genR8TNext v. LV Institute, et al. 05-CV-129-SM 05/05/05 UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE
genRSTNext, LLC, Plaintiff
v. Crvrl No. 05-CV-129-SM Opinion No. 2005 DNH 077 Las Vegas Institute for Advanced Dental Studies, Inc., International Academy of Comprehensive Aesthetics, LLC, and William Dickerson, Defendants
O R D E R
Plaintiff genRSTNext, LLC brings suit against defendant Las
Vegas Institute for Advanced Dental Studies, Inc., International
Academy of Comprehensive Aesthetics, LLC, and William Dickerson,
seeking redress for false designation of origin under 15 U.S.C. §
1125(a) and violations of the New Hampshire Consumer Protection
Act, N.H. R e v . S tat . A n n . § 358-A, claiming that defendant's name
"International Academy of Comprehensive Aesthetics" is
confusingly similar to plaintiff's "Academy of Comprehensive
Esthetics." Plaintiff moves this court to issue an ex parte temporary
restraining order ("TRO") pursuant to F e d . R. C i v . P. 65(b),
enjoining defendant from using its "International Academy of
Comprehensive Aesthetics" name in marketing its services. For
the reasons set forth below, plaintiff's motion is denied.
STANDARD OF REVIEW
"Traditionally, the test for a [temporary restraining order]
has four factors: 1) a likelihood of success on the merits, 2)
irreparable harm to the plaintiff should preliminary relief not
be granted, 3) whether the harm to the defendant from granting
preliminary relief exceeds the harm to the plaintiff from denying
it, and 4) the effect of the preliminary injunction on the public
interest." Rio Grande Cmty. Health Ctr., Inc. v. Rullan, 397
F.3d 56, 75 (citing Matrix Group, Ltd. v. Rawlings Sporting Goods
C o ., 378 F.3d 29, 33 (1st Cir. 2004) .
BACKGROUND
The facts, taken from the pleadings and accepted, for these
purposes, as true, are as follows. In or around April 2003,
plaintiff established the Academy of Comprehensive Esthetics,
2 which is, essentially, a professional organization that provides
education and credentialing services to dental professionals
practicing in the specific area of cosmetic (or aesthetic or
esthetic) dentistry. In or about February 2005, Defendant
Dickerson, who had been scheduled to deliver a keynote address at
one of plaintiff's events, launched an organization called the
International Academy of Comprehensive Aesthetics. Like
plaintiff's organization, defendant offers professional education
services and seminars, and markets those services through the
same or substantially similar channels as the plaintiff.
Although neither name is a federally registered trademark,
plaintiff filed an application for registration with the United
States Patent & Trademark Office on April 18, 2005.
Because attempts at amicably resolving the issue ultimately
failed, plaintiff brought this suit alleging false designation of
origin under 15 U.S.C. § 1125(a) and violations of the New
Hampshire Consumer Protection Act under N.H. R.S.A. 358-A.
3 DISCUSSION
Plaintiff moves for a temporary restraining order arguing
that it will suffer irreparable harm if defendants are permitted
to go forward with a planned advertising campaign. But while
plaintiff has noted the potential for irreparable harm should a
temporary restraining order fail to issue, it has failed to
demonstrate that it is likely to succeed on the merits.
As plaintiff notes in its complaint and its Motion for a
Temporary Restraining Order and a Preliminary Injunction, the
threshold inguiry in a trademark infringement case is whether the
alleged mark is, in fact, a protectible trademark. See, e.g.,
Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st
Cir 1993).
"A court's inguiry into whether a term merits trademark
protection starts with the classification of that term along the
'spectrum of distinctiveness.'" Id. At one end of the spectrum
lie generic terms, that is, "terms that have passed into common
usage to identify a product." Id. Such terms are unprotectible
as trademarks. Id. (citing Two Pesos v. Taco Cabana, 505 U.S.
4 763 (1992); Miller Brewing Co. v. Falstaff Brewing Co., 655 F.2d
5 (1st Cir. 1981)). At the other end of the spectrum lie
suggestive, arbitrary, and fanciful marks, which are considered
"inherently descriptive" and thus entitled to trademark
protection. "A term is suggestive if it reguires imagination,
thought and perception to reach a conclusion as to the nature of
the goods. Eguine Techs., Inc. v. Eguitechnology, Inc. 68 F.3d
542, 544 (1st Cir. 1995) (citations omitted). "In the middle [of
the spectrum] there are so-called descriptive terms . . . which
can be protected, but only if [they] have acguired 'secondary
meaning' by which consumers associate it with a particular
producer or source."
_____ "Secondary meaning 'refers to a word's or sign's, ability to
tell the public that the word or sign serves a special trademark
function, namely, that it denotes a product or service.'" Id.
