White of Dublin, LLC v. After the Ring, LLC

Filing 24

OPINION AND ORDER granting in part and denying in part 9 Motion for TRO and Preliminary Injunction. Signed by Judge Algenon L. Marbley on 4/5/2013. (pes1)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION
WHITE OF DUBLIN, LLC.,
Plaintiff,
v.
AFTER THE RING, LLC.,
Defendant.

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Case No. 2:13-CV-120
JUDGE ALGENON L. MARBLEY

Magistrate Judge Elizabeth P. Deavers

OPINION & ORDER
I. INTRODUCTION
This matter is before the Court on Plaintiff White of Dublin, LLC.’s (“White of Dublin”)
Motion for a Temporary Restraining Order And Preliminary Injunction (“Motion”) (Doc. 9),
filed on March 6, 2013. Following a Local Rule 65.1 Conference on March 7, 2013, the Court
issued a Temporary Restraining Order on March 8, 2013. A preliminary injunction hearing was
held on March 27, 2013. For the reasons stated herein, Plaintiff’s Motion for a Preliminary
Injunction is GRANTED IN PART and DENIED IN PART.
II. BACKGROUND
Plaintiff, White of Dublin, is a bridal boutique that operates a single store in Dublin, OH.
White of Dublin first advertised its services under that name in May 2011 and opened at its
current location in October 2011. According to the Verified Complaint, Plaintiff’s business
consists of “promoting and selling designer wedding gowns, eveningwear, mother-of-the-bride
attire, mother-of-the-groom attire, bridesmaids’ attire, flower-girl dresses, related accessories and
alteration services.” Verified Complaint, Doc. 1 at ¶ 8.

In December 2012, Plaintiff became aware that Defendant, After the Ring, planned to
open a bridal boutique offering substantially similar services at a location roughly 500 meters
from White of Dublin’s store. There is no question that Plaintiff and Defendant are direct
competitors. After the Ring first organized as an LLC, under Ohio law, in February 2010. In
March 2010, After the Ring registered the name “The White Dress Co.” in Ohio, more than one
year prior to Plaintiff using the name “White of Dublin.” Id. at ¶ 25. Also in 2010, Defendant
attempted to rent space in the shopping center where Plaintiff is currently located, but was unable
to secure the necessary start-up capital. Defendant’s Affidavit, Doc. 16-1 at 1. Defendant
eventually opened in a nearby location as “The White Dress Co.” on March 23, 2013. Id. at ¶ 21.
Plaintiff produced approximately one dozen affidavits from people who stated they were
confused regarding the distinct identities of Plaintiff’s and Defendant’s businesses.
On March 7, 2013, this Court held a Local Rule 65.1 Conference on Plaintiff’s Motion
for Temporary Restraining Order (Doc. 9). Following the conference, the Court issued an Order
granting in part and denying in part Plaintiff’s Motion. Doc. 13. The Court enjoined Defendant
from using its stylized mark of “The White Dress Co.,” finding it too closely resembled that of
“White of Dublin.” Id. The Court denied Plaintiff’s request to enjoin Defendant from using the
non-stylized mark, “The White Dress Co.,” preliminarily finding that since it was not likely to
cause confusion, Plaintiff had failed to demonstrate an irreparable injury. Id. On March 27,
2013, the Court held a subsequent hearing on the Motion for Preliminary Injunction. The
Motion has been fully briefed and is ripe for adjudication.
III. STANDARD OF REVIEW
A preliminary injunction is a remedy designed to preserve the status between the parties
pending a trial on the merits. Univ. of Texas v. Camenisch, 451 U.S. 390, 395 (1981). When

