The Scooter Store, Inc. et al v. Spinlife.com, LLC
ORDER granting in part and denying in part 99 Motion for Partial Summary Judgment. Plaintiffs affirmative claims for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a), and Texas state law, are hereby DISMISSED. Plaintiffs claims for unfair competition under federal and state law are also hereby DISMISSED. Signed by Judge Algenon L. Marbley on 12/21/2011. (cw)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
THE SCOOTER STORE, INC., ET AL., :
Case No. 2:10-cv-18
JUDGE ALGENON L. MARBLEY
MAGISTRATE JUDGE DEAVERS
OPINION AND ORDER
This matter is before the Court on Defendant/Counterclaimant’s, SpinLife.com, LLC
(“SpinLife”) Motion for Partial Summary Judgment (Dkt. 99). SpinLife moves the Court to
establish that Plaintiffs, The Scooter Store, Inc. and The Scooter Store, Ltd. (collectively, “TSS”)
have no trademark rights or any other actionable rights to the phrases “scooter store,” “my
scooter store” and other phrases that include “scooter” and “store” in them. SpinLife requests
summary judgment on all TSS’s affirmative claims, and Counts three and five of its Amended
Counterclaim. For the reasons stated below, SpinLife’s Motion for Partial Summary Judgment is
hereby GRANTED in part.
II. STATEMENT OF FACTS
A. Factual Background
1. The Parties
Plaintiff, The Scooter Store, Inc., is a Nevada corporation whose principal place of
business is Comal County, Texas. Plaintiff, The Scooter Store, Ltd., is a Texas limited
partnership having its principal place of business in Comal County, Texas. Since it was founded
in 1991, the majority of TSS’s business has been in providing insurance claims processing
services related to the purchase of electric wheelchairs and scooters by, and delivery and repairs
to, the Medicare Part B Program, and its beneficiaries. TSS owns four federal trademark
registrations—Registration Nos. 2,710,502; 2,714,979; 2,912,774; and 3,017,227—of the mark
THE SCOOTER STORE in connection with “insurance claims processing for others;
maintenance and repair services for wheelchairs, power chairs, lift chairs and motorized scooters;
delivery of wheelchairs, power chairs, lift chairs and motorized scooters.”
Defendant, SpinLife.com LLC, is an Ohio corporation having its principal place of
business in Columbus, Ohio. In 1991, Edwin Trautman founded Ohio Mobility as a sole
proprietorship in Akron, Ohio. During the 1990s, Ohio Mobility started using the name “The
Scooter Store,” and in 1995 it formally obtained and recorded the trade name “The Scooter
Store” with the Ohio Secretary of State. In 1997, it incorporated as Ohio Mobility, Inc., d/b/a
The Scooter Store. SpinLife was then founded in 1999, and since then has been engaged in the
retail sale of durable medical supplies through the internet. Unlike TSS, SpinLife does not
accept assignments of its customers’ Medicare claims, nor does Medicare pay SpinLife for the
products it provides to its customers.
During the 1990s, Trautman spoke by telephone several times with Doug Harrison, the
President and CEO of TSS. During each of these conversations, Trautman introduced himself as
from “Ohio Mobility, The Scooter Store.” At no time during these conversations did Harrison
object to this use of “The Scooter Store.” In 2006 and 2008, Trautman retained attorneys to send
communications to TSS, advising them that their use of “The Scooter Store” in the state of Ohio
violated Ohio Mobility, The Scooter Store’s trade name rights and requesting that they cease and
desist their improper use of that phrase. In addition to these conversations, TSS had knowledge
of Ohio Mobility, The Scooter Store as a result of investigations it undertook. In 2006, 2008,
and 2010, TSS sent an investigator to look into Mr. Trautman’s business.
In 2000, TSS applied for a trademark of “The Scooter Store” for use in insurance claims
processing and retail sales. TSS did not disclose Trautman’s Ohio trade name registration, actual
use, or right to use the mark to the USPTO when it filed its applications. The USPTO denied
TSS’s application for a trademark of “The Scooter Store” in the retail sales market. It issued a
determination finding “The Scooter Store” to be generic for retail sales, merely descriptive of the
retail and mail order sale of scooters, and incapable of identifying The Scooter Store’s services
and distinguishing them from others.
The USPTO ultimately granted TSS’s application for a composite trademark of “THE
SCOOTER STORE” covering insurance claims processing for others; maintenance and repair
services for wheelchairs, power chairs, lift chairs, and motorized scooters; and delivery of
wheelchairs, power chairs, lift chairs, and motorized scooters. TSS was assigned U.S.
Registration Nos. 2,710,502; 2,714,979; 2,912,774; and 3,017,227. TSS does not own any
registered trademarks for the retail sale of goods.
2. The Dispute
TSS’s allegations are based on SpinLife’s purchases of Google AdWords, and use of
“metadata” phrases on its website. Google, like most Internet search engines, engages in
advertising sales in which it auctions search keywords to advertisers. If a person searches on
Google using one of the keywords, the advertiser’s ad will appear next to the search results. This
feature allows retailers to target potential customers searching for their products. TSS alleges
that SpinLife purchased the phrase “the scooter store” and other combinations using those words,
such as “scooter store,” “my scooter store” and “your scooter store,” from Google AdWords as
part of a plan to confuse TSS’s customers. TSS also complains that SpinLife placed the term
“the scooter store” in so-called “meta tags” on its website, www.spinlife.com, which could also
cause internet traffic searching for TSS to be directed to SpinLife’s website instead. These
actions, TSS contends, constitute trademark infringement and unfair competition.
