A-1 MORTGAGE CORPORATION v. DAY ONE MORTGAGE et al - Document No. 69

Published on February 2017 | Categories: Documents | Downloads: 61 | Comments: 0 | Views: 234
of 16
Download PDF   Embed   Report

Comments

Content

 

A-1 MORTGAGE CORPORATION v. DAY ONE MORTGAGE et al

Case 2:06-cv-00338-AJS

Document 69

Doc. 69

Filed 01/03/2007

Page 1 of 16

IN THE UNITED STATES DISTRICT D ISTRICT COURT FOR THE WESTERN WEST ERN DISTRICT OF PENNSYLVANIA A-1 MORTGAGE CORPORATION, Plaintiff,

06cv0338

v.

Electronically Filed

DAY ONE MORTGAGE, LLC, ET AL., Defendants. Memorandum Opinion I.

Introduction

This is an action for trade mark/trade mark/trade name infringement. Plaintiff, A-1 Mortgage Corporation, alleges that defendants violated the Lanham Act, 15 U.S.C. § 1125(a), by causing confusion and/or the likelihood of confusion with plaintiff’s trade name and trade marks. Plaintiff seeks a permanent injunction as well as damages, attorney’s attorney’s fees and costs. Currently  pending before this Court is plaintiff’s motion for summary judgment, with with supporting brief (doc. nos. 67 and 68). For the reasons that follow, this Court will grant plaint plaintiff’s iff’s motion for summary  judgment (doc. no. 67). II.

Factual Ba Background

as set forth in plaintiff’s motion for summary judgment, are as follows:1 This website storesThe datafacts, such as cookies to enable essential site functionality, as well1.as marketing, AA-1 1 Mortg Mortgag agee is a Penn Pennsy sylv lvan ania ia Corpo Corpora ratio tion, n, whic which h provi provides des mort mortga gage ge brok broker erag agee personalization, and analytics. You may change your settings at any time and financial services. or accept the default settings. 2.

AA-1 1 Mort Mortg gage is the the exclu exclusi sive ve owne ownerr of the the ttra radem demark ark,, “A-1 “A-1 Mor Mortgag tgage,” e,” whic which is

Privacy Policy Marketing

1

Defendants have not participated in this case c ase since August 11, 2006 (see doc. no. 41), when defense counsel filed a motion to withdraw as counsel. Despite being ordered to respond Personalization to the instant motion for summary judgment by December 28, 2006 (see doc. no. 65), as well as Analytics many other motions, defendants defendants have failed to do so. Therefore, this Court Court will accept the facts set forth in plaintiff’s motion for summary judgment as uncontroverted.

Save

Accept All

Dockets.Justia.com  

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 2 of 16

registered for the provision of o f mortgage brokerage and financial services under Pen Pennsylvania nsylvania Trademark Registration No. 3011052. 3.

AA-1 1 Mort Mortgag gagee prov provid ides es mor mortg tgage age brok broker erag agee and and fina financi ncial al sser ervi vices ces to cons consum umer erss

under the trade names “A-1,” “A-1 Mortgage” and “A-1 Mortgage of Cranberry.” Cranberry.” 4.

Conti Continu nuous ously ly sinc sincee Apr April il 1996 1996,, A-1 A-1 Mor Mortg tgage age has has provi provided ded mort mortga gage ge brok broker erag agee

and financial services under the above abo ve trade names to the targeted markets of Cranberry Township and the Pittsburgh metropolitan area of Western Pennsylvania. 5.

Since Since Apri Aprill 1996 1996,, Pla Plain inti tiff ff has expen expended ded in exces excesss of of four four mi mill llio ion n doll dollar arss

 promoting its name and services through extensive advertising, including including radio, television, print, and on the internet. 6.

AA-1 1 Mor Mortg tgage age has an int inter ernet net pres presen ence ce thr throu ough gh a webs websit itee rregi egist ster ered ed to to A-1 A-1

Mortgage. The website serves several integral integral functions: (1) it provides informa information tion about A-1 Mortgage to the internet-using public, (2) it enables consumers to complete forms to apply for  mortgages through A-1 Mortgage on the internet, and (3) it allows consumers to receive e-mail responses to their applications. 7.

AA-1 1 Mort Mortgag gagee has has adve advert rtis ised ed in in othe otherr ssta tate tess and and the the med media ia for forms ms us used ed by by AA-1 1

This website stores data advertising such as Mortgage’s cross state lines. cookies to enable essential site functionality, as well8.as marketing, AA-1 1 Mor Mortg tgage age has becom becomee wid widel ely y know known n to to mor mortg tgage age consu consume mers rs and and iin n the the personalization, and analytics. You may change your settings at any time mortgage brokerage industry beyond the boundaries of the Western District of Pennsylvania and or accept the default settings.

the Commonwealth of Pennsylvania, primarily through the use of various forms of media, Privacy Policy

including radio and cable television advertising, as well as its internet presence.