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determining whether to grant a preliminary injunction, the Court balances the following four
factors: “(1) whether the movant has shown a strong likelihood of success on the merits; (2)
whether the movant will suffer irreparable harm if the injunction is not issued; (3) whether the
issuance of the injunction would cause substantial harm to others; and (4) whether the public
interest would be served by issuing the injunction.” Overstreet v. Lexington-Fayette Urban
Cnty. Gov’t, 305 F.3d 566, 573 (6th Cir. 2002). These factors are to be balanced against one
another other and should not be considered prerequisites to the grant of a preliminary injunction.
United Food & Commercial Workers Union, Local 1099 v. Sw. Ohio Reg’l Transit Auth., 163
F.3d 341, 347 (6th Cir. 1998). As an extraordinary remedy, a preliminary injunction is to be
granted only if the movant carries his or her burden of proving that the circumstances clearly
demand it. Leary v. Daeschner, 228 F.3d 729, 739 (6th Cir. 2000).
IV. LAW & ANALYSIS
A. Plaintiff’s Mark is Not Inherently Distinctive
Plaintiff’s Complaint states the following four claims: (1) Unfair Competition under 15
U.S.C. § 1125(a); (2) Deceptive Trade Practices under ORC §4165.01 et seq.; (3) Ohio Common
Law Trademark Infringement; and (4) Ohio Common Law Unfair Competition. Specifically,
Plaintiff alleges Defendant’s use of the name “The White Dress Co.” and its associated marks
will mislead and confuse consumers seeking “White of Dublin,” thereby injuring Plaintiff’s trade
and reputation. Since the first prong of the injunctive relief analysis is “likelihood of success on
the merits, the primary question before this Court, then, is whether Defendant’s mark, “The
White Dress Co.,” infringes Plaintiff’s “White of Dublin” mark.
A mark is only protectable if it is sufficiently distinctive. Tumblebus Inc. v. Cranmer,
399 F.3d 754, 761 (6th Cir. 2005). There are five levels of a mark’s distinctiveness recognized

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by federal courts, of which three “are inherently distinctive and are protectable so long as the
putative owner has actually used the mark[:]” (1) suggestive; (2) arbitrary; and (3) fanciful. Id.
Plaintiff does not contend that its mark is arbitrary or fanciful, designations which offer the most
protection, but Plaintiff argues the mark is “suggestive.” Plaintiff’s Motion, Doc. 9 at 13. A
suggestive mark, using a definition originally borrowed from the Seventh Circuit, “suggests
rather than describes an ingredient or characteristic of the goods and requires the observer or
listener to use imagination and perception to determine the nature of the goods.” Id. at n. 5
(quoting Induct-O-Matic Corp. v. Inductotherm Corp., 747 F.2d 358, 362 (6th Cir. 1984).1 In
elaborating on how to determine whether a mark is suggestive, the Fourth Circuit has held
“[s]uggestive marks connote, without describing, some quality, ingredient, or characteristic of
the product.” Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996) (emphasis
added). Plaintiff relies in part on Wynn Oil Co. v. Thomas, 839 F.2d 1139 (6th Cir. 1988),
quoting from a note in which the Sixth Circuit sheds more light on the distinctiveness inquiry,
stating that “[t]he significant factor [in determining whether a mark is sufficiently distinctive to
merit protection] is not whether the word itself is common, but whether the way the word is used
in a particular context is unique enough to warrant trademark protection.” Id. at n. 4 (emphasis
added). In Wynn, the Court held the word “CLASSIC” to be a suggestive trademark when used
by a car wash franchise, observing that “the term CLASSIC . . . is designed to make the
consumer think of the classic cars of the past, and not that they will somehow receive a classic
wash.” Id. at 1190. More significant still, the “CLASSIC” mark in Wynn had been registered

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Although Plaintiff refers to that quotation as the “imagination test,” the Sixth Circuit has not styled the inquiry as a
test. In the Induct-O-Matic Corp. case, the Sixth Circuit borrowed the language regarding “imagination” from a
Seventh Circuit decision, Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir. 1977), as a
means of offering guidance in distinguishing between the five levels of a mark’s distinctiveness.

