Bedford Auto Dealers Assn. v. Mercedes Benz of N. Olmsted

[Cite as Bedford Auto Dealers Assn. v. Mercedes Benz of N. Olmsted, 2012-Ohio-927.]

Court of Appeals of Ohio
EIGHTH APPELLATE DISTRICT
COUNTY OF CUYAHOGA

JOURNAL ENTRY AND OPINION
No. 97080

BEDFORD AUTO DEALERS ASSOCIATION
PLAINTIFF-APPELLANT

vs.

MERCEDES BENZ OF NORTH OLMSTED, ET AL.

DEFENDANTS-APPELLEES

JUDGMENT:
AFFIRMED

Civil Appeal from the
Cuyahoga County Common Pleas Court
Case No. CV-697071

BEFORE: Boyle, P.J., Sweeney, J., and Keough, J.

RELEASED AND JOURNALIZED: March 8, 2012
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ATTORNEY FOR APPELLANT

John F. Burke, III
Burkes Law, LLC
614 West Superior Avenue
Rockefeller Building, Suite 1500
Cleveland, Ohio 44113

ATTORNEYS FOR APPELLEES

For Mercedes Benz of North Olmsted

James B. Niehaus
Kelly Johnson
Frantz Ward
127 Public Square
2500 Key Center
Cleveland, Ohio 44114

For Ganley Westside Imports, Inc., et al.

A. Steven Dever
13215 Detroit Avenue
Lakewood, Ohio 44107
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MARY J. BOYLE, P.J.:

{¶1} Plaintiff-appellant, Bedford Automobile Dealers Association (“Bedford

Dealers Association ” or “Association”), appeals from a judgment of the Cuyahoga

County Common Pleas Court granting summary judgment to defendants-appellees,

several automobile dealers located on Lorain Road in North Olmsted (“North Olmsted

dealers”). The Association raises four assignments of error for our review. All of the

assignments, however, relate to whether the trial court erred when it granted summary

judgment to defendants. After a de novo review of the law and facts, we find no error

on the part of the trial court and affirm.

Procedural History and Factual Background

{¶2} The background facts in this case are undisputed. The Bedford Dealers

Association formed in the mid 1950s. Membership to the Association is limited to new

car dealers located within the Bedford Automile. The Bedford Automile is

approximately a one-mile stretch of road in Bedford, Ohio, near the intersection of

Broadway Avenue and Rockside Road, comprising of these new car dealerships.

{¶3} The Association began using the term “automile” sometime between the

mid 1950s and mid 1960s, but did not register it as a trade name with the state of Ohio

until 1987. According to Michael Lally, whose father, Tim Lally, helped found the

Association, the Association’s purpose is to market the Bedford Automile “as being an

area with several automobile dealerships within a mile that people can shop at very
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conveniently.” He explained that the Association’s membership dues are primarily used

to pool advertising dollars to promote the goodwill and trade name “automile.”

{¶4} In 2008, a group of automobile dealers (defendants-appellees) in North

Olmsted began advertising as the “North Olmsted AutoMile.” One of the defendant

dealers registered “North Olmsted Auto Mile” as a fictitious name with the state of Ohio

in the fall of 2008. When the Bedford Dealers Association learned that appellees were

using automile in their advertising, it immediately demanded they stop using the term.

But the North Olmsted dealers refused to do so.

{¶5} Subsequently, the Bedford Dealers Association filed an action against the

North Olmsted dealers in June 2009, alleging that defendants committed Ohio common

law trademark infringement and deceptive trade practices. It alleged that the North

Olmsted dealers appropriated the trade name “automile,” causing confusion to consumers

in the northeastern Ohio automobile market. It claimed that “the natural and probable

consequences of the use of that trade name are to mislead, deceive, or confuse the public

into believing that there is an identity, affiliation, or relationship between” the Bedford

Dealers Association and the North Olmsted dealers. The Association sought an

injunction, as well as compensatory and punitive damages.

