{ "id": 3554814, "name": "CORALEE KERN, d/b/a Maid to Order, et al., Plaintiffs-Appellants, v. WKQX RADIO et al., Defendants-Appellees", "name_abbreviation": "Kern v. WKQX Radio", "decision_date": "1988-10-12", "docket_number": "No. 87-2718", "first_page": "624", "last_page": "637", "citations": [ { "type": "official", "cite": "175 Ill. App. 3d 624" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "352 N.E.2d 356", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "40 Ill. App. 3d 474", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 2967997 ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/40/0474-01" ] }, { "cite": "81 N.E.2d 920", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "401 Ill. 283", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 5307590 ], "opinion_index": 0, "case_paths": [ "/ill/401/0283-01" ] }, { "cite": "81 S. Ct. 271", "category": "reporters:federal", "reporter": "S. Ct.", "opinion_index": 0 }, { "cite": "5 L. Ed. 2d 224", "category": "reporters:federal", "reporter": "L. Ed. 2d", "opinion_index": 0 }, { "cite": "364 U.S. 909", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 6342217, 6341936, 6341719, 6341559, 6341368 ], "opinion_index": 0, "case_paths": [ "/us/364/0909-05", "/us/364/0909-04", "/us/364/0909-03", "/us/364/0909-02", "/us/364/0909-01" ] }, { "cite": "279 F.2d 607", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 2019752 ], "year": 1960, "opinion_index": 0, "case_paths": [ "/f2d/279/0607-01" ] }, { "cite": "582 F. Supp. 551", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 3650552 ], "opinion_index": 0, "case_paths": [ "/f-supp/582/0551-01" ] }, { "cite": "15 U.S.C. \u00a71115", "category": "laws:leg_statute", "reporter": "U.S.C.", "weight": 2, "year": 1982, "pin_cites": [ { "page": "(a)" } ], "opinion_index": 0 }, { "cite": "394 F.2d 833", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 2153771 ], "weight": 2, "opinion_index": 0, "case_paths": [ "/f2d/394/0833-01" ] }, { "cite": "261 F. Supp. 200", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 1529701 ], "weight": 3, "year": 1967, "pin_cites": [ { "page": "208" } ], "opinion_index": 0, "case_paths": [ "/f-supp/261/0200-01" ] }, { "cite": "466 F.2d 705", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 719559 ], "year": 1966, "pin_cites": [ { "page": "709" } ], "opinion_index": 0, "case_paths": [ "/f2d/466/0705-01" ] }, { "cite": "311 N.E.2d 386", "category": "reporters:state_regional", "reporter": "N.E.2d", "year": 1972, "opinion_index": 0 }, { "cite": "19 Ill. App. 3d 299", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 2695533 ], "year": 1972, "pin_cites": [ { "page": "314" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/19/0299-01" ] }, { "cite": "537 F.2d 4", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1049948 ], "weight": 3, "pin_cites": [ { "page": "10" }, { "page": "11" }, { "page": "11" } ], "opinion_index": 0, "case_paths": [ "/f2d/537/0004-01" ] }, { "cite": "15 U.S.C. \u00a7 1052", "category": "laws:leg_statute", "reporter": "U.S.C.", "year": 1982, "pin_cites": [ { "page": "(f)" } ], "opinion_index": 0 }, { "cite": "265 U.S. 526", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 6143363 ], "weight": 3, "pin_cites": [ { "page": "528" }, { "page": "1163" }, { "page": "616" } ], "opinion_index": 0, "case_paths": [ "/us/265/0526-01" ] }, { "cite": "98 S. Ct. 751", "category": "reporters:federal", "reporter": "S. Ct.", "weight": 2, "opinion_index": 0 }, { "cite": "54 L. Ed. 2d 772", "category": "reporters:federal", "reporter": "L. Ed. 2d", "weight": 2, "opinion_index": 0 }, { "cite": "434 U.S. 1025", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 6506656, 6506721, 6506951, 6506864, 6506806 ], "weight": 2, "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": 6, "year": 1978, "pin_cites": [ { "page": "79" }, { "page": "79" }, { "page": "79" }, { "page": "79" }, { "page": "81" } ], "opinion_index": 0, "case_paths": [ "/f2d/561/0075-01" ] }, { "cite": "380 N.E.2d 1106", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "64 Ill. App. 3d 417", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3330674 ], "weight": 2, "pin_cites": [ { "page": "432-33" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/64/0417-01" ] }, { "cite": "440 N.E.2d 117", "category": "reporters:state_regional", "reporter": "N.E.2d", "year": 1978, "opinion_index": 0 }, { "cite": "91 Ill. 2d 518", "category": "reporters:state", "reporter": "Ill. 2d", "case_ids": [ 3091586 ], "year": 1978, "opinion_index": 0, "case_paths": [ "/ill-2d/91/0518-01" ] }, { "cite": "148 N.E.2d 820", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "16 Ill. App. 2d 494", "category": "reporters:state", "reporter": "Ill. App. 2d", "case_ids": [ 5180557 ], "weight": 2, "pin_cites": [ { "page": "499" } ], "opinion_index": 0, "case_paths": [ "/ill-app-2d/16/0494-01" ] }, { "cite": "229 N.E.2d 536", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "37 Ill. 2d 599", "category": "reporters:state", "reporter": "Ill. 2d", "case_ids": [ 2864136 ], "pin_cites": [ { "page": "612" } ], "opinion_index": 0, "case_paths": [ "/ill-2d/37/0599-01" ] }, { "cite": "441 N.E.2d 