The opinion of the court was delivered by: Judge Sharon Johnson Coleman
MEMORANDUM OPINION AND ORDER
Plaintiffs move for judgment as a matter of law for liability on Counts I, II, IV, VI, and VIII of the Second Amended Complaint for trademark infringement, deceptive trade practices and unfair competition under both federal (Lanham Act) and Illinois statutory and common law. The Court heard oral arguments on the motion on January 30, 2012. The issue presented for resolution by partial summary judgment requires the Court to determine the likelihood of consumer confusion between the two marks. After reviewing the briefs and submissions of the parties and hearing oral argument, this Court denies plaintiffs' motion.
The following facts are derived the Rule 56.1 statements of fact submitted by the parties. Except where noted, the following facts are undisputed. Plaintiffs Global Total Office Limited Partnership and Global Industries, Inc. are part of a group of affiliated companies originating in Canada. Global Upholstery was formed in 1966 as the general partner of Global Total Office. Global Industries was formed in 1972 in New Jersey and is the exclusive marketing, distribution and sales agent for Global Upholstery. Defendant Global Allies, LLC, was formed in 2001 in California. Both plaintiffs and defendant are in the business of marketing, distributing and selling seating, though plaintiffs refer to their product as "institutional and commercial furniture" and defendant describes its task and stackable seating without reference to it as "institutional." The parties disagree on the channels and manner in which each company conducts its business. Plaintiffs assert that it is involved in both office and hospitality industries, selling its task and stacking chairs through various channels including showrooms, tradeshows, representatives, and catalogs. Defendant contends that plaintiffs have only recently moved into the hospitality industry, but defendant operates almost exclusively within that hospitality arena. Defendant contends that plaintiffs primarily sell "office furniture" as opposed to specifically targeting hotels.
It is undisputed that plaintiffs are the owner of a United States registered trademark: GLOBAL & Design, which was filed on September 8, 1988, and issued on December 5, 2000. Plaintiffs claim to be widely known as "Global" and the "Global Group" throughout the United States and elsewhere in the commercial furniture industry. Plaintiffs claim to have been continuously using the trademark and trade name GLOBAL in the United States and elsewhere since 1966 when it started out manufacturing office furniture in Canada. Defendant markets and sells its products under the name and mark "Global Allies."
Plaintiffs filed the instant motion for partial summary judgment claiming that it is undisputed that they own a protectable mark ( i.e., GLOBAL) and the evidence of a likelihood of consumer confusion is so one-sided that the answer is not in doubt and plaintiff is entitled to judgment as a matter of law. This Court disagrees.
A party is entitled to summary judgment if all of the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue of material fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). When considering a summary judgment motion, the Court construes the facts and all reasonable inferences in the light most favorable to the non-moving party. Abdullahi v. City of Madison, 423 F. 3d 763, 773 (7th Cir. 2005). The party who bears the burden of proof on an issue may not rest on the pleadings or mere speculation, but must affirmatively demonstrate that there is a genuine issue of material fact that requires a trial to resolve. Celotex v. Catrett, 477 U.S. 317, 324 (1986).
A necessary element of plaintiffs' deceptive trade practices, infringement and unfair competition claims under both state and federal law is that there is a likelihood of consumer confusion between Global Total Office Ltd.'s mark and Global Allies' mark. See Autozone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008). There are seven factors that courts weigh to determine the likelihood of confusion: (1) the similarity of the marks in appearance and suggestion; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the degree and care likely to be exercised by consumers; (5) the strength of the plaintiff's mark; (6) any actual confusion; and (7) the intent of the defendant to "palm off" his product as that of another. Packman v. Chicago Tribune Co., 267 F.3d 628, 642 (7th Cir. 2001). Although no single factor is dispositive and the court may apply varying weight to each of the factors depending on the case, usually the similarity of the marks, the defendant's intent and evidence of actual confusion weigh most heavily. Id.
The likelihood of consumer confusion is ultimately a question of fact, McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1167 (7th Cir. 1986), that may be resolved on summary judgment only "if the evidence is so one-sided that there can be no doubt about how the question should be answered." Packman, 267 F.3d at 637 (quoting Door Sys. Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171 (7th Cir. 1996), see also AHP Subsidiary Holding Co. v. Stuart Hale Co.,1 F.3d 611, 616 (7th Cir. 1993)("[A] motion for summary judgment in trademark infringement cases must be approached with great caution.").
First, this Court rejects plaintiffs' argument that defendant has admitted there is a likelihood of confusion, by answering the original complaint with a counterclaim for infringement alleging a likelihood of confusion between the parties' marks. The active complaint in this case is the Second Amended Complaint and defendant has filed an Answer and Counterclaim to the Second Amended Complaint that does not include a counterclaim for infringement. Next, the Court turns to the likelihood of confusion factors, beginning with the similarity and strength of the marks, actual confusion, and defendant's intent, followed by the remaining factors.
1. Similarity of the Marks
To determine whether the marks are similar, courts must view the marks as a whole "in light of what happens in the marketplace and not merely by looking at the two marks side-by-side." Ty, Inc. v. The Jones Group, Inc., 237 F.3d 891, 898 (7th Cir. 2001). "[T]he test is not whether the public would confuse the marks, but whether the viewer of an accused mark would be likely to associate the products or service with which it is connected with the source of products or services with which an earlier mark is ...