The opinion of the court was delivered by: JAMES MORAN, Senior District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff Fix-A-Dent, Inc., brought this action against
defendants Qwikway Dent Technology, Inc. and Progressive Casualty
Insurance Company, alleging they infringed its registered
trademark, "FIX-A-DENT," in violation of the Lanham Act (the Act)
and state law. Qwikway now moves for judgment on the pleadings,
claiming that plaintiff's mark is invalid and should be cancelled.
For the following reasons, defendant's motion is denied.
Plaintiff is a Texas corporation that repairs cars damaged by
hail and similar objects, by using a paintless dent-removal
service a special process that removes dents and preserves the
car's original paint and polish. Plaintiff began operating under
the name Fix-A-Dent in 1993, and ten years later it registered
that name with the Patent and Trademark Office. Qwikway is an
Arkansas corporation that also offers paintless dent-repair
services, and plaintiff alleges that it is a preferred vendor for
Progressive, who allegedly refers its customers to Qwikway.
The dispute is rooted in Qwikway's advertising campaign, which
uses the phone number "1-800-FIX-A-DENT" to promote Qwikway's
services. Defendants have distributed promotional material displaying the allegedly infringing phone
number in markets where plaintiff does business. Defendants
continue using the allegedly infringing phone number despite
plaintiff's objections and requests that they cease the practice.
Plaintiff believes that the phone number is confusing to
consumers, inducing them to mistake Qwikway's services for
Fix-A-Dent's, and ultimately diverting them, causing plaintiff
lost profits and diminished goodwill.
Plaintiff accuses defendants of trademark infringement and
false designation of origin, in violation of
15 U.S.C. § 1125(a)(1)(A). It also asserts a state law claim, arguing that
defendants are liable for deceptive trade practices under
815 ILCS § 510/2 and should be permanently enjoined from using the
mark "FIX-A-DENT." Qwikway argues that plaintiff's mark receives
no protection under the Act because it is either generic or
descriptive, and contends that the mark should be cancelled.
Qwikway seeks judgment on the pleadings under FED. R. CIV. P.
12(c). A Rule 12(c) motion is reviewed under the same standard as
a Rule 12(b)(6) motion to dismiss for failure to state a claim.
Northern Ind. Gun & Outdoor Shows v. City of S. Bend,
163 F.3d 449, 452 (7th Cir. 1998); Lanigan v. Village of East Hazel
Crest, 110 F.3d 467, 470 n. 2 (7th Cir. 1997). Plaintiff's
factual allegations are accepted as true and all reasonable
inferences are drawn in its favor. Hentosh v. Herman M. Finch
Univ., 167 F.3d 1170, 1173 (7th Cir. 1999); GATX Leasing
Corp. v. National Union Fire Ins. Co., 64 F.3d 1112, 1114
(7th Cir. 1995). Since a Rule 12(c) motion seeks judgment on
the pleadings, matters outside the pleadings are excluded.
Church v. General Motors Corp., 74 F.3d 795, 798 (7th Cir.
1996). A Rule 12(c) motion is granted "only when it appears
beyond a doubt that the plaintiff cannot prove any facts to support a claim for relief and the moving party demonstrates that there are
no material issues of fact to be resolved." Brunt v. Service Employees
Intern. Union, 284 F.3d 715, 718-19 (7th Cir. 2002).
"Marks are classified into five categories of increasing
distinctiveness: 1) generic, 2) descriptive, 3) suggestive, 4)
arbitrary, and 5) fanciful." Mil-Mar Shoe Co., Inc. v. Shonac
Corp., 75 F.3d 1153, 1156 (7th Cir. 1996) (citing Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992)).
The degree of trademark protection a mark receives depends on its
distinctiveness. Platinum Home Mortg. Corp. v. Platinum Fin.
Group, 149 F.3d 722, 727 (7th Cir. 1998). Qwikway argues
that plaintiff's mark is "generic and/or merely descriptive," of
the services that it and plaintiff provide to consumers.
Presumably, Qwikway contends that the mark is generic, or if it
is descriptive then it lacks secondary meaning. The mark cannot
simultaneously occupy both categories a generic term receives
no trademark protection and a descriptive term may receive
trademark protection.*fn1 See Liquid Controls Corp. v.
Liquid Control Corp., 802 F.2d 934, 935 (7th Cir. 1986).