SpinLife counterclaimed, alleging, inter alia, fraud on the part of TSS in connection with
its trademark applications and anticompetitive motivations behind TSS’s lawsuit. In 2005, the
United States Department of Justice (“DOJ”) alleged that TSS had engaged in improper business
practices related to Medicare and its beneficiaries. TSS settled with the DOJ in 2007. Following
the settlement, TSS expanded its services in the retail sales market. After the expansion, it
approached SpinLife about acquiring the company, but no agreement was ever reached. In 2009,
TSS again contacted SpinLife and indicated that it believed that SpinLife was violating its
trademark rights. SpinLife contends that TSS used the threat of litigation to force SpinLife to
agree to anticompetitive terms. When SpinLife still did not agree, TSS brought suit. SpinLife
alleges that TSS is using litigation to eliminate competition and obtain a monopoly through the
unjustified expansion of their trademarks. Further, SpinLife alleges that TSS seeks to use the
costs of litigation to drive SpinLife out of the retail sales market for power mobility devices.
B. Procedural History
In its Amended Complaint, TSS asserts the following claims: (1) Federal Unfair
Competition; (2) State Unfair Competition (based on Texas law); (3) State Dilution (based on
Texas law); (4) Federal Trademark Infringement; (5) State Trademark Infringement (based on
Texas law); and (6) Unjust Enrichment and Misappropriation. TSS requests punitive and
exemplary damages, a declaratory judgment that SpinLife’s actions are unlawful, and injunctive
The case was then transferred to this Court, at which time SpinLife filed its
Counterclaim, asserting: (1) a Sherman Act violation and (2) Ohio Unfair Competition. SpinLife
also requests (3) a declaratory judgment of non-infringement of Trademark Registration Nos.
2,710,502; 2,714,979; 2,912,774; and 3,017,227 under the Lanham Act; (4) a declaratory
judgment that U.S. Registration Nos. 2,710,502; 2,714,979; 2,912,774; and 3,017,227 are
invalid; (5) a declaratory judgment that purchase of “The,” “Scooter” and “Store” keywords and
related phrases does not infringe Trademark Registration Nos. 2,710,502; 2,714,979; 2,912,774;
and 3,017,227; and (6) a declaratory judgment that Registration Nos. 2,710,502; 2,714,979;
2,912,774; and 3,017,227 are unenforceable.
TSS moved to dismiss counts one, two, four, and six of SpinLife’s Amended
Counterclaim. On April 18, 2011, the Court granted TSS’s motion in part, dismissing counts
four and six of SpinLife’s counterclaim (seeking invalidation of TSS’s trademarks due to fraud
in its trademark applications in the USPTO). Now comes Defendant/Counterclaimant SpinLife,
moving for partial summary judgment to establish that TSS has no trademark rights, or any
actionable rights, to the phrases “the scooter store,” “scooter store,” “my scooter store” or other
phrases encompassing combinations of “scooter” and “store.” The matter is fully briefed and
ready for decision.
III. STANDARD OF REVIEW
Summary judgment is proper if “the movant shows that there is no genuine dispute as to
any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a). But “summary judgment will not lie if the . . . evidence is such that a reasonable jury
could return a verdict for the non-moving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248 (1986). In considering a motion for summary judgment, a court must construe the evidence
in the light most favorable to the non-moving party. Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 587 (1986). The movant therefore has the burden of establishing that there
is no genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986);
Barnhart v. Pickrel, Schaeffer & Ebeling Co., 12 F.3d 1382, 1388-89 (6th Cir. 1993).
The central inquiry is “whether the evidence presents a sufficient disagreement to require
submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.”
Anderson, 477 U.S. at 251-52. But the non-moving party may not rest merely on allegations or
denials in its own pleading. Fed. R. Civ. P. 56(c). See also Celotex, 477 U.S. at 324; Searcy v.
City of Dayton, 38 F.3d 282, 286 (6th Cir. 1994). The non-moving party must present
“significant probative evidence” to show that there is more than “some metaphysical doubt as to
the material facts.” Moore v. Philip Morris Co., 8 F.3d 335, 339-40 (6th Cir. 1993). In other
words, “[t]he mere existence of a scintilla of evidence in support of the [nonmoving party’s]
position will be insufficient” to survive summary judgment. Shah v. Racetrac Petroleum Co.,
338 F.3d 557, 566 (6th Cir. 2003) (quoting Anderson, 477 U.S. at 252).
IV. LAW AND ANALYSIS
SpinLife’s Motion is for partial summary judgment to establish that TSS has no
trademark rights or other rights to the generic phrases “scooter store,” “mobility scooter store,”
“your scooter store,” “SpinLife scooter store,” or other such combinations. SpinLife asserts that
establishing this entitles it to declaratory judgments, as requested in Counts three and five of its
Amended Counterclaim (Dkt. 61), that its purchases of the above phrases as Adwords and
placing them in metadata on its website do not infringe TSS’s registered trademarks for THE
SCOOTER STORE. SpinLife asserts that granting this Motion will resolve all of TSS’s claims
in its favor.
A. Are Purchases of Adwords Actionable Under the Lanham Act?
First, SpinLife claims that Adword purchases, even of another’s registered trademarks,
are not actionable for infringement, and therefore its purchases of Adwords for phrases
containing “scooter” and “store” are simply not actionable by TSS. For support, SpinLife relies
almost exclusively on a case out of the District Court of Utah, 1-800 Contacts, Inc. v. Lens.com,
Inc., 2010 U.S. Dist. LEXIS 132389 (D. Utah Dec. 14, 2010), which held that “[b]ecause a
consumer cannot see a keyword, nor tell what keyword generated an advertisement, the court
concludes that the mere purchase of a trademark as a keyword cannot alone result in consumer
confusion” under the Lanham Act. Id. at *1174. SpinLife argues that based on the holding of 1800 Contacts, alone, it is entitled to summary judgment.
