{ "id": 3598584, "name": "LOYD THOMPSON, d/b/a Spring Green Landscaping, Plaintiff-Appellant, v. SPRING-GREEN LAWN CARE CORP. et al., Defendants-Appellees", "name_abbreviation": "Thompson v. Spring-Green Lawn Care Corp.", "decision_date": "1984-06-07", "docket_number": "No. 83\u2014947", "first_page": "99", "last_page": "114", "citations": [ { "type": "official", "cite": "126 Ill. App. 3d 99" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "95 S. Ct. 134", "category": "reporters:federal", "reporter": "S. Ct.", "opinion_index": 0 }, { "cite": "42 L. Ed. 2d 112", "category": "reporters:federal", "reporter": "L. Ed. 2d", "opinion_index": 0 }, { "cite": "419 U.S. 873", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 6355648, 6354727, 6354280, 6355216, 6355862, 6354489, 6355418, 6354940 ], "opinion_index": 0, "case_paths": [ "/us/419/0873-07", "/us/419/0873-03", "/us/419/0873-01", "/us/419/0873-05", "/us/419/0873-08", "/us/419/0873-02", "/us/419/0873-06", "/us/419/0873-04" ] }, { "cite": "303 N.E.2d 177", "category": "reporters:state_regional", "reporter": "N.E.2d", "year": 1974, "opinion_index": 0 }, { "cite": "14 Ill. App. 3d 641", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 2682524 ], "year": 1974, "opinion_index": 0, "case_paths": [ "/ill-app-3d/14/0641-01" ] }, { "cite": "343 N.E.2d 479", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "62 Ill. 2d 435", "category": "reporters:state", "reporter": "Ill. 2d", "case_ids": [ 2972054 ], "opinion_index": 0, "case_paths": [ "/ill-2d/62/0435-01" ] }, { "cite": "96 S. Ct. 454", "category": "reporters:federal", "reporter": "S. Ct.", "year": 1976, "opinion_index": 0 }, { "cite": "46 L. Ed. 2d 390", "category": "reporters:federal", "reporter": "L. Ed. 2d", "opinion_index": 0 }, { "cite": "423 U.S. 1018", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 6460736, 6461092, 6461703, 6461896, 6461001, 6461230, 6461393, 6460919, 6460827, 6461820, 6461309 ], "opinion_index": 0, "case_paths": [ "/us/423/1018-01", "/us/423/1018-05", "/us/423/1018-09", "/us/423/1018-11", "/us/423/1018-04", "/us/423/1018-06", "/us/423/1018-08", "/us/423/1018-03", "/us/423/1018-02", "/us/423/1018-10", "/us/423/1018-07" ] }, { "cite": "327 N.E .2d 242", "category": "reporters:state_regional", "reporter": "N.E.2d", "year": 1975, "opinion_index": 0 }, { "cite": "26 Ill. App. 3d 814", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 2789678 ], "year": 1975, "opinion_index": 0, "case_paths": [ "/ill-app-3d/26/0814-01" ] }, { "cite": "290 N.E. 2d 701", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "588 F.2d 213", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 832176, 832022 ], "opinion_index": 0, "case_paths": [ "/f2d/588/0213-01", "/f2d/588/0213-02" ] }, { "cite": "319 F.2d 830", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 157949 ], "year": 1978, "opinion_index": 0, "case_paths": [ "/f2d/319/0830-01" ] }, { "cite": "71 N.E. 362", "category": "reporters:state_regional", "reporter": "N.E.", "opinion_index": 0 }, { "cite": "210 Ill. 176", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 3304570 ], "opinion_index": 0, "case_paths": [ "/ill/210/0176-01" ] }, { "cite": "205 F.2d 921", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1263259 ], "year": 1976, "opinion_index": 0, "case_paths": [ "/f2d/205/0921-01" ] }, { "cite": "187 F.2d 278", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1222428 ], "opinion_index": 0, "case_paths": [ "/f2d/187/0278-01" ] }, { "cite": "558 F. 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App. 3d 925", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3034710 ], "year": 1972, "opinion_index": 0, "case_paths": [ "/ill-app-3d/106/0925-01" ] }, { "cite": "52 N.E. 487", "category": "reporters:state_regional", "reporter": "N.E.", "opinion_index": 0 }, { "cite": "177 Ill. 129", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 3154271 ], "opinion_index": 0, "case_paths": [ "/ill/177/0129-01" ] }, { "cite": "695 F.2d 1050", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1492122 ], "opinion_index": 0, "case_paths": [ "/f2d/695/1050-01" ] }, { "cite": "98 U.S.P.Q. 415", "category": "reporters:specialty", "reporter": "U.S.P.Q. (BNA)", "weight": 2, "pin_cites": [ { "page": "416" } ], "opinion_index": 0 }, { "cite": "97 S. Ct. 91", "category": "reporters:federal", "reporter": "S. Ct.", "weight": 7, "opinion_index": 0 }, { "cite": "50 L. Ed. 2d 94", "category": "reporters:federal", "reporter": "L. 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Supp. 958", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 1571857 ], "year": 1967, "opinion_index": 0, "case_paths": [ "/f-supp/268/0958-01" ] }, { "cite": "98 S. Ct. 751", "category": "reporters:federal", "reporter": "S. Ct.", "weight": 4, "opinion_index": 0 }, { "cite": "54 L. Ed. 2d 772", "category": "reporters:federal", "reporter": "L. Ed. 2d", "weight": 4, "opinion_index": 0 }, { "cite": "434 U.S. 1025", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 6506656, 6506721, 6506951, 6506864, 6506806 ], "weight": 4, "opinion_index": 0, "case_paths": [ "/us/434/1025-01", "/us/434/1025-02", "/us/434/1025-05", "/us/434/1025-04", "/us/434/1025-03" ] }, { "cite": "561 F.2d 75", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 882603 ], "weight": 4, "year": 1978, "pin_cites": [ { "page": "79" } ], "opinion_index": 0, "case_paths": [ "/f2d/561/0075-01" ] }, { "cite": "290 N.E.2d 701", "category": "reporters:state_regional", "reporter": "N.E.2d", "weight": 2, "opinion_index": 0 }, { "cite": "8 Ill. App. 3d 338", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 