Platinum Home Mortgage Corporation v. Platinum Financial Group, Incorporated

gleaned and no modus can operandi be from testimony Almaguer, Barbara Rodri-

guez, George Moffett. See United Crockett,

States v. Cir.1996) (“The mere fact that the defendant engaged drug other transactions is justify sufficient to treating those trans-

actions as conduct’ for sentencing ‘relevant

purposes.”). appears Bacallao to have been

involved in drug activity substantial over the

years, any but for of that conduct to be

relevant for sentencing purposes, the district must findings make based on such, standards set out above. As placed

district court too solely much reliance

on the PSI to of relevant thereby

conduct and failed to establish the

requisite nexus between the 75.1 grams of

cocaine found in or near Bacallao’s car and kilograms three of cocaine used en-

hance his sentence. We therefore vacate

Bacallao’s sentence and remand for resen-

tencing, at government which time the will ample opportunity prove

one- two-kilogram transactions are “rel-

evant conduct” for sentencing purposes.

III. Conclusion reasons,

For foregoing Bacallao’s sen-

tence is Vaoated and Remanded for resen-

tencing.

PLATINUM HOME MORTGAGE

CORPORATION, Plaintiff-

Appellant, GROUP,

PLATINUM FINANCIAL

INCORPORATED, Defendant-

Appellee.

No. 97-3336.

United Appeals, States Court of

Seventh Circuit.

Argued April 1998. July 24,

Decided 1998.

Rehearing Aug. Denied planning, in financial strategies

long-term in Lake is located office currently its does not Financial Forest, Illinois. provide the intend nor does provide, by Plati- offered loans government-sponsored have submitted firms Both Mortgage. num advertising various have incurred they publicize expenses promotional costs course, advertise- businesses; these their “plati- word use the promotions ments company’s services. identify each num” to Giambrone, Financial Chief the William Madeline (argued), LaBarge became M. first Richard for Platinum Officer O’Toole, Marshall, Ger- Devereux, he noticed when Henricks Financial Platinum aware IL, for Borun, Chicago, stein, Murray & in mortgage services its for advertisement an objected to Plaintiff-Appellant. Giambrone Chicago Tribune. the “platinum” use Financial’s Platinum (ar- A. Rascia Ronald Mahoney, E. James interested that consumers was concerned IL, for Jacobson, Chicago, & Griffith gued), confused be would mortgage obtaining a Defendant-Appellee. Platinum names. similarity of their the P. FLAUM, Platinum against and DIANE BAUER, suit Mortgage filed Before competi- 15,1997 unfair for Judges. WOOD, July Circuit on Financial infringement, tion, law trademark common BAUER, Judge. Circuit objecting to practices, deceptive trade in its “platinum” Corporation use Mortgage Financial’s Platinum Platinum 1, 1997, Platinum Then, August against suit filed on (“Platinum Mortgage”) name. preliminary in- Incorporated for a motion Group, filed Mortgage Financial Platinum Financial”) competition unfair relief. junctive (“Platinum for Act, 15 Lanham Section under is- order opinion In memorandum (B), for common 1125(a)(1)(A)and §§ U.S.C. court 4,1997, district the September on sued decep- for infringement, trademark law injunction, preliminary grant refused De- Uniform practices under tive Mortgage does Platinum Act, ILCS 510/1- Practices Trade ceptive of suc- chance negligible than more a motion Mortgage filed (1996). Platinum infringe- trademark itsof the merits cess relief, requesting injunctive preliminary for First, determined court ment claim. Finan- enjoin Platinum court district descriptive, and merely is name its trade in its “platinum” term using the from cial unlikely Platinum quite is second motion, denied court district name. acquired its name show Mortgage could For appeals. now Mortgage the dis- Accordingly, meaning. below, we affirm. set forth reason Mortgage concluded trict protec- trademark entitled not be would BACKGROUND Lanham under its for tion Mortgage 1994, Platinum January of In for therefore, its motion and, denied Act services, in- mortgage home to offer began relief. injunctive mort- government-sponsored cluding certain timely notice filed a offices currently maintains loans, and it gage the district argues that now appeal and Aurora, Lib- Chicago, throughout Illinois “platinum,” erroneously found Meadows, and Grove, Rolling River ertyville, used descriptive trademark, January of In Colorado. State also services. with connection vari- began to offer Financial that its contends Again, mort- services, including limited financial ous protection entitled suggestive mark developing purpose for gage services without evidence meaning. Al- “Trademark law aims to aid consum ternatively, Mortgage argues ers in identifying the goods source of even if of secondary meaning is producers allowing right exclusive par required, it nonetheless submitted substan- ticular identifying symbols words or tial evidence of actual confusion that demon- they may attach products to their desig as a strates nator of source.” Thomas & Corp. Betts meaning. With these background, facts as Panduit Cir. we now turn to presented the issues for 1995). Accordingly, protection afforded review.1 to a attempts trademark prevent consum er deception and However, confusion. Analysis trademark should not interfere policies reviewing grant traditional of a competitive denial of market, a preliminary injunction, generally review a courts have recognized court’s findings public error, of fact substantially clear for from benefits balancing competition. of the factors a preliminary August Nabisco, in Storck K.G. junction discretion, an abuse of and its In the legal conclusions de context of novo. Meridian Mut. for a preliminary injunc motion Ins. Co. v. Group, Inc., Meridian tion in infringement claim, (7th 1111, Cir.1997). F.3d 1114 purpose The success exists if the party seek of preliminary injunctive ing relief is the preliminary “to mini injunctive relief demon mize hardship the to the parties pending strates that the it has “better than negligible” ultimate resolution of the lawsuit.” chance of Faheem- succeeding on the merits of the Klincar, El v. 712, (7th 841 F.2d 717 underlying Cir. infringement claim. Curtis v. 1988). When evaluating Thompson, the merits of a (7th mo 840 F.2d 1296 Cir. tion for preliminary injunctive 1988). relief, a dis trict court must determine whether party the seeking preliminary injunction has dem In a infringement claim, trademark (1) onstrated that: it has a reasonable likeli plaintiff (1) must demonstrate: the validi hood of success on (2) claim; merits of its ty trademark; (2) of its the infringement no adequate (3) remedy exists; at law it will of that Travel, mark. Echo Inc. v. Travel suffer irreparable harm if preliminary injunc- Associates, Inc., (7th 870 F.2d 1266 (4) tive denied; relief is irreparable Cir.1989). harm The validity of a mark pertains to it will suffer without injunctive “word, term, whether a name, symbol or relief outweighs irreparable device,” harm the § 1125(a)(1), U.S.C. is entitled to nonmoving party will if prelimi suffer protection under trademark law focusing nary injunction (5) granted; pre on whether that mark specifically identifies liminary injunction will not public harm the distinguishes one company’s goods or interest. Rust Environment & services from competitors. those of its Infrastruc The ture, Teunissen, Inc. v. 131 F.3d infringement of a mark concerns whether the (7th Cir.1997). The threshold consideration actions aof subsequent user of a substantial in a motion for preliminary injunction ly is the similar or identical mark causes a likeli moving party’s likelihood of success on the hood of confusion among consumers as to the

