' FINDINGS OF FACT AND CONCLUSIONS OF LAW
Ariel Investments, LLC sued Ariel Capital Advisors LLC, alleging trademark infringement, unfair competition, and cy-bersquatting in violation of the Lanham Act and unfair trade practices in violation of the Illinois Deceptive. Trade Practices Act and Illinois common law. Ariel Capital raised several affirmative defenses and asserted three counterclaims against Ariel investments. Both parties moved for summary judgment. The Court, denied Ariel Investments’ motion in its entirety and granted summary judgment for Ariel Capital on the cybersquatting claim but otherwise denied Ariel Capital’s motion. Ariel Invs., LLC v. Ariel Capital Advisors LLC, No. 15 C 3717,
Facts
I. Ariel Investments
Ariel Investments is an investment management company headquartered in Chicago, Illinois. The company is a registered investment advisor with the Securities and Exchange Commission (SEC). Mellody Hobson, the president of Ariel Investments, testified that the company offers both separate accounts and mutual funds for individuals and institutional clients. Separate accounts consist of a stock portfolio, managed by Ariel Investments, containing assets owned entirely by a single client, Hobson testified that Ariel Investments requires a targeted minimum of $10 million to open a separate account but frequently makes exceptions, sometimes going as low as several hundred thousand dollars. Because of this - high minimum, Ariel Investments separate accounts usually are not available to retail investors. The company has hundreds'of separate account clients. Mutual fund,accounts, in contrast, involve the pooling of client assets. Ariel Investments has hundreds of thousands of mutual fund clients. On its website, Ariel Investments refers to both its separate accounts and its mutual funds as products. Between its separate account and mutual fund clients, the company has clients in all fifty states. Merrillyn' Rosier, chief marketing officer for the company’s mutual funds, testified that Ariel Investments does not prepare tax returns for its client, nor does it draft wills. Rosier testified at one point that whether the company prepares a financial plan for its investors depends on the circumstances. She also testified that the company does not prepare written financial plans for its clients.
John Rogers, the company’s current chief investment officer, founded Ariel Investments in 1983. The company was originally called Ariel Capital Management Inc. In November 1986, the company introduced its first mutual fund, the Ariel Growth Fund. The company adopted its current name, Ariel Investments, in 2008. In order to protect its brand, Ariel Investments registered a number of trademarks beginning in 1984. These include ARIEL, ARIEL INVESTMENTS, ARIEL FUND, ARIEL ABCS OF MONEY, ARIEL INTERNATIONAL FUND, ARIEL GLOBAL FUND, ARIEL DISCOVERY FUND, ARIEL FOCUS FUND, and AR, IEL APPRECIATION FUND, referred
Over the years, Ariel Investments has employed a number of strategies to attract customers, it solicits clients directly and also receives referrals. Hobson testified that Ariel Investments spends anywhere from half a million to a couple million dollars on advertising each year. It has advertised in industry publications such as Investment Advisor, Pensions and Investments, and Kiplinger, as well as general publications such as the Wall Street Journal and the New York Times. These ads typically include the word “Ariel” in all capital letters, the word “Investments” in smaller print below, a distinctive swirl underneath both words, and sometimes—but not always—an image of a turtle. When the company advertises, it does so only with the Ariel Investments name; it does not advertise under its former name. Ariel Investments also sponsors a number of industry conferences. In 2008 and 2010, it sponsored a number of Schwab regional conferences throughout the United States. Ariel Investments also sponsors community events, such as plays and athletic competitions, and it makes charitable contributions in the company’s name.
