Defendant appeals the trial court’s order that denied its motion for summary disposition and granted plaintiffs request for a permanent injunction. For the reasons stated below, we affirm.
I. NATURE OF THE CASE
This action is a trademark-infringement suit. Michigan courts have protected trademark rights since the nineteenth century, initially under the common law of unfair competition. Michigan law has offered this protection for the benefit of two related groups: business owners, and the consuming public. Business owners, who invest significant amounts of money and effort to convince consumers to identify their marks with their products and services, needed a remedy against competitors who sought to free ride on this accumulated goodwill by copying or pirating already established marks.
Accordingly, Michigan courts have defined a “trademark” as any “peculiar . . . device” or symbol used by a manufacturer or service provider to distinguish its goods or services from those of others.
These interests inform the nature of plaintiffs action and the necessary proofs to protect its trademark. In actions for trademark infringement, courts require a plaintiff to show that (1) its mark was valid (i.e., was being used in the market and was “distinctive,” in that consumers associated the mark at issue with plaintiffs business), (2) plaintiff had priority in the mark (i.e., had used it before defendant), (3) defendant’s allegedly infringing mark was likely to confuse consumers as to the source of defendant’s products or services, and (4) defendant used the allegedly infringing mark.
As American business became more sophisticated and new technologies enabled marketing and branding to take place at a national level, several states and the federal government codified the common law of trademarks. These statutes generally retain the common-law doctrines and principles on which they were based, and do not ordinarily disturb or eliminate the common law of trademarks as a remedy,
In this case, plaintiff owns a restaurant and has used a surname, “Travis,” as a mark in connection with the food-service industry since the 1940s. It registered the “TRAVIS”
As at common law, a plaintiff who alleges trademark infringement under MCL 429.42 must show: (1) its mark is valid, (2) it has priority in the mark, (3) it is likely consumers will confuse defendant’s mark with its own, and (4) defendant used the allegedly infringing mark. Because multiple individuals can possess the same surname, and thus might need use of the surname in a business capacity,
In this case, plaintiffs mark was registered, and, therefore, defendant has the burden of showing that plaintiff has either not used the “Travis” mark or that it is not distinctive because it lacks secondary meaning to consumers.
Because defendant provides no convincing evidence that plaintiffs mark is not valid, and because plaintiff offers the remaining evidence necessary to show infringement under MCL 429.42, we reject defendant’s appeal and affirm the order of the trial court.
II. FACTS AND PROCEDURAL HISTORY
This dispute involves marks used in connection with the promotion of plaintiff and defendant’s respective restaurant and food-service businesses. Plaintiff and its predecessors have used the mark “TRAVIS” in connection with the advertising and operation of various family-owned restaurants since 1944. Plaintiff registered the mark with the state in 1996, and the registration remains valid through 2016. In 2011, defendant bought a restaurant licensed to use plaintiffs “TRAVIS” mark, but defendant purchased only the restaurant — it did not negotiate with plaintiff to retain the license to use the “TRAVIS” mark. It is unclear whether defendant checked with the Michigan trademark office before or at the time it purchased its restaurant, as defendant could have easily discovered plaintiffs registration of the “TRAVIS” mark in connection with the restaurant industry. Instead, defendant filed a certificate of assumed name with the state, changed the name of the restaurant from “Travis of Chesterfield” to “Travis Grill,” and used the latter name on its menus and advertising.
After plaintiff discovered defendant’s use of the “Travis Grill” and “famous Travis burger” marks, it filed suit against defendant for trademark infringement under MCL 429.42. Specifically, it alleged that its “TRAVIS” mark was distinctive and possessed secondary meaning to consumers, and that defendant’s use of the “Travis Grill” and “famous Travis burger” marks thus confused consumers, who would wrongly believe that defendant’s restaurant was owned, operated, licensed, or otherwise affiliated with plaintiff. In addition to evidence of its registration and longstanding use of the “TRAVIS” mark, plaintiff also submitted affidavits from consumers, which stated that they believed
Defendant responded with a motion for summary disposition, and claimed that the plain language of MCL 429.42 allowed a distinction between use of plaintiffs admittedly protected “TRAVIS” mark and defendant’s “Travis Grill.”
In February 2013, the trial court correctly held that the “TRAVIS” mark had acquired secondary meaning and was thus a valid trademark under MCL 429.31 et seq. It accordingly denied defendant’s motion for summary disposition and granted plaintiffs request for a permanent injunction against defendant’s use of the marks, a decision we affirm.
