United States District Court, W.D. Wisconsin
NATIONAL COUNCIL OF THE UNITED STATES SOCIETY OF ST. VINCENT DE PAUL, INC., Plaintiff,
ST. VINCENT DE PAUL COMMUNITY CENTER OF PORTAGE COUNTY, INC., Defendant.
OPINION AND ORDER
BARBARA B. CRABB, DISTRICT JUDGE.
an action for trademark infringement and unfair competition,
brought under the Lanham Act, 15 U.S.C. §§
1051-112l. Plaintiff National Council of the United States
Society of St. Vincent de Paul, Inc., which is a Catholic
charitable organization dedicated to raising money for the
poor, contends that defendant St. Vincent de Paul Community
Center of Portage County, Inc. has used plaintiff's
trademarks and service marks illegally. It seeks injunctive
relief, damages and disgorgement of profits. Defendant has
asserted the affirmative defenses of laches, acquiescence,
waiver, equitable estoppel, abandonment and classic fair use
and has brought a counterclaim of unjust enrichment.
before the court are plaintiff's motion for summary
judgment on its Lanham Act claim for injunctive (but not
monetary) relief and defendant's counterclaim and
affirmative defenses, dkt. #52, and defendant's motion
for summary judgment with respect to laches, dkt. #36. Also
before the court is the parties' joint motion to amend or
correct the pretrial order, in which the parties ask that the
court vacate the remaining pretrial deadlines and set a later
trial date. Dkt. #83. For the following reasons, I am (1)
denying plaintiff's motion with respect to its Lanham Act
claim and defendant's affirmative defenses of laches and
classic fair use; (2) granting plaintiff's motion with
respect to defendant's unjust enrichment counterclaim and
affirmative defenses of acquiescence, waiver, equitable
estoppel and abandonment; (3) denying defendant's motion
for summary judgment with respect to laches; and (4) granting
the parties' joint motion to reset the remaining pretrial
deadlines and trial date.
the parties' proposed findings of fact, I find that the
following facts are undisputed, unless otherwise noted. I
have not considered the additional proposed findings of fact,
dkt. #77, that plaintiff filed in conjunction with its reply
brief in support of its motion because defendant did not have
the opportunity to dispute or otherwise respond to those
National Council of the United States Society of St. Vincent
de Paul, Inc. is a non-profit, charitable, Catholic lay
organization that was founded in the United States in 1845.
It provides services to the needy in 4, 600 communities
across the United States, including several communities in
Wisconsin. Plaintiff began operating in Wisconsin in 1849,
and it formally incorporated under the laws of the state of
Delaware on June 13, 1946.
main office is in St. Louis, Missouri, but it is affiliated
with approximately 5, 000 independently-operated local
“councils” and “conferences” that
carry out plaintiff's mission of providing charitable
services to individuals in their homes and operating thrift
stores, meal programs, housing programs and free pharmacies
across the United States. The conferences operate within a
specific council area, and both councils and conferences are
distinct legal entities. For example, the District Council of
Madison, Inc., Society of St. Vincent de Paul was
incorporated in 1941; the St. Vincent de Paul Society of
Portage, Inc. was incorporated in 1973; the St. John,
Marshfield Conference was incorporated in 1982; the St.
Vincent de Paul Cabrini Conference in Wausau, Wisconsin was
incorporated in 2008; and the St. Vincent de Paul Society St.
Joseph Conference, Inc. (or the “Baraboo
Conference”) has been operating since 1911 and
incorporated in 1961.
most of its history, plaintiff was loosely organized, with
only a volunteer, part-time chief executive and three or four
full-time employees working out of the St. Louis office. In
2006, plaintiff attempted to form a more sophisticated system
of corporate governance and management by making the
executive director a paid position; this later became the
position of chief executive officer. Plaintiff also organized
its operations into several regions that were overseen by
volunteer regional vice presidents who serve as liaisons
between plaintiff and the local affiliates in their regions.
Plaintiff currently has 19 employees in its St. Louis office.
St. Vincent de Paul Community Center of Portage County, Inc.
was organized and incorporated under the laws of Wisconsin in
1984. It is not affiliated or associated with plaintiff.
Beginning in 1984, defendant maintained and operated a
“St. Vincent de Paul Thrift Store” in Plover,
Wisconsin. In 2014, defendant moved the thrift store four
miles away, to Stevens Point, Wisconsin, where it sells goods
at discount prices using the name “St. Vinnies Thrift
Store.” It also operates a food pantry and flea market
using a similar name.
Plaintiffs undisputed use of marks
registered the following design mark on September 14, 1999:
registered the “Society of St. Vincent de Paul”
word mark on July 29, 2014; the “St. Vinnys
Bistro” mark on October 19, 2015; and the “Mini
Vinnies” word mark on February 23, 2016. It filed a
trademark application for “St. Vinnie's” on
February 8, 2016, and the United States Patent and Trade
Office issued a notice of publication with respect to that
mark on June 8, 2016. However, defendant has opposed the
registration of the St. Vinnie's mark in a separate
gives verbal authorization to properly established local
councils and conferences in good standing to license and use
its trade name, trademarks, service marks and logo upon
written request, in accordance with its policies and
directives. On September 2, 2006, plaintiff's national
council issued a resolution providing in relevant part that
“approval and authorization to use the name and or logo
can only be secured through a written request and provided by
a written response. Properly established Conferences and
Councils are permitted to use the Society's name and logo
consistent with this policy.” Dkt. #55, exh. C.
