Fabick, Inc. v. JFTCO, Inc. ( 2019 )

In the
United States Court of Appeals
For the Seventh Circuit
____________________
Nos. 19-1760 & 19-1872
FABICK, INC.,
Plaintiff-Appellant, Cross-Appellee,
v.
JFTCO, INC.,
Defendant-Appellee, Cross-Appellant.
____________________
Appeals from the United States District Court for the
Western District of Wisconsin.
No. 16-cv-00172 — William M. Conley, Judge.
____________________
ARGUED NOVEMBER 5, 2019 — DECIDED DECEMBER 9, 2019
____________________
Before FLAUM, ROVNER, and HAMILTON, Circuit Judges.
FLAUM, Circuit Judge. Two non-competing Midwestern
companies operated by brothers used marks containing the
family name, Fabick. The owner of the registered mark (or
“senior user”) (Fabick, Inc., or “FI”), a small manufacturer of
sealants, sued the “junior user” (JFTCO, Inc.), a larger distrib-
utor of Caterpillar equipment, for trademark infringement. In
a mixed verdict, a jury found that JFTCO had violated the
2 Nos. 19-1760 & 19-1872
Lanham Act but had not committed common law infringe-
ment. FI sought an order permanently enjoining JFTCO from
using the name “Fabick,” but the district court entered limited
injunctive relief requiring that JFTCO issue, for five years, dis-
claimers clarifying that it is not associated with FI.
Both parties appealed. FI complains that the district court
erred in setting remedies: it should have entered a broad per-
manent injunction against JFTCO, and further should have al-
lowed FI to recover JFTCO’s profits. JFTCO, in its counter-ap-
peal, seeks reversal of the jury’s finding that it violated the
Lanham Act based on an allegedly erroneous jury instruction
and the district court’s refusal to overturn the jury’s verdict as
a matter of law.
We now affirm on each issue.
I. Background
FI is a Wisconsin corporation, based in Madison, dealing
in protective coatings and sealants for various uses. JFTCO is
a Delaware corporation and wholly owned subsidiary of the
John Fabick Tractor Company, a Caterpillar equipment dealer
based in Missouri. Both companies operate in Wisconsin and
the Upper Peninsula of Michigan (the “UP”).
This story of clashing family businesses begins with John
Fabick, the founder of multiple business concerns operating
throughout the Midwest. In 1982, his eponymous firm (the
John Fabick Tractor Company, which used various marks in-
cluding the word “Fabick” throughout its history) purchased
two existing Caterpillar equipment dealerships serving Wis-
consin and the UP. John intended for his son Joseph Fabick,
Sr. (Joe Sr.) to operate the dealerships. Joe Sr. moved to Wis-
consin and founded FABCO, selling new and used Caterpillar
Nos. 19-1760 & 19-1872 3
machines, vehicles, attachments, and parts. In 2001, Joe Sr.’s
son Jeré took over FABCO, which continued to operate Cater-
pillar dealerships until 2015. For over a decade, FABCO pri-
marily used a mark reading “FABCO CAT,” highlighting its
affiliation with Caterpillar.
FI began as a subsidiary of FABCO and was incorporated
in 1993. Its core business concerned spray-on sealants for use
in the beds of pickup trucks and similar vehicles. Another of
Joe Sr.’s sons, Joseph “Jay” Fabick, Jr., worked at FI. Appar-
ently, tensions between the brothers Jeré and Jay became un-
tenable and, in 1997, Jay’s employment was terminated. His
severance package included taking over FI (then primarily
owned by FABCO) as its sole owner. FI and FABCO then op-
erated independently, without apparent incident, for several
years.
In 1994, while still a subsidiary of FABCO, FI filed a trade-
mark application and a service mark application with the U.S.
Patent and Trademark Office for the mark “FABICK,” for
“polyurethane-based and polyurea-based sealers and protect-
ants to be applied as a coating to hard or flexible surfaces.”
