IP Law Daily Community center’s ‘de Paul’ marks found confusingly similar to Catholic charity’s registered marks
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Friday, September 7, 2018

Community center’s ‘de Paul’ marks found confusingly similar to Catholic charity’s registered marks

By Nicholas Kaster, J.D.

The use of "de Paul" marks by St. Vincent de Paul Community Center of Portage County was likely to cause confusion with the registered marks owned by the National Council of the United States Society of St. Vincent de Paul, the federal district court in Madison, Wisconsin, has held. The National Council’s marks were distinctive and protectable as a matter of law, the court ruled. Furthermore, the Community Center was not entitled to prevail on its laches defense (National Council of the U.S. Society of St. Vincent de Paul, Inc., v. St. Vincent de Paul Community Center of Portage County, Inc., September 5, 2018, Crabb, B.).

Plaintiff National Council of the United States Society of St. Vincent de Paul, Inc., was a Catholic lay organization. In 2016, the National Council filed Lanham Act claims against the defendant St. Vincent de Paul Community Center of Portage County, Inc., over its use of the mark "St. Vincent de Paul."

In a December 29, 2017 ruling, the court held that the National Council failed to proffer sufficient evidence to prove, as a matter of law, that any of its marks were protectable. Upon the submission of further evidence, the court has now concluded that the marks are, in fact, protectable and that the Community Center’s marks are likely to cause confusion among consumers.

The court concluded that the National Council’s registrations (‘318 and ‘794) were protectable as a matter of law. The ‘794 registration was for the word mark "Society of St. Vincent de Paul." The ‘318 registration was for a composite mark that included the text "Society of St. Vincent de Paul U.S.A." and graphic element using the letters S, T, V, de, and P. In its previous order, the court questioned the scope of protection of the ‘318 registration because the Community Center had used only the words appearing in the composite mark and not the composite mark as a whole.

The court found that a reasonable jury would conclude that the National Council was the senior user of the St. Vincent de Paul mark. The court noted that the Community Center had knowledge of the National Council’s use of the mark when the Community Center began using it in the 1980s. Further, the Community Center did not dispute that without receiving permission from the National Council, it began using the "St. Vincent de Paul" name in 1984 or 1985, identified itself as the "St. Vincent de Paul Society" on donation receipts in 1986, published the "Vinnie’s Newsletter" in 1993, and renamed its store "St. Vinnies Thrift Store" in November 2014.

Likelihood of confusion. The Seventh Circuit used the following seven factors to determine the likelihood of confusion: (1) the similarity between the parties’ marks in appearance and suggestion; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the degree of care likely to be exercised by consumers; (5) the strength of the National Council’s mark; (6) any evidence of actual confusion; and (7) the intent of the Community Center to "palm off" his product as that of another.

The court found all but two of these factors—including the important factors of similarity of marks and actual confusion—weighed in the National Council’s favor.

The court noted that the Community Center used the names "St. Vincent de Paul Community Center, Inc.," "St. Vincent de Paul’s Thrift Center," "St. Vincent de Paul," "St. Vincent de Paul Store," "St. Vincent de Paul Thrift Store," and "St. Vincent de Paul Society" to refer to its thrift store and charitable services at various times since 1984. The only difference between those marks and the National Council’s "Society of St. Vincent de Paul" mark were common descriptive terms such as "community center" or "thrift store."

Considering the parties’ thrift stores and services as a whole, including their overall appearance, signage, purpose, and charitable services, the court found that the National Council had shown that consumers encountering them in the marketplace would believe that the parties’ stores and services were part of the same organization or sponsored by it.

Given the strong similarities between the parties’ marks, products, and services, there was a significant risk that consumers were relying on a mistaken belief that Community Center’s organization was associated with the National Council, which was a long-established, Catholic lay organization, the court said. In fact, there was evidence of some actual confusion between the two organizations.

Because the National Council had satisfied both elements of its Lanham Act claims regarding the Community Center’s use of the marks that were the subject of the National Council’s ‘318 and ‘794 registrations, the court granted the National Council’s motion for summary judgment with respect to liability on those claims.

Laches defense. The Community Center raised the affirmative defense of laches. However, under the doctrine of inevitable confusion, a senior user’s claim was revived from estoppel by laches if the senior user showed that "inevitable confusion" would result from dual use of the marks. In light of the facts that the parties’ marks, products, and services were almost identical and that there was evidence of actual confusion, the court found that consumers would be inevitably confused by the National Council and the Community Center’s concurrent use of the St. Vincent de Paul marks. Because the evidence of confusion favored National Council so strongly in this case, no reasonable jury would find in Community Center’s favor on the inevitable confusion issue, the court held. Thus, the Community Center could not prevail on its affirmative defense of laches.

This case is No. 3:16-cv-00423-bbc.

Attorneys: Anthony R. Varda (Dewitt Ross & Stevens S.C.) and John E. Petite (Greensfelder, Hemker & Gale, PC) for National Council of the U.S. Society of St. Vincent De Paul, Inc. Erik S. Olsen (Eminent Domain Services, LLC) for St. Vincent De Paul Community Center of Portage County, Inc.

Companies: National Council of the U.S. Society of St. Vincent De Paul, Inc.; St. Vincent De Paul Community Center of Portage County, Inc.

MainStory: TopStory Trademark WisconsinNews

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