Food for Pets v. Just for Pets CV-95-470-M 12/13/96 UNITED STATES DISTRICT COURT FOR THE

DISTRICT OF NEW HAMPSHIRE

FOOD FOR PETS, INC., Plaintiff,

v. Civil No. 95-470-M

JUST FOR PETS SUPERSTORES, INC., Defendant.

O R D E R

Plaintiff, Food For Pets, Inc., alleges that defendant. Just

For Pets Superstores, Inc., has violated its rights protected by

the Lanham Act (Count I), the New Hampshire State Trademark Act

(Count II), the common law of unfair competition (Count III), and

the New Hampshire Consumer Protection Act (Count IV). Before the

court is defendant's motion for summary judgment (document no.

17) .

I. BACKGROUND

Plaintiff, Food For Pets, Inc., is a New Hampshire

corporation engaged in the business of selling pet food,

accessories, and supplies through stores in Amherst and

Manchester, New Hampshire. Plaintiff adopted the service mark

"FOOD FOR PETS" on October 3, 1978, and has used its service mark continuously in both interstate and intrastate commerce.

Plaintiff also alleges that it is the owner of the New Hampshire

State Trademark Registration for the service mark "FOOD FOR

PETS," which issued on December 30, 1994.

The service mark "FOOD FOR PETS," as well as the slogan "If

you love your pets, you'll love our prices," has been used by

plaintiff in promotional and advertising activities in the New

Hampshire market. Furthermore, plaintiff used a distinctive

telephone number at its Amherst store, selected to aid customers

in remembering the number. The number consists of the local

exchange followed by "7387" which eguates to the letters "PETS"

on a telephone keypad or dial.

Defendant, Just For Pets Superstores, Inc., is a Delaware

corporation engaged in the business of selling pet foods and

supplies throughout New England. In 1990, defendant's parent

company. New England Serum Company, began opening retail stores

throughout Massachusetts and the Northeast, modeled on the retail

warehouse or "superstore" format. After consulting a marketing

firm in 1990, the parent company chose a name for its pet supply

business — "Just For Pets Superstore." Thereafter, defendant

filed a federal trademark registration application for its "JUST

FOR PETS SUPERSTORE" service mark. The application issued as

2 United States Trademark

on November 5,

1991.

In November of 1993, defendant entered the New Hampshire

market, opening a retail "superstore" in Manchester, New

Hampshire under the service mark "JUST FOR PETS SUPERSTORE."

Defendant selected a telephone number for its Manchester store

that consisted of the local exchange followed by the numbers

"7387," which also eguate the letters "PETS" on a telephone key

pad or dial. In October of 1994, defendant opened a second

retail store in Nashua, New Hampshire, under the identical "JUST

FOR PETS SUPERSTORE" service mark. The Nashua store also adopted

a telephone number comprising the local exchange followed by the

numbers "7387" (spelling "PETS").

Defendant has used its service mark, "JUST FOR PETS

SUPERSTORE," in promotional and advertising activities in the New

Hampshire market. One such advertisement was placed in the

Manchester Union Leader, a newspaper with circulation throughout

the state, on February 8, 1995, six days before Valentine's Day.

The beginning line in the text portion of the advertising copy is

reminiscent of plaintiff's slogan, and read "If you love your

pet, come to Just For Pets Superstore®!"

3 II. STANDARD FOR SUMMARY JUDGMENT

Summary judgment is appropriate "if the pleadings,

depositions, answers to interrogatories, and admissions on file,

together with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving party

is entitled to judgment as a matter of law." Fed. R. Civ. P.

56(c). The moving party has the burden of demonstrating the

absence of a genuine issue of material fact for trial. Anderson

v. Liberty Lobby Inc.,

(1986) . The party

opposing the motion, plaintiff in this case, must set forth

specific facts showing that there remains a genuine issue for

trial, demonstrating "some factual disagreement sufficient to

deflect brevis disposition." Mesnick v. General Electric Co.,

(1st Cir. 1991), cert, denied,

(1992). This burden is discharged only if the cited disagreement

relates to a genuine issue of material fact. Wynne v. Tufts

University School of Medicine,

(1st Cir. 1992)

cert, denied,

(1993).

