Anthоny J. DeGIDIO, Plaintiff-Appellant, v. WEST GROUP CORPORATION; The Thomson Corporation; West Licensing Corporation, Defendants-Appellees.
No. 02-3739
United States Court of Appeals, Sixth Circuit.
Argued: Dec. 5, 2003. Decided and Filed: Jan. 14, 2004.
355 F.3d 506
Witham relies on Townsend v. Sain, 372 U.S. 293, 313, 83 S.Ct. 745, 9 L.Ed.2d 770 (1963), to assert that the district court was required to conduct an evidentiary hearing. In Townsend, the Court held that, where there is a factual dispute, “the federal court in habeas corpus must hold an evidentiary hearing if the habeas applicant did not receive a full and fair evidentiary hearing in a state court, either at the time of trial or in a collateral proceeding.” Id. at 312, 83 S.Ct. 745. Townsend, however, does not support Witham‘s position. Even assuming—without deciding the question—that Townsend applies in the military context, it nevertheless applies only where the petitioner can show that he was not afforded a full and fair evidentiary hearing in the courts below. Witham has not made any showing that the military courts failed fully and fairly to gather and evaluate the evidence relating to his claims. Even if Witham had tried to make such a showing, the record indicates that he would have failed. The Navy-Marine Corps Court of Criminal Appeаls evaluated a detailed record from the court-martial on each of the claims Witham presented to it.
Moreover, the Townsend Court made it clear that, where a petitioner asserted that he had not received a full and fair evidentiary hearing in a state court, the district court retained the discretion to make the threshold determination of whether or not a full and fair hearing occurred in the lower courts. The court explained, “[o]ur final category [the circumstance under which a habeas applicant did not receive а full and fair hearing] is intentionally open-ended because we cannot here anticipate all the situations wherein a hearing is demanded. It is the province of the district judges first to determine such necessities in accordance with the general rules.” Id. at 317-18, 83 S.Ct. 745.
The standard the district courts must apply requires them first to determine whether a factual dispute exists, and second, to determine whether the record conclusively shows that the petitioner is not entitled to relief. Ross, 339 F.3d at 490. Only if the court finds a factual dispute and that the petitioner may be еntitled to relief should it grant an evidentiary hearing.
Under the second prong of analysis, the record before us conclusively shows that Witham is not entitled to relief. As explained above, two of his claims are procedurally defaulted, and the remaining three claims were fully and fairly considered by the military courts. Not only has Witham never made the effort to argue that his claims were not fully and fairly considered, but the record clearly shows that they were. Because Witham is conclusively not entitled to relief, no hearing was required.
Finding no abuse of discretion, we AFFIRM the judgment of the district court.
Anthony J. DeGidio, Jr. (argued and briefed), Toledo, OH, for Appellant.
Before KENNEDY, MARTIN, and MOORE, Circuit Judges.
KENNEDY, J., delivered the opinion of the court, in which MARTIN, J., joined. MOORE, J. (pp. 514-15), delivered a separate opinion concurring in part and concurring in the judgment.
OPINION
KENNEDY, Circuit Judge.
Plaintiff appeals the district court‘s order granting summary judgment to Defen
BACKGROUND
This case represents an attempt by Plaintiff, Anthony DeGidio, to obtain trademark protection for the mark LAWOFFICES.1 Plaintiff is the registrant of the domain name “lawoffices.net” and alleged founder and owner of the corresponding website,2 which provides a directory of forty attorneys, legal information relating to cyberlaw issues, a vanity e-mail service,3 listing of domain names for sale,4 and a hosting service for legal related web
Defendants, West Group Corporation, The Thompson Corporation, and West Licensing Corporation, utilize the designation Law office.com and the domain name “lawoffice.com”6 to market the West Legal Directory, which serves as an online resource for various legal information.8
Plaintiff filed this trademark action on August 24, 1999 alleging violations of the Ohio Deceptive Trade Practices Act,
STANDARD OF REVIEW
We review a district court‘s grant of summary judgment de novo. Terry Barr Sales Agency, Inc. v. All-Lock Co., 96 F.3d 174, 178 (6th Cir.1996). In deciding a summary judgment motion, this court cannot weigh the evidence, judge the credibility of witnesses, or determine the truth of the matter asserted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). We view the evidence and draw all “justifiable inferences” in the light most favоrable to the non-movant. Id. Summary judgment is appropriate where “there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law.”
