Defending Trademark Infringement & Cyberpiracy

My client was sued for trademark infringement and cyberpiracy.  The United States District Court for the District of Maryland granted summary judgment and the Fourt Circuit Court of Appeals Affirmed in B&J Enters. v. Giordano, 329 F. App’x 411, 417 (4th Cir. 2009).  Below is my brief to the Fourth Circuit Court of Appeals.

STATEMENT OF FACTS

The domain name: www.washingtontalentagency.com is the trade name that is the subject of this lawsuit.

The Defendant Albrecht Entertainment Service, Inc. is the registered owner of the domain name www.washingtontalentagency.com. Defendant Albrecht Entertainment Service, Inc. is a corporation organized under the laws of the Commonwealth of Virginia trading as USA Talent Agency. On or about September 15, 2004, Albrecht Entertainment Service, Inc. bought and registered the domain name “usatalentagency.com”.

Albrecht Entertainment Service, Inc., trading as USA Talent Agency provides entertainment services in Colorado, Virginia, Maryland, Washington DC and the surrounding region. (A28). On the advice of their website developer, on or about January 28, 2005, Defendant Albrecht Entertainment Service, Inc. bought and registered the domain names “washingtontalentagency.com”, “marylandtalentagency.com”, “virginiatalentagency.com” and “coloradotalentagency.com” to reflect the geographic areas of their services. (A42, 28-29, 80). Each website is used as a portal site directing visitors to the parent site: “usatalentagency.com” (A43, 29, 80).

Defendant Ken Giordano, a resident of the State of Colorado, is the President of Albrecht Entertainment Service, Inc.

Plaintiff is a corporation organized under the laws of Maryland and has been trading as “Washington Talent Agency” since 1967. (A85).

Sometime after June 2005, Plaintiff contacted Defendants to attempt to purchase the domain name “washingtontalentagency.com” (A104-105).

On July 10, 2006, after filing this lawsuit, Plaintiff filed an application to register the mark “Washington Talent Agency” with the United States Patent and Trademark Office (“USPTO”). (A89). On December 25, 2007, the USPTO published the mark for opposition. On January 24, 2008, Defendant filed an opposition with the USPTO alleging, inter alia, that the claims and assertions regarding the mark were misstated and/or fraudulent.

SUMMARY OF ARGUMENT

To prevail on a claim for trademark infringement, Plaintiff must demonstrate that it has a valid, protectable trademark and that the Defendant’s use of the trademark is likely to cause confusion among consumers. The disputed term “Washington talent agency” is geographically descriptive and thus not deserving trademark protection unless it has achieved secondary meaning (1) in the Defendants’ trade area and (2) prior to the time the Defendant entered the market.

In determining secondary meaning the Fourth Circuit considers the following factors in determining whether secondary meaning exists: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.

When viewing the evidence in the aggregate and in the light most favorable to Plaintiff, they have not met their burden to prove that the mark has achieved secondary meaning within the eyes of the consuming public. No reasonable fact finder could find that Plaintiff had a valid trademark in the geographically descriptive term, “Washington talent agency.”
Since Plaintiff has failed to introduce evidence sufficient to prove secondary meaning, their claim under the Anticybersquatting Consumer Protection Act (“ACPA”) 15 U.S.C. § 1125(d) must also fail. To establish a prima facie case under ACPA Plaintiff must prove in relevant part that: it has a valid trademark entitled to protection and Defendants had registered the domain name with bad faith intent to profit. A prerequisite for bringing a claim under the ACPA is establishing the existence of a valid trademark and ownership of that mark.
Plaintiff was given a second chance to produce acceptable evidence to overcome a motion for summary judgment. Plaintiff failed to do so. The District Court properly granted Defendants’ motion for summary judgment and denied Plaintiff’s motion.

ARGUMENT

I. The unsworn letters were properly stricken, however, the letters, even if considered, are not enough to prove secondary meaning.

In support of Plaintiff’s motion for reconsideration of the grant of summary judgment, Plaintiff collected seven unsworn “consumer testimonial letters…to add weight to the previously submitted affidavits”. (A247, A303-310). Defendant moved to strike the unsworn statements (A263) which was granted by Memorandum and Order (A268).

