IP Law Daily, TRADEMARK—N.D. Ill.: Village newspaper's motion to dismiss park district's clock tower trademark lawsuit granted, (Mar 31, 2025)

By Linda Panszczyk, J.D.

The plaintiff park district was vague about its use of the trademarked logo of an iconic local clock tower, and it did not appear to sell anything with that logo.

A local newspaper did not infringe a park district’s purported trademark in a logo featuring an iconic clock tower located in Lansing, Illinois, the federal district court in Chicago has ruled. The court found that all seven likelihood of confusion factors weighed heavily against the park district's complaint about the local newspaper's trademark infringement. According to the court, the park district failed to allege facts that could give rise to a plausible inference of consumer confusion. The defendant newspaper's motion to dismiss was granted (Lan-Oak Park District v. Lansing Journal, LLC, No. 1:24-cv-05565 (N.D. Ill. Mar. 28, 2025)).

Background. The Lan-Oak Park District (Lan-Oak) has trademarked certain logos associated with its parks and programs, including a logo image of the four-faced clock tower that prominently tells time in Park Plaza a park in downtown Lansing, Illinois. The clock tower is a local landmark. According to the court, Lan-Oak does not use the image prominently on its website nor does it sell products with the image either. However, Lan-Oak claims that it uses the image from time to time in marketing materials. To compound the mystery, the court couldn’t find a picture of the logo on the internet, despite plenty of judicial sleuthing. Even the act of sponsoring a competitive hunt by the court clerks, with the promise of a reward for the winner, came up empty.

A local independent newspaper, The Lansing Journal, is also proud of the clock tower. The Lansing Journal uses a drawing of the clock tower on merchandise sold on its website, including t-shirts and coffee mugs. Lan-Oak doesn’t have an online shop, the court pointed out and, at the very least, it doesn’t look like Lan-Oak is selling anything with a picture of its clock-tower logo.

Lan-Oak believes that the newspaper is misappropriating Lan-Oak's clock tower logo. In Lan-Oak’s view, the Lansing Journal’s use of the clock-tower logo “is clearly designed to create consumer confusion.” Lan-Oak asked the Lansing Journal to stop using the clock-tower logo. The Lansing Journal didn’t stop, so the park district filed this lawsuit against the newspaper, bringing four claims under state and federal law. The first claim alleges a violation of the Illinois Trademark Registration and Protection Act. The second and third claims allege false designation of origin and unfair competition under the Lanham Act. The fourth claim alleges a violation of the Illinois Uniform Deceptive Trade Practices Act. The Lansing Journal moved to dismiss the complaint in its entirety.

Likelihood of confusion. Lan-Oak must allege a likelihood of confusion to consumers. The Seventh Circuit uses a seven-factor test to assess the likelihood of confusion. According to the court, oftentimes, evaluating the likelihood of confusion is best left for summary judgment, after the parties have gathered the facts in discovery. The “likelihood of confusion test is a fact-intensive analysis,” so it “ordinarily does not lend itself to a motion to dismiss.” But not always, as the court noted. " Buzzwords and catchphrases count for nothing at the motion-to-dismiss stage. A complaint must contain facts, not legalese or jargons."

Here, the court didn't see much in the complaint. Lan-Oak didn't even address two of the seven factors (the similarity of the products, and the degree of care by consumers). While Lan-Oak addressed the other five factors, the court did not find much merit.

Similarity of the marks. As for the first factor, similarity of the marks, the judge observed that Lan-Oak’s logo is so blurry that a comparison is difficult, noting that "It feels like you’re looking at a clock tower on a foggy day without your glasses." At first glance, Lan-Oak’s logo and the Lansing Journal’s image might look similar, the court noted, but a closer look reveals plenty of dissimilarities. Viewing the images as a whole, the court indicated, it is hard to see how consumers could get confused.

The Lan-Oak complaint gives no reason to think that “what happens in the marketplace” leads to consumer confusion. Lan-Oak does not give concrete examples of how it uses the mark. At best, it offers an oblique reference to advertisements and marketing materials. But the complaint doesn’t allege that the Lansing Journal uses the marks for its promotional materials. Instead, the complaint alleges that the Lansing Journal uses an image of the clock tower to sell merchandise online, which is something that the park district does not do. The complaint doesn’t allege that Lan-Oak sells anything featuring the clock-tower logo. The bottom line is simple. The two images show the same clock tower, from a similar vantage point. But the list of similarities soon ends. Plenty of dissimilarities jump out, and there is no reason to think that anyone in the marketplace would be confused.