Hobson testified that Ariel Investments considers as its competition all other investment firms. In order to evaluate its progress, Ariel Investments periodically surveys the advisors who use (or might in the future use) the company’s mutual funds. The surveys are called “turtle talk” surveys. In the 2016 turtle talk survey, respondents were asked to list the three firms they perceived to be most like Ariel Investments. The most common responses, in order, were Vanguard, Fidelity, Parnassus Investments, Calvert Investments, PAX World Investments, and T. Rowe Price. Rosier testified that respondents viewed the “Wal-Marts” of the financial industry as Ariel Investments’ competitors. In the 2016 turtle talk survey, respondents were again asked to list three firms that they perceived to be most like Ariel Investments. The top three responses were Calvert, PAX, and Parnassus. When respondents were asked to select a word that best summarizes what is least attractive about Ariel Investments, the most common response was “unknown / small size.” Ariel Investments listed as a key takeaway that advisors already invested in the company wished that it had more brand awareness among consumers. Further, when respondents were asked to indicate their degree of familiarity with Ariel Investments’ philanthropic initiatives, over sixty percent of respondents stated that they were not familiar with these efforts.
Because of its concern for client trust, Ariel Investments tries to police use of the Ariel Marks. Hobson testified that when Ariel Investments learns of other investment services companies using its name, it generally sends a cease and desist letter. Mareile Cusack, general counsel for Ariel Investments, confirmed this procedure. Ariel Investments offered into evidence six letters it sent to various entities using “Ariel” in their name. Both Hobson and Cusack also recalled a specific incident in which a company calling itself Ariel Fund refused to stop using the name. That company was later tied to Bernard Madoffs fraudulent scheme. Numerous publications wrote about Madoff and those associated with him, including Ariel Fund. As a result, numerous clients of Ariel Investments called the company out of concern that it was associated with Madoff. Ariel Investments had to reach out to each publication to ask them to include a disclaimer alongside references to Ariel Fund that it was not associated with Ariel Investments in Chicago.
II. Ariel Capital
Christopher Bray founded Ariel Capital Advisors in January 2014. Prior to founding Ariel Capital, Bray worked in the financial industry at Deloitte, National City Bank, and Willow Street Advisors. Bray considered a variety of names for his new financial company. Bray wanted to use the word “Ariel” because it is both the name of his daughter and the name of a ministry with which he and his wife work. Bray also liked the word’s symbolism, as it is a Hebrew word meaning lion of God. He and his wife created a list of thirty-one possible names for his firm, five of which included the word “Ariel.” Bray originally wanted to name his firm Ariel Wealth Advisors. He ran a Google search for this name and discovered Ariel Wealth Advisors (discussed above), located in New Jersey and using a lion in its logo. Bray then decided to select a different name. He ran a Google search for “Ariel Capital Advisors.” Bray testified that he did not find any other company using that name. Bray also performed a search for this name with the Florida Secretary of State. Bray estimates that his search turned up a list of over one hundred entities in Florida whose name contained “Ariel,” none of which were named Ariel Capital Advisors.
Ariel Capital is headquartered in Naples, Florida and is described as a multi-state private wealth management firm. The company is a registered investment advisor with the SEC, and its website states that the company provides customized investment management. The company has only one other office, in Cleveland, Ohio, but Bray is interested in expanding. Ariel Capital has six employees, including Bray, and it serves clients in twelve states and Washington, D.C. Bray is the managing director of Ariel Capital and is solely responsible for the company’s marketing. As of March 2016, Ariel Capital had sixty-five client relationships. Bray testified that approximately sixty of Ariel Capital’s sixty-five client relationships came over with him from Willow Street Advisors after he contacted them to say he was starting a new firm. The remaining five clients came as referrals from these sixty clients. A client relationship can be an account of a single individual, or it can be accounts for multiple individuals, typically within the same family. Ariel Capital requires a minimum investment of $1 million. Clients can reach this minimum individually or, in the case of a family account, cumulatively.
Bray testified that Ariel Capital sells its clients only advice, not “things.” It pro
Ariel Capital occasionally runs print ads in various publications, such as Crain’s Cleveland Business. These ads typically include the words “Ariel Capital” in blue letters with “Advisors, LLC” in smaller, gray letters underneath. These words are accompanied by a white and blue image of a lion within a blue shield. Ads for Ariel Capital frequently appear in industry publications, particularly supplements on estate planning. They occasionally appear alongside articles authored by Bray. Bray testified that Ariel Capital does not advertise to get new clients and that the purpose of its advertising was merely to gain credibility. As discussed later, the Court did not find this testimony credible.
