B. Balance of Harms
Assuming that the defendants are infringing on the plaintiff's trademark, he will suffer irreparable injury. On the other hand, if this court enters a temporary restraining order enjoining the promotion, and subsequently finds that there has been no trademark infringement, the defendants will suffer irreparable injury. The halting of this promotion in midstream could have a serious effect on the reputation of both Heileman and Hadley. The court will discuss the harms to each defendant separately.
Hadley's livelihood depends on its ability to create original ideas such as the SUPER TICKET promotion. If this court determines that Hadley imitated the plaintiff's promotion, it could have a serious impact on its ability to generate new business. In addition, a temporary restraining order could jeopardize Hadley's relationship with Heileman. The loss to Hadley of its hard earned reputation for developing original promotions coupled with the potential loss of Heileman as a customer, would be irreparable.
The loss to Heileman of its valued customers would be difficult to calculate if this promotion were to be temporarily restrained. Heileman's customers, who purchased Old Style beer with the expectation of winning valuable prizes, would be frustrated. The plaintiff, in his complaint, has requested that Hadley "destroy or otherwise dispose of its infringing product." The cost to Heileman if it were forced to recall 4,000,000 cartons of beer would be enormous. In addition, the promotion, which has been running for several months, only has three more weeks to go. Heileman has already invested over a million dollars in this campaign. To halt the promotion at this late date, could undermine the entire campaign. In addition, it would be forced to develop a new campaign in a relatively short period of time.
C. Likelihood of Success on the Merits
The plaintiff has virtually no chance of succeeding on the merits of his claim. The defects in the plaintiff's position are two fold: (1) the plaintiff has failed to show a protectible property interest in his use of the words SUPERTICKETS; and (2) even if the court were to find a protectible property interest, the plaintiff has not demonstrated any likelihood of confusion. In addition the defendants have a very strong likelihood of succeeding on their fair use defense. 15 U.S.C. § 1115(b)(4). The court will discuss each of these points in turn.
The plaintiff has no formal trademark registration, and therefore has the burden to establish a protectible right. In order to demonstrate a protectible property right, the plaintiff must demonstrate that the words "SUPERTICKETS" has acquired a secondary meaning in the mind of the consuming public. That means that the plaintiff must demonstrate that the primary significance in the minds of the consuming public is not the product but the producer. Kellogg Company v. National Biscuit Company, 305 U.S. 111, 119, 83 L. Ed. 73, 59 S. Ct. 109 (1938). See also M.B.H. Enterprises, Inc. v. Woky, 633 F.2d 50, 54 (7th Cir. 1980) ("Its purpose, thus is to separate those goods or services from others in the public consciousness, to identify them as a product of a single source, and to represent them in the mind of the public"). There has been virtually no evidence presented that the consuming public associates the words SUPERTICKETS with the plaintiff. Furthermore, there has been no evidence of actual confusion. In fact, the defendant, Heileman, has received over 12,000 responses to its promotion and not one person has confused the promotion with the plaintiff's SUPERTICKETS game.
The plaintiff has also failed to show a likelihood of confusion. The most important factors in determining whether there is a likelihood of confusion is the similarity of the marks, actual confusion and the intent of the infringer. Henri's Food Products v. Kraft, 717 F.2d 352, 355 (7th Cir. 1983). As noted above, the plaintiff has failed to demonstrate any actual confusion at the consumer level. Furthermore, the court finds that the marks are dissimilar. Not only are the promotional marks different in colors and layout, but they have a different print style. The likelihood of confusion is also substantially diminished by the fact that in every instance where the defendants use the words SUPER TICKET, their Old Style trademark is prominently displayed. Finally, the plaintiff has failed to present any evidence that at the time the promotion was conceived, the defendants were aware of the plaintiff's SUPERTICKET game.
The defendants have a very strong likelihood of prevailing on the Lanham Act's fair use defense. 15 U.S.C. § 1115(b)(4). The elements of this defense are good faith and descriptiveness of the mark. Woky, 633 F.2d at 54. The 7th Circuit described the test this way, "if the defendant intended in good faith merely to describe and not to designate its services by its slogans, and if the slogans did in fact describe the services and not designate them, the defendant is entitled to the fair use defense." Id. As previously noted, the defendants use of the name SUPER TICKETS was done in good faith. Furthermore, the name SUPER TICKETS, as used by the defendants, merely describes the promotion. The ticket that the consumer receives is in fact a special or super ticket that entitles him to win valuable prizes and to receive a discount on the purchase of beer.
D. Public Interest
Because there is very little likelihood of confusion, the public will not be harmed by this promotion. On the other hand, if the promotion is halted, the consumers who have purchased Old Style beer with the expectation of winning prizes will be frustrated. In addition, the prohibition of using the common descriptive words super and tickets could stifle future innovative promotional ideas such as this one. The public interest is clearly in favor of the defendants.
The balance of equities favor the defendants since they will be irreparably harmed by a temporary restraining order, and the plaintiff has virtually no chance of succeeding on the merits.
For the foregoing reasons, the court denies the plaintiff's request for a temporary restraining order.