THOMAS E. JOHNSON, District Judge.
Pending is the motion for judgment on the pleadings and motion to strike improper affirmative defenses [ECF 15] filed by The Webb Law Firm, P.C., the Defendant and counterclaim Plaintiff (referred to at times herein as "Defendant" or "the Pennsylvania law firm").
The Webb Law Firm, P.L.L.C., the Plaintiff and the counterclaim Defendant in this case, (referred to at times as "Plaintiff" or "the West Virginia law firm"), filed its response in opposition (ECF 18) to Defendant's motion. Defendant filed a reply (ECF 19). For the reasons set forth in this Opinion, the Court
Also pending is Plaintiff's motion for judgment on the pleadings [ECF 28]. On May 20, 2014, however, Plaintiff filed its notice withdrawing this motion (ECF 42). Accordingly, the Court
The following facts are alleged by Plaintiff in its Complaint and its exhibits and are assumed, as they must be at this juncture, to be true.
Plaintiff, a limited liability company, is a West Virginia law firm principally located in Charleston, West Virginia. (ECF 1 at 2.) The firm was started by a Charleston area lawyer, Charles "Rusty" Webb, in early 2006. (Id. at 4.) Plaintiff's law practice is limited to the areas of personal injury and family law in southern West Virginia. (Id.) Prior to the formation of his own firm, Mr. Webb had practiced law in a two-man law firm, Giatras & Webb. (Id. at 3.)
Defendant is a corporate intellectual property law firm located in Pittsburgh, Pennsylvania. (Id. at 1.) Defendant registered the service marks "The Webb Law Firm" and "Webblaw.com" with the United States Patent and Trademark Office in the late 1990s. (ECF 1-2 at 3, 4.) Defendant maintains that these marks are incontestable under federal trademark law.
This dispute arises from Defendant's claims that Plaintiff's use of "The Webb Law Firm" to market Plaintiff's legal services infringes on Defendant's service mark registrations in violation of various provisions of the Lanham Act, 15 U.S.C. § 1111, et seq. and West Virginia state law.
By letter dated July 17, 2013, Defendant's counsel advised Mr. Rusty Webb that Defendant was the owner of trademark registrations "The Webb Law Firm" and "Webblaw.com" for use in the category of "legal services."
(Id. at 1-2 .) In closing, Defendant's counsel requested that Mr. Webb respond within fifteen days or Defendant "will be forced to consider further legal recourse to protect our intellectual property." (Id. at 2.)
Less than three weeks later, on August 5, 2013, Plaintiff filed this lawsuit seeking a declaratory judgment that Plaintiff's use of "The Webb Law Firm, P.L.L.C." does not violate the Lanham Act and does not constitute trademark infringement or unfair competition. (ECF 1 at 12.) Plaintiff also seeks a declaration that "The Webb Law Firm, P.L.L.C." is not a reproduction, copy, counterfeit, or colorable imitation of Defendant's mark under the Lanham Act. Id. Plaintiff further requests an injunction restraining Defendant from "further threats and harassment" and attorneys' fees. Id.
Defendant now moves for judgment on the pleadings under Federal Rule of Civil Procedure 12(c). (ECF 15.)
Rule 12(c) of the Federal Rules of Civil Procedure succinctly provides: "After the pleadings are closed—but early enough not to delay trial—a party may move for judgment on the pleadings." Williams v. Basic Contracting Servs., Inc., Civil Action No. 5:09-CV-00049, 2009 WL 3756943 (S.D. W. Va. Nov. 9, 2009) (citing Burbach Broad. Co. v. Elkins Radio Corp., 278 F.3d 401, 405-06 (4th Cir. 2002). When considering a motion for judgment on the pleadings under Rule 12(c), the Court applies the same standard as when considering a motion to dismiss pursuant to Rule 12(b)(6). Id. (citing Burbach., 278 F.3d at 405-06 (4th Cir. 2002)). A court must accept all well-pleaded allegations in the plaintiff's complaint as true and draw all reasonable factual inferences from those facts in the plaintiff's favor. Edwards v. City of Goldsboro, 178 F.3d 231, 244 (4th Cir. 1999).