The seven unsworn letters submitted by Plaintiff were properly excluded. This Court has consistently ruled that “it is well established that unsworn, unauthenticated documents cannot be considered on a motion for summary judgment.” Orsi v. Kirkwood, 999 F.2d 86, 92 (4th Cir. 1993) citing Hal Roach Studios, Inc. v. Richard Feiner and Co., 896 F.2d 1542, 1550-51 (9th Cir. 1990); Martz v. Union Labor Life Ins. Co., 757 F.2d 135, 138 (7th Cir. 1985). The unsworn letters do not qualify as affidavits and should not be considered by the Court when ruling on a motion for summary judgment. See First Nat’l Life Ins. Co. v. California Pacific Life Ins. Co., 876 F.2d 877, 881 (11th Cir. 1989); Davis v. Howard, 561 F.2d 565, 569 (5th Cir. 1977). “The arguments of counsel, absent any evidence such as sworn affidavits accompanying objections to a motion for summary judgment, fail to meet the evidentiary standard necessary to create a genuine issue of material fact.” Roundtree v. Fairfax County School Bd., 933 F.2d 219, 223 (4th Cir. 1991).

Plaintiff cites Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986) for the proposition that the unsworn letters should have been considered by the District Court in ruling on the motion to reconsider.(Appellant Brief at page 10). However, Plaintiff misinterpreted the holding and provided an incomplete quotation. The entire quotation as stated by the Celotex Court says in relevant part:

We do not mean that the nonmoving party must produce evidence in a form that would be admissible at trial in order to avoid summary judgment. Obviously, Rule 56 does not require the nonmoving party to depose her own witnesses. Rule 56(e) permits a proper summary judgment motion to be opposed by any of the kinds of evidentiary materials listed in Rule 56(c) , except the mere pleadings themselves, and it is from this list that one would normally expect the nonmoving party to make the showing to which we have referred. Celotex, 477 U.S. at 324 (emphasis added).

The holding by the Celotex Court did not expand Rule 56(c) to allow unauthenticated and unsworn documents when opposing a motion for summary judgment. The Court was explicit in saying that the nonmoving party must rely on the evidentiary materials listed in Rule 56(c). The unsworn letters submitted by Plaintiff are not the kinds of evidentiary materials listed in Rule 56(c). They were unsworn and thus could not be considered on summary judgment. It should also be noted that Plaintiff was given multiple opportunities to provide sufficient evidence that complied with Rule 56. As the District Court stated in is Memorandum and Order striking the unsworn statements:

“It is unfortunate that, in view of the history of this case in which Plaintiff’s counsel have been given one final chance to present evidence to avoid summary judgment, they would not have taken the minimal step of having the authors of the letters add thereto an endorsement signed under penalties of perjury.” (A269).

In response to the Order striking the unsworn statements, Plaintiff filed a document on December 20, 2007 entitled “Supplement to Plaintiff’s Motion for Reconsideration” (A271) and attached six affidavits (A273-284). The District Court conditioned the reconsideration of the grant of summary judgment on Plaintiff’s submission of evidence, by October 22, 2007, adequate to establish the existence of a genuine issue of material fact preventing summary judgment for Defendants. (A242). It was almost two months past that deadline when Plaintiff, yet again, was attempting to correct there evidentiary shortcomings.

Even though the affidavits were tardy and not admitted into evidence, the District Court, contrary to Plaintiff’s assertions, addressed the sufficiency of the affidavits stating: “This proffered evidence, consisting of five affidavits, would—even if considered—not change the Court’s conclusion.”(A297).

If, however, this Court is inclined to accept the unsworn letters and or tardy affidavits with equal weight, the limited number (seven letters and two affidavits) does not establish that a substantial portion of the consuming public associates “Washington Talent Agency” with Plaintiff’s particular business. See, Dick’s Sporting Goods, Inc. v. Dick’s Clothing & Sporting Goods, Inc., 1999 U.S. App. LEXIS 19942 (4th Cir. 1999)(unpublished)(“No reasonable juror could find that 65 checks and 15 affidavits connote that a substantial portion of the consuming public associated the trade name “Dick’s” or “Dick’s Sporting Goods” with Sporting’s business as of 1989.”); Master, Wardens, etc. v. Cribben & Sexton Co., 202 F.2d 779, 784 (C.C.P.A. 1953) (Mere affidavit of applicant together with testimony of several witnesses does not constitute sufficient basis for registration of geographical term.); In re Soccer Sport Supply Co., 507 F.2d 1400, 1404 (C.C.P.A. 1975) (four affidavits from purchasers were not sufficient evidence of secondary meaning).