TSS downplays the significance of 1-800 Contacts, and provides rebuttal cases which
have allow similar claims of infringement to proceed, including within the specific context of
keyword purchases of another’s trademarks. See, e.g., T.D.I. Intern, Inc. v. Golf Preservations,
Inc., 2008, No. 6:07-313-DCR, WL 294531 (E.D. Ky. Jan. 31, 2008). In the alternative, TSS
alleges that even if, arguendo, Adwords are not actionable, SpinLife’s use of the phrases in its
website’s metadata is a distinct and separate basis for infringement, and so its claim is not
While 1-800 Contacts supports SpinLife’s argument, this Court will not rely on a single
out-of-circuit case to conclude that the Adword purchases are not actionable under any
circumstances. Even the court in 1-800 Contacts acknowledged that “other courts have
concluded that use of another’s mark ‘to trigger internet advertisements for itself,’ is a use in
commerce.” 1-800 Contacts, Inc., 2008 WL at *1170 (quoting J.G. Wentworth, S.S.C. Ltd.
P'ship v. Settlement Funding LLC, No. 06-0597, 2007 U.S. Dist. LEXIS 288, at *13, 17 (E.D. Pa.
Jan. 4, 2007)). Moreover, SpinLife does not respond to TSS’s argument that its metadata uses
are also at issue here, and metadata, at least, are indisputably subject to consumer confusion
infringement claims. See Tdata Inc. v. Aircraft Technical Publishers, 411 F. Supp. 2d 901, 907
(S.D. Ohio 2006) (“Several other courts have recognized that the [consumer confusion] doctrine
applies ‘when a confusingly similar designation is used in a hidden ‘metatag’ on an Internet web
site.’”) (citations omitted). The Court therefore rejects SpinLife’s claim that it should be
awarded summary judgment because Adwords are not actionable.
B. “Consumer Confusion” Under the Lanham Act
SpinLife’s fundamental argument is that the phrases “scooter store,” “my scooter store,”
and the other combinations are all generic terms, and therefore are not entitled to any trademark
protection. Specifically, SpinLife contends that since all of the phrases at issue are generic, they
“are not subject to secondary meaning or likelihood of confusion analyses,” and TSS therefore
cannot claim that SpinLife’s use of them infringes its trademarks. (Motion at 11.) TSS’s
response is somewhat confusing. TSS initially insists that “TSS makes no such claim of
trademark rights to the phrases “scooter store,” “your scooter store,” etc.,” (Opp. at 4), but then
later maintains that SpinLife’s “use of those phrases as internet keywords (Adwords and
metadata) causes consumer confusion with TSS’s registered marks.” (Id. at 5). For SpinLife to
be liable for infringing TSS’s marks by creating consumer confusion, TSS must necessarily be
asserting exclusive rights to the disputed terms. See Homeowners Grp., Inc. v. Home Mktg.
Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991) (“Ownership of a mark confers both the
right to use a particular mark and the right to prevent others from using the same or a confusingly
similar mark.”). TSS’s claim, therefore, is essentially that SpinLife’s use of the phrases “scooter
store,” etc. in Adwords and metadata creates consumer confusion with respect to TSS’s goods
and services for which it owns registered marks. (Opp. at 5.)
To establish its claims of trademark infringement or unfair competition under the Lanham
Act, TSS must first show that SpinLife “used in commerce” one of its marks. See 15 U.S.C. §§
1114, 1125(a). The Sixth Circuit has held that “[i]n federal trademark infringement claims under
15 U.S.C. § 1114, the ‘touchstone of liability . . . is whether the defendant’s use of the disputed
mark is likely to cause confusion among consumers regarding the origin of the goods offered by
the parties.’” Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350, 355 (6th
Cir. 1998) (quoting Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109
F.3d 275, 280 (6th Cir. 1997)); see also PACCAR Inc. v. TeleScan Techs., 319 F.3d 243, 249 (6th
Cir. 2003). The central focus is whether “the unauthorized use of a registered trademark when
selling or advertising a good or service using the trademark is likely to confuse or deceive
consumers.” U.S. Structures, Inc. v. J.P. Structures, Inc., 130 F.3d 1185, 1188 (6th Cir. 1997).
In this circuit, “both trademark infringement and unfair competition claims require
courts to determine whether there is a likelihood of confusion regarding the source of the
products and, therefore, these claims can be analyzed together.” General Conf. Corp. of
Seventh-Day Adventists v. McGill, 624 F. Supp.2d 883, 891 (W.D. Tenn. 2008) (citing AutoZone,
Inc. v. Tandy Corp., 373 F.3d 786, 791 (6th Cir. 2004)). The success or failure of TSS’s
infringement claims will turn on a “likelihood of confusion” analysis, but only if one is
warranted. If no trademark protection exists over the disputed marks in the first place, then the
Court does not even reach the question of whether SpinLife’s alleged use creates a likelihood of
confusion. See Tumblebus, Inc. v. Cranmer, 399 F.3d 754, 762 n. 10 (6th Cir. 2005) (for
infringement claims brought under the Lanham Act, courts first determine whether mark is
protectable “and if so, whether there is a likelihood of confusion as a result of would-be
infringer’s use of the mark”). To resolve SpinLife’s motion, therefore, the Court first must
decide whether the “scooter store” terms at issue are protected, and then, if so, whether TSS has
a viable claim that SpinLife’s use of them creates consumer confusion.
1. Are the disputed phrases generic?
SpinLife argues that the terms it purchased as Adwords and placed in metadata are
generic, for the USPTO has already determined that the term “the scooter store” is generic in the
area of retail sales. Although at first TSS appears to concede that it “does not claim ‘any
trademark rights in such generic phrases,’” (Opp. at 1), later in its briefing, and at oral argument,
it expressly disputed that the term “scooter store” and other combinations of the words “scooter”
and “store” are generic. (Opp. at 11.)
