was in the market first, an undisputed fact, and that RABB's product inspired a competitor, an irrelevant fact.
Although the palming off factor therefore does not, on this record, advance RABB's claim, neither does it advance DEX's argument that no genuine issues of fact regarding a likelihood of confusion exist.
In sum, DEX has not identified, in the current record, an absence of material fact concerning the existence of a likelihood of confusion with regard to the trade dress of the parties' products. Questions still exist regarding the degree of actual or likely confusion regarding the "origin, sponsorship, or approval" of Mommy Bear, if any, experienced by consumers when faced with that product, the strength of DEX's trade dress, and DEX's intent with respect to "palming off." Therefore, this Court does not grant summary judgment on this count.
C. Trademark Infringement
RABB also alleges trademark infringement pursuant to common law and the Lanham Act, 15 U.S.C. § 1114, complaining that DEX's Prop-A-Bye Baby mark is confusingly similar to RABB's marks Rock-A-Bye, Rock-A-Bye Bear, and Rock-A-Bye Bunny as well as its trade name Rock-A-Bye Baby. The elements of a cause of action for trademark infringement are the same as those for trade dress infringement. To prevail at trial, a plaintiff must demonstrate that its trademark is protectible and that it was infringed. Smith Fiberglass Products, Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993).
DEX argues that RABB's marks are not protectible because they are generic and that DEX has not infringed on RABB's marks because DEX's Prop-A-Bye Baby is not at all similar to RABB's marks.
DEX argues that the only commonality between its Prop-A-Bye Baby and RABB's marks is the "A-Bye" portion, which DEX argues is generic. "A generic term is one that is commonly used as the name of a kind of goods." Forum Corp. of North America v. Forum Ltd., 903 F.2d 434, 444 (7th Cir. 1990) (quoting Liquid Controls Corp. v. Liquid Control Corp, 802 F.2d 934, 935 (7th Cir. 1986)). DEX provides the names of three products and seven businesses that use some variation of "A-Bye" to describe themselves. Clute Dec., PP 18, 19.
RABB responds by disclaiming any attempt to enforce a trademark on "A-Bye" by itself. RABB alleges that Prop-A-Bye Baby is confusingly similar to its trade name Rock-A-Bye Baby as well as a violation of its registered marks that include the term Rock-A-Bye. RABB relies on the phonetic and visual similarity of the two phrases to assert a likelihood of confusion. The Court must consider the marks taken as a whole. Scandia Down Corp., 772 F.2d at 1431; James Burrough, Ltd., 540 F.2d at 275. DEX makes no other attempt to challenge the protectibility of RABB's marks or its trade name, Rock-A-Bye Baby. Therefore, the Court will again assume, for the purposes of this motion only, that RABB's marks and trade name are protectible.
The analysis of the likelihood of confusion between the marks is the same as the analysis regarding likelihood of confusion for trade dress. The same seven factor test applies. AHP Subsidiary Holding Co. v. Stuart Hale Co., 1 F.3d 611, 615 (7th Cir. 1993). Again, DEX ignores the seven factor test, although it does provide some evidence that relates to the factors. The Court will consider this evidence, keeping in mind that the weight accorded to each factor may vary from case to case and that no single factor is determinative. Id.
1. Similarity of the Marks
DEX argues that the marks "are not at all similar" and again provides no evidence of consumer reaction to the marks, relying on the Court to engage in a side by side comparison. However, the phonetic and visual similarity of Prop-A-Bye Baby and the Rock-A-Bye marks
cannot reasonably be denied. The sound of a mark is a relevant consideration when determining the likelihood of confusion. Forum Corp. of North America v. Forum, Ltd., 903 F.2d 434, 441 (7th Cir. 1990). As the Court must consider the marks in their entirety, the Court finds that enough similarity between the marks exists to preclude a holding that there is no issue of material fact with regard to the similarity of the marks.
2. Similarity of the Products
DEX argues that the products are dissimilar because its Prop-A-Bye Baby is a pillow, while RABB's products are toys. RABB provides evidence that it has applied its Rock-A-Bye Baby trade name, with various suffixes, to a wide variety of products, including "Shield-A-Burn," "Carta-Kid," "Comfy Wipe Warmer," "Baby's First Year," "My Potty Game" and others. The Court therefore finds that RABB's characterization of the products as "infant care products" is more accurate. This is not to say the Court considers the product lines to be identical, but the Court is unwilling to hold that no genuine issue of material fact exists regarding the similarity of the products.
3. Other Factors
The analysis relevant to the remaining five factors is not materially different than the analysis performed with respect to the claim of infringement of RABB's trade dress. DEX again provides no evidence regarding the area and manner of concurrent use of the marks or the degree of care likely to be used by consumers. The evidence that DEX provides regarding the strength of RABB's marks, actual confusion, and its intent in using Prop-A-Bye Baby has already been discussed in relation to RABB's trade dress claim. The remaining factors do not materially persuade the Court one way or the other in regard to a likelihood of confusion among consumers.
DEX also argues that the United States Trademark Office ("USTO") has implicitly found no confusion between Prop-A-Bye Baby and RABB's marks because DEX's mark has been registered. The seven factor test set out by the Seventh Circuit is not exhaustive, see Nike, Inc., 6 F.3d at 1228, so the Court will consider this argument.