1328", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "110 Ill. App. 3d 264", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3000479 ], "pin_cites": [ { "page": "269" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/110/0264-01" ] }, { "cite": "476 N.E.2d 1123", "category": "reporters:state_regional", "reporter": "N.E.2d", "weight": 2, "year": 1982, "opinion_index": 0 }, { "cite": "132 Ill. App. 3d 273", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3443836 ], "weight": 3, "year": 1982, "pin_cites": [ { "page": "279" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/132/0273-01" ] }, { "cite": "15 U.S.C. \u00a71051", "category": "laws:leg_statute", "reporter": "U.S.C.", "year": 1982, "pin_cites": [ { "page": "et seq." } ], "opinion_index": 0 } ], "analysis": { "cardinality": 1273, "char_count": 33973, "ocr_confidence": 0.759, "pagerank": { "raw": 8.137184931949895e-08, "percentile": 0.468582145136647 }, "sha256": "7ee4d5ae1b4d11d68dd280c8d0bd2b68b5b14f94d636a34c1388145b54500a46", "simhash": "1:0beb8cfce60fc9f9", "word_count": 5537 }, "last_updated": "2023-07-14T17:24:13.630237+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "CORALEE KERN, d/b/a Maid to Order, et al., Plaintiffs-Appellants, v. WKQX RADIO et al., Defendants-Appellees." ], "opinions": [ { "text": "JUSTICE FREEMAN\ndelivered the opinion of the court:\nPlaintiffs, Coralee Kern, d/b/a Maid To Order, and Maid To Order, Inc., appeal the trial court\u2019s denial of their petition for a temporary injunction seeking to restrain defendants from distributing, showing, or advertising a motion picture entitled Maid To Order. The trial court denied the injunction with regard to counts I, I, and III of plaintiffs\u2019 second amended complaint. On appeal plaintiffs contend that the trial court abused its discretion in denying their petition for injunctive relief regarding counts I and II only. Count I seeks injunctive relief under the Illinois trademark act (Ill. Rev. Stat. 1987, ch. 140, par. 22), commonly known as the Anti-Dilution Act. Count II seeks injunctive relief for trademark infringement and also cites the Illinois Anti-Dilution Act.\nFor the reasons stated below, we affirm the judgment of the circuit court.\nPlaintiffs\u2019 second amended complaint alleges that plaintiff Kern has been doing business since September 1971 under the name \u201cMaid to Order\u201d in the Chicago metropolitan area, the State of Illinois, and the States of Wisconsin and Indiana, as a maid service providing cleaning services for domestic and business premises. Maid To Order, Inc., initially was incorporated under the laws of Illinois in September 1971 and was reincorporated on July 19, 1987. Since 1971, plaintiff allegedly has expended substantial sums of time and money advertising \u201cMaid To Order\u201d as a trade name. Consequently, the name allegedly has achieved significant recognition in the mind of the general public in Illinois, and the name generally has become associated by the general public with plaintiff\u2019s maid service business. Further, during the course of operation of her business, plaintiff allegedly enjoyed virtually exclusive use of the name \u201cMaid To Order\u201d in the Chicago metropolitan area and the State of Illinois.\nPlaintiff applied to the United States Patent and Trademark Office for a service mark under the name \u201cMaid To Order\u201d and received a certificate of registration on May 26, 1981. The service mark was registered pursuant to the Trademark Act of 1946 (15 U.S.C. \u00a71051 et seq. (1982)), commonly known as the Lanham Act. Further, in mid-1986, plaintiff filed an affidavit with the United States Patent and Trademark Office showing that the mark was still in use and that plaintiff was \u201centitled to continue said mark.\u201d\nIn or about June 1987, defendants, New Century/Vista Film Company (New Century) and the Vista Organization Partnership (Vista), allegedly entered into contracts with movie theaters in the Chicago metropolitan area and the State of Illinois pursuant to which defendants agreed to distribute a motion picture entitled Maid To Order. The motion picture deals with the subject matter of the maid service industry and in particular with the cleaning of domestic premises. In June 1987, counsel for plaintiffs notified defendants of plaintiffs\u2019 entitlement for the exclusive use of the name \u201cMaid To Order\u201d and plaintiffs\u2019 contention that the story line of Maid To Order was derogatory and injurious to plaintiffs\u2019 reputation and business.\nCount I of the complaint cites section 15 of the Illinois Anti-Dilution Act (Ill. Rev. Stat. 1987, ch. 140, par. 22), which provides for injunctive relief under certain circumstances against the use of the same or a similar trademark. Count I alleges that on June 20, 1987, defendants New Century and Vista caused to be published in Time magazine an advertisement for Maid To Order which allegedly states, in part, \u201cworse help is hard to find. Maid To Order.\u201d Further, plaintiffs allege that the film depicts the actress playing the role of domestic maid in nude scenes and otherwise detracts from the integrity of the maid service profession by depicting the profession in a nonprofessional light.