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Keywords

injunctiontrademarkcorporation
trademark

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Mil-Mar Shoe Co., Inc. v. Shonac Corp., 75 F.3d 1153, 64 USLW 2564, 37 U.S.P.Q.2d 1633

Facts

Issue

Whether the term 'Warehouse Shoes' is generic and thus not entitled to trademark protection under Wisconsin law.

Whether the term 'Warehouse Shoes' is generic and thus not entitled to trademark protection under Wisconsin law.

Rule

Trademarks are classified into five categories of increasing distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. Generic terms receive no trademark protection, while descriptive marks are protected only if they have acquired secondary meaning. The burden is on the claimant to establish that a mark is not an unprotectable generic mark, and the placement of a mark in a particular category is subject to review for clear error.

Trademarks are classified under five categories of increasing distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful; in general, level of trademark protection available accords with distinctiveness of mark. Generic terms receive no trademark protection.

Analysis

The court analyzed the distinctiveness of the term 'Warehouse Shoes' and found it to be generic, as it merely describes a type of retail store. Evidence was presented showing that many businesses use 'warehouse' in their names, indicating that the term is commonly understood to refer to a type of retail establishment. The court concluded that the district court erred in finding 'Warehouse Shoes' to be descriptive and entitled to protection.

Conclusion

The appellate court reversed the district court's grant of the preliminary injunction, concluding that 'Warehouse Shoes' is a generic term and not entitled to trademark protection.

Who won?

Shonac Corporation prevailed in this case as the appellate court found that the term 'Warehouse Shoes' was generic and thus not entitled to trademark protection. The court emphasized that allowing a generic term to be protected as a trademark would undermine fair competition and the ability of competitors to describe their goods accurately.

Shonac is correct that 'Shoe Warehouse,' like 'Shoe Outlet' or 'Shoe Mart,' definitely qualifies as generic; it is the generic term for a particular type of retail store that sells shoes. As such, it would appear that Shonac's right to use the term generically in the name 'DSW Shoe Warehouse' should be unfettered.

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