III. standard of review
A. SUMMARY DISPOSITION
A trial court’s decision on a motion for summary disposition is reviewed de novo. Johnson v Recca,
Summary disposition “is proper when there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.” McCoig Materials, LLC v Galui Const, Inc,
B. INJUNCTIONS
MCL 429.43 explicitly states that “[a]ny owner of a mark registered under [MCL 429.31 et seq.] may proceed by suit to enjoin” defendant’s infringement. MCL 429.43(1). A trial court’s decision to grant or deny injunctive relief is reviewed for an abuse of discretion. Wiggins v City of Burton,
(a) the nature of the interest to be protected, (b) the relative adequacy to the plaintiff of injunction and of other remedies, (c) any unreasonable delay by the plaintiff in bringing suit, (d) any related misconduct on the part of the plaintiff, (e) the relative hardship likely to result to defendant if an injunction is granted and to plaintiff if it is denied, (f) the interests of third persons and of the public, and (g) the practicability of framing and enforcing the order or judgment. [Wayne Co Employees Retirement Sys v Wayne Co,301 Mich App 1 ,28;836 NW2d 279 (2013), lv gtd495 Mich 983 (2014) (citation and quotation marks omitted).]
Courts balance the benefit of an injunction to a requesting plaintiff against the damage and inconvenience to the defendant, and will grant an injunction if doing so is most consistent with justice and equity. Wayne Co Retirement Sys,
C. THE TRADEMARK ACT
Matters of statutory interpretation are reviewed de novo. People v Lewis,
The Trademark Act is based on the common law, and it is therefore appropriate, when interpreting the statute, to consider federal and state cases that apply the common law of trademark. See MCL 429.44 (stating that “[n]othing contained in this act shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law”) and Ed Subscription Servs, Inc v American Ed Servs, Inc,
A. TRADEMARK INFRINGEMENT UNDER MCL 429.42
In Michigan, there are three sources of trademark law: common law, the state Trademark Act, and the federal Lanham Act. A plaintiff may bring separate trademark-related claims under each body of law. This case is brought under Michigan’s Trademark Act, which is codified at MCL 429.31 et seq. The Act states that a “mark” is “any trademark or service mark,”
The Act details a system of registration for trademarks, and also creates a remedy for holders of Michigan trademarks that have been infringed. Specifically, MCL 429.42 states that “any person who shall”
(a) Use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of a mark registered under this act in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive as to the source of origin of such goods or services; or
(b) Reproduce, counterfeit, copy or colorably imitate any such registered mark and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with the sale or other distribution in this state of such goods or services; is liable to a civil action by the owner of the registered mark for any or all of the remedies provided in [MCL 429.43] ....
MCL 429.43 also states that “[a]ny owner of a mark registered under this act” may bring suit against a trademark infringer, and that the plaintiff may ask a court to “enjoin the manufacture, use, display or sale of any counterfeits or imitations” of its mark by the defendant. MCL 429.43(1).
As mentioned earlier, trademark law thus advances two interests — the private right of the trademark holder to prevent others from using his mark to reap monetary reward, and the public right to protection from deceptive practices — and seeks to align those interests so that the private trademark holder will pursue infringers, thereby protecting the broader public from fraudulent trade practices. See Hanover Star Milling Co v Metcalf,
Accordingly, a plaintiff who brings a trademark-infringement suit under MCL 429.42 must demonstrate that (1) the mark the plaintiff claims to hold is valid, in that it actually functions as a trademark,
B. VALIDITY
1. LEGAL PRINCIPLES
Under the Trademark Act and at common law, trademarks only receive legal protection when they are (1) used in connection with the sale and advertising of products or services, and (2) distinctive, in that consumers understand the mark to designate goods or services as the “product of a particular manufacturer or trader.” Shakespeare Co,
“The right to a trademark grows out of its use, and covers the area in which it is used.” Interstate Brands Corp v Way Baking Co,
placed in any manner on the goods or their containers or on the tags or labels affixed thereto and such goods are sold or otherwise distributed in this state, and on services when it is used or displayed in this state in the sale or advertising of services and the services are rendered in this state. [MCL 429.31(h).][23 ]
Courts assess a mark’s distinctiveness using the “now-classic test”
By contrast, “descriptive (‘Soft Soap’) or generic (‘soap’) terms do not inherently distinguish a good as coming from a particular source,” and therefore may not generally serve as trademarks. American Eagle,
Likewise, marks that are “merely descriptive”
Descriptive marks differ from generic marks in one crucial respect, however: it is possible for descriptive marks to become source identifiers, and thus valid trademarks. A descriptive mark gains source-identifying capacity when it acquires “secondary meaning,” which occurs when a descriptive mark has “become associated in the minds of purchasers or customers with the source or origin of goods or services rather than with the goods or services themselves.” Burke v Dawn Donut Sys, Inc,
2. APPLICATION
In this case, plaintiff registered its mark “TRAVIS” in connection with the restaurant and food-service industry in 1996, and the registration remains good through 2016. Plaintiffs registration serves as prima facie evidence that the mark is valid, and the burden of production thus shifts to defendant to show that it is not. MCL 429.34(3). Defendant notes that plaintiffs mark is a surname, and therefore must acquire secondary meaning to be a valid trademark — something defendant asserts the mark has not done. It also claims that plaintiffs evidence of secondary meaning is not actual evidence of secondary meaning. Defendant accordingly asks us to reverse the trial court’s decision, which held that the “TRAVIS” mark possessed secondary meaning and was a valid trademark.