merits the underlying claim. Id. source of those goods or services. point 1. At this opinion, in the we will person reiterate a identify his or her business or point emphasized by the Although district court. vocation.” plaintiff consistently described this action Although trade names throughout trademarks are dis- pleadings and briefs as one tinct names and symbols, analogous infringement, trademark this actions for subject the actual dispute trade name and is the infringement trademark party. each term generic properly 43(a) § "trademark" can asserted be used under in a of the broad and Lanham Int'l, sense to denote Act. the entire Accuride field of Inc. trade- Corp., Accuride marks, marks, names, (9th service Cir.1989). F.2d and trade opinion, In dress. Act, Section 45 of the Lanham use U.S.C. "trade name” and interchangeably "mark” § defines "trade "any name” as name used subject refer to dispute. services, Travel, Inc., arguing instead that the mark is at 1266. When 870 F.2d Echo name, “word, term, symbol or .-to full suggestive and therefore entitled identifying protection. as trade name mark A de- claimed trademark district court’s device” Patent with the United States a trademark is either de- registered termination that Office, is on the scriptive suggestive finding the burden is a of fact and Trademark claimant, the instant Mortgage in for clear that is reviewed error. Meridian case, protec Co., it is entitled establish at 1114. A Mut. Ins. F.3d 43(a) Act. Mil- § of the Lanham if, clearly tion under of fact is erroneous based Inc. record, v. Shonac Mar Shoe we are entire “left with defi- 1153, 1156 and firm conviction that mistake nite Environment, 131 Rust been committed.” initially recognize that there We omitted). (citations According- at 1216 categories and words of terms are various “ ly, ‘[i]f the district court’s account protection entitled to trademark that are plausible in of the record light evidence is to iden rely on those marks consumers entirety, appeals viewed in its goods or company’s one tify distinguish though convinced may not reverse even competitors. from those services fact, sitting that had it been the trier categories of into five Marks are classified weighed would have the evidence different- (1) (2) generic, de increasing distinctiveness: ” ly.’ (quoting Corp. v. Id. Scandia Down (5) (4) (3) arbitrary, suggestive, scriptive, Inc., Euroquilt, Cabana, Pesos, Inc. v. Taco Two fanciful. Cir.1985) omitted)). (citation 767-68, 112 2753, 120 S.Ct. 505 U.S. (1992). general, the level of first various The district court considered L.Ed.2d (1) corresponds general use and available uses of the word: of the mark. Id. A to indicate either definition of distinctiveness (2) excellence; commonly precious quality that is used generic term is one metal or alleged identify any particular plaintiff’s “platinum” source use of as an does not and (3) services; and, therefore, any trade is not entitled to name or mark of its Corp. “platinum” v. as com- protection. Liquid Controls use of a mark other businesses’ 934, names, ponent 802 F.2d in their trade both within Liquid Control industry beyond descriptive mortgage mark is one that of scope A ingredients, qualities, profession or char not related businesses “describes To a of an article of trade or service” or services. acteristics connected and, descriptive protected identify it is not as a trade between generally, difference is merely descriptive appreciate mark words and to suggestive mark because “ suggestive mark distinguishing source of ‘poor means of one inherent distinctiveness ” descrip- merely (quoting compared from another.’ Id. one that is services Inc., 50, WOKY, “degree of tive, applied v. 633 F.2d the district court M.B.H. Enters. (7th Cir.1980)). However, descriptive as articulated this court imagination test” Quaker Sands, Taylor if it & Oats mark receive trademark Wood Co. (7th Cir.1992): secondary Co., meaning “in the collective 978 F.2d 947 acquires community.” consciousness the relevant directly it imparts information a mark [I]f Shoe, (citing 75 F.3d at 1157 Gi Mil-Mar an descriptive. If it stands for idea is Inc., mix, Group, & A 699 F.2d Inc. JS imag- requires operation some Cir.1983)). 901, Finally, terms that it is goods, with the to connect it ination arbitrary, or fanciful suggestive, either are suggestive. pro automatically entitled are Ultimately, the district at 952. inherently they are distinc tection because only de- “platinum” is court concluded Pesos, 767-68, 112 Two 505 U.S. at tive. services, Platinum scriptive of S.Ct. nearly leap ... is finding mental that “the little requires and that Mortgage first asserts instantaneous” Platinum with su- “platinum” to associate clearly imagination erred find that the district Platinum periority quality service. “platinum” only descriptive of its ing that is Corp. secondary meaning Mortgage, v. Platinum Finan cide whether has been 5293, acquired or established: No. 97 C 1997 WL Group, cial (N.D.Ill. 4, 1997). (1) Sept. advertising; at *3-4 the amount and manner of (2) volume; (3) length sales with the agree district court’s We (4) use; testimony; manner of consumer is a “platinum” “self-laudato conclusion (5) surveys. Int’l Kennel Mortgage ry term” and that is Star, Inc., Chicago, v. Mighty Club Inc. name, *4, merely descriptive id. (7th Cir.1988). A court’s “account of and we find that the acquires meaning mark plausible light is of the record long exclusively been used so and so entirety.” City viewed in its Anderson v. company one in association with its Carolina, City, North Bessemer U.S. products particular in- services L.Ed.2d 518 S.Ct. “word, dustry term, name, symbol, that the (1985). instance, “platinum” In this de or device” has come mean those quality plaintiffs mortgage scribes the products company’s services provides suggests supe that it services and Gimix, Inc., trademark. 