{¶6} The North Olmsted dealers moved for summary judgment, arguing, inter

alia, that the Bedford Dealers Associations’ claims should fail because the term

“automile” is a “generic term used to describe a group of car dealers located within close
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geographic proximity.” The trial court agreed, and granted the North Olmsted dealers’

motion. It is from this judgment that the Association appeals, claiming the trial court

erred in doing so. Although the Association raises four assignments of error for our

review, they all raise the same issue, i.e., whether the trial court erred when it granted

summary judgment to defendants. Thus, we will address the assignments of error

together.

Standard of Review

{¶7} Summary judgment motions are to be resolved in light of the dictates of

Civ.R. 56. This rule was reaffirmed by State ex rel. Zimmerman v. Tompkins, 75 Ohio

St.3d 447, 448, 663 N.E.2d 639 (1996):

Civ.R. 56(C) provides that before summary judgment may be
granted, it must be determined that (1) no genuine issue as to any material
fact remains to be litigated, (2) the moving party is entitled to judgment as a
matter of law, and (3) it appears from the evidence that reasonable minds
can come to but one conclusion, and viewing such evidence most strongly
in favor of the nonmoving party, that conclusion is adverse to the party
against whom the motion for summary judgment is made. State ex rel.
Parsons v. Fleming, 68 Ohio St.3d 509, 511, 628 N.E.2d 1377 (1994),
citing Temple v. Wean United, Inc., 50 Ohio St.2d 317, 327, 364 N.E.2d
267 (1977).
{¶8} As an appellate court reviewing summary judgment motions, we must stand

in the shoes of the trial court and review summary judgments by the same standard and

evidence as the trial court. Smiddy v. The Wedding Party, Inc., 30 Ohio St.3d 35, 506

N.E.2d 212 (1987).

Analysis
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{¶9} The basic principles governing trademarks and trade names are the same,

and the rights in a trade name, as well as the right to protection thereof, arise as a matter

of common law. Younker v. Nationwide Mut. Ins. Co., 175 Ohio St. 1, 191 N.E.2d 145

(1963).

{¶10} In Patio Enclosures, Inc. v. Borchert, 8th Dist. No. 40592, 1980 WL

354611, *2 (May 15, 1980), this court explained the history and policy behind common

law trademark law:

At common law, the general rule was that a party was entitled to
protection against the use, by another, of its established trade name and
trademark in such manner as to mislead the trade and the public to believe
that when they are dealing with one, they are dealing with the other, or in
such manner that such use results, or may result, in appropriation of the
good will, a property right of the other. There are two fundamental
purposes for the laws protecting interests in a trade name or trademark.
First, such laws are designed to protect the public. Because consumer
purchasing is frequently based on name buying, such name must be
protected to assure the purchaser that he is receiving the goods from the
source on which he relies. Secondly, it is the purpose of the law to
safeguard the interest of the owner of the name or mark in the goodwill he
has created, by keeping another merchandiser or producer from infringing
on the goodwill created as to the name or mark. (Citations omitted.)
{¶11} The Bedford Dealers Association’s second claim stems from the Ohio

Deceptive Trade Practices Act and is based upon R.C. 4165.02(A)(2) and (3). Generally,

the Ohio Deceptive Trade Practices Act is a codification of the common law.

Worthington Foods, Inc. v. Kellogg Co., 732 F.Supp. 1417, 1431 (S.D.Ohio 1990). This

statute provides in relevant part:

A person engages in a deceptive trade practice when, in the course of
the person’s business, vocation, or occupation, the person * * *
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***

(2) Causes likelihood of confusion or misunderstanding as to the
source, sponsorship, approval, or certification of goods or services;

(3) Causes likelihood of confusion or misunderstanding as to
affiliation, connection, or association with, or certification by, another[.]

{¶12} Further, this statute is substantially similar to Section 43(a) of the Lanham

Act, 15 U.S.C. 1125(a), also known as the Trademark Act of 1946. Dawson v.