Defendant correctly identifies plaintiffs mark as a surname and argues that, because surname-marks are descriptive, “TRAVIS” must possess secondary meaning to be a valid trademark.
And, though plaintiff was not required to prove validity under the statute, it nonetheless gave evidence that its mark possessed secondary meaning, in the form of (1) the 60-year span over which plaintiff or its predecessors have used the “TRAVIS” mark in the restaurant business, (2) defendant’s use of the “famous Travis burger” on its menu, the same wording plaintiffs licensee uses (and has used) to describe its hamburger, and (3) affidavits from customers who patronized defendant’s restaurant and believed it to be operated by or under the authority of plaintiff. As noted, a plaintiff can show the existence of secondary meaning through the “length of use of the symbol or mark” and “direct consumer testimony and consumer surveys.” Boron Oil Co,
Because defendant has not shown that plaintiffs mark lacked secondary meaning, it has failed to show that plaintiffs mark is invalid under the Trademark Act, and we affirm the trial court’s holding that plaintiffs mark is valid.
C. PRIORITY
“Trademark rights arise out of appropriation and use. Generally, the right belongs to one who first appropriates and uses the mark.” Interstate Brands Corp v Way Baking Co,
D. LIKELIHOOD OF CONFUSION
After a trademark-infringement plaintiff demonstrates that its mark is valid (or, as here, the defendant fails to demonstrate that the plaintiffs mark is invalid) and possesses priority over the defendant’s mark, the plaintiff must show that the defendant’s mark is so similar to its own that it is likely to create confusion among consumers as to the source of defendant’s goods or services. MCL 429.42(a); Boron Oil Co,
Courts assess the likelihood of confusion by considering the particular facts of each case. Boron Oil Co,
To analyze the strength of a mark, a court “ ‘focuses on the distinctiveness of a mark and its recognition among the public.’ ” Express Welding, Inc v Superior Trailers, LLC,
When these factors are weighed against defendant’s mere unsupported statement that no likelihood of confusion exists,
E. DEFENDANT’S USE OF THE INFRINGING MARK
To be liable for infringement, a defendant must “use” the allegedly infringing mark. MCL 429.42(a). As noted, a mark is “used” under the Trademark Act when
it is placed in any manner on the goods or their containers or on the tags or labels affixed thereto and such goods are sold or otherwise distributed in this state, and on services when it is used or displayed in this state in the sale or advertising of services and the services are rendered in this state. [MCL 429.31(h).]
In this case, it is undisputed that defendant used the marks “Travis Grill” and “famous Travis burger” “in the sale or advertising of services” that were “rendered” in the state of Michigan. Defendant has thus used the allegedly infringing mark under MCL 429.42(a).
V CONCLUSION
The trial court properly granted plaintiffs request for an injunction against defendant’s use of the “Travis Grill” and “famous Travis burger” marks under MCL 429.43 because defendant failed to show that plaintiffs “TRAVIS” mark was invalid, and plaintiff showed that (1) it had priority in the trademark, (2) defendant’s marks confused consumers and suggested that defendant’s business was associated with plaintiff, and (3) defendant used the confusing mark in the sale or advertising of services rendered in Michigan. Though the trial court did not analyze the case in the precise method outlined above, it reached the correct result,
Affirmed.
Notes
See Restatement Unfair Competition, 3d, § 9, comment c, pp 77-78; and comment d, pp 79-81.
Id.