Under Federal Rule of Civil Procedure 8(a)(2), a pleading must contain a "short and plain statement of the claim showing that the pleader is entitled to relief." "To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, `to state a claim to relief that is plausible on its face.'" Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Plausibility requires that the factual allegations "be enough to raise a right to relief above the speculative level . . . on the assumption that all the allegations in the complaint are true." Twombly, 550 U.S. at 555. A court decides whether this standard is met by separating the legal conclusions from the factual allegations, assuming the truth of only the factual allegations, and then determining whether those allegations allow the court to reasonably infer that "the defendant is liable for the misconduct alleged." Id.
If evidence outside the pleadings is tendered to and accepted by the Court, the motion for judgment on the pleadings is converted into a motion for summary judgment under Rule 56. Id. (citing A.S. Abell Co. v. Baltimore Typographical Union, 338 F.2d 190, 193 (4th Cir.1964); Fed. R. Civ. P. 12(d). The motion is not converted into a summary judgment motion if the Court considers documents and facts of which it may take judicial notice. Id. (citing R.G. Fin. Corp. v. Vergara-Nunez, 446 F.3d 178, 182 (1st Cir. 2006); Armbruster Prods. v. Wilson, No. 93-2427, 1994 U.S. App. LEXIS 24796, at *5, 1994 WL 489983 (4th Cir. Sept. 12, 1994) (unpublished)). The Court may take judicial notice of certain facts which are not subject to reasonable dispute, Fed. R. Evid. 201, and of the existence and contents of various types of official documents and records. Id. (citing Lovelace v. Software Spectrum, 78 F.3d 1015, 1018 (5th Cir.1996) (documents filed with government agencies); Anderson v. FDIC, 918 F.2d 1139, 1141 n. 1 (4th Cir. 1990) (records of bankruptcy court); Bratcher v. Pharm. Prod. Dev., Inc., 545 F.Supp.2d 533, 538 n.3 (W.D.N.C. 2008) (EEOC complaints and right-to-sue notices)). A court may also consider documents attached to the complaint, see Fed. R. Civ. P. 10(c), as well as those attached to the motion to dismiss, so long as they are integral to the complaint and authentic. Philips v. Pitt Cnty. Mem'l Hosp., 572 F.3d 176, 180 (4th Cir. 2009) (citing Blankenship v. Manchin, 471 F.3d 523, 526 n.1 (4th Cir. 2006)).
The purpose of a Rule 12(b)(6) motion is to test the sufficiency of a complaint; "importantly, [a Rule 12(b)(6) motion] does not resolve contests surrounding the facts, the merits of a claim, or the applicability of defenses." Edwards, 178 F.3d at 243-44 (citing Republican Party v. Martin, 980 F.2d 943, 952 (4th Cir. 1992)).
Applying these principles to this case, it is plain that, based solely on the matters contained in the Complaint and its exhibits, Defendant's motion lacks merit.
Defendant's first challenge is two-fold. Defendant effectively argues that, even if Plaintiff's allegations were true, declaratory relief is unavailable as a matter of law because there was no imminent threat of litigation at the time Plaintiff filed its Complaint. This claim challenges the Court's subject matter jurisdiction. As such, this challenge is more appropriately considered under Federal Rule of Civil Procedure 12(b)(1). Defendant also appears to challenge the sufficiency of the factual allegations of the Complaint under federal pleading standards. This challenge is more appropriately analyzed under Rule 12(b)(6) standards. The Court will address these separate but related arguments, beginning, as it must, with the subject matter jurisdiction contention.
When a court considers its subject-matter jurisdiction, the burden of proof is on the plaintiff. Adams v. Bain, 697 F.2d 1213, 1219 (4th Cir. 1982). "In determining whether jurisdiction exists, the district court is to regard the pleadings' allegations as mere evidence on the issue, and may consider evidence outside the pleadings without converting the proceeding to one for summary judgment." Richmond, Fredricksburg & Potomac R.R. Co. v. United States, 945 F.2d 765, 768 (4th Cir. 1991). "The district court should apply the standard applicable to a motion for summary judgment, under which the nonmoving party must set forth specific facts beyond the pleadings to show that a genuine issue of material fact exists." Id. (citations omitted). "The moving party should prevail only if the material jurisdictional facts are not in dispute and the moving party is entitled to prevail as a matter of law." Id.
Plaintiff's Complaint seeks a declaratory judgment under 28 U.S.C. §§ 2201 and 2202. Section 2201(a) provides in pertinent part:
28 U.S.C.A. § 2201 (2010). Section 2202 provides: "Further necessary or proper relief based on a declaratory judgment or decree may be granted, after reasonable notice and hearing, against any adverse party whose rights have been determined by such judgment."
The Declaratory Judgment Act does not confer jurisdiction upon federal courts. Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667, 671 (1950). Thus, the power to issue declaratory judgments must lie in some independent basis of jurisdiction. Here, Plaintiff invokes this Court's federal question jurisdiction under 28 U.S.C. § 1331.
In Columbia Gas Transmission Corp. v. Drain, 237 F.3d 366 (4th Cir. 2001), the Fourth Circuit explained:
Id. at 370. See also Severe Records, LLC v. Rich, 658 F.3d 571, 581-81 (6th Cir. 2011) (holding that the district court had subject matter jurisdiction over declaratory judgment action where the claim threatened to be brought by the defendant arose under federal law); Samuel C. Johnson 1988 Trust v. Bayfield County, 520 F.3d 822, 828 (7th Cir. 2008) (stating that the issue was whether the declaratory judgment defendant's presumed complaint against the declaratory judgment plaintiff on its face would include an action arising under federal law); Household Bank v. JFS Group, 320 F.3d 1249, 1257 (11th Cir. 2003) (holding that federal subject-matter jurisdiction existed in a declaratory judgment action in which a defendant could have brought a federal or state claim in a coercive action); TTEA v. Ysleta Del Sur Pueblo, 181 F.3d 676, 681 (5th Cir. 1999) (acknowledging that a declaratory judgment plaintiff does not have to show that it could state a federal claim independent of the declaratory judgment statute, but rather may show that would be federal jurisdiction over a claim made against the plaintiff); Standard Ins. Co. v. Saklad, 127 F.3d 1179, 1181 (9th Cir. 1997) ("A person may seek declaratory relief in federal court if the one against whom he brings his action could have asserted his own rights there"); Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 964 (10th Cir. 1996) ("[F]ederal question jurisdiction exists in a declaratory judgment action if the potential suit by the declaratory judgment defendant would arise under federal law); W. 14th St. Commercial Corp. v. 5 W. 14th Owners Corp., 815 F.2d 188, 194 (2d Cir. 1987) ("A] court must look beyond the declaratory judgment allegations and determine whether a substantial federal question arises either from the defendant's threatened action, or from the complaint when viewed as a request for coercive relief apart from the defendant's anticipated suit") (citations omitted)).
The parties appear to be in agreement that Defendant could have originally filed suit in a federal court alleging violations under the Lanham Act. In fact, after Plaintiff filed its declaratory judgment Complaint, Defendant filed five counterclaims, four of which arise under the Lanham Act. (ECF 7 at 19-27.) Plaintiff has not challenged the plausibility of these asserted claims. Accordingly, the Court is satisfied that it has subject matter jurisdiction over this case insofar as it is based on claims arising under federal law that Defendant could have independently filed (and that Defendant has actually since filed in this case as counterclaims).
Defendant also appears to argue that, assuming the facts alleged by Plaintiff are true, there was no imminent threat of litigation at the time Plaintiff filed its Complaint as a matter of law and, thus, dismissal of the Complaint is appropriate on this basis alone.
This specific challenge raises a ripeness question. In declaratory judgment actions, the dispute before the court must be "`definite and concrete, touching the legal relations of parties having adverse legal interests'" MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (quoting Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 240-41 (1937)). The dispute must be "`real and substantial' and `admi[t] of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.'" Id. "Basically, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment." Maryland Cas. Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273 (1941).
To determine whether a case or controversy exists in a declaratory judgment action involving a trademark dispute, courts apply a two-pronged test. Indium Corp. of America v. Semi-Alloys, Inc., 781 F.2d 879, 883 (Fed. Cir. 1985). First, the declaratory plaintiff must have a real and reasonable apprehension of litigation. Second, the declaratory plaintiff must have engaged in a course of conduct which brought it into adversarial conflict with the declaratory defendant. Windsurfing International Inc. v. AMF Inc., 828 F.2d 755, 757 (Fed. Cir. 1987) (citations omitted). The controversy must have existed at the time the pleading was filed. Id.
Rather incredibly, Defendant argues that Plaintiff has not established "that any imminent threat of litigation existed at the time that the Complaint was filed." (ECF 16 at 5.) Defendant characterizes its correspondence as only seeking an "amicable resolution". (Id.) Defendant denies that its cease-and-desist-letter threatened litigation.
The Court is usually not pressed by litigants' arguments to resort to dictionary definitions of commonly understood words. Defendant's argument necessitates this exercise. "Threaten" means "to utter threats against: promise punishment, reprisal, or other distress to", "to charge under pain of punishment: warn", "to promise as a threat: hold out by way of menace or warning", "to give signs of the approach of (something evil or unpleasant)"; "indicate as impending: portend"; "to hand over as a threat: menace"; "to announce as intended or possible". Webster's Third New International Dictionary 2382 (unabridged). A cease-and-desist letter is
Black's Law Dictionary 252 (Ninth Ed.)
The Court has little difficulty finding that Defendant's artfully worded cease-and-desist letter threatened that Defendant would sue Plaintiff unless Plaintiff ceased using the name "The Webb Law Firm". In its July 17, 2013, correspondence to Rusty Webb, Defendant explicitly advised Mr. Webb that he was infringing on Defendant's trademark registration of the name "The Webb Law Firm" and that such use was "in violation of the Lanham Act." (ECF 1-2 at 1.) The letter references prior communications between Defendant and Mr. Webb concerning this controversy. These prior communications evidence watchful territorial patrolling by Defendant of Mr. Webb's use of the Webb Law Firm name over some period of time. Although Defendant stated that it was its intention to "achieve a reasonable and amicable resolution . . . without the need to resort to formal legal proceedings", any such resolution, in Defendant's view, required complete capitulation by Plaintiff and to "cease and desist" its use of the name "The Webb Law Firm." (Id.) Defendant asserts that it would give Mr. Webb "a reasonable period of time to transition." (Id. at 2.) But Defendant closes by asking that Mr. Webb respond to the letter within fifteen days or Defendant "will be forced to consider further legal recourse to protect our intellectual property." (Id.) In light of these "or else" types of assertions, it is plain under these circumstances that Plaintiff was faced with a present and a real danger that it would be sued under the Lanham Act unless it ceased using the name "The Webb Law Firm" and that the challenge to its position was actual and genuine and not merely possible or remote.
Accordingly, the Court finds that Plaintiff's Complaint alleges circumstances that show that Mr. Rusty Webb had a real and reasonable apprehension of litigation upon his receipt of Defendant's cease-and-desist letter and that there is a substantial controversy between parties having adverse legal interests of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. The Court further finds that Plaintiff engaged in a course of conduct which brought it into adversarial conflict with Defendant.
The Court also rejects Defendant's claim that the Complaint lacks factual support for Plaintiff's assertions that its use of the name "The Webb Law Firm" is not likely to cause confusion and is a not counterfeit usage. Defendant claims that Plaintiff offers only conclusory paragraphs in Counts I and II of its Complaint that the use of "The Webb Law Firm" is not likely to cause confusion or mistake and is not a counterfeit usage. (ECF 16 at 6.)
The fallacy of this assertion is demonstrated by reference to other allegations in the Complaint, which the Court, at least at this juncture, must assume true. For example, Plaintiff alleges that: his law firm is limited to the practice areas of personal injury and family law and does not offer any intellectual property legal services; his practice is geographically limited to southern West Virginia; Defendant's firm is based in Pittsburgh, Pennsylvania and exclusively practices intellectual property law; Mr. Rusty Webb is a native West Virginian and has practiced law in southern West Virginia for twenty-six years; Mr. Webb adopted "The Webb Law Firm, P.L.L.C." as the official name of his law firm in February 2006; Mr. Webb's law firm has a distinctive logo that incorporates his family crest; Plaintiff's law firm's marketing is not extensive and consists of two websites, "crwlaw.com" and "rustywebb.com", a billboard, and a local television contract, all of which market exclusively for personal injury and family law in southern West Virginia; all of the lawyers in Mr. Webb's firm bear the surname "Webb" whereas no living member of Defendant's firm have this last name; that the factual basis for Defendant's cease-and-desist demands arise from a single telephone call from an individual mistaking one of the parties' law firms for the other; and Plaintiff has complied with Defendant's request that Plaintiff place a disclaimer on his rustywebb.com website. (ECF 1 at 1-10.)
