Appeal from the Circuit Court of Cook County; the Hon. Albert
Green, Judge, presiding.
PRESIDING JUSTICE LINN DELIVERED THE OPINION OF THE COURT:
Rehearing denied July 26, 1984.
On January 22, 1974, plaintiff, Loyd Thompson, and his business partner, Guenther Herden, entered into a contract with Robert Gora for the sale of a business known as "Spring Green Landscaping," founded by Gora, who operated it from 1966 through 1974. In addition to customer lists, vehicles, machinery and equipment, the sale included the good will of the business and use of the business's name, which Gora had registered in Cook County under the Assumed Name Statute in May 1968. Plaintiff registered the service mark "Spring Green" under the Illinois Trademark Act in May 1978.
Gora described the nature of Spring Green Landscaping as offering lawn maintenance, reconstruction and a "complete landscaping package." A 1971 flier sent to prospective customers advertising Spring Green Landscaping described the lawn maintenance program offered as including
"Weekly lawn cutting and pick-up
Fertilizing entire lawn area twice a year
Trimming of any shrubs and evergreens up to three times a year
Monthly edging of sidewalk areas
Weeding around shrubs and any existing flower beds"
When plaintiff purchased the business in 1974, approximately three-quarters of the customer accounts involved fertilization as part of their lawn maintenance program. Plaintiff testified that over 50% of his customers have fertilizer and weed killer applied to their lawns.
Gora originally operated Spring Green Landscaping out of Brookfield but gradually expanded his services to customers in areas including LaGrange, Hinsdale, Darien, Naperville and Mount Prospect. Plaintiff operates the business out of Hinsdale and services communities in Cook, Du Page, and Will counties. Between 1974 and 1977, plaintiff advertised his business in the yellow and white pages of the telephone directories for the western suburbs of Chicago. In 1979, he also began advertising in the Contractors Trade Directory and paying the Welcome Wagon to distribute, in Oak Brook, a pot holder with the words "Spring Green" on it. In 1982, he resumed advertising, after a 10-year lapse, in the Contractors Register; and in 1981 and 1982, he began to advertise under the "Lawn Maintenance" category, in addition to the "Landscaping" category, so that in the Yellow Pages of the telephone directory for the western suburbs, his business listing appeared in the same column as defendant, "Spring-Green Lawn Care Corporation." The mark "Spring Green" appears on plaintiff's business cards, business records and landscaping equipment, including the pickup trucks which carry his equipment to the customers' residences.
Defendant, Spring-Green Lawn Care Corporation (Spring-Green), is in the business of liquid chemical fertilization and insect and weed control for lawns, bushes and trees. Spring-Green was incorporated in Delaware in January 31, 1977, and certified to do business in Illinois on March 11, 1977. On March 21, 1977, Spring-Green filed an application with the U.S. Patent and Trademark Office for registration of its service mark "Spring-Green." When defendant's mark was published for opposition, plaintiff filed an opposition, and the record suggests no U.S. patent was ever issued. On March 22, 1977, defendant obtained a certificate of registration for the mark "Spring-Green" from the State of Illinois and has obtained State service mark registration in Iowa and Indiana as well.
The chemical lawn treatment concept upon which Spring-Green was founded was developed by defendant William R. Fischer, a director, shareholder, and president of the corporation. Defendant H.R.M. Enterprises, Inc. (H.R.M.), is a franchisee of Spring-Green, and defendant Edward Carroll was manager of H.R.M.
Spring-Green began franchising its operation in 1977 through a pilot program covering communities in the western suburbs of Cook County, with its principal place of business in Naperville, Illinois. At the time of trial, Spring-Green had expanded to 41 franchises operating throughout the northern Illinois area.
The basic Spring-Green program of lawn care consists of four applications per year of a chemical fertilizer, including weed, crabgrass and insect control. The liquid chemical fertilizer is delivered in tank trucks and is sprayed on the lawn. The program is limited to lawn treatment and includes no landscaping or lawn mowing.
Defendant's logo consists of the words "Spring-Green" in white letters on a green background and a stylized "SG" formed around droplets, in a circular form. Although the logo is sometimes captioned with the words "Professional Lawn & Tree Care," "Spring-Green" is the salient part of the mark. The mark is used on the corporation's advertising brochures, envelopes, office forms, stationery, and trucks. Spring-Green advertises in the yellow pages of the telephone directory for the western suburbs, also under the headings of "Landscaping" and "Lawn Maintenance."
In April 1979, plaintiff first learned of the existence of Spring-Green and, through his attorney, sent Spring-Green and H.R.M. a cease and desist letter claiming his exclusive right to use the mark "Spring Green." On April 24, 1978, Thompson's attorney sent a second cease and desist notice to Spring-Green. Defendant Fischer claims it was at this time that he first learned of the existence of Spring Green Landscaping. Defendant Carroll, however, testified that he had known of Spring Green Landscaping for "several years" prior to actual receipt of the cease and desist notice.
Defendants continued and continue to use and advertise the service mark "Spring-Green" in their lawn care franchising business and to expand their franchise operation.
In July 1978, plaintiff filed a seven-count complaint, alleging Federal and State statutory service mark infringement (15 U.S.C. § 1125(a) (1982); Ill. Rev. Stat. 1981, ch. 140, par. 19), common law infringement, dilution of trade name (Ill. Rev. Stat. 1981, ch. 140, par. 22), and common law and statutory unfair competition (Ill. Rev. Stat. 1981, ch. 121 1/2, par. 312). Both parties moved for summary judgments; upon both motions being denied, trial commenced.
At trial, plaintiff introduced four witnesses who testified as to their actual confusion between the two service marks "Spring Green" and "Spring-Green." In addition, plaintiff testified that he had received over 300 telephone calls between 1978 and 1982 from callers who were actually seeking Spring-Green, the defendant corporation. Plaintiff also submitted into evidence letters and checks, intended for the defendant, that had mistakenly been sent to plaintiff.
Defendants moved for a directed finding at the close of plaintiff's case. On March 25, 1983, the trial court granted defendants' motion and dismissed plaintiff's case with prejudice. It is from the order ...