ANALYSIS
As the district court correctly noted, in order to prevail on any of the first six counts, Plaintiff must establish that the designatiоn “LawOffices.net” is indeed a valid and legally protectable trademark. See DeGidio v. West Group Corp., 191 F.Supp.2d 904, 908 (N.D.Ohio 2002) (citing Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 308 (6th Cir.2001), Am. Online, Inc. v. AT&T Corp., 243 F.3d 812, 819 (4th Cir. 2001); Sunbeam Products Inc. v. The West Bend Co., 123 F.3d 246, 251 (5th Cir.1997), overruled in part on other grounds sub nom., TrafFix Devices, Inc. v. Mktg. Displays Inc., 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001)) The district court also correctly noted that the Lanham Act offers protection against infringement of both registered and unregistered marks. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). To determine whether an unregistered mark is entitled to protection under § 43(a), the courts look to the general principles qualifying a mark for registration under § 2 of the Lanham Act. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 921 (6th Cir.2003) (citing Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753). As this Court has previously indicated, we employ the same analysis to alleged trademark violations under Ohio law, as we do under the federal law. Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 354-55 (6th Cir.1998); Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 626 n. 2 (6th Cir.2002); Leventhal & Assoc., Inc. v. Thomson Cent. Ohio, 128 Ohio App.3d 188, 714 N.E.2d 418, 423 (1998). Finally, the same federal trademark principles apply to analogous federal and state common law
As the district court observed, “whether Plaintiff‘s mark qualifies for trademark protection is determined by where the mark falls along the established spectrum of distinctiveness.” DeGidio, 191 F.Supp.2d at 910 (citing Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir.1993)). Putative trademarks may either: (1) be inherently distinctive or (2) acquire distinctiveness through secondary meaning. See Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753. Professor McCarthy, in his treatise, further explains that:
Within the two basic categories are subcategories that form the complete spectrum of distinctiveness of marks. Arrayed in an ascending order roughly reflecting their eligibility to trademark status and the degree of protection afforded, the categories are: (1) generic terms; (2) descriptive; (3) suggestive; (4) arbitrary or fanciful. Generic terms can never be trademarks, descriptive terms are not inherently distinctive and suggestive, arbitrary and fanciful terms are regarded as being inherently distinctive.
2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:2 (4th ed.2003). See also Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir.1984).
In the present case, neither party is arguing that Plaintiff‘s mark is either generic or arbitrary or fanciful. Becausе suggestive marks are inherently distinctive, whereas descriptive marks can only acquire distinctiveness through secondary meaning, we first consider into which subcategory, Plaintiff‘s mark falls.
1. Plaintiff‘s mark is descriptive
“A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods.” Induct-O-Matic, 747 F.2d at 362. As this Circuit explained earlier, examples of a suggestive term include “CITIBANK, which connotes an urban or modern bank, or GOLIATH, for wood pencils, connoting a lаrge size.” Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1117 (6th Cir.1996). On the other hand, a trademark is merely descriptive if it describes one, or more, of the following: “the intended purpose, function or use of the goods ... the class of users of the goods; a desirable characteristic of the goods; or the end effect upon the user.” Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1190 (6th Cir.1988). As the Champions Golf Club court explained, “examples of descriptive marks are BEST, SUPERIOR, and PREFERRED.” Champions Golf Club, 78 F.3d at 1117.