\nCount I further alleges that if defendants are allowed to distribute the film in Illinois, plaintiffs will suffer irreparable injury in that the advertising and story line of the film are likely to cause substantial injury to the plaintiffs\u2019 business reputation. In addition defendants\u2019 use of the name \u201cMaid To Order\u201d allegedly will cause substantial dilution of the distinctive quality of plaintiffs\u2019 trade name. Plaintiffs allege that they have no adequate remedy at law and seek injunctive relief restraining defendants from distributing, showing, or offering to show or advertising the film Maid To Order in the State of Illinois.\nCount II of the complaint is entitled \u201cTrademark Infringement,\u201d and also cites section 15 of the Illinois Anti-Dilution Act (Ill. Rev. Stat. 1987, ch. 140, par. 22). Count II alleges that since at least early June 1987, defendants have advertised the film Maid To Order in local and national publications, including Time, People, and Newsweek magazines, and have made use of the name \u201cMaid To Order\u201d in derogation of the rights of plaintiffs pursuant to their registered trade name. Further, plaintiffs allege that by utilizing the name \u201cMaid To Order\u201d in derogation of plaintiffs\u2019 exclusive right to the use of the name in Illinois, defendants will garner substantial profits which otherwise would accrue to the benefit of plaintiffs. Count II seeks injunctive relief restraining defendants from distributing, showing, offering to show, or advertising the film Maid To Order in Illinois.\nA hearing on plaintiffs\u2019 petition for preliminary injunction was held on July 29 and 30, 1987. Several witnesses testified on behalf of plaintiffs. Philip Kemp, assistant professor of marketing at DePaul University, testified that he met plaintiff Kern at a business meeting in around 1982. Kemp is familiar with Maid To Order, Inc., and has visited the business on numerous occasions in order to discuss with Kern the functioning and marketing of a \u201chome-based\u201d business like Kern\u2019s. Kemp was not aware of anyone besides plaintiff using the name \u201cMaid To Order.\u201d\nKemp described a television advertisement for Maid To Order which he saw several days before he testified as showing \u201ca very scatterbrained, hairbrained individual running around at home, a luxurious home, that did not appear to know what they were doing, destroying, being destructive, and just chaos.\u201d Kemp also described an advertisement for the film appearing in the July 20, 1987, issue of Time magazine. The magazine advertisement showed a person in maid garb \u201cwho is being served by her clientele rather than servicing them.\u201d Kemp gave his opinion that the advertisement is detrimental to plaintiff\u2019s business; dilutes plaintiffs\u2019 trade name in the business community where the business operates; and has a possible adverse effect on future business which plaintiffs may obtain. Kemp believed that the advertisement dilutes the type of services plaintiff Kern is attempting to present to \u201cher\u201d public. Kemp bases his opinion on Kern\u2019s having established her business in the maid cleaning service in the Chicagoland area as a quality maid cleaning service that people can trust and rely upon when they seek maid cleaning services. Kemp believed that the advertisement would adversely affect Kern\u2019s marketing capabilities in that the advertisement states that \u201cworse help is hard to find.\u201d The adverse impact upon plaintiff\u2019s business is a possible dilution of the opinion of plaintiff\u2019s current clients regarding the service plaintiff provides. Further, potential clients may associate the advertisement to the type of service plaintiff provides.\nOn cross-examination, Kemp admitted that he had not seen the film Maid To Order, nor did he request to view it, even though he was aware that the film was made available to plaintiffs\u2019 counsel. When asked regarding a statement in the Time magazine advertisement which read \u201cAlly Sheedy is Jessie Montgomery,\u201d Kemp stated that he did not know who Ally Sheedy was, or that she was an actress, or who Jessie Montgomery was. Nor, Kemp stated, did he attempt to find out who the named people were. Counsel for defendants asked Kemp to read from the Oxford American Dictionary the definition of \u201cmade-to-order.\u201d The definition provides, \u201cmade according to specific instructions.\u201d Kemp stated his awareness of the use of the phrase in connection with clothes and shoes \u2014 for instance, made-to-order shoes, made-to-order dresses, made-to-order suits. Counsel for defendant also asked Kemp that assuming that Maid To Order is not derogatory to the professional maid cleaning industry, and after being shown, the film receives favorable reviews from the press and public, whether plaintiff\u2019s company, Maid To Order, Inc., would be injured by the fact that the film bears the title Maid To Order. Kemp responded, \u201cNo.