III. The trademark dispute
Ariel Investments learned of Ariel Capital in the summer of 2014. In August of that year, counsel for Ariel Investments sent a cease and desist letter to Bray asking Ariel Capital to cease use of its company name and internet domain name. Ariel Investments indicated that it believed Bray was infringing on its registered trademarks and internet domain name and was concerned that consumers would confuse the two companies.
Bray testified at trial that he first learned of Ariel Investments from this letter. He further testified that he had never seen advertisements for Ariel Investments prior to starting Ariel Capital. Ariel Investments introduced evidence of its e-mail blasts, which Ariel Investments regularly sends out to a number of contacts in the financial industry, including friends and family, financial advisors, and separately managed clients and their consultants. One particular e-mail highlighted an article in USA Today that discussed Ariel Investments as a prominent fund group. The email contained Ariel Investment’s logo, a quote from the article, and a link to view the article. Ariel Investments sent this email to 11,000 addresses, including cpbray@willowstreetadvisors.com, Bray’s e-mail address before he started Ariel Capital. Roger Schmitt, who is responsible for data and infrastructure at Ariel Investments, testified that e-mail analysis showed that the cpbray@willowstreet advisors.com address opened the e-mail. Ariel Investments also introduced a list of attendees of the 2010 Schwab conference in Atlanta, sent to Ariel Investments about ten days prior to the event, which listed Bray as an attendee. Schmitt acknowledged that the list was of those who registered for the conference, and not necessarily those who attended.
Citing concern for consumer confusion between the two companies, Ariel Investments brought suit against Ariel Capital in April 2015, asserting trademark infringe
■ Bray also received an e-mail in February 2016 from Marcie Rebardo, who is responsible for office management at Ariel Capital, about a phone call that she had just received. Rebardo testified that the male caller asked to speak to Cheryl Ha-gen, and Rebardo told the caller that no one at Ariel Capital went by that name. Rebardo testified that the caller asked, “Is this Ariel Investments?” When Rebardo said no, the caller hung up. The caller’s telephone number was 908-400-8730. In a deposition prior to trial, David Boone testified that this is the phone number for his cellphone. Boone testified that he owns and runs TechSmart Trader, a digital publication that covers the trading industry. Boone stated that, in making the February 2016 phone call, he was trying to reach Cheryl Cargie, a trader at Ariel Investments, to speak to her about an article and advertising in his publication. He further testified that he would have found the number that he called by performing a Google search for “Ariel” or “Ariel Capital.” During his deposition, Boone was also asked whether he was familiar with Ariel Capital. He testified that he has known Ariel Capital for about ten years and that the company is headquartered in Chicago. Boone then stated that, prior to this lawsuit, he did not know that there was a difference between Ariel Investments and Ariel Capital. and would have believed them to be the same.
Bray also testified about one of his clients named Monica Schandel, a certified financial planner and the owner of Blue Oceans Financial Planning. Schandel is a client of Ariel Capital and a personal friend of Bray’s for twenty-five years.' Her firm also shares a client in common with Ariel Capital. Bray testified that Schandel has never asked him about the relationship between Ariel Capital: and Ariel Investments, nor has she asked about buying mutual funds for herself or her clients. In May 2016, Schandel received a letter from counsel for Ariel Investments. In her reply e-mail, Schandel stated that she has one joint client with Ariel Investments. In her •deposition prior to trial, Schandel was asked where Ariel Investments is head-qüartered and she responded that she believed it was Naples, Florida. She was also asked whether she knew any employees of Ariel Investments. She named Bray, Squit-tieri, and Wilmore. When Schandel was asked when she first learned of Ariel Investments, she said she first learned of it when Bray told her she was dissolving his old partnership and starting a new company. When asked about her business relationship with Ariel Investments, Schandel responded that she was confused and might have used names in the wrong .capacity. Schandel went on to clarify that she has a relationship with Ariel Capital, Bray, and Squittieri, Schandel also stated that, in her e-mail to Ariel Investments’ counsel, she intended to refer to Ariel Capital and not Ariel Investments.