Marketing

Personalization 9.

AA-1 1 Mort Mortgag gagee prov provid ides es qual qualit ity y mort mortga gage ge bro broke kera rag ge and and fina financi ncial al ser servi vices ces to the the

Analytics Save

Accept All

2

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 3 of 16

mortgage consuming public at large, and A-1 Mortgage has become known as a provider of  quality mortgage brokerage and financial services in the Western Pennsylvania area, in neighboring states, and on the internet.. 10.

A-1 Mortga Mortgage ge iinte ntends nds to cont continu inuee marke marketin ting g its its name name and and servi services ces and to to contin continue ue

to provide quality mortgage brokerage services to consumers through the trademark and trade names, “A-1 Mortgage,” “A-1,” and “A-1 Mortgage of Cranberry” indefinitely. Defendant Goldblum’s employment with A-1 Mortgage Corporation

11.

Defenda Defendant nt Zur Zur Gold Goldblu blum m (her (herein einaf after ter,, “G “Gold oldblu blum”) m”) was a previ previous ous indepen independent dent

contractor/employee of A-1 Mortgage. 12.

Goldbl Goldblum um was was pres present ent in in plain plaintif tiff’s f’s offices offices on a dail daily y basis basis and and had had signi signific ficant ant

knowledge of the business of A-1 Mortgage, including office policies and procedures, clients and customer lists, sources of lending leads, lenders, and A-1 Mortgage’s advertising and  promotional campaigns, upon which his success as a mortgage broker depended in large large part. 13.

Goldbum Goldbum was aware aware of the locati location on of, of, and and had had acce access ss to, case case files files,, custo customer  mer 

lists, and other confidential and proprietary documents belonging to A-1 Mortgage Corporation within A-1’s offices. This website stores14. data such asdblum Goldbl Gol um also also knew knew that that “A-1 “A-1 Mortga Mortgage” ge” is a trad tradema emark rk bel belong onging ing to A-1 cookies to enable essential site functionality, as well asCorporation marketing, and that the company regularly advertised and presented itself to the Mortgage personalization, and analytics. You may change your settings at any time  public as settings. “A-1 Mortgage.” or accept the default

15.

Addition Additionaally, Goldblum Goldblum kn knew ew that that A-1 A-1 Mortg Mortgage age wa was enga engaged ged in in litiga litigation tion to

Privacy Policy

 protect its trademark and trade names from infringement infringement by another mortgage broke brokerage rage located

Marketing

Personalization in Western Pennsylvania. Analytics Save

Accept All

3

 

Case 2:06-cv-00338-AJS

16.

Document 69

Filed 01/03/2007

Page 4 of 16

In or or about about July July, 2004, 2004, a civi civill suit suit was was file filed d agains againstt A-1 A-1 Mo Mortg rtgag agee Corpo Corporat ration ion by

Errika Wilford alleging various improprieties in her loan documents. 17.

During the arbitration of that case on February 8, 2005, A-1 Mortgage became

aware that Goldblum had knowingly falsified loan documents, resulting in Ms. Wilford’s mortgage application being rejected by the lender, and Goldblum has admitted to the knowing falsification of Erikka Wilford’s loan application. 18.

As a resu result lt of Goldbl Goldblum’s um’s actions actions,, judgm judgment ent was was enter entered ed that that same same day agains againstt

A-1 Mortgage Corporation Corporation and in favor of Er Errika rika Wilford. As such, Goldblum knew that that his days at A-1 Mortgage Corporation were numbered. Defendant Goldblum’s plan to wrongfully use the A-1 Mortgage name

19.

Approx Approxima imatel tely y tw two o weeks weeks aft after er the con conclu clusio sion n of the Wilfor Wilford d liti litigat gation ion,, on

February 24, 2005, Goldblum registered the domain name “firstdaymortgage.com” in anticipation of his departure dep arture from A-1 Mortgage. 20.