The non-moving party, plaintiff here, "may not rest upon the

mere allegations or denials of [its] pleadings, but [its]

response, by affidavits or as otherwise provided in this rule,

must set forth specific facts showing that there is a genuine

4 issue for trial." Fed. R. Civ. P. 56(e). "Summary judgment may

be appropriate if the non-moving party rests merely upon

conclusory allegations, improbable inferences, and unsupported

speculation." Medina-Munoz v. R. J. Reynolds Tobacco Co.,

(1st Cir. 1990). The non-moving party must present

affirmative evidence to defeat a properly supported motion for

summary judgment, evidence from which a jury might return a

favorable verdict. Anderson,

(1985).

Ill. THE LANHAM ACT - (Count I)

Section 43(a) of the Lanham Act provides in relevant part:

"Any person who, on or in connection with any . . . services . .

.uses in commerce any . . . name . . . which . . . is likely to

cause confusion . . . shall be liable in a civil action . . . ."

(a)(1995). It is axiomatic that "registration

does not create the underlying right in a trademark. That right,

which accrues from the use of a particular name or symbol, is

essentially a common law property right." Keebler Co. v. Rovira

Biscuit Corp.,

(1st Cir. 1980).

A. Protected Rights

5 To show infringement, plaintiff must first establish that

its own mark is protectible. See, e.g., Boston Beer Co. v.

Slesar Bros. C o .,

(1st Cir. 1993). To be

eligible for protection, plaintiff's mark must be distinctive.

Courts have identified four categories to be considered in

the evaluation of a mark's inherent distinctiveness: generic,

descriptive, suggestive, and arbitrary or fanciful. I_d. Generic

marks are afforded no protection. I_d. Arbitrary and fanciful

marks are distinctive per se and, therefore, always afforded

protection. I_d. Descriptive marks are entitled to protection

only upon a showing that they have acguired "secondary meaning."

Unsurprisingly, defendant categorizes plaintiff's mark as

generic. However, the facts also might support categorizing

plaintiff's mark as descriptive. (See Def's. Mot. Summ. J. at 12

and Pi's. Obj. Summ. J. at 9) The difference between the

descriptive category and the generic category is difficult to

articulate with precision. "These categories, like the tones in a

spectrum, tend to blur at the edges and merge together. The

labels are more advisory than definitional, more like guidelines

than pigeon holes. Not surprisingly, they are somewhat difficult

to articulate and apply." Blinded Veterans Ass'n v. Blind Am.

6 Veterans Found.,

(D.C. Cir. 1989)(quoting

Zatarains, Inc. v. Oak Grove Smokehouse, Inc.,

(5th Cir. 1983)).

The burden at trial is on the plaintiff to prove that its

unregistered mark is not generic. See, e.g., Reese Publishing Co.

v. Hampton Int'l Communications, Inc.,

(2d Cir. 1980) .

And, "[e]ntry of summary judgment is mandated against a party if,

after time for discovery and upon motion, the party fails to make

a showing sufficient to establish the existence of an element

essential to that party's case, and on which that party will bear

the burden of proof at trial." Celotex Corp. v. Catrett,

(1986). (emphasis added). Accordingly, at this

juncture, plaintiff must make a sufficient showing to the court

that its service mark is protectible, and this showing must

fairly demonstrate that it can meet its burden of production at

trial.

As used in plaintiff's service mark, the term "FOOD" in

"FOOD FOR PETS," is a generic term; so is the term "PETS1."

1 Defendant's mark "JUST FOR PETS SUPERSTORE" also includes the generic term "PETS." Defendant's mark was federally registered on November 5, 1991, despite use of the generic term "PETS." The Lanham Act specifically provides that a registrable mark may contain generic and therefore unregistrable components.

.

7 However, when the words "FOR PETS" are taken together, they

describe the intended consumer of the term "FOOD" (i.e., pets).

In other words, the term "FOOD" is generic and the phrase "FOR

PETS" is descriptive. But it is the entire mark, i.e., "FOOD FOR

PETS," that plaintiff alleges is a source indicator to the

relevant public, and not the terms "FOOD" and "PETS" standing

alone. "Certain terms may connote more than the sum of their

parts and we must take care to decide the genericness of these

terms by looking to the whole." Liquid Controls Corp. v. Liquid

Control Corp.,

(7th Cir. 1986); see also

Blinded Veterans,

("Words which could not

individually become a trademark may become one when taken

together"). Therefore, the court cannot determine by mere

inspection whether plaintiff's service mark is descriptive or

generic.

