David Lilenfeld Comments on Order in Trademark Dispute
Below is Judge Pannell's Order on Motion for Summary Judgment in HEALTHIER CHOICE FLOORING, LLC v. CCA GLOBAL PARTNERS, INC., Northern District of Georgia, Case No. 1:11-CV-2504-CAP. The seven likelihood of confusion factors are analyzed. There is also a rare discussion of trademark dilution under Georgia state law (O.C.G.A. § 10-1-451(b)). Finally, according to David Lilenfeld, the trade dress discussion is instructive.
ORDER
This matter is before the court on Healthier Choice Flooring, LLC’s
(“HCF”) motion to exclude expert testimony of Donald A. Irwin [Doc.
No. 216], HCF’s motion for leave to file under Federal Rules of Civil
Procedure 15(a)(2) and 16(b)(4) to amend the amended complaint and remove
certain counts [Doc. No. 272], HCF’s motion for partial summary judgment
[Doc. No. 278], CCA Global Partners, Inc.’s (“CCA”) motion for summary
judgment [Doc. No. 279], DCO, Inc. (“DCO”) and Etowah Decorating Center,
Inc.’s (“Etowah”) motion for summary judgment [Doc. No. 280], and the
defendants’ motion to exclude the expert testimony of Michael Norton [Doc.
No. 281].
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As an initial matter, the court GRANTS the motion to amend the
complaint [Doc. No. 272]. The motion seeks merely to dismiss with prejudice
certain of the plaintiff’s claims. The defendants have no objection. Because
the amendment does not add claims, the court will not require the filing of a
second amended complaint. Rather, the court will simply dismiss the claims
identified in the motion to amend and continue the litigation with the
amended complaint being the operative pleading. Therefore, counts II, III,
VI, VIII, and IX are DISMISSED WITH PREJUDICE.
The parties filed their motions for summary judgment prior to the court
ruling on HCF’s motion to amend the amended complaint. To the extent that
the parties seek summary judgment on the counts of the amended complaint
that have now been dismissed with prejudice, the court will not address those
arguments.
I. Factual and Procedural History
This trademark action concerns carpet cushion with attributes that
supposedly make it healthier to use in customers’ homes. HCF makes and
wholesales carpet cushion that is sold in retail stores—including Costco and
Home Depot—throughout the United States. HCF makes a premium carpet
cushion that has “healthier” properties that it claims make it superior to
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other cushions. HCF uses various logos with its products, including the
registered trademark Healthier Choice®.
CCA is a corporation that is owned by other, independently owned and
operated, individual retail floor covering companies. DCO (doing business as
Dalton Carpet One Floor and Home) and Etowah are two of the independent
retail floor covering stores that are members of CCA’s ownership cooperative.
CCA does not buy or sell carpet cushion itself; rather, it negotiates with
product vendors on behalf of its retail store owners and creates marketing
programs for use by its owners to sell carpet and cushion, and to provide
installation services.
A marketing program that CCA recommends to its members is its
“Healthier Living® Flooring Installation System” (hereinafter “the Healthier
Living® System”). It involves using a multiple step process in an attempt to
provide an improved option for installation of carpet. There are many
elements that make up the Healthier Living® System, such as the type of
carpet cushion used and the process to install it.
For purposes of this order, the operative complaint is HCF’s amended
complaint filed on June 18, 2012. The amended complaint alleges that CCA’s
Healthier Living® System infringes on HCF’s trademark rights and falsely
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advertises certain attributes of the Healthier Living® System and its carpet
cushion. HCF sets forth the following claims in its amended complaint:
• Count I: Federal trademark infringement under 15 U.S.C. § 1114,
• Count IV: Federal trade dress infringement under 15 U.S.C. § 1125(a),
• Count V: False advertising under 15 U.S.C. § 1125(a),
• Count VII: Trademark dilution under O.C.G.A. § 10-1-451(b),
• Count X: Attorney’s fees and expenses of litigation.
The defendants filed the following counterclaims in response to the amended
complaint:
• Counterclaim I: Declaratory judgment of non-infringement,
• Counterclaim II: Declaratory judgment of no dilution,
• Counterclaim III: Federal trademark infringement under
15 U.S.C. § 1125,
• Counterclaim IV: Common law trademark infringement,
• Counterclaim V: Fraud on the United States Patent and Trademark
Office under 15 U.S.C. § 1120.
II. Motions to Exclude Expert Testimony
The parties have filed two separate motions to exclude the testimony of
two witnesses designated as experts. HCF seeks to exclude the expert
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testimony of Donald A. Irwin. The defendants seek to exclude the expert
testimony of Michael Norton.
The Eleventh Circuit Court of Appeals has held that a district court
must act as a “gatekeeper” under Federal Rule of Evidence 702 and Daubert
v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) to admit only
expert testimony that is both reliable and relevant. Rink v. Cheminova, Inc.,
400 F.3d 1286, 1291 (11th Cir. 2005). To perform this role as “gatekeeper,”
the court must determine whether the following requirements are met:
(1) the expert is qualified to testify competently regarding the
matters he intends to address; (2) the methodology by which the
expert reaches his conclusions is sufficiently reliable as
determined by the sort of inquiry mandated in Daubert; and
(3) the testimony assists the trier of fact, through the application
of scientific, technical, or specialized expertise, to understand the
evidence or to determine a fact in issue.
City of Tuscaloosa v. Harcross Chems., Inc., 158 F.3d 548, 562 (11th Cir.
1998). The court of appeals has held, “[A]lthough there is some overlap
among the inquiries into an expert’s qualifications, the reliability of his
proffered opinion and the helpfulness of that opinion, these are distinct
concepts that courts and litigants must take care not to conflate.” Quiet Tech.
DC-8 v. Hurel-Dubois UK Ltd., 326 F.3d 1333, 1341 (11th Cir. 2003). The
burden of proof lies with the party offering the expert to show by a
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preponderance of the evidence that each of the elements has been satisfied.
Rink, 400 F.3d at 1292.
A. Expert Testimony of Donald A. Irwin
HCF asserts a claim in the amended complaint for false advertising
under 15 U.S.C. § 1125(a). HCF alleges that the defendants have made
claims in their marketing and advertising regarding the moisture resistance
of carpet cushions that are literally false or misleading. To defend against
the false advertising claim, the defendants retained Irwin to supervise
testing concerning the moisture resistance of the carpet cushion component of
the Healthier Living® Flooring Installation System, and to evaluate tests
disclosed by HCF’s expert. Irwin has since conducted laboratory testing
regarding the moisture resistance of the defendants’ carpet cushions. In
addition, the defendants have served an expert report completed by Irwin in
connection with his testing and evaluation of the moisture resistance of the
carpet cushions. HCF moves to exclude the expert testimony of Irwin
because his testimony does not meet the requirements set forth in Federal
Rule of Evidence 702 and Daubert. HCF argues that the defendants cannot
meet their burden with respect to the requirements set forth above.
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1. Expert Qualifications
The first requirement under the court’s analysis is that the expert
witness must be qualified to testify competently on the matters he intends to
address. “Federal Rule of Evidence 702 takes a liberal view of expert witness
qualifications.” Leathers v. Pfizer, Inc., 233 F.R.D. 687, 692 (N.D. Ga. 2006).
An expert witness must be “competent and qualified by knowledge, skill,
experience, training, or education to render the opinion.” Id. Accordingly,
“an expert’s training does not always need to be narrowly tailored to match
the exact point of dispute in a case.” McGee v. Evenflo Co., No. 5:02-cv-259-4
(CAR), 2003 WL 23350439, at *3 (M.D. Ga. Dec. 11, 2003) (concluding that a
mechanical engineer with some experience involving accident reconstruction
and safety restraints was minimally qualified to testify about the
performance of a car seat in an accident). Generally, any gaps in an expert’s
qualifications or knowledge affect the weight of the witness’s testimony, not
the admissibility of the witness’s testimony. Trilink Saw Chain, LLC v.
Blount, Inc., 583 F. Supp. 2d 1293, 1304 (N.D. Ga. 2008)
With respect to this requirement, HCF argues that Irwin’s expert
report does not disclose any background, education, or training regarding the
testing that is the subject of his opinions. HCF notes that the defendants
have failed to identify any instance of Irwin’s having performed or supervised
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a moisture barrier test prior to this litigation. HCF’s position is that Irwin
has generalized knowledge regarding the flooring industry at best, which it
contends is not sufficient to satisfy the first requirement.