\u201d\nOn redirect examination, plaintiffs\u2019 counsel questioned Kemp regarding specific scenes in the film. Counsel asked Kemp whether, if, for instance, the film depicted a maid throwing away an ashtray rather than cleaning out some gum left in it, such a depiction would be derogatory to the maid industry in general and to plaintiff\u2019s business in particular. Kemp stated that it would. Further, Kemp believed that a depiction of a maid flooding the kitchen floor with suds from laundry detergent she mistakenly put in the dishwasher would also be derogatory to the maid industry generally and to plaintiff\u2019s business.\nPlaintiff, Coralee Kern, testified that her company, Maid To Order, Inc., serves people in private homes, apartments, and small offices, and does special cleaning jobs. The company employs approximately 40 regular employees and 10 to 12 others who are on call. The company serves the metropolitan Chicago area, including Cook, Lake, Kane, McHenry, Du Page, and Will Counties.\nPlaintiff has promoted the business in several ways. When the business first began, Kern devised blue chips which she sent out in a mailing to people in the Chicago area, and referred to her business as the maid service \u201cMaid To Order, your blue chip maid service.\u201d Kern regularly has advertised in local suburban newspapers, the Chicago Tribune and Sun-Times, and in the Yellow Pages telephone directory. Occasionally, she has advertised in suburban telephone directories. Kern purchased $3,000 in coupon advertising for the business. In addition, Kern has appeared on television programs such as \u201cGood Morning America,\u201d \u201cNightline,\u201d the \u201cOprah Winfrey Show,\u201d \u201cDonahue,\u201d the \u201c700 Club,\u201d and \u201cHour Magazine\u201d in order to discuss the nature of her company\u2019s services. Whenever she appeared on television, plaintiff \u201calways\u201d discussed the name \u201cMaid To Order.\u201d The trial court was shown a brief videotape of one or more of Kern\u2019s appearances on television.\nKern stated that if she became aware that other companies across the country were named \u201cMaid To Order,\u201d she would ask them to cease using the name. When traveling to different parts of the country, Kern checked the Yellow Pages of certain communities in order to discover if there were any companies carrying the name. If she found any companies bearing that name, she would contact those businesses. In or around 1985, Kern wrote to every secretary of State across the country in order to obtain the names of anyone who had incorporated the name \u201cMaid To Order,\u201d and Kern sent letters to those companies. Kern stated that since the business began in 1971, the cost of advertising, marketing, and public relations promotion has exceeded $200,000.\nPlaintiff registered the company\u2019s name with the United States Trademark and Patent Office in 1981. Kern stated that other than her son, who has a business called \u201cMaid To Order Custom Cleaning,\u201d she is unaware of any businesses in Illinois that have the name \u201cMaid To Order.\u201d Kern stated that she gave her son permission to use the name \u201cMaid To Order.\u201d\nKern first became aware of the film Maid To Order in the spring of 1987 when someone she knew told her that the movie was to be shown and when Kern saw a magazine article stating that Ally Sheedy was to appear in a film with that title. Kern hired a clipping service to provide her with more information regarding the film, and she received clippings in June and July 1987. Kern later saw the film. The aspects of the film Kern found objectionable were: (1) the maid did not fill out an application when she applied for the job; (2) the film stated that there were no white maids; (3) there was cursing by the characters; (4) and the maid spilled soda on a pillow and then turned it over; threw away an ashtray rather than cleaning it; and caused a vacuum cleaner to blow up. Kern found these aspects of the film objectionable because they depicted a service unlike that which her business provides, in that, for instance, Kern interviews numbers of people before hiring anyone and has \u201cbuilt her business on\u201d working with ethnic and minority women.\nKern stated that she received letters and otherwise learned that her clients believed that the movie was derogatory to her business. Some stated that they believed the movie was against homemaking as a profession, and others stated that they were sorry to see the adverse impact on Kern\u2019s business, since Kern had worked to develop a professional service for the maids.\nKern was asked regarding the impact on her business of the advertisement in Time magazine and other national publications, which allegedly contained the words, \u201cMaid To Order, Worse help is hard to find.\u201d Kern believed that the advertisements would lead people who, within a year in the future, wish to hire a maid service, to contact a service other than Maid To Order, Inc., since they will have the objectionable phrase, \u201cMaid To Order, Worse help is hard to find,\u201d in their subconscious.