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Road Dawgs Motorcycle Club of the United States v. "Cuse" Road Dawgs

December 22, 2009

THE ROAD DAWGS MOTORCYCLE CLUB OF THE UNITED STATES, INC.; NEW YORK ROAD DAWGS MOTORCYCLE CLUB, INC.; MASSACHUSETTS ROAD DAWGS, INC.; AND RICHARD E. DOWNEY, PLAINTIFFS,
v.
"CUSE" ROAD DAWGS, INC.; AND JOHN DOES 1-XX, DEFENDANTS.



The opinion of the court was delivered by: Hon. Glenn T. Suddaby, United States District Judge

AMENDED MEMORANDUM DECISION and ORDER

On November 12, 2009, the Court issued a Decision and Order in this trademark infringement action. Road Dawgs Motorcycle Club of the United States, Inc. v. 'Cuse Road Dawgs, Inc., 05-CV-0966, 2009 WL 3790183 (N.D.N.Y. Nov. 12, 2009) (Suddaby, J.). In that Decision and Order, the Court issued a permanent injunction and indicated that, after a conference with counsel, the Court would issue a "Supplemental Order" describing in more detail the acts permanently enjoined. Road Dawgs Motorcycle Club, 2009 WL 3790183 at *20, 22. The Court's conference with counsel occurred on December 18, 2009. Given the requirements of Fed. R. Civ. P. 65(d)(1)(C), the Court has decided to issue the current Amended Decision and Order, rather than a Supplemental Order.

Currently pending before the Court in this trademark infringement action is a motion for summary judgment filed by The Road Dawgs Motorcycle Club of the United States, Inc., New York Road Dawgs Motorcycle Club, Inc., Massachusetts Road Dawgs, Inc., and Richard E. Downey ("Plaintiffs"), and a cross-motion for summary judgment filed by 'Cuse Road Dawgs, Inc., and John Does 1-XX ("Defendants"). (Dkt. Nos. 13, 15.) For the reasons set forth below, Plaintiffs' motion is granted in part and denied in part, and Defendants' cross-motion is denied.

TABLE OF CONTENTS

I. BACKGROUND.................................................................................................................4

A. Plaintiffs' Complaint................................................................................................4

B. Plaintiffs' Motion.....................................................................................................4

C. Defendants' Cross-Motion.......................................................................................5

II. APPLICABLE LEGAL STANDARD.................................................................................5

III. UNDISPUTED MATERIAL FACTS.................................................................................9

A. Facts Material to Road Dawgs Motorcycle Club...................................................9

B. Facts Material to 'Cuse Road Dawgs Motorcycle Club........................................11

C. Facts Material to Both Marks or Clubs..................................................................14

IV. ANALYSIS OF PLAINTIFFS' MOTION.........................................................................16

A. Plaintiffs' Claim Under Sections 1114(1) of the Lanham Act....................................16

1. Validity and Entitlement to Protection...........................................................17

a. Classification of Marks Generally......................................................18

i. Generic Marks.......................................................................18

ii. Descriptive Marks..................................................................19

iii. Suggestive Marks...................................................................20

iv. Arbitrary and Fanciful Marks................................................20

b. Classification of Plaintiffs' Mark.......................................................20

i. Whether Plaintiffs' Mark Is Generic.....................................20

ii. Whether Plaintiffs' Mark Is Descriptive or Suggestive.........21

c. Contestability.......................................................................................25

d. Equitable Defenses.............................................................................27

i. Defendants' First and Third Defenses...................................28

ii. Defendants' Second Defense.................................................35

2. Likelihood of Confusion.................................................................................37

a. Strength of Plaintiffs' Mark...............................................................38

b. Similarity Between Parties' Marks....................................................39

c. Proximity of Parties in Marketplace...................................................41

d. Likelihood that Plaintiffs Will "Bridge-The-Gap".............................43

e. Evidence of Actual Confusion...........................................................43

f. Defendants' Intent in Adopting the Mark..........................................45

g. Quality of Defendants' Services.........................................................46

h. Sophistication of Consumers.............................................................47