699 F.2d at 907. service, identify rior but the word does not Accordingly, Mortgage alterna- particular designate specif one source or tively argues that the district court errone- origin proof ic of those services without ously unlikely is concluded that it secondary meaning. See In re Omaha Nat’l Mortgage could establish it has (Fed.Cir.1987). Corp., 819 F.2d 1117 Specifically, meaning. clearly supports the record district court’s Mortgage asserts that consumers associate finding “platinum” is a weak mark and “platinum” reputation with its imagination required that “not much is and, therefore, mortgage services it offers any the term with associate business.” Plat acquired secondary meaning. The dis- inum Home 1997 WL trict court’s determination of such, *4. As the district court’s determina meaning is a fact that re- clearly tion is not erroneous. for clear viewed error. Meridian Mut. 128 F.3d at 1114. following course with its first The district court first noted that argument suggestive, any con did submit appeal argues next testimony sumer surveys consumer to clearly by requiring district erred it its acquired assertion that it has prove secondary meaning. to Platinum secondary meaning. While not fatal to its Mortgage protect- contends that mark is request, weighs the absence of that evidence regardless acquires able it of whether sec Then, against Mortgage. the court However, ondary meaning. argument Mortgage’s advertising discussed Platinum because, above, necessarily fails discussed public recognition, efforts and its in addition agree preliminary with the district court’s to length and manner of use of the its “platinum” only descriptive that is a initially mark. The recognized district court term. To Id. be entitled to under that Mortgage has used its name law, a claimant must demonstrate years, emphasized three and then descriptive acquired that its trade name has majority that a of the evidence indicates that secondary meaning that identifies the inher advertising publicity most of its and not did ent distinctiveness its mark. Mil-Mar begin Although until length by of time Shoe, Secondary meaning 75 F.3d at 1157. factor, itself is not a determinative see Echo refers to the manner in a Travel, 870 F.2d at the district court identifies or a business business’s determined, examining after the evidence reputation particular trademark. totality, unlikely it that is Platinum Mort Int’l, Vaughan Mfg. Inc., v.Co. Brikam gage could has acquired demonstrate it (7th Cir.1987). F.2d secondary meaning ultimately concluded To meaning, establish that “there is no ... indication may a court public consider several factors to de- has come to plaintiffs associate Co., 22 F.3d Tel. &. Tel. reputation.” Platinum its business with Cir.1994). evidence indicate The at *5. 1997 WL general knowledge that have a consumers with the district court’s agree We provides mortgage ser Mortgage Mortgage’s evi conclusion vices, it to that consumers but fails show sales, promotions, advertising, dence identify designator of a “platinum” as the length minimal time context Also, actual con specific source. evidence of involved, it could establish fails indicate must to the confusion of reason fusion refer secondary meaning. Ev acquired has consumers, prudent and not confu able and entirely advertising sales is idence among sophisticated sion members of circumstantial, not that evidence does See, e.g., industry. service Estee that consumers associate necessarily indicate Lauder, Gap, Inc. v. The source, particular particularly a mark with (2d Jensen, Cir.1997); Int’l Inc. v. Metro promotions do when the advertisements (9th Cir.1993). U.S.A., Inc., 4 F.3d 819 sound First emphasize the mark. specifically not stage proceedings, we hesitate At this in the Inc., 809 F.2d Meyer, Corp. Fred Brands Mortgage has suf that Platinum to conclude (9th Cir.1987). Accordingly, demonstrate ficiently established it could type that this of evidence have found courts secondary meaning. “platinum” acquired that a de may be insufficient establish clearly demonstrates record acquired mean scriptive mark has evidence court examined sufficient district Delavan, Inc., Systems Spraying Co. ing. reasonably conclude The record meaning acquired secondary and therefore court con clearly that the district illustrates protection, to trademark notwith not entitled sufficient, factors con relevant sidered of actual confusion. standing unlikely it is clude that Mortgage argues Finally, Platinum it has could demonstrate court failed to consider that the district meaning, Mortgage does and Platinum required for the issuance of additional factors commit a mistake has been persuade us that therefore, injunction, preliminary ted. injunctive relief should denial of argues then court’s review district be reversed. We if it clear error for even was not prelimi of the elements consideration secondary mean require evidence of balancing of those nary injunction and its compelling evi submitted ing, nevertheless Meridi for an abuse of discretion. elements confusion, actual consumer dence F.3d at 1114. Under an Mut. of law erred as a matter standard, district court we will not an abuse discretion recog We failing to that evidence. consider of district court the decision guess second “ specifically court did not nize that the district conformity established ‘in judge that actual analyze evidence offered show and, principles of the court’s legal in terms However,, in the accordance with confusion. principals the facts of application of those conclusion, agree that we also court’s district case, range options’” the the within within the does not exist consumer confusion judge trial would a reasonable from which infringement claim when scope of an Co. Chi Bank & Trust select. Am. Nat’l protection. entitled to trademark mark Auth., Transp. cago Reg'l 1997 WL (7th Cir.1997) (quoting United States Nonetheless, we consider at *6. Hamilton, 354 n. 3 Cir. by argument that the court erred Mortgage’s 1994)). examining of actual confu its evidence opinion, the dis its In memorandum sion. footnote, in a albeit explained, trict matter, of the elements general, several minimus an initial de

