Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Celozzi-Ettelson Chevrolet, Inc.
8 U.S.P.Q. 2d (BNA) 1072, 855 F.2d 480, 1988 U.S. App. LEXIS 11889 (1988)
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Rule of Law:
Under the Illinois Anti-Dilution Act, an injunction must be granted to the owner of a distinctive mark if a subsequent user's mark dilutes that distinctiveness, regardless of competition between the parties or confusion as to the source of goods or services.
Facts:
- Ringling Bros.-Barnum & Bailey Combined Shows, Inc. (Ringling Bros.) owns and has used the trademark 'The Greatest Show on Earth' for nearly 100 years, making it a celebrated and famous mark associated with its circus.
- Ringling Bros. spends over $10 million annually to promote the mark and aggressively enforces it against potential infringers, who typically cease using similar slogans upon request.
- Celozzi-Ettelson Chevrolet, Inc. (Celozzi-Ettelson) is a large car dealership in Elmhurst, Illinois.
- In June 1985, Celozzi-Ettelson erected large signs on its showroom roof proclaiming 'The Greatest Used Car Show on Earth' in big, bold, red circus-style lettering.
- The slogan on the signs was also visible in television advertisements for Celozzi-Ettelson.
- After Ringling Bros. demanded that Celozzi-Ettelson cease using the phrase, Celozzi-Ettelson refused.
Procedural Posture:
- Ringling Bros.-Barnum & Bailey Combined Shows, Inc. sued Celozzi-Ettelson Chevrolet, Inc. in the U.S. District Court for the Northern District of Illinois.
- Ringling Bros. filed a motion for a preliminary injunction based on its claim under the Illinois Anti-Dilution Act.
- The district court, adopting the findings of a magistrate, granted Ringling Bros.' motion for a preliminary injunction.
- Celozzi-Ettelson Chevrolet, Inc. (appellant) appealed the district court's grant of the preliminary injunction to the U.S. Court of Appeals for the Seventh Circuit, with Ringling Bros. (appellee) as the responding party.
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Issue:
Does a car dealership's use of the slogan 'The Greatest Used Car Show on Earth' dilute the distinctive quality of a circus's famous trademark 'The Greatest Show on Earth' in violation of the Illinois Anti-Dilution Act?
Opinions:
Majority - Cummings
Yes. A car dealership's use of the slogan 'The Greatest Used Car Show on Earth' dilutes the distinctive quality of the circus's trademark 'The Greatest Show on Earth.' The Illinois Anti-Dilution Act mandates an injunction when a mark is distinctive and a subsequent use dilutes that distinctiveness. The court found that Ringling Bros.' mark, while composed of common words, has acquired distinctiveness through nearly a century of use, extensive advertising, and nationwide reputation. Celozzi-Ettelson’s slogan is deceptively similar because it incorporates the entire mark and uses circus-style lettering, which creates an association that whittles away the distinctiveness of the original. The federal Lanham Act's 'fair use' defense does not preempt the state statute, and even if it did, Celozzi-Ettelson's use was not in good faith nor was it merely descriptive of its business. Finally, dilution constitutes irreparable harm because it is an insidious injury that erodes the advertising value of a mark in a way that is difficult to quantify, making an injunction the appropriate remedy.
Analysis:
This decision reinforces the power of state anti-dilution statutes to protect famous trademarks beyond the scope of federal infringement law, which primarily focuses on likelihood of consumer confusion. The court affirmed that a mark can achieve distinctiveness through long-term use and advertising, even if it is not a coined or fanciful term. By establishing that irreparable harm is inherent in the nature of dilution, the ruling makes it easier for famous mark holders to obtain preliminary injunctions against non-competing users whose use may tarnish or blur the senior mark's selling power. This case serves as a key example of how dilution protects the commercial magnetism and uniqueness of a mark itself, rather than just protecting consumers from confusion.