Phyllis Brady, vice president of human capital and public affairs at Ariel Investments, also testified about a phone call that she had received. In March 2015, an unidentified female called Brady and asked to check the employment references of a particular individual. Brady testified that
Ariel Capital introduced evidence that an August 2016 search for the term “Ariel” on the website of the Illinois Secretary of State generated a list of close to fifty companies registered in Illinois. Further, Bray testified that at the time he was forming Ariel Capital, he ran a search on the Florida Secretary of State website for companies registered with the name Ariel. Bray testified that the search turned up well over a hundred businesses registered in Florida containing the word “Ariel.” Ariel Capital provided the Court with the results from a similar search run in February 2017. Ariel Investments stipulated that it has not sent cease and desist letters to any of the companies on that list, with the exception of Ariel Capital. Cusack also testified that there are many entities in Illinois whose name contain the word “Ariel,” including Ariel Investment Properties and Ariel Incorporated, to whom Ariel Investments has not sent cease and desist letters.
In its complaint, Ariel Investments alleged trademark infringement and unfair competition in violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a) (counts 1 and 2), unfair competition and deceptive trade practices in violation of the Illinois Deceptive Trade Practices Act, 815 ILCS §§ 510/1-510/7 (count 3), unfair competition in violation of Illinois common law (count 4), and cybersquatting in violation of 15 U.S.C. § 1125(d) (count 5). Ariel Investments also requested declaratory and injunctive relief, disgorgement of Ariel Capital’s profits, an award of statutory and punitive damages, transfer of the www. arielcapitaladvisors.com domain name, and attorney’s fees and • costs. As mentioned earlier, the Court granted summary judgment in favor of Ariel Capital on count 5. Further, Ariel Investments has withdrawn its request for damages.
In its second amended answer, Ariel Capital asserted affirmative defenses and counterclaims. As mentioned above, Ariel Capital withdrew its counterclaims prior to trial. Ariel Capital raised as its first affirmative defense an allegation that Ariel Investments procured registration of the ARIEL mark through fraud on the U.S. Patent and Trademark Office (PTO) and therefore that the registration must be cancelled. In its order on the parties’ motions for summary judgment, the Court granted summary judgment in favor of Ariel Investments on this affirmative defense. Ariel Capital asserted as its second affirmative defense a contention that Ariel Investments has abandoned two of its marks due to naked licensing and a failure to police the marks. Ariel Capital also appeared to include in its second amended answer a list of eight other affirmative defenses. At trial, Ariel Capital did not make any legal arguments based on the eight listed affirmative defenses. It has therefore forfeited these defenses, and the Court does not consider them in this ruling.
Discussion
I. Counts 1 and 2
Ariel Investments brings claims for trademark infringement under Sections 32 and 43 of the Lanham Act. “The Lan-ham Act established a federal, right of action for trademark infringement to protect both consumer confidence in the quality and source of goods and businesses’ goodwill in their products.” Phoenix Entm’t Partners v. Rumsey,
[ajny 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, ... which is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.