Of the five affidavits, only one states that the words “Washington talent agency” acquired a secondary meaning. This vice president of a D.C. area party planning business, Gala Event’s, Inc., stated in relevant part, “Washington Talent is and has been synonymous with entertainment and talent in the Washington, D.C. Metropolitan area as far back as we can remember.” (A273). The opinion of one person, even if admissible, would by no means be sufficient to raise a factual issue as to the existence of a secondary meaning.

This conclusion is on point with the District Court’s ruling. Pursuant to established holdings by this court and other jurisdictions, the unsworn letters were properly stricken and should not be considered as evidence supporting secondary meaning. The decision of whether to admit the tardy affidavits was in the sound discretion of the trial judge. Given the history of this litigation and the ample opportunities afforded to Plaintiff to support their case, the tardy affidavits along with the unsworn letters were properly excluded and should not be considered by this Court.

II. The Motion for Summary Judgment in favor of Defendants was proper given Plaintiff’s failure to provide evidence sufficient to prove that their mark has achieved secondary meaning

A. Plaintiff’s Term is Not Protectable

In order to prevail in an action for service mark infringement and unfair competition, a plaintiff must “first and most fundamentally prove that it has a valid and protectable mark.” U.S. Search, LLC v. U.S. Search.com, Inc., 300 F.3d 517, 523 (4th Cir. 2002) citing Microstrategy Inc. v. Motorola, Inc., 245 F.3d 335, 341 (4th Cir. 2001).

In this case “Washington Talent Agency’ is not a protectable term, it is geographically descriptive. A descriptive mark may be eligible for protection, but only if it has acquired a “secondary meaning” in the minds of the public.” U.S. Search, 300 F.3d at 523 (citations omitted). See also Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 595 (6th Cir. 1989). (“A geographically descriptive term is not inherently distinctive, and thus cannot receive trademark protection unless it has achieved secondary meaning.”)

B. Plaintiff’s term has not acquired a secondary meaning

This Court in Resorts of Pinehurst defines secondary meaning of a geographically descriptive mark as “the public’s association of the goods with a particular source as opposed to a particular place.” Resorts of Pinehurst, Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417, 421 (4th Cir. 1998). A “geographically descriptive term lacks secondary meaning if it still primarily denotes a geographic area, as opposed to a single source.” U.S. Search, 300 F.3d at 525 citing Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 595 (6th Cir. 1989). Therefore, it cannot receive trademark protection unless the Plaintiff can show that the term has acquired secondary meaning. It is the Plaintiff’s burden to show “secondary meaning (1) in the Defendants’ trade area and (2) prior to the time the Defendant entered the market.” Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125-126 (4th Cir. 1990) citing N. Hess’ Sons, Inc. v. Hess Apparel, Inc., 738 F.2d 1412, 1413 (4th Cir. 1984) (per curiam).

Defendant purchased the domain “www.washingtontalentagency.com” in January 28, 2005. (A28) Plaintiff must show that their use of the trade name “Washington Talent Agency” had acquired secondary meaning in the Washington metro area prior to January 28, 2005.
The Plaintiff failed on the motion for summary judgment and on the motion to reconsider to show that the consuming public believes that the mark, when used in context, refers not to a particular place—Washington, D.C., but to the particular business that the mark is meant to identify.

“Secondary meaning exists if in fact a substantial number of present or prospective customers understand the designation when used in connection with a business to refer to a particular person or business enterprise.” Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301 F.2d 156, 160-61 (4th Cir.), cert. denied, 371 U.S. 817, 83 S. Ct. 31, 9 L. Ed. 2d 58 (1962). In the case of a trade name, secondary meaning is “the power of a name . . . to symbolize a particular business.” Perini Corp., 915 F.2d at 125 (citations omitted).