As prelimi must obtain plaintiff demonstrate not neces actual confusion does evidence of easily are decided nary injunctive relief con sarily likelihood establish a trade- competition and of unfair Money v. Am. the context Centers fusion. Universal infringement. mark Platinum Home Mort- Accordingly, we find that the district gage, fact, WL *2 at n. 1. In court’s examination of necessary, ele- Judge Zagel specifically identified court ments preliminary for a injunction, within the hearing when he discussed with parties the- scope infringement ahof claim appli- and its in,Platinum some of those issues involved cation the principals law, of trademark Mortgage’s request for a preliminary injunc- reasonable and fall within range tion. The district court cited Seventh Cir- district court’s discretion and the' available discuss, cuit cases that in the context of a options from which a reasonable trial judge (1) preliminary injunction, the lack of ade- may adjudication select in the and ultimate (2) quate law, remedies the inevitable resolution of those issues. Am. Nat’l Bank harm party either suffers an adverse & Co. Chicago, Trust 125 F.3d at 431. At decision, (3) the fundamental interest of point case, this in the prop- district court public, support its conclusion erly denied motion for grant preliminary injunctive denial of re- preliminary injunction. It be that ultimately pertains lief to Platinum Mort- after a full trial seeking a permanent injunc- gage’s underlying success tion, the record will Platinum Mort- infringement Id.; claim. see also gage’s claim; the current record does not. Club, Int’l 1092; Kennel 846 F.2d at August Storck, 59 619. When the district Conolusion court concluded that it unlikely was Mortgage could demonstrate it has acquired We AffiRM the district court’s decision to secondary meaning at stage, this the court deny plaintiffs request for preliminary denied the motion injunctive injunctive relief and REMAND to the dis- relief. proof Without trict court with a that, recommendation acquired secondary meaning, Platinum Mort- practicable, the extent the district court gage has failed to demonstrate validity expedite should the proceedings in this mat- its right to use Platinum Home Mortgage ter. Corporation as a trade name. present record, With the agree with the WOOD, DIANE P. Judge, Circuit district court’s conclusion that Platinum dissenting. Mortgage did not have more than a negligi- By the time ble Platinum Financial prevail chance to entered the merits of its the Illinois market, claim. home mortgage This conclusion in Janu- suggest does not an ary 1997, discretion; abuse of instead, grown had obviated the be the largest third