The service mark was granted in 1995 and the trademark in
1997. FI has used several logos featuring the “Fabick” mark.
The dispute at hand was spurred by FABCO’s sale to a
newly formed subsidiary of the John Fabick Tractor Com-
pany, called JFTCO, in 2015. Having taken over FABCO’s op-
erations, JFTCO began operating as the exclusive Caterpillar
dealer in Wisconsin and the UP, using the trade name “Fabick
CAT.” JFTCO engaged in an extensive rebranding effort un-
der the Fabick CAT identity. FI claims that this rebranding be-
gan a long period in which customers were confused, includ-
ing those who called FI seeking JFTCO and misdirected
4 Nos. 19-1760 & 19-1872
checks between the companies. FI complained that as a small
company with minimal advertising, its identity was being
overwhelmed by JFTCO (which extensively advertised, in-
cluding at major sporting events).
FI sued JFTCO in March 2016; its operative complaint al-
leged (among other charges) that JFTCO committed federal
trademark infringement under the Lanham Act and at com-
mon law. The case eventually went to trial. Certain pretrial
holdings, the jury verdict itself, and posttrial decisions are
now on appeal. The relevant district court decisions are as fol-
lows.
At summary judgment, JFTCO argued that FI should not
be allowed to seek monetary damages because, prior to trial,
it had not put forth evidence of damages due to the alleged
infringement. The district court largely disagreed, noting that
it would be possible for FI to prove up multiple categories of
monetary damages, such as recompense for employee time
spent addressing confused customers or harm to goodwill.
The district court did agree, however, that FI could not seek
JFTCO’s profits as damages:
While plaintiff states in its opposition brief that
a defendant’s profits may be awarded[,] it fails
to develop any theory as to why such an award
would be appropriate here, much less evidence
supporting its award. On the contrary, as al-
ready noted in discussing plaintiff’s reverse
confusion theory, the court is hard-pressed to
understand how defendants were unjustly en-
riched by consumers assuming that Fabick’s
sealants and coatings business is the same or re-
lated to JFTCO’s business.
Nos. 19-1760 & 19-1872 5
Both sides presented their cases at trial. JFTCO argued in
part that by virtue of its association with the John Fabick Trac-
tor Company’s longstanding use of a “Fabick” mark, the jury
should find it established continuous prior use of the mark, a
defense showing that it, and not FI, first used and was the
original holder of the “Fabick” mark.
At the close of evidence, the district court instructed the
jury on the charges. In discussing Lanham Act liability, the
judge diverged from strict adherence to Seventh Circuit pat-
tern instructions, and provided the following element:
“[D]efendant JFTCO used the FABICK mark in a manner that
is likely to cause confusion as to the source or origin of plain-
tiff’s product or that plaintiff has somehow become con-
nected to JFTCO.” (additional language bolded; cf. Seventh
Circuit Pattern Jury Instruction 13.1.2).
The district court based its modification to the instructions
on its reading of the caselaw, namely Sands, Taylor & Wood Co.
v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992), which de-
scribed a case of reverse trademark confusion: “The public
comes to assume that the senior user’s products are really the
junior user’s or that the former has become somehow con-
nected to the latter. The result is that the senior user loses the
value of the trademark ….” Id. (emphasis added) (quoting
Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 964 (6th
Cir. 1987)).
The jury returned a mixed verdict. It found JFTCO liable
for federal trademark infringement and rejected JFTCO’s de-
fenses, including prior use. The jury also rejected FI’s com-
mon law infringement claim.
6 Nos. 19-1760 & 19-1872
After trial, JFTCO sought judgment as a matter of law in
its favor and FI sought a permanent injunction against JFTCO.
FI argued that because it prevailed on its Lanham Act claim,
the district court should permanently enjoin JFTCO from us-
ing the name “Fabick” as a part of its business in any way. The
district court denied JFTCO’s motion for judgment as a matter
of law and denied FI the requested permanent injunction. In-
stead, the district court ordered JFTCO to provide multiple
notices and disclaimers:
• To defendant’s employees on the intranet and on ref-
erence cards at each reception desk … for a period of
five years from the date of this order. Specifically, de-
fendant’s employees are to be regularly reminded to
refer questions about Fabick, Inc., or its products and
services to Fabick, Inc., including providing its phone
number and address, in response to internet and tele-
phone inquiries.
