PSK, LLC v. Hicklin (757 F. Supp. 2d 836, 2010)

United States District Court for the Northern District of Iowa 2010-12-02

Citations

Full opinion text

ORDER

LINDA R. READE, Chief Judge.

TABLE OF CONTENTS

I. INTRODUCTION........................................................842

II. PROCEDURAL BACKGROUND...........................................842

III. SUBJECT MATTER JURISDICTION......................................843

IV. SUMMARY JUDGMENT STANDARD......................................843

V. EVIDENTIARY ISSUES..................................................844

A. Procedural Background ..............................................844

B. Plaintiff’s Motion to Strike ...........................................846

1. The e-mails......................................................846

2. Telephone directory excerpts.......................................846

C. The Hicklins’Motion to Strike........................................846

D. The Hicklins’ Objections and Appeal...................................847

VI. FACTUAL BACKGROUND................................................847

A. Overhead Door Corporation...........................................847

B. Overhead Door Company of Cedar Rapids and Iowa City ................847

C. Plaintiff’s Advertising................................................847

D. Use of the Term “Overhead”..........................................847

E. The Hicklins ........................................................848

F. The Hicklins’Advertisements.........................................848

G. The Hicklins Encounter Confusion ....................................850

H. Customer Experiences................................................851

1. Greg Allen.......................................................851

2. Jack McArtor....................................................852

3. Shari Saari......................................................852

4. Jeffrey DeFrance.................................................853

5. Linda Norton.....................................................854

6. Karen Guse......................................................855

I. The Magid Survey....................................................855

J. The Hicklins’“Certified” Technicians.................................855

VIL ANALYSIS ..............................................................856

A. Infringement Claims.................................................856

1. Strength of a mark ...............................................856

2. “Overhead” is a generic term......................................857

3. Likelihood of confusion ...........................................861

B. Lanham Act Unfair Competition Claims ...............................861

1. Passing off.......................................................861

a. Legal background.............................................861

b. Secondary meaning...........................................863

c. Likelihood of confusion........................................865

i. Strength of Plaintiff’s mark...............................865

it. Similarity between the parties’marks .....................865

Hi. Competitive proximity of the parties’products..............867

iv.The Hicklins’ intent to confuse............................867

v. Evidence of actual confusion..............................868

vi. Potential customers’ degree of care........................868

d. Conclusion...................................................869

2. False advertising.................................................870

C. Iowa Code Section 548.113.............................................871

VIII. CONCLUSION...........................................................872

I. INTRODUCTION

The matters before the court are: (1) the “Motion for Summary Judgment” (docket no. 68), filed by Defendants Randy Hieklin and Danetta Hieklin (together, the “Hicklins”); (2) Plaintiff PSK, LLC’s “Motion to Strike” (docket no. 70); (3) the Hicklins’ “Motion to Strike Plaintiffs Exhibit 30” (“Hicklins’ Motion to Strike”) (docket no. 90); and (4) the Hicklins’ “Objections and Appeal of 9/22/2010 Ruling on Motion for Clarification-Reconsideration” (“Objections and Appeal”) (docket no. 98) (collectively, the “Motions”),

u PROCEDURAL BACKGROUND

On August 5, 2009, Plaintiff filed a five-count Complaint (docket no. 1) against Hieklin Overhead Doors, Inc. Plaintiff asserted claims for common law service mark infringement, common law trade name infringement, service mark infringement and unfair competition in violation of Lanham Act § 43(a), false descriptions in violation of Lanham Act § 43(a) and injury to business reputation in violation of Iowa Code section 548.113. On August 26, 2009, Plaintiff filed an Amended Complaint (docket no. 5) to add Randy Hicklin as a defendant. Plaintiffs claims remained the same.

On September 29, 2009, Randy Hicklin filed an Answer (docket no. 11) denying the substance of the Amended Complaint. On October 13, 2009, Hicklin Overhead Doors, Inc. filed an Answer (docket no. 14) denying the substance of the Amended Complaint.

On October 22, 2009, Plaintiff filed a Second Amended Complaint (docket no. 22) to add Danetta Hicklin as a defendant. On October 26, 2009, Hicklin Overhead Doors, Inc. filed an Answer (docket no. 24) denying the substance of the Second Amended Complaint. On November 13, 2009, the Hicklins filed an Answer (docket no. 26) denying the substance of the Second Amended Complaint.

On April 8, 2010, Plaintiff stipulated to Hicklin Overhead Doors, Inc.’s dismissal from the instant action. On May 4, 2010, the Hicklins filed an Amended Answer (docket no. 32), in which they asserted additional affirmative defenses.

On August 16, 2010, the Hicklins filed the Motion for Summary Judgment. On September 10, 2010, Plaintiff filed a Resistance (docket no. 71). On September 20, 2010, the Hicklins filed a Reply (docket no. 89).

The parties request oral argument on the Motion for Summary Judgment. However, the court finds that oral argument is unnecessary. The Motion for Summary Judgment is fully submitted and ready for decision.

III. SUBJECT MATTER JURISDICTION

The court has federal question jurisdiction over Plaintiffs claims arising under the Lanham Act, 15 U.S.C. § 1051 et seq. See 28 U.S.C. § 1331; 28 U.S.C. 1338(a). The court has supplemental jurisdiction over Plaintiffs state law claims because they are so related to Plaintiffs federal claims that they “form part of the same case or controversy under Article III of the United States Constitution.” 28 U.S.C. 1367(a).

IV. SUMMARY JUDGMENT STANDARD

Summary judgment is appropriate “if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). “An issue of fact is genuine when ‘a reasonable jury could return a verdict for the nonmoving party’ on the question.” Woods v. DaimlerChrysler Corp., 409 F.3d 984, 990 (8th Cir.2005) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). A fact is material when it “might affect the outcome of the suit under the governing law.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. “[T]o establish the existence of a genuine issue of material fact, ‘a plaintiff may not merely point to unsupported self-serving allegations.’ ” Anda v. Wickes Furniture Co., 517 F.3d 526, 531 (8th Cir.2008) (quoting Bass v. SBC Commc’ns, Inc., 418 F.3d 870, 872 (8th Cir.2005)). Rather, the nonmoving party “ ‘must substantiate [its] allegations with sufficient probative evidence that would permit a finding in [its] favor.’ ” Ando, 517 F.3d at 531 (quoting Bass, 418 F.3d at 873). The court must view the record in the light most favorable to the nonmoving party and afford it all reasonable inferences. Baer Gallery, Inc. v. Citizen’s Scholarship Found, of Am., Inc., 450 F.3d 816, 820 (8th Cir.2006) (citing Drake ex rel. Cotton v. Koss, 445 F.3d 1038, 1042 (8th Cir.2006)).

Proeedurally, the moving party bears “the initial responsibility of informing the district court of the basis for its motion and identifying those portions of the record which show a lack of a genuine issue.” Hartnagel v. Norman, 953 F.2d 394, 395 (8th Cir.1992) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). Once the moving party has successfully carried its burden under Rule 56(c), the nonmoving party has an affirmative burden to go beyond the pleadings and by depositions, affidavits, or otherwise, “set out specific facts showing a genuine issue for trial.” Fed.R.Civ.P. 56(e)(2); see, e.g., Baum v. Helget Gas Prods., Inc., 440 F.3d 1019, 1022 (8th Cir. 2006) (“Summary judgment is not appropriate if the non-moving party can set forth specific facts, by affidavit, deposition, or other evidence, showing a genuine issue for trial.”). The nonmoving party must offer proof “such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. “ ‘Evidence, not contentions, avoids summary judgment.’ ” Reasonover v. St. Louis County, Mo., 447 F.3d 569, 578 (8th Cir.2006) (quoting Mayer v. Nextel W. Corp., 318 F.3d 803, 809 (8th Cir.2003)).

V. EVIDENTIARY ISSUES

The parties raise a host of evidentiary issues. The court addresses them here, before turning to the merits of the Motion for Summary Judgment.

A. Procedural background

On September 10, 2010, Plaintiff filed its Motion to Strike, seeking to strike two categories of evidence that the Hicklins submitted in support of the Motion for Summary Judgment. First, Plaintiff sought to strike several e-mails that Overhead Door Corporation representatives purportedly sent to Plaintiffs owner and manager. Plaintiff argued that the emails lack foundation and constitute hearsay. Plaintiff also moves to strike the Hicklins’ Exhibits 24-31, which are purported excerpts from telephone directories in various cities. See Hicklins’ App’x at 121-82. Plaintiff argues that “the Hicklins have made no attempt to authenticate the exhibits.” Plaintiffs Motion to Strike at ¶ 2.b.

In response to Plaintiffs Motion to Strike, the Hicklins issued a subpoena to Overhead Door Corporation. The Hicklins sought to depose one or more Overhead Door Corporation representatives, seeking to elicit testimony it presumably could use to authenticate the e-mails.

On September 16, 2010, Plaintiff filed a “Motion to Quash Subpoena and/or Enforce Scheduling Order Deadlines” (“Motion to Quash”) (docket no. 82). In the Motion to Quash, Plaintiff argued that the discovery deadline expired on July 16, 2010, and that the Hicklins did not establish good cause to modify the Scheduling Order (docket no. 16) deadlines. That same date, the Hicklins filed a “Resistance to Motion to Quash” (docket no. 83), in which they argued that Plaintiff, having previously sought to avoid discovery of the e-mails on grounds of attorney-client privilege, should not be allowed to raise authenticity and foundation objections to the e-mails. Accordingly, the Hicklins asked the court to deny the Motion to Quash and “declare that the authenticity and foundation have already been established, or in the alternative allow the deposition to go forward.” Resistance to Motion to Quash at ¶ 2.

On September 16, 2010, United States Magistrate Judge Jon S. Scoles entered an Order (docket no. 84) denying the Motion to Quash. Judge Scoles noted that, during the earlier discovery dispute involving the e-mails, “Plaintiff never questioned the authenticity of the e-mails.” Order at 2. Accordingly, Judge Scoles found that the Hicklins “should be permitted to take the depositions of [two Overhead Door Corporation representatives] for the limited purpose of establishing that they are the authors of the e-mails.... ” Id. However, Judge Scoles ordered that the Hicklins “may not question the witnesses regarding the substance of the e-mails or the opinions found therein.” Id.

On September 17, 2010, Plaintiff filed a “Partial Withdrawal of Motion to Strike” (docket no. 85), in which it withdrew its authenticity objections to the e-mails. However, Plaintiff maintains that the emails constitute inadmissible hearsay. That same date, the Hicklins filed a “Motion for Clarification/Reconsideration of September 16, 2010 Order (“Motion for Clarification/Reconsideration”) (docket no. 86). In the Motion for Clarification/Reconsideration, the Hicklins sought clarification as to whether Judge Scoles’s September 16, 2010 Order would allow them to take a “foundational deposition” apparently related to whether the e-mails fall within the business records exception to the hearsay rule. Motion for Clarification/Reconsideration at ¶ 4.

On September 20, 2010, Plaintiff filed a Resistance (docket no. 88) to the Motion for Clarification/Reconsideration. Plaintiff argued that the Hicklins sought to expand Judge Scoles’s Order “to let them conduct significant discovery in hopes they can shoehorn the emails into the business records exception to the hearsay rule.” Resistance at 2.

That same date, the Hicklins filed their Motion to Strike, in which they ask the court to strike the expert witness report prepared by Prank N. Magid Associates. The Hicklins argue that the report, which Plaintiff submitted in support of its Resistance to the Motion for Summary Judgment, is irrelevant.

On September 22, 2010, Judge Scoles entered an Order (docket no. 94) denying the Motion for Clarification/Reconsideration. As opposed to the authentication issues, Judge Scoles found that Plaintiff never “made any representations regarding whether the e-mails were ‘kept in the course of a regularly conduct business activity,’ and thereby fall within the business records exception to the hearsay rule.” Order at 3. Judge Scoles held that “the Hicklins have not shown good cause for an extension of the discovery deadline established in the Scheduling Order.” Id. Therefore, Judge Scoles denied the Hicklins’ request “to take the deposition of an Overhead Door Corporation representative to establish additional ‘foundation’ for the business records exception....” Id.

On September 27, 2010, the Hicklins filed a “Resistance to Plaintiffs Motion to Strike and Request for Oral Hearing” (docket no. 95). Plaintiff has not filed a resistance to the Hicklins’ Motion to Strike and the time for doing so has expired.

On October 4, 2010, the Hicklins filed the Objections and Appeal. In the Objections and Appeal, the Hicklins argue that, in the event it “does not accept” the arguments in opposition to Plaintiffs Motion to Strike, the court should review Judge Scoles’s Order on the Motion for Clarification/Reconsideration and “allow the corporate deposition of Overhead Door Corporation to proceed.... ” Objections and Appeal at 4.

On October 5, 2010, Plaintiff filed a “Reply in Support of Motion to Strike” (docket no. 99), On October 12, 2010, Plaintiff filed a “Resistance to [the Hicklins’] Objections and Appeal” (docket no. 100).

B. Plaintiffs Motion to Strike

As previously noted, Plaintiff asks the court to strike several emails as inadmissible hearsay. Plaintiff also seeks to strike excerpts from various telephone directories on authentication grounds.

1. The e-mails

The court finds that it is not necessary to consider the e-mails at issue for purposes of ruling on the Motion for Summary Judgment. Accordingly, the court shall deny this portion of Plaintiffs Motion to Strike as moot.

2. Telephone directory excerpts

With their Resistance to Plaintiffs Motion to Strike, the Hicklins submitted an affidavit from their counsel stating that the telephone directory excerpts contained in the Hicklins’ Exhibits 24-29 are “true and correct copies from Dex directories” that the Hicklins’ counsel “personally downloaded” from the DexPages.com website. Affidavit of Laura N. Martino (“Martino Aff.”) (docket no. 95-3) at ¶ 3. With respect to the Hicklins’ Exhibits 30-31, the Hicklins’ counsel avers that they are “true and correct copies taken from Yellowbook directories located in the offices of [the Hicklins’ counsel].” Id. at ¶ 4.

It is unclear whether, in light of this affidavit, Plaintiff continues to challenge the authenticity of the excerpts. In Plaintiffs Reply in Support of its Motion to Strike, Plaintiff does not mention the telephone directory excerpts, much less argue that they still have not been authenticated. In any event, the court finds that the excerpts are properly authenticated. See Fed.R.Evid. 901(a) (“The requirement of authentication ... is satisfied by evidence sufficient to support a finding that the matter in question is what its proponent claims.”). Accordingly, the court shall deny Plaintiffs Motion to Strike to the extent it seeks to strike the excerpts of telephone directories contained in the Hicklins’ Exhibits 24 through 31.

C. The Hicklins’ Motion to Strike

In their Motion to Strike, the Hicklins ask the court to strike a consumer survey conducted by Frank N. Magid Associates (“Magid Survey”), which Plaintiff submitted in support of the Resistance. See Pl. App’x at 168-178. The court declines to strike the Magid Survey. However, for the reasons explained in Section VILB.l.b., infra, the court agrees with the Hicklins that the Magid Survey is irrelevant on the issue of secondary meaning.

D. The Hicklins’ Objections and Appeal

As explained above, the court finds it is unnecessary to consider the e-mails Plaintiff challenges in its Motion to Strike. Because the Hicklins’ Objections and Appeal pertain solely to this issue, the court finds that oral argument on the Objections and Appeal is unnecessary and the court shall deny the Objections and Appeal as moot.

VI. FACTUAL BACKGROUND

Viewing the facts in the light most favorable to Plaintiff, and affording it all reasonable inferences, the undisputed facts are as follows.

A.Overhead Door Corporation

Overhead Door Corporation manufactures garage doors and related products. Overhead Door Corporation’s registered trademarks include a “red ribbon” logo, which features the phrase “OVERHEAD DOOR.” See Hicklins’ App’x at 103 (depicting portion of Overhead Door Corporation website, including “red ribbon”). Overhead Door Corporation refers to its authorized distributors as “Ribbon Distributors.” Id.

B.Overhead Door Company of Cedar Rapids and Iowa City

Overhead Door Corporation has had an authorized distributor in the Cedar Rapids and Iowa City, Iowa area since 1956. Jeff Fauchier, the father of Plaintiffs current manager, Martin Fauchier, originally operated the distributorship in this region. Plaintiffs primary shareholder, Deric Powell, purchased the business in 2004, and does business as “Overhead Door Company of Cedar Rapids and Iowa City.”

Plaintiff is in the business of “selling and servicing garage doors in both the commercial and residential markets.” Hicklins’ Statement of Material Facts (“Hicklins’ Statement of Facts”) (docket no. 68-2) at ¶ 5. In February of 2004, Plaintiff became an authorized distributor of Overhead Door Corporation’s products. Pursuant to its distributor agreement, Plaintiff is authorized to distribute Overhead Door Corporation’s products and use Overhead Door Corporation’s marks within Plaintiffs distribution area. Since 2007, Plaintiff has generated substantial revenue through residential sales and service. See PI. App’x at 24.

C.Plaintiff’s Advertisiny

Since acquiring the business in 2004, Plaintiff has engaged in marketing and advertising through several media, including the Yellow Pages, television, radio, signage, apparel and sponsorship of community events. Plaintiffs manager, Martin Fauchier, avers that, since 2004, Plaintiff has expended considerable sums on such advertising. See PL App’x at 23. Plaintiffs financial records partially confirm this information. See Hicklins’ Supplemental Appendix (“Hicklins’ Supp. App’x”) (docket no. 89-2) at 288-306.

D.Use of the Term “Overhead”

Other entities include the word “overhead” in their trade names and use the term to market their goods and services. Several companies have filed trademark registrations with the United States Patent and Trademark Office that include the term “overhead.” See Hicklins’ App’x at 69-90 (collecting registrations of various entities using the term “overhead”). Among these companies are several that market garage door products and/or services. See id. at 69 (listing, among others “Precision Overhead Garage Door Service,” “Renlita Overhead Doors” and “Advantage Overhead Garage Door Service”). The Hicklins also provide evidence, in the form of telephone directory excerpts, that other entities in various states use the term “overhead” in their advertisements and listings. It appears that most, if not all, of these companies sell garage door products or services See, e.g., Hicklins’ App’x at 121-128 (depicting various telephone directory listings for “overhead” garage door products and services in Omaha, Nebraska, including “Precision Overhead Garage Door Service” and “Langfeldt Overhead Door”).

At least one other company in the parties’ market, “Dan’s Overhead Doors & More,” operates and advertises under a name that includes the term “overhead.” See id. at 185 (depicting advertisement for “Dan’s Overhead Doors & More”). In an April 25, 2007, e-mail to Overhead Door Corporation representatives, Fauchier stated, in reference to Dan’s Overhead Doors & More, that Plaintiff had been “fighting that for years.” Id. at 39.1. However, when asked whether he “ever had any issues with Dan’s Overhead[,]” Fauchier testified, “No.” Id. at 8. Fauchier also testified that his reference to Plaintiff “fighting” Dan’s Overhead Doors & More simply meant that “he is another competitor” and “the use of fighting is loose, to say the least.” Id. at 8. Finally, he testified that Plaintiff never reported any potential interference or infringement issues with Dan’s Overhead Doors & More “to the Better Business Bureau, never sent it to the State’s Attorney General, and ... never brought a legal case against them....” Id.

E. The Hicklins

The Hicklins are sole proprietors of a residential installation and repair business for garage doors. They do business as “Advanced Garage Door Repair” and “A-l American Garage Door Repair.” Plaintiffs Statement of Material Facts (“PI. Statement of Facts”) (docket no. 71-2) at ¶ 6. Although the Hicklins market their services under two names, no difference exists between the services each provides and all revenue flows to the Hicklins as sole proprietors.

In March or April of 2007, the Hicklins entered the Cedar Rapids market as Advanced Garage Door Repair for the purpose of selling and repairing garage doors. They subsequently entered the Johnson County market, which includes Iowa City. The Hicklins maintain one office in Sioux City, Iowa, “where all service calls are answered for scheduling.” Hicklins’ Statement of Facts at ¶ 6. The Hicklins “maintain a warehouse and local contractors in the Cedar Rapids area to respond to customer calls.” Id.

F. The Hicklins’ Advertisements

“During the first 12-18 months of their operations, the Hicklins created and purchased multiple advertisements in Yellow Pages directories prominently featuring the term ‘OVERHEAD.’ ” PI. Statement of Facts at ¶ 8. The Hicklins’ advertisements include telephone numbers with a(319) area code. However, any resulting calls are routed to their Sioux City office.

The Hicklins’ first advertisements appeared in 2007 in the Cedar Rapids Dex telephone directory for use through April of 2008. “The advertisement in the Yellow Pages portion of the directory emphasizes the term ‘OVERHEAD’ more than any other term.” Id. at ¶ 9. “Randy Hicklin sketched this ad before submitting it to Dex.” Id. The Hicklins also purchased an “inkjet advertisement” in the 2007-08 Dex directory, which “appears on the bottom of the phone book and features the term ‘OVERHEAD’ as its most prominent feature.” Id. at ¶ 10. The inkjet advertisement is placed so that it can be seen when the telephone book is lying on its side. Randy Hicklin testified that he chose the term “OVERHEAD” as the most prominent term in the initial advertisements because “[fit’s the most descriptive word for consumers to know the type of work that I do and what they are looking for.” PI. App’x at 39.

“In the next year’s Dex phone book, dated April 2009, the Hicklins bought a cover page advertisement for A-l American Garage Door Repair.” PI. Statement of Pacts at ¶ 12. Randy Hicklin designed the advertisement, which does not include the term “OVERHEAD.” Rather, it describes the Hicklins’ services as “garage door repairs.” PL App’x at 60. Randy Hicklin testified that he thought the cover page advertisement was an effective message to reach customers. The Hicklins also placed an advertisement for Advanced Garage Door Repair inside the April 2009 Dex directory. This advertisement “prominently features the term ‘OVERHEAD’ in green and larger font size.” Pl. Statement of Facts at ¶ 13.

For the April 2010 Dex directory, the Hicklins again bought a cover advertisement for A-l American Garage Door Repair. However, unlike the previous year, they “added the term ‘OVERHEAD’ in red and larger font than the other words on the ad[.]” Id. at ¶ 14. The Hicklins also placed an internal advertisement for Advanced Garage Door Repair that “uses larger typeface and red font to emphasize the term‘OVERHEAD.’” Id.

A second internal advertisement, located within the alphabetical listing of providers, “also uses bold red lettering to highlight the term ‘OVERHEAD.’” Id. Randy Hicklin created this advertisement and intentionally emphasized the term “OVERHEAD.” “On the Dex mock-up for the ad, handwritten annotations beside Hicklin’s writing state ‘RED bold as possible.’ ” Id. at ¶ 15. Randy Hicklin testified that, although he did not make this notation, he told a Dex representative to “make the term ‘OVERHEAD’ as bold as possible.” Id.

The Hicklins also placed advertisements in the Iowa City Dex directory dated November 2009. “In a mock-up of an ad for the Iowa City Dex directory, [Randy] Hicklin drew an ad containing the word ‘OVERHEAD’ in largest font, followed by the terms ‘garage doors, openers, and repairs.’ ” Id. at ¶ 16. In a mock-up for a Yellow Book directory, Randy Hicklin wrote in the margin that Yellow Book should make the term “overhead” “MUCH LARGER & BOLD STRETCHED OUT.” Pl. App’x at 105.

After Plaintiff filed the instant action, the Hicklins purchased additional advertisements in telephone directories. In the Iowa City Dex directory dated November 2010, the Hicklins placed an advertisement featuring the term “CLEARANCE” in the largest typeface. Id. at 78. Randy Hicklin testified that he chose the term “clearance” instead of “overhead” for a few reasons:

Because of the economy, the way it was. My ad changes from year to year, which obviously everything on these ads is different. And I had a competitor that was angry for using the word in my advertising so I decided to take that word out and show them that I could be just as effective in my business without using that word in my ad.

PI. App’x at 48. In two advertisements placed in the 2010-2011 Cedar Rapids Yellow Book directory, the Hicklins do not use the term “OVERHEAD.” See PI. App’x at 80-81. Randy Hicklin also created a mock-up for the 2010-2011 Yellow Book directory that “crossed out the term ‘OVERHEAD’ and replaced it with the term ‘CEDAR RAPIDS.’ ” PL Statement of Facts at ¶ 19; Pl. App’x at 106. When asked why he made this change, Randy Hicklin explained:

For the same reasons that I indicated earlier. I made advertising changes every year and I wanted to get the Cedar Rapids customers[’] first visual, which that’s what this — [t]his is the primary source of advertising for my customers, and this is basically visual advertisement, so you want to grab the customers’ eyes first and that’s what I thought would be most effective to my customers.

Pl. App’x at 49.

G. The Hicklins’ Encounter Confusion

Lyle Lemke, an installer that Advanced Garage Door Repair hired in 2007, testified that he encountered three to four customers each week that had actually intended to contact Overhead Door Company of Cedar Rapids and Iowa City. Lemke testified that, when he encountered these customers, he would leave without doing the work. However, Lemke testified that “Randy [Hicklin] wanted to know why I didn’t stay and do the work. He said, you should be charging them a service call.” Id. at 111.

Lemke testified that he spoke to Randy Hicklin “at least once a month” regarding customer confusion. Id. Specifically, Lemke testified that he told Randy Hicklin that the Hicklins’ advertisement “was confusing to people, when they look at that, the ‘overhead’ is in bigger print and [Randy Hicklin] said, yeah, but Advanced is right there beside it.” Id. Lemke also testified that, during his training with Randy Hicklin, they were “going up the interstate, and [Randy Hicklin] passed one of Overhead’s trucks, and he looked out and kind of laughed and said, we’re going to get a lot of their business.” Id. at 112.

Randy Hicklin acknowledges that there has been some confusion among consumers. He explained his take on the cause for confusion:

Well, if I have caused confusion by advertising large in the [telephone] book in a descriptive way, they haven’t been able to find him because of the type of advertising [Plaintiff] is doing in comparison to me. They have not been able to find him, so if he has customers that he has had in the past looking for him, they can’t find him.

PI. App’x at 37. Randy Hieklin also acknowledges that customers have called his business looking for Overhead Door Company of Cedar Rapids and Iowa City. Randy Hieklin described his business’s response:

Well, they tell them this is Advanced Garage Door. We do overhead repair and if they ask, is this the Overhead Door Company, we tell them no, and if they ask if we have their phone number, which sometimes we are actually nice enough to look it up for them.

Id. Randy Hieklin recalls instances when his technicians arrived at a customer’s home and the customer thought they were having Overhead Door Company of Cedar Rapids and Iowa City do the repairs. Randy Hieklin testified that three technicians reported such incidents.

H. Customer Experiences

Several of Plaintiffs customers have mistakenly contacted one of the Hicklins’ businesses when, in fact, they were trying to reach Overhead Door Company of Cedar Rapids and Iowa City.

1. Greg Allen

Greg Allen manages about twenty rental properties in Iowa City. He has used Overhead Door Company of Cedar Rapids and Iowa City for eight to ten years and is “very pleased” with the work it has done. PI. App’x at 120. Allen explained that he associates the word “overhead” with Plaintiffs business:

Q. Did the term overhead mean something to you in the context of garage door companies?

A. Yes.

Q. What did it mean?

A. To me, that was my company, you know, the overhead garage door company.

Q. That you worked with for eight to ten years?

A. Yes.

Id. at 124.

Although he usually finds Plaintiffs telephone number by looking for its advertisement in the Yellow Pages, Allen mistakenly contacted Advanced Garage Door Repair after noticing an advertisement “on the edge of the pages” of the telephone book. Allen acknowledges that he “can’t see up close” without his glasses and is “not good with the alphabet....” PI. App’x at 120. Allen testified that, throughout his telephone conversation with Advanced Garage Door Repair, he thought he was speaking with Overhead Door Company of Cedar Rapids and Iowa City. After new parts were installed on Allen’s garage door and he was given a bill including the words Advanced Garage Door Repair, Allen still thought he was working with a “repair division” affiliated with Plaintiff. Id. at 122. Allen testified that he could not believe he “made that mistake” and that, after looking at the advertisement for a second time, he “saw [the Advanced Garage Door Repair logo], which [he] paid no attention to” and “that might have tipped [him] off that it was a different company.” Id. at 124.

2. Jack McArtor

Jack McArtor has owned residential rental properties for over thirty years. He has five garage doors from Overhead Door Company of Cedar Rapids and Iowa City in his rental properties, and has worked with the company for fifteen to twenty years. McArtor has been satisfied with the company’s work and would recommend it to others. When McArtor needs to contact Plaintiffs company, he usually looks for the telephone number in the Yellow Pages. McArtor testified that he associates the term “overhead” with Plaintiffs business:

Q. Let me ask you this; did you associate that term “overhead” with the company Overhead Door Company of Cedar Rapids and Iowa City?

A. I was trying to.

Q. And so when you saw the large “overhead” on [one of the Hicklins’ advertisements]—

A. Yes.

Q. — [on the Hicklins’ advertisement]—

A. I assumed that was Overhead Door that I always worked with.

Q. And why did you make that assumption?

A. Because of the word overhead.

Id. at 131.

Within the last year or so, McArtor attempted to contact Plaintiff but wound up contacting a different company. McArtor noticed an advertisement on the cover of the telephone book, which features “OVERHEAD” in red letters, followed by “GARAGE DOORS, OPENERS & REPAIRS.” Id. at 82. The advertisement also features the A-l American Garage Door Repair logo and a telephone number. McArtor then flipped to the Yellow Pages where he noticed an advertisement featuring “overhead again in big, green, huge, green letters there.” Id. at 130. McArtor testified that he “should have looked for the [red ribbon] emblem” but “for some reason, [he] didn’t, so he called [the Hicklins’] number.” Id. McArtor spent about two to three minutes looking for Plaintiffs number in the telephone book. After calling Advanced Garage Door Repair, McArtor “started looking in the book a little more clearly, and the minute [he saw] the ribbon ... [he] called there and had no problem.” Id.

3. Shari Saari

Shari Saari has worked with Overhead Door Company of Cedar Rapids and Iowa City “[m]any times” since the company installed a door in her garage about fifteen or sixteen years ago. Id. at 135. When she needs to contact Overhead Door Company of Cedar Rapids and Iowa City, Saari looks in the Yellow Pages. Saari explained that she associates the term “overhead” with Plaintiffs business:

Q. Does the term overhead lead to any association, in your mind, for any garage door companies?

A. It does. It makes me think of Overhead Garage Door, I guess, from Cedar Rapids. It’s what I think of when I see that even now.

Id. at 142.

In 2009, Saari wanted a new garage door installed at a home she had purchased. Saari called her grandson and asked him to provide the telephone number listed on the front of the telephone book. Saari believed the advertisement was for Overhead Door Company of Cedar Rapids and Iowa City. Saari called the number on the cover of the telephone book and believed she was speaking with Overhead Door Company of Cedar Rapids and Iowa.

When a technician arrived at Saari’s property, Saari pointed to an Overhead Door Company sticker on the garage door and said “you have been here before.” Id. at 137. Saari pointed out the sticker because she was “so happy to give them my business.... ” Id. at 138. Saari testified that the technician “didn’t say anything” in response to her comment. Id.

About a week later, Saari used the telephone book at her workplace to call Overhead Door Company of Cedar Rapids and Iowa City to schedule the installation. When she realized they had no record of the transaction, Saari returned to her property and discovered she had mistakenly hired Advanced Garage Door Repair. Saari testified that, because she had “already paid for half,” she called Advanced Garage Door Repair to schedule the installation. Id. When she contacted Advanced Garage Door Repair, Saari told them that she “thought they were Overhead Door from Cedar Rapids.” Id.

4. Jeffrey DeFrance

Jeffrey DeFrance lives in Iowa City and has done business with Overhead Door Company of Cedar Rapids and Iowa City for 31 years. DeFrance testified that he is loyal to the company because he just “stick[s] with the same company if they do a good job.” Id. at 144. DeFrance testified that he associates the word “overhead” with Plaintiffs business:

Q. Focusing on just the term overhead, did you associate that with Overhead Door Company of Cedar Rapids and Iowa City?

A. Yes.

Id. at 147.

In May of 2008, “springs broke” on DeFrance’s garage door and he had “no way to lock [his] house____” Id. at 145. DeFrance attempted to contact Overhead Door Company of Cedar Rapids and Iowa City but wound up contacting Advanced Garage Door Repair. DeFrance noticed an advertisement on the bottom of the telephone book. The telephone book was on top of DeFrance’s refrigerator and he just “glanced at it” and called, “because [he] thought it was Overhead Door Company.” Id. at 145. In his deposition, DeFrance explained:

if I’d had had half a brain, I would have opened up the Yellow Pages and looked, but I seen it on the butt end of the Phonebook stamped on there, and so I panicked. My springs broke, I have no way to lock my house, so I call. My garage door was racked like this (indicating). I didn’t want anybody getting in my house.

Id.

When DeFrance called the number on the advertisement, he asked, “is this Overhead Door of Cedar Rapids or Iowa City[?]” Id. DeFrance testified that the woman who answered said “yes, yeah.” PI. App’x at 145. DeFrance also testified that, if the woman had said no, he “would have just re-called Overhead Door.” Id. When the technician arrived, he told DeFrance he was not from Overhead Door Company of Cedar Rapids and Iowa City. However, DeFrance allowed him to perform the repair because he had already given a credit card number and thought he would “get hit for $50, probably, because I called — if somebody’s going to come out.” Id. at 146.

5. Linda Norton

Linda Norton, a Cedar Rapids resident, has experience with Overhead Door Company of Cedar Rapids and Iowa City dating back to 1995 or 1996. She describes it as a “[vjery dependable company” that “did excellent work.” Id. at 152. Norton testified that she associates the term “overhead” with Overhead Door Company of Cedar Rapids and Iowa City.

In 2009, Norton had a problem with her garage door. Although she attempted to contact Overhead Door Company of Cedar Rapids and Iowa City, Norton mistakenly contacted a different company. Norton testified that “[tjhere was a coupon on the front of the telephone book, and all I saw on the coupon was ‘overhead door,’ so I presumed that’s who I was calling.” Id. at 152. Norton spent “[vjery little” time looking at the telephone book before calling and “did not look inside the phone-book” after noticing the coupon on the cover. Id. at 153. Norton scheduled a repair and a technician came to replace a spring on her garage door. Norton gave the technician a check made out to “Overhead Door” because she “thought that’s who [she] was dealing with, was Overhead Door.” Id. at 154. The technician accepted the check.

After her garage door problem persisted, Norton “got ahold of the original Overhead Door this time.” Id. When Norton called Overhead Door Company of Cedar Rapids and Iowa City, they had no record of the repair. At this time, Norton realized she must have been dealing with another company. Norton then contacted Advanced Garage Door Repair to fix the problem. Although a technician came to her home, he did not correct the problem. Norton then “called Overhead Door back again, they came out, measured the spring and put on the right size spring ..., [at] no charge.” Id. at 153.

6. Karen Guse

Karen Guse is a Cedar Rapids resident and owns seven rental properties. She has been familiar with Overhead Door Company of Cedar Rapids and Iowa City since 1977 or 1978, and has used its services about ten to twelve times.

In 2009, Guse purchased a home. However, the garage door did not work. Guse testified that she spent between thirty seconds and one minute looking at the telephone book when she noticed an advertisement “on the side printed on it in black ... that said Overhead Door.” Id. at 161. Guse acknowledges that she did not spend a “sufficient amount” of time looking at the telephone book, but she “just basically saw it, and it said ‘overhead.’ ” Id. at 162. Guse testified that she was “not thinking that I would have to look for the little red ribbons” and did not memorize their number, so she “just called.” Id. When Guse called the telephone number on the advertisement, she thought she was contacting Overhead Door Company of Cedar Rapids and Iowa City. In her deposition, Guse acknowledged that, “If I’d been smarter, I would have looked at that more closely, but it said ‘overhead’ in large letters. There were no red ribbons, because it was only black printing on the phone book.” Id. at 162.

I. The Magid Survey

In early 2010, Plaintiff hired Robert M. Crawford, Ph.D., of Frank N. Magid Associates to conduct a market research study among both general consumers and current customers of Overhead Door Company of Cedar Rapids and Iowa City. General consumers and Plaintiffs customers were asked whether a company or companies come to mind when they hear the word “overhead.” 68 % of consumers said yes, while 81% of Plaintiffs customers said yes. Of the consumers, 60% associate the term “overhead” with Plaintiff and 39% associate it with Dan’s Overhead Doors & More. Of Plaintiffs customers, 83% associate the term with Plaintiff and 22% associate “overhead” with Dan’s Overhead Doors & More. With respect to market-wide association of the term “overhead,” the Magid Survey reveals the following: (1) of general consumers, 41% associate the term with Overhead Door Company of Cedar Rapids and Iowa City, 26% associate the term with Dan’s Overhead Doors & More and 32% do not associate a particular company with “overhead” and (2) of Plaintiffs customers, 68% associate “overhead” with Overhead Door Company of Cedar Rapids and Iowa City, 18% associate it with Dan’s Overhead Doors & More and 19% do not associate “overhead” with a particular company.

J. The Hicklins’ “Certified” Technicians

In their telephone directory advertisements, and on shirts worn by Advanced Garage Door Repair technicians, the Hicklins represent that their technicians are “certified.” See PI. App’x at 183 (depicting shirt bearing “Certified Technicians” insignia). The technicians’ certification is based solely on a list that Randy Hicklin created. In other words, no independent entity certified the Hicklins’ technicians. Randy Hicklin testified that he has trained his technicians based on the same criteria “since 2002.” PI. App’x at 40. One of the Hicklins’ technicians, Lance Cross, testified that Randy Hicklin trained and certified him when he was hired.

“After [Plaintiff] challenged the Hicklins’ use of the term ‘certified’ in connection with [their] technicians, the Hicklins removed the word from Yellow Pages advertising.” PL Statement of Facts at ¶ 78. Randy Hicklin removed the term “certified” because he “didn’t know if [he] was doing something wrong by putting that in there.” Pl. App’x at 49. Randy Hicklin testified that his doubts resulted from Plaintiff bringing the instant action.

VII. ANALYSIS

The Hicklins ask the court to grant summary judgment in their favor on all claims. The court addresses each claim, in turn.

A. Infringement Claims

Plaintiffs infringement claims require proof of two essential elements. First, Plaintiff must establish it has a protectible interest in the mark at issue. Commercial Sav. Bank v. Hawkeye Fed. Sav. Bank., 592 N.W.2d 321, 326 (Iowa 1999); Duluth News-Tribune v. Mesabi Publ’g, Inc., 84 F.3d 1093, 1096 (8th Cir. 1996). Second, if Plaintiff has a protectible interest, it must prove that the Hicklins have infringed upon that right. Commercial Sav. Bank, 592 N.W.2d at 326; Duluth News-Tribune, 84 F.3d at 1096. Infringement is judged by asking whether there is a likelihood of confusion among consumers. Commercial Sav. Bank, 592 N.W.2d at 329; Duluth News-Tribune, 84 F.3d at 1096.

The Hicklins contend that Plaintiffs infringement claims fail for any one of three reasons. First, they argue that the term “overhead” is generic and entitled to no trademark protection. Second, they argue that, even if the term is descriptive, it is entitled to no protection because it has not acquired secondary meaning. Third, they argue that even if Plaintiff can establish a protected interest in the term “overhead,” there is no genuine issue of material fact with respect to the likelihood of confusion. First, the court considers whether Plaintiff has a protectible interest in the term “overhead.” If Plaintiff has such an interest, the court will address the likelihood of confusion.

1. Strength of a mark

To determine whether a mark is sufficiently distinctive to deserve protection, both federal and Iowa courts classify marks into one of four categories, ranging from weakest to strongest: (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fanciful. See Commercial Sav. Bank, 592 N.W.2d at 327 (listing categories for purposes of common law infringement claims under Iowa law); Duluth News-Tribune, 84 F.3d at 1096 (listing categories for purposes of Lanham Act infringement claims).

2. “Overhead” is a generic term

Generic marks, which merely describe “the general category, type, or class of goods, services or business,” are not entitled to trademark protection. Commercial Sav. Bank, 592 N.W.2d at 327 n. 2; see also Duluth News-Tribune, 84 F.3d at 1096 (“[A] generic term is one that is used by the general public to identify a category of goods, and as such merits no trademark protection.”). In other words, a “ ‘generic’ mark is the common name of a product or service — ‘the genus of which the particular product is a species.’ ” Home Builders Ass’n of Greater St. Louis v. L & L Exhibition Mgmt. Inc., 226 F.3d 944, 949 (8th Cir.2000) (quoting Park and Fly, 'N v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985)). “A generic term does not identify the source of a product, but rather indicates the basic nature of the product.” Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974 (8th Cir.2006). A generic term “is not afforded trademark protection even if it becomes associated with only one source, ... for a competitor must be able to describe his goods as what they are.” Id. (internal citation and quotation marks omitted).

“In deciding genericness, evidence of the relevant public’s understanding of a term ‘may be obtained from any competent source.’” Id. (quoting In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570 (Fed.Cir.1987)). Thus, genericness may be established “with evidence such as ‘newspapers and other publications, generic use by competitors, generic use of the term by the party bringing suit, and use of the term by third parties in trademark registrations.’ ” Id. at 974-75 (quoting Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 406 (6th Cir.2002)); see also Steak n Shake Co. v. Burger King Corp., 323 F.Supp.2d 983, 992 (E.D.Mo.2004) (noting that a court may consider “dictionaries, newspapers, consumer surveys, advertisements, and other publications”).

At the outset, Plaintiff insists that the classification of a mark is a fact question for the jury. Plaintiff correctly notes that the Eighth Circuit Court of Appeals has stated that “[h]ow a particular word has been used and how it has been understood by the public is a question of fact” and the “correct categorization of a given term is also a factual issue.” WSM, Inc. v. Hilton, 724 F.2d 1320, 1325-26 (8th Cir.1984). However, numerous courts, including the Eighth Circuit Court of Appeals, have held that a mark may be found generic as a matter of law. See Schwan’s, 460 F.3d at 976 (affirming grant of summary judgment on grounds that the term “Brick Oven” is generic); Best Buy Warehouse v. Best Buy Co., Inc., 920 F.2d 536, 537 (8th Cir.1990) (per curiam) (affirming summary judgment in favor of defendant where district court “held that the phrase ‘best buy’ is generic as a matter of law”). Accordingly, the classification of the term “overhead” as generic is an issue amenable to resolution on summary judgment.

Several courts have considered the proper classification of terms in similar circumstances and found them to be generic. In Schwan’s, the plaintiff claimed it had a protectible interest in the term “Brick Oven.” 460 F.3d at 974. The Eighth Circuit Court of Appeals rejected this claim, holding that “summary judgment was appropriate and that the district court correctly held that Brick Oven, as used to identify pizza, is a generic term.” Id. at 975. The Eighth Circuit Court of Appeals noted that, among other things, the term simply refers to a pizza that is cooked in a brick oven, the plaintiffs frozen pizza competitors had used the term to describe their products, and a retail trade magazine’s website used the term generically when describing market growth. Id.

Similarly, in Miller Brewing Co. v. G. Heileman Brewing Co., Inc., the Seventh Circuit Court of Appeals held that the term “light” is generic when used with “beer.” 561 F.2d 75, 80 (7th Cir.1977). The Seventh Circuit Court of Appeals considered the dictionary definition of the word “light” and noted that the term “has been widely used in the beer industry for many years to describe a beer’s color, flavor, body, or alcoholic content, or a combination of these or similar characteristics.” Id.

The reasoning employed in the Miller Brewing and Schwan’s cases leads the court to conclude that the term “overhead” is generic when used in connection with garage doors. The Hicklins put forth evidence showing that Plaintiffs competitors use the term “overhead” to describe their products and services. For example, one company in the parties’ market operates and advertises under the name “Dan’s Overhead Doors & More.” Hicklins’ App’x at 185. A competitor’s use of the term supports a finding of genericness. See Schwan’s, 460 F.3d at 975 (holding that use of the term “brick oven” by plaintiffs frozen pizza competitors supported district court’s finding that term was generic).

Plaintiffs reaction to Dan’s Overhead Doors & More’s use of “overhead” also supports the term’s genericness. Fauchier testified that Plaintiff never had “issues” with Dan’s Overhead Doors & More and never reported any potential infringement based on the use of the term “overhead.” “Generic use by competitors which has not been contested” by Plaintiff is one type of evidence useful to prove the term’s genericness. McCarthy, Trademarks and Unfair Competition, § 12:13 (4th ed. 2010) (hereinafter, “McCarthy”). Plaintiffs apparent acquiescence to Dan’s Overhead Doors & More’s use of the term “overhead” further illustrates the word’s generic status.

The dictionary definition of “overhead” also supports a finding of genericness. “The dictionary definition of a word is an appropriate and relevant indication of the ordinary significance and meaning of words to the public.” WSM, Inc., 724 F.2d at 1327. Merriam-Webster’s Online Dictionary defines the adjective “overhead” as “operating, lying, or coming from above” or “having the driving part above the part driven.” Available at http:// merriam-webster.com/dictionary/overhead (last visited December 2, 2010). Merriam-Webster’s indicates that the first known use of “overhead” was in 1874. Id. In this case, the term “overhead” simply describes an object — here, a door — that operates or comes from above.

Plaintiff advances several arguments against a genericness finding. First, Plaintiff contends that many of its customers associate the term “overhead” with “a company, not a generic product or service.” Resistance at 8. Similarly, Plaintiff posits that the Magid Survey confirms the term is not generic because it shows “ ‘both consumers and customers associate the term ‘overhead’ with a particular source of goods and services, namely Overhead Door Company of Cedar Rapids and Iowa City.’ ” Resistance at 8 (quoting Magid Survey, PI. App’x at 167).

The Magid Survey does not alter the court’s conclusion that “overhead” is a generic term. Plaintiffs reliance on the Magid Survey ignores the distinct role such evidence plays in cases involving a “coined” term versus those involving a term commonly used prior to its association with the product or service at issue. See Hunt Masters, Inc. v. Landry’s Seafood Rest., Inc., 240 F.3d 251, 255 (4th Cir.2001) (cited with approval in Schwan’s, 460 F.3d at 975) (holding that customer survey was irrelevant as to whether the phrase “crab house” was generic where the plaintiff did not claim to have first coined the term). Customer survey evidence is most often used where the term at issue “began life as a ‘coined term’ ” but is “alleged to have become generic through common usage.” Id. (citing Miller Brewing Co. v. Joseph Schlitz Brewing Co., 605 F.2d 990, 995 (7th Cir.1979)). However, when the relevant term is not a “coined term” but rather “was commonly used prior to its association with the products at issue[,]” “it is not necessary to determine whether the term has become generic through common use.... ” Hunt Masters, 240 F.3d at 255.

Plaintiff does not claim that it coined the term “overhead” or that the word otherwise began life as a coined term. It appears that the term was commonly used before its association with the products involved in this case. Accordingly, the Magid Survey is irrelevant with respect to whether “overhead” is a generic term. See Schwan’s, 460 F.3d at 975-76 (“Brick Oven was commonly used before either party began labeling their frozen pizzas with the term, and it was not error for the district court to omit the survey evidence from its genericness analysis.”).

For similar reasons, the court rejects the significance Plaintiff attaches to the anecdotal evidence of customer association of the term “overhead” with Plaintiffs business. As with the Magid Survey, Plaintiffs argument “does not recognize that evidence of public understanding is not an issue of fact in the case of a common word used in accordance with its accepted meaning.” Team Cent. Inc. v. Xerox Corp., 606 F.Supp. 1408, 1413-14 (D.Minn.1985); see also First Nat’l Bank & Trust Co. of Colombia, Mo. v. First Nationwide Bank, No. 8704218-CV-C-9, 1990 WL 64768, at *4 (W.D.Mo. Apr. 9, 1990) (holding that, because the term at issue was not an invented word, the buyer understanding test did not apply and the “only question” was whether the term was “a commonly used and commonly understood term prior to its association with plaintiffs bank”).

In Team Central, the district court rejected the plaintiffs claim that documented instances of public confusion were evidence that the defendant was using the term “ ‘Team Xerox’ as a trademark, i.e., to identify the source of its products.” 606 F.Supp. at 1413. As with the term “team” in Team Central, the Hicklins use the term “overhead” in accordance with its accepted meaning. “ ‘Once a term is proven to be generic, evidence of purported buyer association of the term with a single source will not change the result.’ ” Id. at 1414 (quoting McCarthy, Trademarks and Unfair Competition, § 12:15 (2d Ed. 1984)); see also Steak n Shake, 323 F.Supp.2d at 993 (holding that consumer survey was irrelevant as to whether term was generic and noting that “[a]t most, [the consumer study] is directed at consumer awareness of the term and consumer familiarity with Steak n Shake, which advertises heavily that it is ‘Famous for Steakburgers.’”). The anecdotal evidence of Plaintiffs customers associating the term “overhead” with Plaintiffs business does not alter the generic nature of the term.

Plaintiff argues that “overhead” is descriptive, rather than generic, because “the telephone directories do not contain a listing for ‘overhead’ garage doors.” Resistance at 9. Rather, “[t]he publishers use categories for ‘doors’ and ‘garage doors.’ ” Id. Plaintiff cites no authority for this proposition. In any event, the court finds it is without merit. As previously discussed, the Eighth Circuit Court of Appeals in Schwan’s held that the term “Brick Oven” is generic when used in reference to pizza. Plaintiffs position would appear to counsel the opposite result if, when searching the phone book for restaurants serving brick oven style pizza, one had to look under a “pizza” category rather than a “brick oven pizza” category. The genericness of a term is not synonymous or co-extensive with that term’s stature as a separate category in a telephone directory. The court finds that the term “overhead” may be a generic term regardless of whether that term supports a separate section of the phone book.

For the foregoing reasons, the court holds that “overhead” is a generic term when used in connection with garage doors. As a generic term, Plaintiff cannot establish a protectible interest in the term “overhead.” See Commercial Sav. Bank, 592 N.W.2d at 327 n. 2; Duluth News-Tribune, 84 F.3d at 1096. Therefore, the court shall grant the Motion for Summary Judgment to the extent it seeks dismissal of Plaintiffs claims for common law service mark infringement (Count I) and common law trade name infringement (Count II). The court shall also dismiss Count III of the Second Amended Complaint insofar as it alleges service mark infringement in violation of Lanham Act § 43(a).

3. Likelihood of confusion

In light of the court’s finding that Plaintiff does not have a protectible interest in the term “overhead,” it need not consider the likelihood of confusion.

B. Lanham Act Unfair Competition Claims

Plaintiff alleges in Counts III and IV that the Hicklins have engaged in unfair competition under § 43(a) of the Lanham Act. In Count III, Plaintiff alleges that the Hicklins’ “use of the term ‘overhead’ in the context of their advertising and other representations to consumers and potential consumers ... constitutes unfair competition and/or a false designation of origin.” Second Amended Complaint at ¶ 29. Plaintiff alleges that the Hicklins’ conduct is “likely to deceive and has deceived customers and potential customers into believing that [the Hicklins’] garage door installation and repair services are those of [Plaintiff] and/or are affiliated with [Plaintiff].” Id. at ¶ 30. In Count IV, Plaintiff alleges that the Hicklins have “misrepresented the nature, characteristics, qualities or geographic origin of their services and commercial activities....” Id. at ¶ 35.

1. Passing off

Plaintiffs unfair competition claim alleged in Count III is essentially a claim of passing off. “Passing off,” as its name implies, “occurs where a company sells its goods or services under the pretense that they are the goods or services of another.” DaimlerChrysler AG v. Bloom, 315 F.3d 932, 937 (8th Cir.2003). Plaintiff contends that the Hicklins “deliberately styled their advertising to palm off their services as coming from [Plaintiff].” Resistance at 19. Plaintiff also argues that the Hicklins have misrepresented their business as Overhead Door Company of Cedar Rapids and Iowa City.

a. Legal background

The court’s finding that “overhead” is a generic term does not bar Plaintiffs passing off claim. The term’s generic status merely means that it is “not protected from copying.” Home Builders Ass’n, 226 F.3d at 950. However, if a generic mark “has acquired secondary meaning, § 43(a) relief may be appropriate to require the copier to take reasonable measures to eliminate public confusion as to the source of its competing product or service.” Id.; see also WSM, Inc., 724 F.2d at 1331 n. 5 (“Even a generic mark may be entitled to protection from u