\nKern testified that the average yearly gross income of her business is approximately $200,000, with a maximum income in one year of approximately $500,000. Since Kern began her business, several people have inquired about purchasing the business and purchasing or franchising the name \u201cMaid To Order.\u201d Kern stated that profits from the business in 1986 amounted to $40,000.\nCarol Seelig testified that she became familiar with plaintiff and her company in 1984 when Seelig attended an Illinois conference on small businesses. Seelig later engaged plaintiff\u2019s company to provide cleaning services at her home. Seelig decided to hire plaintiff\u2019s company based on the company\u2019s reputation for providing good quality cleaning service and for its reputable, trustworthy employees. Further, Seelig became aware that Kern \u201cstood behind her people.\u201d As of the date of the hearing, Seelig continued to use the services of Maid To Order, Inc.\nJoanne Moss, owner and operator of the maid service business Mighty Maids for six years, testified that she has been familiar with the reputation of plaintiff\u2019s business since before she began her own company. Moss believes that plaintiff\u2019s company is the \u201cforerunner of maid service in Chicago.\u201d Moss stated her opinion that an advertisement stating, \u201cMaid To Order, Worse help is hard to find,\u201d would demean the cleaning service.\nYocheved Ellis, owner of the cleaning service Team Clean, Inc., for 10 years, testified that she has been familiar with plaintiff\u2019s business for eight to nine years. She believes that plaintiff\u2019s company is well known and very highly regarded by the public. When Ellis saw a television commercial advertising the film Maid To Order, she associated the film with plaintiff\u2019s business.\nMark Heaney, general manager for the maid service company McMaid, Inc., for 21/2 years, testified that plaintiff\u2019s company \u201chas an excellent reputation and has been a leader in the local market for quite a while.\u201d Further, Kern is well known as the proprietor of Maid To Order, Inc. Heaney stated that McMaid, Inc., considered purchasing plaintiff\u2019s company. Heaney gave his opinion that the name \u201cMaid To Order,\u201d as the name of plaintiff\u2019s company, would be adversely affected and the value would be diminished by the depiction, in a film of the same name, of a maid doing a very poor job of cleaning.\nOn cross-examination, Heaney admitted that he has not seen Maid To Order. Heaney also stated, however, that his opinion would not change if he saw the film. Heaney admitted that, while his company considered buying plaintiff\u2019s company, McMaid, Inc., never discussed prices, and has no information regarding earnings, sales, or other financial data regarding plaintiff\u2019s company. On redirect examination, Heaney stated that his opinion regarding the value of plaintiff\u2019s company was based on the reputation of the company, the company name, and Kern.\nAt the end of plaintiffs\u2019 case, defendants moved for a directed verdict, and the trial court granted a directed verdict regarding counts I, II, and III of plaintiffs\u2019 second amended complaint. The trial court found that the scenes in the film which allegedly depicted the maid\u2019s \u201cgross incompetence,\u201d including the ashtray scene and the vacuum cleaner scene, were consecutive and lasted a total of approximately 2 minutes, 20 seconds of the 92^-minute-long film. The court stated that other scenes in the film may have shown the maid to be incompetent, but the highly intense scenes that occurred one upon the other lasted only 3% of the film\u2019s total time. Further, those scenes pertained only to the one maid in the film, the so-called star, while the other household help were portrayed in a competent manner. In addition, the court stated that those scenes depicting the leading role were \u201cso grossly exaggerated that they amounted to comedic or slapstick humor. And no one in the Court\u2019s opinion would seriously suggest that anyone would ever work for a company that possessed those poor skills.\u201d The court stated that the maid was portrayed also as having many good personality traits. At the end of the film, she was portrayed as a competent maid. The \u201cnude scenes\u201d referenced in plaintiffs\u2019 complaint consisted of two very brief, very mild segments and were not, in the court\u2019s opinion, derogatory of maid services in general.\nThe trial court found no clear right to the broad injunctive relief\u2014 of enjoining the showing of the film \u2014 sought by plaintiffs in counts I and II of the complaint. The court stated that plaintiffs had an opportunity, six to nine weeks before they did, to file suit and to fashion a more narrow scope of relief. Instead, plaintiffs waited until nine days before the film was scheduled to be shown. The court found that plaintiff Kern was sophisticated enough that she could have been more diligent in seeking injunctive relief sooner. Further, the court found that the evidence of irreparable harm to plaintiff\u2019s business was not strong enough to survive a directed finding against plaintiffs at the close of plaintiffs\u2019 case.