Bliss Salon Day Spa v. Bliss World Corp ( 2001 )

In the
United States Court of Appeals
For the Seventh Circuit
No. 01-1173
Bliss Salon Day Spa,
Plaintiff-Appellant,
v.
Bliss World LLC,
Defendant-Appellee.
Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division.
No. 00 C 2344--Joan Humphrey Lefkow, Judge.
Argued September 7, 2001--Decided October 4, 2001
Before Bauer, Easterbrook, and Manion,
Circuit Judges.
Easterbrook, Circuit Judge. Both parties
to this suit use the mark Bliss in
connection with beauty salons and beauty-
care products, such as shampoo. Bliss
Salon is the senior user between the two,
having opened in 1979 its one and only
outlet in Wilmette, a suburb of Chicago.
Bliss World adopted the mark in 1996 when
it opened Bliss Spa in the Soho district
of New York. It has set out to create an
international chain of beauty parlors,
also selling Blissout and Blisslabs products
in retail outlets such as Saks Fifth
Avenue, by catalog, and through a web
site. Bliss World registered its marks in
1997 for use in connection with spas and
beauty-care products, a step that Bliss
Salon neglected; it is uncontested that
Bliss World adopted the mark without
knowledge of Bliss Salon’s prior use.
In this action under sec.43(a)(1)(A) of
the Lanham Act, 15 U.S.C.
sec.1125(a)(1)(A), Bliss Salon seeks an
injunction that would forbid Bliss World
to open a beauty parlor, or sell any of
its products, within 100 miles of
Chicago’s Loop. The district court denied
Bliss Salon’s motion for a preliminary
injunction, 2000 U.S. Dist. Lexis 18871
(N.D. Ill. Dec. 22, 2000), and on this
appeal Bliss Salon has all but ignored
the deference accorded by an appellate
court to a decision about preliminary
relief. See Maxim’s Ltd. v. Badonsky, 772
F.2d 388, 390 (7th Cir. 1985); Ty, Inc.
v. Jones Group, 237 F.3d 891, 896 (7th
Cir. 2001). Plaintiff sealed its fate by
making an outlandish demand: Milwaukee,
Rockford, Gary, and South Bend all are
part of the 31,416 square miles that lie
within 100 miles of the Loop, yet few
residents of these cities are likely to
know about a one-store operation to the
northwest of Chicago, so there is only
slight risk that goods offered by Bliss
World will be mistaken for the products
of Bliss Salon. (Unless Bliss Salon
itself causes the confusion. For seven
months Bliss Salon printed the url of
Bliss World’s web site on its own price
lists and business cards, and in an
instance of cybersquatting plaintiff
registered the domain name
"blissdayspa.com", the name of
defendant’s flagship outlet, while
omitting the word "salon" that
distinguishes the two firms.) The risk of
confusion between Bliss World and Bliss
Salon is low even near Chicago, because
many other firms in the beauty industry
(at least one in Chicago, perhaps ten
within the 100-mile radius, and a few
with national distribution) use Bliss as
a mark for some of their wares. This may
make it hard to employ Bliss as a
designation of source for any product; it
makes it all but impossible to imagine
that a consumer seeing the mark Bliss
would assume that the product or service
must come from Bliss Salon Day Spa of
Wilmette. And without a likelihood of
confusion about source, there is no claim
under sec.43(a)(1)(A) of the Lanham Act.
At oral argument plaintiff’s counsel
invited us to cut the radius from 100
miles to 25 (a mere 1,963 square miles),
but this is not the right forum; our task
is to decide whether the district judge
abused her discretion, not to make an in
dependent decision about appropriate
relief. And a smaller radius would do
Bliss Salon no good, at least on this
record. So far as the record reveals, not
a single customer has ever expressed
confusion about source, returned one of
Bliss World’s products to Bliss Salon
seeking a refund, or complained to Bliss
Salon about the high prices in Bliss
World’s catalog. Bliss Salon has not
conducted a survey or offered any other
means by which the district court could
infer a likelihood of confusion in the
future.
Instead Bliss Salon argues that it is
entitled to relief without the need for
evidence, because the word "bliss" is
"suggestive," and all "suggestive" marks
are protected automatically, without need
to prove secondary meaning or likely
confusion. "Bliss" is not generic, and it
does not describe any attribute of hair
styling or shampoo. Emotions are not
product attributes; if one could achieve
"bliss" by washing one’s hair many
religious leaders and psychoanalysts
would be out of business. Thus the word
must be "suggestive," and a suggestive
mark creates an entitlement to protection
from usurpers, the argument wraps up.
That is itself a misleading (confused?)
statement of trademark law. Section
43(a)(1)(A) provides relief only when
another person’s use of a mark "is likely
to cause confusion, or to cause mistake,
or to deceive . . . as to the origin,
sponsorship, or approval of his or her
goods, services, or commercial activities
by another person". Proof of likely
confusion about source is a statutory
requirement. Judge Friendly proposed the
continuum of generic, descriptive,
suggestive, arbitrary, and fanciful marks
as a heuristic, a means to guide thought
rather than to replace the statutory
requirements. See Abercrombie & Fitch Co.
v. Hunting World, Inc., 537 F.2d 4, 9-11
(2d Cir. 1976). Suggestive ("Tide"
laundry detergent), arbitrary ("Apple"
computers), and fanciful ("Exxon"
gasoline) marks collectively are
distinctive in the sense that secondary
meaning is likely to develop, as a result
of which any duplicate use of the name is
likely to breed confusion about the
product’s source. Generic marks, on the
other hand, designate the products
themselves rather than any particular
maker, and descriptive marks might (but
usually won’t) acquire distinctiveness.
Wal-Mart Stores, Inc. v. Samara Brothers,
Inc., 529 U.S. 205, 212-13 (2000),
approved this general approach (and
applied it to trade dress) while
insisting that marks actually be
distinctive if they were to qualify for
the "inherently distinctive" category.
A court cannot choose between the
"descriptive" and "suggestive" categories
on the basis of a dictionary; Judge
Friendly’s continuum is functional, and
placement must be functional too. This is
why we held in Platinum Home Mortgage
Corp. v. Platinum Financial Group, 149
F.3d 722, 730 (7th Cir. 1998), that the
word "platinum" is descriptive rather
than suggestive in the financial-services
industry. Platinum, like the phrase
"gilt-edged," suggests high quality or
elegance, and issuers of credit cards or
mortgage loans may choose it because of
the association with the upper crust; in
this linguistic sense the word is
suggestive. But because so many firms use
the word (and the color) for financial
products, it cannot be inherently
distinctive; quite the contrary, it is no
more distinctive than a "gold card" or
"born with a silver spoon in his mouth."
Functionally, therefore, the word had to
go in the descriptive category. "Tide"
detergent is linguistically suggestive
(it suggests the cleansing action of
water), but this mark is and remains
legally suggestive only because it has
retained distinctiveness as a product
identifier. Bliss marks are a glut on the
market in hair styling and beauty care.
They are not distinctive, so the word
does not belong in the "suggestive"
cubbyhole. If Bliss Salon wants to get
anywhere in this litigation, it will have
to prove that its mark has acquired
secondary meaning and that Bliss World’s
use of the same mark is likely to cause
confusion about source in or near
Wilmette. See Sunmark, Inc. v. Ocean
Spray Cranberries, Inc., 64 F.3d 1055
(7th Cir. 1995); cf. Zaz Designs v
L’Oral, S.A., 979 F.2d 499 (7th Cir.
1992).
Affirmed