Courts evaluate the strength, and level of protection, of a trademark in terms of “where
the mark fits along a spectrum ranging from ‘(1) generic . . . and (2) merely descriptive to (3)
suggestive and (4) arbitrary or fanciful,’” Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 422
(6th Cir. 1999) (quoting Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th
Cir. 1984)). The Sixth Circuit describes “‘a generic or common descriptive term [a]s one which
is commonly used as the name or description of a kind of goods.’” Bath & Body Works, Inc., v.
Luzier Personalized Cosmetics, 76 F.3d 743, 747 (6th Cir. 1996) (citations omitted). The more
distinctive “[s]uggestive, arbitrary, and fanciful marks . . . are protectable so long as the putative
owner has actually used the mark,” Tumblebus, Inc., 399 F.3d at 761. A “merely descriptive”
mark is “not ‘inherently distinctive,’ but can become protectable by developing a secondary
meaning.” Id. It is well-established, however, that “[g]eneric marks, on the other hand, receive
no protection,” id., and “cannot become a trademark under any circumstances.” Bath & Body
Works, 76 F.3d at 747.
The test for genericness is “whether the public perceives the term primarily as the
designation of the article.” Id. at 748. This determination of whether a particular mark is generic
is usually a question of fact, see id., but the Sixth Circuit in Natron Corp. v. STMicroelectornics,
Inc. affirmed genericness as an appropriate issue for the district court to decide on summary
judgment where the evidence warrants:
The district court correctly granted summary judgment in favor of ST on the issue
of genericness of the term “smart power” as used in the semiconductor industry in
connection with ST’s products, including ST’s VIPower tm line of products. In
opposing ST’s summary judgment motion on the issue of genericness, Nartron
failed to present evidence demonstrating any genuine issues of material fact. A
generic term can never function as a trademark.
305 F.3d 397, 403 (6th Cir. 2002) (affirming summary judgment determination of genericness
where plaintiff “failed to rebut, that the term ‘smart power,’ as used by ST and other participants
in the semiconductor industry, denotes a type of technology, not goods associated with Nartron”
even where the “smart power” mark was incontestable, being federally registered). If TSS fails
to present adequate evidence to demonstrate a genuine issue of fact of the disputed phrases’ non11
genericness, therefore, summary judgment will be appropriate. See Bath & Body Works, 76 F.3d
at 748, infra.
In June 2001, on TSS’s first application for trademark protection of the mark “THE
SCOOTER STORE,” the USPTO determined the proposed mark to be generic in the area of
retail and mail order sales of scooters—which is the type service in which SpinLife engages.
(Motion, Exh. C. at 1.) The USPTO’s analysis in making this determination was thorough and
[T]he proposed mark appears to be generic as applied to the services and,
therefore, incapable of identifying the applicant’s services and distinguishing
them from those of others. Case law holds that the term “store” is generic for
retail services, and that, where an applicant combines the generic name of goods,
such as “liquor” and the generic term “store,” the resulting mark “liquor store,” is
generic for retail services selling those goods. The term “scooter” appears to be
generic for motorized scooters such as those sold by the applicant. The applicant
has merely added the generic term SCOOTER to the generic term STORE,
resulting in the generic mark THE SCOOTER STORE.
Id. (citing In re Management Recruiters Int’l, Inc., 1 USPQ2d 1079, at *5 (TTAB 1986) (“A
generic term, which has been called the ultimate in descriptiveness, is the common descriptive
name of a class of goods or services and can never be registered as a trademark because such a
term is ‘merely descriptive’ within the meaning of Section 2(e)(1) of the Act.”); Frehling Enters.
v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999) (“Generic marks are the weakest and
not entitled to protection--they refer to a class of which an individual service is a member (e.g.,
‘liquor store’ used in connection with the sale of liquor).”)).
Accordingly, the USPTO initially denied registration of the “‘502 mark” for “THE
SCOOTER STORE,” concluding that “the entire mark appears to be generic for retail store
services featuring motorized scooters for the disabled.” (Id. at 2). On TSS’s subsequent
application for the “‘979 mark” of “THE SCOOTER STORE AND DESIGN,” the USPTO noted
the following disclaimer: “No claim is made to the exclusive right to use THE SCOOTER
STORE apart from the mark as shown.” (Motion, Exh. D at 3) (emphasis added). The USPTO
only granted the registrations after TSS insisted that its particular display of the words “THE
SCOOTER STORE” was presented in a distinctive manner, (Motion, Exhs. F-G), and granted
them only for “insurance claims processing for others . . . maintenance and repair services for
wheelchairs, scooters,” as opposed to retail sales. (Motion at 7.)
The terms SpinLife purchased as Adwords and used as metadata which form the basis of
TSS’s infringement claims, therefore, are precisely the phrases that the PTO Examiner found to
be generic. SpinLife merely uses the phrases “the scooter store,” “scooter store” and the others
containing combinations of “scooter” and “store” in the context of promoting its online retail
sales of motorized scooters. TSS does not dispute that it has no registered trademarks covering
the disputed phrases containing “scooter store.” The burden is on TSS to prove their nongenericness, because “[i]f a trademark is not federally registered, once the defendant raises
genericness as a defense, plaintiff must prove lack of genericness.” Bath & Body Works, 76 F.3d
TSS’s argument that “scooter store” is not generic is twofold. First, TSS asserts that the
“10 year old USPTO office action” finding “scooter store” to be generic is outdated and
nonbinding. Second, TSS proffers evidence in the form of the “BYU Corpora” database results
for the term “scooter store” throughout various books or magazines to show that the consuming
public perceives “scooter store” as a trademark for TSS, not a generic term. 1 (Opp. at 15.)
