DeRosier v. 5931 Business Trust

870 F. Supp. 941, 1994 U.S. Dist. LEXIS 19883, 1994 WL 706108
CourtDistrict Court, D. Minnesota
DecidedDecember 13, 1994
DocketCiv. 5-94-133
StatusPublished
Cited by10 cases

This text of 870 F. Supp. 941 (DeRosier v. 5931 Business Trust) is published on Counsel Stack Legal Research, covering District Court, D. Minnesota primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
DeRosier v. 5931 Business Trust, 870 F. Supp. 941, 1994 U.S. Dist. LEXIS 19883, 1994 WL 706108 (mnd 1994).

Opinion

ORDER

DOTY, District Judge.

This matter is before the court upon plaintiffs objections to a Report and Recommendation of United States Magistrate Judge Raymond L. Erickson dated November 9, 1994. Plaintiff objects to Magistrate Judge Erickson’s recommendation that his motion for a preliminary injunction be denied.

Based upon a de novo review of the record herein, the court adopts Magistrate Judge Erickson’s Report and Recommendation dated November 9, 1994. Accordingly, IT IS HEREBY ORDERED that plaintiffs motion for a preliminary injunction is denied.

FINDINGS AND RECOMMENDATION

[November 9, 1994]

ERICKSON, United States Magistrate Judge.

I. Introduction

This matter came before the undersigned United States Magistrate Judge pursuant to a special assignment, made in accordance *944 with the provisions of Title 28 U.S.C. § 636(b)(1)(B), upon the Plaintiffs Motion for a Preliminary Injunction which would restrain the Defendants from using the name “Michaels” in connection with any retail store or business, within a 50-mile radius of Duluth, Minnesota, and from using the name “Michaels” in any advertisements, signs, labels or other marketing endeavors or materials, within that same area.

A Hearing on the Motion was conducted on November 2, 1994, at which time the Plaintiff appeared by Joseph J. Mihalek, Esq., and the Defendants appeared by Robert H. Magie, III, Robert M. Chiavello, and Anthony E. Peterman, Esqs. 1

For reasons which follow, we recommend that the Motion for a Preliminary Injunction be denied.

II. Procedural and Factual Background

This action, which was removed from the State District Court in St. Louis County, Minnesota, alleges that the Defendants have violated the Plaintiffs common law trade name, the Lanham Act, the Minnesota Deceptive Trade Practices Act, and the provisions of Minnesota Statutes Section 325D.165, by opening and operating a retail business, in the City of Duluth, under the name of “Michaels.” The Defendants deny any violation of law, and maintain that their use of the service mark 2 “Michaels” was authorized by registrations that were properly secured from the United States Patent and Trademark Office.

In support of his Motion, the Plaintiff notes that he has been operating a business in the City of Duluth, which has been engaged in providing services as an art gallery and a framing center since 1979, under the legend of “Michael’s Frame & Gallery.” 3 Specifically, since he purchased the business from James Michael Porter (“Porter”) in 1979, the Plaintiff has sold art work, ready- or custom-made picture frames, and framing materials, at this retail outlet. Prior to the Plaintiffs purchase of the business, Porter had owned and operated the concern since June of 1975, offering the same line of services, but from a different business address. The evidence is not contested, therefore, that the Plaintiff has continuously operated a business, which included the term “Michael’s” in its name, since 1979. Nor do the Defendants seriously quarrel with the Plaintiffs representation that his customers extend geographically throughout the Arrowhead Region of Northeastern Minnesota.

*945 On the other hand, the Defendants did not open a store, in the market area surrounding Duluth, until the Summer of 1994. Nevertheless, the Defendants are the rightful owners of the service mark “Michaels” ever since the registration of that mark on January 4, 1983, and they have lawfully possessed the right to use the service mark “Michaels,” as depicted in a stylized script, since the registration of that mark on December 25, 1984. As to both service marks, the Registrations from the United States Patent and Trademark Office reflect that the mark relates to “Retail Store Services for the Sale of Hobby, Craft and Picture Framing Materials.” Currently, the Defendants operate over 375 stores under the “Michaels” service mark in 41 states and in Canada.

Unlike the Plaintiffs merchandizing, the Defendants’ business is not confined to the sale of art woi’k and framing services, for they offer an inventory of “over 30,000 items, including a wide selection of general crafts, wearable art, silk and dried flowers, picture framing materials and services, hobby and art supplies, and party, seasonal and holiday merchandise.” Michaels Annual Report 1993. While, indeed, the Defendants sell paintings — framed and unframed — their art work is not of gallery quality and, generally, retails for less than $250. In contrast, commencing in 1980, the Plaintiff has offered “A ‘Peoples Gallery’ Specializing in Locally Made Art, Paintings, Sculptures and Photos, A Gift Center for Works of the Northland and Twinports,” with some of his paintings retailing for $1,500. See, Exhibit D to Affidavit of DeRosier dated November 199k• Instead of fine art, the Defendants offer a wide-variety of hobby and craft materials which, in substantial part, are foreign to the Plaintiffs business. 4

According to the Plaintiff, approximately 25 percent of his business is derived from the sale of fíne art, with the remainder being attributable to the sale of ready- and custom-made frames. In the other extreme, the evidence demonstrates that the sale of frames accounts for a mere 8/6 percent of the Defendants’ sales proceeds, of which 2% is derived from the sale of custom-made frames. 5 On a national average, the Defendants’ stores generally report custom-made sales of 5.3% — or 4.5% for their newly opened retail outlets. As a consequence, the Defendants argue that, at 2%, their store in Duluth is below the national average — a fact that is directly at odds with the Plaintiffs argument that the Defendants are preying upon the Plaintiffs commercial reputation in order to enhance their own sales of framed goods.

On or about August 22, 1994, the Plaintiff was questioned by one of his customers whether he was expanding to a new location at the Village Mall, some four miles distant from his present business address. Upon further investigation, the Plaintiff determined that the Defendants were making their final preparations for the opening of their retail store in Duluth. Subsequently, by letter dated September 27, 1994, counsel for the Plaintiff wrote the Defendants as follows:

It has been brought to our attention that Michaels Stores, Inc. is planning on opening a store under the mark, MICHAELS, for retail store services identical, in large part, to my client’s services. Michaels Stores, Inc.’s use of a mark with an identical commercial impression for identical and *946 related services constitutes a direct infringement of Mr. DeRosier’s trademark rights attained under common law.

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870 F. Supp. 941, 1994 U.S. Dist. LEXIS 19883, 1994 WL 706108, Counsel Stack Legal Research, https://law.counselstack.com/opinion/derosier-v-5931-business-trust-mnd-1994.