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Note Family, Inc. v. Vivendi Universal Games

September 4, 2007

NOTE FAMILY, INC., PLAINTIFF,
v.
VIVENDI UNIVERSAL GAMES, INC., DEFENDANT.



The opinion of the court was delivered by: Herndon, District Judge

ORDER

I. Introduction

Now before the Court are two motions: 1) Plaintiff's motion for partial summary judgment (Doc. 35) and 2) Defendant's motion for summary judgment (Doc. 36). For the following reasons, Plaintiff's motion for partial summary judgment (Doc. 35) is GRANTED and Defendant's motion for summary judgment (Doc. 36) is GRANTED.

II. Background

Plaintiff Note Family, Inc. ("Plaintiff") designs and manufactures products to help elementary school children learn about music. Plaintiff began selling its products in the mid-1980s. The products are mainly designed to be used by music educators. Plaintiff registered the trademark*fn1 "Land of Music" with the United States Patent and Trademark Office ("PTO") on August 18, 1992.*fn2 The mark "Land of Music" is for "educational support materials for the teaching of music and music theory to children; namely, books, workbooks, printed sheet music, teaching manuals, and audio and audio visual cassettes sold as a unit." (Doc. 35, Ex. 1.) On May 28, 1998, Plaintiff filed paperwork with the PTO to establish incontestability of the registration. On September 10, 1998, the PTO sent a notice to Plaintiff acknowledging receipt of the paperwork. The notice states, "Your request fulfills the statutory requirements and has been accepted." (Id.)

On February 23, 2005, Plaintiff filed a Complaint against Defendant Vivendi Universal Games, Inc. ("Defendant") alleging trademark infringement, unfair competition, and dilution. (Doc. 1.) Specifically, Plaintiff claims that Defendant has appropriated "Land of Music" "for use in connection with goods and services identical or substantially identical to Plaintiff's Goods and Services." (Id.) On September 22, 2006, Plaintiff filed a motion for partial summary judgment (Doc. 35) seeking an order finding that Plaintiff owns a protectable trademark for "Land of Music." Defendant responded in opposition. (Doc. 43.) That same day, Defendant filed a motion for summary judgment (Doc. 36), which argued that Defendant should be granted summary judgment because, among other things, Defendant does not use "Land of Music" as a trademark, it is entitled to the fair use defense, and Plaintiff has failed to meet its burden of showing likelihood of confusion.

III. Legal Standard for Summary Judgment

Summary judgment is proper where the pleadings and affidavits, if any, "show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c); Oats v. Discovery Zone, 116 F.3d 1161, 1165 (7th Cir. 1997) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)). The movant bears the burden of establishing the absence of fact issues and entitlement to judgment as a matter of law. Santaella v. Metro. Life Ins. Co., 123 F.3d 456, 461 (7th Cir. 1997) (citing Celotex, 477 U.S. at 323). In reviewing a summary judgment motion, the Court does not determine the truth of asserted matters, but rather decides whether there is a genuine factual issue for trial. Celex Group, Inc. v. Executive Gallery, Inc., 877 F. Supp. 1114, 1124 (N.D. Ill. 1995) (Castillo, J.). The Court must consider the entire record, drawing reasonable inferences and resolving factual disputes in favor of the non-movant. Regensburger v. China Adoption Consultants, Ltd., 138 F.3d 1201, 1205 (7th Cir. 1998) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)).

In response to a motion for summary judgment, the non-movant may not simply rest on the allegations in his pleadings. Rather, she must show through specific evidence that an issue of fact remains on matters for which she bears the burden of proof at trial. Walker v. Shansky, 28 F.3d 666, 670-71 (7th Cir. 1994), aff'd, 51 F.3d 276 (citing Celotex, 477 U.S. at 324). No issue remains for trial "unless there is sufficient evidence favoring the non-moving party for a jury to return a verdict for that party. If the evidence is merely colorable, or is not sufficiently probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50 (citations omitted); accord Starzenski v. City of Elkhart, 87 F.3d 872, 880 (7th Cir. 1996); Tolle v. Carroll Touch, Inc., 23 F.3d 174, 178 (7th Cir. 1994). "[Non-movant's] own uncorroborated testimony is insufficient to defeat a motion for summary judgment." Weeks v. Samsung Heavy Indus. Co., 126 F.3d 926, 939 (7th Cir. 1997) . Further, the non-moving party's own subjective belief does not create a genuine issue of material fact. Chiaramonte v. Fashion Bed Group, Inc., 129 F.3d 391, 401 (7th Cir. 1997).

IV. Plaintiff's Motion for Partial Summary Judgment (Doc. 35)

To prove trademark infringement, a party must establish 1) ownership of a protectable mark; and 2) likelihood of confusion. Eli Lilly & Co. V. Natural Answers, Inc., 233 F.3d 456, 461 (7th Cir. 2000). Plaintiff is seeking partial summary judgment only on the first element: ownership of a protectable mark.

A. Incontestability

Under the Lanham Act "the right of the registrant to use such registered mark in commerce for the goods or services in or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable." 15 U.S.C. § 1065. Exceptions and defenses to incontestability are enumerated in sections 1115, 1064 and 1065. When a mark becomes incontestable under section 1065, "the registration shall be conclusive evidence of the validity of the registered mark and of the registrations of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce." 15 U.S.C. § 1115(b).

Plaintiff argues that it owns a trademark registration for the mark "Land of Music" and that since it complied with the provisions of 15 U.S.C. ยง 1065 (to re-register mark after continuous ...


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