The BYU Corpora, developed by Mark Davies, Professor of Linguistics at Brigham
TSS relies on the case of Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1
(1st Cir. 2008) to downplay the weight that should be given to the USPTO’s determination of the
term “scooter store” as generic. The First Circuit in Boston Duck warned courts against giving
too much weight “to the decisions of the PTO regarding disclaimers.” Id. at 22. The court did
not discuss, however, the weight to be afforded a PTO examiner’s overall determination on a
mark’s distinctiveness. And while this Court is well aware that “an opinion by an examining
attorney during the application process is not binding in court on an adversarial proceeding,” see
Martha Elizabeth, Inc. v. Scripps Networks Interactive, 2011 U.S. Dist. LEXIS 49702, at *59
(W.D. Mich. May 9, 2011), the considered determination by the PTO examiner, through multiple
rounds of TSS’s applications, that the mark “scooter store” by itself is generic should be given
“appropriate consideration and due weight.” GenDerm Corp. v. Ferndale Lab., 32 U.S.P.Q.2D
(BNA) 1567, at *15 (E.D. Mich. 1994) (quoting Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1139 (Fed. Cir. 1985)).
TSS attacks the determination by the USPTO that the simple, descriptive term “scooter
store” is generic, but then does very little to overcome “the deference that is due to a qualified
government agency presumed to have properly done its job.” See Am. Hoist & Derrick Co. v.
Sowa & Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984) (referring to PTO examiners). The only
affirmative evidence TSS provides to show that “the scooter store” or “scooter store” is not a
generic phrase, apart from statements about the amount it spends on advertising its products, are
Young University can be found online at www.corpus.byu.net. According to its website ,The
BYU Corpora is a large collection of searchable texts which has “many different uses, including:
finding out how native speakers actually speak and write; looking at language variation and
change; finding the frequency of words, phrases and collocates; and designing authentic
language teaching materials and resources.”
the results from a database search in the BYU Corpora. (Opp. at 15.) That evidence consists of
database search for the terms “scooter store” in a single online “corpus” of entries from various
books and magazines. The search produced a mere nine resulting entries, all of which TSS
alleges “have to do with” its company.
TSS fails to meet its burden of creating a genuine issue of fact on the issue of nongenericness with only the evidence of the BYU Corpora. Even accepting, as the court must, that
the nine entries returned from the search indeed refer to TSS, these results do not amount to
significant enough evidence that “the public perceives the term primarily as a designation of”
TSS, see Bath & Body Works, 76 F.3d at 748, particularly in light of the weight of evidence and
findings suggesting that the term “scooter store” is generic for scooter sales. While this corpora
data is in the category of “[e]vidence of consumer recognition,” which can be “relevant to
assessing the strength of the mark,” Citizens Banking Corp. v. Citizens Fin. Group, Inc., 320 F.
App’x 341, 347 (6th Cir. 2009), a mere nine instances of the term “scooter store” referring to
TSS from one data search does not create sufficient uncertainty of the term’s genericness to
overcome TSS’s burden of persuasion. See, e.g., Schmidt v. Quigg, 609 F. Supp. 227, 229-30
(E.D. Mich. 1985) (finding that two isolated pieces of evidence offered to show that “Honey
Baked Ham” was common descriptive term was insufficient to “shift the burden of persuasion”
on that party to show genericness).
Finding the terms at issue here “generic” as opposed to merely descriptive is significant,
because unlike generic terms, “a term that is ‘merely descriptive’ may be used as a trademark if
it has acquired a secondary meaning.” Natron Corp., 305 F.3d at 404. As recounted by the court
in Natron Corp., “Judge Friendly illustrated the distinction between a generic and a merely
descriptive mark with the ‘Deep Bowl Spoon’” example:
“Deep Bowl” identifies a significant characteristic of the article. It is “merely
descriptive” of the goods, because it informs one that they are deep in the bowl
portion . . . . It is not, however, “the common descriptive name” of the article
(since) the implement is not a deep bowl, it is a spoon. . . . “Spoon” is not merely
descriptive of the article, it identifies - the article - (and therefore) the term is
Id. at n.7; see also Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10, n.11 (2d.
Unlike the “Deep Bowl Spoon” mark, the term “the scooter store” merely identifies the
retail establishment by the “common descriptive” name of the type of goods sold, and contains
no such distinctive “adjective” or “identifying characteristic,” which could potentially make it
merely distinctive. Id. Therefore, “the scooter store” and its constituent parts, “scooter” and
“store,” are all generic terms.
TSS argues, alternatively, that even if “scooter store” and its parts are determined
generic, the Court’s inquiry on this issue does not end because the other phrases SpinLife
purchased as Adwords, including “my scooter store,” “your scooter store,” “mobility scooter
store,” etc. also constitute infringement. TSS, however, provides no evidence, as it must, that
these other phrases are not generic. See Bath & Body Works, 76 F.3d at 748. Instead, TSS
merely cites cases which state that determining a trademark’s genericness must be done by
evaluating the mark “as a whole,” (Opp. at 17), which is an accurate statement of law but does
nothing to satisfy TSS’s burden of proving a lack of genericness of these other phrases. This
argument must also be rejected, therefore, as TSS provides no basis for the court to find that the
other phrases using “scooter” and “store” are not generic.
2. Can SpinLife’s use of generic phrases cause consumer confusion?
SpinLife argues that because the phrases containing “scooter store” are generic and TSS
has no trademark rights to them, SpinLife’s use of the words cannot infringe TSS’s trademarks
and therefore a “likelihood of confusion” analysis is unwarranted.2 SpinLife’s argument reflects
established Sixth Circuit precedent, which states:
“Generic terms, have no trademark significance and therefore are not entitled to
protection.” Thus, if a term is found to be generic, a court need not even reach the
issue of the likelihood of confusion for no trademark protection exists.