• To defendant’s customers in an insert with invoices
and on all invoices … for a period of five years from
the date of this order.
• To defendant’s vendors in an insert with all purchase
orders … for a period of five years from the date of this
order.
• To the public on defendant’s websites … for a period
of five years from the date of this order.
• To plaintiff’s customers and vendors in the form to be
drafted by plaintiff and approved by defendant to be
mailed once per year for three years ….
FI appealed; JFTCO responded and cross-appealed.
Nos. 19-1760 & 19-1872 7
II. Discussion
We first address JFTCO’s arguments: (1) that the district
court’s modification of the pattern jury instruction was inap-
propriate, (2) that the district court should have entered judg-
ment for JFTCO based on its prior use defense as a matter of
law, and (3) that the district court should have found no like-
lihood of confusion as a matter of law. We then turn to FI’s
arguments about its remedies: that it should have been al-
lowed to seek JFTCO’s profits and should have been awarded
a sweeping permanent injunction.
As an initial matter, it may be helpful to briefly discuss the
theory of “reverse trademark confusion” under which FI pre-
vailed on its Lanham Act claim. The typical trademark case
involves a well-established senior user pursuing later infring-
ers; think of a luxury fashion house suing the purveyors of
counterfeit handbags, or an NFL team suing a small manufac-
turer of goods bearing the team’s logo. Less common, but still
actionable under the Lanham Act, are reverse confusion cases.
There, the senior user is small and perhaps little-known, and
the larger junior user threatens not to steal the goodwill of the
smaller brand but to overwhelm its market identity.
Reverse confusion occurs when a large junior
user saturates the market with a trademark sim-
ilar or identical to that of a smaller, senior user.
In such a case, the junior user does not seek to
profit from the good will associated with the
senior user’s mark. Nonetheless, the senior user
is injured because [t]he public comes to assume
that the senior user’s products are really the jun-
ior user’s or that the former has become some-
how connected to the latter. The result is that the
8 Nos. 19-1760 & 19-1872
senior user loses the value of the trademark—its
product identity, corporate identity, control
over its goodwill and reputation, and ability to
move into new markets.
Sands, 978 F.2d at 957 (citation omitted).
A. Jury Instructions
“We review a district court’s choice of jury instruction de
novo when the underlying assignment of error implicates a
question of law.” Empress Casino Joliet Corp. v. Balmoral Racing
Club, Inc., 831 F.3d 815, 835 (7th Cir. 2016). “In crafting jury
instructions, however, the district court is afforded substan-
tial discretion, and we will reverse only if it failed to state the
law completely and correctly and the error caused prejudice.”
Burzlaff v. Thoroughbred Motorsports, Inc., 758 F.3d 841, 846 (7th
Cir. 2014).
As described above, the district court provided the follow-
ing instruction to the jury, with additions to the Seventh Cir-
cuit pattern instruction in bold: “[D]efendant JFTCO used the
FABICK mark in a manner that is likely to cause confusion as
to the source or origin of plaintiff’s product or that plaintiff
has somehow become connected to JFTCO.”
JFTCO argues that the district court provided an “errone-
ous instruction” to the jury, under which “the jury could find
a likelihood of confusion not only based on confusion as to
the source of Appellant’s products and services, but also
based on any mistaken belief ‘that plaintiff has somehow [be-
come] connected to JFTCO.’”
The district court considered this issue in its ruling on jury
instructions during trial. FI had proposed the additional lan-
guage based on the law as expressed in Sands, 978 F.2d at 957,
Nos. 19-1760 & 19-1872 9
and the district court agreed it was proper to include because
FI based its claims on reverse confusion.
JFTCO argues that the instruction runs afoul of this
Court’s ruling in Fortres Grand Corp. v. Warner Bros. Ent. Inc.,
where we stated that “general confusion ‘in the air’ is not ac-
tionable. Rather, only confusion about ‘origin, sponsorship, or
approval of ... goods’ supports a trademark claim.” 763 F.3d
696, 701 (7th Cir. 2014) (quoting 15 U.S.C. § 1125).