2758312 ], "weight": 3, "opinion_index": 0, "case_paths": [ "/ill-app-3d/8/0338-01" ] }, { "cite": "482 F. Supp. 397", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 5766578 ], "weight": 2, "year": 1972, "opinion_index": 0, "case_paths": [ "/f-supp/482/0397-01" ] }, { "cite": "394 F.2d 833", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 2153771 ], "weight": 4, "opinion_index": 0, "case_paths": [ "/f2d/394/0833-01" ] }, { "cite": "261 F. Supp. 200", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 1529701 ], "weight": 4, "year": 1967, "opinion_index": 0, "case_paths": [ "/f-supp/261/0200-01" ] }, { "cite": "499 F.2d 1183", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1171027 ], "year": 1966, "opinion_index": 0, "case_paths": [ "/f2d/499/1183-01" ] }, { "cite": "357 F. Supp. 127", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 3476476 ], "year": 1974, "opinion_index": 0, "case_paths": [ "/f-supp/357/0127-01" ] }, { "cite": "407 N.E .2d 43", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "407 N.E.2d 43", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "81 Ill. 2d 151", "category": "reporters:state", "reporter": "Ill. 2d", "case_ids": [ 5480949 ], "weight": 2, "opinion_index": 0, "case_paths": [ "/ill-2d/81/0151-01" ] }, { "cite": "456 N.E.2d 871", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "119 Ill. App. 3d 582", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3628963 ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/119/0582-01" ] } ], "analysis": { "cardinality": 1323, "char_count": 35760, "ocr_confidence": 0.738, "pagerank": { "raw": 2.5014534024093475e-07, "percentile": 0.8096012547449678 }, "sha256": "f2d1b71dd8517d69b8ef3f8dd5381a15bcef4ee25360fa569964b62040a86806", "simhash": "1:376a40a489a21cd7", "word_count": 5827 }, "last_updated": "2023-07-14T22:48:42.345915+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "LOYD THOMPSON, d/b/a Spring Green Landscaping, Plaintiff-Appellant, v. SPRING-GREEN LAWN CARE CORP. et al., Defendants-Appellees." ], "opinions": [ { "text": "PRESIDING JUSTICE LINN\ndelivered the opinion of the court:\nOn January 22, 1974, plaintiff, Loyd Thompson, and his business partner, Guenther Herden, entered into a contract with Robert Gora for the sale of a business known as \u201cSpring Green Landscaping,\u201d founded by Gora, who operated it from 1966 through 1974. In addition to customer lists, vehicles, machinery and equipment, the sale included the good will of the business and use of the business\u2019s name, which Gora had registered in Cook County under the Assumed Name Statute in May 1968. Plaintiff registered the service mark \u201cSpring Green\u201d under the Illinois Trademark Act in May 1978.\nGora described the nature of Spring Green Landscaping as offering lawn maintenance, reconstruction and a \u201ccomplete landscaping package.\u201d A 1971 flier sent to prospective customers advertising Spring Green Landscaping described the lawn maintenance program offered as including\n\u201cWeekly lawn cutting and pick-up Fertilizing entire lawn area twice a year Trimming of any shrubs and evergreens up to three times a year Monthly edging of sidewalk areas Weeding around shrubs and any existing flower beds\u201d\nWhen plaintiff purchased the business in 1974, approximately three-quarters of the customer accounts involved fertilization as part of their lawn maintenance program. Plaintiff testified that over 50% of his customers have fertilizer and weed killer applied to their lawns.\nGora originally operated Spring Green Landscaping out of Brook-field but gradually expanded his services to customers in areas including LaGrange, Hinsdale, Darien, Naperville and Mount Prospect. Plaintiff operates the business out of Hinsdale and services communities in Cook, Du Page, and Will counties. Between 1974 and 1977, plaintiff advertised his business in the yellow and white pages of the telephone directories for the western suburbs of Chicago. In 1979, he also began advertising in the Contractors Trade Directory and paying the Welcome Wagon to distribute, in Oak Brook, a pot holder with the words \u201cSpring Green\u201d on it. In 1982, he resumed advertising, after a 10-year lapse, in the Contractors Register; and in 1981 and 1982, he began to advertise under the \u201cLawn Maintenance\u201d category, in addition to the \u201cLandscaping\u201d category, so that in the Yellow Pages of the telephone directory for the western suburbs, his business listing appeared in the same column as defendant, \u201cSpring-Green Lawn Care Corporation.\u201d The mark \u201cSpring Green\u201d appears on plaintiff\u2019s business cards, business records and landscaping equipment, including the pickup trucks which carry his equipment to the customers\u2019 residences.\nDefendant, Spring-Green Lawn Care Corporation (Spring-Green), is in the business of liquid chemical fertilization and insect and weed control for lawns, bushes and trees. Spring-Green was incorporated in Delaware in January 31, 1977, and certified to do business in Illinois on March 11, 1977. On March 21, 1977, Spring-Green filed an application with the U.S. Patent and Trademark Office for registration of its service mark \u201cSpring-Green.\u201d When defendant\u2019s mark was published for opposition, plaintiff filed an opposition, and the record suggests no U.S. patent was ever issued. On March 22, 1977, defendant obtained a certificate of registration for the mark \u201cSpring-Green\u201d from the State of Illinois and has obtained State service mark registration in Iowa and Indiana as well.