Generic terms are not protectable because they "are commonly
used and [do] not identify any particular source." Platinum
Home, 149 F.3d at 727. A descriptive mark "`describes the
ingredients, qualities, or characteristics of an article of trade
or a service.'" Id. (quoting M.B.H. Enters. v. WOKY, Inc.,
633 F.2d 50, 54 (7th Cir. 1980)). Descriptive marks are
generally "poor means of distinguishing one source of services
from another and because they are often necessary to the
description of all goods or services of a similar nature'"
(Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 906(7th
Cir. 1983)) and are thus not protectable unless they have a
secondary meaning that helps distinguish them from other sources.
Mil-Mar, 75 F.3d at 1157; Ty Inc. v. Perryman, 306 F.3d 509, 513-14
(7th Cir. 2002). Suggestive, arbitrary, and fanciful terms
receive trademark protection because they are inherently
distinctive. Platinum Home, 149 F.3d at 727.
Plaintiff has registered "FIX-A-DENT" and we thus presume the
mark is not generic, and if it is descriptive that it possesses a
secondary meaning. See Packman v. Chicago Tribune Co.,
267 F.3d 628, 638 (7th Cir. 2001). Qwikway tries to overcome that
presumption by arguing that plaintiff has admitted that its mark
is generic in its pleadings and brief when it states that Qwikway
is in the business of fixing dents, and may tell consumers that
it "fixes dents" and "fixes and repairs dents." That argument
fails. What Qwikway views as a concession of genericness is
nothing more than plaintiff acknowledging that it and Qwikway are
competitors in the same market and may use widely adopted generic
terms to promote their services to consumers in that market.
Qwikway ignores the differences between "fixes dents" and
"FIX-A-DENT," and it never accurately mentions plaintiff's mark
in its briefs.*fn2 "FIX-A-DENT" and "fixes dents" are simply
different terms-both in their plain language and legal
significance. While "fixes dents" refers to a kind of service and
is thus generic, the same cannot be said of "FIX-A-DENT," which
could denote plaintiff's specific service.
It is true that the component terms of plaintiff's mark are
common words that both appear in the dictionary, but they are not
consequently generic. In GIMIX the district court found the
phrase "auto page" to be generic, but the Court of Appeals
disagreed, noting that the term was susceptible to an "abundance
of meaning" and was descriptive of characteristics of plaintiff's
services. GIMIX, 699 F.2d at 906-07; see also Liquid
Controls, 802 F.2d at 937 n. 5. Similarly, "FIX-A-DENT"
resembles "Fixodent," a dentures adhesive, not something to be used to repair hail damage on one's car. Plaintiff's mark has
an inherent ambiguity and a range of possible meanings, which
indicates that the term does not refer to a general class or kind
of service such as the terms "car wash" or "hair salon."
A firm may not trademark generic terms that are irretrievably
lodged in the public domain in order to gain an unfair advantage
over its competitors. Henri's Food Prods. Co., Inc. v. Tasty
Snacks, Inc., 817 F.2d 1303, 1305 (7th Cir. 1987).
Preventing firms from accurately communicating information to
consumers risks creating market failures. See Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 163-164 (1995); Door
Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 171
(7th Cir. 1996). Granting plaintiff exclusive use of
"FIX-A-DENT" would not risk market failure because plaintiff
admits, as it must, that defendant may say that it fixes and
repairs dents. Thus Qwikway has no difficulty communicating any
information to the public, such as the fact that it competes with
plaintiff in the paintless dent-removal market.
At this early stage in the proceedings, all signs indicate that
"FIX-A-DENT" is a descriptive term that describes what plaintiff
does,*fn3 but the mark "does not identify one particular
source or designate the specific origin of those services without
proof of secondary meaning." Platinum Home, 149 F.3d at 728. A
court considers the following factors when it considers whether
secondary meaning exists: (1) direct consumer testimony; (2)
consumer surveys; (3) exclusivity, length, and manner of use; (4)
amount and manner of advertising; (5) amount of sales and number
of customers; (6) established place in the market; and (7) proof
of additional copying. Echo Travel, Inc. v. Tracel Assoc.,
Inc., 870 F.2d 1264, 1267 (7th Cir. 1989); see also
Packman, at 639 (quoting Blau Plumbing, Inc. ...