If plaintiff's mark is generic, then plaintiff's case must

be dismissed. On the other hand, if plaintiff's mark is

descriptive, then plaintiff need only make a sufficient showing

that its mark has acguired "secondary meaning." At this

juncture, it follows that plaintiff's service mark, "when

scrutinized in the light most favorable to the plaintiffs, and

with all reasonable inferences indulged in the plaintiff's favor," must be considered to be descriptive and thus protectible

upon a showing that the service mark has acquired secondary

meaning. Smith v. Stratus Computer, Inc.,

(1st

Cir. 1994), cert, denied, 115 S. C t . 1958 (1995).

Plaintiff has set forth specific facts showing that the

mark, "FOOD FOR PETS," has acquired secondary meaning and that

there has been actual confusion in the marketplace. (Pi's. Obj.

Mot. Summ. J., exhibits 1, 2, 5, and 9). Secondary meaning is

achieved when "a significant quantity of the consuming public

understand the name as referring exclusively to the appropriate

party." President & Trustees of Colbv College v. Colbv College-

N.H.,

(1st Cir. 1975). Whether a mark has

acquired secondary meaning is a question of fact. Boston Beer,

. At trial, the burden of proof is on the plaintiff

to show secondary meaning, and "[p]roof of secondary meaning

entails vigorous evidentiary requirements." I_d. at 181. Factors

to be examined when determining whether a mark has acquired

secondary meaning are: (1) the length and manner of its use; (2)

the nature and extent of advertising and promotion of the mark;

and (3) the efforts made in connection, in the public's mind,

between the name or mark and a particular product or venture.

. Ultimately, the question is whether, after examining all relevant factors, it is clear that plaintiff's actions were

effective in creating a distinctive meaning in the minds of

prospective purchasers.

Plaintiff has offered specific facts to support its

secondary meaning claim, including: (1) advertisements in print

media, telephone directories, and specialized mailers; (2) a

statement of advertising expenses; and (3) signed customer

statements, many of which attest to acguisition of secondary

meaning prior to defendant's use of its mark in New Hampshire.

(Pis. Obj. Mot. Summ. J., exhibit 6). This affirmative evidence

suggests that plaintiff's service mark, "FOOD FOR PETS," may be

more than the sum of its parts and may have acguired a secondary

meaning to the relevant public.

Each trademark case must be decided upon its particular

facts, and where it seems that a trial is not likely to develop

additional evidence, summary judgment is appropriate. Pignons

S.A. de Mecanique de Precision v. Polaroid Corp., 4

(D. Mass. 1980), aff'd,

(1st Cir. 1981).

At this juncture, on this record, the court cannot say that a

trial is unlikely to develop additional relevant evidence. The

plaintiff has made a sufficient showing that the mark, "FOOD FOR

PETS," may be protectible as a descriptive service mark. The

10 court cautions, however, that plaintiff's burden of proof at

trial will be considerably higher than it is for purposes of

resolving the pending motion.

B. Likelihood of Confusion

To show infringement, plaintiff must also prove that

defendant's service mark, "JUST FOR PETS SUPERSTORE," is likely

to cause confusion among prospective purchasers. In this

circuit, the factors to be considered in determining whether

there is a likelihood of confusion include:

(1) the similarity of the [service] marks;

(2) the similarity of the [services];

(3) the relationship between the parties' channels of trade;

(4) the relationship between the parties' advertising;

(5) the classes of prospective purchases;

(6) evidence of actual confusion;

(7) defendant's intent in adopting the mark; and

(8) the strength of plaintiff's mark.

Boston Athletic Ass'n,

-34. No single factor is

necessarily determinative, but each must be considered. Keds

Corp. v. Renee Int'l Trading Corp.,

(1st Cir.

1989). Each factor will be briefly examined in turn.

11 (1) Similarity of the [service! marks.

The similarity of the marks factor requires consideration of

the "total effect of the designation, rather than a comparison of

the individual features." Volkswaqenwerk AG v. Wheeler,

(1st Cir. 1987) (quoting Pignons S.A. de Mecanique de

Precision v. Polaroid Corp.,

(1st Cir. 1981)).