Blockbuster, 8th Dist. No. 86451, 2006-Ohio-1240, 2006 WL 1061769, ¶ 23, citing

Yocono’s Restaurant, Inc. v. Yocono, 100 Ohio App.3d 11, 17, 651 N.E.2d 1347 (9th

Dist.1994). Thus, claims for common-law trademark infringement under Ohio law and

for violations of the Ohio Deceptive Trade Practices Act are subject to the same standards

as their federal counterparts under the Lanham Act. Id. And “[w]here claims are made

under the Ohio common law and the deceptive trade practices statutes, [Ohio] courts are

to apply essentially the same analysis as that applied in assessing [the law of] unfair

competition under the federal statutes.” Id., citing Cesare v. Work, 36 Ohio App.3d 26,

520 N.E.2d 586 (9th Dist.1987).

{¶13} “The touchstone of liability [for trademark infringement] is whether the

defendant’s use of the disputed mark is likely to cause confusion among consumers

regarding the origin of the goods offered by the parties.” Daddy’s Junky Music Stores,

Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir.1997). In determining

whether a likelihood of confusion exists, a court will typically weigh the following eight
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factors: (1) strength of the senior mark, (2) relatedness of the goods or services, (3)

similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6)

likely degree of purchaser care, (7) the intent of defendant in selecting the mark, and (8)

likelihood of expansion of the product lines. Id., citing Frisch’s Restaurants, Inc. v.

Elby’s Big Boy, Inc., 670 F.2d 642, 648 (6th Cir.1982); see also Interactive Prods. Corp.

v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 694 (6th Cir.2003).

{¶14} In applying these factors, the Sixth Circuit Court of Appeals has cautioned

that they “imply no mathematical precision, but are simply a guide to help determine

whether confusion is likely.” Homeowners Group v. Home Mktg. Specialists, Inc., 931

F.2d 1100, 1107 (6th Cir.1991). Given the fact-specific nature of trademark

infringement actions, not all of the eight factors will be relevant in every case. Id. In

every case, “[t]he ultimate question remains whether relevant consumers are likely to

believe that the products or services offered by the parties are affiliated in some way.”

Id.

{¶15} But the likelihood of confusion analysis also involves a preliminary

question: whether the mark is entitled to trademark protection. Boston Duck Tours, LP v.

Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir.2008). If not, then the trademark

infringement laws, along with the eight-factor analysis, do not even apply. See Hunt

Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251, 255 (4th Cir.2001)

(because court determined that “crab house” was generic, there was no need to address
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the likelihood of confusion test).

{¶16} Not every word, name, symbol, or device qualifies as a protectable mark;

rather, it must be proven that it performs the job of identification, i.e., to identify one

source and to distinguish it from other sources. If it does not do this, then it is not

protectable as a trademark. ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 923 (6th

Cir.2003), citing J. Thomas McCarthy, McCarthy On Trademarks And Unfair

Competition, § 3:1 (2002).

{¶17} Indeed, only those marks that are “distinctive” as a matter of law are

accorded trademark protection. Abercrombie & Fitch Stores, Inc. v. Am. Eagle

Outfitters, Inc., 280 F.3d 619, 635 (6th Cir.2002). Certain marks, described as

“arbitrary,” “fanciful,” or “suggestive” are “inherently distinctive” and protectable (like

Apple computers or Nike shoes). See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.

763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). On the other hand, marks that

identify a characteristic of a thing are “descriptive” marks, which are very similar to an

adjective. Tumblebus Inc. v. Cranmer, 399 F.3d 754, 761 (6th Cir.2005). Marks that

are descriptive are not inherently distinctive but may enjoy the benefit of protection if

they develop a “secondary meaning.” Two Pesos at 769; Tumblebus at 761. A

descriptive mark achieves secondary meaning when “in the minds of the public, the

primary significance of a product feature or term is to identify the source of the product

rather than the product.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, fn.
 10

11, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982).