15 U.S.C. § 1125(a)(1)(A). The standard under both causes of action is the same. Phoenix,
Likelihood of confusion regarding the source, affiliation, or connection of goods and services among the relevant class of consumers is the keystone of trademark infringement. Sorensen v. WD10 Co.,
A. Similarity of the marks
Similarity of the marks concerns “whether the customer would believe that the trademark owner sponsored, endorsed, or was otherwise affiliated with the product.” Sorensen,
The two companies’ displays of the term “Ariel” in the marketplace take on significantly different forms. Ariel Investments’ logo contains the single word “Ariel” in all capital letters, followed by “Investments”
But the Seventh Circuit’s analysis in Sorensen addressed the similarity between two tangible products—rust-preventing tools and lubricant spray—each of which employed a crosshair logo in its marketing. Id. at 717, 719. Thus it made sense to focus on product labels, given that consumers were likely to encounter the logos as images when selecting products in, for example, a home improvement store. Here, however, industry consumers are likely to come across one of the companies not only by viewing the companies’ websites or their advertisements—which admittedly contain the distinctive logos—but also by seeing mention in a magazine article or television show, which likely would not include the logos. Ariel Investments offered into evidence articles, such as one in USA Today, that reference the company without including the logo. It also offered evidence that when Bray publishes articles in industry publications, his tagline includes the words “Ariel Capital” without any accompanying logo. Thus, consumers in the market may be faced with nothing more than a written (or even verbal) reference to one of two financial services firms, both beginning with the word “Ariel.” This situation is noticeably similar to the one the court encountered in Meridian Mutual Insurance Co. v. Meridian Insurance Group, Inc.,
Further, the Seventh Circuit has held that, “[i]f one word or feature of a composite trademark is the salient portion of the mark, it may be given greater weight than the surrounding elements.” Sullivan v. CBS Corp.,
The Court therefore finds that consumers are likely to identify “Ariel” as the salient portion of Ariel Investments’ trademarks and thus mistakenly believe that Ariel Capital is in some way affiliated with Ariel Investments. The Court further concludes’ that the differences in the companies’ logos are insufficient to undercut this confusion, given the likelihood that consumers will encounter the entities’ names in a way that does not include the logo. In sum, the Court concludes, this factor weighs strongly in favor of a finding of likelihood of confusion,
B. Similarity of the products
When considering the similarity of the products, the relevant inquiry “is not. whether the products are interchangeable,. but whether the products are the kind the public might very well attribute to a single source.” Sorensen,
Ariel Capital argues that the companies’ products and services are dissimilar because it offers services, whereas Ariel Investments offers products, namely its mutual funds. But as discussed above, Ariel Investments provides advisory services to its separate account clients. Therefore it is inaccurate to say that .Ariel Capital provides services while Ariel Investments offers products. The fact that Ariel Capital does not offer prpducts similar to Ariel Investments’ mutual funds is insufficient to distinguish the two. And even if this distinction were accurate,, the good or service provided by each company to the consumer need not be interchangeable for the public to believe that they came from a single source. In CAE, the court concluded that there was sufficient overlap between the plaintiffs products—-“supervisory control, test and data logging equipment and systems”—and defendant’s services—“designing and building data acquisition systems and control equipment”—for consumers to conclude that the defendant’s products were affiliated with the plaintiff. Id. at 680. Likewise in this case, a reasonable consumer might well believe that the same sort of affiliation exists between Ariel Capital and Ariel Investments given that both deal with and advise individual investors, even though there is not a com-
Further, the likelihood of confusion increases when consumers might reasonably expect the trademark holder to expand its business to offer the same products or services as the alleged infringer. See id. Therefore the Lanham Act aims to protect the trademark owner’s interest in potentially using its mark in new markets from such confusion. Id. at 681. Ariel Investments has presented evidence that it markets its products and services to individuals as well as institutional investors. Consumers might reasonably expect Ariel Investments to add services, such as tax and estate planning, to its current business.
In sum, the products and services offered by Ariel Investments and Ariel Capital are sufficiently similar to support a likelihood of confusion among consumers by Ariel Capital’s use of the mark. This factor weighs strongly in favor of a finding of likelihood of confusion.
C. Area and manner of concurrent use
In assessing area and manner of concurrent use, courts consider whether there is a relationship in use, promotion, distribution or sales between the goods or services of the parties. Sorensen,
Further, the two companies use similar marketing procedures. The Court was presented with evidence that both companies advertise in industry publications and that employees of both companies write articles for these publications. Even if there is no direct overlap between the publications in which they have advertised, this evidence bolsters the conclusion that the companies are targeting the same audience: consumers in the financial sector. Bray testified at trial that Ariel Capital does not run advertisements or articles to gain new clients but instead to strengthen Ariel Capital’s reputation in the community in order to make it more credible to its current clients. The Court did not find this testimony credible. The evidence showed that Ariel Capital engages in these activities to market itself to potential new clients. Those efforts may not have borne fruit to date, but that is not the issue. The Court concludes that there is a significant overlap in the area and manner of use of the two companies’ marks.