Irwin states in his expert report that he has been asked to provide the
following in this matter: (1) his opinion concerning certain tests selected by
HCF and a disclosure from Michael Norton and (2) to supervise and analyze
testing of certain cushion samples. Expert Report of Irwin ¶ 1 [Doc. No. 216-
2]. Irwin’s summary of his experience and the background provided in his
expert report reveal that he has a bachelor’s degree in chemistry and a
master’s degree in organic chemistry. He has worked within the field of
polymer chemistry for more than 50 years.1 During the course of his work
experience, Irwin has been involved in the development and marketing of
attached polyurethane carpet cushion and polyurethane membranes for
roofing applications. He has also provided consulting services related to the
product development and manufacturing of polymer-based applications for
carpet, carpet cushion, underlayment, roofing products, and synthetic turf
backings. Irwin is also the named inventor for a number of patents,
including one for carpet with a fluid barrier. The defendants argue that
Irwin’s experience confirms that he is competent and qualified to testify on
1 Polymers comprise a substantial portion of the carpet cushions at issue.
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the matters he intends to address. While the defendants concede that Irwin
is not a laboratory professional, they argue that he has substantial
knowledge regarding the products and retained a competent testing lab to
perform the actual tests—Independent Textile Testing Service, Inc.
Based on the court’s review of the summary of experience and expert
report provided by Irwin, the court is satisfied that he is competent to testify
as an expert. Irwin’s background in the field of polymer chemistry, including
the development and patent of moisture resistant membranes, qualifies him
to develop, supervise, and analyze tests regarding the moisture resistance of
carpet cushions. The court concludes that Irwin is qualified to render an
opinion in this case based on his background and experience.
2. Methodology
The second requirement is that Irwin used a reliable methodology in
reaching his conclusions. The Eleventh Circuit Court of Appeals has held
that district courts should assess the following factors—originally set forth in
Daubert—to determine the reliability of proffered scientific testimony:
(1) [W]hether the theory or technique “can be (and has been)
tested,” (2) “whether the theory or technique has been subjected
to peer review and publication,” (3) “in the case of a particular
scientific technique, . . . the known or potential rate of error,” and
(4) whether the theory or technique is generally accepted by the
relevant scientific community.
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Hendrix ex rel. G.P. v. Evenflo Co., Inc., 609 F.3d 1183, 1194 (11th Cir. 2010)
(quoting Daubert, 509 U.S. at 592–94)). The list of factors noted above is not
exhaustive, and a district court is afforded considerable discretion when
deciding how to determine the reliability of an expert. Id.
The British Spill Test is a testing method commonly used to determine
the effectiveness of a moisture barrier in a carpet sample. Irwin employed a
modified version of the British Spill Test to test the moisture resistance of
the carpet cushions at issue in this case. Irwin modified the British Spill
Test by adding a carpet sample to the carpet cushion prior to applying the
colored liquid, and then using of a standard cushion as a control and timelapse
examination of the carpet cushions.
The first factor the court considers is whether the modified British Spill
Test employed by Irwin can be tested. While there is no evidence that the
technique has been tested, there is a sufficient basis for the court to find that
it can be tested. HCF touts the British Spill Test as the proper technique for
testing the moisture resistance of carpet and carpet cushions. The court does
not believe the modifications to the classic British Spill Test render the
technique unfit for testing. Irwin sets forth the procedure he used to test the
moisture resistance of the carpet cushions. Therefore, the technique used by
Irwin to test the moisture resistance of the carpet cushions—modified British
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Spill Test—can be tested. Contrary to HCF’s classification of the modified
British Spill Test as “novel,” the court concludes that the first factor weighs
in favor of its reliability.
Two additional factors weigh in favor of the reliability of the modified
British Spill Test employed by Irwin. While the modified British Spill Test
has not been subjected to peer review and publication and no evidence has
been presented to the court that the technique is generally accepted by the
relevant scientific community, the classic British Spill Test satisfies both of
these factors. As discussed with respect to the previous factor, the court does
not believe that Irwin’s modifications to the classic British Spill Test render
the technique unreliable. Upon consideration of the factors set forth above,
the court concludes that the modified British Spill Test is reliable for
purposes of the Federal Rule of Evidence 702 and Daubert analysis.
3. Assistance to the Trier of Fact
Prior to addressing the third requirement regarding the admissibility
of expert testimony, the court addresses an issue raised by the defendants in
response to the motion to exclude. The defendants assert that HCF has
improperly raised a new theory in its motion. The defendants argue that
HCF initially based its false advertising claim on the defendants’ use of
“moisture resistant” on its advertising but now allege that the issue is
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whether the defendants properly advertise that the carpet cushions block
spills or are moisture proof. In its reply brief, HCF argues that the
defendants were on notice that the operative claim was “98% moisture
resistant . . . to block spills,” and that this phrase includes the words “block
spills.”
HCF is correct that the defendants use this phrase in its advertising,
but that alone does not put the defendants on notice that it is the operative
claim for purposes of the false advertising cause of action. Upon review of the
amended complaint, the court concludes that it does not clearly identify “98%
moisture resistant . . . to block spills” as the operative claim. HCF does not
set forth the entire phrase at any point in the amended complaint. HCF uses
only the words “moisture resistant.” Count V of the amended complaint,
which sets forth a claim for false advertising under 15 U.S.C. § 1125(a),
states the following:
Defendants make certain claims in their marketing and
advertising materials for the Healthier Living Flooring
Installation System and/or Healthier Living Pad regarding the
alleged “healthier,” lower VOC-emitting, moisture resistant,
and/or superior properties that extend the life of the Healthier
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Living Flooring Installation System and/or Healthier Living Pad
that are literally false and/or misleading.
Am. Compl. ¶ 106 [Doc. No. 70]. Regarding this issue, the court concludes
that HCF put the defendants on notice that an issue with respect to the false
advertising claim is the moisture resistance of the carpet cushions. While a
difference of degree exists between moisture resistant and moisture blocking,
the two claims fall within the broad category of moisture resistance. The
court does not determine whether the moisture blocking properties of the
carpet cushions is an appropriate issue for trial. The defendants may file a
properly supported motion in limine with respect to this issue should this
matter proceed to trial.
The third requirement is that the expert testimony must assist the
trier of fact to understand the evidence or to determine a fact at issue. The
defendants argue that Irwin’s expert testimony does not “fit” the issue in this
case of whether the defendants claim that the carpet cushion is “98%
moisture resistant . . . to block spills.” The defendants argue that Irwin
focuses his opinions on the faulty premise that the issue is whether the
carpet cushion is moisture resistant. As discussed in the preceding
paragraphs, the moisture resistance of the carpet cushions is an issue in this
case. The court concludes that the expert testimony of Irwin will assist the
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trier of fact to understand the evidence related to the moisture resistance of
the carpet cushions and to determine the accuracy of the defendants’
advertising claims.
4. Conclusion
Based on the foregoing, HCF’s motion to exclude the expert testimony
of Irwin [Doc. No. 216] is DENIED.
B. Expert Testimony of Michael Norton
HCF has retained Norton as an expert to analyze and interpret testing
conducted of the antimicrobial and moisture resistance of carpet cushions
sold by the defendants. Norton has been designated as an expert witness to
testify regarding these issues. The defendants move to exclude the proposed
expert testimony of Norton for failure to satisfy two requirements under
Federal Rule of Evidence 702 and Daubert—reliability and assistance to the
trier of fact. HCF states in its response to the motion to exclude that it will
not use Norton as an expert for issues relating to antimicrobial testing.
Therefore, the court does not address the arguments regarding the exclusion
of expert testimony on antimicrobial testing because the issue is moot. The
court addresses only the exclusion of expert testimony by Norton on the
moisture resistance of the carpet cushions.
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1. Expert Qualifications
Norton has a degree in chemistry and has worked as a researcher and
in other technical positions for more than 40 years. Norton has been
employed by HCF since January 8, 2007, and he is responsible for technical
activities and for all testing conducted of HCF products. The defendants do
not challenge the background or qualifications of Norton as an expert
witness. Accordingly, the court concludes that the first requirement for
Norton’s testimony to qualify as expert testimony is met.
2. Methodology
Norton commissioned two forms of testing to determine the moisture
resistance of the defendants’ carpet cushions: (1) the British Spill Test
Method E (hereinafter “the British Spill Test”), and (2) the Water Penetration
by Impact Test (hereinafter “the Impact Test”). These tests are designed to
determine different moisture resistance properties of carpeting and carpet
cushions. Norton used these tests to determine the validity of the
defendants’ advertising claims regarding moisture resistance.