\nFinally, the court found that the mark \u201cMaid To Order\u201d as the name of plaintiff\u2019s business does not have such characteristics that are so distinctive as to bring it within case law protecting distinctive marks. The court stated that plaintiff\u2019s company name is a generic or descriptive mark and describes the services performed. Further, the court found that the mark was the least strong mark among trademarks.\nPlaintiffs contend on appeal that the trial court abused its discretion in denying their petition for a preliminary injunction. In order to obtain an injunction, a party must show an ascertained right in need of protection, a likelihood of success on the merits, an inadequate remedy at law, and irreparable injury. (Witter v. Buchanan (1985), 132 Ill. App. 3d 273, 476 N.E.2d 1123; People ex rel. Edgar v. Miller (1982), 110 Ill. App. 3d 264, 269, 441 N.E.2d 1328.) The decision to grant or deny a preliminary injunction is within the discretion of the trial court, and the trial court\u2019s decision will not be disturbed on appeal absent an abuse of discretion. (Lonergan v. Crucible Steel Co. (1967), 37 Ill. 2d 599, 612, 229 N.E.2d 536.) The trial court has the duty to determine whether the plaintiffs have established a prima facie case that there is a fair question as to their entitlement to preliminary relief.. (Witter v. Buchanan, 132 Ill. App. 3d at 279.) The court in Newco Laundromat Co. v. ALD, Inc. (1958), 16 Ill. App. 2d 494, 148 N.E.2d 820, stated that \u201c[t]he propriety of granting a temporary injunction depends on the facts of each particular case and the general principles of equity as relating to injunctions, and the right to exercise common sense in the granting or refusing of injunctions is one of the fundamental prerogatives of a court of chancery.\u201d (Newco Laundromat Co., 16 Ill. App. 2d at 499.) In Dixon Association for Retarded Citizens v. Thompson (1982), 91 Ill. 2d 518, 440 N.E.2d 117, the supreme court quoted City of Chicago v. Airline Canteen Service, Inc. (1978), 64 Ill. App. 3d 417, 380 N.E.2d 1106, where the appellate court stated:\n\u201cIn reviewing the discretion exercised by the trial court, an appellate court may decide only whether the petitioner has demonstrated a prima facie case that there is a fair question as to the existence of the rights claimed; that the circumstances lead to a reasonable belief that they probably will be entitled to the relief sought, if the evidence sustains the allegations of the petition; and that matters should be kept in status quo until the case can be decided on its merits. In sum, the only question before us is whether there was a sufficient showing to sustain the order of the trial court.\u201d Airline Canteen Service, Inc., 64 Ill. App. 3d at 432-33.\nPlaintiffs contend that their business name \u201cMaid To Order\u201d is entitled to protection under trademark law. The categories for terms which are claimed to have trademark protection are: (1) generic or common descriptive; (2) merely descriptive; (3) suggestive; and (4) arbitrary or fanciful. (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.) A generic term is one commonly used as the name or description of a kind of goods. It cannot become a trademark under any circumstances. (William R. Warner & Co. v. Eli Lilly & Co. (1924), 265 U.S. 526, 528, 68 L. Ed. 1161, 1163, 44 S. Ct. 615, 616.) A merely descriptive term specifically describes a characteristic or ingredient of an article. It can, by acquiring a secondary meaning, i.e., becoming \u201cdistinctive of the applicant\u2019s goods\u201d (15 U.S.C. \u00a7 1052(f) (1982)), become a valid trademark. Miller Brewing Co., 561 F.2d at 79, citing Abercrombie & Fitch Co. v. Hunting World, Inc. (2d Cir, 1976), 537 F.2d 4, 10.\nA suggestive term suggests rather than describes a characteristic of the goods and requires the observer to use imagination and perception to determine the nature of the goods. Such a term can be protected without proof of a secondary meaning. (Miller Brewing Co., 561 F.2d at 79, citing Abercrombie & Fitch Co., 537 F.2d at 11.) An arbitrary or fanciful term has the same full protection as a suggestive term but is far enough removed from the merely descriptive not to be vulnerable to possible attack as being merely descriptive rather than suggestive. Miller Brewing Co., 561 F.2d at 79, citing Abercrombie & Fitch Co., 537 F.2d at 11.\nIn both counts I and II of their complaint, plaintiffs cite section 15 of the Illinois Anti-Dilution Act (Ill. Rev. Stat. 1987, ch. 140, par. 22), which provides in pertinent part:\n\u201cEvery person *** adopting and using a mark, trade name, label or form of advertisement may proceed by suit, and the circuit court shall grant injunctions, to enjoin subsequent use by another of the same or any similar mark, trade name, label or form of advertisement if there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the mark, trade name, label, or form of advertisement of the prior user, notwithstanding the absence of competition between the parties or of confusion as the source of goods or services *** 9)\nThe Anti-Dilution Act is designed to protect a strong trade name or mark from use by another and thus against dilution regardless of competition between the parties. (See Filter Dynamics International, Inc. v. Astron Battery, Inc. (1974), 19 Ill. App. 3d 299, 314, 311 N.E.2d 386; Alberto-Culver Co. v. Andra Dumon, Inc. (7th Cir. 1972), 466 F.2d 705, 709.) The court in 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, stated that the Illinois trademark act requires that the trademark or name be \u201cdistinctive.