The Fourth Circuit considers the following factors in determining whether secondary meaning exists: “(1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.” U.S. Search, 300 F.3d at 525 quoting Perini Corp., 915 F.2d at 125.

Advertising Expenditures
When asked about advertising expenditures, Plaintiff originally stated that they spent “roughly $100,000 in fiscal year 2005” but they are unable to allocate the spending between the Plaintiff’s different trade names. (A91 at 11-16). No other evidence was offered to prove that amount until Plaintiff’s motion for reconsideration.

Plaintiff, in support of their motion for reconsideration, produced, under seal, Tax returns for the years 1970-1977, 1980-1981, 1997-2004 and Profit and Loss statements From September 1998 to August 2007. Since Defendant’s entered the market on January 28, 2005 any evidence of advertising expenditures after that date should be excluded.

From 1998 – 2003, Plaintiff claimed tax deductions of varying amounts. However, Plaintiff has still offered no proof of where that claimed advertising deduction was spent. Even examining the corresponding P&L statements fails to shed light as to where the claimed deduction was spent on advertising. The P&L Statements list a subcategory of “Marketing Expense – Other” where the bulk of the expense is listed. Plaintiff, yet again, has failed to provide evidence of how they spent “hundreds of thousands of dollars advertising the name Washington Talent Agency”. Plaintiff does offer one unsworn letter from the Washingtonian Magazine Classifieds Advertising Manager that “Washington Talent Agency has been advertising with us since March 2000 and has run ad every month during that time.”(A310). But again, Plaintiff does not provide copies of any of the advertisements that have run in the Washingtonian, nor do they provide a single invoice for these ads.

Defendants were able to track down a 2005 copy of the Washingtonian Magazine at the public library (A142). The ad consists of 23 words of black text on a white background. The rate for the advertisement is $4.20 per word. (A143). Since Plaintiff has failed to provide copies of these advertisements, Defendant assumes that this is the same or very similar ad that allegedly ran each month. If that is the case, the annual cost was at most $1,159.20. However, as the court will note on the rate card, the magazine offers a “frequency discount” for advertisers with 12 consecutive insertions, so their actual annual cost was less. (A143).

Most telling is that Plaintiff has failed to offer the Washingtonian advertisement or any other proof of where these advertising deductions were actually spent. Additionally, Plaintiff refuses or is unable to explain how their advertising efforts were effective in causing the relevant group of consumers to associate the mark with the Plaintiff. The tax returns and P&L statements, without backup documentation, are not sufficient evidence of advertising expenditures. Plaintiff also submitted “advertising proofs” that allegedly were used to advertise Plaintiff’s services. (A156-172). Plaintiff again, is either unable or unwilling to state how and where those proofs were used to advertise Washington Talent Agency. Despite specific requests, plaintiff has failed to produce evidence of a single example of an advertisement that was actually published. The advertising proofs, without evidence of time and place of publication, are of little evidentiary value. Even though Plaintiff’s President states that the “advertising copy submitted to the Court are actual ads that ran in various print media over the years.” (A275). The affidavit does not identify the media in which the ads ran or the dates of the alleged publications.