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with the United States Patent and Trademark Office, which constituted prima facie evidence of
an exclusive right to use the mark in question. Id.
The common thread in all these cases is that for a term to be found “suggestive” it should
not describe the object or service. Here, the word “white” in Plaintiff’s mark describes the bridal
gowns which Plaintiff sells, the core of its business.2 In the United States, “white” is the color
most associated with weddings, and probably the word most associated with weddings.3 Today,
the very phrase “white wedding” is idiomatic. The use of the word “white” is far from “unique”
in the “particular context” of bridal attire “to warrant trademark protection,” to borrow the words
of the Sixth Circuit in Wynn. Rather than unique, such usage is ubiquitous. Unlike the washing
of the car itself in Wynn, which was not “CLASSIC,” the dresses sold by Plaintiff and Defendant
are generally very much “white.”
Although neither party cited to case law which addressed whether the name of a color
was a protectable trademark, the Court takes notice of two such cases from the Second Circuit,
both of which held the name of a color to be descriptive and not protectable. In Clairol Inc. v.
Gillete Co., 389 F.2d 264 (2d Cir. 1968), the plaintiff sued to protect its trademark of the phrase
“Innocent Beige.” The Second Circuit, holding against the plaintiff, noted:
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The Court is mindful of the fact that Plaintiff, as a “couture bridal boutique,” sells goods in addition to bridal
gowns, but Plaintiff’s statements make clear that the core of its business is selling bridal gowns. Plaintiff
represented at the hearing that at least “80-85%” of the bridal gowns it sells are white or a shade of white.
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Plaintiff’s lengthy list of marks that have been found “suggestive” does not include any example of a phrase which
so clearly describes and is so associated with the good or service in question as “white” so describes and is
associated with weddings and bridal attire. The following hypothetical examples are far more analogous. A ruby
vendor could not trademark the word “red” to prevent its competitors from using it, nor could a citrus fruit vendor so
trademark the word “orange.”
Since the Court considers full marks, rather than pieces thereof, the following hypothetical examples better
illustrate the issue. “Red of Ravenna” would not be inherently distinctive enough as a ruby vendor to be protectable
if ruby vendor “The Red Ruby Co.” chose to open nearby. Red simply describes the rubies sold, even if some are
closer to maroon or scarlet. Similarly, citrus fruit vendor, “Orange of Florida” would not be inherently distinctive
such that it could prevent another citrus vendor from opening as “The Orange Fruit Co.” “Orange” describes the
citrus fruits sold. People associate the word “orange” with citrus fruit. The fact that citrus fruit vendors may also
happen to sell yellow or pink grapefruits would not render the “Orange of Florida” mark suggestive.