(guoting DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 606 (1st
Cir. 1992)). "Insofar as the public takes the word, or sign, to
refer to a product or service with a particular source . . . the
word, or sign, has 'secondary meaning.'" DeCosta, 981 F.2d at
606.
5 "In examining whether a plaintiff's advertising is enough to
establish secondary meaning, we look at the advertising's
'amount, nature and geographical scope' with an eye towards how
likely the advertising is to expose a large number of the
relevant consuming public to the use of the symbol as a trademark
or trade name." Japan Telecom, Inc. v. Japan Telecom Am., Inc.,
287 F.3d 866, 875 (9th Cir. 2002) (guoting Am. Scientific Chem.,
Inc. v. Am. Hosp. Supply Corp., 690 F.2d 791, 793 (1982)). Put
differently, [t]o take a descriptive term out of the public
domain, a plaintiff must demonstrate that the relevant buying
public accords it secondary meaning." Id.
Here, plaintiff first asserts that its mark is suggestive,
however it offers little evidence to suggest that a relevant
buyer must use "imagination, thought and perception" Eguine
Techs., 68 F.3d at 544, to determine the nature of the services
offered by the plaintiff. To the contrary, it appears that the
words "esthetic" and "aesthetic" (actually variants of the same
word) when used in the field of dentistry, are widely known as
referring to cosmetic dentistry.1 Absent any reguired
1 A casual internet search for "esthetic," for example, yields as the first result, the American Academy of Esthetic
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genR8TNext v. LV Institute, et al. 05-CV-129-SM 05/05/05 UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE
genRSTNext, LLC, Plaintiff
v. Crvrl No. 05-CV-129-SM Opinion No. 2005 DNH 077 Las Vegas Institute for Advanced Dental Studies, Inc., International Academy of Comprehensive Aesthetics, LLC, and William Dickerson, Defendants
O R D E R
Plaintiff genRSTNext, LLC brings suit against defendant Las
Vegas Institute for Advanced Dental Studies, Inc., International
Academy of Comprehensive Aesthetics, LLC, and William Dickerson,
seeking redress for false designation of origin under 15 U.S.C. §
1125(a) and violations of the New Hampshire Consumer Protection
Act, N.H. R e v . S tat . A n n . § 358-A, claiming that defendant's name
"International Academy of Comprehensive Aesthetics" is
confusingly similar to plaintiff's "Academy of Comprehensive
Esthetics." Plaintiff moves this court to issue an ex parte temporary
restraining order ("TRO") pursuant to F e d . R. C i v . P. 65(b),
enjoining defendant from using its "International Academy of
Comprehensive Aesthetics" name in marketing its services. For
the reasons set forth below, plaintiff's motion is denied.
STANDARD OF REVIEW
"Traditionally, the test for a [temporary restraining order]
has four factors: 1) a likelihood of success on the merits, 2)
irreparable harm to the plaintiff should preliminary relief not
be granted, 3) whether the harm to the defendant from granting
preliminary relief exceeds the harm to the plaintiff from denying
it, and 4) the effect of the preliminary injunction on the public
interest." Rio Grande Cmty. Health Ctr., Inc. v. Rullan, 397
F.3d 56, 75 (citing Matrix Group, Ltd. v. Rawlings Sporting Goods
C o ., 378 F.3d 29, 33 (1st Cir. 2004) .
BACKGROUND
The facts, taken from the pleadings and accepted, for these
purposes, as true, are as follows. In or around April 2003,
plaintiff established the Academy of Comprehensive Esthetics,
2 which is, essentially, a professional organization that provides
education and credentialing services to dental professionals
practicing in the specific area of cosmetic (or aesthetic or
esthetic) dentistry. In or about February 2005, Defendant
Dickerson, who had been scheduled to deliver a keynote address at
one of plaintiff's events, launched an organization called the
International Academy of Comprehensive Aesthetics. Like
plaintiff's organization, defendant offers professional education
services and seminars, and markets those services through the
same or substantially similar channels as the plaintiff.
Although neither name is a federally registered trademark,
plaintiff filed an application for registration with the United
States Patent & Trademark Office on April 18, 2005.
Because attempts at amicably resolving the issue ultimately
failed, plaintiff brought this suit alleging false designation of
origin under 15 U.S.C. § 1125(a) and violations of the New
Hampshire Consumer Protection Act under N.H. R.S.A. 358-A.
3 DISCUSSION
Plaintiff moves for a temporary restraining order arguing
that it will suffer irreparable harm if defendants are permitted
to go forward with a planned advertising campaign. But while
plaintiff has noted the potential for irreparable harm should a
temporary restraining order fail to issue, it has failed to
demonstrate that it is likely to succeed on the merits.
As plaintiff notes in its complaint and its Motion for a
Temporary Restraining Order and a Preliminary Injunction, the
threshold inguiry in a trademark infringement case is whether the
alleged mark is, in fact, a protectible trademark. See, e.g.,
Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st
Cir 1993).