But in the context of the entire jury instruction below, the
jury could not have been under the impression that “general
confusion in the air” between the two parties would create li-
ability. The instructions included the following:
The purpose of trademark law is to prevent con-
fusion among consumers about the source of
products and/or services and to permit trade-
mark owners to show ownership of their prod-
ucts and/or services and control their product’s
and/or service’s reputation. Plaintiff claims that
defendant infringed plaintiff’s FABICK trade-
mark and service mark for polyurethane-based
and polyurea-based sealers and protectants to
be applied as a coating to hard or flexible sur-
faces by JFTCO’s use of the FABICK marks in
commerce in Wisconsin and the Upper Penin-
sula of Michigan in a manner that allegedly
causes a likelihood of confusion as to the origin
or source of the plaintiff’s goods or services or
that plaintiff has somehow become connected to
JFTCO. …
10 Nos. 19-1760 & 19-1872
To succeed on its claim that defendant infringed
plaintiff’s trademark and service mark, plaintiff
must prove by a preponderance of the evidence
that defendant used the FABICK mark in a man-
ner that is likely to cause confusion or mistake
as to the source or origin of plaintiff’s product
or that plaintiff has somehow become con-
nected to JFTCO. …
Plaintiff must prove a likelihood of confusion
among a significant number of people who buy
or use, or consider buying or using, the prod-
ucts or services or similar products or services.
In deciding this, you should consider the fol-
lowing factors:
Whether the overall impression created by de-
fendant’s use of the FABICK marks is similar to
that created by plaintiff’s trademark in appear-
ance or sound.
Whether defendant and plaintiff use the
FABICK marks on the same or related products
or services.
Whether plaintiff’s and defendant’s products or
services are likely to be sold in the same or sim-
ilar stores or outlets, or advertised in similar
media.
The degree of care that purchasers or potential
purchasers are likely to exercise in buying or
considering whether to buy the product or ser-
Nos. 19-1760 & 19-1872 11
vice (this may depend on the level of sophistica-
tion of potential buyers of the product or service
and the cost of the product or service).
The degree to which the consuming public rec-
ognizes FABICK as an indication of origin of de-
fendant’s goods or services.
Whether defendant’s use of the trademark or
service mark has led to instances of actual con-
fusion among purchasers or potential purchas-
ers about the source or origin of plaintiff’s prod-
ucts or services, however, actual confusion is
not required for finding a likelihood of confu-
sion.
In light of these detailed instructions, we cannot conclude
that the district court “failed to state the law completely and
correctly” or that any alleged error caused prejudice. When
read in context, including their close proximity (all of the
above quotations appear within about two pages of the writ-
ten instructions), the district court’s language regarding
whether “plaintiff has somehow become connected to
JFTCO” clearly refers to the parties’ products and/or services,
not an impermissibly vague “general confusion” in the ether.
As such, the jury instructions are not reason to overturn the
verdict.
B. Judgment as a Matter of Law
JFTCO appeals the district court’s denial of its motion for
judgment as a matter of law, and specifically contends that
(1) its prior use defense should have prevailed and (2) no rea-
sonable jury could have found that JFTCO’s use of a “Fabick”
mark caused a likelihood of confusion. We review denials of
12 Nos. 19-1760 & 19-1872
a motion for judgment as a matter of law de novo, viewing
evidence in the light most favorable to the non-moving party.
Palmquist v. Selvik, 111 F.3d 1332, 1343 (7th Cir. 1997). “In ap-
plying this de novo standard of review, we evaluate whether
any reasonable jury could have reached the same conclusion.”
Liu v. Price Waterhouse LLP, 302 F.3d 749, 754 (7th Cir. 2002).
1. JFTCO’s Prior Use Defense
JFTCO’s motion for judgment as a matter of law was pred-
icated on a prior use defense, arguing that JFTCO, not FI, was
actually the senior user of the mark (which would provide a
complete defense to the Lanham Act infringement claim).
