International Kennel Club of Chicago, Inc. v. Mighty Star, Inc.

CUDAHY, Circuit Judge,

dissenting:

This seems to me a strange case of trademark infringement where likelihood of success on the merits and irreparable harm to the plaintiff are both exceedingly unclear. And the majority’s rather selective statement of the facts does little to clarify the picture.

There is a loss to society in permitting one user to appropriate a descriptive term to the exclusion of others through the establishment of “secondary meaning.” See R. Callmann, 3 The Law of Unfair Competition Trademarks and Monopolies § 19.29, at 109 (1983). Courts should therefore be adequately demanding in setting secondary meaning standards before issuing injunctions in aid of such appropriations.

In the present case, the majority finds that the plaintiff, “International Kennel Club of Chicago,” had “better than a negligible chance” 1 of showing that its name has acquired a secondary meaning by virtue of its use for many years, its advertising of semi-annual dog shows directed to a limited group of dog enthusiasts and its maintenance of a 15,000-person mailing list. The plaintiff spent less than $60,000 on advertising and public relations last year. Here the demands on the plaintiff have been so minimal that in the future almost anything will be susceptible to being claimed under the secondary meaning rubric.

The likelihood of confusion is equally uncertain. The plaintiff, a sponsor of live dog shows in Chicago, seeks to enjoin a national manufacturer of stuffed toy dogs. The *1095plaintiff does not manufacture or distribute toy dogs, or goods of any kind. The closest the plaintiff comes to stuffed dogs is to rent booth space at its shows to merchants who may sell them along with a variety of other dog-related items. Thus, although the defendant’s mark bears a high degree of similarity to the plaintiffs name, their respective products and services do not compete and are related only by their connection to the broad theme of “dogs.” Further, evidence of actual consumer confusion about the origin of the toy dogs is, in the words of the district court, “hardly overwhelming.”

The plaintiff has not suggested any economic harm it may be suffering as a result of confusion with the defendant’s operation. There is no complaint, for example, of diminishing participation, by either dog breeders or vendors, in its dog shows. And evidence of potential harm to its reputation seems to center on a few letters and conversations inquiring into its connection with defendant’s sales campaigns. The plaintiff alleges in effect that the inquiries are mildly embarrassing (or perhaps gently demeaning) because they taint it with commercialism. It is surely not clear to me, however, how any real harm is being done. In contrast, the defendant has expended hundreds of thousands of dollars advertising its line of stuffed dogs and thus will suffer considerable economic harm from this injunction.

To establish secondary meaning (and the right to appropriate descriptive terms from the public domain) it should be requisite either to show substantial expenditures for advertising — a real investment in the claimed secondary meaning — or actual evidence that consumers associate the descriptive term with the product or service, or both. In lieu of consumer surveys, letters or conversations might be acceptable if genuinely relevant and produced in sufficient volume. Here none of these paths has been followed in any kind of persuasive way. We are thus blazing an uncertain trail, which may allow prior users of the most descriptive of terms to win wide-ranging injunctions with only nominal showings of either harm or confusion. If this case can be a winner, it is difficult to imagine one that could lose.

In addition, I do not understand why a disclaimer would not do the job quite satisfactorily here. It is not necessary to crack walnuts with a sledgehammer. Any ill effects on the plaintiff of the defendant’s advertising could be remedied by disclaimer. I do not discount the trial court’s discretion in these matters, but I am not persuaded it can justify a preliminary injunction (for which no bond has been posted) here.

I therefore respectfully dissent.

. Evidence of irreparable harm to the plaintiff is concededly meager here. The balance of harms even seems to favor the defendant. Hence I question the alacrity with which the majority applies a “better than negligible” standard to the plaintiffs likelihood of success on the merits. A “better than negligible" determination is not a sufficient basis in and of itself for the grant of a preliminary injunction. Rather, such a standard may figure in a sliding scale analysis, in which the balance of harms is the other variable. See Curtis v. Thompson, 840 F.2d 1291, 1296 n. 5 (7th Cir.1988); Roland Machinery Co. v. Dresser Indus., Inc., 749 F.2d 380, 387 (7th Cir.1984). Once a plaintiff does show a minimal probability of success on the merits, a district court should "determine how likely that success is,” for the greater the likelihood of success, “the less heavily need the balance of harms weigh in [the plaintiffs] favor.” Id.; Brunswick Corp. v. Jones, 784 F.2d 271, 275 (7th Cir.1986).