need for purveyor of government- district court to continue further with backed home analysis. mortgages state, preliminary injunc- and had context, thriving tion conventional mortgage practice where time is often of the es- sence, this well. Armed not with emphasized it is eommonsense advisable for notion examine, might consumers courts to be if confused only briefly, all four new entrant preliminary injunction sharing the distinctive term in considerations. name but Meridian Mut. also with detailed F.3d at 1121. Such practice action, confusion in expedites court’s review grant brought of the enjoin suit to denial of a Platinum Financial’s preliminary injunction protects alleged infringement. I inter- agree cannot ests parties. However, my Id. colleagues’ in accor- conclusion that Platinum dance with our decision in Ping Mortgage v. Nat’l had no more than a negligible Ass’n, (7th Educ. 870 Cir.1989), F.2d 1369 chance of establishing rights to its mark. also recognized that a district court See Majority Op. 730; Meridian Mut. Ins. decline address the remaining of Co. v. elements Meridian Group, Inc., Ins. a preliminary injunction plaintiff (7th if a fails to 1114 My disagreement demonstrate a reasonable pre- of likelihood stems from a protectibil- different view of the vailing on the merits of the underlying claim. ity of law; trade names under the this view 870 F.2d at 1371. in turn leads me to conclude that the district a new trademark magazines, news national issuing a in not its discretion abused ‘secondary usage and wide may achieve injunction. weeks, days or matter of a meaning’ within the term majority with the agree I in the required many years to the compared as protected be could by itself “Platinum” advertising.” leisurely more days of a classic are self-laudatory terms suggestive; is a meaning Secondary § McCarthy 15:56. re E.g., In descriptive marks. example of Meridian, F.3d at fact, question 569, 571-72 Co., F.2d & Bros. Bush opin- majority’s the from notably absent and v. Provi- (“Deluxe”); Murphy (Fed.Cir.1989) a would which any are facts ion (2d F.2d Mut. dent Life Mortgage could Milling (“Hot”); Co. Cir.1990) France meaning. prove possibly (2d 304, 306 Co., 7 F.2d Washburn-Crosby spring of by the reflects The record Medal”); (“Gold 1 J. Thomas Cir.1925) larg- third was the Mortgage 1997 Platinum McCarthy Trademarks on McCarthy, mortgages government-backed offeror est ed.1997) § 11:17 Competition Unfair major issuer a also of Illinois the state in “McCarthy”). While (hereinafter as cited offices, has six It now loans. of conventional obviously description not as “Platinum” region. metropolitan Chicago in the five (or company) here good of a quality 1994,Platinum in entering business Since “Plus,” Bros., Plus “Deluxe,” Bush as, say, mort- than 5900 more has closed Foods, Inc., 722 Discount Plus Products $700,000,000. approximately totaling gages Cir.1983), Zagel (2d Judge 999, 1005 F.2d moder- for low- mortgages It focuses as counts what out pointed rightly quite borrowers; premier one of ate-income change can quality indication merely an Loan,” a “Dream evidently the products of credit cards rash time, recent and the over which under mortgage, housing residential find- his underscores “Platinum” designated for a payments no make need mortgagee ing. closing. time after period of certain majority Zagel Judge held As the commence- 1994 and January Between pro- however, descriptive marks agrees, litigation, of this ment had, mark showing that the upon tectable pro- $649,000 in approximately incurred time, relevant by the expense Its main expenditures. motional audi- appropriate eyes of the meaning and maintenance construction been' 570; France Bros., Bush ence. on a billboard constantly illuminated large (allowing protection F.2d at Milling, 7 bill- Chicago. This west of highway major mix market- pancake Medal” “Gold mark not, mid-1995, as erected board was v. Shonac Co. Shoe Mil-Mar place); 1996. mistakenly thought, Cir.1996). Underly- 1153, 1156 construct, and $150,000to cost over billboard Mort- majority’s belief ing to maintain $2,000 per month over it costs negligible than more to show failed gage adver- Mortgage also operate. Platinum merits is succeeding on region, has Chicago throughout tises in the been Mortgage had view It shows. at trade site, appears web a time brief for too business mortgage advertises never stresses secondary mean- acquire its name to permit do- rates, it believes because mortgage (referring to Op. at Majority E.g., ing. mislead- potentially problematic ing so is involved”). But time length “minimal volatility of the given consumers ing to necessary statements generalized market. modern about merely predictions time are length of operations commenced Financial nothing be can world, predictions at a primarily aims January It legal fiction. sort the worst than more Mortgage— than clientele (rules different of thumb § 15:55 McCarthy 2See Ac- clients. income upper-middle middle- meaning necessary time provides president, to its cording “dangerous- be can devélop are “useless” to its mortgage services first “conventional of massive advent misleading”). “With ly government- originate clients,” and does in television campaigns advertising