As discussed earlier in this order, the Eleventh Circuit Court of
Appeals has held that district courts should assess certain factors—originally
set forth in Daubert—to determine the reliability of proffered scientific
testimony. The defendants argue that Norton’s testimony is inadmissible
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because of the flaws in his methodology, including the following: (1) Norton
prevented the defendants from inspecting the tested carpet cushions by
permitting them to be destroyed, (2) Norton has never seen the cushions after
the tests and cannot testify as to their condition, and (3) Norton ignores
results that do not support his position. None of the flaws alleged by the
defendants relate to the four factors set forth by the court of appeals. Rather,
the court concludes that the tests used by Norton—British Spill Test and
Impact Test—satisfy each of the factors set forth by the court of appeals. The
court concludes that the second requirement for Norton’s testimony to qualify
as expert testimony is met.
3. Assistance to the Trier of Fact
The final requirement is that the expert testimony must assist the trier
of fact to understand the evidence or to determine an issue of fact. The
Eleventh Circuit Court of Appeals has held, “[E]xpert testimony is admissible
if it concerns matters that are beyond the understanding of the average lay
person.” United States v. Frazier, 387 F.3d 1244, 1262 (11th Cir. 2004).
The defendants argue that Norton’s testimony will not assist the trier
of fact for the following reasons: (1) no expertise is required to interpret tests
where the results consist of pass or fail, (2) Norton did not witness the
testing, and (3) only some of the cushions marketed by the defendants were
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tested. As an initial matter, the court notes that the first argument appears
disingenuous. Despite arguing that pass or fail test results do not require
expert testimony, the defendants have designated Irwin to testify regarding
test results that are similar. The test performed by Irwin indicates whether
liquid penetrated the carpet cushions at six time intervals by noting either
yes or no. The use of yes or no is comparable to pass or fail. Regardless of
the propriety of the defendants’ argument, the court concludes that Norton’s
testimony will assist the trier of fact. Norton has been designated as an
expert witness to testify regarding his analysis and interpretation of testing
of the moisture resistance of carpet cushions sold by the defendants. The
moisture resistance of the carpet cushions is an issue in this case, and
Norton’s testimony concerns matters that are beyond the understanding of
the average lay person. Therefore, the court concludes that the third
requirement for Norton to testify as an expert witness is met.
4. Conclusion
Based on the foregoing, the defendants’ motion to exclude the expert
testimony of Norton [Doc. No. 281] is DENIED.
III. Motions for Summary Judgment
HCF filed a motion for partial summary judgment as to two of the
counterclaims raised against it; CCA filed a motion for summary judgment as
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to all claims raised against it and as to all of the counterclaims; and DCO and
Etowah filed a motion for summary judgment as to all claims raised against
them and as to all of the counterclaims.
A. Summary Judgment Standard
Rule 56(a) of the Federal Rules of Civil Procedure authorizes summary
judgment “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.” The
party seeking summary judgment bears the burden of demonstrating that no
dispute as to any material fact exists. Adickes v. S.H. Kress & Co., 398 U.S.
144, 156 (1970). The moving party’s burden is discharged merely by
“‘showing’—that is, pointing out to the district court—that there is an
absence of evidence to support [an essential element of] the nonmoving
party’s case.” Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986).
In determining whether the moving party has met this burden, the
district court must view the evidence and all factual inferences in the light
most favorable to the party opposing the motion. Johnson, 74 F.3d at 1090.
Once the moving party has adequately supported its motion, the nonmovant
then has the burden of showing that summary judgment is improper by
coming forward with specific facts showing a genuine dispute. Matsushita
Electrical Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).
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In deciding a motion for summary judgment, it is not the court’s
function to decide issues of material fact but to decide only whether there is
such an issue to be tried. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251
(1986). The applicable substantive law will identify those facts that are
material. Id. at 248. Facts that in good faith are disputed, but which do not
resolve or affect the outcome of the case, will not preclude the entry of
summary judgment as those facts are not material. Id. Genuine disputes are
those by which the evidence is such that a reasonable jury could return a
verdict for the nonmovant. Id. “Genuine” factual issues must have a real
basis in the record. See Matsushita, 475 U.S. at 586. The United States
Supreme Court has held the following:
[I]n ruling on a motion for summary judgment, the judge must
view the evidence presented through the prism of the substantive
evidentiary burden. . . . The question here is whether a jury
could reasonably find either that the plaintiff proved his case by
the quality and quantity of evidence required by the governing
law or that he did not. Whether a jury could reasonably find for
either party, however, cannot be defined except by the criteria
governing what evidence would enable the jury to find for either
the plaintiff or the defendant: It makes no sense to say that a
jury could reasonably find for either party without some
benchmark as to what standards govern its deliberations and
within what boundaries its ultimate decision must fall, and these
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standards and boundaries are in fact provided by the applicable
evidentiary standards.
Anderson, 477 U.S. at 254–55. “Where the record taken as a whole could not
lead a rational trier of fact to find for the non-moving party, there is no
‘genuine issue for trial.’” Id. at 587 (citations omitted).
B. HCF’s Motion for Partial Summary Judgment
HCF has filed a motion for partial summary judgment with respect to
two counterclaims asserted by the defendants:2 (1) the defendants’
counterclaim for fraud on the United States Patent and Trademark Office
(“PTO”) under 15 U.S.C. § 1120 (Counterclaim V) and (2) the defendants’
request for an accounting of profits in connection with their counterclaims for
trademark infringement under federal and common law (Counterclaims III
and IV).
1. Fraud Counterclaim
HCF is the owner of a federal trademark registration for the word
mark Healthier Choice (“Healthier Choice® Mark”), U.S. Registration No.
3,210,413, for carpet underlay. On March 16, 2012, HCF’s president, Craig
Poteet, signed a declaration of incontestability that was eventually filed with
2 HCF states in a footnote that it cannot represent that the undisputed
material facts support summary judgment on its affirmative claims [Doc.
No. 278-1 at 2 n.1].
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the PTO. A mark may become incontestable if it has been in continuous use
for at least five consecutive years and other conditions are met. 15 U.S.C.
§ 1065. After a mark has become incontestable, “[T]he registration shall be
conclusive evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered mark in commerce.”
15 U.S.C. § 1115(b).
The defendants have asserted a counterclaim against HCF for fraud on
the PTO under 15 U.S.C. § 1120. HCF argues that the undisputed material
facts show that the defendants cannot meet their heavy burden to prove the
trademark fraud counterclaim “to the hilt” and with “no room for inference,
speculation, or surmise.”
a. Legal Standard
A party may seek to have a registered mark cancelled on the ground
that the registration of the mark was procured by fraud, even if the mark has
become incontestable. 15 U.S.C. §§ 1064(3), 1119. “An applicant commits
fraud when he ‘knowingly makes false, material misrepresentations of fact in
connection with an application for a registered mark.’” Sovereign Military
Hospitaller Order of St. John v. Florida Priory, 702 F.3d 1279, 1289 (11th
Cir. 2012) (quoting Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522
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F.3d 1200, 1209 (11th Cir. 2008)). To demonstrate fraud, it must be shown
that the applicant made the application for a registered mark with a purpose
or intent to deceive the PTO. Id.
b. Analysis
The incontestability declaration signed by Poteet on behalf of HCF
states in part: “Also, no final decision adverse to the owner’s claim of
ownership of such mark for those goods or services exists, or to the owner’s
right to register the same or to keep the same on the register; and, no
proceeding involving said rights pending and not disposed of in either the
U.S. Patent and Trademark Office or the courts exists.” Incontestability
Decl. at 6 [Doc. No. 305-32]. With respect to the “no proceeding involving
said rights” language present in the declaration, the Trademark Manual of
Examining Procedure (“TMEP”) states the following:
The §15 affidavit or declaration must state that there has been no
final decision adverse to the owner’s claim of ownership of the
mark for the goods or services, or to the owner’s right to register
the mark or to keep the mark on the register. It must also state
that there is no proceeding involving these rights pending in the
USPTO or in a court and not finally disposed of.
TMEP § 1605.04. The TMEP further states that the PTO “does not consider
a proceeding involving the mark in which the owner is the plaintiff, where
there is no counterclaim involving the owner’s rights in the mark, to be a
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‘proceeding involving these rights’ that would preclude the filing or
acknowledgement of a §15 affidavit or declaration.” Id.
The operative pleading with respect to this issue is the initial answer
and counterclaim filed by the defendants on September 30, 2011 [Doc. No. 7].
In other words, the court must determine whether the answer and
counterclaim involved the owner’s rights such that a filing of a declaration of
incontestability was precluded. The defendants asserted two counterclaims,
one for a declaratory judgment of non-infringement and one for a declaratory
judgment of no dilution. Within the counterclaim for a declaratory judgment
of non-infringement, the defendants alleged that HCF’s marks are merely
descriptive, have not developed secondary meaning, are not recognized by
consumers as a source indicator, and were not intended to be a source
indicator.