\n\u2022 The chemical lawn treatment concept upon which Spring-Green was founded was developed by defendant William R. Fischer, a director, shareholder, and president of the corporation. Defendant H.R.M. Enterprises, Inc. (H.R.M.), is a franchisee of Spring-Green, and defendant Edward Carroll was manager of H.R.M.\nSpring-Green began franchising its operation in 1977 through a pilot program covering communities in the western suburbs of Cook County, with its principal place of business in Naperville, Illinois. At the time of trial, Spring-Green had expanded to 41 franchises operating throughout the northern Illinois area.\nThe basic Spring-Green program of lawn care consists of four applications per year of a chemical fertilizer, including weed, crabgrass and insect control. The liquid chemical fertilizer is delivered in tank trucks and is sprayed on the lawn. The program is limited to lawn treatment and includes no landscaping or lawn mowing.\nDefendant\u2019s logo consists of the words \u201cSpring-Green\u201d in white letters on a green background and a stylized \u201cSG\u201d formed around droplets, in a circular form. Although the logo is sometimes captioned with the words \u201cProfessional Lawn & Tree Care,\u201d \u201cSpring-Green\u201d is the salient part of the mark. The mark is used on the corporation\u2019s advertising brochures, envelopes, office forms, stationery, and trucks. Spring-Green advertises in the yellow pages of the telephone directory for the western suburbs, also under the headings of \u201cLandscaping\u201d and \u201cLawn Maintenance.\u201d\nIn April 1979, plaintiff first learned of the existence of Spring-Green and, through his attorney, sent Spring-Green and H.R.M. a cease and desist letter claiming his exclusive right to use the mark \u201cSpring Green.\u201d On April 24, 1978, Thompson\u2019s attorney sent a second cease and desist notice to Spring-Green. Defendant Fischer claims it was at this time that he first learned of the existence of Spring Green Landscaping. Defendant Carroll, however, testified that he had known of Spring Green Landscaping for \u201cseveral years\u201d prior to actual receipt of the cease and desist notice.\nDefendants continued and continue to use and advertise the service mark \u201cSpring-Green\u201d in their lawn care franchising business and to expand their franchise operation.\nIn July 1978, plaintiff filed a seven-count complaint, alleging Federal and State statutory service mark infringement (15 U.S.C. sec. 1125(a) (1982); Ill. Rev. Stat. 1981, ch. 140, par. 19), common law infringement, dilution of trade name (Ill. Rev. Stat. 1981, ch. 140, par. 22), and common law and statutory unfair competition (Ill. Rev. Stat. 1981, ch. 121V2, par. 312). Both parties moved for summary judgments; upon both motions being denied, trial commenced.\nAt trial, plaintiff introduced four witnesses who testified as to their actual confusion between the two service marks \u201cSpring Green\u201d and \u201cSpring-Green.\u201d In addition, plaintiff testified that he had received over 300 telephone calls between 1978 and 1982 from callers who were actually seeking Spring-Green, the defendant corporation. Plaintiff also submitted into evidence letters and checks, intended for the defendant, that had mistakenly been sent to plaintiff.\nDefendants moved for a directed finding at the close of plaintiff\u2019s case. On March 25, 1983, the trial court granted defendants\u2019 motion and dismissed plaintiff\u2019s case with prejudice. It is from the order . granting the directed finding plaintiff now appeals.\nOpinion\nI\nIn nonjury cases, the defendant may move for a directed finding in his favor at the close of plaintiff\u2019s case. (Ill. Rev. Stat. 1983, ch. 110, par. 2 \u2014 1110.) In ruling on the motion, the trial court must consider all of the evidence, including any favorable to the defendant, pass on the credibility of the witnesses, draw reasonable inferences from the testimony, and generally consider the weight and quality of the evidence presented. (Justine Realty Co. v. American Can Co. (1983), 119 Ill. App. 3d 582, 456 N.E.2d 871.) In any case in which the plaintiff has not presented at least some evidence on every essential element of his cause of action, the defendant is entitled to judgment in his favor as a matter of law. (Kokinis v. Kotrich (1980), 81 Ill. 2d 151, 407 N.E.2d 43.) Thus, in deciding a motion made pursuant to Code of Civil Procedure section 2 \u2014 1110, the trial court must determine whether plaintiff has made out a prima facie case, and, on appeal, the decision of the trial judge should not be reversed unless it is against the manifest weight of the evidence. Kokinis v. Kotrich (1980), 81 Ill. 2d 151, 407 N.E .2d 43.\nII\nPlaintiff\u2019s action is essentially one of trademark or service mark infringement. Under the Illinois Trademark Act (Ill. Rev. Stat. 1981, ch. 140, par. 8(a)),\n\u201c \u2018Mark\u2019 includes any trade-mark or service mark whether registered or not. *** \u2018Service mark\u2019 means anything adopted and used by a person to identify services rendered by him or with his authorization and which distinguishes them from services rendered by others.