“[A] trademark application is always subject to previously es-
tablished common law trademark rights of another party.”
S.C. Johnson & Son, Inc. v. Nutraceutical Corp., 835 F.3d 660, 665
(7th Cir. 2016). To establish this defense, “a party must show
first, adoption, and second, use in a way sufficiently public to
identify or distinguish the marked goods in an appropriate
segment of the public mind as those of the adopter of the
mark.” Id. at 666 (citations and internal quotation marks omit-
ted).
JFTCO claims that it easily met the standard for establish-
ing prior use under 15 U.S.C. § 1115(b), which it describes as
requiring only that JFTCO or a party in privity with it:
(1) used the trademark before FI applied for its registration,
(2) “continuously used the trademark up until trial at the ge-
ographic region at issue,” and (3) began using the mark with-
out knowing FI was also doing so. JFTCO presented extensive
evidence to both this Court and the district court of the John
Nos. 19-1760 & 19-1872 13
Fabick Tractor Company’s past use of a mark reading “Fa-
bick.” It is possible that a reasonable jury may have found
continuous prior use established. 1
But JFTCO’s evidence is not so overwhelming as to carry
the day on appeal, where it must show that, “viewing evi-
dence in the light most favorable” to FI, no reasonable jury
could have concluded JFTCO failed to show continuous prior
use of the mark in Wisconsin and the UP. As the district court
noted, FI cast doubt on JFTCO’s evidence of such use, and it
identified multiple instances where FI successfully poked
holes in the defense and upon which a reasonable jury could
have rejected a prior use finding. FI introduced testimony:
questioning John Fabick Tractor’s proof of sales in Wisconsin
and the Upper Peninsula; noting that even if sales could be
established in a particular time frame it did not follow that the
Fabick mark was identified with the company; suggesting
that any sales concluded were few in number (potentially as
low as one unit per year in an 80,000 square mile region); and
demonstrating the little evidence of any advertising prior to
1994. Finally, the district court noted that FI persuasively ar-
gued to the jury that sales under the “Fabick” mark were
likely dwarfed by sales under “FABCO,” thereby attenuating
the identification of “Fabick” with John Fabick Tractor.
1 In their briefs, the parties dispute whether this Court should adopt
a bright-line rule that the parent corporation’s use of a mark should not
inure to the benefit of its subsidiary. There is no need to reach this question
as we must affirm the district court if any reasonable jury could have de-
termined JFTCO had not established its prior use defense.
14 Nos. 19-1760 & 19-1872
Moreover, a reasonable jury could have found that the ev-
idence presented by JFTCO did not establish continuous use of
the Fabick mark in the region sufficient to establish senior
holder status. “Only active use allows consumers to associate
a mark with particular goods and notifies other firms that the
mark is so associated.” Zazu Designs v. L'Oreal, S.A., 979 F.2d
499, 503 (7th Cir. 1992). For example, the jury may have be-
lieved any or all of the following: that historical photos of
equipment showing a “Fabick” decal did not prove that such
decals were continuously used within Wisconsin and the UP;
that perhaps one invoice a year bearing the mark to a single
customer in the region was insufficient; that no documentary
evidence verified sales in the UP prior to 2002; and that mid-
century era advertising with the logo did not prove such ad-
vertising was continuous through 1994 and beyond.
JFTCO argues that the “holes” poked by FI are minimal
compared to the evidence it presented in favor of the defense,
but this ignores the standard of review weighing heavily in
favor of the non-movant. We cannot hold, viewing all evi-
dence in the light most favorable to FI, that no reasonable jury
could have been convinced by the doubts cast over JFTCO’s
prior use claim.
2. Likelihood of Confusion
JFTCO also appeals the denial of its motion for judgment
as a matter of law on the basis that “no reasonable jury could
find a likelihood of reverse confusion” based on the evidence
presented in the case. According to JFTCO, the marks at issue
are not similar, the parties’ products and services are not sim-
ilar, the area and manner of use of the marks are not concur-
rent, customers of the parties exercise a high degree of care,
Nos. 19-1760 & 19-1872 15
the “Fabick” mark is weak, and there was insufficient evi-
dence of actual confusion as to the source or origin of FI’s
products or services. See Sands, 978 F.2d at 959 (listing factors
in analyzing likelihood of confusion).