{¶18} But a generic mark refers to the genus or class of which a particular

product is a member, and thus can never be protected. Ale House Mgmt., Inc. v. Raleigh

Ale House, Inc., 205 F.3d 137, 140 (4th Cir.2000). Because they serve primarily to

describe products rather than identify their sources, generic terms are incapable of

becoming trademarks, at least in connection with the products that they designate. See

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 193-194, 105 S.Ct. 658, 83

L.Ed.2d 582 (1985). A generic term, such as “car” or “pizza,” is one that does not have

capacity as a source-identifier because it designates the class or genus of goods. See

Abercrombie, 537 F.2d at 9; Colt Def. LLC v. Bushmaster Firearms, Inc., 486 F.3d 701,

705 (1st Cir.2007) (a generic term does not distinguish the goods of one producer from

the goods of others; it is one that either by definition or through common use has come to

be understood as referring to the genus of which the particular product is a species).

Rather than answering the question “Where do you come from?”— a generic term merely

explains “What are you?” Id., citing 2 McCarthy, supra, § 12:1.

{¶19} Awarding trademark rights to any user of a generic term, especially the

first user, would harm competitors and consumers alike. Competitors unable to use a

common term that describes or designates their product are at a significant disadvantage

communicating to potential customers the nature and characteristics of the product. See

Vanessa Bowman Pierce, If it Walks like a Duck and Quacks like a Duck, Shouldn’t it be
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a Duck?: How a “Functional” Approach Ameliorates the Discontinuity Between the

“Primary Significance” Tests for Genericness and Secondary Meaning, 37 N.M.L.Rev.

147, 154 (2007). Likewise, consumers will be forced either to pay a higher price to

purchase the desired goods from the seller who owns the generic term as a trademark or

expend additional time investigating the alternative products available. Id. Therefore,

in accord with the primary justifications for protecting trademarks — to aid competition

and lower consumers’ search costs — the law does not grant any party exclusive rights to

use generic terms as trademarks.

{¶20} In deciding whether a mark is generic, evidence of the relevant public’s

understanding of a term “may be obtained from any competent source.” In re Merrill,

Lynch, Pierce Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987). This evidence

may include purchaser testimony, consumer surveys, listings in dictionaries, trade

journals, newspapers, and other publications. Id.

{¶21} The North Olmsted dealers attached evidence to their summary judgment

motion establishing that there are 34 other automiles in the United States and abroad,

including two others in southern Ohio. Because of this, they argue that “automile” is a

generic term referring to a group of automobile dealers located in close geographic

proximity, rather than one particular entity. We agree.

{¶22} We find this case to be strikingly similar to Boston Duck Tours, 531 F.3d

1. In 1994, Boston Duck Tours began offering sightseeing tours of the Boston area using
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genuine, renovated DUKWs from World War II; amphibious army vehicles used in the

war to function as both trucks and boats. The company received national and

international press coverage as well as numerous awards for its tours. The company’s

logo featured a cartoon duck in water. In 2007, Super Duck Tours began providing

sightseeing tours in Boston by land and water using custom-made amphibious vehicles

called Hydra-Terras. The company’s logo also featured a cartoon duck in water.

Boston Duck Tours sued Super Duck Tours in federal district court for federal trademark

infringement.

{¶23} The First Circuit Court of Appeals found “duck tours” to be generic. Id.

at 7-8. The court found that articles in the media and other third-party sources use the

phrase “duck tours” generically to refer to amphibious, sightseeing tours. Id. at 19. The

court cited two Boston Globe articles that used “duck tours” generically, and explained

these “articles from Boston join many others from around the country which use ‘duck

tours’ in a generic manner.” (Citations omitted.) Id. The court further cited evidence

of other companies around the country that provided the same amphibious sightseeing

services. According to the record, there were at least 36 other “duck tour” companies in

the United States and the world. And “[o]f those 36 tour companies described in the

record, 32 include the term ‘duck’ in their company or trade name, and more than 10 use

both the terms ‘duck’ and ‘tour(s)’ in their trade name.” Id. at 19. “Taken together, this
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evidence indicates that when consumers hear the term ‘duck tours,’ they associate it

primarily with a product rather than a source.” (Citations omitted.) Id. at 19-20.

