International Kennel Club of Chicago v.

Mighty Star Doctrine: The first step to determine whether an unregistered mark is entitled to the protection of trademark laws is to categorize the name according to the nature of the term itself. Trademarks that are fanciful, arbitrary or suggestive are fully protected, while descriptive words may be trademarked only if they have acquired secondary meaning, that is only if the consumers have come to think of the word not as a descriptive term but as the name of the product. Direct competition is not the sine qua non of trademark infringements; rather the gist of the action lies in the likelihood of confusion to the public. A plaintiff need not demonstrate that it is in direct competition with an alleged infringer in order to establish likelihood of confusion. Facts: International Kennel Club (IKC) is an Illinois business corporation that sponsors dog shows in Chicago. It also sponsors seminars and contributes funds for animal and medical research. While IKC does not sell stuffed toys, the private vendors rent booth at plaintiffs shows for a certain price and they sell dogrelated items, including stuffed dogs. On the other hand, Mighty Star (MS) is a corporation that sells stuffed toys in the US, Canada, England, Australia and Asia. In the latter part of 1985, they decided to add to their product line of stuffed animals, a line of stuffed pedigree dogs representing different breeds which they named International Kennel Club. They utilized a marketing strategy whereby purchasers could register their dogs with the International Kennel Club and receive an official membership and certificate. 6 months after learning of the IKC Chicagos existence, MS placed a fill-page advertisement for their line of stuffed gods in the April Edition of the Good Housekeeping magazine. For this reason, IKC, received an abundant number of phone calls inquiring about their affiliation with the MS-IKC line of stuffed dogs. Confronted with the inquiries, IKC filed an instant trademark infringement case and request for preliminary injunction. After trial, the trial court held that IKC was entitled to the preliminary injunction prayed for. Subsequently, MS filed a motion to require the plaintiff to post security and to modify and stay the injunction. For this, the court indicated to IKC that they have to file a bond pending appeal in addition to the escrow money provided for in the initial injunction to avoid the stay of the injunction order. Not having the means to file the bond, the court granted the motion to stay the preliminary injunction order pending appeal. Issue: Whether or not IKC is entitled to the injunction (to determine this, the likelihood of the success on the merits should be looked at, hence IKC has to establish that it has a protectable trademark and that there is a likelihood of confusion as to the origin of MS product). Ratio: The court found that the phrase International Kennel Club fits within the category of descriptive words in that it specifically describes a characteristic or ingredient of an article or service. It is entitled to trademark protection only if the name has acquired secondary meaning. In evaluation whether or not there is a secondary meaning better than negligible (which is what is required to be granted the injunction), the court looks at the amount and manner of advertising, volume of sales, length and manner use, direct consumer testimony and consumer surveys. In addressing this, the IKC presented evidence that it has acquired secondary meaning as evidence by the amount and manner of advertising and the length and manner of its use. IKC has developed and maintained its reputation among canine enthusiasts through advertising carefully targeted to reach persons interested in the sport of showing purebred dogs. It is advertised in publications with a continent-wide circulation. Moreover, both major Chicago newspapers have highlighted the IKCs dog shows and have designed and promoted special advertising supplements around those columns. As further evidence, IKC also introduced evidence that the club received a number of letters and phone calls asking about the stuffed toys of MS. The court found that this is

sufficient to show that there is secondary evidence better than negligible. As to the likelihood of confusion, the court held that there is more than ample evidence to support the conclusion that there is likelihood of confusion as evidenced by the fact that there is a degree of similarity as to their name, that while not identical, their products cannot be considered as unrelated, and that there is actual confusion.It is proper to consider the similarities and dissimilarities between the marks in their entireties in determining the likelihood of confusion. They must be compared in light of what occurs in the marketplace and not in the courtroom. In this case, the only significant difference is the addition of a common geographic term of Chicago despite the use of the defendants of the 24 Polar Puff. These weigh in favor of the conclusion that the alleged infringer has appropriated the dominant portion of the mark. Consumers would necessarily believe that IKC licensed MS to use the IKC name. While the trade dress may dispel some point of sale confusion, the labeling does nothing to prevent consumers from mistakenly assuming that MS is somehow associated with IKC or has consented to the marks use. In determining the likelihood of confusion as to the similarity of their products, the question is whether the products are the kind the public attributes to a single source. The rights of an owner of a trademark extend to any goods related in the minds of the consumers in the sense that a single producer is likely to put out both goods. Plaintiffs also introduced evidence of actual consumer confusion through the letters, phone calls and inquiries they received. Actual confusion is the best evidence of the likelihood of confusion. The use of the disclaimer, especially where the infringement in issue is a verbatim copying of the plaintiffs name, should not be given weight since disclaimers are often ignored by consumers. It would be difficult to ensure the use of the disclaimer by their distributors since the defendants has no control over their distributors advertising. As to the extent of the injunction, the court held that since IKC can establish no rights extending to Mexico and since there is no evidence that the products of MS in Mexico impair the rights of IKC, the injunction need not extend to Mexico at this time.