These detailed allegations are not conclusory, but rather are assertions of fact that mount a case that Plaintiff's use of "The Webb Law Firm" is not being used by Plaintiff in a manner likely to confuse consumers, an element of proof in infringement and false designation claims. Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005) (stating that claims under 15 U.S.C. §§ 1114(1) and 1125(a)(1)(A) require the trademark holder to prove: (1) that it possesses a mark; (2) that the opposing party used the mark; (3) that the opposing party's use of the mark occurred in commerce; (4) that the opposing party used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the opposing party used the mark in a manner likely to confuse consumers.) Accordingly, Defendant's argument that Plaintiff did not provide a factual basis to meet federal pleading standards is meritless.
Defendant argues that Plaintiff has admitted all facts necessary to a finding of liability for the counterclaims asserted by Defendant. The Court disagrees.
Defendant has alleged five counterclaims against Plaintiff: (1) service mark infringement in violation of 15 U.S.C. § 1114; (2) service mark counterfeiting in violation of 15 U.S.C. § 1114;
(3) false designation of origin in violation of 15 U.S.C. § 1125(a); (4) service mark dilution in violation of 15 U.S.C. § 1125(a); and (5) common law service mark infringement. (ECF 7 at 19-28.)
Trademark infringement and false designation of origin claims share the same elements of proof. Lamparello v. Falwell, 420 F.3d 309, 313 (4th Cir. 2005). To prevail under either cause of action, the trademark holder must prove:
Id.
The Fourth Circuit has identified nine factors to guide a court's likelihood of confusion analysis: (1) the strength or distinctiveness of the plaintiff's mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant's intent; (7) actual confusion;
(8) the quality of the defendant's product; and (9) the sophistication of the consuming public. George & Co. LLC v. Imagination Entm't Ltd., 575 F.3d 383, 393 (4th Cir. 2009) (citations omitted). Not all of these factors are of equal importance, nor are they always relevant in any given case. Id. (citations omitted). Evidence of actual confusion is often paramount in the likelihood of confusion analysis. Id. (citations omitted).
Defendant correctly states that Plaintiff admits it has used "The Webb Law Firm", and that Plaintiff also admits that it has used the mark in connection with its legal services. It is also true that Plaintiff alleges in its Complaint that, upon information and belief, Defendant's demands are based on "one errant phone call from Beckley, West Virginia." (ECF 1 at 10.) These assertions do not, however, amount to a concession of liability by Plaintiff on any of Defendant's counterclaims. The core dispute in this case is whether Plaintiff's use of "The Webb Law Firm" to market its legal services constitutes use of the mark in a manner likely to confuse consumers. Plaintiff has plainly not conceded this important fact.
Defendant places undue importance on the apparently uncontested fact that there is evidence that one consumer was actually confused about the legal services offered by the parties. Such evidence, however, cuts both ways. On the one hand, it is evidence of actual confusion. On the other hand, a sole instance of confusion of a single consumer could be said to be persuasive evidence of the lack of any meaningful confusion by the general public. As a general matter, isolated and negligible instances of actual confusion are generally insufficient to support a finding of actual confusion. Duluth News-Tribune, a Div. of Nw. Publ'ns, Inc. v. Mesabi Pub. Co., 84 F.3d 1093, 1098-99 (8th Cir. 1996) ("Although this [one] incident provides some support for plaintiff's claim of likelihood of confusion, even several isolated incidents of actual confusion that occur initially upon the creation of a potentially confusing mark are insufficient to establish a genuine issue of material fact as to the likelihood of confusion.") (citing Astra Pharmaceutical Prod. Inc. v. Beckman Instruments Inc., 718 F.2d 1201, 1207-08 (1st Cir. 1983) (holding that temporary confusion regarding the association of salesmen from the plaintiff's company with the defendant was insufficient to raise a genuine issue of material fact); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231 (3rd Cir. 1978) (holding that nineteen misdirected letters in four years were insufficient to establish likelihood of confusion). In any event, it is not the Court's role in resolving a motion for judgment on the pleadings to resolve this factual contest. Rather, the Court's job at this juncture is to evaluate the sufficiency of the Complaint's allegations. Inclusion in the Complaint of an allegation that one consumer was actually confused about the parties' law firms does not undermine the legal sufficiency of the Complaint.