{¶24} The First Circuit Court concluded that granting Boston Duck exclusive

rights to use the phrase in the Boston area “would be to erect a barrier of entry into the

marketplace, thereby preventing other entities, such as Super Duck, from calling their

product by its name.” Id. at 22. It further reasoned that “Super Duck, as well as other

potential competitors, would be placed at a significant market disadvantage.” Id. at 21.

{¶25} The present case is also analogous to Hunt Masters, 240 F.3d 251. In Hunt

Masters, an operator of a restaurant named the “Charleston Crab House” brought a trade

name infringement action against Landry’s Seafood Restaurant, a company that was

intending to open “The Crab House” in the same area. Landry argued that “crab house”

was a generic term referring to a class of restaurants that serve crabs. The Fourth Circuit

Court of Appeals agreed, explaining:

This court recently confronted a nearly identical factual scenario.
See [Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 140
(4th Cir.2000)]. In that case, a corporation operating numerous “Ale
House” restaurants brought suit seeking to enjoin another corporation from
opening a facility named the “Raleigh Ale House.” Id. at 140. This court
concluded that the plaintiff had no protectable interest in the term “ale
house” because the term is generic. Id. at 141. In concluding that “ale
house” is generic, the court rejected the argument that “ale house” might be
generic in some applications, such as English pubs, but non-generic when
applied to facilities serving both food and beer. Id.; see also Maine Ave.
Seafood v. The Crab House, Inc., Civil Action No. DKC 97-640 (D.Md.
Mar. 30, 1998) (holding that “crab house” is generic and use of “The Crab
House” did not infringe upon the rights of the nearby “Bethesda Crab
House”).
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Application of the Ale House analysis here compels the conclusion that “crab
house” is generic as well. In determining whether a mark is generic, courts should not
parse terms to determine that they are made up of generic components. Pizzeria Uno
Corp. v. Temple, 747 F.2d 1522, 1530 (4th Cir.1984). However, the principle that a
mark must be considered as a whole to determine its validity does not preclude courts
from considering the meaning of individual words in determining the meaning of the
entire mark. Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 938 (7th
Cir.1986). Here, the meaning of the individual words is fairly clear. A crab is “any of
numerous chiefly marine broadly built crustaceans,” while “restaurant” is one of the many
definitions of the word “house.” Webster’s New International Dictionary 1096 (3d
ed.1961). Other common words that are often used as synonyms for “restaurant” include
bar, parlor, and shop. When preceded by a type of food, these words describe various
classes of restaurants, such as ale houses, tapas bars, ice cream parlors, and coffee shops.
Each term denotes a class of restaurant serving a particular type of food, just as “crab
house” denotes a class of restaurant that serves crabs. (Footnote omitted.) Hunt
Masters at 254.

{¶26} The Hunt Masters court further noted that an Internet search revealed a multitude of “crab

houses” across America, which demonstrated that Hunt Masters’ use of the term was not original or

unique. Id. (Referencing at least ten other locations in the country using “crab house” in the name of

its restaurant.)

{¶27} Here, we agree with the North Olmsted dealers that “automile” is a generic

term that is not entitled to trademark protection. They submitted evidence establishing

the existence of automiles in Allentown, Pennsylvania; Raynham, Massachusetts;

Johnston, Iowa; Fairfax, Virginia; Norwood, Massachusetts; New Smyrna Beach, Florida;

Auburn, California; Indianapolis, Indiana; Charleston, South Carolina; Langley, British

Columbia; Alberta, Canada; St. Louis, Missouri; Murray City, Utah; Portland, Maine; and

many others in the United States and abroad.
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{¶28} The North Olmsted dealers also attached evidence of third parties, namely,

newspapers and magazines, using the term “automile” generically to describe a group of

automobile dealers located in a geographic proximity. For example, in June 2009, The

Akron Beacon Journal likened a “ring of donut shops” to “the car dealers who like to be

all together on an auto mile.” Powell, Doughnut shops ring city circle: Dunkin franchise

to fill vacancy not far from Jubilee in Tallmadge, The Akron Beacon Journal (June 10,

2009). This is just one example of many third-parties’ generic use of the term

“automile” — locally and nationally — that the North Olmsted dealers attached to their

summary judgment motion.

