## Facts

- Mil-Mar Shoe Company, Inc., a Wisconsin retailer, operated shoe stores in the Greater Milwaukee area under the names “Warehouse Shoes” and “Super Warehouse Shoes” and advertised heavily under those names.
- Mil-Mar registered “Warehouse Shoes” and “Super Warehouse Shoes” with the Wisconsin Secretary of State and alleged the names were well-known locally.
- Shonac Corporation, an Ohio retailer, operated stores nationwide under the name “DSW Shoe Warehouse.”
- Shonac held a federal registration for “DSW Shoe Warehouse,” but disclaimed exclusive rights in the words “Shoe Warehouse” standing alone.
- Mil-Mar sued under Wisconsin common-law trade name infringement, Wis. Stat. § 132.033, and unfair competition, seeking to stop Shonac from using “DSW Shoe Warehouse” (or similar names) in the Milwaukee area.
- After removal to federal court based on diversity jurisdiction, the district court entered a preliminary injunction barring Shonac from using “DSW Shoe Warehouse,” “Shoe Warehouse,” or any confusingly similar name in the Greater Milwaukee area.
- Shonac appealed, arguing that “Warehouse Shoes” was generic and therefore unprotectable.

## Issues

1. Whether “Warehouse Shoes” (and “Shoe Warehouse”) is generic when used in connection with retail shoe stores, making it ineligible for trademark or trade-name protection.
2. Whether Mil-Mar showed a likelihood of success on the merits sufficient to support preliminary injunctive relief.

## Decision

- The Seventh Circuit reversed the preliminary injunction.
- The court held that “Warehouse Shoes” and “Shoe Warehouse” are generic for a category of retail shoe store (a warehouse-style, discount, high-volume shoe outlet).
- Because generic terms are not protectable as trademarks or trade names, Mil-Mar could not show a likelihood of success on the merits.
- Given the dispositive genericness ruling, the court found preliminary relief improper without conducting an extended likelihood-of-confusion analysis.

## Legal Principles

- Generic terms name a class or type of goods or services and cannot function as trademarks; they are ineligible for protection and cannot be appropriated to exclude competitors.
- Genericness turns on how relevant consumers understand the term in the marketplace, not solely on a narrow or primary dictionary definition.
- Secondary meaning cannot transform a generic term into a protectable mark, even if the term is strongly associated with one business in a local market.
- A preliminary injunction requires, at minimum, a showing of likelihood of success on the merits; where the asserted mark is generic, that showing fails.
- A federal registration disclaimer of an exclusive right in a wording component is consistent with the principle that generic components cannot be monopolized, though it is not alone dispositive.

## Conclusion

The Seventh Circuit concluded that “Warehouse Shoes” is generic for warehouse-style shoe retailers and therefore unprotectable, making Mil-Mar unlikely to succeed on its infringement and unfair-competition theories and requiring reversal of the preliminary injunction barring Shonac’s use of “DSW Shoe Warehouse” in the Milwaukee area.


Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153 (7th Cir. 1996)