Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Fabick, Inc. v. JFTCO, Inc.

United States District Court, W.D. Wisconsin

December 13, 2017

FABICK, INC., Plaintiff,
v.
JFTCO, INC., Defendant.

          OPINION AND ORDER

          WILLIAM M. CONLEY DISTRICT JUDGE.

         During the pretrial conferences, the parties raised various objections and proposed modifications to the court's draft closing instructions. Having now considered the parties' arguments, the court issues this opinion and order explaining its reasons for accepting or rejecting those objections and proposed modifications. The court will also circulate revised closing instructions and special verdict consistent with this opinion, other rulings by the court and stipulation of the parties.

         I. “Somehow become connected to”

         In the likelihood of confusion instruction, plaintiff seeks to add language allowing for a likelihood of confusion if defendant used the FABICK mark in a manner that is likely to cause confusion “that plaintiff has somehow become connected to JFTCO.” The first draft of the instruction, consistent with the pattern instruction, directed the jury to consider only whether defendant used the FABICK mark in a manner that is likely to cause confusion “as to the source of the origin of plaintiff's product.”

         Plaintiff contends that the “somehow become connected to” language is proper to use in the context of a reverse confusion claim, which plaintiff is pursuing here. In support of this addition, plaintiff directs the court to Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992), the first case in which the Seventh Circuit recognized a reverse confusion claim. In that opinion, the court explained that:

Reverse confusion occurs when a large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user. In such a case, the junior user does not seek to profit from the good will associated with the senior user's mark. Nonetheless, the senior user is injured because
[t]he public comes to assume that the senior user's products are really the junior user's or that the former has become somehow connected to the latter. The result is that the senior user loses the value of the trademark-its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets.
Ameritech, Inc. v. Am. Info. Technologies Corp., 811 F.2d 960, 964 (6th Cir. 1987) . . . Although this court has not previously recognized reverse confusion as the basis for a claim under the Lanham Act, several other circuits have endorsed the concept. We agree with those courts that “the objectives of the Lanham Act-to protect an owner's interest in its trademark by keeping the public free from confusion as to the source of goods and ensuring fair competition-are as important in a case of reverse confusion as in typical trademark infringement.” Banff, Ltd. [v. Federated Dep't Stores, Inc.], 841 F.2d [486, ] 490 [(2d Cir. 1988)]. We therefore hold that reverse confusion is a redressable injury under the Lanham Act.

Id. at 957-58 (emphasis added) (footnote omitted).

         Defendant offers three core objections to the addition of this language. First, defendant argues that the court should simply stick with the pattern instruction. While it is the court's practice to rely heavily on the pattern instructions, however, the court is inclined to add the requested additional or modified language justified by the facts and law of an applicable case, particularly if the ruling is by the Seventh Circuit or United States Supreme Court. Second, defendant argues that the Sands citation to the requested language was in the context of talking about either the strength of the mark or the injury experienced by reverse confusion, but this is an unjustifiably narrow reading of this opinion. Indeed, in the section quoted above, the Seventh Circuit is generally describing the nature of a reverse confusion claim. Accordingly, the court sees no error in adopting the same language for a similar confusion claim here.[1] Third, defendant argues that the use of the “somehow connected to” language could open the door to the jury impermissibly considering Fabick and FABCO Equipment's prior connection in finding a likelihood of confusion, citing to Shakey's Inc. v. Covalt, 704 F.2d 426 (9th Cir. 1983). In Shakey's, the Ninth Circuit cut off a finding of a likelihood of confusion based solely on a shared history between the parties, explaining “[t]he law of unfair competition does not impose upon [the defendant] a duty to ensure that all customers are aware that they are no longer affiliated with Shakey's, but merely a duty not to promote the perpetuation of the perception that they are.” Id. at 432. The court is receptive to this concern up to a point.

         As such, the court will change the instruction as reflected in the bolded addition below:

To succeed on its claim that defendant JFTCO infringed plaintiff's trademark and service mark, plaintiff must prove by a preponderance of the evidence that defendant JFTCO used the FABICK mark in a manner that is likely to cause confusion as to the source or origin of plaintiff's product or that plaintiff has somehow become connected to JFTCO. In making this determination, however, you may not rely on confusion caused by FABCO's prior ownership of Fabick, Inc. [2]

         II. Evidence of actual confusion entitled to substantial weight

         Plaintiff also requested a modification to the list of factors the jury may consider in determining whether there is a likelihood of confusion, specifically requesting that the court point out that evidence of actual confusion is “entitled to substantial weight.” There is support for this proposition, at least in the context of a judge making the likelihood of confusion determination in the context of a preliminary injunction or as the ultimate trier of fact. See, e.g., CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 685 (7th Cir. 2001) (reviewing TTAB ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.