HCF argues that only a counterclaim seeking cancellation of a
trademark qualifies as a counterclaim challenging its rights.3 The court
disagrees. First, the TMEP does not use the word “cancellation” when setting
forth the requirement that there be no proceeding involving the rights of the
owner. If the prohibition was intended to apply only to counterclaims seeking
3 HCF primarily relies on 3 McCarthy on Trademarks and Unfair
Competition § 19.140 to support its argument.
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cancellation, then it would include such language. Rather, the language of
the TMEP implies a broader scope than HCF argues the court should adopt.
Second, contrary to the treatise that HCF relies on, binding precedent on this
court does not support HCF’s position. The United States Court of Appeals
for the Federal Circuit has held that a counterclaim challenging the validity
of a registered trademark qualifies as a proceeding involving the rights in the
mark. Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 1324 (Fed.
Cir. 1999). The court of appeals did not limit its holding to cases where a
party is seeking cancellation of a trademark. The Eleventh Circuit Court of
Appeals has similarly interpreted the language broadly. In a case involving a
trademark dispute, the court of appeals held that the defendant’s trademark
never became incontestable because the district court proceeding qualified as
a proceeding that involved the defendant’s rights in the trademark. Sizzler
Family Steak Houses v. Western Sizzlin Steak House, Inc., 93 F.2d 1529,
1540–41 (11th Cir. 1986). The court of appeals characterized the complaint
as challenging the defendant’s right to use “Sizzler” as a service mark and as
a trademark. Id. at 1541. The court of appeals did not indicate that the
complaint sought to cancel the defendant’s trademark. Therefore, the court
concludes as a matter of law that the phrase “no proceeding involving said
rights” is not limited to counterclaims for cancellation.
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Related to the argument discussed above, HCF also argues that the
defendants did not set forth an actual counterclaim involving the rights of the
owner. HCF contends that the defendants sought only findings and a
declaration of no liability for infringement. Once again, the court disagrees.
If the court rules in favor of the defendants on their counterclaim for a
declaratory judgment of non-infringement, then HCF’s rights to register its
mark or to keep its mark on the register would be affected. Accordingly, the
court concludes as a matter of law that the defendants set forth a
counterclaim challenging HCF’s rights in its mark.
Having found that a proceeding involving HCF’s rights in its mark was
pending when Poteet signed and submitted a declaration of incontestability,
the court must determine whether he knowingly made the false, material
misrepresentation. The court must also determine whether Poteet acted with
a purpose or intent to deceive the PTO. With respect to these issues, HCF
has submitted deposition testimony and copies of emails that show that it
retained the law firm of Sutherland Asbill & Brennan LLP—specifically,
attorney James Johnson—as its trademark counsel to determine the
propriety of filing the declaration of incontestability. Johnson concluded that
it was appropriate for HCF to file the declaration of incontestability after
researching the issue and reviewing the defendants’ answer and
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counterclaim. Poteet testified that he relied on Johnson’s legal advice,
through communications with Meghan Rachford, when he signed the
declaration of incontestability. In response, the defendants argue that there
is no evidence that any attorney with Sutherland Asbill & Brennan LLP
directly provided the legal advice that Poteet professes to have relied on. The
defendants also cite deposition testimony by Poteet that they argue indicates
his knowledge that the defendants did not believe HCF could prohibit their
use of the phrase “healthier choice.” In light of Poteet’s explicit testimony
that he relied on counsel, and the defendants’ citation to deposition testimony
they contend undermines HCF’s position, there is a genuine dispute of
material fact on the remaining elements of the fraud counterclaim. The court
concludes that a reasonable trier of fact could find that HCF knowingly made
a false, material misrepresentation of fact and it acted with the purpose or
intent to deceive the PTO. Accordingly, the court denies HCF’s motion for
partial summary judgment with respect to the defendants’ counterclaim for
trademark fraud.
2. Accounting
HCF initiated this litigation by filing a complaint asserting various
claims against the defendants. HCF’s federal trademark infringement and
common law trademark infringement claims include allegations that CCA’s
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“Spill Bloc” and “BioShield” marks infringed HCF’s “Moisture Bloc” and
“Made with Bio Materials” marks. The defendants claimed in their answer to
the amended complaint and counterclaim that CCA’s marks have priority
over HCF’s marks. The defendants also asserted counterclaims based on
allegations of infringement by HCF of CCA’s marks. A party that prevails on
a trademark infringement claim is entitled to three forms of monetary relief:
(1) an accounting of the infringer’s profits, (2) recovery of damages sustained
by the plaintiff,4 and (3) the costs of the action. 15 U.S.C. § 1117(a). HCF
moves for summary judgment on the defendants’ request for an accounting of
profits because it contends that the defendants cannot prove any of the three
predicates for such an award.
a. Legal Standard
The Eleventh Circuit Court of Appeals has held that an accounting of
profits furthers the purpose of § 35 of the Lanham Act, 15 U.S.C. § 1117, by
making infringement unprofitable. Burger King Corp. v. Mason, 855 F.2d
4 HCF states in its motion for partial summary judgment that the defendants
do not seek damages for their own sales under the trademark infringement
claim. Plt.’s Mem. of Law in Supp. of Mot. for Partial Summ. J. at 18 [Doc.
No. 278-1]. HCF cites to two of its statements of material fact to support this
position. Plt.’s Stat. of Facts ¶¶ 76–77 [Doc. No. 278-2]. The court believes
that the defendants deny the statement of material fact that they do not seek
damages based on their own profits. Defs.’ Resp. to Plt. Stat. of Facts at 37
[Doc. No. 287-1].
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779, 781 (11th Cir. 1988). An accounting of profits is appropriate where
(1) the infringer’s conduct was willful and deliberate, (2) the infringer was
unjustly enriched, or (3) an accounting is necessary to deter future conduct.
Howard Johnson Co., Inc. v. Khimani, 892 F.2d 1512, 1521 (11th Cir. 1990).
A party seeking an accounting of lost profits based on unjust enrichment or
deterrence is not required to show the court that the infringer acted with a
higher level of culpability. Burger King, 855 F.2d at 781.
b. Analysis
HCF relies on Optimum Technologies, Inc. v. Home Depot U.S.A., Inc.,
217 F. App’x 899 (11th Cir. 2007) in support of its request for summary
judgment on this issue. In Optimum, the Eleventh Circuit Court of Appeals
held that the district court did not abuse its discretion in concluding that an
accounting of the defendant’s profits was not an appropriate remedy. Id. at
903. HCF compares its conduct in this matter to that of the defendant in
Optimum and argues that there is no evidence to warrant an accounting of
its profits.
HCF states that there is no evidence that it possessed knowledge of any
possible infringement of the defendants’ marks until the defendants filed the
amended answer and counterclaims. HCF also states that it promptly took
steps to cease use of the defendants’ marks in September 2012 and it no
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longer uses any of the defendants’ marks in its advertising or marketing
materials. In response, the defendants argue that HCF did not cease use of
their marks for at least six months after it had received knowledge that it
lacked priority. The defendants also state that HCF actively sought
information related to CCA’s marketing program prior to initiating this
matter and that HCF was in possession of marketing materials that indicate
it had knowledge of the “Spill Bloc” and “BioShield” marks.
Based on the court’s review of the evidence filed by the parties, the
court concludes that there is a genuine dispute of material fact regarding the
propriety of an accounting of profits. The parties have pointed to evidence
that supports contrasting scenarios of when HCF became aware of the “Spill
Bloc” and “BioShield” marks, the manner by which it learned of the marks,
and its subsequent actions. The resolution of this factual dispute affects
whether HCF acted in a manner consistent with the defendant in Optimum.
Thus, the court denies HCF’s request for summary judgment on this issue.
3. Conclusion
Based on the foregoing, the court DENIES HCF’s motion for partial
summary judgment [Doc. No. 278].
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C. The Defendants’ Motions for Summary Judgment
The defendants have filed two separate motions for summary judgment
on HCF’s claims as well as their counterclaims. CCA filed its own motion for
summary judgment, while DCO and Etowah have filed a separate motion for
summary judgment that incorporates by reference CCA’s motion for
summary judgment and memorandum. Because the issues raised in the
motions overlap, the court adjudicates the motions by addressing each claim
or counterclaim rather than adjudicating the motions separately.
HCF filed a motion to amend the amended complaint after the
defendants had filed their motions for summary judgment. At the outset of
this order, the court granted HCF’s motion thereby dismissing counts II, III,
VI, VIII, and IX of the amended complaint with prejudice. In addition, HCF
indicates in its response to the defendants’ motions for summary judgment
that it has dropped additional claims within the remaining counts. The court
addresses only the claims that HCF has not dropped and that have not
become moot.
