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CLINE v. 1-888-PLUMBING GROUP

May 25, 2001

BETH CLINE, PLAINTIFF,
v.
1-888-PLUMBING GROUP, INC, FRANK CAMPISI, AND BRUNI AND CAMPISI PLUMBING AND HEATING, INC., DEFENDANTS.



The opinion of the court was delivered by: Ward, District Judge.

OPINION

Plaintiff Beth Cline cross-moves for summary judgment pursuant to Rule 56, Fed.R.Civ.P. Defendants 1-888-PLUMBING Group, Inc. ("Plumbing Group"), Frank Campisi, and Bruni & Campisi Plumbing and Heating, Inc. ("BCPHI") cross-move to amend their pleadings pursuant to Rule 15(b), Fed.R.Civ.P., and for summary judgment. For the following reasons, Plaintiffs cross-motion is denied and Defendants' cross-motion is granted in part and denied in part.

BACKGROUND

The Amended Complaint alleges that Defendants infringed on Plaintiff's registered service mark "1-800-PLUMBING" in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); diluted her allegedly famous mark in violation of the Federal Trademark Dilution Act of 1995 ("FTDA"), 15 U.S.C. § 1125(c); committed cyberpiracy in violation of the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d); caused a likelihood of injury to her business reputation and dilution of her allegedly distinctive mark in violation of New York General Business Law ("N.Y.Gen.Bus.Law") § 360 et seq.; and performed deceptive acts and practices in violation of N.Y. Gen. Bus. Law §§ 133 and 349 et seq.*fn1 The claims arise out of Defendants' alleged use of the toll-free telephone number "1-888-PLUMBING," and the registration and alleged use of eight internet domain names: www.1-800-plumbing.com, www.800-plumbing.com, www.800plumbing.com, www.888-plumbing.com, www.888plumbing.com, www.1-888-plumbing.com, www.tripleeightplumbing.com, and www.triple8plumbing.com.

Plaintiff began her plumbing business in 1991 in Maryland where she is a licensed Master Plumber-Gas Fitter. Her business was, and has remained, a sole proprietorship with no employees. In addition to Maryland, Plaintiff performs plumbing services in various locations including California, the District of Columbia, Massachusetts, New York, Pennsylvania, and Virginia. The quantity of work she performed in these states is in dispute.

In February 1992, Plaintiff began using as her business telephone number, and continues to use, the toll-free telephone number 1-800-758-6246, corresponding to 1-800-PLUMBING. She filed the mark 1-800-PLUMBING with the Patent and Trademark Office ("PTO") in February 1992. Over one year later, on June 1, 1993, the PTO placed the service mark on the principal register.*fn2 Since 1992 Plaintiff has advertised and promoted 1-800-PLUMBING by, among other things, affixing the mark to her truck, distributing flyers and business cards at events, and advertising on local radio and in newspapers. The amount of advertising by Plaintiff in these various media is in dispute.

Campisi is the sole officer and director of Plumbing Group, a New York corporation incorporated on April 29, 1998. He is also the secretary, treasurer, and director of BCPHI, a New York corporation incorporated on October 4, 1979.

Someone placed a telephone call from Campisi's residence to 1-800-PLUMBING on November 27, 1996. The parties do not agree on who made the call or what was discussed. Ten days later, on December 7, Campisi registered in his own name the eight subject internet domain names with Network Solutions, Inc. ("Network Solutions"), a company that processes and maintains records of domain name registrations. On January 8, 1997, another telephone call was placed from Campisi's residence to 1-800-PLUMBING. Again, the subject matter of the conversation and the identity of the caller are in dispute.

Plaintiff filed a complaint with Network Solutions in April 1997, alleging that Campisi's domain name 1-800-plumbing.com infringes on her registered service mark. Network Solutions initiated an internal proceeding pursuant to its Domain Name Dispute Policy and sent Campisi notification of the proceeding on September 3, 1998. The proceeding is "on-hold" pending resolution of this case.

On May 6 and 7, 1998 and January 12, 1999, additional telephone calls were made from Campisi's residence to 1-800-PLUMBING, the subject matter of which is again disputed. During the months of June and July 1998, Plaintiff sent and Campisi received "cease and desist" letters which included a copy of her registration certificate from the PTO.

Plumbing Group entered into a contract on August 1, 1998 with Tele-Name Communications, Inc. ("Tele-Name") for the use of the toll-free telephone number 1-888-758-6246, which corresponds to 1-888-PLUMBING. The contract listed the local telephone number of BCPHI's offices as the "Terminating Telephone Number," the number to which calls made to 1-888-PLUMBING would be routed. Initially, all calls made to 1-888-PLUMBING were routed to BCPHI's offices; at some point thereafter they were routed to Plumbing Group. The contract also permitted Tele-Name to post a web page on the internet promoting 1-888-PLUMBING for an additional fee. For a period of time Tele-Name did post such a web page on the internet. However, whether Defendants authorized or otherwise caused the web page to be posted is in dispute.

In November and December 1998, and in January 1999, articles appeared in two mechanical contracting industry magazines containing interviews with Campisi. In the articles Campisi described Plumbing Group's plans to market and license the toll-free number 1-888-PLUMBING. The parties dispute whether Defendants caused the articles to be printed.

