In the

United States Court of Appeals

For the Seventh Circuit

No. 01-1173

Bliss Salon Day Spa,

Plaintiff-Appellant,

v.

Bliss World LLC,

Defendant-Appellee.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 00 C 2344--Joan Humphrey Lefkow, Judge.

Argued September 7, 2001--Decided October 4, 2001

 

 Before Bauer, Easterbrook, and Manion,

Circuit Judges.

 Easterbrook, Circuit Judge. Both parties

to this suit use the mark Bliss in

connection with beauty salons and beautycare products, such as shampoo. Bliss

Salon is the senior user between the two,

having opened in 1979 its one and only

outlet in Wilmette, a suburb of Chicago.

Bliss World adopted the mark in 1996 when

it opened Bliss Spa in the Soho district

of New York. It has set out to create an

international chain of beauty parlors,

also selling Blissout and Blisslabs products

in retail outlets such as Saks Fifth

Avenue, by catalog, and through a web

site. Bliss World registered its marks in

1997 for use in connection with spas and

beauty-care products, a step that Bliss

Salon neglected; it is uncontested that

Bliss World adopted the mark without

knowledge of Bliss Salon’s prior use.

 In this action under sec.43(a)(1)(A) of

the Lanham Act, 15 U.S.C.

sec.1125(a)(1)(A), Bliss Salon seeks an

injunction that would forbid Bliss World

to open a beauty parlor, or sell any of

its products, within 100 miles of

Chicago’s Loop. The district court denied

Bliss Salon’s motion for a preliminary

injunction, 2000 U.S. Dist. Lexis 18871

(N.D. Ill. Dec. 22, 2000), and on this

appeal Bliss Salon has all but ignored
the deference accorded by an appellate

court to a decision about preliminary

relief. See Maxim’s Ltd. v. Badonsky, 772

F.2d 388, 390 (7th Cir. 1985); Ty, Inc.

v. Jones Group, 237 F.3d 891, 896 (7th

Cir. 2001). Plaintiff sealed its fate by

making an outlandish demand: Milwaukee,

Rockford, Gary, and South Bend all are

part of the 31,416 square miles that lie

within 100 miles of the Loop, yet few

residents of these cities are likely to

know about a one-store operation to the

northwest of Chicago, so there is only

slight risk that goods offered by Bliss

World will be mistaken for the products

of Bliss Salon. (Unless Bliss Salon

itself causes the confusion. For seven

months Bliss Salon printed the url of

Bliss World’s web site on its own price

lists and business cards, and in an

instance of cybersquatting plaintiff

registered the domain name

"blissdayspa.com", the name of

defendant’s flagship outlet, while

omitting the word "salon" that

distinguishes the two firms.) The risk of

confusion between Bliss World and Bliss

Salon is low even near Chicago, because

many other firms in the beauty industry

(at least one in Chicago, perhaps ten

within the 100-mile radius, and a few

with national distribution) use Bliss as

a mark for some of their wares. This may

make it hard to employ Bliss as a

designation of source for any product; it

makes it all but impossible to imagine

that a consumer seeing the mark Bliss

would assume that the product or service

must come from Bliss Salon Day Spa of

Wilmette. And without a likelihood of

confusion about source, there is no claim

under sec.43(a)(1)(A) of the Lanham Act.

 At oral argument plaintiff’s counsel

invited us to cut the radius from 100

miles to 25 (a mere 1,963 square miles),

but this is not the right forum; our task

is to decide whether the district judge

abused her discretion, not to make an in

dependent decision about appropriate

relief. And a smaller radius would do

Bliss Salon no good, at least on this

record. So far as the record reveals, not

a single customer has ever expressed

confusion about source, returned one of

Bliss World’s products to Bliss Salon

seeking a refund, or complained to Bliss

Salon about the high prices in Bliss

World’s catalog. Bliss Salon has not

conducted a survey or offered any other
means by which the district court could

infer a likelihood of confusion in the

future.

 Instead Bliss Salon argues that it is

entitled to relief without the need for

evidence, because the word "bliss" is

"suggestive," and all "suggestive" marks

are protected automatically, without need

to prove secondary meaning or likely

confusion. "Bliss" is not generic, and it

does not describe any attribute of hair

styling or shampoo. Emotions are not

product attributes; if one could achieve

"bliss" by washing one’s hair many

religious leaders and psychoanalysts

would be out of business. Thus the word

must be "suggestive," and a suggestive

mark creates an entitlement to protection

from usurpers, the argument wraps up.

 That is itself a misleading (confused?)

statement of trademark law. Section

43(a)(1)(A) provides relief only when

another person’s use of a mark "is likely

to cause confusion, or to cause mistake,

or to deceive . . . as to the origin,

sponsorship, or approval of his or her

goods, services, or commercial activities

by another person". Proof of likely

confusion about source is a statutory

requirement. Judge Friendly proposed the

continuum of generic, descriptive,

suggestive, arbitrary, and fanciful marks

as a heuristic, a means to guide thought

rather than to replace the statutory

requirements. See Abercrombie & Fitch Co.

v. Hunting World, Inc., 537 F.2d 4, 9-11

(2d Cir. 1976). Suggestive ("Tide"

laundry detergent), arbitrary ("Apple"

computers), and fanciful ("Exxon"

gasoline) marks collectively are

distinctive in the sense that secondary

meaning is likely to develop, as a result

of which any duplicate use of the name is

likely to breed confusion about the

product’s source. Generic marks, on the

other hand, designate the products

themselves rather than any particular

maker, and descriptive marks might (but

usually won’t) acquire distinctiveness.

Wal-Mart Stores, Inc. v. Samara Brothers,

Inc., 529 U.S. 205, 212-13 (2000),

approved this general approach (and

applied it to trade dress) while

insisting that marks actually be

distinctive if they were to qualify for

the "inherently distinctive" category.

 A court cannot choose between the
"descriptive" and "suggestive" categories

on the basis of a dictionary; Judge

Friendly’s continuum is functional, and

placement must be functional too. This is

why we held in Platinum Home Mortgage

Corp. v. Platinum Financial Group, 149

F.3d 722, 730 (7th Cir. 1998), that the

word "platinum" is descriptive rather

than suggestive in the financial-services

industry. Platinum, like the phrase

"gilt-edged," suggests high quality or

elegance, and issuers of credit cards or

mortgage loans may choose it because of

the association with the upper crust; in

this linguistic sense the word is

suggestive. But because so many firms use

the word (and the color) for financial

products, it cannot be inherently

distinctive; quite the contrary, it is no

more distinctive than a "gold card" or

"born with a silver spoon in his mouth."

Functionally, therefore, the word had to

go in the descriptive category. "Tide"

detergent is linguistically suggestive

(it suggests the cleansing action of

water), but this mark is and remains

legally suggestive only because it has

retained distinctiveness as a product

identifier. Bliss marks are a glut on the

market in hair styling and beauty care.

They are not distinctive, so the word

does not belong in the "suggestive"

cubbyhole. If Bliss Salon wants to get

anywhere in this litigation, it will have

to prove that its mark has acquired

secondary meaning and that Bliss World’s

use of the same mark is likely to cause

confusion about source in or near

Wilmette. See Sunmark, Inc. v. Ocean

Spray Cranberries, Inc., 64 F.3d 1055

(7th Cir. 1995); cf. Zaz Designs v

L’Oral, S.A., 979 F.2d 499 (7th Cir.

1992).

Affirmed