For all these reasons, the Court rejects Defendant's contention that Plaintiff has admitted all elements of Defendant's claims.
Defendant argues that Plaintiff has conceded that the mark "The Webb Law Firm" is famous, and that it is undisputed that Defendant owns a registered and uncontestable trademark to "The Webb Law Firm", and that there is evidence of actual confusion by the public. Because of this, Defendant contends that it is entitled to judgment on the pleadings with respect to its service mark claim alleged in Counterclaim IV. The Court disagrees.
Section 1125(a) of Title 15 of the United States Code provides in pertinent part:
15 U.S.C. § 1125(a)(1).
Section 1125(c)(1) states:
To state a prima facie dilution claim under Section 1125, the plaintiff must show the following: (1) that the plaintiff owns a famous mark that is distinctive; (2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark; (3) that a similarity between the defendant's mark and the famous mark gives rise to an association between the marks; and (4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark. Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 168 (4th Cir. 2012) (citing Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 264-65 (4th Cir. 2007)). As defined by 15 U.S.C. § 1125(c)(2)(A), a mark is "famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner." "Dilution by blurring" is the "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." 15 U.S.C. § 1125(c)(2)(B).
Defendant correctly states that in its Complaint Plaintiff alleges that the mark "The Webb Law Firm" and Plaintiff's website "rustywebb.com" are "famous marks and logos." (ECF 1 at 7.) The Court disagrees, however, with Defendant's construction that Plaintiff is thereby admitting that Defendant's registered trademark, "The Webb Law Firm", is a famous mark, as that term is defined under 15 U.S.C. § 1125(c)(2)(A). Defendant's characterization of Plaintiff's allegation takes the allegation out of context and, as indicated by Plaintiff's response to Defendant's motion, is not intended to be a concession of the fame of Defendant's mark. In any event, this is an issue better left to a fair contest on the merits.
Defendant contends that it is uncontested that Plaintiff has been willfully infringing on Defendant's trademark since at least July 17, 2013, the date of Defendant's cease-and-desist letter to Rusty Webb. Thus, Defendant claims it is entitled to judgment on the pleadings with respect to the counterfeit claim asserted in Counterclaim II. Once again, and for many of the same reasons stated above, Defendant's contention is unavailing.
Counterclaim II alleges service mark counterfeiting in violation of 15 U.S.C. §§ 1114, 1117, and 1118. Section 1114(a) provides in pertinent part:
The Lanham Act defines a counterfeit mark as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." 15 U.S.C. § 1127 (2012). Under 15 U.S.C. § 1114(1), the test for trademark infringement is whether there is a likelihood of confusion of the counterfeit with the genuine goods. Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987).
Thus, once again, the fact that "The Webb Law Firm" is a registered and uncontestable service mark owned by Defendant and the fact that Plaintiff uses "The Webb Law Firm" to market its legal services do not, on their own, make Plaintiff liable under the Lanham Act. Rather, as with the infringement, false designation, and dilution claims, the core inquiry is whether Plaintiff's use of "The Webb Law Firm" to market its legal services constitutes use of the mark in a manner likely to confuse consumers. Where Plaintiff's Complaint plausibly asserts facts to show that its use of "The Webb Law Firm" is not likely to confuse consumers, Defendant is not entitled to judgment on the pleadings on the counterfeit claim.
Finally, Defendant contends that Rusty Webb's surname is "irrelevant" to the Court's analysis. Defendant argues that because Defendant's registration of "The Webb Law Firm" has been afforded "incontestable" status, this status forecloses any challenge that "The Webb Law Firm" is merely a descriptive mark and undeserving of protection. In support of that contention, Defendant cites Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985).