Even if this Court were to conclude that Plaintiff’s advertising expenditures were significant, Plaintiff has failed to show that its expenditures were effective in causing consumers in the region to associate the trade name “Washington Talent Agency” with Plaintiff’s business. This Court, in line with other jurisdictions, has ruled that “large advertising or promotional expenditures do not contribute to establish secondary meaning unless the party explains how its efforts were effective in causing the relevant group of consumers to associate the mark with itself.” Dick’s Sporting Goods, Inc. v. Dick’s Clothing & Sporting Goods, Inc., 1999 U.S. App. LEXIS 19942, No. 98-1653, 1999 WL 639165, at *7 (4th Cir. Aug. 20, 1999) citing FM 103.1, Inc. v. Universal Broadcasting of New York, Inc., et al., 929 F. Supp. 187, 196 (D.N.J. 1996) (Large advertising or promotional expenditures do not contribute to establish a secondary meaning unless the party explains how its efforts were effective in causing the relevant group of consumers to associate the mark with itself.). “While evidence of advertising may be relevant,” the mere expenditure of money is not, in itself, determinative of the actual result in buyers’ minds.” 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 15:51 (4th ed. 1997). See also, Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387, 393 (7th Cir. 1992) (holding that “evidence of sales, advertising and use” of a mark did not, alone, prove that a mark “indicates a single source to the relevant consuming public”); cf. DuPont Cellophane Co. v. Waxed Prods. Co., 85 F.2d 75, 81 (2d Cir. 1936) (“It, therefore, makes no difference what efforts or money the [party] . . . expended in order to persuade the public that [its mark] means an article of [that party’s] manufacture. So far as it did not succeed in actually converting the world to its gospel it can have no relief.”); Aloe Creme Labs., Inc. v. Milsan, Inc., 423 F.2d 845, 850 (5th Cir. 1970) (“it must be remembered that the question is not the extent of the promotional efforts, but their effectiveness in altering the meaning of [the trademark] to the consuming public.”).

Plaintiff has failed to offer any evidence, other than claimed deductions, of the extent of their advertising efforts. They have either refused or are unable to offer evidence that shows the effectiveness of their alleged advertising and where and when the money was spent on advertising. The mere expenditure of money alone is insufficient to support secondary meaning.

Consumer Studies
Plaintiff would only acquire secondary meaning if a substantial portion of the consuming public were to associate the term with a particular business. Perini Corp., 915 F.2d at 125.
Though no single factor is determinative, “survey evidence is generally thought to be the most direct and persuasive way of establishing secondary meaning.” U.S. Search, 300 F.3d at 526 n.13 (citations omitted).

Plaintiff has offered no consumer surveys. However, as discussed at length above, Plaintiff’s unsworn letters and tardy affidavits do little, if anything to prove secondary meaning.

Unsolicited Media Coverage of the Product
Plaintiff has submitted a June 2005 Gazette article in an attempt to offer evidence of unsolicited media coverage.(A139). Since the article was published in June 2005 after Defendant had already entered the market in January 28, 2005 the article should not be considered when determining secondary meaning. See, Perini Corp., 915 F.2d at 125-126 (citations omitted). While Plaintiff would like this Court to review this article as support to their claim that they have “provided services to highly celebrated individuals” (Brief of Appellant at page 25), the article is about a band named Onyx not about Plaintiff. Plaintiff merely manages the band. The band performed for the celebrities, not Plaintiff.

Plaintiff’s only admissible evidence of unsolicited media coverage is a 1983 High School newspaper article that mentions Washington Talent Agency. The fact that Plaintiff was mentioned in a High School newspaper in 1983 is not sufficient evidence to establish that a substantial portion of the consuming public associates “Washington Talent Agency” with Plaintiff’s particular business. Plaintiff complains that finding evidence of unsolicited media coverage prior to January 1, 2005 (less than a year and a half prior to the Complaint being filed) is overly burdensome. Plaintiff bears the burden of proving that they have a protectable mark to the exclusion of all others. Defendants find it hard to believe that in the 41 years of the use of the name Washington Talent Agency that Plaintiff, if they were in fact mentioned in any media coverage, didn’t save a copy. The evidence shows that for the twenty-two years prior to Defendants’ entry into the market, the media in Washington, D.C. area contained not even a single reference to “Washington Talent Agency” as a source for entertainment talent.

Length and exclusivity
While Plaintiff has used the name for a considerable length of time, this court has already held that “length of time alone is insufficient to establish secondary meaning.” U.S. Search, 300 F.3d at 526 note 12.

Perini Corp. v. Perini Const., Inc.
Plaintiff relies heavily upon Perini Corp. v. Perini Const., Inc., 915 F.2d 121 (4th Cir. 1990) to support their argument that they have achieved secondary meaning as discussed above. The Perini court set forth the following relevant factors to determine whether secondary meaning exists in the eyes of the consuming public: “(1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark’s use.” U.S. Search, 300 F.3d at 525 quoting Perini Corp., 915 F.2d at 125.