{¶29} The Association argues that “automile” as owned by it “has come to have its

own definition in northeast Ohio,” and has therefore, “acquired a secondary meaning.”

The Association points to its exclusive use in northeast Ohio for decades, as well as its

extensive advertising over the years, as evidence that “automile” has “acquired secondary

meaning” in northeast Ohio.

{¶30} In Demetri’s Family Restaurant, Inc. v. Brown, 8th Dist. No. 47921, 1984

WL 6329, *2 (Dec. 6, 1984), this court explained:

Secondary meaning is a meaning beyond the trade name itself. Secondary
meaning arises when a trade name becomes uniquely associated with the services
rendered or the products sold under the name. That sense of association-with, of
meaning beyond the name, is difficult to create and easy to lose. Judge Learned Hand
called it the “penumbra” of meaning that builds up around the original name, enhancing
and transforming it as a symbol. Landers, Frary & Clark v. Universal Cooler Corp., 85
F.2d 46 (1936). Once this secondary meaning attaches to a trade name, its first or senior
user gains a proprietary interest that can be protected against junior users.
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{¶31} But “[u]nder no circumstances is a generic term susceptible of de jure protection under ¶

43(a) of the Lanham Act, 15 U.S.C. 1125(a) or under the law of unfair competition.” Miller Brewing

Co. v. Falstaff Brewing Corp., 655 F.2d 5, 7-8 (1st Cir.1981). The Miller Brewing court explained the

following rationale for the rule:

No matter how much money and effort the user of a generic term has poured into
promoting the sale of its merchandise and what success it has achieved in securing public
identification, it cannot deprive competing manufacturers of the product of the right to
call an article by its name. The reason is plain enough. To allow trademark protection
for generic terms, i.e. terms which describe the genus of goods being sold, even when
these have been identified with a first user, would grant the owner of the mark a
monopoly since a competitor could not describe his goods as what they are. (Citations
omitted.) Id.

{¶32} The Bedford Dealers Association further argues that the North Olmsted

dealers’ use of “automile” causes consumer confusion as to whether the North Olmsted

dealers are somehow associated with the Bedford Dealers Association. But as we stated

previously, if a mark or name is not entitled to trademark protection, such as a generic

term, then we need not get to the likelihood of confusion test. Hunt Masters, 240 F.3d at

255 (because the court determined that “crab house” was generic, there was no need to

address the likelihood of confusion test). Thus, whether consumers in northeast Ohio are

confused as to whether the North Olmsted dealers are somehow affiliated with the

Bedford Dealers Association is irrelevant.

{¶33} The Association also contends that the trial court considered

unauthenticated, hearsay evidence attached to the North Olmsted dealers’ summary
 17

judgment motion, namely, Internet searches regarding the use of “automile” throughout

Ohio, the United States, and abroad. We disagree. Attorneys for the North Olmsted

dealers authenticated the exhibits to the trial court. This was sufficient for purposes of

summary judgment. See Kassouf v. White, 8th Dist. No. 75446, 2000 WL 235770 (Mar.

2, 2000) (relying on Evid.R. 901(A), this court held that trial court did not err when it

considered web-based evidence attached to summary judgment motion when materials

were authenticated by an affidavit).

{¶34} Accordingly, the Bedford Dealers Association’s four assignments of error

are overruled.

{¶35} Judgment affirmed.

It is ordered that appellees recover from appellant costs herein taxed.

The court finds there were reasonable grounds for this appeal.

It is ordered that a special mandate be sent to said court to carry this judgment into

execution.

A certified copy of this entry shall constitute the mandate pursuant to Rule 27 of

the Rules of Appellate Procedure.

MARY J. BOYLE, PRESIDING JUDGE

JAMES J. SWEENEY, J., and
KATHLEEN ANN KEOUGH, J., CONCUR
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