International Kennel Club of Chicago, Inc. v. Mighty Star, Inc.
1988 WL 48958, 846 F.2d 1079 (1988)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A descriptive trademark is protectable under the Lanham Act if it has acquired secondary meaning. Infringement occurs when a junior user's use of the mark on related, though not directly competitive, goods is likely to cause confusion among consumers as to the source, sponsorship, or affiliation of the goods.
Facts:
- For over 50 years, the International Kennel Club of Chicago, Inc. (IKC) has sponsored major dog shows in Chicago, gaining a reputation among canine enthusiasts across North America.
- IKC advertises in national dog-related publications and spends approximately $60,000 annually on advertising and public relations.
- In late 1985, defendants Mighty Star, Inc. and DCN Industries, Inc. decided to launch a new line of stuffed 'pedigree' toy dogs.
- The defendants chose the name 'International Kennel Club' for this toy line and planned a marketing campaign where purchasers could 'register' their toy dogs.
- A trademark search conducted by the defendants revealed the plaintiff's existence as the 'International Kennel Club of Chicago' before they began marketing.
- Despite this knowledge, the defendants proceeded to launch and advertise their toy dogs under the 'International Kennel Club' name in national magazines.
- Following the defendants' advertising campaign, IKC began receiving phone calls, letters, and in-person inquiries from individuals who were confused about the relationship between the dog show organization and the stuffed dogs.
Procedural Posture:
- International Kennel Club of Chicago, Inc. sued Mighty Star, Inc. and DCN Industries, Inc. in federal district court for trademark infringement.
- Contemporaneously with the complaint, the plaintiff filed a motion for a preliminary injunction to stop the defendants' use of the 'International Kennel Club' name.
- The district court held a three-day hearing on the plaintiff's motion.
- The district court granted the plaintiff's motion for a preliminary injunction, ordering the defendants to cease using the name.
- The defendants appealed the district court's order granting the preliminary injunction to the U.S. Court of Appeals for the Seventh Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does a toy company's use of the name 'International Kennel Club' for its line of stuffed pedigree dogs create a likelihood of confusion with a long-established dog show organization of the same name, sufficient to warrant a preliminary injunction for trademark infringement under the Lanham Act?
Opinions:
Majority - Judge Coffey
Yes. The defendants' use of the name creates a likelihood of confusion, and the district court did not abuse its discretion in granting a preliminary injunction. The plaintiff demonstrated a better than negligible chance of success on the merits by showing both that its descriptive name has likely acquired secondary meaning and that the defendants' use of the name is likely to cause consumer confusion. Secondary meaning was established through the IKC's half-century of continuous use, targeted advertising, and extensive publicity. Likelihood of confusion was established by weighing several factors, most notably the near-identical similarity of the marks, the related nature of the products (dog shows and toy dogs), and compelling evidence of actual consumer confusion. The court rejected the argument that the parties' non-competing status or the defendant's use of a house mark were dispositive, as consumers could easily assume a licensing or sponsorship arrangement.
Dissenting - Judge Cudahy
No. The district court abused its discretion because the plaintiff's evidence of both secondary meaning and likelihood of confusion was exceedingly unclear and insufficient to justify a preliminary injunction. The plaintiff's advertising expenditures were modest, and they failed to provide substantial evidence, like consumer surveys, to prove that the descriptive name 'International Kennel Club' had acquired secondary meaning. Furthermore, the products are not in competition and are only tangentially related, and the evidence of actual confusion was, in the district court's own words, 'hardly overwhelming.' A less drastic remedy, such as a disclaimer, would have been more appropriate given the weakness of the plaintiff's case and the significant economic harm the injunction imposes on the defendants.
Analysis:
This case clarifies that trademark protection under the Lanham Act extends to non-competing but related goods where consumer confusion is likely. It establishes that for a descriptive mark, long-standing use and targeted advertising within a niche market can be sufficient to demonstrate secondary meaning, even without consumer surveys, at the preliminary injunction stage. The decision also emphasizes the significant weight given to even a small amount of evidence of actual confusion. This precedent strengthens the position of senior users of descriptive marks against junior users in related fields, reinforcing the principle that irreparable harm includes the loss of control over one's reputation, regardless of direct economic loss.