Plaintiff argues that the above factors were not relied on by the Perini court and as such this court should not rely on those factors in the present case. However, Plaintiff’s reliance on Perini is distinguishable. While the court in Perini did say that some of the above factors were not considered, the court found the following substantial evidence to determine that the Perini Corporation name had acquired secondary meaning:

Perini Corporation has used the surname in a corporate name since 1918 and in its current form since 1957. During World War II, Perini Corporation worked on numerous projects in Maryland and Pennsylvania for the U.S. Amy Corps of Engineers. In the mid-Atlantic region, Perini Corporation’s volume of sales prior to 1970 exceeded $ 100 million. In 1963, Perini Corporation was ranked second among 81 top U.S. contractors based on $ 279 million of new contracts in 1962. In 1964, Perini Corporation was ranked 13th of the nation’s top 400 contractors. It built the world’s tallest office building outside of New York City when it built the Prudential Tower in Boston in 1964. Indeed, the defendant’s founder, Dominick Perini, said that by 1970, when he formed the defendant company in Hagerstown, Maryland, he had heard of Perini Corporation through its involvement with the Boston Braves as well as its construction activities. Further, evidence showed that Perini Corporation enjoyed free publicity on a national basis throughout the 1950’s and 60’s. Perini, 915 F.2d at126.

Perini Corporation had attained national prominence based on their construction achievement, their national rankings within the industry and the free national publicity that they enjoyed. Plaintiff cannot make that same argument. Even relying on Perini factors, Plaintiff fails to meet their burden of showing that the term “Washington Talent Agency” has acquired secondary meaning. The record is devoid of any evidence of any events Plaintiff has been hired to perform. Plaintiff offers no evidence of peer rankings. Plaintiff has offered no evidence of industry awards or recognition. Plaintiff offers no evidence that they headline or sponsor any large events in the area. Unlike Perini Corporation, Plaintiff’s sales success was not publicized and ranked in the industry (in fact sales success remains a closely guarded secret since Plaintiff’s sales figures remain under seal). And, unlike Perini, the Defendant testified that he had not heard of Plaintiff prior to this dispute. (A29). Even when looking beyond the Perini factors, the evidence in the record even when viewed in the light most favorable to the Plaintiff fails to establish that Plaintiff has achieved secondary meaning in the eyes of a substantial number of the consuming public.

Plaintiff is attempting to claim a trademark on a geographically descriptive term, to the exclusion of all others , based on seven letters and/or affidavits, several years of tax returns and unsubstantiated tax deductions for advertising.

Miscellaneous
Plaintiff attaches copies of letterhead, copies of contracts, mail, agency licenses and a chamber of commerce certificate. (A144-155). While these exemplars prove that Plaintiff is in business, they carry no weight to establish that Plaintiff has achieved secondary meaning in the eyes of the public.

U.S. Patent and Trademark Office Filing
Plaintiff would like this Court to consider the decision of one trademark examining attorney as evidence of secondary meaning and that the decision of the trademark attorney to publish the mark for opposition should be viewed as that of a reasonable juror. This argument fails for two reasons.

First, the application for a trademark is not adversarial until the mark is published for opposition. Thus the evidence reviewed by the USPTO is one sided and unopposed. Plaintiff took advantage of that procedure and made mischaracterizations as to the exclusivity of their use for the five years prior to application. As soon as Defendant was able, they filed an opposition alleging, inter alia, that Plaintiff fraudulently mischaracterized that they had continuous and exclusive use of the mark for the five years prior to filing the application. That statement to the USPTO was false since Defendant began using the mark before Plaintiff made application and adverse use by a competitor such as Defendant during the required five year period precludes registration under the length of use clause. See Charles Dennehy & Co. v Robertson, Sanderson, & Co., 32 App DC 355 (1909) (Registration under length of use clause would be denied where evidence showed that applicant had not had exclusive use of mark for requisite period.); In re Hoff, 33 App DC 233 (1909) (To authorize registration of nontechnical trademark, applicant had to have had sole use of mark, to exclusion of all others, for required statutory period.); C. A. Gambrill Mfg. Co. v Waggoner-Gates Milling Co., 38 App DC 532 (1912) (Opposition to registration under length of use clause precluded registration where opposer showed that applicant did not possess exclusive use of mark for required period.); E. McIlhenny’s Son v B. F. Trappey & Sons, 51 App DC 273, 278 F 582 (1922); Ostermoor & Co. v International Bedding Co. 57 App DC 114, 18 F2d 156 (1927) (Adverse use within single state during required period was sufficient to prevent registration). Additionally, the USPTO has held that the five-year proviso of the Lanham Act does not imply that evidence that a notation which is inherently incapable of functioning as trademark by indicating origin can be made a legal and registrable trademark by proving continuous use for 5 years. See Schulmerich Electronics, Inc. v J. C. Deagan, Inc, 40 CCPA 857, 202 F2d 772, 97 USPQ 141 (1953). It is Defendants contention that if this false statement had been exposed to the examining attorney, the mark would have never been published.
Second, the Forth Circuit has already rejected Plaintiff’s arguments that the USPTO findings should be considered. In America Online, Inc. v. AT&T Corp., 243 F.3d 812, 816 (4th Cir. 2001) this Court considered the question of whether, in a federal trademark infringement action, a district court should afford Chevron-type deference to the USPTO’s determination that a given mark is registrable. The court rejected the application of Chevron deference stating that “Congress left no doubt that the PTO’s decisions regarding registrations fall under the supervision of federal courts” Id. at 817; See also, Retail Servs. v. Freebies Publ’g, 364 F.3d 535, 543 (4th Cir. 2004).

The Fourth Circuit has refused to consider the views of the USPTO in a trademark infringement action, and this case should be no different. We do not know under what basis the examiner published the mark for opposition. But it is undisputed that the mark has been opposed and Defendant will mount a vigorous defense of their use of the mark.
In this case, Plaintiff still has the burden to show that the mark has become distinctive by proving that the mark has acquired secondary meaning within the minds of a significant portion of the consuming public. And as discussed, ad nauseam above, using the Perini factors, Plaintiff has failed.

III. The District Court properly denied Plaintiff’s Motion for Summary Judgment.

To establish a prima facie case under the Anticybersquatting Consumer Protection Act (“ACPA”) 15 U.S.C. § 1125(d), Plaintiff must first prove that “it has a valid trademark entitled to protection.” Maruti.com v. Maruti Udyog Ltd., 447 F. Supp. 2d 494, 497 (D. Md. 2006) citing DaimlerChrysler v. The Net, Inc., 388 F.3d 201, 204 (6th Cir. 2004).

In this case, the first element for a claim under the ACPA fails. Plaintiff based its motion for summary judgment under the assumption it had a protected mark. As argued above, Plaintiff does not have a “a valid trademark entitled to protection.” Therefore, the Plaintiff has failed to meet the prerequisite for bringing a claim under the ACPA. Maruti.com, 447 F. Supp. 2d at 497-498; See also, Retail Servs., 364 F.3d at 549 (“a prerequisite for bringing a claim under the ACPA is establishing the existence of a valid trademark and ownership of that mark.”).

Assuming arguendo, that the court finds that Plaintiff’s term, “Washington Talent Agency” is entitled to protection, a claim under the ACPA would still fail as Plaintiff has not established that Defendants’ had registered the domain name “washingtontalentagency.com” with a bad faith attempt to profit.

The ACPA allows a court to view the totality of the circumstances in making the bad faith determination. 15 U.S.C. § 1125(d)(1)(B)(i), see Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 270 (4th Cir. 2001) . In this case Plaintiff offers no evidence either direct or circumstantial that Defendants acted with bad faith. Plaintiff’s allegation of bad faith is based upon their unsubstantiated belief that Defendants had knowledge that Plaintiff existed prior to the registration of the domain name. (A106).

When asked in interrogatories to provide facts supporting Plaintiff’s allegation of bad faith, Plaintiff answered:

“Plaintiff objects to this interrogatory in so far as it seeks attorney work product and calls for speculation. Without waiving said objection, Plaintiff states that Defendant is a competitor of the Plaintiff, that Defendants has[sic] operated a competing business in the area during the time Plaintiff has used the name Washington Talent Agency, that Defendants had seen Plaintiff’s advertising and website (www.washingtontalent.com), and despite this knowledge Defendants proceeded to register the domain name identical to Plaintiff’s trade name, and that after being contacted by Plaintiff regarding the name, Defendants persisted in its use.” (A132).