3. Balance of Equities.........................................................................................48

B. Plaintiffs' Request for Relief Under Section 1116 of the Lanham Act......................48

C. Plaintiffs' Other Requests for Relief...........................................................................51

D. Plaintiffs' Other Claims..............................................................................................53

I. BACKGROUND

A. Plaintiffs' Complaint

Plaintiffs filed this trademark infringement action, pursuant to 15 U.S.C. § 1114(1), 15 U.S.C. § 1116, 15 U.S.C. § 1125(a)(1), Common Law Trademark Infringement, and New York General Business Law §§ 349 and 350, against Defendants on August 2, 2005. (Dkt. No. 1.) Generally, Plaintiffs' Complaint alleges that Defendants' use of the name "'Cuse Road Dawgs" infringes on Plaintiffs' rights as registrants of the mark "ROAD DAWGS." (Id.) More specifically, liberally construed, Plaintiffs' Complaint alleges as follows: (1) Defendants' use of "'Cuse Road Dawgs" is likely to cause an appreciable number of consumers to be confused as to the origin and affiliation of Defendants; (2) Plaintiffs never authorized Defendants' use of the mark at issue; (3) Defendants engage in and are associated with criminal activity; and (4) Defendants' actions caused and continue to cause Plaintiffs irreparable harm. (Id.)

B. Plaintiffs' Motion

In their motion for summary judgment, Plaintiffs argue that they are entitled to summary judgment because, based on the current record, there is no genuine issue of material fact with respect to the protectability of the "ROAD DAWGS" mark, and the Polaroid balancing test demonstrates the existence of a likelihood of confusion between the name "ROAD DAWGS" and the name "'Cuse Road Dawgs." For the foregoing reasons, Plaintiffs argue that the Court should (1) grant judgment in their favor on the issues of liability and infringement, (2) permanently enjoin Defendants' use of the name "'Cuse Road Dawgs," and (3) hold a hearing on the issue of damages. (Dkt. No. 13, Part 13, at 1 [Plfs.' Memo. of Law].)

C. Defendants' Cross-Motion

After Plaintiffs filed a motion for summary judgment, Defendants filed a cross-motion for summary judgment with this Court. (Dkt. No. 15.) Generally, in their motion, Defendants argue that they are entitled to summary judgment, based on the current record, because (1) Plaintiffs' mark is either generic or merely descriptive, and is therefore not entitled to protection, and (2) there is no likelihood of confusion between "'Cuse Road Dawgs" and "ROAD DAWGS" under the Polaroid balancing test as a matter of law. (Dkt. No. 15, at 29-33 [Defs.' Memo. of Law].) In the alternative, Defendants argue that they are entitled to summary judgment because

(1) Plaintiffs failed to allege any damages, (2) they were using their mark in commerce before Plaintiffs' publication of their mark, and/or (3) they are entitled to the equitable defenses of laches, estoppel and acquiescence, which would bar a finding in favor of Plaintiffs with respect to liability and infringement. (Dkt. No. 15, at 35 [Defs.' Memo. of Law].)

II. APPLICABLE LEGAL STANDARD

Under Fed. R. Civ. P. 56, summary judgment is warranted if "the pleadings, the discovery and disclosure materials on file, and any affidavits show 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). In determining whether a genuine issue of material fact exists, the Court must resolve all ambiguities and draw all reasonable inferences against the moving party. However, when the moving party has met its initial burden of establishing the absence of any genuine issue of material fact, the nonmoving party must come forward with "specific facts showing a genuine issue for trial." Fed. R. Civ. P. 56(e).