Shakespeare Co v Lippman’s Tool Shop Sporting Goods Co,
Smith v Imus,
Shakespeare Co,
See, generally, Restatement Unfair Competition, 3d, § 9, comment g, pp 82-83, and § 20, p 208.
See id., comment d, p 80.
Id., comment e, p 81.
Id.
The mark’s registration is in all capital letters, but this distinction is insignificant in this case.
Buscemi’s Inc v Anthony Buscemi Delicatessen & Party Store, Inc,
Buscemi’s,
Defendant uses alternative spellings of the word “Grill” and “Grille,” in its advertising, menus, and business name, apparently interchangeably.
Defendant also erroneously claimed that it obtained a contractual right to use the name “Travis Restaurant Chesterfield — Gratiot” from the prior owner. However, it has abandoned this “contractual” argument on appeal, and we therefore do not address it in our opinion.
State Employees Ass’n v Dep’t of Mgt and Budget,
It is unclear whether the Legislature intended the Trademark Act to be a direct copy of the Lanham Act, but it was enacted after the Lanham Act, and its structure and language clearly parallel the initial version of the Lanham Act. Congress passed the Lanham Act in 1948; the Legislature passed the Trademark Act in 1970. The Trademark Act’s structure and much of its language bear a striking resemblance to the Model State Trademark Bill, which is patterned after the Lanham Act. 3 McCarthy, Trademarks and Unfair Competition, § 22.7; see also id. at § 22.5 (observing that the Model Bill is used in all states except West Virginia, Hawaii, Wisconsin, and New Mexico).
MCL 429.31(f).
See Boron Oil Co v Callanan,
United Drug Co v Theodore Rectanus Co,
Boron Oil Co,
MCL 429.42(a).
See also the corresponding provision of the Lanham Act, 15 USC 1057(b), which states that
[a] certificate of registration of a mark. . . shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, subject to any conditions or limitations stated in the certificate.
Federal courts have interpreted this provision to mean that registration of a mark relieves the mark holder of the burden of proving validity and secondary meaning and “shifts the burden of proof to the contesting party, who must introduce sufficient evidence to rebut the presumption of the holder’s right to protected use.” Qualitex Co v Jacobson Prod Co, Inc,
This commonsense interpretation of “used” is consistent with (and clearer than) the Lanham Act’s requirement that a mark be “use[d] in commerce,” meaning that a mark must be used when the goods are sold or transported in commerce — i.e., in the ordinary course of trade — -to be a valid trademark. 15 USC 1127. See also Central Mfg, Inc v Brett,
Wal-Mart,
In plain English, an “arbitrary” mark takes a word that is already in common usage and applies it to a product or service that has nothing to do with its ordinary meaning. See Abercrombie, 537 F2d at 11 n 12. An arbitrary mark is thus mismatched to a particular product or service, because its commonplace meaning has no relationship with that product or service. Examples include “Ivory” soap and “Lucky Strike” cigarettes. Abercrombie, 537 F2d at 9 n 6; American Eagle,
A “fanciful” mark is a coined term that has no commonplace meaning whatsoever, and is “completely fabricated by the trademark holder[].” Kellogg Co v Toucan Golf, Inc,
“Suggestive” marks are somewhat descriptive and only indirectly convey an impression of the goods or services on offer. “ ‘A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods.’ ” Abercrombie, 537 F2d at 11 (citation omitted). Examples include “Tide” laundry detergent, “Citibank” bank, or “Snuggle” fabric softener. American Eagle,
Generic terms can thus be synonymous with the good or service itself (“apple” is generic when used by an apple orchard) or may describe a broader category to which the particular good or service belongs (“fruit” is also generic when used by an apple orchard). See also Kellogg Co v Nat’l Biscuit Co,
Descriptive marks describe a particular characteristic quality, or function, “of the product in a way that does not require any exercise of the imagination.” George & Co LLC v Imagination Entertainment Ltd,
See Wolf Appliance, Inc v Viking Range Corp,
As explained earlier, “arbitrary or fanciful” and “suggestive” marks are inherently distinctive, in that they “distinguish a good as coming from a particular source.” American Eagle Outfitters, Inc,
“A party may not merely announce a position and leave it to this Court to discover and rationalize the basis for the claim.” National Waterworks, Inc v Int’l Fidelity & Surety, Ltd,
“A trial court’s ruling may be upheld on appeal where the right result issued, albeit for the wrong reason. ” Gleason v Dep’t of Transp, 256 Mich App 1, 3;