\u201d\nThe principles of trademark law and the tests for infringement are basically the traditional ones of common law under both State and Federal statutes. (Berghoff Restaurant Co. v. Lewis W. Berghoff, Inc. (N.D. Ill. 1973), 357 F. Supp. 127, aff\u2019d (7th Cir. 1974), 499 F.2d 1183.) Because the statutes themselves neither create a valid trademark nor establish new rights, courts apply a single analysis to Federal, State, and common law claims. (Ye Olde Tavern Cheese Products, Inc., v. Planters Peanuts Division, Standard Brands Inc. (N.D. Ill. 1966), 261 F. Supp. 200, affd (7th Cir. 1967), 394 F.2d 833.) We may therefore look to Federal as well as to State case law in resolving the instant issues.\nThe resolution of a trademark infringement claim necessarily involves a two-step analysis. First, the court must determine if the mark used by the party alleging infringement is in fact a valid mark. If the trademark or service mark is not valid, i.e., legally protectable, an infringement action cannot lie, and the inquiry is at an end. If, however, the plaintiff\u2019s mark is of the type for which the law affords protection, the court must proceed to determine if the alleged infringor\u2019s use of a similar mark brings about \u201clikelihood of confusion\u201d on the part of the consuming public. (St. Charles Manufacturing Co. v. St. Charles Furniture Corp. (N.D. Ill. 1979), 482 F. Supp. 397; Mars, Inc. v. Curtiss Candy Co. (1972), 8 Ill. App. 3d 338, 290 N.E.2d 701.) If so, a right to relief for infringement has been shown.\nThe first inquiry in the instant case must then be whether the words \u201cSpring Green,\u201d as used in that particular combination, may be employed as a service mark, or whether this combination of words belongs in the public domain such that plaintiff\u2019s use of it is not entitled to legal protection. In other words, is \u201cSpring Green\u201d a valid mark.\nA term for which trademark protection is sought will fit into one of four categories ranging from (1) generic or common descriptive and (2) merely descriptive, to (3) suggestive and (4) arbitrary or fanciful. (Miller Brewing Co. v. G. Heileman Brewing Co. (7th Cir. 1977), 561 F.2d 75, cert. denied (1978), 434 U.S. 1025, 54 L. Ed. 2d 772, 98 S. Ct. 751.) The Miller court deftly summarized these four categories as follows:\n\u201cA generic or common descriptive term is one which is commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstances. [Citations.] ***\nA merely descriptive term specifically describes a characteristic or ingredient of an article. It can, by acquiring a secondary meaning, i.e., becoming \u2018distinctive of the applicant\u2019s goods,\u2019 *** become a valid trademark. [Citation.]\nA suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods. Such a term can be protected without proof of a secondary meaning.\u201d Miller Brewing Co. v. G. Heileman Brewing Co. (7th Cir. 1977), 561 F.2d 75, 79, cert. denied (1978), 434 U.S. 1025, 54 L. Ed. 2d 772, 98 S. Ct. 751.\n\u201cAn Act to provide for the registration and protection of trademarks ***\u201d (the Illinois Trademark Act) plainly excepts from registration those marks which, when applied to the goods or services of the applicant, are \u201cmerely descriptive\u201d unless that mark has become distinctive of the applicant\u2019s goods or services. (Ill. Rev. Stat. 1981, ch. 140, par. 9(e)(1).) The Act further states:\n\u201cThe Secretary of State may accept as evidence that the mark has become distinctive, as applied to the applicant\u2019s goods or services, proof of continuous use thereof as a mark by the applicant in this State or elsewhere for the 5 years next preceding the date of the filing of the application for registration ***.\u201d (Ill. Rev. Stat. 1981, ch. 140, par. 9(e)(3).)\nRegistration under the Lanham Act (15 U.S.C. secs. 1051-1127) (1982)) or under the Illinois Trademark Act (Ill. Rev. Stat. 1981, ch. 140, pars. 8 through 22) creates a presumption of adoption and continued use and is prima facie evidence of validity. Ye Olde Tavern Cheese Products, Inc. v. Planters Peanuts Division, Standard Brands Inc. (N.D. Ill. 1966), 261 F. Supp. 200, affd (7th Cir. 1967) 394 F.2d 833.\nBearing in mind that at this level of inquiry, we are dealing solely with the validity or protectability of the mark, we must conclude the following: (1) registration under the Illinois Trademark Act is prima facie evidence of validity (Mr. Travel, Inc. v. V.I.P. Travel Service, Inc. (N.D. Ill. 1966), 268 F. Supp. 958, affd (7th Cir. 1967), 385 F.2d 420), and (2) the Secretary of State will not issue a certificate of registration to those marks which are \u201cmerely descriptive\u201d unless the Secretary finds that such marks, due to continuous use, have become distinctive.\nWe note initially that defendant\u2019s attempt to rebut the presumption of validity is, to a great extent, undermined by its own action of registering the mark. Any argument of invalidity made by defendant based on the claim that the words \u201cSpring Green\u201d are merely descriptive has little credence in light of defendant\u2019s prior registration under the Illinois Trademark Act. Perhaps aware of this inconsistency, defendant makes no direct argument that the mark is unprotectable but rather adopts the trial court\u2019s reasoning and conclusion that the words \u201cSpring Green\u201d are merely descriptive and have not acquired a secondary meaning. The analysis necessary to reach this conclusion is included in defendant\u2019s brief as a factor of \u201clikelihood of confusion.\u201d To understand this analysis and decide the merits of the trial court\u2019s conclusion, in order to determine whether defendant has met its burden of proving the mark invalid, we must examine the critical distinction, the one to be made in the instant case, between a \u201cmerely descriptive\u201d mark and that is \u201csuggestive.