Mil-Mar Shoe Company, Inc. v. Shonac Corp.

75 F.3d 1153 (7th Cir. 1996)

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Nature of the Case

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Facts

P is a Wisconsin corporation that operates seventeen stores in the Greater Milwaukee area under the name 'Warehouse Shoes.' Since1970, P has continuously used and advertised the 'Warehouse Shoes' name in the area. P has registered trademarks for 'Warehouse Shoes' and 'Super Warehouse Shoes' with the Wisconsin Secretary of State. P spends over a million dollars a year advertising its stores under these names, and it has captured a significant share of the Greater Milwaukee shoe market. The 'Warehouse Shoes' name is well-known in the area. D operates retail shoe stores throughout the country. It uses the name 'DSW Shoe Warehouse.' D has United States trademark registrations for its DSW logo and the name 'DSW Shoe Warehouse,' though the United States Patent & Trademark Office. The Officer required D to disclaim any right to exclusive use of 'Shoe Warehouse' by itself. D spends millions of dollars advertising these stores each year. In May 1995, P requesting that D not use the 'Shoe Warehouse' portion of the name in a new store it was to open in P's marketplace. D refused to give up the name, and P brought this action. D put on evidence that, nationwide, 1) over 20,000 businesses use 'warehouse' in their name, 2) over 8000 of which are retail stores, and 3) that hundreds of retail shoe stores use either 'Warehouse Shoes' or 'Shoe Warehouse' in their names. The court found that 'Warehouse Shoes' was capable of protection as a trademark. The court found the name descriptive. The court held that P had a reasonable likelihood of success on its claim that 'Warehouse Shoes' had acquired secondary meaning and also that there was a likelihood of consumer confusion between 'Warehouse Shoes' and 'DSW Shoe Warehouse.' The court determined, as a matter of law, that fair use could not exist where there was likelihood of confusion. The district court granted P's request for a preliminary injunction. D appealed.