backed 1990)), loans. Financial does ad- the word “Platinum” has come to be rates, among vertise places associated, other in industry, with Tribune; Chicago the record does Platinum Mortgage. See Ken- International Club, include its advertising total nel budget, but 1085-86. spends in $5,000 per excess of month on disputes No one that secondary meaning in advertising. By 1997, August Platinum Fi- the trade name governed context is by the nancial had closed 29 totaling just loans un- legal same standards in the trademark $6,000,000,19 der previous which were for E.g., arena. 1 McCarthy 9:2; § Accuride clients president Platinum Financial’s or Int’l, Inc. v. 1531, Accuride 871 F.2d personal referrals. Platinum Financial (9th Cir.1989) (primary distinction be learned of existence in tween trade names and trademarks is that 1996, (that is, December before it Platinum trademarks registrable); are Country Floors Financial) operations, commenced and ac- Inc. v. Partnership Composed of Gepner and knowledges it never lawyer consulted a Ford, 1056, (3d Cir.1991). 930 F.2d 2n. discern whether it right had use the The standard must be slightly framed differ term “Platinum” its name. ently in the context, trade name however. Descriptive trademarks commonly said It is Platinum Financial’s advertisements developed secondary meaning when an directly most show the similarity association has developed “in mind of the between the names of Platinum Mortgage consumer between trade dress or name and Platinum Financial caused confusion. product particular producer.” In By the Judge time Zagel prelimi- held the Club, ternational 1085; Kennel 846 F.2d at nary injunction case, hearing 25 dif- Qualitex Co. v. Jacobson Prods. 514 U.S. people ferent had called 159, 163, 115 S.Ct. 131 L.Ed.2d 248 inquiring about the rates advertised Plati- (1995) (“ ‘[Sjecondary meaning’ is acquired Financial, num despite the fact that those when ‘in the public, minds primary advertisements included Platinum Financial’s significance of product feature ... is to telephone number. But not the identify the product source rather than evidence of confusion in the record. Plati- product ”), itself.’ quoting Inwood Labo- num Financial acknowledged receiving at ratories, Inc. Laboratories, Inc., Ives least telephone five calls derived people from U.S. 851 n. 102 S.Ct. seeing Platinum Mortgage’s large billboard. (1982) (omission L.Ed.2d 606 Qualitex). Finally, real professionals estate have also hypothetical Absent involving situations confused the two companies, on at least three interrelation of corporations, linked when a occasions either sending checks and bills to develops name secondary meaning, it or telephoning the wrong firm. is not identifying corporation par- with Factors we commonly look to in order to ticular product entity. Rather, when one show that a term has acquired secondary says descriptive trade name meaning “include the amount and manner of secondary meaning one means that the rele- advertising, sales, volume of the length and vant pool consumer knows of corpora- use, manner of direct consumer testimony, tion and has come to that, understand surveys.” and consumer International Ken- example, Hut,” “Pizza is not just the name of nel Star, Club v. Mighty 846 F.2d any pizza restaurant but rather a specific (7th Cir.1988). exception With the of purveyor (Pizza pizza. may Hut not be a direct testimony, these are all indi- given corporate ownership, rect routes towards the question— real but nonetheless.) works well as an example whether, in the mind of the relevant custom- See Fellowship Church v. Self-Realization (which er base here public, be the real Ananda Self-Realization, Church professionals, estate both, Centaur Cir.1995) (“A cf. represents Communications, Ltd. v. Communi- A/S/M the mark holder on ‘the vendible commodity cations, Inc., (2d 1221-22 affixed,’ to which it is while trade name Cir.1987); Lon Tai Shing Co. v. + Koch symbolizes ‘a business goodwill.’”), and its Lowy, 19 U.S.P.Q.2d 1081, (S.D.N.Y. quoting American Steel Foundries v. Robert-

