(S.D. Fla. 1990). Further, Plaintiff's name is geographically descriptive, which is a weak type of mark. New York Style Bagel Chip Co. v. That's Entertainment, Inc., 1992 U.S. Dist. LEXIS 3368, 1992 Westlaw 46854 at *12 (E.D. Pa. March 9, 1992).
For these reasons we find that Plaintiff's mark is not particularly strong, meaning that this factor does not weigh in Plaintiff's favor.
3. THE PRICE OF THE GOODS AND OTHER FACTORS INDICATIVE OF THE CARE AND INTENTION EXPECTED OF CONSUMERS WHEN MAKING A PURCHASE
The more important or expensive a product is, the more care the consumer is expected to use in making a purchasing decision. Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 204-05 (3d Cir. 1995), cert. denied, 133 L. Ed. 2d 19, 116 S. Ct. 54 (1995); Fisons, 30 F.3d at 476 & n.12. The evidence demonstrates that while mortgage buyers are frequently unsophisticated about the mortgage process, the mortgage itself is a very significant financial transaction for most residential borrowers. For this reason, great care in choosing a mortgagee can be expected. Further, there was no evidence that any consumer actually made a mortgage application or received a mortgage from one company but meant to with the other. Accordingly, this factor weighs in Defendant's favor.
4. THE LENGTH OF TIME THE DEFENDANT HAS USED THE MARK WITHOUT EVIDENCE OF ACTUAL CONFUSION
Defendant has used its mark continuously since 1987. One of its branches is referred to as Franklin Mortgage. As discussed more fully below, Plaintiff has presented some hearsay evidence of instances of what it asserts is actual confusion, namely, customers who believed that Defendant was associated with or owned by Plaintiff. Because Defendant has used its name for ten years and because the evidence showing actual confusion is problematic, this factor weighs in neither parties' favor.
5. THE INTENT OF THE DEFENDANT IN ADOPTING THE MARK
Plaintiff argues that when a party adopts a mark that is similar to another's mark, it acts at its own peril and doubts are to be resolved against the second user. Masterpiece of Pa., Inc. v. Consolidated Novelty Co., 368 F. Supp. 550, 552 (S.D.N.Y. 1973). Plaintiff also maintains that Defendant should have been constructively aware of Plaintiff's mark, and therefore, it intentionally chose a "virtually identical" mark.
The evidence, however, indicates that Defendant chose its mark innocently. It shows that Defendant was not aware of Plaintiff when it chose its mark, that its mark was actually its second choice, and that Defendant took reasonable precautions in the way of newspaper advertisements and searches with the Secretary of State to determine that its name was acceptable. We find no evidence to support Plaintiff's contention that Defendant's choice was made with less than good faith. This factor, accordingly, weighs in Defendant's favor.
6. THE EVIDENCE OF ACTUAL CONFUSION
The question here is whether Defendant's name is likely to confuse an appreciable number of ordinarily prudent consumers of the type of product in question. Versa Prods., 50 F.3d at 200. Stated otherwise, the Lanham Act seeks to "prevent consumer confusion that enables a seller to pass 'off his goods as the goods of another.'" Lang v. Retirement Living Pub. Co., Inc., 949 F.2d 576, 582 (2d Cir. 1991) (quoting Programmed Tax Sys., Inc. v. Raytheon Co., 439 F. Supp. 1128 (S.D.N.Y. 1977)). Generalized confusion is not what courts look to, but rather, evidence of confusion in mistaken purchasing decisions. Lang, 949 F.2d at 582-83; Sports Authority, Inc. v. Prime Hospitality. Corp., 877 F. Supp. 124, 129 (S.D.N.Y. 1995); United States Blind Stitch Mach. Corp. v. Union Special Mach. Co., 287 F. Supp. 468, 471 (S.D.N.Y. 1968). Both pre- and post-sale confusion can be relevant to this inquiry. Lois Sportswear, 799 F.2d at 872.