\u201d Further, the court stated that cases interpreting this requirement have limited relief to situations where the name was original with the plaintiff, where it acquired widespread reputation and good will through the plaintiff\u2019s efforts, and where the defendant\u2019s name or mark was virtually identical.\nPlaintiffs in the instant case assert that under section 15 of the Anti-Dilution Act (Ill. Rev. Stat. 1987, ch. 140, par. 22) they were entitled to injunctive relief. Plaintiffs contend that the evidence indicates a likelihood of injury to plaintiffs\u2019 business reputation resulting from the derogatory manner in which defendants used plaintiffs\u2019 mark in the film and in advertising. In addition, plaintiffs contend that there was no evidence to rebut the \u201cprima facie presumption of the validity of plaintiffs\u2019 trademark, but also the conclusive presumption of the incontestibility [sic] of the mark.\u201d (Emphasis in original.) Plaintiffs point to the registration of the mark pursuant to the Lanham Act (15 U.S.C. \u00a71115 (1982)) and the filing of their incontestability affidavit.\nPlaintiffs also assert that the evidence indicates that they continuously have used the mark \u201cMaid To Order\u201d from September 1971 until the date of filing of their petition for injunctive relief. Further, plaintiffs assert that the testimony at the hearing established a secondary meaning to the name \u201cMaid To Order\u201d in that consumers and customers associated plaintiff\u2019s business and reputation with the name. Such evidence, plaintiffs assert, indicates that the name is not generic or merely descriptive of the services provided by the company, contrary to the finding by the trial court. Plaintiffs contend that the trial court confused the distinction between generic and descriptive trademarks.\nWe look to the analysis set forth in 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, in determining whether the trade name in the instant case is \u201cdistinctive\u201d within the meaning of the Illinois Anti-Dilution Act (Ill. Rev. Stat. 1987, ch. 140, par. 22). A name is distinctive if the following three factors are met: (1) the name was original with the plaintiff; (2) the name acquired widespread reputation and goodwill through the plaintiff\u2019s efforts; and (3) the defendant\u2019s name or mark was virtually identical. Ye Olde Tavern Cheese Products, Inc., 261 F. Supp. at 208.\nWe find that only two of the three factors are met in the instant case. First, the name of the film and the name of plaintiff\u2019s business are virtually identical. The names are spelled the same. The names differ perhaps only in the type of lettering used or the logo accompanying the name. Second, plaintiffs presented at least some evidence that the name of their business acquired a reputation and goodwill. With regard to .the third factors, however, plaintiffs failed to show that they originated the name \u201cMaid To Order,\u201d which they seek to protect. Plaintiff Kern indicated that she became aware of other businesses which carried the name. Further, in response to a request by defendants\u2019 counsel, plaintiffs\u2019 witness Philip Kemp read into the record the dictionary definition of the adjective \u201cmade-to-order.\u201d Further, Kemp admitted that the term \u201cmade-to-order\u201d is commonly used, for instance, in the clothing industry. The name \u201cMaid To Order\u201d is a variation of the common phrase \u201cmade-to-order.\u201d The difference in spelling alone does not provide protection. Using the phonetic equivalent of a common descriptive word, i.e., misspelling it, fails to give the word trademark protection. (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.) Therefore, we do not find that the trial court abused its discretion in denying the injunctive relief sought, as plaintiffs failed to show that their trade name was protected. See Miller Brewing Co., 561 F.2d at 81; Victory Pipe Craftsmen, Inc. v. Faberge, Inc. (N.D. Ill. 1984), 582 F. Supp. 551.\nEven assuming arguendo that plaintiffs\u2019 name is distinctive, we find that the possibility or probability that defendants\u2019 use of \u201cMaid To Order\u201d as the title of the film would cause the general public or the plaintiffs\u2019 current or potential clients to equate the portrayal of the maid in the movie with the quality of the services provided by plaintiffs to be very slight. We agree with the trial court that the subject matter of the film was not shown to be derogatory to plaintiffs\u2019 business so as to result in harm justifying the issuance of an injunction against the showing of the film in Illinois.