733 Cir.1995); (9th McCarthy 2 984, 987 F.3d 160, 76 70 L.Ed. 380, 372, 46 S.Ct. son, U.S. 269 buy Perini, “[I]f at 125. 15:11; F.2d 915 name, § of a (1926). “In case 317 that confused, also means then ers of a name power ‘the meaning is secondary ” word as plaintiffs recognized have they must business.’ particular a symbolize ... only with the and associated Construction, Inc., trademark a Perini Corp. v. Perini majori § McCarthy 15:11. The 2 Cir.1990), plaintiff.” (4th quoting 121, 125 does confusion that “consumer ty’s statement Div’n Products v. Kenner Toy Corp. Ideal of infringement an scope of within exist F.Supp. not 443 Group, Fun Mills General to trade entitled is not the mark claim (S.D.N.Y.1977). The existence 291, 14n. 305 729, Op. Majority at protection,” in mark name a similar using entities of other secondary noif it is true that While rele circular. marginally industries unrelated (and is no “mark there thus meaning exists a trade of whether the determination vant to consumer protection”) trademark meaning, al entitled developed name Mfg., follow, Sno-Wizard cannot confusion strength of may affect though 423, F.2d 791 Products v. Eisemann confusion, of Inc. scope mark, likelihood Cir.1986) McCarthy), (5th (quoting 5n. 427 Ass’n Television National Cable relief. Cf. confusion consumer is not true: converse Editors, Inc., F.2d 937 Cinema v. American pro- aof existence evidence direct Milling, 7 is (Fed.Cir.1991); France 1572, 1579 987, citing Adray, 76 F.3d mark. tectable phrase (“[O]ne takes a who at 306 F.2d v. American Chem. American like ‘Blue self-praise commonplace of Scientific is the 791, Cir. 793 F.2d Hosp. Supply, 690 with be content must Medal’ or ‘Gold Ribbon’ 1982). so he labels with field which special that name.”) (allowing protection undistinetive context name In the trade mix, limiting but pancake Medal” “Gold plaintiff consistently held industry); mix pancake on the success for likelihood “reasonable § McCarthy 15:27. prelimi- motion for merits,” purposes for “‘better if has a she injunctive relief nary no Mortgage had finding that succeeding on chance of negligible’ showing than negligible chance than more 1114, quot- Meridian, a merits.” developed had “Platinum” term Club, F.2d at Kennel International ing is, that consumers meaning —that clearly the district I believe “Plat- name that the to understand had come Mortgage had erred to “Platinum referred inum” of success chance negligible than no better mort- local least within at Corporation” ignored evidence Given merits. on the acknowl- industry gage —the placed weight confusion, the excessive actual surveys or lack edged that the Mortgage has time length of on the acknowledged fatal, and testimony was business, understatements advertising been Mortgage’s of Platinum sales, expenditures advertising regarding both it understated (though volume and sales conviction firm a “definite I am left belief of mistaken its because committed.” has been mistake in 1996 and erected was billboard Mortgage’s 564, Bessemer, U.S. City v. Anderson had impression (1985), 1504, 84 L.Ed.2d S.Ct. dollars” million hundred only “several earned Gyp- States States United $700,000,000 quoting United opposed closings, 68 S.Ct. Co., 333 U.S. Plati- sum showed). fatal It found the record (1948). L.Ed. the fact claim num to consider new, refused too was given correctly holds majority con- of actual Mortgage’s evidence of suc decision district court’s the exis- irrelevant fusion, believing this remaining discussion its succinct cess trademark. protectable aof tence relief was injunctive consider factors to Ma of discretion. inherently an abuse indi- must be an logically confusion Actual National Ping v. citing Op. at jority amount some at least cation of Cir. Ass’n, Inc., Educ. Adray-Mart, Adray meaning. See 1989). my Given on disagreement plain consumer’s interest being deceived demonstrating tiffs that it has a products about the they purchased.” Inter- mark, that, valid I note while Platinum Mort Club, national Kennel 846 F.2d at 1092 n. 8. gage articulated to this court why reasons reasons, For these I believe that the dis- the remaining considerations relevant to in- trict court’s grant refusal to Platinum Mort- junctive relief favored of its granting gage preliminary injunction anwas abuse requested injunction, Platinum Financial did of discretion. I therefore respectfully dis- not address these factors and thus it has sent. stage any argument waived that those other factors judge even