It is unnecessary to address each of these points because,
again, we must affirm if any reasonable jury could have found
a likelihood of confusion between the parties’ goods and ser-
vices. Despite JFTCO’s protests, there are abundant bases in
the record to uphold the jury’s finding of a likelihood of con-
fusion. These include the use of the same relatively unusual
surname as the mark’s primary descriptor, the fact that it is
reasonable to assume FI’s sealants could have been used on
the type of equipment sold by JFTCO, and, most importantly,
the 240+ recorded instances of actual confusion demonstrated
by FI (primarily customers trying to reach JFTCO but contact-
ing FI instead). Taking the factors as a whole, the massive
amount of undisputed evidence FI presented showing that
hundreds of customers confused the two parties (based on
JFTCO’s “Fabick CAT” advertising) prevents us from over-
turning the jury’s verdict on this point.
JFTCO contends that most of the confusion seemed to be
among its own customers mistakenly contacting FI. Because
this is a reverse confusion case, JFTCO argues, the focus
should be on FI’s customers mistakenly calling JFTCO. Re-
gardless of whether this is the case (and JFTCO fails to cite
any case making such a holding), FI identified multiple joint
customers of the parties who actually confused them. Because
a reasonable jury could have found against JFTCO on the like-
lihood of confusion, we affirm the judgment of the district
court.
16 Nos. 19-1760 & 19-1872
C. Remedies
FI appeals two decisions of the district court: (1) the ruling
that FI could not seek JFTCO’s profits and (2) the imposition
of limited injunctive relief instead of a permanent, sweeping
injunction against JFTCO’s use of “Fabick” as a mark. Neither
argument prevails.
1. JFTCO’s Profits
At summary judgment, the district court ruled that FI
could not seek JFTCO’s profits as a remedy for trademark in-
fringement. “We review the district court's grant of summary
judgment de novo and draw all reasonable inferences from
the evidence in the light most favorable to the nonmoving
party.” Harmon v. Gordon, 712 F.3d 1044, 1050 (7th Cir. 2013).
In rejecting FI’s requests for JFTCO’s profits, the district
court noted that “plaintiff has offered nothing to support such
an award” and had failed to “develop any theory as to why
such an award would be appropriate here.” Because FI was
proceeding on a reverse infringement theory, the district
court stated it was “hard-pressed to understand how defend-
ants were unjustly enriched by customers assuming that [FI’s]
sealants and coatings business is the same or related to
JFTCO’s business.” FI appeals, arguing that the Lanham Act
explicitly allows the recovery of a defendant’s profits and that
recovery of profits should be the assumed remedy where in-
fringement is found.
Tellingly, FI lacks any citations, to the Seventh Circuit or
otherwise, mandating such a result. This likely is because dis-
trict courts are granted broad discretion in fashioning reme-
dies for trademark infringement; the district court here was
Nos. 19-1760 & 19-1872 17
well within its rights to find at summary judgment that FI had
failed to make a case for getting JFTCO’s profits.
As noted, the Lanham Act does contemplate awarding de-
fendants’ profits to prevailing plaintiffs. “When a violation of
any right of the registrant of a mark … shall have been estab-
lished[,] the plaintiff shall be entitled, subject to … the princi-
ples of equity, to recover (1) defendant’s profits, (2) any dam-
ages sustained by the plaintiff, and (3) the costs of the action.”
15 U.S.C. § 1117(a). Not only does § 1117(a) qualify the avail-
ability of profits as “subject to the principles of equity,” but
further explains that “[i]f the court shall find that the amount
of the recovery based on profits is [] excessive the court may
in its discretion enter judgment for such sum as the court shall
find to be just, according to the circumstances of the case.” Id.
As the district court found that no evidence (such as bad faith
or unjust enrichment) supported an award of profits, it was
consistent with the statutory language to deny FI such an
award.
