Best Vacuum, Inc. v. Ian Design, Inc., 2005 U.S. Dist. LEXIS 9795 (N.D. Ill. Jan. 18, 2005) (plaintiff's motion for preliminary injunction); 2006 WL 3486879 (N.D. Ill. Nov. 29, 2006) (defendant's motion for summary judgment).
Factual Background Edit
Plaintiff sold vacuum cleaners in retail stores under the name "Best Vacuum" since 1983. In 1996, plaintiff registered the domain name "bestvacuum.com" and started selling vacuum cleaners on the web. Defendant registered the domain name "bestvacuumcleaner.com" in November 2003 and sold vacuum cleaners at the website. Plaintiff demanded that defendant stop using the domain name "bestvacuumcleaner.com." Defendant refused, and a few days later it registered the "bestchoicevacuums.com" domain name.
Trial Court Proceedings Edit
Plaintiff filed suit for trademark infringement, dilution, unfair competition, and deceptive trade practices, and moved for a preliminary injunction. The magistrate judge issued a report and recommended denial of the motion because it was unlikely plaintiff would succeed on any of its claims. Plaintiff was not likely to succeed on its federal infringement claim because it owned only a pending application, not a registration.
Because the plaintiff was unlikely to establish that it owned a protectable mark or that defendant's actions caused a likelihood of confusion, plaintiff was also not likely to succeed on its claims for infringement of an unregistered mark under Section 43(a) or deceptive trade practices.
Regarding the protectability of plaintiff's mark, the magistrate judge found that "Best Vacuum" was merely descriptive because it was a "laudatory or puffing term." Accordingly, as a descriptive mark, "Best Vacuum" was protectable only if it had acquired secondary meaning. The magistrate judge, however, was "immediately skeptical that 'Best Vacuum' can ever acquire secondary meaning," finding "very strong similarities" with the Federal Circuit's decision holding that the wording "The Best Beer in America" for beer was so highly laudatory and descriptive that it could not function as a trademark. And plaintiff's evidence of secondary meaning did not convince the magistrate judge otherwise. Although surveys of consumer reviews and customer satisfaction submitted by plaintiff showed that consumers liked plaintiff's prices and customer service, they did not show that the "Best Vacuum" name had acquired secondary meaning. In addition, this evidence was of limited value because it was limited to plaintiff's "core constituency."
The court similarly could not meaningfully evaluate plaintiff's use of its mark for twenty years and its significant advertising expenditures without consumer testimony on recognition of plaintiff's name. Plaintiff argued that defendant's intent favored a finding of secondary meaning because the parties were direct competitors such that defendant had to know about plaintiff; defendant deliberately used "bestvacuumcleaner.com" to attract customers using keywords in Internet search engines; and defendant registered "bestchoicevacuum.com" after receiving plaintiff's demand letter.
Although proof of intentional copying was relevant to secondary meaning, the court found no such evidence here. According to the court, plaintiff could not claim the common laudatory and descriptive term "best" and the generic term "vacuum" for itself "nor cry foul when other vacuum cleaner vendors seek to use them." Because there was a "limited number of words in the English language available to Defendant for promoting its goods," placing restrictions on defendant's use of "best" and "vacuum" would "unfairly inhibit competition." The court's decision was supported by Internet search-engine results showing that various businesses used the term "best vacuum" to tout their products in the text of their websites, in metatags, and in advertising keywords. For example, searches for "best vacuum" on both Yahoo! and Google produced more than 3,000,000 results with plaintiff's site appearing first and sixth, respectively, on these search-results lists.
The magistrate judge also found that plaintiff failed to prove a likelihood of confusion. Although both parties sold vacuum cleaners and both sold on the Internet, other factors favored plaintiff. The strength-of-the mark factor favored defendant for the reasons discussed above. Regarding similarity of the marks, the magistrate judge determined that "bestchoicevacuum.com" was "significantly different" from plaintiff's mark "Best Vacuum" because the added word "choice" "chang[ed] the nature of domain name from a potential source identifier to a more open-ended search for a generic product." Although "Best Vacuum" and "bestvacuumcleaner.com" were nearly identical, this factor was not as significant here because "best" is descriptive and "vacuum" is generic.
Plaintiff alleged initial-interest confusion but did not present any evidence of such confusion, and the degree-of-care factor favored defendant as the vacuum cleaners sold on the parties' website were relatively expensive, ranging in price from $200-$1,300. Moreover, although defendant's use of "bestvacuumcelaner.com" might lure away plaintiff's potential customers, "Plaintiff is as likely to gain business by using generic and descriptive terms to cast a wide advertising net."
Nor could Plaintiff establish a likelihood of success on its dilution claim. Plaintiff's mark was not famous because it was not inherently distinctive and had not acquired secondary meaning, third parties appeared to use similar names, and third parties used the phrase "best vacuum" in the text of their websites to promote their vacuum cleaners.
The parties later filed cross-motions for summary judgment on plaintiff's claims for false designation of origin and dilution. Because the parties agreed that the mark BEST VACUUM was descriptive, the motions turned on whether plaintiff's BEST VACUUM mark had acquired secondary meaning. The court considered factors such as direct consumer testimony, consumer surveys, the length and manner of plaintiff's use of the mark, the amount and manner of plaintiff's advertising, the volume of plaintiff's sales, plaintiff's place in the market, and evidence of intentional copying.
Defendant submitted an online survey of 300 random Internet users, in which less than 4% of the respondents had heard of plaintiff's website or retail store. Moreover, when asked what the term "best vacuum" meant to the respondents among four choices, only 4.67% of participants identified "best vacuum" as a "retail store named 'Best Vacuum'" and 82.33% chose "a descriptive term used to describe the best vacuum cleaner." The other two choices were "the Dyson brand of vacuum cleaner" (11.33%) or "a musical group" (1.6%). In contrast, plaintiff submitted only "six selected responses to questionnaires that were handed out at its retail stores." When asked how long they were aware of the store, responses varied from one month to "forever." Plaintiff also submitted selected responses that its customers posted about plaintiff's website on eopinions.com, all of which complimented plaintiff and referred to the "Best Vacuum" name. The court found that these "selective responses from a targeted audience are of little or no probative value" and thus "goes against finding secondary meaning."
Although plaintiff used the BEST VACUUM mark on its store since 1983 and used the "bestvacuum.com" domain name since 1996 such that the use was "lengthy," it was not exclusive. Defendant presented search-engine evidence to show the ubiquity of "best vacuum" on websites, in metatags, and as keywords. For example, searches on Yahoo! and [Google]] for the term "best vacuum" yielded more than 3,000,000 results. Plaintiff also submitted evidence that it spent more than $1,000,000 over the last twenty years promoting its website and the BEST VACUUM mark and was currently spending $60,000 a month on Internet advertising.
The court, however, found this advertising evidence to be "lacking in detail and context" and "insufficient to provide any significant support for secondary meaning." Plaintiff's gross Internet sales for 2003 were approximately $3,750,000, and the affidavit of plaintiff's president asserted that plaintiff was "[a] leading sales representative in the United States for Miele brand vacuum cleaners." This evidence, however, neither supported plaintiff's "national position in the vacuum cleaner sales market as a whole" nor that plaintiff was "dominant in the market."
The court also found no evidence of intentional copying and noted the undisputed fact that "defendant's principal had no knowledge of plaintiff at the time defendant obtained its domain name." Accordingly, the court held that a reasonable jury could not conclude that plaintiff established secondary meaning in the BEST VACUUM mark. Without this essential element, the court held that plaintiff's trademark infringement and dilution claims failed, thus entitling defendant to summary judgment.
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