Best Vacuum, Inc. v. Ian Design, Inc., No. 04 C 2249, 2006 WL 3486879 (N.D. Ill. Nov. 29, 2006) (Hort, J.).

In this trademark and Lanham Act unfair competition suit, Judge Hort granted summary judgment for defendant and dismissed the case.  Plaintiff had operated under the name "Best Vacuum" since 1983 and operated a www.bestvacuum.com website since 1996.  In 2003, defendant began operating a www.bestvacuumcleaners.com website, but when plaintiff complained, defendant changed its website to www.bestchoicevacuums.com.  After defendant refused to take down its second site, plaintiff sued.  Plaintiff’s trademark infringement claim was dismissed earlier in the case because plaintiff never registered its "Best Vacuum" mark.  The case was before the Court on cross summary judgment motions.

The Court dismissed plaintiff’s unfair competition claim because plaintiff’s "Best Vacuums" mark was descriptive and lacked secondary meaning.  Plaintiff’s only evidence to support secondary meaning was six selected responses from an in-store survey it did asking customers how long they had been aware of plaintiff’s store.  The Court held that "selective responses from a targeted audience are of little or no probative value."  In contrast, defendant commissioned an online, random survey which showed that less than 2% of respondents had heard of plaintiff’s website and only 2% knew of plaintiff’s retail store.  So, despite the fact that plaintiff operated its store for more than twenty years and its website for about ten years, the Court held that there was insufficient evidence to allow a reasonable jury to find that plaintiff established secondary meaning.

The Court dismissed plaintiff’s trademark dilution claim for lack of secondary meaning as well, coupled with a failure to comply with Local Rule 56.1.  Plaintiff filed a Rule 56.1 statement with its summary judgment brief.  Defendant responded to plaintiff’s Rule 56.1 statement in its responsive papers and filed a cross summary judgment motion, along with its own additional Rule 56.1 statement for its cross motion.  Plaintiff, despite having the opportunity to reply, filed nothing.  As a result, the Court deemed defendant’s additional Rule 56.1 statement true for purposes of plaintiff’s summary judgment motion (which ended up being moot as the Court did not rule upon plaintiff’s motion after granting defendant’s).  For purposes of defendant’s summary judgment motion, the Court deemed admitted any assertions made by defendant that were not addressed in plaintiff’s original Rule 56.1 statement, so plaintiff got a minor reprieve.  But this, once again, raises my most common practice tip:  you have to read Rule 56.1 several times and then follow it closely.