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Were the term for which Clairol seeks protection ‘Beige,’ rather than ‘Innocent
Beige,’ the invalidity of the term as a trademark would of course be patent. The
word beige is such a descriptive word as will receive less protection than a
fanciful or coined word, on the familiar principle that words in the general
vocabulary which all can use to describe products or services should not be
unduly limited.
Id. at 269. (emphasis added) Although the facts of the cases are distinguishable, this Court finds
the Clairol Inc. reasoning persuasive here. The Second Circuit later relied on that decision in W.
Pub. Co., Inc. v. Rose Art Indus., Inc., holding:
The names of colors, because they are merely descriptive, generally may not be
protected under trademark laws. The law does not favor efforts to monopolize a
common, frequently used word. While some trademark protection may be
available solely to prevent consumer confusion when a descriptive word has
acquired secondary meaning indicative of origin, nevertheless plaintiff may not
appropriate to itself the exclusive use of the word “golden” in connection with
every children’s book toy or game.
733 F.Supp. 698, 699-700 (S.D.N.Y. 1990), aff’d. 910 F.2d 57 (2d Cir. 1990) (emphasis added).
The Court also notes that a cursory internet search conducted by entering the terms “white,”
“bridal,” and “boutique” into Google returns results which include dozens of bridal boutiques
containing the word “white” in their names. There is, for instance: “White on Daniel Island” in
South Carolina; “In White” in Pennsylvania; “White Bridal Boutique” in British Columbia;
“Ivory & White” in Alabama; “The White Dress” in Michigan; and “Something White” in
Cleveland, Ohio. Furthermore, the Court notes, as revealed by the same internet search which
produced the previous list, there is a line of bridal gowns made by clothier Vera Wang simply
called “White.” Surely, Congress has not passed federal trademark laws intending that all these
vendors, and the dozens more similarly named, should be potentially liable for infringing the
trademark of the others.
Plaintiff makes much of its evidence of actual confusion of the respective marks by
multiple people, including at least one potential customer. That evidence, however, is relevant
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only to the likelihood of confusion analysis, not the threshold question of whether the mark is
inherently distinctive. Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Center,
109 F.3d 275, 281 (6th Cir. 1997). Even a strong showing regarding actual confusion cannot be
relied upon to remedy a lack of inherent distinctiveness on the threshold question. This case
demonstrates precisely why that is so. People are often confused as to the source of goods, but
not all this confusion is actionable. If a potential subscriber cannot remember whether it’s the
“New York Times” or the “New York Post” that publishes the Sunday Book Review, it may be
evidence that confusion is likely to result from the respective names. As a threshold matter,
however, there is no cause of action unless “New York Times” has at least a “suggestive” level
of inherent distinctiveness. If every instance of someone not remembering whether she had read
a particular article in the “New York Times,” “New York Post,” “New Yorker,” or “New York
Magazine” was strong evidence of trademark infringement, the federal courts would have time
for little else. Fortunately, since the place name “New York” is merely “geographically
descriptive” in trademark jurisprudence, any such suit would fail the threshold inquiry and not
reach the likelihood of confusion analysis. Leelanau Wine Cellars Ltd. V. Black & Red, Inc., 502
F.3d 504, 513 (6th Cir. 2007). Plaintiff’s mark is geographically descriptive and descriptive of
its merchandise, but Plaintiff here fails to satisfy its burden to show the “White of Dublin” mark
is inherently distinctive for a bridal boutique. Thus, this Court does not reach the likelihood of
confusion analysis.
White is a “common, frequently used word” the use of which is essential to bridal gown
vendors describing their wares. There is nothing in Plaintiff’s use of the word “white” in the
bridal industry that is “unique enough to warrant trademark protection.” Wynn Oil Co., 839 F.2d
at n.4. This is not to say that a mark containing the word “white” or just the word “white” itself

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could never be distinctive enough to warrant trademark protection. In the context of selling
bridal attire, however, this Court finds Plaintiff’s use of the word “white” is not a “suggestive
mark,” nor otherwise inherently distinctive.
B. Plaintiff’s Mark Is Descriptive and Has No Demonstrated Secondary Meaning
Since Plaintiff’s mark is neither fanciful, nor arbitrary, nor suggestive, it must be either
“descriptive” or “generic.” Tumblebus Inc., 399 F.3d at 761. Generic marks receive no
protection, while descriptive marks “are not ‘inherently distinctive,’ but can become protectable
by developing a secondary meaning.” Id. The Fifth Circuit has long held that “[a] mark or trade
dress is descriptive if it ‘identifies a characteristic or quality of an article or service, such as its
color, odor, function, dimensions, or ingredients,” a holding that does not conflict with the law of
the Sixth Circuit. Pebble Beach Co. v. Tour 18 Ltd., 155 F.3d 526, 540 (5th Cir. 1998),
abrogated on other grounds. Consideration of the word “white” with regard to both that
definition of “descriptive” and the literal definition of “describe” demonstrates that “white” is
descriptive. The question now becomes whether Plaintiff’s “White of Dublin” mark has
acquired a secondary meaning. While Plaintiff stated its mark had become recognized in the
local bridal industry, it did not present the alternative argument that its mark was descriptive but
still protectable because it had acquired secondary meaning. Nevertheless, this Court must
consider that possibility.
In the Sixth Circuit, “[t]o acquire a secondary meaning in the minds of the buying public .
. . the article [of merchandise in question] must proclaim its identification with its source, and
not simply stimulate inquiry about it.” Ferrari S.P.A. v. Roberts, 944 F.2d 1235, 1239 (6th Cir.
1991). The Sixth Circuit applies a seven-factor test to determine whether a descriptive mark has
acquired a secondary meaning, a test which considers: (a) direct consumer testimony; (b)