What this burden-shifting standard means when a non-movant has failed to respond to a movant's motion for summary judgment is that "[t]he fact that there has been no [such] response . . . does not . . . [by itself] mean that the motion is to be granted automatically." Champion v. Artuz, 76 F.3d 483, 486 (2d Cir. 1996). Rather, practically speaking, the Court must (1) determine what material facts, if any, are disputed in the record presented on the movant's motion, and (2) assure itself that, based on those undisputed material facts, the law indeed warrants judgment for the movant. Champion, 76 F.3d at 486; Allen v. Comprehensive Analytical Group, Inc., 140 F. Supp.2d 229, 232 (N.D.N.Y. 2001) (Scullin, C.J.); N.D.N.Y. L.R. 7.1(b)(3). However, the non-movant's failure to respond to the movant's motion for summary judgment lightens the movant's burden on the motion.

More specifically, where a non-movant has failed to properly respond to a movant's factual assertions contained in its Statement of Material Facts (a/k/a its "Rule 7.1 Statement"), the factual assertions contained in that Rule 7.1 Statement will be accepted as true to the extent that those facts are supported by the evidence in the record. Vermont Teddy Bear Co., Inc. v. 1-800 Beargram Co., 373 F.3d 241, 243 (2d Cir. 2004); Champion v. Artuz, 76 F.3d 483, 486 (2d Cir. 1996); N.D.N.Y. L.R. 7.1(a)(3); N.D.N.Y. L.R. 56.2.*fn1

Similarly, where a non-movant has failed to respond to a movant's properly filed and facially meritorious memorandum of law (submitted in support of its motion for summary judgment), the non-movant is deemed to have "consented" to the legal arguments contained in that memorandum of law under Local Rule 7.1(b)(3).*fn2 Stated another way, where a movant has properly filed a memorandum of law (in support of a properly filed motion for summary judgment), and the non-movant has failed to respond to that memorandum of law, the only remaining issue is whether the legal arguments advanced in the movant's memorandum of law are facially meritorious.*fn3 A movant's burden in making legal arguments that are facially meritorious has appropriately been characterized as "modest."*fn4

Implied in the above-stated standard is the fact that, where a non-movant fails to respond to a motion for summary judgment, a district court has no duty to perform an independent review of the record to find proof of a factual dispute.*fn5 In the event the district court chooses to conduct such an independent review of the record, any verified complaint filed by the non-movant should be treated as an affidavit. Patterson v. County of Oneida, 375 F.3d 206, 219 (2d. Cir. 2004). That having been said, to be sufficient to create a factual issue for purposes of a summary judgment motion, an affidavit (or verified complaint) must, among other things, be based "on personal knowledge." Fed. R. Civ. P. 56(e)(1). In addition, such an affidavit (or verified complaint) must not be conclusory. Fed. R. Civ. P. 56(e)(2).

III. UNDISPUTED MATERIAL FACTS

Based on the current record before the Court, the following material facts are undisputed:

A. Facts Material to Road Dawgs Motorcycle Club

1. In 1995, Plaintiffs founded a motorcycle club in New Hampshire;*fn6

2. At the time, Plaintiffs' motorcycle club was, and still is, composed exclusively of members of law enforcement;*fn7

3. In 1996, Plaintiffs' motorcycle club was incorporated as a non-profit corporation under the name "Road Dawgs" in New Hampshire;*fn8

4. In 1997, Plaintiff "Road Dawgs Motorcycle Club of the United States" ("RDUSA") became the sponsor of a club chapter in Syracuse, New York;*fn9

5. Since 1997, the members of Plaintiff RDUSA's club chapter in Syracuse, New York, have been using Plaintiffs' mark in concert and connection with Plaintiff RDUSA motorcycle club activities;*fn10

6. By 1998, Plaintiff RDUSA had become the sponsor of several club chapters across the United States;*fn11

7. At some point before February of 1999, Plaintiffs created a trademark ("Plaintiffs' mark"), which was, and still is, a standard character mark or typed mark, and, as such, was, and is, not limited to any particular font style, size, or color for purposes of an infringement action;*fn12

8. On or about February 2, 1999, Plaintiffs filed a service application with the United States Patent and Trademark Office ("PTO") (Service Number 75/633,222) regarding their mark;*fn13

9. On or about October 3, 2000, the United States Patent and Trademark Office registered U.S. Service Mark Reg. No. 2,392,251, for the mark ROAD DAWGS for use in connection with ...


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