The issue of likelihood of confusion in a registration proceeding is not identical to that issue in an infringement action. In a proceeding opposing a registration, "likelihood of confusion is determined only as to the registrability of the applicant's mark exactly as shown in the application and only as to the goods listed, regardless of actual usage." Jim Beam Brands Co. v. Beamish & Crawford, 937 F.2d 729, 734 (2d Cir. 1991) (quoting 2 J. McCarthy, Trademarks and Unfair Competition § 32:31, at 737-38 (2d ed. 1984)) (holding that defendant was not collaterally estopped from arguing no likelihood of confusion in an infringement case even though the registration of its mark had been cancelled in an earlier proceeding). As this Court has already noted, in an infringement action, the inquiry is much broader, encompassing not only the actual usage, but considering the trade dress, proximity of the parties' marks and other factors which make up the "perceptual gestalt." Therefore, the fact that the USTO granted DEX a registered trademark on its Prop-A-Bye Baby mark is not sufficient to state that there is no genuine issue of material fact with respect to a likelihood of confusion.
In sum, DEX has failed to persuade this Court that there is no likelihood of confusion between its Prop-A-Bye Baby mark and RABB's various marks. This is particularly true in light of test set down by the Seventh Circuit in James Burrough, Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 275 (7th Cir. 1976). In order to win summary judgment on an infringement suit, a defendant must show that there is no likelihood that consumers generally familiar with RABB's marks would, upon seeing only DEX's mark, to believe Prop-A-Bye Baby was in some way related to, or connected or affiliated with, or sponsored by RABB. Id. at 274. Summary judgment must be approached cautiously with respect to fact bound inquiries. As genuine issues of material fact exist with regard to many, if not all, of the seven factors used to determine whether a likelihood of confusion exists, DEX's motion for summary judgment with respect to Counts I , II and VIII, alleging trademark and trade dress infringement, are DENIED.
D. False Advertising
RABB alleges that DEX has falsely advertised its Mommy Bear and Prop-A-Bye Baby products in three instances. First, RABB alleges that DEX falsely advertised that Prop-A-Bye Baby is a registered trademark. Second, RABB alleges that DEX falsely advertised that Mommy Bear was "clinically proven." Third, RABB argues that DEX falsely advertised that the Mommy Bear sound box contains "actual recorded sounds of the womb."
In order to prevail on a claim for false advertisement under the Lanham Act, a plaintiff must show that the defendant's advertisement is (1) false and misleading, (2) actually or likely to deceive a substantial segment of their audience, (3) material in their effects on purchasing decisions, (4) for goods that entered interstate commerce, and (5) actually or likely to injure the plaintiff. Truck Components, Inc. v. K-H Corp., 776 F. Supp. 405, 408 (N.D. Ill. 1991).
DEX claims it is entitled to judgment as a matter of law on this claim on each of RABB's three allegations. First, DEX argues that its advertisement that Prop-A-Bye Baby was a registered trademark, although technically false, does not entitle RABB to relief because DEX's statement has nothing to do with the nature of DEX's product. The Lanham Act, on which RABB relies, provides that false or misleading representations of fact which "in commercial advertising or promotion, misrepresent the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities" are a source of civil liability. 15 U.S.C. § 1125. As the existence of a registered trademark is not relevant to the "nature, characteristics, qualities, or geographic origin" of the Prop-A-Bye Baby pillow, RABB's claim under the Lanham Act cannot succeed based on a false representation that Prop-A-Bye Baby was a registered mark.
Second, DEX argues that its advertising Mommy Bear as "clinically proven" was not false. To support this statement, DEX provides information filed under seal. Pending a further hearing on under seal submissions, suffice it to say that there are a number of genuine issues of material fact, so that summary judgment on RABB's false advertising claim is inappropriate.
DEX also argues that its advertisement stating that Mommy Bear contains "actual recorded sounds of the womb" cannot provide the basis for a false advertising claim. Again, DEX relies on the literature which accompanied the compact disc from which the sound used in Mommy Bear was taken. That literature provides, "the recording . . . was taken near the head of the fetus in a woman eight months pregnant." Supp. Clute Dec., Ex. A. Although this evidence shows that the producer of the sound claims it is intrauterine, it does not, by itself, demonstrate that no question of material fact exists with regard to the truth or falsity of DEX's advertisement. DEX, in the context of a false advertising claim, essentially asks this Court to blindly assume the truthfulness and reliability of the advertisement of some third party producer of sounds. In light of the procedural posture of this motion, the Court will not do so.
For the foregoing reasons, DEX's motion for summary judgment with respect to Count III, alleging false advertisement, is DENIED.
E. Commercial Disparagement
DEX moves for summary judgment based on the absence of any evidence in the record establishing that DEX disparaged RABB or RABB's products. As such they have moved for summary judgement and the burden shifts to RABB to point to specific parts of the record that establish at least a genuine issue of material fact as to its right to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986).
RABB responds, in conclusory fashion, as follows:
RABB is aware of evidence that DEX has made statements that are disparaging to RABB and its product trade names. These statements were made in DEX's promotion of its Mommy Bear at a trade show in Dallas Texas in 1993.
Pl.'s Mem. in Opp'n to Def.'s Mot. for Summ. J., p. 10. RABB has not gone beyond the pleadings, as required by Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). RABB provides no evidence of any disparaging statements.
The Court will give RABB two weeks to file supplemental information on this issue and DEX two weeks to respond. The Court will rule by mail.
F. Deceptive Trade Practices
RABB alleges a violation of the Uniform Deceptive Trade Practices Act, codified in Illinois at 815 ILCS 510/1 - 510/7. The Act provides, in part:
A person engages in a deceptive trade practice when, in the course of his business, vocation or occupation, he: