ORDER

JOE HEATON, District Judge.

Plaintiff Trotter Overhead Door, Inc. ("TOD") filed this action against Trotter Doors, LLC and Brenton Wayne Trotter, alleging trademark infringement and other claims under federal and state law. Specifically plaintiff alleges a claim under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), violations of the Anticybersquatting Consumer Protection Act and the Oklahoma Deceptive Trade Practices Act, and unfair competition and trademark infringement under Oklahoma common law. Defendants counterclaimed, seeking the cancellation of plaintiff's federal trademark registration and asserting claims for violation of the Lanham Act (unfair competition/false advertising/false designation of origin) and the Oklahoma Deceptive Trade Practices Act. They later dismissed their counterclaims with prejudice.

Plaintiff has filed a motion to enforce a Release signed by defendants and a motion for partial summary judgment. Defendants also have moved for summary judgment, which is appropriate only "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). "A genuine dispute as to a material fact `exists when the evidence, construed in the light most favorable to the non-moving party, is such that a reasonable jury could return a verdict for the non-moving party.'" Carter v. Pathfinder Energy Services, Inc., 662 F.3d 1134, 1141 (10th Cir. 2011) (quoting Zwygart v. Bd. of Cnty. Comm'rs, 483 F.3d 1086, 1090 (10th Cir.2007)). Having considered the submissions of the parties in light of this standard, the court concludes plaintiff's motion and defendants' motion, with one exception, should be denied.

Background

Gene and Wilma Trotter started a garage door business in the mid-1960's, which was incorporated as Automatic Garage Door, Inc. ("AGD") in 1969. They operated their business under that name or slight variations of it, but included the Trotter name in their ads in various ways. Initially AGD's ads included "Gene Trotter — owner." Beginning in 1979 they included a logo of a trotting horse in front of a garage door with "THE TROTTER FAMILY" overlaid on the horse ("horse logo" or "horse mark"). Ads run in 1983 had, in addition to the horse logo, "TROTTER FAMILY" written across the side and top of the ad.1 Their ad run in the 1984/85 Southwestern Bell Oklahoma City phone book identified the business as "Automatic Garage Door Inc. by the Trotter Family."

In 1983 Jesse Trotter, one of Gene and Wilma's four sons, and his wife, Tina, decided to start their own garage door business in Edmond. With Gene's consent they began operating as Automatic Garage Door of Edmond and incorporated under that name.2 They changed the name to Trotter Overhead Door, Inc. the next year because they were having trouble obtaining credit as a result of AGD's poor credit history.

TOD was the first business entity in the state to use the name "Trotter Overhead Door." Plaintiff asserts that, since 1984, it has operated continuously under that name.3 Plaintiff also claims it was the first company to use "Trotter" as part of its business name in conjunction with garage door sales and services in Oklahoma. Defendants dispute this, asserting that, regardless of the name under which Gene and Wilma Trotter incorporated their business, they used the name "Trotter" and "`everyone knew' Gene and Wilma's overhead garage door business as `Trotter.'" Doc. #89, p. 7, ¶3(c). Defendants contend that "Automatic Garage Door, Inc. has always used the Trotter name in connection with the sale, installation and service of overhead garage doors." Id. at p. 6, ¶3. TOD began to use the horse logo in 1984 and in 1985 began using the slogan "A Family Business Doing Business with Families."4

Substantial good will is associated with the TOD mark,5 which was registered as a federal trademark on September 6, 2011. TOD registered the mark with the Oklahoma Secretary of State on October 20, 2010. TOD maintains a website, trotteroverhead.com, on which internet users can obtain product, service and contact information.

AGD was facing the prospect of bankruptcy in 1987. Plaintiff claims Billy Trotter, one of Gene and Wilma's sons who was managing AGD at that time, approached Jesse and asked if their parents could use the Trotter Overhead Door name in connection with a new garage door business. Jesse testified that he agreed, acting on behalf of TOD, to grant Gene and Wilma an oral licence to use the Trotter Overhead Door name, but imposed certain conditions — the new company had to sell the brands TOD carried, had to purchase its product line through Jesse, and had to obtain his approval for all ads. Defendants deny that a license for the use of the TOD mark was ever requested or granted.

Both plaintiff and Gene and Wilma's companies6 used the business name "Trotter Overhead Door" for approximately the next 20 years. Plaintiff claims it exercised quality control over Gene and Wilma's use of the TOD mark. As noted previously, defendants deny there was a license. They also deny plaintiff maintained quality control over the use of the mark or the services Gene and Wilma provided while operating as "Trotter Overhead Door."

Around 2006 Gene and Wilma's business began to decline and plaintiff asserts that in late 2007 or early 2008 it revoked the oral license, that Jesse told Gene and Wilma that they could no longer use the Trotter Overhead Door name in connection with their business. Defendants dispute this. Brent Trotter testified that the business he purchased from his grandparents was using the name Trotter Overhead Door, though he did acknowledge that the business' legal names were Trotter Automatic Garage Door and Trotter Overhead Garage Door of Oklahoma City. Gene and Wilma then began to advertise as Automatic Garage Door and use that name in their telephone listings. However, in 2008/2009 they placed an ad for "Automatic Garage Door, LLC as Trotter Overhead Door," and telephone book listings continued to exist under both "Automatic Garage Door" and "Trotter Overhead Door" for Gene and Wilma's business. Plaintiff assert those ads were placed without its knowledge or consent. Gene and Wilma's company continued to have financial difficulties.

In February 2009 defendant Brent Trotter, who had worked for TOD for approximately 15 years, formed defendant Trotter Doors LLC. He selected that name "because the `Trotter name ha[s] value in the industry.'" Doc. #89, p. 14, ¶ 29(b). The previous year Brent had approached his grandparents, Gene and Wilma. with the intent, defendants assert, to buy their ongoing garage door business. Plaintiff claims Brent just sought to buy the telephone numbers Gene and Wilma had used in connection with their business. In conjunction with the sale, on March 23, 2009, Gene and Wilma executed a Purchase and Sale Agreement and a Warranty Bill of Sale. The sale agreement stated that it was between Trotter Automatic Garage Door, Inc. and Trotter Doors, LLC and was for the sale of personal property, specifically five telephone numbers. The agreement does not refer to Trotter Overhead Door or the sale of stock, trademarks or assets other than the telephone numbers.

The parties disagree as to the discussion between Jesse and Brent when Brent resigned from TOD in March 2009 and told Jesse he was starting a new business. Jesse claims that Brent told him he had not decided on a name for his new company and that he told Brent not to use a name similar to TOD. Brent denies that Jesse instructed him not to call his business anything like Trotter Overhead Door.

For the first few months TD was in business, it operated as Trotter Overhead Door. Brent then changed the company name to Trotter Doors LLC. As soon as he started the business TD engaged in a print and advertising campaign. Some of the ads contained text and photos substantially similar to those used by TOD, though TD claims the publishers prepared them. Defendants admit there has been substantial confusion among consumers between plaintiff and defendant TD.7

On January 12, 2009, Brent acquired the domain name www.trotterdoors.com. and embedded metatags including the terms "trotter," "trotter overhead," and "trotter overhead door" into the trotterdoors.com. website. TD also purchased approximately 1900 Google keywords so that the TOD website would show up as an online ad when someone used the term "Trotter Overhead Door" in a search engine query. In 2009 and 2010 Brent registered fifteen internet domain names: "trotteroverheaddoor" (with .com, .net, and .org extensions); "trotteroverheaddoors" (with .com, .net, and .org extensions); "jessetrotteroverheaddoor.com;" "jessetrotteroverheaddoors.com;" "trotterohd.com;"8 "trotterdoor.com;" "trotterdoor.net;" "trotterdoor.org;" "trotterdoors. com;" "trotterdoors.net;" and "trotterdoors.org." Brent stated that he initially registered the domain names "in order to protect and preserve the Trotter family surname as well as that of Trotter Automatic Garage Door, Inc. d/b/a `Trotter Overhead Door.'" Doc. #69-6, p. 5. Brent "parked," or did not display any content on most of the names other than "trotterdoor.com," "trotterdoors.com" and for a short period, "trotteroverheaddoor.com." He has transferred nine of the domain names to TOD.9

Discussion

Plaintiff's motion to enforce Release

On January 22, 2013, the parties executed a Release and Settlement Agreement." Doc. #93-1. The court concludes, based in large part on ¶ 11 of the agreement, that defendants did not relinquish their defenses to plaintiff's claims by executing the Release.10 Accordingly, plaintiff's motion to enforce the Release [Doc. #93] will be denied.

Trademark Infringement11

To establish its trademark infringement claim, plaintiff must show that the TOD mark is protectable and that "defendant[s]' use of [an identical or similar] mark is likely to cause confusion among consumers." Donchez v. Coors Brewing Co., 392 F.3d 1211, 1215 (10th Cir. 2004) (internal quotations omitted). Defendants admit that their use of the TD mark has caused confusion among consumers regarding the source and origin of the goods or services sold by TD, but deny that plaintiff's mark is protectable. They contend plaintiff was not the first user of the TOD mark and that, because a "separate competing entity operated by Gene and Wilma Trotter simultaneously used the TOD Mark for twenty-two years," Doc. #74, p. 19, plaintiff abandoned the mark and cannot establish that it has secondary meaning.12

This case essentially hinges on whether plaintiff granted Gene and Wilma a license to use the TOD mark.13 Plaintiff has offered evidence demonstrating that it granted Gene and Wilma a license and exercised reasonable quality control over it, and that its mark has secondary meaning.14 However, plaintiff's proof on these issues, while substantial, is not conclusive. Defendants have offered barely enough evidence to create a justiciable question as to whether plaintiff granted Gene and Wilma a license and exercised adequate control over its licensee, so as to preclude plaintiff from prevailing at the summary judgment stage on its trademark infringement claim.

In addition to asserting that no license was ever sought or granted, defendants make the additional argument that, regardless of whether a license existed, plaintiff's claims fail because Gene and Wilma's company, not plaintiff, was the first user of the TOD mark. However, their evidence as to this defense is insufficient. Even if defendants can prove that no license existed and that Brent purchased more than just phone numbers, there is no evidence in the record that Gene and Wilma used the mark "Trotter Overhead Door" before 1987. Their prior ads did include "Gene Trotter — owner" or, occasionally, "The Trotter Family" banner, but that is not enough to demonstrate that Gene and Wilma were using "their surname `Trotter' as a trademark to identify the business. . . ." Doc. #74, p. 8.

"Not every single word, phrase, design or picture that appears on a label or in an advertisement qualifies as a protectable mark or trade dress." 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 3:3 (4th ed.2004). See id. at § 3.6 ("[T]he primary function of a trademark is to identify and distinguish goods. . . ."). The fact that Automatic Garage Door may have been generally known as the Trotter business does not mean that the company had priority in the use of the Trotter name for purposes of trademark law.15 Wilma and Gene never registered "Trotter" and defendants have not shown that it was even a protectable mark. See generally Donchez, 392 F.3d at 1217 (Because plaintiff, who was suing for trademark infringement, had "never registered the term with the United States Patent and Trademark Office, it [was] his burden to demonstrate that it is protectable under § 43(a) [of the Lanham Act].").

To the extent defendants attempt to prove Gene and Wilma's priority in the TOD mark based on AGD's use of the horse logo, that argument also fails, in part because of its lack of development. Defendants neither discuss how, nor cite any authority demonstrating that, Gene and Wilma's use of The Trotter Family horse logo translates into prior use of the word "Trotter." Defendants simply refer to the trotting horse mark, after making the statement that "[p]laintiff's own Motion makes clear that it was not the first user of the Trotter name in connection with the sale, installation and service of overhead garage doors and their related parts."16 Doc. #89, p. 22. Moreover, as plaintiff argues, defendants' priority theory appears to improperly depend "on viewing the TOD mark not as a whole but as if the only word of interest is `Trotter.'" Doc. #95, p. 6. See generally First Sav. Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645, 653 (10th Cir. 1996) ("While the dominant portion is given greater weight, each mark still must be considered as a whole.").

As a fact dispute, albeit marginal, exists regarding whether plaintiff granted Gene and Wilma Trotter a license to use the TOD and Family Doing Business marks, plaintiff's and defendants' motions will be denied on plaintiff's infringement claims.17

Cybersquatting

Among the elements plaintiff must establish to prevail on its cybersquatting claim is ownership of a valid, protectable trademark. See 15 U.S.C. § 1125(d)(1)(A). The same fact issues discussed in conjunction with plaintiff's infringement claim, preclude summary judgment in plaintiff's favor on its cybersquatting claim.

Plaintiff concedes its cybersquatting claim fails with respect to the trotterdoorandtrim.com domain. As for the remaining domains, defendants are not entitled to summary judgment with respect to the nine domains that Brent offered to transfer to plaintiff. Cybersquatting occurs upon registration coupled with bad faith intent to profit. Id. Defendants offer no authority for their argument that they are absolved from liability because Brent, after registration, offered to transfer the domains voluntarily to plaintiff or that plaintiff refused to accept the transfer until after the lawsuit was filed.

As for the other domains, fact questions exist both as to whether they are confusingly similar to plaintiff's mark and with respect to the intent with which Brent Trotter acted.

Plaintiff's motion with respect to its cybersquatting claim will be denied. Defendants' motion also will be denied as to all but the trotterdoorandtrim.com domain name.

Deceptive Trade Practices18

Plaintiff's success on its claim asserted under the Oklahoma Deceptive Trade Practices Act is largely dependent on its ability to establish its infringement claim. Therefore, summary judgment in either plaintiff's or defendants' favor is precluded by the existence of factual disputes. While plaintiff asserts in its response to defendants' motion that its trademark infringement and deceptive practices claims are not coextensive, Doc. #90, p. 18 n.10, it has not distinguished the factual bases for the two claims sufficiently for the court to grant summary judgment on some, but not all, of the alleged wrongful conduct. Consequently, both plaintiff's and defendants motions on this claim will be denied.19

Conclusion

The court has serious doubts regarding defendants' ability to establish its defenses to plaintiff's claims. Nonetheless, they have managed to create enough factual issues regarding the existence of a license and plaintiff's exercise of quality control over it to preclude partial summary judgment in plaintiff's favor. Accordingly, plaintiff's motion for partial summary judgment [Doc. #66] is DENIED. Defendants' motion for summary judgment [Doc. #74] is DENIED as to all but plaintiff's cybersquatting claim on the trotterdoorandtrim.com domain. Judgment as to that claim will be entered when the case is concluded as to all claims and parties. Plaintiff's motion to enforce settlement agreement [Doc. #93] also is DENIED.

IT IS SO ORDERED.