Arguably, the conflicting marks appear visually and

phonetically similar in that they both utilize the words "FOR

PETS." Although the defendant's mark includes the term

"SUPERSTORE," that word is apparently downplayed in its

promotions and advertisements in the New Hampshire market. For

example, defendant's logo, at least as described by the

plaintiff, consists of the following: "Where the words 'JUST FOR

PETS' appear in stylized, 'reversed' print, the 'SUPERSTORE' word

appears in positive print, in simple block letters beneath the

dominant portion of the mark . . . . Thus, when the two marks

'FOOD FOR PETS' and 'JUST FOR PETS SUPERSTORE1 are compared side

by side, their dominant portions, i.e., 'FOOD FOR PETS' and 'JUST

FOR PETS,1 are virtually identical. (Pi's. Obj. Mot. Summ. J. at

16; see also exhibits 6 and 13).

Additionally, defendant's service mark may cause confusion

because it conveys to the relevant public the same idea, meaning

12 or overall impression conveyed by plaintiff's service mark, e.g.,

both parties operate retail stores and sell pet supplies in

addition to pet food. In fact, the mental impact of similarity

in meaning may be so pervasive as to outweigh any visual or

phonetic differences. J. T. McCarthy, Trademarks and Unfair

Competition § 23.08[1] (2d ed. 1984). Accordingly, whether the

conflicting marks are similar in appearance, sound, or meaning

poses a genuine issue for trial.

(2) Similarity of the [services).

Both parties are providers of retail services including the

sale of pet food, accessories, and supplies in New Hampshire.

Both have registered or sought to register their respective marks

on the Principal Register for identical services: "retail store

services for pet food and supplies." Neither party contends that

their primary markets are distinct or separate. It follows,

then, that this factor militates in favor of finding a likelihood

of confusion, and suggests that there is a genuine issue

regarding consumer confusion for trial.

(3) Relationship between the parties' channels of trade. (4) Relationship between the parties' advertising.

13 (5) Classes of prospective purchasers.

Because these factors are interrelated in this case, they

are considered together. See Pignons S.A. de Mecanique de

Precision v. Polaroid Corp.,

(1st Cir. 1981).

The parties' retail services are directly competitive. Both

parties sell pet food and supplies to pet owners through retail

stores in New Hampshire, and both advertise in print media,

periodicals, newspapers, and phone directories. Therefore, these

three factors, taken together, militate in favor of finding a

likelihood of confusion, and likely presents a genuine issue of

material fact for trial.

(6) Evidence of actual confusion.

Plaintiff has offered several instances of actual confusion.

(Pi's. Obj. Mot. Summ. J., exhibits 1 and 9). Whether there was

actual confusion in these instances would also seem to present a

genuine issue of material fact for trial.

(7) Defendant's intent.

No direct evidence has been presented to suggest that

defendant adopted its service mark in bad faith or with the

intent to exploit plaintiff's service mark. However, plaintiff

14 has purchased pet food from New England Serum Co., defendant's

parent company, since 1990. (Deposition of Sandra A. Sanucci-

Moses at 26). Given that business relationship, there probably

is a genuine issue of material fact regarding whether the

defendant understood that its use of the service mark, "JUST FOR

PETS SUPERSTORE," to sell pet food and supplies might well cause

confusion with the same services offered by the plaintiff under

its "FOOD FOR PETS" service mark. Furthermore, there is likely a

genuine dispute as to a material issue of fact regarding

defendant's knowledge and intent when it acguired a business

telephone number consisting of the local exchange followed by the

same number, "7387" ("PETS"), used by plaintiff.

(8) Strength of plaintiff's [service) mark.

The strength of a particular mark depends on its inherent

distinctiveness and its commercial strength in the marketplace.

Boston Athletic Ass'n,

. A relatively strong mark

is accorded a broader scope of protection than a relatively weak

mark. I_d. Factors deemed useful in determining the strength of

a mark include: (1) the length of time a mark has been used; (2)

the strength of the mark in the plaintiff's field of business;

and (3) the plaintiff's actions in promoting the mark.

15 Plaintiff has apparently used its mark in commerce

continuously since 1978 to promote and advertise its services,

including the sale of pet food, accessories, and supplies in New

Hampshire. (Pi's. Mem. at 10, and exhibit 5). Plaintiff has also

shown, via signed customer statements, that members of the

relevant consuming public probably associate the mark, "FOOD FOR

PETS," with plaintiff's retail services. Therefore, there is

likely a genuine dispute as to an issue of material fact related

to the strength of the plaintiff's mark.