DISCUSSION

I. Standard for Summary Judgment

Summary judgment is appropriate where the moving party has established that "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). On a motion for summary judgment, the court must determine "whether the evidence presents a sufficient disagreement to require submission to [the factfinder] or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In making this determination, the court "must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in its favor." Consarc Corp. v. Marine Midland Bank, N.A., 996 F.2d 568, 572 (2d Cir. 1993).

Initially, the moving party must show that there is "an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party has carried its burden under Rule 56, the non-moving party must set forth "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The non-moving party is required to introduce evidence beyond the mere pleadings to show that there is an issue of material fact concerning "an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322, 106 S.Ct. 2548.

II. Infringement Under § 32(1) of the Lanham Act

Plaintiff cross-moves for summary judgment, claiming that Defendants infringed upon her registered service mark 1-800-PLUMBING in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). Defendants cross-move for summary judgment, seeking dismissal of Plaintiff's § 32(1) claim and cancellation of her registered mark. Section 32(1) states:

(1) Any person who shall, without the consent of the registrant —
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. § 1114(1). To prevail on a Lanham Act infringement claim, the claimant must show that "it has a valid mark entitled to protection and that the defendant's use of it is likely to cause confusion." The Morningside Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 137 (2d Cir. 1999). Additionally, the claimant must show that the defendant "used" the mark in commerce. See 15 U.S.C. § 1114(1); see also id. § 1127 (defining "use in commerce").

A. Validity of Plaintiff's Registered Mark

Plaintiff relies on her registration with the PTO for the validity of her mark. Registration with the PTO provides "prima facie evidence that the mark is registered and valid (i.e., protectible), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999); see also 15 U.S.C. § 1115(a). However, registration does not "preclude another person from proving any legal or equitable defense or defect . . . which might have been asserted if such mark had not been registered." 15 U.S.C. § 1115(a). Defendants here assert that Plaintiff's mark 1-800-PLUMBING is invalid, arguing that it lacks the requisite distinctiveness to be afforded trademark protections, and alternatively, that Plaintiff abandoned the use of her mark.

1. Distinctiveness

The level of protection accorded to a mark is governed by the crucial trademark concept of "distinctiveness," which "places marks on a ladder reflecting their inherent strength or weakness." Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 215 (2d Cir. 1999). These levels of distinctiveness include, from most to least protected, fanciful, arbitrary, suggestive, descriptive, and generic. See Lane Capital Management, 192 F.3d at 344.

Fanciful, arbitrary, and suggestive marks are deemed inherently distinctive and thus are afforded automatic protection under the Lanham Act. See id. Descriptive marks are not inherently distinctive, and therefore, gain trademark protection and eligibility for registration on the PTO's principal register only after acquiring distinctiveness, or "secondary meaning." See id. Generic marks "are totally lacking in distinctive quality; they are not entitled to any protection against infringement, even if they have become famous as marks." TCPIP Holding Co. v. Haar Communications, Inc., 244 F.3d 88, 93 (2d Cir. 2001) (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10 (2d Cir. 1976)).

In this case, Defendants argue that Plaintiff's mark is or has become generic. The parties do not dispute that the word "PLUMBING" and the prefix "1-800" are each generic terms. The issue is whether, as a whole, the telephone number 1-800-PLUMBING is generic. "A mark is generic if it is a common description of products and refers to the genus of which the particular product is a species." Lane Capital Management, 192 F.3d at 344. A registered mark may be challenged at any time on the ground that it has become generic. See, e.g., Park `N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 202, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985); 15 U.S.C. § 1064(3).

Defendants argue that Trademark Manual of Examining Procedure ("TMEP") § 1209.01(b)(12), which was promulgated in 1994, subsequent to both the 1989 decision in Dial-A-Mattress Franchise Corp. and the PTO's 1993 registration of Plaintiff's mark, now renders her registered mark generic as a matter of law. That section suggests that a mark cannot be registered if it is comprised of an area code followed by an otherwise generic term. See TMEP § 1209.01(b)(12). However, the Court of Appeals for the Federal Circuit has recently upheld the validity of a registered mark comprised of the toll-free area code "1-888" and the generic term "MATTRESS," explicitly rejecting a lower court decision which had relied on TMEP § 1209.01(b)(12). See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346 (Fed.Cir. 2001), rev'g 52 U.S.P.Q.2d 1910 (TTAB 1999).

The Federal Circuit analyzed the mark 1-888-MATTRESS not as the mechanical combination of two generic terms, but in its entirety and within the context of its use as a telephone number. See id. at 1345-46 ("`The commercial impression of a trade-mark is derived from it as a whole, not from its elements separated and considered in detail.'" (quoting Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46, 40 S.Ct. 414, 64 L.Ed. 705 (1920))). Noting that the "telephone shop-at-home service for retail mattresses" is a generic description of a class of products, or "genus," and that the relevant public does not equate 1-888-MATTRESS with that genus, the court concluded that the mark was not generic. See id. Rather, the 1-888-MATTRESS mark referred to the particular service provided by plaintiff.

In this case the relevant facts are the same. The mark 1-800-PLUMBING, in its context as a telephone number, is not "a common description of products . . . refer[ring] to the genus of which the particular product is a species," Lane Capital Management, 192 F.3d at 344, and is not understood by the public to be "a class of shop-at-home telephone" plumbing services. See In re Dial-A-Mattress Operating Corp., 240 F.3d at 1346. Instead, the public perceives Plaintiff's mark as identifying her particular service. Consistent with Dial-A-Mattress Franchise Corp. v. Page, the Court finds that Plaintiff's ...


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