Indeed, the authorities FI cites elsewhere hold that reverse
confusion cases present meager justification for profit awards.
See, e.g., Sands, 978 F.2d at 963 (stating that “[w]e do think,
however, that the evidence of bad faith here is marginal at
best. Further, this is not a case where the senior user’s trade-
mark is so well-known that the junior user’s choice of a con-
fusingly similar mark, out of the infinite number of marks in
the world, itself supports an inference that the junior user
acted in bad faith,” and reversing award of profits); 4 McCar-
thy on Trademarks § 23:10 (“Because in a reverse confusion
case the infringer is not seeking to take away the plaintiff’s
customers through confusion, awarding the plaintiff the prof-
its of the infringer is not a proper basis for recovery.”). The
18 Nos. 19-1760 & 19-1872
district court’s decision that FI was not eligible to recover
JFTCO’s profits comports with the facts of this case and the
law generally.
2. Injunctive Relief
Having prevailed on its federal trademark claim, FI
sought a broad, sweeping injunction that would have pre-
vented JFTCO from using “Fabick” in any business context.
The court denied this request, and instead entered limited in-
junctive relief requiring that JFTCO, for five years, issue dis-
claimers clarifying that it is a different company from FI. Un-
der the Lanham Act, the district court may “grant injunctions,
according to the principles of equity and upon such terms as
the court may deem reasonable, to prevent the violation” of a
trademark. 15 U.S.C. § 1116(a). We review the district court’s
denial of a permanent injunction for an abuse of discretion.
3M v. Pribyl, 259 F.3d 587, 597 (7th Cir. 2001). “Factual deter-
minations are reviewed for clear error and legal conclusions
are given de novo review. A factual or legal error may be suf-
ficient to establish an abuse of discretion.” Id.The district court based its decision on two primary
points: that Jay Fabick, on behalf of FI, applied for the “Fa-
bick” trademark in 1994 while aware of the John Fabick Trac-
tor Company’s previous use of a such a mark, and the nature
of the harm claimed by FI, lacking much evidence at all of
harm to its reputation, lost sales, or similar damages. Instead,
FI presented a great deal of evidence of people confusing it
for JFTCO, but not otherwise causing harm, irreparable or
otherwise. Checks were ultimately re-directed to their proper
destination, and there was not significant evidence of lost
manpower to resolve the confusion. FI argued below and ar-
gues now that the reverse infringement committed by JFTCO
Nos. 19-1760 & 19-1872 19
should automatically lead to a finding of irreparable harm
and, thus, a permanent injunction. The law, however, is not
as forceful as FI would have it. The Lanham Act places broad
discretion in the district court to fashion an appropriate rem-
edy.
FI primarily relies on Int’l Kennel Club of Chicago, Inc. v.
Mighty Star, Inc., which shares some factual elements with the
instant case. 846 F.2d 1079 (7th Cir. 1988). A plush toy manu-
facturer created and marketed a line of “International Kennel
Club” stuffed dogs, despite the earlier existence and mark of
the International Kennel Club of Chicago. Following the pub-
lication of multiple advertisements in national magazines,
“IKC officials began receiving telephone calls (at a rate of
about one per day), letters, and personal inquiries from peo-
ple expressing confusion as to the plaintiff’s relationship to
the International Kennel Club stuffed dogs.” Id. at 1082. The
district court entered a preliminary injunction against the
toymaker, finding a strong likelihood of confusion between
the parties was likely to occur absent relief. This Court af-
firmed that decision, holding that
Although as the defendants point out, the plain-
tiff failed to establish that people stopped going
to the plaintiff’s shows or that it lost vendors or
advertisers as a result of the defendants’ use of
the International Kennel Club name, we have
never recognized this as the controlling legal
standard. To the contrary, we have held that
“the owner of a mark is damaged by a later use
of a similar mark which place[s] the owner’s
reputation beyond its control, though no loss in
business is shown.”