The district court found that Plaintiff‘s mark was, at best, descriptive. DeGidio, 191 F.Supp.2d at 912. To aid in its determination, the court relied on a following six-factor test that was articulated by Professor McCarthy10 and accepted by the parties:
(1) How much imagination on the buyer‘s part is required in trying to cull a direct message from the mark about the quality, ingredients or characteristics of the product or service? In doing this, it
(2) Does the mark directly convey a real and unequivocal idea of some characteristic, function, quality or ingrediеnt of the product or service to a reasonably informed potential buyer? That typical buyer will already have some knowledge about the product or service and is neither an expert nor a totally uninformed about the product. Is some reflection or multi-stage reasoning process necessary to cull some direct information about the product from the term used as a mark?
(3) Does the mark so closely tell something about the product or service that other sellers of like products would be likely to want to use the term in connection with their goods? Perhaps a more realistic way to pose this question is to ask whether, without any prior knowledge of this mark, others would be likely to want to use it to describe their products?
(4) Are, in fact, other sellers now using this term to describe their products? Even if the mark is descriptive and has attained secondary meaning, if many others in other product markets are using this term, the mark may be labelled [sic] “weak” and entitled only to narrow protection.
(5) Even though the mark may tell something about the goods or services, is it just as likely to conjure up some other, purely arbitrary connotation? E.g., SUGAR & SPICE baked goods, or POLY PITCHER plastic pitchers.
(6) How does the mark fit into the basic concept that descriptive marks cannot pinpoint one source by identifying and distinguishing only one seller? That is, are buyers likely to regard the mark really as a symbol of origin, or merely as another form of self-laudatory advertising?
2 MCCARTHY § 11:71.
Plaintiff raises a number of arguments challenging the district court‘s holding. We find them to lack any merit. Ordinarily, we review the district court‘s classification of a term as “descriptive” or “suggestive” under the clear error standard. See, e.g., Sands, Taylor & Wood Co. v. The Quaker Oats Co., 978 F.2d 947, 952 (7th Cir.1992); 2 McCarthy § 11:3 (citing 1st, 2nd, 3rd, 4th, 5th, 7th, 8th, and Federal Circuits). However, as the Seventh Circuit noted, a grant of a summary judgment motion on the question of whether the mark is descriptive or suggestive, even resolving all factual disputes in favor of a non-moving party, amounts to a legal conclusion. The Quaker Oats Co., 978 F.2d at 952. This legal conclusion is reviewed de novo. Id. See also Eisenmann Corp. v. Sheet Metal Workers Int‘l Ass‘n Local No. 24, 323 F.3d 375, 380 (6th Cir.2003).
First, Plaintiff argues that the district court erred when it concluded that “LAWOFFICES was merely descriptive of an online database of attorneys and the electronic publication via a global network of computers” bеcause, according to Plaintiff, there is no “law office that provides a software based service by which the attorney can enter their name, contact information, and specialty, into a database made available to individuals around the world and which is searchable by those users by the attorney‘s name, state, or specialty.” Appellant Br. at 17–18. Plaintiff misses the mark on this argument. When potential clients think of the services that one would obtain from a lawyer in a law office, they certainly envision referrals to specialists, advice on lawyers in other jurisdic
Second, Plaintiff argues that the district court should have concluded that “LAWOFFICES was suggestive and therefore a trademark for domain name sales (an online searchable database of domain names for sale), website hosting (and third level domain name сreation and sales), and the provision of vanity email services.” Appellant Br. at 18. Although we find that the district court did not necessarily view evidence in light most favorable to Plaintiff when it applied the six-factor McCarthy test,12 we nevertheless uphold the district court‘s opinion. The district court found that the second factor weighed in favor of Plaintiff. It also found that factors three through six weighed heavily in favor of Defendant. Since the descriptive-suggestive distinction is a continuum, we find that, even if we view the evidence in the light most favorable to Plаintiff, the mark LAWOFFICES lies very close to the descriptive end of a continuum.