There is no evidence that any consumer mistook Defendant for Plaintiff in making a mortgage application, or in actually receiving a mortgage. The only evidence on this subject, showing consumers calling Plaintiff in search of Defendant's rates, does not show confusion in this sense. Smith Fiberglass Prods., Inc. v. Ameron, Inc., 7 F.3d 1327 (7th Cir. 1993). In Lang, there was evidence that some consumers had called to ask whether plaintiff and defendant were affiliated. The Court held that such evidence did not demonstrate that confusion led to any effect on the consumers' purchasing decisions. 949 F.2d at 583. Indeed, Professor McCarthy contends that inquiries of affiliation, standing alone, are insufficient proof of confusion because they reveal the "less than totally 'confused' state of mind of the enquiring persons." McCarthy, § 23.02[d] at 23-39. Moreover, Plaintiff did not show that the misplaced calls or mail were the result of confusion between the two companies as opposed to mere carelessness or accident. Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 606-07 (9th Cir. 1987).
Because Plaintiff has not shown that there is actual confusion in the marketplace that confused consumers about the source of their mortgages, we find that this factor weighs in Defendant's favor.
7. WHETHER THE GOODS, THOUGH NOT COMPETING, ARE MARKETED THROUGH THE SAME CHANNELS OF TRADE AND ADVERTISED THROUGH THE SAME MEDIA
Both parties advertise and promote in the same publications, trade fairs and the like. Both parties also target the same people as referral sources, namely realtors, appraisers and title agencies and resell their loans to Freddie Mac. Finally, both parties' end goal, at least in part, is to reach the same customer base, that of the first residential mortgagor in Delaware and Chester Counties. For this reason, this factor weighs in Plaintiff's favor.
8. THE EXTENT TO WHICH THE TARGETS OF THE PARTIES' SALES EFFORTS ARE THE SAME;
The evidence indicates that the parties directly compete in one area; the provision of first residential mortgages in the Delaware and Chester County areas. Apart from that, the parties each offer mortgage products that the other does not, and a significant amount of Defendant's business comes from geographical areas that Plaintiff does not significantly compete in. In the area where the parties do compete, however, their competition is direct and they offer almost identical products.
If a plaintiff's mark is strong in only one area, it is not necessarily entitled to protection in other areas. Accu Personnel, Inc. v. Accustaff, Inc., 846 F. Supp. 1191, 1206 (D. Del. 1994). So at the most, Plaintiff would only be entitled to mark protection in the Delaware and Chester County areas. Because there is direct competition in at least one area of the parties' products, but because that competition is geographically limited in scope, we find that this factor is balanced between the two parties.
9. THE RELATIONSHIP OF THE GOODS IN THE MIND OF THE PUBLIC BECAUSE OF THE SIMILARITY
There is some hearsay evidence that some customers of Plaintiff's believed that Defendant was associated with Plaintiff. If we look to this evidence, not for its truth, but for the state of mind of Plaintiff's customers, this can show a relationship of goods. Plaintiff did not, however, present any other evidence to support this point, such as customer surveys.
We find that the evidence does not indicate that the relationship of the parties' services is linked in the public's mind, and therefore, this factor weighs against Plaintiff.
10. SUMMARY OF SCOTT FACTORS
The above analysis demonstrates that by far, the factors weigh in favor of Defendant. Two factors are balanced between the parties. The only factor in Plaintiff's favor is the channels of trade point. The facts presented on this point, while important, are not enough to outweigh the evidence indicating that Defendant has not infringed Plaintiff's mark. Accordingly, we find that Plaintiff's claims for violations of 15 U.S.C. § 1114 and for common law trademark infringement, fail.
II. Claims Under 15 U.S.C. § 1125 and Common Law Torts of Unfair Competition and False Designation of Origin
Section 43(a) of the Lanham Act
creates civil liability for any person who:
in connection with any goods or services, . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which --
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.