (Ind. 2001) (unfair competition and related claims; interplay with trademark law)
- Keaton and Keaton v. Keaton, 842 N.E.2d 816 (Ind. 2006) (secondary meaning required for protection of trading names)
- Johnson v. Glassley, 83 N.E.2d 488 (Ind. Ct. App. 1949) (exclusive right to use a mark requires actual use in commerce)
- Blau Plumbing v. S.O.S. Fix-It, Inc., 781 F.2d 604 (7th Cir. 1986) (describes function of trademark protection and descriptive terms)