1. Trademark Infringement
HCF has dismissed with prejudice most of its claims for trademark
infringement. However, Count I of the amended complaint still includes a
claim for trademark infringement of HCF’s Healthier Choice® mark. The
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defendants counterclaim I seeks a declaratory judgment of non-infringement
of the Healthier Choice® mark. The defendants move for summary judgment
as to the infringement claim against them and as to the counterclaim for a
declaratory judgment of non-infringement.
A trademark is “any word, name, symbol or device, or any combination
thereof used to identify and distinguish one’s goods from those manufactured
or sold by others and to indicate the source of the goods.” Leigh v. Warner
Brothers, Inc., 212 F.3d 1210, 1216 (11th Cir. 2000) (citing 15 U.S.C. § 1127)
(internal punctuation omitted). “In a trademark infringement action, the
plaintiff must show, first, that its mark is valid and, second, that the
defendant’s use of the contested mark is likely to cause confusion.” Dieter v.
B & H Industries of Southwest Florida, Inc., 880 F.2d 322, 326 (11th Cir.
1989) (citations omitted). In addition, the infringing party must use the
mark in commerce without authorization. Optimum Technologies, Inc. v.
Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1242 (11th Cir. 2007). The
defendants argue that HCF cannot satisfy any of the elements necessary to
prevail on its trademark infringement claim.
a. Validity of the Mark
On March 16, 2012, HCF submitted a declaration of incontestability to
the PTO. The defendants argue that the declaration has no effect in this
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matter because it was filed improperly. As discussed in the section of this
order addressing HCF’s motion for partial summary judgment, the court has
concluded that the defendants’ response to the initial complaint included a
counterclaim challenging HCF’s rights in its mark. This counterclaim was
filed prior to the date HCF filed its declaration of incontestability. This
evidence is sufficient to establish that HCF was unable to satisfy each of the
requirements for a declaration of incontestability at the time of its filing.
Therefore, the court concludes as a matter of law that the Healthier Choice®
mark is not entitled to incontestable status.
Trademark protection is available only to distinctive marks. Welding
Services, Inc. v. Forman, 509 F.3d 1351, 1357 (11th Cir. 2007). Distinctive
marks identify the source of the goods or services. Id. The Court of Appeals
for the Eleventh Circuit has held that there are four types of distinctive
marks: fanciful or arbitrary, suggestive, descriptive, and generic. Id. The
parties do not argue that the phrase “healthier choice” is fanciful or arbitrary,
or generic. Instead, the parties dispute whether the phrase is suggestive or
descriptive. “A suggestive mark refers to some characteristic of the goods,
but requires a leap of the imagination to get from the mark to the product
[e.g., Penguin Refrigerators]. A descriptive mark identifies a characteristic or
quality of the service or product [e.g., Vision Center].” Caliber Automotive
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Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 938
(11th Cir. 2010). The phrase that remains at issue is the Healthier Choice®
mark used by HCF in the sale and marketing of carpet cushions.
To determine whether a mark is descriptive or suggestive, courts often
apply the imagination test. Under this test, “if a mark requires imagination,
thought, and perception to arrive at the qualities or characteristics of the
goods, then the mark is suggestive.” In re Nett Designs, Inc., 236 F.3d 1339,
1341 (Fed. Cir. 2001).
The defendants take the position that there is no dispute that the
phrase “healthier choice” is merely descriptive. There is deposition testimony
of the former vice president of sales for HCF where he answered affirmatively
to the following question, “Healthier choice describes what the product is?”
Dep. of Daniel Martin, Oct. 2, 2012, at 57:14–16 [Doc. No. 302-14]. The
defendants argue that the phrase “healthier choice” is a laudatory phrase
that conveys information about the characteristics of the product.5 With
respect to this issue, the Court of Appeals for the Eleventh Circuit has held,
5 The defendants cite ConAgra, Inc. v. George A. Hormel & Co., 784 F. Supp.
700 (D. Neb. Jan. 7, 1992), in which the district court concluded that the
phrase “healthy choice” was descriptive of frozen prepared dinners. The
district court made this determination following a trial, and the district court
was able to weigh the evidence unlike when dealing with a motion for
summary judgment.
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“‘Marks that are merely laudatory and descriptive of the alleged merit of a
product are . . . regarded as being descriptive. . . . Self-laudatory or puffing
marks are regarded as a condensed form of describing the character or
quality of the goods.’” DuoProSS Meditech Corp. v. Inviro Medical Devices,
Ltd., 695 F.3d 1247, 1256 (11th Cir. 2012) (quoting In re Boston Beer Co., 198
F.3d 1370, 1373 (Fed. Cir. 2001)). Laudatory marks extol a feature or
attribute of the product. 2 McCarthy on Trademarks and Unfair Competition
§ 11.17. Moreover, the defendants contend that HCF’s advertising proves
that the phrase is descriptive rather than suggestive.
In response, HCF argues that a trier of fact could determine that its
Healthier Choice® mark is suggestive because consumers must practice
“mental gymnastics to understand that it relates to carpet cushion.” Plt.’s
Resp. to Mot. for Summ. J. at 11 [Doc. No. 285]. HCF cites a declaration by
Poteet, the president of the company, wherein he states that end-use
consumers and other individuals in the flooring industry have asked him and
others in the company what the name Healthier Choice® means. Decl. of
Craig Poteet ¶ 14 [Doc. No. 303-28]. HCF also argues that market research
shows that durability is an important characteristic of carpet cushion, and
the phrase “healthier choice” does not address this characteristic. Because
HCF has adduced evidence from which a trier of fact could determine that
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the mark is suggestive, the defendants are not entitled to summary judgment
on this issue.
b. Likelihood to Cause Confusion
To determine whether there is a likelihood of confusion between two
marks, the Eleventh Circuit has developed a seven-factor inquiry. Under this
inquiry, the court must assess:
(1) the strength of the plaintiff’s mark; (2) the similarity between
the plaintiff’s mark and the allegedly infringing mark; (3) the
similarity between the products and services offered by the
plaintiff and the defendant; (4) the similarity of the sales
methods; (5) the similarity of advertising methods; (6) the
defendant’s intent, e.g., does the defendant hope to gain
competitive advantage by associating his product with the
plaintiff’s established mark; and (7) actual confusion.
North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1220
(11th Cir. 2008). When a court considers these factors, “the type of mark [i.e.,
the strength] and the evidence of actual confusion are the most important.”
Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1201 n.22 (11th
Cir. 2001).
i. Strength of HCF’s Mark
“The strength of a trademark is essentially a consideration of
distinctiveness.” BellSouth Corp. v. Internet Classifies of Ohio, 1:96-cv-0769-
CC, 1997 WL 33107251, at *14 (N.D. Ga. Nov. 12, 1997) (citations omitted).
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The stronger (i.e., the more distinctive) the mark, “the greater the scope of
protection afforded it, [and] the weaker the mark, the less trademark
protection it receives.” Frehling Enterprises, Inc. v. International Select
Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999); see also Jellibeans, Inc. v.
Skating Clubs of Georgia, Inc., 716 F.2d 833, 840 (11th Cir. 1983) (“[T]he
more distinct the plaintiff’s mark, the stronger it is considered, and the more
protection it is accorded from confusingly similar marks.”).
In this circuit, the factors generally considered when determining the
strength of a trademark include (1) the type of mark, (2) the amount of use of
the term by others in the same product and geographical area, and (3) the
extent of a mark’s use, taking into consideration the amount of advertising
and promotion done under the mark. Gold Kist, Inc. v. ConAgra, Inc., 708 F.
Supp. 1291, 1297 (N.D. Ga. 1989) (citing John H. Harland Co. v. Clarke
Checks, Inc., 711 F.2d 966, 973–75 (11th Cir. 1983)); BellSouth Corp., 1997
WL 33107251, at *14 (citing John H. Harland Co., 711 F.2d at 973–75 and
Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1164
(11th Cir. 1982)).
As discussed in the preceding section of this order, there is a genuine
dispute of material fact regarding whether HCF’s Healthier Choice® mark is
suggestive or descriptive. The court is unable to determine as a matter of law
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the strength of the Healthier Choice® mark. This factor weighs in favor of
HCF, as the non-movant, for purposes of the defendants’ motions for
summary judgment.
ii. Similarity of the Marks
The next factor to consider in evaluating the likelihood of confusion
between a set of trademarks is the degree to which they are similar. In
undertaking such an evaluation,
“the court compares the marks at issue and considers the overall
impressions that the marks create, including the sound,
appearance, and manner in which they are used.” . . . [T]he more
similar the marks are in their sound, appearance, and manner,
the more likely it is that a reasonable consumer will be confused
as to the source of the product that each mark represents.
Board of Regents of the University System of Georgia v. Buzas Baseball, Inc.,
176 F. Supp. 2d 1338, 1352 (N.D. Ga. 2001) (quoting Frehling, 192 F.2d at
1337). As a general rule, “where the goods and services are directly
competitive, the degree of similarity required to prove a likelihood of
confusion is less than in the case of dissimilar products.” SunAmerica Corp.
v. Sun Life Assurance Co. of Canada, 890 F. Supp. 1559, 1575 (N.D. Ga.
1994) (citation omitted) (concluding that the marks Sun Life of America and
Sun Life (U.S.) were indistinguishable and that the marks Sun Life of
America and Sun Life of Canada were closely similar).
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The defendants cite evidence that CCA’s Healthier Living® mark is
registered with the PTO. The defendants also cite examples of its advertising
that show that the Healthier Living® mark and the phrase “make the
healthier choice” are often accompanied by the Carpet One Floor & Home®
mark. The defendants argue that the fact that the Healthier Living® mark
and the Healthier Choice® mark have the word “healthier” in common does
not render them similar in overall impression. HCF notes that the phrase
“make the healthier choice” includes HCF’s Healthier Choice® mark and the
capitalization is identical in some instances. Scott Wheeler, CCA’s Rule
30(b)(6) witness, has testified that he assumed that the “Healthier Choice”
portion of the phrase “make the healthier choice” was styled in different color
font to make that portion of the phrase stand out. Dep. of Scott Wheeler,
June 8, 2012, at 108:1–17 [Doc. No. 310-6]. HCF also cites examples of the
defendants’ advertising materials that show the phrase “make the healthier
choice” is closer in proximity to the Healthier Living® mark than the Carpet
One Floor & Home® mark. Based on the evidence, the court concludes that a
reasonable trier of fact could find that the marks are similar. Therefore, the
court concludes that the similarity of the mark weighs in favor of HCF, the
non-movant.
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iii. Similarity of the Products and Services
The third factor that the court must consider in the likelihood of
confusion analysis is the similarity between HCF’s and the defendants’
products. “This factor requires a determination as to whether the products
are the kind that the public attributes to a single source.” Frehling, 192 F.3d
at 1338. “The issue is not whether the purchasing public can readily
distinguish between the products of the respective parties, but rather
whether the products are so related in the minds of consumers that they get
the sense that a single producer is likely to produce both.” Western Union
Holdings, Inc. v. Eastern Union Inc., No. 1:06-cv-01408, 2007 WL 2683714, at
*8 (N.G. Ga. Sept. 7, 2007) (citing Frehling, 192 F.3d at 1338).
The defendants argue that there is no overlap between CCA and HCF
because CCA does not sell carpet cushion, carpet, or installation services.
This argument does not weigh on the factor of the similarity of the products
and services. HCF cites deposition testimony of Michael Blanton and Mark
Saunders in which they state that defendants sell carpet cushion separately
from the Healthier Living® Flooring Installation System. Dep. of Michael
Blanton, June 6, 2012, at 30:8–10 [Doc. No. 302-2]; Dep. of Mark Saunders,
May 25, 2012, at 41:15–21 [Doc. No. 302-27]. The evidence establishes that
HCF and the defendants sell carpet cushion. Therefore, the court concludes
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that a reasonable trier of fact could find that the products are similar. This
factor weighs in favor of HCF, the non-movant, for purposes of the
defendants’ motions for summary judgment.
iv. The Similarity of the Parties’ Retail Outlets
and Customers
The fourth factor “takes into consideration where, how, and to whom
the parties’ products are sold.” Western Union Holdings, 2007 WL 2683714,
at *9 (citing Frehling, 192 F.3d at 1339). Although “the parties’ outlets and
customer bases need not be identical” to support a likelihood of confusion,
“some degree of overlap should be present.” Frehling, 192 F.3d at 1339. In
this case, there is evidence that HCF’s and the defendants’ competing carpet
cushions are sold in the same stores. There is also evidence that the parties’
respective carpet cushions are sold in competing stores. The court concludes
that a reasonable trier of fact could find that the parties’ retail outlets and
customers are similar. Accordingly, this factor weighs in favor of HCF, the
non-movant, for purposes of the defendants’ motions for summary judgment.
v. The Similarity of Advertising Media Used
The “similarity of advertising” factor focuses on the methods the
companies use to advertise their products, “not necessarily on the precise
newspapers or magazines which are used.” Gold Kist, 708 F. Supp. at 1301.
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“The greater the similarity in the campaigns, the greater the likelihood of
confusion.” Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1508 (11th
Cir. 1985). The parties agree that there is potential overlap because of the
use of in-store bag samples and the internet. However, the defendants argue
that CCA does not use in-store bag samples and that consumers may not
purchase products from HCF’s or the defendants’ websites. This distinction
is irrelevant. Therefore, the court concludes that a reasonable trier of fact
could find that the parties’ advertising is similar. As such, this factor weighs
in favor of HCF, the non-movant, for purposes of the defendants’ motions for
summary judgment.
vi. Intent
The sixth factor that the court must consider in the likelihood of
confusion analysis is whether the defendants acted in bad faith in using the
Healthier Choice® mark. To prove that the defendants acted in bad faith,
HCF must show that the defendants adopted the Healthier Choice® mark
with the intention of deriving a benefit from HCF’s business reputation or
that the defendants were intentionally blind to confusion between the parties’
marks. Frehling, 192 F.3d at 1340; Board of Regents, 176 F. Supp. 2d at
1353. HCF does not cite evidence that would support a finding that the
defendants adopted the Healthier Choice® mark with the intention of
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deriving a benefit from HCF’s business reputation. The court concludes that
no reasonable trier of fact could find that the defendants acted in bad faith in
using the Healthier Choice® mark. This factor weighs in favor of the
defendants for purposes of the defendants’ motions for summary judgment.
vii. Actual Confusion
The final factor the court considers is the existence of actual confusion.
“It is undisputed that evidence of actual confusion is the best evidence of
likelihood of confusion.” Frehling, 192 F.3d at 1340. “However, such
evidence is not a prerequisite, and thus it is up to individual courts to assess
this factor in light of the particular facts of each case.” Id. (citing Amstar
Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980)). The
Eleventh Circuit Court of Appeals has explained, “[I]it is not the number of
people actually confused by the marks that is important, but rather the type
of person confused.” Id. at 1341.
HCF has cited evidence of a number of instances when individuals were
confused regarding the Healthier Choice® mark and the defendants’ mark.
The defendants challenge the admissibility of the evidence. However, for
purposes of the motions for summary judgment, the court will consider the
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evidence.6 The defendants have also offered testimony of consumers that
were not confused. The court concludes that a reasonable trier of fact could
find the existence of actual confusion. Therefore, this factor weighs in favor
of HCF, the non-movant, for purposes of the defendants’ motions for
summary judgment.
viii. Balancing of the Factors
The Eleventh Circuit Court of Appeals has discussed how the seven
factors should be weighed and has noted that it “entails more than the
mechanistic summation of the number of factors on each side.” Custom
Manufacturing and Engineering, Inc. v. Midway Services, 508 F.3d 641, 649
(11th Cir. 2007).
These factors imply no mathematical precision, but are simply a
guide to help determine whether confusion is likely. They are
also interrelated in effect. Each case presents its own complex
set of circumstances and not all of these factors may be
particularly helpful in any given case. . . . The ultimate question
remains whether relevant consumers are likely to believe that
6 Although the statements about actual confusion may be hearsay, the court
will consider the statements for purposes of the motion for summary
judgment because it is likely that it can be reduced to admissible evidence at
trial. See Jones v. UPS Ground Freight, 683 F.3d 1283, 1293–94 (11th Cir.
2012).
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the products or services offered by the parties are affiliated in
some way.