"A court's inguiry into whether a term merits trademark
protection starts with the classification of that term along the
'spectrum of distinctiveness.'" Id. At one end of the spectrum
lie generic terms, that is, "terms that have passed into common
usage to identify a product." Id. Such terms are unprotectible
as trademarks. Id. (citing Two Pesos v. Taco Cabana, 505 U.S.
4 763 (1992); Miller Brewing Co. v. Falstaff Brewing Co., 655 F.2d
5 (1st Cir. 1981)). At the other end of the spectrum lie
suggestive, arbitrary, and fanciful marks, which are considered
"inherently descriptive" and thus entitled to trademark
protection. "A term is suggestive if it reguires imagination,
thought and perception to reach a conclusion as to the nature of
the goods. Eguine Techs., Inc. v. Eguitechnology, Inc. 68 F.3d
542, 544 (1st Cir. 1995) (citations omitted). "In the middle [of
the spectrum] there are so-called descriptive terms . . . which
can be protected, but only if [they] have acguired 'secondary
meaning' by which consumers associate it with a particular
producer or source."
_____ "Secondary meaning 'refers to a word's or sign's, ability to
tell the public that the word or sign serves a special trademark
function, namely, that it denotes a product or service.'" Id.
(guoting DeCosta v. Viacom Int'l, Inc., 981 F.2d 602, 606 (1st
Cir. 1992)). "Insofar as the public takes the word, or sign, to
refer to a product or service with a particular source . . . the
word, or sign, has 'secondary meaning.'" DeCosta, 981 F.2d at
606.
5 "In examining whether a plaintiff's advertising is enough to
establish secondary meaning, we look at the advertising's
'amount, nature and geographical scope' with an eye towards how
likely the advertising is to expose a large number of the
relevant consuming public to the use of the symbol as a trademark
or trade name." Japan Telecom, Inc. v. Japan Telecom Am., Inc.,
287 F.3d 866, 875 (9th Cir. 2002) (guoting Am. Scientific Chem.,
Inc. v. Am. Hosp. Supply Corp., 690 F.2d 791, 793 (1982)). Put
differently, [t]o take a descriptive term out of the public
domain, a plaintiff must demonstrate that the relevant buying
public accords it secondary meaning." Id.
Here, plaintiff first asserts that its mark is suggestive,
however it offers little evidence to suggest that a relevant
buyer must use "imagination, thought and perception" Eguine
Techs., 68 F.3d at 544, to determine the nature of the services
offered by the plaintiff. To the contrary, it appears that the
words "esthetic" and "aesthetic" (actually variants of the same
word) when used in the field of dentistry, are widely known as
referring to cosmetic dentistry.1 Absent any reguired
1 A casual internet search for "esthetic," for example, yields as the first result, the American Academy of Esthetic
6 "imagination, thought and perception," id., the name is not
likely to be found suggestive, but, instead, merely descriptive.
The inguiry must then turn to whether plaintiff is likely to
establish that its name has acguired secondary meaning within the
field of dentistry. Based on the very limited record before the
court at this stage, it cannot be said that plaintiff is likely
to prove that the name is understood by the relevant consuming
public - here, dental professionals - "to refer to a product or
service with a particular source" (it might, in fact, be taken to
denote the American Academy of Esthetic Dentistry as the source).
Plaintiff has operated under its name only since April 2003,
placed only what appears to be the same print advertisement in
several trade publications, and has engaged in several e-mail
marketing campaigns. Given the relatively limited length of time
the name has been used by plaintiff, the relatively limited
marketing exposure it has received, and the seemingly wide prior
Dentistry ("AAED"). This organization appears to be yet another organization, not a party to the present suit, that provides similar services as plaintiff and defendant and clearly uses a similar name by which to market said services. See, http://www.estheticacademy.org. Moreover, the AAED appears to have been in existence since 1975, considerably longer than plaintiff's organization. See, http://www.estheticacademy.org/about/pastpresident.cfm.
7 use of the terms "academy," "aesthetic," and "esthetic" in
connection with education and credentialing within the cosmetic
dentistry field, plaintiff is unlikely, at least on this record,
to demonstrate that its name has acquired sufficient secondary
meaning to warrant protection as a trademark.
Because the record does not, at this point, demonstrate that
plaintiff is likely to succeed in proving that its name, the
"Academy of Comprehensive Esthetics," is a protectible trademark,
a discussion of the likelihood of confusion is unnecessary.
CONCLUSION
For the foregoing reasons, plaintiff's motion for a
temporary restraining order against defendants is denied.
SO ORDERED.
Steven J. McAuliffe Chief Judge
May 5, 2 005
cc: Jennifer A. Eber, Esq. Kenneth J. Barnes, Esq. Russell F. Hilliard, Esq.