Similarity of the products. The second factor is the similarity of the products using the marks. Evaluating that factor is a short exercise, said the court, as the parties aren’t selling any similar products because Lan-Oak isn’t selling any products with the logo. In fact, Lan-Oak does not discuss this factor at all in its response brief.

Area and manner of concurrent use. The third factor is the area and manner of concurrent use. The “area and manner of concurrent use” factor assesses “whether there is a relationship in the use, promotion, distribution, or sales between the goods or the services of the parties.”

According to the court, the parties do operate in a close geographic area. Lan-Oak and the Lansing Journal share the same hometown. At most, Lan-Oak is using its mark for unspecified marketing materials. The Lansing Journal uses the image of the clock tower to sell clothes and cups.

The reader is left to wonder how Lan-Oak uses the mark in the real-world. The complaint alleges that Lan-Oak uses the mark “in marketing, advertising, and promoting various Park District events, programs, and activities to the Lansing community and the general public.” That begs a question: what type of events and programs? Lan-Oak’s website gives lots of examples of the facilities and programs that the park district has to offer. Is it using the clock-tower logo to promote swimming lessons? The fitness center? Dance classes? Something else? This factor might be a wash, but it probably tips in the Lansing Journal’s favor. The parties do operate in the same geographic area, but they do different things. That’s not likely to lead to confusion, according to the court.

The degree of care of consumers. The fourth factor is the degree of care that consumers likely exercise. Lan-Oak does not address this factor, either. The complaint barely mentions consumers, except for a few boilerplate sentences about the likelihood of consumer confusion.

Strength of the mark. The fifth factor, the strength of a trademark, refers to the mark’s distinctiveness, that is its propensity to identify the products or services sold as emanating from a particular source. The complaint gives no reason to think that Lan-Oak’s mark has any heft with consumers. It barely alleges anything about the use of the mark at all. It seems like a stretch to think that consumers strongly associate that picture of the clock tower with anything, except a local landmark, said the court.

Although the complaint alleges that Lan-Oak has “actively used” the mark “for many years," specifics are lacking. A general allegation about longtime use says nothing about the economic and marketing strength of its mark.

Actual confusion. For the sixth factor, actual confusion, the court indicated that Lan-Oak doesn’t say who is confused about what. At the motion-to-dismiss stage, a plaintiff doesn’t have to allege actual confusion. In fact, at the summary-judgment stage, a plaintiff doesn’t have to come forward with evidence of actual confusion. That type of evidence is helpful but not required, the court noted.

Here, the complaint is noticeably quiet when it comes to actual confusion, said the court. The complaint sticks to generalities and stops short of giving any specifics or any examples of consumer confusion. If anyone is confusing Lan-Oak’s clock tower with the Lansing Journal’s clock tower, the complaint never says so, the court indicated.

Defendant's intent. As for this factor, the complaint doesn’t give any reason to think that the Lansing Journal wants the public to think that the t-shirts, sweatshirts, mugs, and water bottles are coming from the park district. Noting that it seems unlikely that the newspaper is trying to capture a price premium by confusing customers about the origin of the T-shirts, a simpler explanation makes a lot more sense. The local newspaper is simply proud of a local landmark and wants to share the pride. If there is some reason to think that the Lansing Journal intended to confuse consumers, the complaint doesn’t reveal what that reason is.

Conclusion. According to the court, having examined all seven likelihood of confusion factors, weigh heavily against the complaint. Lan-Oak has failed to allege facts that could give rise to a plausible inference of consumer confusion. The newspaper's motion to dismiss was granted.

The Case is No. 1:24-cv-05565.

Judge: Seeger, S.

Attorneys: James Kenneth Borcia (Tressler LLP) for Lan-Oak Park District. Andrew H. Schapiro (Quinn Emanuel Urquhart & Sullivan, LLP) for Lansing Journal LLC.

Companies: Lansing Journal LLC

Cases: Trademark IllinoisNews