20 Nos. 19-1760 & 19-1872
Id. at 1091 (quoting James Burrough Ltd. v. Sign of Beefeater, Inc.,
540 F.2d 266, 276 (7th Cir. 1976)). FI argues that its situation is
analogous: Although it cannot show a loss of business, the
damage is in the loss of control of its mark, and a full injunc-
tion should issue.
The district court, however, distinguished International
Kennel Club. “In that case[,] the plaintiff presented evidence of
damages to its goodwill, including customers and other ven-
dors expressing concerns about the apparent affiliation be-
tween the plaintiff, an organization devoted to purebred dog
shows, and the infringing defendant, who sold stuffed toy
dogs.” FI is correct that irreparable harm can be shown even
without showing lost profits, but is wrong to suggest that dis-
trict courts do not have the discretion to compare and evalu-
ate different types or degrees of non-monetary harm. The dis-
trict court recognized that FI was, indeed, harmed by the in-
fringement even though it could not show any loss of business
or reputation to date, but it was appropriate for the court to
evaluate the nature of the infringement and harm in crafting
its injunctive remedy.
While a permanent injunction may be the typical remedy
for trademark infringement, it is by no means automatically
applied. See 5 McCarthy on Trademarks § 30:1. “In trademark
cases, the scope of the injunction to be entered depends upon
the manner in which plaintiff is harmed, the possible means
by which that harm can be avoided, the viability of the de-
fenses raised, and the burden that would be imposed on de-
fendant and the potential effect upon lawful competition be-
tween the parties.” Id. § 30:3. This is a reverse infringement
case, involving formerly related entities, who do not compete,
disputing the use of a shared family name, and concerning a
Nos. 19-1760 & 19-1872 21
small number of customers of the senior user. In such a cir-
cumstance, it was reasonable for the district court to deter-
mine that a permanent injunction barring JFCTO from ever
using its owner’s family name in a business context was over-
kill. The ordered disclaimers are reasonably designed to no-
tify any and all of the people whose confusion could cause an
issue for FI for five years. It is tailored to remedy the infringe-
ment; it does not constitute an abuse of discretion.
A family dispute involving a historic German restaurant
is instructive. In Berghoff Rest. Co., Inc. v. Lewis W. Berghoff, Inc.,
the famed gasthaus sued its erstwhile employee, Lewis, who
had been terminated from the family business and then
opened his own eponymous restaurant in suburban Elgin. 499
F.2d 1183 (7th Cir. 1974). The district court found in favor of
the prominent eatery but denied the Berghoff the full perma-
nent injunction it sought.
While recognizing that plaintiff’s goodwill was
established through effort and labor and de-
serving of some consideration despite the fact
that defendant’s surname was identical, the
court noted that the individual defendant had
previously contributed to the Berghoff name,
thus requiring a delicate balancing of the equi-
ties. Instead of affording complete relief to
plaintiff, the court fashioned an injunction re-
quiring defendants to use the individual de-
fendant’s given name ‘Lewis’ with his surname
in operating a restaurant business. ‘Lewis’ was
to be in the same size letters as ‘Berghoff.’ Ex-
cept for one billboard and the sign above the El-
gin restaurant, defendants were directed to use
22 Nos. 19-1760 & 19-1872
the disclaimer ‘Not affiliated with the Berghoff
Restaurants of Chicago’ in their advertising and
on the front of their menus. The individual de-
fendant was ordered to file a report with the dis-
trict court 60 days after the entry of the decree
showing how compliance was effected.
Id. at 1185. This Court affirmed the district court’s decision to
apply a limited injunction, holding that “[t]he Lanham Act
did not require the court below to restrain all use of the
‘BERGHOFF’ name.” Id. at 1185–86; see also 5 McCarthy on
Trademarks § 30:3 (“In litigation between persons of the same
personal name using the name as a trademark, it is common
practice to balance the rights by a limited injunction which,
while not preventing the use of a personal name altogether,
requires … disclaimers.”). Considering that we have held lim-
ited injunctions to be acceptable in traditional infringement
cases, they may be even more appropriate in the reverse con-
fusion context, where no brand has sought to steal the good-
will of another.
III. Conclusion
For the foregoing reasons, we AFFIRM the judgment of the
district court.