Defendant, Albrecht Entertainment Service, Inc., trading as USA Talent Agency, purchased the website www.washingtontalentagency.com as well as three other regional websites based on the recommendation of their web developer. (A80, A42-43).

Plaintiff has failed to offer any evidence to the contrary. Plaintiff has not established Defendants’ bad faith attempt to profit from using the term “Washington Talent Agency” by a preponderance of the evidence. Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 225-27 (4th Cir. 2002) (preponderance of evidence standard applies in ACPA claim).
Since “Washington Talent Agency” is not a protectable term and Plaintiff has failed to prove by a preponderance of the evidence that Defendant acted with bad faith, Plaintiff’s motion for summary judgment should be denied.

IV. Attorney’s Fees

Pursuant to Local Rule 46(e), Defendant is claiming attorney’s fees. The Lanham Act permits an award of reasonable attorneys’ fees to the prevailing party in “exceptional cases.” 15 U.S.C.A. § 1117(a). Under this standard, a prevailing defendant may recover fees based on “a showing of something less than bad faith.” Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 144 (4th Cir. 2000) (internal quotation marks omitted). Relevant considerations include “economic coercion, groundless arguments, and failure to cite controlling law.” Id. (internal quotation marks & alteration omitted). In assessing a plaintiff’s conduct when the defendant prevails, the court must focus on the plaintiff’s “litigation conduct or pre-litigation assertion of rights.” Retail Services, Inc., 364 F.3d 535 at 550-551.

In this case, Plaintiff filed suit claiming that Defendant’s infringed upon their mark. The mark in question is geographically descriptive and thus un-protectable. During the initial discovery requests, Plaintiff was specifically asked to produce any evidence that would indicate that the term “Washington talent agency” was protectable and or had achieved secondary meaning. Plaintiff was unwilling or unable to provide any evidence that would support a claim of trademark infringement. Plaintiff instead hid behind blanket objections and alleged privilege. (A175-181). Under an impending motion to compel discovery (A3 docket number 23) Plaintiff filed a supplemental answer to Defendants’ interrogatories (A129). Again, after stating blanket objections and claimed privileges again, Plaintiff provided no recognized basis for claiming their use of the words “Washington talent agency” had achieved secondary meaning (A132, No. 12). Plaintiff provided minimal evidence during the motion for summary judgment and was given a second chance to produce this evidence that they failed to produce in discovery. In support of their motion to reconsider, Plaintiff filed unsworn letters and/or tardy affidavits requiring unnecessary responses by Defendants. Plaintiff’s tax returns and profit and loss statements show that they have deep pockets and can endure lengthy litigation. (A311-346). Defendant, on the other hand, is a sole proprietor working out of his house. (A37). Such tactics and complete failure to produce any supporting evidence strongly suggests that this litigation is an attempt to coerce Defendant into giving up the domain name. (A311-346).

Further supporting economic coercion in this case is the groundless arguments propounded by Plaintiff in this appeal. This Court has consistently held that unsworn letters are not considered in a motion for summary judgment. Controlling law in this jurisdiction also makes clear that this court does not defer to the USPTO in trademark infringement cases.
Plaintiff has no greater right to “Washington talent agency” than any other person. The record in this case and the actions of Plaintiff show economic coercion and groundless arguments. This conduct is clearly within the realm for awarding defendant’s fees as contemplated by the statute and controlling law. As such Defendant is entitled to attorney’s fees in the amount of $22,946.40 and will be filing that request by separate motion to be supported by a detailed itemization and affidavit.

CONCLUSION

For the foregoing reasons, Appellees respectfully requests that this Court affirm the Judgment Order of the District Court and award attorney’s fees to Defendant.

REQUEST FOR ORAL ARGUMENT

Defendants-Appellees request oral argument. This case presents legal questions involving the sufficiency of the evidence required to overcome summary judgment and the weight that should be accorded to evidence presented to support secondary meaning.

Respectfully Submitted,

William D. Day
Attorney for Appellees