Finally, as Defendant points out, the main problem with Plaintiff‘s position is that Defendant in this case is not even accused of providing those services (i.e. domain name sales, website hosting, and vanity e-mail) on the website that allegedly infringed on Plaintiff‘s mark.13 One can imagine a hypothetical case in which a defendant would provide services identical to Plaintiff‘s on a LAWOFFICE.COM website. That case would present an interesting question of whether “LAWOFFICES” is a suggestive or a descriptive mark with regard to those services. Since the present controversy does not involve such a fact pattern, we do not address the question of whether “LAWOFFICES” could ever be a suggestive mark.14
2. Plaintiff‘s mark has not acquired secondary meaning
Since Plaintiff has failed to establish that his mark is suggestive, he must establish that the mark has acquired secondary meaning in the marketplace. “Secondary meaning is used generally to indicate that a mark or dress has come through use to be uniquely associated with a specific source.” Two Pesos, 505 U.S. at 766 n. 4, 112 S.Ct. 2753 (citations omitted). Plaintiff “must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n. 11, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). As the district court noted:
Courts in this Circuit evaluate seven factors to determine whether a mark has acquired secondary meaning: (1) direct consumer testimony; (2) consumer surveys; (3) exclusivity, length and manner of use; (4) amount and manner of advertising; (5) amount of sales and number of customers; (6) established place in the market; and (7) proof of intentional copying. Mktg. Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929, 937 (6th Cir.1999), rev‘d on other grounds, 532 U.S. 23, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). “[I]t is the party seeking protection of a mark who bears the burden of proving that secondary mеaning has attached.” Boston Beer Co., 9 F.3d at 182 (citing Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2nd Cir.1992); Blinded Veterans Assoc. v. Blinded Am. Veterans Found., 872 F.2d 1035, 1041 (D.C.Cir.1989)). “The evidentiary burden necessary to establish secondary meaning is substantial.” Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 596 (6th Cir.1989) Secondary meaning is established when a preponderance of the
evidence demonstrates “that the attitude of the consuming public toward the mark denotes ‘a single thing coming from a single source.‘” Id. at 596 (quoting Aloe Creme Labs. v. Milsan, Inc., 423 F.2d 845, 849 (5th Cir.1970)). The best evidence of secondary meaning is direct evidence; however, such evidence is rarely available. See id.; Libbey Glass, Inc. v. Oneida Ltd., 61 F.Supp.2d 700, 707 (N.D.Ohio 1999). Therefore, courts often draw inferences form the above factors. See id.
DeGidio, 191 F.Supp.2d at 914. The district court applied the seven-factor test and found that Plaintiff failed to meet his burden with respect to establishing a secondary meaning for his mark. We agree.
First, with regard to consumer testimony, Plaintiff provided affidavits of three people who visited lawoffices.net website. The affidavits provide no testimony that affiants identify the website with a particular source of services. Mere use of a website does not equal identification with a particular provider. The district court also rejected as irrelevant the rankings by WebsMostLinked.com, а site that ranks websites based upon the number of other sites that link to them. We agree. Second, neither side has provided consumer surveys. Third, the district court found that, even assuming that length and continuity of use is favorable to Plaintiff, the wide use of the phrase “law office(s)” weighed against a finding of secondary meaning. See, e.g., K‘Arsan Corp. v. Christian Dior Perfumes, Inc., No. 97-1867, 1998 WL 777987, at *5 (6th Cir. Oct. 21, 1998) (“Third-party use of ‘sun powder’ (by at least two, and as many as five, other companies ...) weakens the mark.“) (citing Data Concepts Inc. v. Digital Consulting, Inc., 150 F.3d 620, 625 (6th Cir.1998)); Amstar Corp. v. Domino‘s Pizza, Inc., 615F.2d 252, 260 (5th Cir.1980) (finding it significant that there was widespread third-party registration of “Domino“); Sun Banks of Fla., Inc. v. Sun Fed. Sav. & Loan Ass‘n, 651 F.2d 311, 316 (5th Cir.1981) (finding 4400 businesses using “Sun” in their names to be “impressivе evidence that there would be no likelihood of confusion between Sun Banks and Sun Federal.“) Fourth, the district court found that Plaintiff‘s advertising expenditures of $2,500 over four years is woefully insufficient to establish secondary meaning. See, e.g., Burke-Parsons-Bowlby Corp., 871 F.2d at 596 (observing that “extensive advertising which results in consumer association with a single source” is needed to establish secondary meaning and finding that $100,000 in advertising expenses was not enough to establish secondary meaning without further evidence that such advertising was extensive or beyond necessary to survive in the market.) Fifth, the district court credited evidence that Plaintiff in four years generated mere $200 in revenue from banner advertisements and click-through revenues. Burke-Parsons-Bowlby, 871 F.2d at 596 ($2,000,000 in gross sales is insufficient to establish secondary meaning). Sixth, neither side presented evidence regarding Plaintiff‘s market share. Seventh, Plaintiff failed to establish that Defendant intentionally copied Plaintiff‘s mark. At most, Plaintiff established that Defendant knew of Plaintiff‘s website. However, mere knowledge of the competitor‘s mark is insufficient as a matter of law to prove intentional copying. As the district court noted, “intentional copying ... is not actionable under the Lanham Act absent evidence that the copying was done with the intent to derive a benefit from the reputation of another.” DeGidio, 191 F.Supp.2d at 917 (citations omitted). Plaintiff‘s suggestion that Defendant wanted to derive a benefit from his minimal $50 annual business is meritless.