Barrios v. American Thermal Instruments, Inc., 712 F. Supp. 611, 614 (S.D. Ohio 1988) (quoting
Sir Speedy, Inc. v. Speedy Printing Ctr.s, Inc., 746 F.2d 1479 (6th Cir. 1984), cert. denied, 469
U.S. 1217 (1985)).3
The Sixth Circuit uses an eight-factor test to determine whether a likelihood of
confusion is presented by the defendant’s usage of the disputed terms. These factors are as
1. strength of the plaintiff's mark;
2. relatedness of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. likely degree of purchaser care;
7. defendant's intent in selecting the mark; and
8. likelihood of expansion of the product lines.
SpinLife also relies heavily on Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks,
Inc., 106 F.3d 357, 362-63 (11th Cir. 1997), which held that a composite mark made up of
generic terms must be viewed “as a whole,” and the plaintiff there was “not entitled to priority
Given the Court’s holding, above, that the disputed “scooter store” terms are generic,
SpinLife is therefore correct that the Court does not proceed to the question of whether its use of
the terms creates a likelihood of confusion with TSS’s products or service. Id.
TSS insists that SpinLife need not be in use of the actual trademark to infringe it, and
argues that while TSS may not have trademark rights to the disputed phrases, SpinLife’s use of
the phrases containing “scooter store” nevertheless infringes on its registered marks by creating a
likelihood of consumer confusion. (Opp. at 5.) TSS maintains that its claim for infringement is
similar to that upheld by the Sixth Circuit in the Bath & Body Works, Inc. v. Luzier Personalized
Cosmetics, Inc. case, which affirmed the following jury instruction:
Although plaintiffs [who hold a trademark for “BATH & BODY WORKS”] have
no exclusive right to use the words “bath and body,” you may consider the
manner in which the defendant used those words on its product in determining
likelihood -- . . . --likelihood of confusion and defendant’s intent. Manner of use
refers to the style and presentation of the words, not their meaning.
Bath & Body Works, 76 F.3d at 749 (affirming the district court’s instruction on “plain error”
TSS’s reliance on Bath & Body Works is misplaced, as the case cuts both ways to say the
least. Bath & Body Works highlights the same distinction that SpinLife urges in its Motion
between, on the one hand, the actionable use of another’s trademark for infringement based on
its “likelihood of confusion,” versus the non-actionable use of generic or descriptive terms which
merely contain the same words which make up another’s trademark. The latter is all that TSS
over the descriptive words ‘Lone Star’.” Likewise, TSS’s registered trademarks for THE
SCOOTER STORE must be viewed “as a whole,” including their design aspects and the fact that
they are not for retail sales. As in Lone Star, TSS does not have priority over the merely
descriptive words that make up its registered mark.
accuses SpinLife of in the case sub judice. As the court in Bath & Body Works further
The district court found that the evidence was overwhelming in favor of a finding
of genericness. However, the record reveals that there was sufficient evidence
from which a jury could have found otherwise. Thus, the district court’s finding
of genericness as a matter of law was erroneous. However, this finding was
harmless error, as Bath & Body Works stated repeatedly throughout the trial that
it did not object to the use of the words “bath and body” in a descriptive context.
Nor did it have any objection to the use of the words “bath and body” in
combination with a trademark. Bath & Body Works’ objection, as stated in both
the original complaint and the amended complaint, was to the manner of use of
the words “bath and body” by Luzier on its product as it contends that causes
confusion among consumers.
Id. at 748.
The plaintiff in Bath & Body Works understood that the defendant could use the same
descriptive words found in its trademark, so long as defendant did not use them in a manner that
would be confused with plaintiff’s trademarked design. Indeed, plaintiff’s counsel insisted “that
we have not been trying to preclude the defense from using the words bath and body in ordinary
words.” Id. at 749 (adding that “our argument has been from the very beginning, it is the manner
in which they are using it in terms of the overall trade dress creates the appearance of a
trademark”). The implied acknowledgment behind the lawyer’s distinction being that there is
nothing actionable about simply using the words “bath” and “body” alone. TSS, however,
seems to be claiming precisely that, by suing SpinLife for its use of the ordinary, generic words
“scooter” and “store.”
Even the affirmed jury instruction from Bath & Body Works, supra, which TSS relies on
for support, actually harms its position. The court’s instruction begins with “[a]lthough plaintiffs
have no exclusive right to use the words ‘bath and body,’ you may consider the manner in which
the defendant used those words on its product.” Id. at 749 (emphasis added). As the instruction
plainly states, TSS has “no exclusive right” to the words “scooter” and “store,” alone, and could
only present a genuine jury question of infringement if it contested SpinLife’s manner of using
the words “on its product,” which is not at issue here. Bath & Body Works, accordingly, advises
against finding SpinLife’s usage of the words “scooter store” in Adword purchases and/or
metadata being subject to a likelihood of confusion analysis.
In Kegan v. Apple Computer, Inc., No. 95 C 1339, 42 U.S.P.Q.2d 1053 (N.D. Ill. 1996),
the court held that a plaintiff who holds a composite mark, such as TSS’s “THE SCOOTER
STORE,” cannot appropriate others’ use of generic portions of that mark, such as SpinLife’s use
of “scooter” and “store,” in this case. In Kegan, plaintiff sued Apple for its use of the suffix “–
GUIDE”, which was a part of its composite registered trademark “MACGUIDE.” Kegan, 42
U.S.P.Q.2d at 1055. Like SpinLife in this case, Apple moved for summary judgment on the
theory that its use of the generic suffix “—GUIDE” could not constitute infringement of
plaintiff’s mark. The court agreed with Apple:
The question of whether the holder of a legitimate trademark can enjoin the use of
a similar term that is likely to be confused with the trademark where that similar
term is itself generic was raised but never decided in Mil-Mar Shoe Co., Inc. v.
Shonac Corp., 75 F.3d 1153, 1160 [ 37 USPQ2d 1633 ] (7th Cir. 1996). In this
case, the court finds that in order to proceed on a trademark infringement claim,
[plaintiff] must first show that the term --GUIDE may be protected. Because -GUIDE is not a registered trademark, the burden is on Elan to show that the term
is not generic.