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consumer surveys; (c) exclusivity, length, and manner of use; (d) amount and manner of
advertising; (e) amount of sales and number of customers; (f) established place in the market;
and (g) proof of intentional copying. Abercrombie & Fitch Stores, Inc. v. American Eagle
Outfitters, Inc., 280 F.3d 619 at n. 14 (6th Cir. 2002). Since Plaintiff chose to forego this
argument, however, there is insufficient evidence in the record for the Court to apply this test.
The lack of facts adduced on most of these factors would render an adjudication of the question
speculative at best. The burden for proving a mark is sufficiently distinctive to warrant protection
rests with the party seeking relief, here, the Plaintiff. Plaintiff, by neglecting to brief the Court
on acquisition of secondary meaning or provide the Court with sufficient evidence to consider
the question of secondary meaning, has failed to satisfy its burden. The Court, thus, finds
Plaintiff’s mark is descriptive and not entitled to protection.
C. Temporary Restraining Order of Defendant’s Previous Stylized Mark
Although Plaintiff’s plain mark is not sufficiently distinctive to merit trademark
protection, the Court did preliminarily find that Defendant’s “The White Dress Co.” stylized
mark or logo is substantially similar to Plaintiff’s “White of Dublin” stylized mark. Considering
that the parties are located within 500 meters of one another, are in direct competition, and utilize
many of the same means of advertising, the Court found Defendant’s stylized mark likely to
cause confusion among consumers and possibly injure Plaintiff’s reputation. The stylized marks
are reproduced below:

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PLAINTIFF’S STYLIZED MARKS

DEFENDANT’S STYLIZED MARKS

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Since the issuance of the Temporary Restraining Order, however, Defendant has
discontinued use of that stylized mark. Nevertheless, Plaintiff requests the Court permanently
enjoin Defendant from using its former stylized mark to prevent it from resuming usage upon
expiration of the Temporary Restraining Order. Defendant represented to the Court at the March
27 Hearing that it did not oppose an injunction as to its previously used stylized marks. Thus, for
the same reasons relied upon in this Court’s previous Order (Doc. 13), the Court finds
Defendant’s former stylized marks, illustrated above, likely to cause confusion among
consumers. Their use would, thus, injure Plaintiff’s reputation.4 Defendant is, hereby,
PERMANENTLY ENJOINED from using its stylized marks for “The White Dress Co.” as
they appear in this Opinion & Order. This permanent injunction prevents Defendant from using
these marks in any promotion, advertising, signage, or for any other purpose.
At the March 27 Hearing, Plaintiff provided evidence that Defendant had failed to
prevent the stylized marks, enjoined by the March 8 TRO, from being used in an article written
about Defendant and also that the enjoined marks still appeared in the historical archive on
Defendant’s website and social media pages. While the Court does not sanction Defendant for
violating the TRO, Defendant is ORDERED to remove all occurrences of the enjoined marks
from the various internet instrumentalities under its control, including from the respective
historical archives of those instrumentalities. Any future alleged violation of this Order will
result in Defendant having to show cause as to why it should not be found in contempt.
V. CONCLUSION
Since Plaintiff’s mark is, at most, descriptive without a demonstrated secondary meaning,
Plaintiff does not have a likelihood of success on the merits of its claims. Thus, Plaintiff cannot

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The Sixth Circuit holds that once a party demonstrates a likelihood of confusion or risk to reputation, a “finding of
irreparable injury ordinarily follows.” Wynn Oil Co., 943 F.2d at, 608 (6th Cir. 1991).

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demonstrate it is entitled to the extraordinary remedy of an injunction. Plaintiff’s Motion for
Preliminary Injunction is DENIED insofar as it seeks to enjoin Defendant from using the mark
of “The White Dress Co.”
Plaintiff’s Motion for Preliminary Injunction with regard to Defendant’s stylized marks
herein illustrated is GRANTED. Defendant is PERMANENTLY ENJOINED from using the
marks herein illustrated.
IT IS SO ORDERED.

s/Algenon L. Marbley
ALGENON L. MARBLEY
UNITED STATES DISTRICT JUDGE
Dated: April 5, 2013

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