\u201d Money Store v. Harriscorp Finance, Inc. (7th Cir. 1982), 689 F.2d 666.\nIn the instant case, plaintiff filed for and obtained a certificate of registration from the Secretary of State pursuant to the Illinois Trademark Act, on May 5, 1978. The certificate states that the service mark \u201cSpring Green\u201d was first used in 1967. Moreover, defendant, who now claims that the words \u201cSpring Green\u201d are merely descriptive and therefore not protectable, also filed for and obtained a certificate of registration for the service mark \u201cSpring-Green.\u201d While the Secretary could have found the mark \u201cmerely descriptive\u201d but distinctive in the case of plaintiff, who had used the mark for five years preceding the date of application, such could not have been the case for defendant, who had incorporated the same year as the application was filed. Because the Secretary of State registered the marks \u201cSpring Green\u201d and \u201cSpring-Green\u201d without, in defendant\u2019s case, proof of distinctiveness, he apparently found the mark to be suggestive. (Money Store v. Harriscorp Finance, Inc. (7th Cir. 1982), 689 F.2d 666.) The Secretary's repeated issuance of certificates for the service mark \u201cSpring Green\u201d therefore serves as a prima facie evidence of the mark\u2019s validity, and the issuance to defendant serves additionally to negate classification of the mark as \u201cmerely descriptive.\u201d\nA prima facie case of validity thus having been established, the burden shifted to defendant to rebut the presumption of protectability.\nIn analyzing the distinction between \u201cmerely descriptive\u201d and \u201csuggestive,\u201d the Seventh Circuit noted that\n\u201cOne of the better statements of the distinction between merely descriptive and suggestive marks appears in A. Seidel, S. Dalroff, and E. Gonda, Trademark Law and Practice sec. 4.06, at 77 (1963): \u2018Generally speaking, if the mark imparts information directly, it is descriptive. If it stands for an idea which requires some operation of the imagination to connect it with the goods, it is suggestive.\u2019 (quoted in Union Carbide, 531 F.2d at 379); see also Tel-Med, 588 F.2d at 217 (\u2018A suggestive term suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods.\u2019).\u201d (Money Store v. Harriscorp Finance, Inc. (7th Cir. 1982), 689 F.2d 666, 673-74.)\nThe court in Money Store affirmed the district judge\u2019s conclusion that \u201cThe Money Store\u201d was a suggestive mark because the words did not convey the essence of the business. Conversely, courts have found the words \u201cLite\u201d (Miller Brewing Co. v. G. Heileman Brewing Co. (7th Cir. 1977), 561 F.2d 75, cert. denied (1978), 434 U.S. 1025, 54 L. Ed. 2d 772, 98 S. Ct. 751), \u201cAuto Page\u201d (Gimix, Inc. v. JS & A Group, Inc. (7th Cir. 1983), 699 F.2d 901), and \u201cEverready\u201d (Union Carbide Corp. v. Ever-Ready Inc. (7th Cir. 1976), 531 F.2d 366, cert. denied (1976), 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91) descriptive because they directly impart information by describing a characteristic of the product.\nSuggestive terms, however, do not describe the qualities of a particular product or service but rather require some operation of the imagination to connect the term with the goods or service. (Union Carbide Corp. v. Ever-Ready Inc. (7th Cir. 1976), 531 F.2d 366, cert. denied (1976), 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91.) Suggestive terms merely hint at the product or the result of using the product and yet, viewed in the abstract, do not readily lead to an identification of the product area. (Intellectual Property Law (Ill. Inst. Cont. Legal Educ. 1978).) Words which could not individually become a trademark, because taken separately they are either generic or descriptive, may become one when taken together. (Union Carbide Corp. v. Ever-Ready Inc. (7th Cir. 1976), 531 F.2d 366, cert. denied (1976), 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91.) The question to be asked is whether, as applied to plaintiff\u2019s services, the proposed mark is \u201cmerely descriptive\u201d or \u201csuggestive.\u201d Ex parte Colvin, Mendelhall & Co. (1953), 98 U.S.P.Q. 415.\nIn Colvin, the commissioner of patents, in finding that the term \u201cThe Technical Trend\u201d was registerable as a service mark for an investment advisory service, concluded the following:\n\u201cThe applicant does not sell \u2018trends.\u2019 The fact that it may study and analyze certain trends in rendering its services, and the further fact that such trends may form the basis of specific recommendations to its clients with respect to investment policy or timing, do not *** lead to a conclusion that the word \u2018trend\u2019 is descriptive or generic when applied to the services of the applicant. This combination of a descriptive word with a generic word has no meaning which would in any way suggest an investment advisory service ***.\nIn determining the question of whether or not a given mark is merely descriptive, one is not required to go through mental gymnastics.\u201d Ex parte Colvin, Mendelhall & Co. (1953), 98 U.S.P.Q. 415, 416.\nThis analysis applies with equal force to the words \u201cSpring Green.