Kegan, 42 U.S.P.Q.2d at 1057 (citing Technical Publ’g Co. v. Lebhar-Friedman, Inc., 729 F.2d
1136, 1139 (7th Cir. 1984) (“Plaintiff, as claimant to protection for an unregistered mark, bears
the burden of proving that ‘Software News’ is not generic.”).
The Kegan court confirmed that it would conduct a “likelihood of confusion” analysis
only if “—GUIDE” was deemed “suggestive or fanciful” as opposed to generic. See id. at 1060
(finding the term GUIDE to be generic as a matter of law and therefore ruling that “Apple cannot
be said to have infringed on Elan’s MACGUIDE trademark”). Other courts in this circuit have
similarly held that a party’s use of generic terms, without more, cannot constitute infringement of
another’s trademark. In Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, the court stated:
A generic term does not identify and distinguish the product of only one seller.
Thus, the original maker of the product or the first user of the term cannot acquire
an exclusive right to use the term. The policy behind denying trademark
protection to generic names is that “[g]eneric names are regarded by the law as
free for all of us to use. They are in the public domain.”
187 F. Supp.2d 926, 936-37 (M.D. Tenn. 2001) (citing 2 McCarthy on Trademarks, § 12.1-2 (4th
The more recent case of Borescopes R US v. 1800Endoscope.com, LLC, 728 F. Supp. 2d
938 (M.D. Tenn. 2010), following Gaylord, held that “to be protected against unfair competition
. . . a generic term must have acquired some secondary meaning,” Borescopes, 728 F. Supp. 2d at
949. (“A party, however, cannot obtain relief under the Lanham Act for a claim of unfair
competition which is ‘predicated solely on the competing use of a generic term.’”). The Court
therefore holds that TSS’s infringement and unfair competition claims based on “likelihood of
confusion” fail as a matter of law because SpinLife’s Adword purchases and metadata uses are
of generic terms.
Although TSS did not argue it in its briefing, at oral argument TSS asserted that sufficient
evidence existed to create a genuine issue of material fact that the term “scooter store” has
acquired a “secondary meaning” associated with TSS, and hence its infringement claim based on
consumer confusion is not foreclosed. The development of a “secondary meaning” can grant a
party trademark rights in an otherwise unprotected mark:
Marks which are merely descriptive of a product are not inherently distinctive.
When used to describe a product, they do not inherently identify a particular
source, and hence cannot be protected. However, descriptive marks may acquire
the distinctiveness which will allow them to be protected under the Act. Section 2
of the Lanham Act provides that a descriptive mark that otherwise could not be
registered under the Act may be registered if it ‘has become distinctive of the
applicant’s goods in commerce.’ §§ 2(e), (f), 15 U.S.C. §§ 1052(e), (f).
Two Pesos, Inc., v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
The Sixth Circuit has similarly stated that even merely descriptive marks “can, by
acquiring a secondary meaning, i.e., becoming ‘distinctive of the applicant’s goods’ . . ., become
a valid trademark.” Bath & Body Works, 76 F.3d at 748 (quoting Induct-O-Matic Corp. v.
Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984)). The Supreme Court distinguishes a
generic, or “common descriptive,” mark from a “merely descriptive” mark, stating:
Generic terms are not registrable, and a registered mark may be canceled at any
time on the grounds that it has become generic. See §§ 2, 14(c), 15 U. S. C. §§
1052, 1064(c). A “merely descriptive” mark, in contrast, describes the qualities or
characteristics of a good or service, and this type of mark may be registered only
if the registrant shows that it has acquired secondary meaning, i.e., it “has become
distinctive of the applicant's goods in commerce.” §§ 2(e), (f), 15 U. S. C. §§
Park ‘n Fly v. Dollar Park & Fly, 469 U.S. 189, 194 (1984).
As stated above, protection based on acquiring second meaning is not applicable to
generic marks. This Court has determined, supra, that TSS has not met its burden for
overcoming the disputed marks’ genericness. Thus, TSS’s argument for secondary meaning of
the term “scooter store,” to the extent it argued for one, must be denied.
In conclusion, because the Court finds that the disputed terms are generic, they are not
protectable and cannot infringe TSS’s “THE SCOOTER STORE” mark based on creating
consumer confusion. Barrios, 712 F. Supp. at 614. TSS therefore has no trademark rights in the
phrases “the scooter store,” “my scooter store” and other phrases containing “scooter” and
“store” which could form the basis of its lawsuit. SpinLife’s purchase of generic “scooter store”
phrases as Google Adwords and placing them in its website metadata do not infringe TSS’s
registered trademarks under Section 43(a) of the Lanham Act and Texas state law. See
Tumblebus, Inc., 399 F.3d at 761; Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225,
236 n.7 (5th Cir. 2010) (holding that the court’s decision on trademark infringement claims and
unfair competition claims under the Lanham Act were “dispositive of its corresponding claims
under Texas law as well” as “‘[a] trademark infringement and unfair competition action under
Texas common law presents essentially ‘no difference in issues than those under federal
trademark infringement actions’”) (citations omitted).
TSS’s state and federal claims for unfair competition under the same analysis fail as well.
See AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 792 (6th Cir. 2004), superseded in unrelated
part by Hershey Co. v. Art Van Furniture, Inc., 2008 U.S. Dist. LEXIS 87509 at *38 (E.D. Mich.
2008) (noting that “unfair competition claim entails the same analysis” as infringement claims
under Section 43(a) of the Lanham Act); see also Wynn Oil Co. v. Am. Way Serv. Corp., 943
F.2d 595, 604 (6th Cir. 1991) (“Wynn II”) (applying “likelihood of confusion” test to an unfair
competition claim brought pursuant to § 1125).
