American Speedy Printing Centers Inc. v. Sir Speedy Inc.

by Ralph Wilson Nimmons

District Court, M.D. Florida

American Speedy Printing Centers Inc. v. Sir Speedy Inc.

No. 92-1439-CIV-T-21A

Decided December 10, 1992

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Action by American Speedy Printing Centers Inc. against Sir Speedy Inc. for trademark infringement, dilution, and unfair competition. On plaintiff’s motion for a preliminary injunction, Motion denied.

James B. Brady, of Weintraub, DuRoss & Brady, Troy, Mich., for plaintiff.

Peter G. Mack, of Foley & Lardner, Alexandria, Va., and James M. Landis, of Foley & Lardner, Tampa, Fla., for defendant.

Nimmons, J.

Before the Court for consideration is the Plaintiff’s Motion for Temporary Restraining Order and/or Preliminary Injunction (Dkt. #2).^[1] The Plaintiff, franchisor of quick printing centers, uses the expression: “It’s Right, It’s On Time, Or It’s Free Guarantee” to promote its printing services. The Plaintiff seeks to enjoin the Defendant, also a franchisor of quick printing centers, from using the phrase: “We Do It Right Or We Do It Over. We Do It On Time Or We Do It Free” in connection with the promotion of the Defendant’s services.

In order to justify the issuance of a preliminary injunction, the moving party must establish the following four criteria:

1. A substantial likelihood that the movant will eventually prevail on the merits;

2. The movant will suffer irreparable injury unless the injunction is issued;

3. The injury to the movant outweighs whatever danger the proposed injunction may cause the party opposing the injunction; and

4. The injunction, if issued, would not be adverse to the public interest.

(emphasis supplied). Canal Authority v. Callaway, 489 F.2d 567, 572-73 (5th Cir. 1974). Moreover, the issuance of an injunction is an extraordinary and drastic remedy which will not be granted unless the moving party clearly carries the burden of persuasion as to all four prerequisites. United States v. Jefferson County, 720 F.2d 1511, 1519 (11th Cir. 1983).

In Count I and Count II of its verified complaint, the Plaintiff asserts causes of action against the Defendant for trademark infringement and unfair competition in violation of 15 U.S.C. § 1125(a)^[2], and for common law trademark infringement and unfair competition. In Counts III and IV the Plaintiff alleges violations of Florida Statute Sections 495.151 and 501.204.

The claims of federal trademark infringement and unfair competition and common law trademark infringement are essentially the same and can be considered simultaneously. See Contemporary Restaurant Concepts, Ltd. v. Las Tapas-Jacksonville, Inc., 753 F. Supp. 1560, 1562-63 [19 USPQ2d 1411] (M.D. Fla. 1991). The initial inquiry is whether the word or phrase is protectable. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 [217 USPQ 988] (11th Cir. 1983). Whenever a word or phrase conveys an immediate idea of the qualities, characteristics, effect, purpose or ingredients of a product or service, it is classified as descriptive and cannot be claimed as an exclusive trademark. Id. at 792.

A descriptive term is protectable only if it has acquired secondary meaning which refers to the tendency of the consuming public to associate a term with a particular producer or source. Contemporary Restaurant Concepts, Ltd. v. Las Tapas-Jacksonville, Inc., 753 F. Supp. 1560, 1564 [19 USPQ2d 1411] (M.D. Fla. 1991). The evidentiary burden necessary to establish secondary meaning for a descriptive term is substantial, and the burden of proof rests with the plaintiff. Zatarains, Inc., at 794.

In the case at bar, the Plaintiff has not demonstrated a substantial likelihood that it is likely to succeed in proving secondary meaning at trial. The Plaintiff has only recently adopted the expression and the Defendant has demonstrated that other quick printing businesses have also used similar expressions in the past.

In addition, the Plaintiff cannot prevent the Defendant’s fair use of the expression. The “fair use” defense applies only to descriptive terms and requires that the term be “ ‘used fairly and in good faith only to describe to users the goods or services of such party, or their geographic origin.’ ” Zatarains, Inc., at 796 (citing 15 U.S.C. § 1115(b)(4)). In the instant case, the Plaintiff has failed to show that the Defendant’s use of the expression at issue constitutes a trademark use as distinguished from the use of the expression in its primary descriptive sense.

The Plaintiff has alleged a violation of Florida Statute Section 495.151 which expands the protection of trademark law by preventing the dilution of the distinctiveness and value of a trade name and mark. Blanding Automotive Center, Inc. v. Blanding Automotive, Inc., 568 So.2d 490, 492 (Fla. 1st DCA 1990). “ ‘Dilution’ focuses on the uniqueness or distinctiveness of the trade name and mark and requires some proof that the defendant’s use of the trade name and mark decreases its commercial value.” Id. The Court is of the view that the Plaintiff has not demonstrated a substantial likelihood of prevailing on the merits of this claim.

The Plaintiff has alleged that the Defendant violated Florida Statute Section 501.204 by engaging in unfair and deceptive trade practices, A violation under this section includes the concept of “palming off”, consisting of the Defendant’s attempting to market its services as though it were the Plaintiff. Contemporary Restaurant Concepts, Ltd., at 1565. The Court is of the view that the Plaintiff has not demonstrated a substantial likelihood of prevailing on the merits of this claim. Because the Plaintiff has not proved its likelihood of success on the merits, the Court will not treat the remaining factors regarding the issuance of a preliminary injunction. Accordingly, it is

ORDERED AND ADJUDGED that the Plaintiff’s Motion for Temporary Restraining Order and/or Preliminary Injunction (Dkt. #2) is DENIED.

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1. The Motion was filed on October 1, 1992. The Court issued an Order on October 3, 1992 denying the Plaintiff’s request for a temporary restraining order, and set the Motion for Preliminary Injunction for a hearing on November 5, 1992. On November 4, the parties stipulated to a two week adjournment, and the hearing was reset for November 19, 1992. Both parties were represented at the hearing.
2. 15 U.S.C. § 1125(a) provides:

   Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

   (1) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

   (2) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, service, or commercial activities,

   shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.