Madison Council uses the contested marks to advertise and
promote its thrift store goods and services. In 2006, the
Madison Council issued a press release with the title
“Vinnie's to Vend Variety of Vinyl, ” and in
2008, it started a program called “Vinny's Lockers,
” which provides a safe location for people without
permanent housing to secure and protect their personal items.
The Madison Council's Waunakee thrift store advertises
and promotes its goods and services through a Facebook page
entitled “Vinnys Waunakee.” In 2011, the Madison
Council decided to increase its use of the St. Vinny's
mark in advertising its thrift stores because members of the
public already used the term and identified it with the
thrift stores. It created commercials called “Let's
Go Shop St. Vinny's” and “Shop St.
Vinny's” that air on television and YouTube. Also
in 2011, the Madison Council registered the internet domain
names shopvinnies.com and shopvinnys.com, which direct users
to the website svdpmadison.org. Around 2014, the Madison
Council purchased and installed a large street sign entitled
“St. Vinny's Thrift Store, ” which is also
featured on the Madison Council's website.
Defendant's use of marks
began using the names “St. Vincent de Paul Community
Center, Inc., ” “St. Vincent de Paul's Thrift
Center, ” “St. Vincent de Paul, ”
“St. Vincent de Paul Store” and “St.
Vincent de Paul Thrift Store” to refer to its thrift
store and services in 1984 and 1985. In 1986, it used the
name “St. Vincent de Paul Society” on its
donation receipts. Defendant had the following sign on its
thrift store in Plover:
1993, defendant published a quarterly newsletter titled
“Vinnie's Newsletter.” In one of these
newsletters, defendant stated:
Yes, we are much older than we look. For example, did you
** The St. Vincent de Paul Society was organized in Paris in
** The Society first appeared in the U.S. in St. Louis,
Missouri in 1845?
* * *
Well, our figures have changed, our organization structure is
different, but our goals have remained the same.
Dkt. #54, exh. 6.
November 2014, defendant moved its thrift store from Plover
to Stevens Point, Wisconsin, which Tom Fahl, a member of
plaintiff's board of directors, viewed as a greater
threat to plaintiff's marks. (Defendant disagrees with
this characterization, and the parties dispute the size and
scope of the Stevens Point market.) Defendant named the new
store “St. Vinnies Thrift Store” and displayed
signs with that name. On November 28, 2014, the Stevens Point
Journal published an article about defendant's new thrift
store location, stating that “[t]he local store is a
part of the St. Vincent de Paul Society, ” a
“Catholic volunteer organization dedicated to serving
the poor and disadvantaged.” Dkt. #55, exh. 5.
also promotes and markets its services online. From 2007 to
2015, defendant operated the website svdpplover.com and
currently has the websiste stvinniesthriftstore.com and a
defendant has been aware of plaintiff's existence and the
process of affiliating with plaintiff since defendant first
started operating its thrift store, it never received
permission from plaintiff to use these names or logos.
Approximately every three months, members of the public
inquire whether defendant is affiliated with plaintiff and
defendant responds that it is not. However, defendant does
not otherwise inform the public that it does not have an
affiliation with plaintiff.
Plaintiff's Interactions with Defendant
1984, Joe Jersey became chairman of defendant's board of
directors. At that time, the community center was struggling,
so Jersey approached local Catholic parishes for help, but
they were all too busy. However, he and other individuals
wanted to move the charity forward even without the help of
the parishes because there was a need for it in the
community. In 1985, Jersey sent a letter and questionnaire to
several of plaintiff's conferences that operated thrift
stores, stating that defendant intended to operate a thrift
store “consistent with all of the objectives of the
Society of St. Vincent De Paul [sic].” Dkt. #39, exh.
5. The letterhead states “St. Vincent de Paul Community
Center, Inc.” and is addressed to “Dear Fellow
Associate, St. Vincent DePaul [sic] Society.”
Id. Walter Traynor, the St. Vincent de Paul Society
North Central Region Extension Chairman, wrote Jersey and
reminded him that he had been told to start at the conference
level before opening a thrift store. (Although plaintiff
insists that Traynor acted on behalf of a separate and
distinct regional organization of local councils and
conferences, Jersey avers that he understood the letter to be
from defendant's February 21, 1985 board meeting state
that “[a]pparently, there was never a bona fide
conference established but there should be one.” Dkt.
#51 at 41. The April 23, 1985 board meeting minutes reflect
that defendant's board discussed being “able to do
things typical of the St. Vincent De Paul style” and
changing its operations to be similar to thrift stores
affiliated with plaintiff. Id. at 39.
December 19, 1990, two individuals from the Baraboo
conference gave a presentation to defendant's board of
directors about the need for either affiliating with
plaintiff or taking its sign down. (The parties dispute
whether the representatives stated that they were
representing the national organization or only the Baraboo
conference.) The representatives stated that affiliation
required a conference of at least four people, who are
members of the Catholic Church, to meet every two weeks, pay
annual dues of $75 to the national society (plaintiff), pay
additional dues to the diocese and submit an annual report to
plaintiff. Conference members were permitted to decide how to
use store ...