Ariel Capital argues that the companies do not share any area or manner of use because Ariel Investments’ competitors are large investment firms and not smaller firms like Ariel Capital. Ariel Capital presented the results of marketing surveys that Ariel Investments conducted of current and potential advisor clients. In 2016, when asked to list the three firms most like Ariel Investments, respondents’ most common answers were Vanguard, Fidelity, Parnassus, Calvert, PAX, and T, Rowe Price. Further, the survey indicated that one key takeaway from the results was that respondents viewed the “Wal-Marts” of the financial industry as Ariel Investments’ primary competitors. Respondents to the 2015 survey provided similar responses. Ariel Capital argues
Ariel Capital also argues that each company targets a very precise—and very distinct—portion of the financial consumer audience and therefore that there is no concurrent use. It seems, however, that Ariel Capital is attempting to argue both sides of the coin by claiming that its minimum investment amount is both lower than Ariel Investments’ separate account minimum and higher than Ariel Investments’ mutual fund minimum. Ariel Capital first points to Hobson’s testimony that Ariel Investments generally requires a $10 million minimum investment to open a separate account, apparently arguing that Ariel Investments’ minimum for separate accounts is much higher than Ariel Capital’s. But Hobson testified credibly that Ariel Investments makes exceptions to its minimum, and has a number of separate account clients who have invested several hundred thousand dollars. Therefore Ariel Investments’ separate account clients could overlap with Ariel Capital’s.
Ariel Capital next compares Bray’s testimony that Ariel Capital requires a $1 million minimum investment from individual clients with that of Todd Trubey, vice president for portfolio strategies at Ariel, who stated that the minimum mutual fund investment is around one or two thousand dollars. But Bray also testified that Ariel Capital has some groups of investors, typically families, who individually do not meet the minimum but cumulatively have at least $1 million invested. Ariel Investments presented evidence showing that a number of these individuals have between $2,000 and $900,000 invested with Ariel Capital. Thus the evidence shows that both companies take on investors with investments ranging from a few thousand dollars to over a million dollars. Any minor differences in the targeted audience are irrelevant given that parties need not be in direct competition, so long as their products or services are the kind the public might attribute to a single source. See id. In sum, Thus there is an area and manner of concurrent use between the two companies that is significant enough to create a likelihood of confusion. This factor therefore weighs strongly in favor of a finding of likelihood of confusion.
D. Degree of care
In evaluating the degree of care exercised by consumers of the parties’ products, courts assume that “the more widely accessible and inexpensive the products and services the more likely that consumers will exercise a lesser degree of care and discrimination in their purchases.” Sorensen,
Consumers of both Ariel Investments and Ariel Capital likely exercise a significant degree of care when selecting a financial investment firm. See First Nat. Bank in Sioux Falls v. First Nat. Bank, S. Dakota,
E. Strength of Ariel Investment’s mark
The strength of a trademark “refers to the mark’s distinctiveness, meaning its propensity to identify the products or services sold as emanating from a particular source.” Sorensen,
Ariel Capital asserts that Ariel Investments’ marks are weak. Ariel Capital first points to evidence that there are numerous entities in Florida and Illinois that contain the word “Ariel.” But Ariel Capital offered no evidence regarding how extensively, if at all, any of those compar nies have promoted their brands or how well they are recognized by consumers in the marketplace. See id. (discussing other trademark registrations using the mark at issue). The Seventh Circuit has indicated that third-party trademark registrations negatively impact the strength of plaintiffs mark “only to the extent that the similar marks are promoted by their owners or recognized by the consuming public.” Id. (citing CAE,
Ariel Capital cites Top Tobacco, L.P. v. North Atlantic Operating Co., No. 06 C 950,
The Seventh Circuit, when addressing the scope of a trademark, has said only that strong marks will have a broad scope, and weak marks have a narrow scope. See, e.g., Telemed Corp. v. Tel-Med, Inc.,
Ariel Capital also appears to raise an affirmative defense of abandonment by naked licensing or a failure to police, citing TMT North America, Inc. v. Magic Touch GmbH,
Ariel Investments has provided evidence that it has been active in the market for over thirty years, that it has sent cease and desist letters to twelve entities in the same or similar fields over the years, and that it has spent significant sums on advertising and marketing its marks. The Court finds that the Ariel Marks are strong and thus that this factor weighs strongly in favor of a likelihood of confusion.
