M-F-G Corp. v. EMRA Corp.

626 F. Supp. 699, 228 U.S.P.Q. (BNA) 568, 1985 U.S. Dist. LEXIS 12844
CourtDistrict Court, N.D. Illinois
DecidedDecember 12, 1985
Docket84 C 10846
StatusPublished
Cited by7 cases

This text of 626 F. Supp. 699 (M-F-G Corp. v. EMRA Corp.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
M-F-G Corp. v. EMRA Corp., 626 F. Supp. 699, 228 U.S.P.Q. (BNA) 568, 1985 U.S. Dist. LEXIS 12844 (N.D. Ill. 1985).

Opinion

MEMORANDUM OPINION AND ORDER

WILLIAM T. HART, District Judge.

FACTS

Plaintiff M-F-G Corporation (“MFG”) is an Illinois corporation in the business of selling beauty and barber supplies primarily to the hair care industry. MFG sells a wide variety of products (approximately 1,500 items according to its 1984 10-K report to the SEC) through intermediaries such as barber supply houses and cosmetology and barber schools. Certain hair cutting scissors and replacement blades are sold by MFG under the trademark “SU-PERCUT” (see Fig. 1 in Appendix). The word “SUPERCUT” was originally registered by MFG as a trademark on the Supplemental Register in 1954. In 1975 MFG obtained registration No. 1,005,242 on the Principal Register for that same word.

Defendant EMRA Corporation (“EMRA”) is a California corporation and owns or franchises several hundred hair-cutting shops featuring the name “SUPER-CUTS” (see Fig. 2 in Appendix). EMRA opened the first such shop in 1975. EMRA also sells shampoo and conditioner to its customers which bear the name “SUPER-CUTS.” In 1983 one of EMRA’s distributors on the West Coast imported - 1,210 pairs of scissors bearing the EMRA “SU-PERCUTS” logo, some of which were used at the EMRA training center and some of which were sold to various “SUPERCUTS” shops.

Defendant Dion, Inc., is a California corporation involved in the operation of the “SUPERCUTS” shops. Defendants Robert and Julie Parsons are individuals doing business in Illinois under the name “SU-PERCUTS.” For purposes of these motions all defendants will be referred to collectively as EMRA.

MFG filed suit against defendants alleging violations of MFG’s rights under the following theories: (1) trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq.; (2) violation of MFG’s common law rights in its trademark; (3) unfair competition; (4) false designation of origin under the Lanham Act; (5) dilution of the mark in violation of the Illinois Anti-Dilution Statute, Ill.Rev.Stat. ch. 140, § 22; and (6) deceptive trade practices in violation of the Illinois Deceptive Trade Practices Act, Ill.Rev.Stat. ch. 12U/2, §§ 312-313. MFG seeks injunctive relief and damages, as well as costs and fees.

EMRA asserts the affirmative defenses of laches, estoppel, acquiescence, and unclean hands. EMRA also asserts, as affirmative defenses, that MFG’s mark is a weak mark unknown to the general public and that EMRA adopted and continuously used the “SUPERCUTS” mark since prior to MFG's registration. EMRA also coun *701 terclaims, alleging unfair competition on the part of MFG in bringing the lawsuit and seeking declaratory relief. 1

Now EMRA has moved for summary judgment pursuant to Federal Rule of Civil Procedure 56 as to all issues presented in the complaint and Count III of the counterclaim, which seeks declaratory relief. MFG has moved for partial summary judgment on the question of whether EMRA infringed MFG’s trademark by using hair-cutting shears bearing the word “SUPER-CUTS.”

DISCUSSION

The Seventh Circuit has stated the standards for summary judgment:

Rule 56 of the Federal Rules of Civil Procedure provides that summary judgment shall be granted if the record shows that ‘there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.’ It is clear that the party moving for summary judgment has the burden of establishing that there is no genuine issue of material fact.... ‘For the purpose of determining whether any material fact remains disputed, “the inferences to be drawn from the underlying facts ... must be viewed in the light most favorable to the party opposing the motion.” ’

Korf v. Ball State University, 726 F.2d 1222, 1226 (7th Cir.1984). However, the non-movant may not merely rely on conclusory statements to withstand summary judgment. In responding to a motion for summary judgment, the non-movant must set forth specific facts in affidavits or otherwise show that there are genuine issues that must be decided at trial. Posey v. Skyline Corp., 702 F.2d 102, 105 (7th Cir.), cert. denied, 464 U.S. 960, 104 S.Ct. 392, 78 L.Ed.2d 336 (1983). Courts will not strain to find a genuine issue where none exists. Kirk v. Home Indemnity Co., 431 F.2d 554, 559-60 (7th Cir.1970); Victory Pipe Craftsmen, Inc. v. Faberge, Inc., 582 F.Supp. 551, 554 (N.D.Ill.1984).

I. Trademark Infringement and EMRA’s Activities Other Than the Use of Scissors

Defendants contend that EMRA’s activities other than the use of scissors marked “SUPERCUTS” (which will be considered separately in part II, infra) do not infringe MFG’s trademark. They argue that MFG’s mark is weak and therefore has a narrow scope of protection, and that there is no likelihood of confusion between MFG’s “SUPERCUT” scissors and blades and EMRA’s use of the “SUPERCUTS” mark.

Section 32 of the Lanham Act, 15 U.S.C. § 1114, provides, in relevant part:

(1) Any person who shall, without the consent of the [trademark] registrant—
(a) use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant____

The central issue presented is whether EMRA’s use of “SUPERCUTS” is likely to cause confusion. Likelihood of confusion is an issue of fact. Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366 (7th Cir.), cert. denied, 429 U.S. 830, 97 S.Ct. 91, 50 L.Ed.2d 94 (1976). “In determining whether likelihood of confusion exists, courts consider such factors as the type of trademark in issue, the similarity of design, similarity of products, identity of retail outlets and purchasers, identity of advertising media utilized, defendants intent, and actual confusion.” Wesley-Jessen Div. of Schering Corp. v. Bausch & Bomb, Inc., 698 F.2d 862, 866 (7th Cir.1983); Union Carbide Corp., 531 F.2d at 381-82.

The first factor, “type of trademark,” is by far the most complex in a legal sense.

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Bluebook (online)
626 F. Supp. 699, 228 U.S.P.Q. (BNA) 568, 1985 U.S. Dist. LEXIS 12844, Counsel Stack Legal Research, https://law.counselstack.com/opinion/m-f-g-corp-v-emra-corp-ilnd-1985.