Id. at 650 (internal citations omitted). In this case, one factor weighs in favor
of the defendants and six factors weigh in favor of HCF. Notably, one of the
most important factors—actual confusion—weighs in favor of HCF. Given
the heavy weight in favor of the non-movant, the court concludes that it
cannot enter judgment as a matter of law to the defendants on the issue of
likelihood of confusion.
c. Use of the Mark in Commerce
An additional element of a trademark infringement action is use of the
mark in commerce by the infringing party without authorization. Optimum
Techs., 496 F.3d at 1242. A mark is used in commerce if “it is placed in any
manner on the goods or their containers or the displays associated therewith
or on the tags or labels affixed thereto, or the nature of the goods makes such
placement impracticable, then on documents associated with the goods or
their sale.” 15 U.S.C. § 1127. In addition, use in commerce requires that “the
goods are sold or transported in commerce.” 15 U.S.C. § 1127. CCA claims
that it helped develop the marketing program but that it does not use the
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mark at the retail level.7 However, HCF has presented evidence that CCA
receives money from the sale of the Healthier Living® Flooring Installation
System pursuant to a master service agreement and that the suppliers are
required to use advertising designed and provided by CCA. Therefore, the
court concludes that HCF has presented evidence of the relationship between
CCA and its member stores such that a jury could reasonably conclude that
CCA has used the mark in commerce.
d. Fair Use
The defendants assert an affirmative defense of fair use to HCF’s claim
for trademark infringement. “A fair-use defense is established if a defendant
proves that its use is ‘(1) other than as a mark, (2) in a descriptive sense, and
(3) in good faith.’” Int’l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270,
1274 (11th Cir. 2006) (quoting EMI Catalogue P’ship v. Hill, Holliday,
Connors & Cosmopulos, Inc., 228 F.3d 56, 64 (2d Cir. 2000)). According to
the court of appeals, “The ‘fair-use’ defense, in essence, forbids a trademark
registrant to appropriate a descriptive term for [its] exclusive use and so
prevent others from accurately describing a characteristic of their goods.” Id.
(citation omitted).
7 CCA notes the exception of its website but states that it does not and cannot
make any sales from its website.
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HCF relies on the same evidence in support of the defendants’ lack of
good faith as it relied on for the bad faith portion of the confusion analysis.
As set forth above in Section III.C.1.b.vi of this order, a reasonable trier of
fact could find for HCF on the issue of the defendants’ good faith. However,
the remaining issues present a genuine issue for trial. HCF has cited
sufficient evidence from which a reasonable trier of fact could find that the
defendants used the phrase as a mark and not in a descriptive sense. For
example, the phrase “healthier choice” is set apart through the use of a
different color font, capitalization, and large lettering on a few of the
defendants’ advertisements. The defendants’ placement of the phrase
“healthier choice” could also lead a reasonable trier of fact to find that the
defendants used the phrase as a mark and not in a descriptive sense. Thus,
the court concludes that a rational trier of fact could find for HCF on the
defendants’ fair use defense.
e. Conclusion
The court DENIES the defendants’ motions for summary judgment
with respect to HCF’s trademark infringement claim and the defendants’
counterclaim for a declaratory judgment of non-infringement.
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2. Trademark Dilution
HCF has dismissed its federal dilution claim under the Lanham Act.
Only a claim for dilution under O.C.G.A. § 10-1-451(b) remains. The
defendants move for summary judgment on the state law dilution claim and
for summary judgment on their counterclaim for a declaratory judgment of no
dilution. The relevant statutory section states,
(b) Every person, association, or union of working men adopting
and using a trademark, trade name, label, or form of
advertisement may proceed by action; and all courts having
jurisdiction thereof shall grant injunctions to enjoin subsequent
use by another of the same or any similar trademark, trade
name, label, or form of advertisement if there exists a likelihood
of injury to business reputation or of dilution of the distinctive
quality of the trademark, trade name, label, or form of
advertisement of the prior user, notwithstanding the absence of
competition between the parties or of confusion as to the source of
goods or services, . . .
O.C.G.A. 10-1-451(b). To prevail on a theory of dilution under this provision
of the Georgia law a party does not have to prove that the trademark is
famous or that the parties are in competition. Corbitt Mfg. Co., Inc. v. GSO
America, Inc., 197 F. Supp. 2d 1368, 1379 (S.D. Ga. 2002). The party seeking
to recover must show that the asserted mark is distinctive. Id. “To be
considered distinctive, the mark must be at least descriptive with a
secondary meaning.” Id. (citing omitted).
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The defendants contend that HCF relies on a new theory of liability in
response to the defendants’ motion for summary judgment. The court has
reviewed the pleadings and the parties’ briefing and finds insufficient
support for this contention.
The next issue with respect to trademark dilution is whether
trademark registrations owned by the defendants for the phrase “healthier
living” bar HCF’s claim for dilution under O.C.G.A. § 10-1-451(b). Pursuant
to 15 U.S.C. § 1125(c)(6), ownership of a valid trademark registration is a
complete bar to state law causes of action brought with respect to that mark.
The defendants have valid trademark registrations for the Healthier Living®
mark. These valid trademark registrations bar HCF from bringing its state
law dilution claim with respect to the Healthier Living® mark.
While HCF is barred from bringing a portion of its state law dilution
claim, it may still assert a dilution claim for the defendants’ use of the phrase
“make the healthier choice.” The court cannot conclude as a matter of law
that a reasonable trier of fact could not find in favor of HCF on this claim.
First, as discussed in the section of this order addressing the validity of the
Healthier Choice® mark, there is a genuine issue for trial regarding the type
of mark at issue. Second, there exists a genuine issue for trial regarding the
similarity of the marks. Finally, the defendants have not shown that there is
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no genuine dispute of material fact regarding the actual or likelihood of harm
to HCF’s business. Accordingly, the court grants in part and denies in part
the defendants’ motion for summary judgment with respect to the claim for
dilution under O.C.G.A. § 10-1-451(b) and the counterclaim for a declaratory
judgment of no dilution.
3. Trade Dress
Section 43(a) of the Lanham Act is the statutory provision that provides
for a federal cause of action for trade dress infringement. While HCF has
dismissed many of its claims, it continues to assert a claim for trade dress
infringement that focuses on the sample carpet cushion bag and the totality
of its appearance. The defendants have moved for summary judgment on this
claim. The Eleventh Circuit Court of Appeals has held, “‘The term “trade
dress” refers to the appearance of a product when the appearance is used to
identify the producer.’” Dippin’ Dots, Inc. v. Frosty Bites Distribution, LLC,
369 F.3d 1197, 1202 (11th Cir. 2004) (quoting Publications Int’l, Ltd. v.
Landoll, Inc., 164 F.3d 337, 338 (7th Cir. 1998)). The court of appeals has
held that three things must be proven to prevail on a claim for trade dress
infringement: “(1) the product design of the two products is confusingly
similar; (2) the features of the product design are primarily non-functional;
and (3) the product design is inherently distinctive or has acquired secondary
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meaning.” Id. Each of the three elements is a threshold element because all
three elements must be established to support a finding of trade dress
infringement. Id.
The Eleventh Circuit Court of Appeals has held, “‘The functionality
doctrine prevents trademark law, which seeks to promote competition by
protecting a firm’s reputation, from instead inhibiting legitimate competition
by allowing a producer to control a useful product feature.’” Dippin’ Dots,
Inc., 369 F.3d at 1202–03 (quoting Qualitex Co. v. Jacobson Prods. Co., 514
U.S. 159, 164 (1995)). “‘Functional features are by definition those likely to
be shared by different producers of the same product and therefore are
unlikely to identify a particular producer.’” Id. at 1203 (quoting Landoll, 164
F.3d at 340). While there is not a bright line between non-functional and
functional features, courts apply either the traditional test or the competitive
necessity test to make this determination. Id. Under the traditional test, “‘“a
product feature is functional . . . if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article.”’” Id. (quoting TrafFix
Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32 (2001)). Under the
competitive necessity test, “‘a functional feature is one the “exclusive use of
[which] would put competitors at a significant non-reputation-related
disadvantage.”’” Id. (quoting TrafFix, 532 U.S. at 32).
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HCF argues that its sample bag is non-functional because the features
of the bag are not essential to its general purpose—to allow the customers to
stand on the cushion samples and to receive information regarding the
characteristics of the cushions. These features include the location and font
of the name, organization of the statements regarding the cushion, and the
squiggly lines at the bottom of the bag. While these features of the bag may
not qualify as functional under the traditional test, the court concludes that
these features qualify as functional under the competitive necessity test.
This is so because to allow HCF the exclusive use of these bag features would
put competitors at a significant non-reputation-related disadvantage.
Competitors should be allowed to prominently display the name of their
product across the top of the advertisement. Competitors should also be
allowed to use sans serif font, display the features of the carpet cushion in a
linear display, and use squiggly lines in a display.
HCF cites language from the Eleventh Circuit Court of Appeals in
which the court of appeals held, “That individual elements of packaging are
function does not, however, render the package as a whole unprotectible.”
AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1538 (11th Cir. 1986). HCF does
not provide the court with any basis to conclude that the package as a whole
is non-functional. Rather, the evidence shows that the package as a whole is
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functional. Therefore, the court concludes that no reasonable trier of fact
could find for HCF on the functional element of the trade dress infringement
analysis.
The court does not consider the remaining two elements—likelihood of
confusion and distinctiveness because HCF must satisfy each of the three
elements to prevail on his claim of trade dress infringement. Since HCF
cannot satisfy the functionality element, the defendants are entitled to
summary judgment on HCF’s claim for trade dress infringement.
