Brooks Shoe Manufacturing Co. v. Suave Shoe Corp.

533 F. Supp. 75, 215 U.S.P.Q. (BNA) 358, 1981 U.S. Dist. LEXIS 16432
CourtDistrict Court, S.D. Florida
DecidedNovember 9, 1981
Docket79-2230-CIV-EPS
StatusPublished
Cited by16 cases

This text of 533 F. Supp. 75 (Brooks Shoe Manufacturing Co. v. Suave Shoe Corp.) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Brooks Shoe Manufacturing Co. v. Suave Shoe Corp., 533 F. Supp. 75, 215 U.S.P.Q. (BNA) 358, 1981 U.S. Dist. LEXIS 16432 (S.D. Fla. 1981).

Opinion

MEMORANDUM OPINION

SPELLMAN, District Judge.

THIS CAUSE came before the Court on a nonjury trial. In accordance with Federal Rule of Civil Procedure 52(a), the following shall constitute Findings of Fact and Conclusions of Law.

Plaintiff, Brooks Shoe Manufacturing Company, Inc., is a Pennsylvania corporation that has no principal place of business in the State of Florida. Defendant, Suave Shoe Company, is a Florida corporation with its principal place of business in Miami, Florida. The Court has diversity jurisdiction pursuant to 28 U.S.C. § 1332, as well as jurisdiction pursuant to 28 U.S.C. § 1338 and 15 U.S.C. § 1121.

Count I of the complaint in the case sub judice asserts a cause of action for common law unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiff’s claim is based on their assertion that the “V” design that appears on the sides of Brooks shoes constitutes a common law trademark. 1 It is Plaintiff’s belief that *77 the “V” design that appeared on a number of Suave shoes, sold between January and October of 1979, infringed on Brooks’ common law trademark and that Brooks is therefore entitled to money damages and injunctive relief. 2

The use of an unregistered trademark can constitute a violation of 15 U.S.C. § 1125(a) when the alleged trademark used by the Plaintiff is so associated with its goods that the use of the same or similar marks by another company constitutes a representation that the goods come from the same source. Boston Professional Hockey Association, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975). In order to prevail on an unfair competition claim based on an unregistered trademark the Plaintiff must prove:

(1) that the public recognizes plaintiff’s symbol as identifying his goods or services and distinguishes them from those of others, and (2) that defendant’s actions cause a likelihood of confusion among the relevant buyer class. Element (1) [can] be shown in either of two ways: (a) that plaintiff’s symbol was inherently distinctive or (b) that even if not inherently distinctive, the symbol achieved customer recognition and ‘secondary meaning’.

1 J. McCarthy, Trademarks and Unfair Competition § 14:4 at 524 (1973).

It is the view of this Court that there is nothing arbitrary or fanciful about the Brooks’ “V” that would make it inherently distinctive. The mark could be characterized as a “V” on its side, an arrow, or a “7”. 3 Brooks has not claimed that the “V” is distinctive when used in conjunction with the words “BROOKS”, which appears on the heel of their shoes, nor have they argued that the color schemes in which the “V” appears make it distinctive. The only argument that Plaintiff has made with regard to the mark’s distinctive qualities is that the tapered upper leg somehow separates the Brooks’ “V” from any other “V”. The Court feels that this argument lacks merit.

Because Plaintiff’s “V” is not inherently distinctive, it must have a “secondary meaning” in order to be protected under the Lanham Act. Moreover, Plaintiff has the burden of proving that their “V” design acquired a secondary meaning prior to the date the Defendant commenced using a similar mark in commerce. 1 J. McCarthy, supra, § 7:12 at 172; Scott Paper Company v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1231 (3rd Cir. 1978). 4 Plaintiff has to *78 prove, therefore, that the “V” had acquired a secondary meaning by January 1979.

Secondary meaning can be proved by direct or circumstantial evidence. The variables to be considered in determining whether a mark has acquired secondary meaning include (1) the length of time and manner of its use, (2) the nature and extent of its use and (3) the efforts made in the direction of promoting a conscious connection, in the public’s mind, between the mark and a particular source of origin. Volkswagenwerk Aktiengesellschaft v. Rickard, 492 F.2d 474, 478 (5th Cir. 1974); 3 Callman, Unfair Competition, Trademarks and Monopolies § 77.3 at 349 (3rd ed. 1969).

Plaintiff presented a substantial quantity of circumstantial evidence on the issue of secondary meaning. The evidence shows that Brooks has been selling athletic shoes and related products since 1914. Contrary to what the company’s name suggests, Brooks does not manufacture the shoes it sells. Most of Plaintiff’s shoes are manufactured by Turner Shoe Manufacturing, a Puerto Rico corporation, under a licensing agreement with Brooks. These shoes are distributed by Brooks and sold primarily in specialty stores, i.e. stores selling a full line of sporting goods and stores specializing in selling athletic shoes. Most of the shoes sold by Brooks are high performance shoes in that they are made of lightweight, durable, high quality materials and they are constructed with features designed to meet the needs of serious athletes. 5

In 1973, Brooks began selling shoes with a “V” design on the sides and, by 1977, almost every shoe in the Brooks line bore the “V” insignia. Sales of Brooks shoes with the “V” side design extended throughout the United States, including the Southern District of Florida. The sales of such shoes have grown from more than 400,000 pairs in fiscal 1976, to more than 1,500,000 pairs in fiscal 1977 and in fiscal 1978 sales exceeded 2,500,000 pairs of shoes. Brooks claims that this rapid increase in sales can be attributed to their advertising campaign. 6

Brooks advertising has gone through an evolutionary process. Prior to January 1979, Brooks advertised its running shoes, distinct from its other athletic shoes, with a hard sell approach that featured mechanical and innovative design aspects of the shoes. This type of advertising was almost exclusively confined to magazines directed to a restricted group of readers, such as “Runner’s World” and “Running Times”.

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Bluebook (online)
533 F. Supp. 75, 215 U.S.P.Q. (BNA) 358, 1981 U.S. Dist. LEXIS 16432, Counsel Stack Legal Research, https://law.counselstack.com/opinion/brooks-shoe-manufacturing-co-v-suave-shoe-corp-flsd-1981.