Page:Bourne v. Walt Disney (S.D.N.Y. 1992).pdf/2

25 USPQ2d The claims of federal trademark infringement and unfair competition and common law trademark infringement are essentially the same and can be considered simultaneously. See Contemporary Restaurant Concepts, Ltd. v. Las Tapas-Jacksonville, Inc., 753 F. Supp. 1560, 1562-63 [19 USPQ2d 1411] (M.D. Fla. 1991). The initial inquiry is whether the word or phrase is protectable. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 [217 USPQ 988] (11th Cir. 1983). Whenever a word or phrase conveys an immediate idea of the qualities, characteristics, effect, purpose or ingredients of a product or service, it is classified as descriptive and cannot be claimed as an exclusive trademark. Id. at 792.

A descriptive term is protectable only if it has acquired secondary meaning which refers to the tendency of the consuming public to associate a term with a particular producer or source. Contemporary Restaurant Concepts, Ltd. v. Las Tapas-Jacksonville, Inc., 753 F. Supp. 1560, 1564 [19 USPQ2d 1411] (M.D. Fla. 1991). The evidentiary burden necessary to establish secondary meaning for a descriptive term is substantial, and the burden of proof rests with the plaintiff. Zatarains, Inc., at 794.

In the case at bar, the Plaintiff has not demonstrated a substantial likelihood that it is likely to succeed in proving secondary meaning at trial. The Plaintiff has only recently adopted the expression and the Defendant has demonstrated that other quick printing businesses have also used similar expressions in the past.

In addition, the Plaintiff cannot prevent the Defendant’s fair use of the expression. The “fair use” defense applies only to descriptive terms and requires that the term be “ ‘used fairly and in good faith only to describe to users the goods or services of such party, or their geographic origin.’ ” Zatarains, Inc., at 796 (citing 15 U.S.C. § 1115(b)(4)). In the instant case, the Plaintiff has failed to show that the Defendant’s use of the expression at issue constitutes a trademark use as distinguished from the use of the expression in its primary descriptive sense.

The Plaintiff has alleged a violation of Florida Statute Section 495.151 which expands the protection of trademark law by preventing the dilution of the distinctiveness and value of a trade name and mark. Blanding Automotive Center, Inc. v. Blanding Automotive, Inc., 568 So.2d 490, 492 (Fla. 1st DCA 1990). “ ‘Dilution’ focuses on the uniqueness or distinctiveness of the trade name and mark and requires some proof that the defendant’s use of the trade name and mark decreases its commercial value.” Id. The Court is of the view that the Plaintiff has not demonstrated a substantial likelihood of prevailing on the merits of this claim.

The Plaintiff has alleged that the Defendant violated Florida Statute Section 501.204 by engaging in unfair and deceptive trade practices, A violation under this section includes the concept of “palming off”, consisting of the Defendant’s attempting to market its services as though it were the Plaintiff. Contemporary Restaurant Concepts, Ltd., at 1565. The Court is of the view that the Plaintiff has not demonstrated a substantial likelihood of prevailing on the merits of this claim. Because the Plaintiff has not proved its likelihood of success on the merits, the Court will not treat the remaining factors regarding the issuance of a preliminary injunction. Accordingly, it is

ORDERED AND ADJUDGED that the Plaintiff’s Motion for Temporary Restraining Order and/or Preliminary Injunction (Dkt. #2) is DENIED.