Hyatt Corporation v. Hyatt Legal Services and Joel Hyatt

736 F.2d 1153
CourtCourt of Appeals for the Seventh Circuit
DecidedJuly 24, 1984
Docket83-1687
StatusPublished
Cited by48 cases

This text of 736 F.2d 1153 (Hyatt Corporation v. Hyatt Legal Services and Joel Hyatt) is published on Counsel Stack Legal Research, covering Court of Appeals for the Seventh Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Hyatt Corporation v. Hyatt Legal Services and Joel Hyatt, 736 F.2d 1153 (7th Cir. 1984).

Opinions

HENLEY, Senior Circuit Judge.

This matter comes before the court on appeal of the district court’s denial of a preliminary injunction. Appellant Hyatt Corporation, hereinafter Hyatt Hotels, filed suit against appellees Hyatt Legal Services and Joel Hyatt alleging violations of the Illinois Anti-Dilution Act and the Lanham Act, and asserting various other claims. Injunctive relief and damages were re[1156]*1156quested. After a hearing on Hyatt Hotels’ motion for a preliminary injunction, the district court refused to grant the injunction based on its finding that Hyatt Hotels failed to show a likelihood of success on the issue of confusion. While we cannot disagree with the district court concerning its conclusions under the Lanham Act, we disagree with its implicit finding that Hyatt Hotels did not meet the requirements for a preliminary injunction under the Anti-Dilution Act. We therefore reverse and remand for entry of a preliminary injunction against Hyatt Legal Services.

Appellant Hyatt Hotels is a well known and well regarded hotel operator with some seventy hotels in the United States. It has operated hotels under the Hyatt name for some twenty-five years. Hyatt Hotels advertises nationally, primarily in newspapers and magazines. It spends approximately $50 million annually for advertising. Twelve million people spend the night at a Hyatt Hotel every year, and several more millions attend meetings and events at the hotels. The prices of its hotel rooms range from moderate to expensive.

Hyatt Legal Services, founded in 1977 in Cleveland, Ohio, is and always has been a legal entity completely separate and apart from Hyatt Hotels. It provides legal services in a growing number of states, sixteen at the time of the hearing. There are four partners, appellee Joel Hyatt, Susan Hyatt, Wayne Willis and William Brooks. Hyatt Legal Services advertises extensively, mainly on television, and directs its advertisements towards people with low and moderate incomes. It takes only certain kinds of cases, primarily simple cases which can be rapidly handled at high volume. Its goal is to provide basic legal services at reasonable prices to people who might otherwise not see a lawyer. Hyatt Legal Services spent approximately $3 million in advertising in 1982.

I. LANHAM ACT.

Hyatt Hotels registered the service mark “Hyatt” under the Lanham Act, 15 U.S.C. § 1051 et seq., in 1971. See 15 U.S.C. § 1053. It complains that Hyatt Legal Services is guilty of infringement of that mark, see 15 U.S.C. § 1114, and. of unfair competition, 15 U.S.C. § 1125. At this stage, the validity of the registration is not disputed.

In order to show infringement, the owner of a mark must show that the alleged infringer is using the same or similar mark in a way which “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1). The district court noted that the services provided by Hyatt Hotels and Hyatt Legal Services are “distinctly different.” The court then evaluated Hyatt. Hotels’ evidence of confusion as follows:

Among the thousands of telephone calls to [Hyatt Hotels] daily, there have been occasional instances in which persons seeking to call Hyatt Legal Services have called the Hyatt Corporation legal department ... or have called a hotel or another of [Hyatt Hotels’] offices to inquire whether there was any relationship ____ These occasional calls do not add up, in this court’s judgment, to a likelihood of confusion.

Hyatt Corp. v. Hyatt Legal Services, No. 82 C 6178 (N.D.Ill.1983). The court emphasized that Hyatt Legal Services’ advertisements do not in any way imply a connection with Hyatt Hotels and concluded that Hyatt Legal Services’ present use of the mark “does not support the conclusion that [Hyatt Hotels] has a reasonable likelihood of prevailing on the merits.” Id.

Two rules call for restraint in our review here. First, the question of likelihood of confusion is one of fact and is therefore subject to the clearly erroneous rule. Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 857 (7th Cir.1982). Second, the district court merely denied a preliminary injunction; it did not decide the case on the merits. A denial of a preliminary injunction will be reversed only for an abuse of discretion. See id. at 858; Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1022 [1157]*1157(7th Cir.1979), cert. denied, 447 U.S. 924, 100 S.Ct. 3016, 65 L.Ed.2d 1116 (1980).

The district court’s opinion shows that it gave consideration to all the evidence. Cf. Union-Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 387 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). The evidence of confusion put forth by Hyatt Hotels was not overwhelming. While our reading of the depositions, exhibits and hearing transcript would lead us to conclude that there was more evidence of confusion than occasional misdirected phone calls, and while perhaps the evidence would have supported the opposite result, the district court’s conclusion that Hyatt Hotels did not show a likelihood of success on the issue of confusion is not clearly erroneous. We find no abuse of discretion in the court’s refusal to grant the motion on Lanham Act grounds.1

Hyatt Hotels also argues that Hyatt Legal Services uses the same typeface as Hyatt Hotels, which enhances the confusion caused by use of the same mark. In the abstract, there is some merit to this position. However, on the record before us we are unable to conclude that Hyatt Hotels consistently uses the typeface used by Hyatt Legal Services; rather it appears to be one of several used by Hyatt Hotels and not an inherent part of the mark. The district court characterized the typeface as of “no compelling distinctive style.” Nor does the record indicate specific instances of confusion caused, at least in part, by similarity of typeface. We are not deciding this issue against Hyatt Hotels. Rather, we merely find that on the record as developed so far Hyatt Hotels has not established a likelihood of success on the issue of whether the similarity of typeface causes increased confusion.

II. ANTI-DILUTION ACT.

The Illinois Anti-Dilution Act provides in pertinent part that

[e]very person ... adopting and using a mark [or] trade name, ... may proceed by suit, and the circuit court shall* grant injunctions, to enjoin subsequent use by another of the same or any similar mark [or] trade name ...

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