TSS’s Unjust Enrichment and Misappropriation Claim
Turning to TSS’s affirmative claim for unjust enrichment and misappropriation, SpinLife
argues that the use of unregistered, generic phrases is not actionable under a Texas common law
unjust enrichment theory. SpinLife argues that because its use of the generic phrases is not
“wrongful,” under Texas law, unjust enrichment is not a basis for recovery. See Cistobal v.
Allen, 2010 Tex. App. LEXIS 5829, at *17 (“Unjust enrichment occurs when the defendant
wrongfully secures a benefit which would be unconscionable to retain.”).
A plaintiff may recover under unjust enrichment theory “if a defendant obtains a benefit
from the plaintiff ‘by fraud, duress, or the taking of an undue advantage.’” Id. (quoting
Heldenfels Bros., Inc. v. City of Corpus Christi, 832 S.W.2d 39, 41 (Tex. 1992)). Texas federal
courts have held, in the context of trademark infringement actions, that where “Plaintiffs have
failed to establish a claim for federal or common law trademark infringement, Plaintiffs cannot
establish that a genuine issue of material fact exists as to [their unjust enrichment] claim.”
Cathey Assocs. v. Beougher, 95 F. Supp. 2d 643, 656 (N.D. Tex. 2000). The Court’s dismissal
of TSS’s trademark infringement claims thus also negates its claim for unjust enrichment and
misappropriation based on the same allegations of wrongdoing.
TSS’s State Anti-Dilution Claim
TSS’s lawsuit alleges that SpinLife’s actions dilute the distinctiveness of its registered
trademarks in violation of the Texas Anti-Dilution Act, (Amend. Compl. ¶¶ 104-05), and have
unjustly enriched SpinLife by misappropriating TSS’s property. (Id. at ¶¶ 110-11.) SpinLife
contends that its uses of the generic phrases at issue are not actionable under the Texas antidilution statute or Texas common law unjust enrichment. (Motion at 16, n. 5.)
Texas’s anti-dilution statute states, in pertinent part:
A person may bring an action to enjoin an act likely to injure a business
reputation or to dilute the distinctive quality of a mark registered under this
chapter or Title 15, U.S.C., or a mark or trade name valid at common law,
regardless of whether there is competition between the parties or confusion as to
the source of goods or services.
Tex. Bus. & Com. Code § 16.29 (2011).
SpinLife relies on Half Price Books, Records, Magazines, Inc., v. Barnesandnoble.com,
LLC, 2003 U.S. Dist. LEXIS 24254, at *15 (N.D. Tex. 2003), which held that a plaintiff must
show that its mark is distinctive to establish a dilution claim, to argue that its use of the generic
phrases “the scooter store,” etc. cannot be actionable for dilution. Unlike the plaintiff’s mark in
Half Price Books, however, TSS’s marks for “THE SCOOTER STORE” are federally registered
marks. TSS’s anti-dilution claim does not automatically fail simply because of the Court’s
determination, supra, that the disputed phrases are generic.
Under section 16.29, a plaintiff may seek an injunction to remedy ongoing
dilution of a protected trademark even if it is not in business competition with the
defendant(s) and irrespective of the existence vel non of any likelihood of
consumer confusion. The owner of a distinctive mark may obtain relief under an
anti-dilution statute if there is a “likelihood of dilution” due to 1) “blurring,” a
diminution in the uniqueness and individuality of the mark, or 2) “tarnishment,”
an injury resulting from another’s use of the mark in a manner that tarnishes or
appropriates the goodwill and reputation associated with the plaintiff's mark.
Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1081 (5th Cir. 1997) (emphasis added)
(citing 3 McCarthy, §§ 24:67-69; The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d
955, 965-966 (2d Cir. 1996)).
Thus, while “‘[i]t is clear that anti-dilution statutes. . .are designed to protect only strong,
well-recognized marks,’” Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1081 n. 14 (5th
Cir. 1997) (citation omitted), SpinLife has offered no evidence against TSS’s registered marks
being distinctive, so the Court must assume that they are for purposes of the instant motion. Cf.
Half Price Books, 2003 U.S. Dist. LEXIS at *15 (“[T]he court concludes that the mark ‘Half
Price Books’ is not distinctive and therefore Half Price has not shown a substantial likelihood of
success on its anti-dilution cause of action.”). Likewise, SpinLife did not address the “likelihood
of dilution” alleged by TSS, which under Exxon Corp. does not depend on the “likelihood of
consumer confusion” issue decided by the Court here. Accordingly, SpinLife’s motion does not
provide a sufficient basis for deciding TSS’s state law anti-dilution claim at this time.
For the reasons stated above, Defendant SpinLife’s Motion for Partial Summary
Judgment is hereby GRANTED in part, and DENIED in part. The phrases “the scooter store,”
“scooter store,” and other such phrases containing “scooter store” are generic, and Plaintiff TSS
has no trademark rights in the use of these phrases.
Defendant’s requested relief for a declaratory judgment in Counts three and five of its
Amended Counterclaim is hereby GRANTED in part. SpinLife’s alleged use of the generic
terms “the,” “scooter” and “store,” and combinations of the same do not infringe Plaintiff’s
trademark rights in U.S. Registration Nos. 2,710,502; 2,714,979; 2,912,774; and 3,017,227.
Plaintiff’s affirmative claims for trademark infringement under the Lanham Act, 15
U.S.C. § 1125(a), and Texas state law, are hereby DISMISSED. Plaintiff’s claims for unfair
competition under federal and state law are also hereby DISMISSED.
The Court makes no determination regarding Plaintiff’s state law claim under Texas’s
anti-dilution statute, Tex. Bus. & Com. Code § 16.29.
IT IS SO ORDERED.
s/Algenon L. Marbley
ALGENON L. MARBLEY
UNITED STATES DISTRICT JUDGE
DATED: December 21, 2011
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