Chrysler Group LLC v. Moda Group LLC
2011 WL 2600520, 796 F. Supp. 2d 866, 2011 U.S. Dist. LEXIS 69498 (2011)
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Rule of Law:
A geographically descriptive phrase is not an inherently distinctive trademark and is only protectable under the Lanham Act if it has acquired secondary meaning, meaning the primary significance of the phrase in the minds of the public is to identify the source of the product rather than the product or its geographic origin.
Facts:
- Chrysler Group LLC, an automobile manufacturer, initiated a 'repositioning campaign' and spent over fifty million dollars on it.
- The campaign was launched with a two-minute television commercial during the Super Bowl.
- The commercial concluded with the words 'IMPORTED FROM DETROIT' appearing on a black screen for seven seconds, followed by the Chrysler name and logo.
- Following the commercial, Chrysler began selling t-shirts and other merchandise bearing the 'IMPORTED FROM DETROIT' phrase on its website.
- Pure Detroit, a business that sells Detroit-themed merchandise, began selling its own t-shirts with the 'IMPORTED FROM DETROIT' phrase shortly after the commercial aired.
- Pure Detroit's shirts did not feature Chrysler's name or logo; instead, they had Pure Detroit's own 'Spirit of Detroit' mark on the back.
- Chrysler sent a cease and desist letter to Pure Detroit, requesting it stop using the phrase, but Pure Detroit refused.
Procedural Posture:
- Chrysler Group LLC filed a complaint against Moda Group, LLC (dba Pure Detroit) in the U.S. District Court for the Eastern District of Michigan on March 15, 2011.
- Chrysler filed a Motion for Preliminary Injunction on March 25, 2011, seeking to stop Pure Detroit from using the 'IMPORTED FROM DETROIT' phrase.
- Pure Detroit filed a Response opposing the motion.
- Chrysler filed a Reply in support of its motion.
- The district court (the court of first instance) held an evidentiary hearing on the motion on May 20, 2011.
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Issue:
Does the phrase 'IMPORTED FROM DETROIT' constitute a protectable trademark for which Chrysler has a strong likelihood of success on the merits sufficient to warrant a preliminary injunction against Pure Detroit's use of the phrase on merchandise?
Opinions:
Majority - Tarnow, J.
No, the phrase 'IMPORTED FROM DETROIT' does not constitute a protectable trademark for which Chrysler has demonstrated a strong likelihood of success on the merits. To obtain a preliminary injunction, a plaintiff must show a strong likelihood of success, which requires proving both a protectable trademark and a likelihood of consumer confusion. Chrysler fails on both counts. The phrase is not inherently distinctive because it is geographically descriptive; it plainly describes the geographic origin of the goods and requires no mental leap by the consumer. Furthermore, Chrysler failed to meet the substantial evidentiary burden of showing the phrase acquired secondary meaning. A massive advertising spend does not instantaneously create secondary meaning, which must be established before the defendant's use begins. Even if the mark were protectable, Chrysler failed to establish a likelihood of confusion, as the mark is weak outside the automotive industry, the parties' goods are marketed differently, and there is no evidence of intent to deceive consumers.
Analysis:
This case illustrates the significant challenge of protecting a geographically descriptive slogan as a trademark, particularly in the immediate aftermath of a successful advertising campaign. The court's decision reinforces the principle that massive advertising expenditure alone does not instantly create the secondary meaning required for protection; such brand association must be established in the public mind over time. The ruling serves as a caution to marketers that popular slogans which describe a product's origin may enter the public domain as cultural phrases rather than becoming proprietary trademarks. This opinion provides a clear application of the multi-factor tests for both secondary meaning and likelihood of confusion, emphasizing that each element requires substantial proof.
