Addressing issues of trademark infringement and Florida’s Deceptive and Unfair Trade Practices Act, the U.S. Court of Appeals for the Eleventh Circuit affirmed a summary judgment ruling that a mark describing the nature of the services provided by the trademark holder was generic and that the trademark holder could not demonstrate a likelihood of confusion based on a stylized logo. Welding Services, Inc. v. Forman, 509 F.3d 1351 (11th Cir., 2007) (Gibson, J.).
Plaintiff Welding Services and defendants Terry Forman and Welding Technologies are rival companies providing services for maintaining heavy equipment. Since 1990, Welding Services has used the abbreviation "WSI." A stylized logo consisting of the "WSI" initials surrounded by a circle has been in use since February 1994. In 2003, former Welding Services employees, including Forman, formed a rival company, Welding Technologies, in 2003. They began using a logo with the company’s initials "WTI" with an orange "rotational symbol." Welding brought suit alleging trademark infringement on its abbreviation and stylized logo, as well as other causes of action.
The Eleventh Circuit stated that the first issue was whether the "WSI" abbreviation was generic. The court held that "a would-be proprietor’s use of the words in the mark to refer to the kind of services it and its competitors provided is powerful evidence that the words in the putative mark are being used generically. Both Welding and Forman provide "welding" services and it is part of the "WSI" mark. The Court held, however, that abbreviations of generic words may become protectable abbreviation has a meaning distinct from the underlying words in the mind of the public. Here, the "WSI" abbreviation was not found to be distinct from the generic "welding" wording.
The Court also considered whether the stylized logo was eligible for protection. The Court found an absence of likelihood of confusion between the "WSI" logo, which consists of stylized letters in a circle, and the "WTI" logo, which consists of plain block letters with an orange "swoosh" design, meant to convey rotational movement. Based on those dissimilarities, the Court stated that there was no likelihood of confusion.
Practice Note: Companies should be cautious of creating trademarks and logos that describe the products and services they provide. Marks that are separate and distinct from their proprietor’s products and services tend to enhance the scope of protection and value of the marks.
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