CONCLUSION
In sum, we conclude that Plaintiff‘s mark is descriptive and that it has not acquired secondary meaning. Accordingly, we affirm the district court‘s decision.
MOORE, Circuit Judge, concurring in part and concurring in the judgment.
While I agree with the majority that DeGidio has failed to demonstrate that his mаrk has inherent or acquired distinctiveness warranting protection under the Lanham Act, I write separately to explain my conclusion that DeGidio‘s mark is merely descriptive rather than suggestive. I agree with the majority that the district court did not, as is appropriate on summary judgment, necessarily view all of the evidence in the light most favorable to DeGidio. I also agree that the district court‘s holding was nonetheless correct, but I reach that conclusion by a slightly different route.
We deal in this case with two sets of services: the domain name sales, web site hosting, and email hosting services (“internet services“); and the online attorney database and legal information database services (“database services“). I believe that “LawOffices.net” is clearly descriptive as to the provision of legal information and attorney references. With respect to the internet services, however, I read the factual record differently from the majority, for I believe that West is in fact “accused of” providing web site hosting and vanity email services on its web site. See Apрellee‘s Br. at 7 (“West has also offered ... e-mail and Web site creation and hosting services.“). I think it is therefore necessary to inquire whether “LawOffices.net” is descriptive or suggestive as to those two
While it seems settled that if we were to find that DeGidio had a protectable mark in “LawOffices.net,” the difference between the “.nеt” top-level domain (“TLD“)1 and the “.com” TLD on West‘s mark of “Law office.com” would not matter, see Patent and Trademark Office, “Examination Guide No. 2-99: Marks Composed, in Whole or in Part, of Domain Names” (Sept. 29, 1999), I believe that we can consider the entire mark as used by DeGidio when inquiring as to its distinctiveness. See In re Anylens Acquisition, LLC, Nos. 02-1493, 02-1494, 2003 WL 1194293, at *3, 61 Fed.Appx. 698 (Fed.Cir. Mar. 10, 2003) (noting a TLD can distinguish a particular type of organization from organizations associated with other TLDs); Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264, 271 (4th Cir.2001) (“vw.net” only “confusingly similar” to “VW“). The TLD “.net” is short for “network,” and originally was exclusively for use by network providers.2 When DeGidio began LawOffices.net, he specifically chose a “.net” TLD because he planned to offer web site hosting services on his web site. See Joint Appendix at 98-100. I would therefore hold that the mark “LawOffices.net” is descriptive as to the network services that DeGidio offered on his site, namely the web site hosting and vanity email services. See, e.g., Eglen v. America Online, Inc., No. TH 00-135-C-M/H, 2003 WL 21508343, at *9-*10 (S.D.Ind. June 12, 2003) (“hometown.net” is descriptive as to local network service provider‘s services).
I therefore concur in Part 2 of the majority‘s opinion and in the judgment.