\u201d The term itself, though composed in part of a descriptive word, is not descriptive of the plaintiff\u2019s service and requires some operation of imagination to connect it with the service. To reach the trial court\u2019s conclusion, that the term is descriptive because it communicates the \u201cqualities and objectives\u201d of lawn care, requires an exercise in mental gymnastics. The trial court\u2019s strained reasoning is further evidenced by its reliance on the observation that \u201cSpring Green\u201d \u201cindicates a time of year associated with the care of lawns\u201d to support its finding of descriptiveness.\nIn light of the foregoing analysis, we must necessarily conclude that defendant failed to carry his burden of proving the service mark invalid and, consequently, that the trial court\u2019s finding the mark to be descriptive rather than suggestive is clearly erroneous. Our determination that the mark is suggestive precludes the necessity of finding of secondary meaning. Miller Brewing Co. v. G. Heileman Brewing Co. (7th Cir. 1977), 561 F.2d 75, cert. denied (1978), 434 U.S. 1025, 54 L. Ed. 2d 772, 98 S. Ct. 751.\nThe exclusive right to use a suggestive term in connection with a service vests in that individual who first used the term in a particular market. (Walt-West Enterprises, Inc. v. Gannett Co. (7th Cir. 1982), 695 F.2d 1050.) The transfer of the property and effect of a business carries with it the exclusive right to use such trademarks or trade names as have been used in such business. (Allegretti v. Allegretti Chocolate Cream Co. (1898), 177 Ill. 129, 52 N.E. 487.) Ownership of a service mark is acquired by adoption and prior and continuous use of the mark in an individual\u2019s business. (El Sombrero Corp. v. Bolivar (1982), 106 Ill. App. 3d 925, 436 N.E.2d 733.) State registration of a service mark does not create rights which would not otherwise exist; no substantive rights are established by registration. Mars, Inc. v. Curtiss Candy Co. (1972), 8 Ill. App. 3d 338, 290 N.E.2d 701.\nUnder the present facts, it is plaintiff and not defendant who is entitled to trademark protection, regardless of the fact that defendant registered first. Robert Gora began the business under the name Spring Green Landscaping in 1967, and it is this date that is noted on plaintiff\u2019s certificate of registration as the time at which the service mark was first used in Illinois. When plaintiff purchased the business from Gora in 1974, he purchased the good will of the business and the use of the business\u2019 name which he continued to use, continuously used, and continues to use. Defendant did not incorporate his business until 1977, at which time he registered and began using the service mark \u201cSpring-Green.\u201d Under the applicable law of trademarks, it is therefore plaintiff who is entitled to protection if the evidence indicates a likelihood of confusion on the part of the consuming public due to defendant\u2019s use of a similar mark.\nThe test of trademark infringement under the Lanham TradeMark Act (15 U.S.C. sec. 1114(1)(1982)) and in Illinois is likelihood of confusion. (James Burrough Ltd. v. Sign of the Beefeater, Inc. (7th Cir. 1976), 540 F.2d 266.) Infringement is found when the evidence indicates a likelihood of confusion, deception or mistake on the part of the consuming public, namely, ordinary purchasers purchasing in the ordinary manner. (Ye Olde Tavern Cheese Products, Inc. v. Planters Peanuts Division, Standard Brands, Inc. (N.D. Ill. 1966), 261 F. Supp. 200, aff\u2019d (7th Cir. 1967), 394 F.2d 833.) The test is the consumer\u2019s state of mind when faced with the marks individually. (Union Carbide Corp. v. Ever-Ready Inc. (7th Cir. 1976), 531 F.2d 366, cert. denied (1976), 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91.) Confusion will be found where one adopts a trademark or trade name so like another in form, spelling, or sound that one with a not very definite or clear recollection as to the real mark is likely to become confused or misled. (Spangler Candy Co. v. Crystal Pure Candy Co. (7th Cir. 1965), 353 F.2d 641.) It is incumbent upon the latecomer to avoid such confusion. Union Carbide Corp. v. Ever-Ready Inc. (7th Cir. 1976), 531 F.2d 366, cert. denied (1976), 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91.\nGenerally, likelihood of confusion is a question of fact subject, on review, to the clearly erroneous standard. (Union Carbide Corp. v. Ever-Ready Inc. (7th Cir. 1976), 531 F.2d 366, cert. denied (1976), 421 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91.) However, in cases such as the instant case, where the determination is to some extent predicated upon the similarity of the marks themselves, it is a mixed question of law and fact, and a court of review is in as good a position as the trial judge to determine the probability of confusion. (531 F.2d 366.) Even in the absence of evidence showing actual confusion, the court can visualize the likelihood of consumer confusion wholly from the similarity of the marks. Ye Olde Tavern Cheese Products, Inc. v. Planters Peanuts Division, Standard Brands, Inc. (N.D. Ill. 1966), 261 F. Supp. 200, aff\u2019d (7th Cir. 1967), 394 F.2d 833.\nThere is no ineluctable test of likelihood of confusion (Baker\u2019s Associates, Inc. v. Kellog Co. (N.D. Ill. 1969), 296 F. Supp. 772), and no one factor is per se determinative in a trademark infringement action. (James Burrough Ltd. v. Sign of The Beefeater, Inc. (7th Cir. 1976), 540 F.2d 266.) In determining whether likelihood of confusion exists, courts typically consider such factors as the degree of similarity between the marks in appearance and suggestion; the similarity of the products for which the name is used; the area and manner of current use; the degree of care likely to be exercised by customers; the strength of the complainant\u2019s mark; actual confusion; and an intent on the part of the infringer to palm off his products as those of the complainant. (NFE International, Ltd. v. General Resource Corp. (N.D. Ill. 1983), 558 F. Supp. 1137.) Similarity in the sound of trademarks or service marks enters into a consideration of likelihood of confusion. Evidence of actual confusion, though not required, is entitied to substantial weight. 