Although its argument is not the model of clarity, it appears Defendant confuses the issue of the validity of its incontestable service mark with the separate question of whether a court in an infringement suit may consider the descriptive nature of the incontestable mark when determining whether registrant has proved that a likelihood of consumer confusion exists.
Defendant is correct that the incontestable status of its service mark means that Plaintiff cannot claim that the mark is merely descriptive and, therefore, invalid and undeserving of any protection. Indeed, a trademark's incontestability provides a strong presumption in favor of the mark's protectibility and validity. See 15 U.S.C. § 1115(b); Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 935 (4th Cir. 1995). Although not dispositive as to likelihood of confusion, a mark's incontestable status entitles the mark to substantial protection. Id. (citing Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir. 1986). The incontestable status also is conclusive evidence of Defendant's right to use the mark in commerce as established in 15 U.S.C. § 1115(b).
Defendant, however, is incorrect in asserting that Rusty Webb's surname is "irrelevant" to the Court's evaluation in this infringement action of whether Plaintiff's use of "The Webb Law Firm" was likely to cause confusion. Stated differently, incontestability alone does not prove that a likelihood of confusion exists between two marks. This is true because a registrant of an incontestable mark in an infringement action must still establish that confusion is likely. As noted above, one of the factors a court considers in its likelihood of confusion analysis is the strength of the mark. George & Co. LLC v. Imagination Entm't Ltd., 575 F.3d 383, 393 (4th Cir. 2009). The strength of a mark is the degree to which a consumer in the relevant population, upon encountering the mark, would associate the mark with a unique source. CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 269 (4th Cir. 2006). Thus, if the registered mark is weak, the purchasing public will not be likely to be confused by the use of a similar mark used in connection with other goods or services. A failure in proof that there was a likelihood of confusion by Plaintiff's use of Defendant's mark would mean that Plaintiff is not liable on Defendant's infringement claims.
The Fourth Circuit explored these principles in Petro Stopping Centers, L.P. v. James River Petroleum, Inc., 130 F.3d 88, 92 (4th Cir. 1997). There, the defendant-registrant (Petro Stopping) argued that the district court erred in finding that, because the "PETRO" mark was descriptive and weak, there was no likelihood of confusion. Petro Stopping argued that because eight of its PETRO marks were incontestable, the district court was legally precluded from reaching its conclusion. Id. Petro Stopping, like the Defendant here, cited Park `N Fly, Inc. in support of its position.
The Fourth Circuit soundly rejected Petro Stopping's argument. The court stated:
130 F.3d at 92. The Fourth Circuit then noted other circuit precedent in accord with this rule. 130 F.3d at 91 (citing Lone Star Steakhouse & Saloon, Inc., 43 F.3d at 930 (stating that incontestability affects the validity of the trademark but does not establish the likelihood of confusion necessary to warrant protection from infringement; likelihood of consumer confusion remains an independent requirement for trademark infringement; courts are free to address whether an incontestable trademark is descriptive or suggestive in determining whether the likelihood of consumer confusion exists in this case) and Shakespeare Co. v. Silstar Corp. of America, Inc., 110 F.3d 234, 238-40 (4th Cir. 1997) (stating that although a district court cannot cancel an incontestable trademark on grounds of functionality or descriptiveness, it can and should consider those grounds when determining whether likelihood of confusion has been established)).
As with the registrant-defendant in Petro Stopping Centers, L.P., Defendant's argument that the incontestable status of its service mark means that Rusty Webb's surname is "irrelevant" to the issues before the Court is erroneous. The Court thus rejects as baseless Defendant's request for judgment on the pleadings under this theory.
Defendant moves to strike certain affirmative defenses asserted in Plaintiff's answer (ECF 12) to Defendant's counterclaims. (ECF 16 at 15-17.) Defendant argues that the asserted defenses "incorporate concepts of negligence" and these defenses are irrelevant because the claims asserted impose strict liability.
Plaintiff does not oppose the motion. Accordingly, the Court
For the reasons set forth above, the Court
The Court