F. Actual confusion
Courts considering actual confusion consider whether “reasonable and
In considering evidence of actual confusion, courts typically look for confusion among relevant consumers, defined as those who attempt or intend to purchase goods or services from either company. See Packman v. Chicago Tribune Co.,
None of the remaining instances of actual confusion" offered by Ariel Investments involve consumers of either , company. But the Seventh Circuit has previously concluded that evidence of telephonic and other inquiries into the relationship -between the two parties is probative evidence of likelihood of confusion. Int'l Kennel Club of Chicago, Inc. v. Mighty Star, Inc.,
G. Ariel Capital’s intent
The intent factor addresses whether the defendant is attempting to pass of its product as having come from the plaintiff. Sorensen,
But “[m]ere knowledge of someone else’s mark is insufficient to show intent to pass off,” Id. at 731. And Ariel Investments has failed to provide evidence to support the contention that Bray’s intent was to capitalize on consumer confusion between the two companies. Bray testified credibly that he named his firm after
In summary, the Court finds that five factors weigh in favor of Ariel Investments: similarity of marks, similarity of products and services, area and manner of concurrent use, strength of mark, and actual confusion. The Court finds that one factor weighs in favor of Ariel Capital: intent. Finally, the Court finds that the remaining factor—degree of care—does not weigh in favor of either party.
As discussed previously, no single factor is dispositive in determining whether there is a likelihood of confusion. Sorensen,
II. Counts 3 and 4
Counts 3 and 4 are state law claims for, respectively, deceptive trade practices under 815 ILCS §§ 510/1-510/7 and common law unfair competition. Claims for unfair competition and deceptive business practices brought under Illinois statutes are resolved using the same standard established under the Lanham Act. SB Designs v. Reebok Int’l, Ltd.,
III. Relief
A. Disgorgement of profits
Ariel Investments has requested disgorgement of Ariel Capital’s profits. When considering disgorgement of profits for trademark infringement, the burden is on the infringer to prove “that his infringement had no cash value in sales made by him.” WMS Gaming Inc. v. WPG Prods. Ltd.,
B. Permanent injunction
Ariel Investments has also asked the Court to issue an injunction ordering Ariel Capital to cease use of the Ariel Marks in association with its business. The Lanham Act enables a court to award an injunctions following a finding of trademark infringement, “according to the principles of equity and upon such terms as the court may deem reasonable.” 15 U.S.C. § 1116(a). The Illinois Deceptive Trade Practices Act also permits injunctive relief. 815 ILCS 510/3.
The Seventh Circuit has held that “[a] showing of a likelihood of confusion alone will suffice to support a grant of injunctive relief.” Schutt Mfg. Co. v. Riddell, Inc.,
The Seventh Circuit has “clearly and repeatedly held that damage to a trademark holder’s goodwill can constitute irreparable injury for which the trademark owner has no adequate legal remedy.” Re/Max North Cent., Inc. v. Cook,
The remaining two factors likewise weigh in favor of granting a permanent injunction. First, Ariel Capital offered no evidence regarding any hardship an injunction would impose. And an appropriate injunction in this case would require only that Ariel Capital change its name, a pro
Conclusion
For the foregoing reasons, the Court finds in favor of plaintiff Ariel Investments and against defendant Ariel Capital on counts 1, 2, 3, and 4 of plaintiffs complaint and in favor of defendant and against plaintiff on count 5, which the Court previously dismissed. The Court denies plaintiffs request for disgorgement but grants its request for a permanent injunction. Plaintiff, is directed to file a proposed injunction order—which should, among other terms, require defendant to cease all use of the term Ariel no later than thirty days after entry, with an appropriate disclaimer of association with plaintiff in the interim—by 4:30 p.m. on March 6, 2017. Any objections by defendant to the contents of the order are to be filed by 4:30 p.m. on March 8, 2017.