Mil-Mar Shoe Co. v. Shonac Corp. - 75 F.3d 1153 (7th Cir. 1996)

Rule:

Marks are classified into five categories of increasing distinctiveness: 1) generic, 2) descriptive, 3) suggestive, 4) arbitrary, and 5) fanciful. In general, the level of trademark protection available accords with the distinctiveness of the mark. Consequently, generic terms receive no trademark protection; descriptive marks are protected only if the mark has achieved "secondary meaning" in the relevant community; and suggestive, arbitrary, and fanciful marks are deemed inherently distinctive, and thus entitled to full protection. When the mark claimed as a trademark is not federally registered, the burden is on the claimant to establish that it is not an unprotectable generic mark.

Facts:

Mil-Mar Shoe Company, Inc., ("Mil-Mar") brought this action against the Shonac Corporation ("Shonac"), in Wisconsin state court, alleging common law trade name infringement, statutory trademark infringement under Wis. Stat. § 132.033, and unfair competition. Mil-Mar, owner of a chain of stores under the name "Warehouse Shoes," sought a temporary restraining order and a preliminary injunction to prevent Shonac from using the name "DSW Shoe Warehouse" (or any similar construction) to designate the retail shoe store that Shonac announced would be opened in the Greater Milwaukee area. The temporary restraining order was granted pending a hearing on the preliminary injunction. Shonac removed the case to federal court on the basis of diversity. 28 U.S.C. § 1332(a)(1). After a hearing on the matter, the district court granted the preliminary injunction, enjoining Shonac from using "DSW Shoe Warehouse," "Shoe Warehouse," or any other name confusingly similar to "Warehouse Shoes" in the Greater Milwaukee area. 

Issue:

Was "Warehouse Shoes" entitled to trademark protection?

Answer:

No.

Conclusion:

The court noted that a generic term was one that was commonly used as the name or description for a kind of goods, and that such terms could not become trademarks. The court then found that dictionary definitions of the term "warehouse" included "large retail store," and that retailers commonly used the term in store names. Rejecting the argument that it was descriptive in Mil-Mar’s mark, simply because it was used as an adjective, the court found that "warehouse" was a generic term, and that "Warehouse Shoes" was not entitled to protection.