4. False Advertising
The amended complaint includes a claim for false advertising pursuant
to 15 U.S.C. § 1125(a). HCF has abandoned a few of its allegations of false
advertising, but it continues to allege that the defendants’ claims regarding
the moisture resistance and the healthier nature of the Healthier Living®
carpet cushion constitute false advertising. The Eleventh Circuit Court of
Appeals has held that a claim for false advertising includes the following
elements: “‘(1) the ads of the opposing party were false or misleading, (2) the
ads deceived, or had the capacity to deceive, consumers, (3) the deception had
a material effect on purchasing decisions, (4) the misrepresented product or
service affects interstate commerce, and (5) the movant has been—or is likely
to be—injured as a result of the false advertising.’” Osmose, Inc. v. Viance,
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LLC, 612 F.3d 1298, 1308 (11th Cir. 2010) (quoting Axiom Worldwide, 522
F.3d at 1224).
a. Moisture Resistance
The burden in a claim for false advertising depends on whether the
advertisement cites consumer testing to support a claim. Osmose, Inc. v.
Viance, LLC, 612 F.3d 1298, 1309 (11th Cir. 2010). An advertisement claim
qualifies as a “tests prove” or establishment claim through the express or
implied assertion that the fact is validated by testing. Id. at n.6. In this
case, the advertisement does not expressly state that the “98% moisture
resistant . . . to block spills” claim is supported by testing. However, the use
of a specific percentage implies that the claim is supported by testing. To
show the literal falsity of a “tests prove” or establishment claim, “the plaintiff
must prove only that the tests did not establish the proposition for which
they were cited.” Id. HCF cites evidence that the defendants do not have
test results that support the moisture resistance claims of the carpet
cushions. Furthermore, the parties present conflicting evidence on the tests
that have been conducted. In this case, the court concludes that there is a
genuine issue for trial regarding the tests performed to determine the
moisture resistance of the carpet cushions. The court also concludes that
there is a genuine issue for trial regarding the remaining elements of a false
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advertising claim regarding the defendants’ use of the phrase “98% moisture
resistant . . . to block spills.” The court cannot conclude that no reasonable
trier of fact could find for HCF on this claim for false advertising.
b. Healthier
The defendants argue that the statement “healthier” is non-actionable
puffery. The defendants previously filed a motion to dismiss in which they
made the same argument [Doc. No. 83]. The court concluded that the claim
crossed the line of mere puffery into statements that are actionable under the
Lanham Act [Doc. No. 210]. The defendants have not provided any basis for
the court to reverse its earlier decision.
Unlike the previous claim, the court concludes that the “healthier”
claim used in the defendants’ advertising is not a “tests prove” or
establishment claim. To support the false advertising claim with respect to
the defendants’ use of “healthier,” HCF must show that the challenged
advertisement is literally false or literally true but misleading. Osmose, 612
F.3d at 1308. Based on the evidence cited by the parties, HCF has provided
no evidence to establish that the advertisement is literally false or true but
misleading. Accordingly, the court grants the defendants’ motion for
summary judgment with respect to this issue.
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c. Standing
The court has previously held that HCF has standing to assert a claim
for false advertising pursuant to 15 U.S.C. § 1125(a). The defendants once
again challenge HCF’s standing to assert its false advertising claim. The
United States Supreme Court recently resolved a split among circuits
concerning the proper test to determine standing to assert a claim under 15
U.S.C. § 1125(a). Lexmark Int’l, Inc. v Static Control Components, Inc., 2014
WL 1168967 (Mar. 25, 2014). The Supreme Court declined to adopt any of
the tests used by the various circuits. Id. at *10. Instead, the Supreme Court
held, “[A] direct application of the zone-of-interests tests and the proximatecause
requirement supplies the relevant limits on who may sue.” Id. With
respect to the first test, the Supreme Court held, “[T]o come within the zone
of interests in a suit for false advertising under § 1125(a), a plaintiff must
allege an injury to a commercial interest in reputation or sales.” Id. at *9.
Under the proximate-cause test, “a plaintiff suing under § 1125(a) ordinarily
must show economic or reputational injury flowing directly from the
deception wrought by the defendant’s advertising; and that that occurs when
deception of consumers causes them to withhold trade from the plaintiff.” Id.
at *10. While the Supreme Court set forth a different analytical framework
than previously employed in the Eleventh Circuit, this court arrives at the
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same conclusion regarding standing in this case. The court concludes that
HCF meets the zone-of-interests test and the proximate-cause test. HCF has
alleged an injury to its commercial interest in reputation or sales and the
harm is sufficiently close in connection to the conduct 15 U.S.C. § 1125(a)
prohibits. Therefore, HCF has standing to assert a claim for false advertising
pursuant to 15 U.S.C. § 1125(a).
5. Fraud on the PTO
The defendants have alleged that HCF made false representations to
the PTO when it filed a declaration of incontestability. The defendants move
for summary judgment on this counterclaim. As discussed previously, HCF
has also moved for summary judgment on this claim. The court addressed
this portion of HCF’s motion for summary judgment in Section III.B.1 of this
order. The court denies the defendants’ motion for summary judgment for
the reasons discussed in Section III.B.1.
6. Infringement Counterclaims
The defendants move for summary judgment on their trademark
counterclaims for infringement pursuant to 15 U.S.C. § 1125(a) and the
common law. The defendants’ trademark counterclaims concern claims for
which HCF initially asserted trademark infringement. HCF has withdrawn
its trademark claims concerning “Spill Bloc” and “BioShield.” HCF concedes
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that it initially asserted that there is a likelihood of confusion between its
“Moisture Bloc” and “Made with Bio Materials” marks and CCA’s “Spill Bloc”
and “BioShield” marks. This concession constitutes a judicial admission that
precludes HCF from contesting this issue. Go Medical Industries Pty, Ltd. v.
Inmed Corp., 300 F. Supp. 2d 1297, 1315 (N.D. Ga. 2003). However, the
defendants have not met their burden of showing that there is no genuine
dispute of material fact regarding their counterclaims. The court concludes
that there is a genuine issue for trial on the remaining elements of the
defendants’ trademark infringement counterclaims, e.g., whether there is a
protectable trademark interest and continuous commercial use. Accordingly,
the court denies the defendants’ motion for summary judgment on its
infringement counterclaims.
7. Damage Computation
DCO and Etowah’s motion for summary judgment includes an
additional argument that HCF cannot recover damages due to its failure to
disclose a computation of damages. Federal Rule of Civil Procedure
26(a)(1)(A)(iii) states that a party must provide a computation of each
category of damages claimed by the disclosing party. The court concludes
that HCF complied with this requirement in its supplemental initial
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disclosures [Doc. No. 21]. Therefore, the court denies DCO and Etowah’s
request for summary judgment on this issue.
IV. Conclusion
The court GRANTS HCF’s motion to amend the amended complaint
[Doc. No. 272]; the claims identified in the motion are dismissed with
prejudice. The court DENIES HCF’s motion to exclude expert testimony of
Donald A. Irwin [Doc. No. 216]. The court DENIES the defendants’ motion to
exclude the testimony of Michael Norton [Doc. No. 281]. The court DENIES
HCF’s motion for partial summary judgment [Doc. No. 278], GRANTS IN
PART and DENIES IN PART CCA’s motion for summary judgment [Doc.
No. 279], and GRANTS IN PART and DENIES IN PART DCO and Etowah’s
motion for summary judgment [Doc. No. 280]. The following claims remain
for trial:8
• HCF’s claim for federal trademark infringement of the Healthier
Choice® mark.
• HCF’s state law dilution claim for the defendants’ use of the phrase
“make the healthier choice.”
8 The court does not include attorney’s fees and expenses in the list of claims
that remain for trial. Attorney’s fees and expenses are prayers for relief and
not substantive claims. This ruling does not preclude the parties from
seeking attorney’s fees and expenses as a form of relief.
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• HCF’s false advertising claim related to the defendants’ use of the
phrase “98% moisture resistant . . . to block spills.”
• The defendants’ counterclaim for a declaratory judgment of noninfringement.
• The defendants’ counterclaim for a declaratory judgment of no dilution.
• The defendants’ counterclaim for federal trademark infringement.
• The defendants’ counterclaim for common law trademark infringement.
• The defendants’ counterclaim for fraud on the PTO.
The parties are directed to file their joint proposed pretrial order within 30
days of the date of this order.
SO ORDERED this 31st day of March, 2014.
/s/Charles A. Pannell, Jr.
CHARLES A. PANNELL, JR.
United States District Judge
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