558 F. Supp. 1137.\nIn Illinois, a latecomer, regardless of fraudulent intent or actual injury, owes a duty to take affirmative precautions sufficient to make confusion in the use of similar service marks improbable. (Jewel Tea Co. v. Kraus (7th Cir. 1950), 187 F.2d 278.) Taking into consideration these pertinent factors in our determination of likelihood of confusion, we find that defendant has breached his duty to avoid confusion on the part of the consuming public.\nHere, the salient words in plaintiff\u2019s and defendant\u2019s marks are identical. (Independent Nail & Packing Co. v. Stronghold Screw Products, Inc. (7th Cir. 1953), 205 F.2d 921.) The addition or deletion of a hyphen is insufficient to distinguish the marks. (Union Carbide Corp. v. Ever-Ready Inc. (7th cir. 1976), 531 F.2d 366, cert. denied (1976), 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91.) Whatever it is that \u201cSpring Green\u201d suggests, cannot differ from that suggested by \"Spring-Green.\u201d And, while the parties and the trial court have spent much time and effort attempting to determine whether or not one party fertilizes and mows as opposed to sprays and cuts, the basic service supplied by both parties is that of lawn care and maintenance. Drawing fine distinctions within this general area misses the point of the inquiry. The persons to be considered in determining whether confusion is likely include the ignorant and inexperienced as well as those with some greater knowledge of lawn care. (St. Charles Manufacturing Co. v. St. Charles Furniture Corp. (N.D. Ill. 1979), 482 F. Supp. 397.) It cannot reasonably be contested that the viewer of defendant\u2019s mark \u201cSpring-Green\u201d would be likely to associate the lawn care service with which it is connected with the source of the lawn care service with which \u201cSpring Green,\u201d plaintiff\u2019s mark, is connected. (James Burrough Ltd. v. Sign of The Beefeater, Inc. (7th Cir. 1976), 540 F.2d 266.) Similarly, the evidence demonstrates that both parties have, over the years, been listed side by side in the white and yellow pages of the telephone directories, thereby demonstrating similarity of service offered as well as similarity of geographical area to which the service is offered.\nThe trial court discounted the evidence presented by plaintiff as to actual confusion and noted that plaintiff had presented no evidence of actual damage. Plaintiff introduced four witnesses who testified as to instances of actual confusion, and he himself testified that he had received over 300 telephone calls between 1978 and 1982 from callers who mistakenly took him for defendant. Such evidence is to be afforded substantial weight. Moreover, a showing of economic or actual damage per se is not required; the owner of a mark is damaged by a later use of a similar mark which places the owner\u2019s reputation beyond its control, though no loss in business is shown. (James Burrough Ltd. v. Sign of The Beefeater, Inc. (7th Cir. 1976), 540 F.2d 266.) Damage is presumed upon a finding of likelihood of confusion. 540 F.2d 266.\nFinally, as to defendant\u2019s intent, where, as here, the marks are so similar as to almost necessarily lead to complication and confusion in the business of the two parties, it is of no importance that defendant had no knowledge of the existence of plaintiff until after it had organized its lawn care business, or that defendant had no intention of injuring plaintiff. (Koebel v. Chicago Landlords\u2019 Protective Bureau (1904), 210 Ill. 176, 71 N.E. 362.) For plaintiff to prevail in his action for service mark infringement, he must merely establish that the alleged infringer uses a mark likely to cause confusion. We find that plaintiff here has established likelihood of confusion.\nBased on our finding that (1) plaintiff\u2019s service mark \u201cSpring Green\u201d is registrable and valid, (2) plaintiff has shown prior and continuous use of this mark, and (3) defendant\u2019s use of the similar mark \u201cSpring-Green\u201d is likely to cause confusion on the part of the consuming public, we find that service mark infringement exists. We therefore reverse the trial court\u2019s order granting defendant\u2019s motion for a directed finding as to counts I (infringement of plaintiff\u2019s state registered mark), II (common law infringement), and VII (infringement under the Lanham Act).\nCount III of plaintiff\u2019s complaint alleges dilution of plaintiff\u2019s name under section 15 of the Illinois Trademark Act (the antidilution statute) (Ill. Rev. Stat. 1981, eh. 140, par. 22). The antidilution statute empowers the circuit court to grant injunctive relief to enjoin the use of the same or any similar mark, trade name, label or form of advertisement if there exists either (1) likelihood of injury to business reputation or (2) dilution of the distinctive quality of the mark. The trial court in the instant case found neither of these bases for relief to exist. Our review of the record compels us to agree.