Based on the foregoing analysis, the plaintiff has made a

sufficient showing that defendant's service mark, "JUST FOR PETS

SUPERSTORE," may cause confusion among the relevant consuming

public. This determination follows from application of the eight

factor test adopted in this circuit in light of the standard

applicable in ruling on motions for summary judgment. Once

again, however, the court cautions that plaintiff's burden of

proof at trial will be different. Both parties would do well to

explore settlement.

IV. STATE LAW CLAIMS

A. New Hampshire Trademark Act - (Count II)

16 New Hampshire has codified the Model State Trademark Act

which is patterned after the Lanham Act. See N.H. Rev. Stat. Ann.

("RSA") CH. 350-A (1984). An essential element of an action for

infringement brought under the state statute is registration with

the Secretary of State. Optical Alignment Systems and Inspection

Services, Inc. v. Alignment Services of North America, Inc., 90

, 61 (D.N.H. 1995). Plaintiff asserts that it is the

owner of the New Hampshire State Trademark Registration for the

service mark "FOOD FOR PETS," which issued on December 30, 1994.

(Pi's. Verified Complaint at 3). Defendant did not contest

plaintiff's assertion of ownership in its memorandum in support

of its motion for summary judgment.2 In the absence of evidence

to the contrary, plaintiff must be deemed to have met the

essential reguirement of registration. Having met the

registration reguirement, and for the same reasons set forth in

the court's analysis of Count I, summary judgment is also denied

as to Count II.

2 At this juncture, plaintiff has not offered to the court a certificate of registration from the New Hampshire Secretary of State. Nor is it appropriate for the court to verify such registration sua sponte. The court will, therefore, take plaintiff's assertion that their mark is registered as true.

17 B. Unfair Competition

1. Common-Law Unfair Competition - (Count III)

Under New Hampshire's common law of unfair competition, "a

person is liable for unfair competition if he engages in conduct

which deceives the general buying public." Saloman S.A. v.

Alpina Sports Corp.,

(D.N.H. 1990)

(guoting Jacobs v. Robitaille,

(D.N.H.

1976)). Plaintiff alleges specific facts suggesting an ability

to present evidence sufficient to meet that standard. Moreover,

defendant's memorandum does not address Count III of plaintiff's

verified complaint. Therefore, summary judgment is denied on

Count III.

2. The Consumer Protection Act - (Count IV)

The New Hampshire Consumer Protection Act prohibits the use

of an "unfair or deceptive act or practice in the conduct of any

trade or commerce." RSA § 358-A:2 ("Causing likelihood of

confusion or of misunderstanding as to the source, sponsorship,

approval, or certification of goods or services"). Additionally,

the court of appeals for this circuit has pointed out that a

practice is actionable under § 358-A if: (1) it is within at

least the penumbra of some common-law, statutory, or other

18 established concept of unfairness, (2) it is immoral, unethical,

oppressive, or unscrupulous, or (3) it causes substantial injury

to consumers. Chroniak v. Golden Inv. Corp.,

, 1146

(1st Cir. 1993) (quotation marks and emphasis omitted) (borrowing

this standard from cases arising under the Massachusetts Consumer

Protection Act, Mass. Gen.L. Ch. 93A). The framework outlined in

Chroniak is applicable to cases arising from trademark

violations. Pep Bovs v. Aranosian, FED. R. CIV. P. -94-354-M

(D.N.H. Nov. 30, 1995). In this case, defendant's alleged

conduct likely gives rise to a genuine issues of material fact

regarding likelihood of confusion under Lanham Act standards, and

under RSA 358-A:2. Even if defendant's alleged conduct did not

constitute a violation of the explicit terms of section 358-A:2,

a violation of the Lanham Act would also constitute "unfair"

practices under section 358-A:2 because such conduct would fall

"within at least the penumbra of some common-law, statutory, or

other established concept of unfairness." Chroniak, 983 F.2d at

1146 (emphasis added). Therefore, summary judgment is also

denied as to Count IV.

V. CONCLUSION

19 For the foregoing reasons, defendant's motion for summary

judgment is denied on Counts I-IV.

SO ORDERED.

Steven J. McAuliffe United States District Judge

December 13, 1996

cc: Robert J. Moses, Esg. Irvin D. Gordon, Esg. Victor H. Polk, Jr., Esg.

20