if he erred on the likelihood of success. Corp.

Thomas & Betts v. Panduit (7th Cir.1998). 300 n. 9 my

view, likely it is that Platinum

name has been infringed given similarity

in name and business and the evidence of confusion, Meridian,

actual customer see PARSONS, F.3d at (listing Shawn Petitioner-Appellant, factors relevant to in fringement). The district court itself stated that it believed lacked an Percy PITZER, Respondent-Appellee. adequate remedy at and that law the balance of harms it. favored No. 97-1945. The district court thought public that the United States Court of Appeals, interest favored the defendant here because Seventh Circuit. denying protection to Platinum Mortgage’s trade name “preserve would somehow com Argued May 1998. petition.” But this reveals a fundamental July Decided misunderstanding way intellectual property rights like trademarks and trade help

names competitive process. There

is nothing inherently anticompetitive about property rights,

intellectual as courts and alike have come to recognize.

commentators

E.g., Qualitex, 163-64, U.S. 115 S.Ct.

1300; William M. Landes & Richard A. Pos

ner, Trademark Law: An Economic Per

spective, 30 (1987); J.L. & Econ. 265 United Dept,

States & Justice Federal Trade

Commission, Antitrust Guidelines for the Li

censing of Property (Apr. Intellectual 1995). Companies way capture need

their good investments will reputation, important one way they do is to so develop a trade name. Free riding name,

newcomer the first company’s investment, hence help does not competition

any than competition more helped

free disrupt riders a manufacturer’s distribu

tion strategy. Finally, as we recog

nized in past, “in trademark infringement

cases ... the relevant consideration in deter

mining public whether the interest will be grant injunction

disserved anof is the

Case Details

Case Name: Platinum Home Mortgage Corporation v. Platinum Financial Group, Incorporated

Court Name: Court of Appeals for the Seventh Circuit

Date Published: Aug 18, 1998

Citation: 149 F.3d 722

Docket Number: 97-3336

Court Abbreviation: 7th Cir.