\nPlaintiff has not shown his mark to be the kind of strong mark which, through much effort or costly and extensive advertising, has acquired a widespread reputation (Polaroid Corp. v. Polaroid, Inc. (7th Cir. 1963), 319 F.2d 830), and the kind of distinctiveness or secondary meaning requisite to support an action for dilution. (Telemed Corp. v. Tel-Med, Inc. (7th Cir. 1978), 588 F.2d 213.) Nor has plaintiff proved how his business reputation, while possibly placed beyond his control, is likely to be injured by the confusing similarity of defendant\u2019s mark with that of his own mark.\nFinding that plaintiff has failed to present evidence necessary to prove a claim of dilution, we affirm the directed finding on count III.\nCounts IV and V of plaintiff\u2019s complaint allege statutory and common law unfair competition. Unfair competition is a broader concept than trademark infringement and depends upon likelihood of confusion as to the source of plaintiff\u2019s goods when the whole product, rather than just the service mark, is considered. (Mars, Inc. v. Curtiss Candy Co. (1972), 8 Ill. App. 3d 338, 290 N.E. 2d 701.) Under Illinois law, a plaintiff may be granted relief under the theory of unfair competition whether or not his product or service is in direct competition with defendant\u2019s product or service. (National Football League Properties, Inc. v. Consumer Enterprises, Inc. (1975), 26 Ill. App. 3d 814, 327 N.E .2d 242, cert. denied (1975), 423 U.S. 1018, 46 L. Ed. 2d 390, 96 S. Ct. 454.) The same set of facts and circumstances may be used to support a claim for both trademark infringement and unfair competition, and a finding in favor of the former claim typically results in a finding for the latter. James Burrough Ltd. v. Sign of The Beefeater, Inc. (7th Cir. 1976), 540 F.2d 266.\nBased on our previous finding of likelihood of confusion and on our consideration of plaintiff\u2019s service as a whole, namely, that of lawn care and maintenance, we find plaintiff has presented enough evidence on his claim of unfair competition to survive a motion for a directed finding. We therefore reverse the trial court\u2019s decision on counts IV and V.\nPlaintiff, in count VI of his complaint, requests attorney fees, alleging that defendants have and will continue to knowingly and intentionally \u201cplay on the good will associated with plaintiff\u2019s mark.\u201d As defendants correctly point out, attorney fees are not recoverable in Illinois unless provided for by statute. (Meyer v. Marshall (1976), 62 Ill. 2d 435, 343 N.E.2d 479.) Therefore, plaintiff cannot recover attorney fees for his common law claims. In addition, attorney fees are not provided for under the Illinois Trademark Act (Ill. Rev. Stat. 1981, ch. 140, par. 20).\nFees may, however, be recoverable, under section 43(a) of the Lanham Act (15 U.S.C. sec. 1125(a) (1982)), in exceptional cases where defendants have acted in bad faith, vexatiously, wantonly, or for oppressive reasons; and, under the Uniform Deceptive Trade Practices Act (Ill. Rev. Stat. 1981, ch. 1211/2, par. 313), if the court finds that the defendant wilfully engaged in a deceptive trade practice. (Clairol, Inc. v. Andrea Dumon, Inc. (1973), 14 Ill. App. 3d 641, 303 N.E.2d 177, cert. denied (1974), 419 U.S. 873, 42 L. Ed. 2d 112, 95 S. Ct. 134.) At trial, evidence was presented showing that defendant failed to comply with two cease and desist letters sent to him by plaintiffs counsel in April 1978, and that defendant Carroll, the manager of H.R.M., was aware of the existence of Spring Green Landscaping for several years prior to the date on which the first cease and desist letter was received. In addition, when defendant\u2019s patent application was published for opposition in 1978, plaintiff opposed it. We find that these facts adduced at trial amount to \u201csome evidence\u201d of bad faith such as to withstand a motion for a directed finding on the issue of attorney fees. We therefore reverse the trial court\u2019s finding on count VI of plaintiff\u2019s complaint.\nIn summary, we find that plaintiff has presented some evidence on his claims of service mark infringement (counts I, II and VII), unfair competition (counts IV and V), and attorney fees (count VI) so as to withstand a motion for a directed finding at the close of plaintiff\u2019s case. We therefore find that the trial court\u2019s decision granting defendant\u2019s motion on these counts was against the manifest weight of the evidence, and we reverse and remand on counts I, II, IV, V, VI and VII for a trial on the merits. We affirm the trial court\u2019s decision on count III, finding that plaintiff has failed to make out a prima facie case of service mark dilution.\nReversed in part, affirmed in part, and remanded.\nJOHNSON and ROMITI, JJ., concur.", "type": "majority", "author": "PRESIDING JUSTICE LINN" } ], "attorneys": [ "Marvin N. Benn and Wayne H. Michaels, both of Hamman, Benn & Miller, of Chicago, for appellant.", "Theodore A. Shapero, P.C., Diane Fields Geocaris, and Thomas F. Ge-selbracht, all of Rudnick & Wolfe, of Chicago, for appellees." ], "corrections": "", "head_matter": "LOYD THOMPSON, d/b/a Spring Green Landscaping, Plaintiff-Appellant, v. SPRING-GREEN LAWN CARE CORP. et al., Defendants-Appellees.\nFirst District (4th Division)\nNo. 83\u2014947\nOpinion filed June 7, 1984.\nRehearing denied July 26, 1984.\nMarvin N. Benn and Wayne H. Michaels, both of Hamman, Benn & Miller, of Chicago, for appellant.\nTheodore A. Shapero, P.C., Diane Fields Geocaris, and Thomas F. Ge-selbracht, all of Rudnick & Wolfe, of Chicago, for appellees." }, "file_name": "0099-01", "first_page_order": 121, "last_page_order": 136 }