\nFederal law supports the result reached by the trial court. Paragraph 1115(a) of the Lanham Act (Act) (15 U.S.C. \u00a7 1115(a) (1982)) provides that registration under the Act is \u201cprima facie evidence of registrant\u2019s exclusive right to use the registered mark in commerce on the goods or services specified in the registration.\u201d The Act is designed to protect a prior user from use by a subsequent user who sells products or services which are in competition with those of the prior user. (Avon Shoe Co. v. David Crystal, Inc. (2d Cir. 1960), 279 F.2d 607, cert. denied (1960), 364 U.S. 909, 5 L. Ed. 2d 224, 81 S. Ct. 271.) We find that the Act does not encompass the situation presented in the instant appeal. We have found that the likelihood that the public would ascribe the qualities of the maid portrayed in the film to plaintiffs\u2019 services to be remote. The film and plaintiffs\u2019 business are non-competitors whose businesses offer goods or services which are completely different from one another. Therefore, the trial court acted properly in determining that plaintiffs failed to show irreparable harm resulting from defendants\u2019 use of the name \u201cMaid To Order\u201d such that plaintiffs were entitled to the injunction sought. Witter v. Buchanan (1985), 132 Ill. App. 3d 273, 476 N.E.2d 1123.\nPlaintiffs also assert that a finding by the trial court regarding the actress who played the role of the maid in the film should not bear on their claim. Plaintiffs point to a comment by the trial court where the court presented a hypothetical situation. The court stated that plaintiffs were attempting to assert that even if, for instance, Mother Teresa was the maid in the film, the film still would be harmful to plaintiffs\u2019 business, merely because of the name of the film. The trial court found that the basis of plaintiffs\u2019 assertion regarding harm resulting from the title of the film itself lacked validity.\nWe note that the trial court\u2019s comment came in the context of the court\u2019s review of the evidence of irreparable harm to plaintiffs, particularly the testimony of plaintiffs\u2019 witness Mark Heaney. The trial court found Heaney\u2019s testimony that certain scenes in the film would disparage plaintiffs\u2019 business was not credible or persuasive, in light of the fact, among other things, that Heaney had not seen the film. We hold that the trial court\u2019s comment reflected the trial court\u2019s proper consideration of the potential effect of the film title upon plaintiff\u2019s business.\nPlaintiffs also assert that the trial court had the authority to \u201ccustom-make\u201d some form of relief that would not be too harmful to defendants while being beneficial to plaintiffs. Plaintiffs assert that the material part of their complaint was not that the film was being released, but rather that defendants wrongfully appropriated plaintiffs\u2019 service mark and were using the mark in derogation of plaintiffs\u2019 rights. Plaintiffs contend that the trial court could have granted relief which would have precluded defendants from utilizing plaintiffs\u2019 service mark while also affording defendants the opportunity to release the film under another title. Plaintiffs contend that defendants had been aware for six weeks of plaintiffs\u2019 claim, and any inconvenience to them of selecting another title for the film is not grounds for denial of injunctive relief in favor of plaintiffs.\nWhile in a proper case a court of equity may fashion alternative or additional equitable relief (see La Cost v. Mailloux (1948), 401 Ill. 283, 81 N.E.2d 920), such authority may be subject to abuse and so must be carefully guarded (see DeMarco v. University of Health Sciences/Chicago Medical School (1976), 40 Ill. App. 3d 474, 352 N.E.2d 356). In the instant case plaintiffs assert that the trial court could have fashioned narrower relief than that which plaintiffs requested in their prayer for relief. However, plaintiffs failed in the trial court to seek such alternative relief. Under the circumstances, we do not think the trial court committed error. We cannot impose upon the trial court a duty which properly falls on the party seeking equitable relief, that is, to request of the court the kind and scope of relief which the party seeks in its action.\nFor the reasons stated below, we affirm the judgment of the circuit court.\nJudgment affirmed.\nMcNAMARA and RIZZI, JJ., concur.", "type": "majority", "author": "JUSTICE FREEMAN" } ], "attorneys": [ "Richard H. Kane, of Chicago, for appellants.", "Bergstrom, Davis & Teeple, of Chicago (Robert W. Bergstrom, Ronald W. Teeple, and John L. Leonard, of counsel), for appellees." ], "corrections": "", "head_matter": "CORALEE KERN, d/b/a Maid to Order, et al., Plaintiffs-Appellants, v. WKQX RADIO et al., Defendants-Appellees.\nFirst District (3rd Division)\nNo. 87\u20142718\nOpinion filed October 12, 1988.\nRichard H. Kane, of Chicago, for appellants.\nBergstrom, Davis & Teeple, of Chicago (Robert W. Bergstrom, Ronald W. Teeple, and John L. Leonard, of counsel), for appellees." }, "file_name": "0624-01", "first_page_order": 646, "last_page_order": 659 }