Goldbl Goldblum um then then proceed proceeded ed to to surre surrepti ptitio tiousl usly y copy and remov removee confi confident dential ial and

 proprietary materials materials from A-1 Mortgage without permission, including confidential customer  information and records. This website stores21. data such asdblum Goldbl Gol um copi copied ed and and took took the doc documen uments ts for his own person personal al benef benefit it wit without hout the cookies to enable essential site functionality, as well as marketing,  permission of plaintiff or the customers. personalization, and analytics. You may change your settings at any time At the the end end of Marc March, h, 2005, 2005, Goldbl Goldblum um lef leftt A-1 A-1 Mo Mort rtgage gage and open opened ed his his busi business ness or accept the default22. settings.

within thirty (30) miles of plaintiff.

Privacy Policy

Marketing

23.

Notabl Notably, y, Goldbl Goldblum um decide decided d to to m move ove fr from om the “non-c “non-conf onfusi using” ng” First First Day

Personalization Mortgage name, to instead do business using the confusingly ssimilar imilar Day One Mortgage name. Analytics Save

Accept All

4

 

Case 2:06-cv-00338-AJS

24.

Document 69

Filed 01/03/2007

Page 5 of 16

Goldbl Goldblum um regist registere ered d the the domain domain name name “day “day1mo 1mortg rtgage. age.com com”” on Marc March 31, 31, 2 2005, 005,

and he registered the name Day One Mortgage Mortgage LLC with the Commonwealth of Pennsylvania on about April 15, 2005. 25.

Goldblum then proceeded to operate his new business using the day1mortage.com day1mortage.com

website. 26.

Of the countle countless ss names names avail available able to Gold Goldblu blum, m, he he chose chose to use use a phoneti phoneticc mi mirro rror  r 

to A-1 Mortgage, even though he knew that there was a significant likelihood of customer  confusion. Goldblum contacts A-1 Mortgage Customers

27.

Goldbl Goldblum um began began cont contact acting ing A-1 Mortg Mortgage age cust customer omerss direc directly tly fro from m recor records ds he he had

wrongfully taken from A-1 Mortgage, and on September 7, 2005, in an a n email Goldblum sent to the President of A-1 Mortgage’s husband, Goldblum admitted to doing so. 28.

In Januar January y/Febru /February ary,, 2006, 2006, despit despitee knowi knowing ng tthat hat A-1 Mortag Mortagee ccondu onduccted

extensive radio advertising, specifically on “BOB FM”, Goldblum authorized running his soundalike advertisement on BOB FM. 29.

John Coyne, plaintiff’s long-time advertising consultant, alerted the president of 

This website stores data such as A-1 Mortgage Corporation, that sound-alike ads were being run on the radio by Day One cookies to enable essential site functionality, as well as marketing, Mortgage. personalization, and analytics. You may change your settings at any time In his his affi affidavi davit, t, Mr. Mr. Coy Coyne ne stat stated ed that that one radi radio o ad w was as so so simil similar ar that that he, who who has has or accept the default30. settings.

46 years experience in advertising, a dvertising, was confused by it.

Privacy Policy

Marketing

31.

Accord According ing to his his affida affidavit vit,, in or about about Januar January y or Febr Februar uary y, 2006, 2006, Mr. Coyne Coyne

Personalization heard a radio commercial on 96.9 FM (Bob), that he first thought was an A-1 Mortgage Analytics Save

Accept All

5

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 6 of 16

commercial “live read.” Only after after hearing the advertisement several times, times, did Mr. Coyne recognize that it was not for A-1, but rather was Day One Mortgage. 32.

The adverti advertisem sement ent Coy Coyne ne heard heard used used subst substant antial ially ly ide identi ntical cal “copy” “copy” to that that which which

he had developed for A-1 Mortgage. Mortgage. For example, like the A-1 Mortgage Mortgage advertisement, the Day One Mortgage advertisement stated, “we’ll take you from application to closing in two to three weeks.” 33.

Accord According ing to Mr. Mr. Coy Coyne, ne, the the n names ames and adver advertis tiseme ements nts are confusi confusingl ngly y simil similar. ar. Defendants’ profit from their infringement

34.

Gold Goldblum blum repres represente ented d tto o custome customers rs that Day One Mortga Mortgage ge and A-1 Mortga Mortgage ge

were the same and/or affiliated. 35.

Goldblum Goldblum did did not not know know wheth whether er the the custom customers ers whose whose loans loans he closed closed while while

working at/or operating Day One Mortgage were confused by the name “Day One Mortgage” with plaintiff’s trademark, “A-1 Mortgage.” 36.

Goldblum Goldblum also also did know whether whether the custom customers ers whose whose loans loans he closed closed while while

working at/or operating Day One Mortgage were actually try trying ing to close loans with A-1 Mortgage. This website stores37. data such asdblum Goldbl Gol um witn witness essed ed at at leas leastt one one case case or or inci incident dent of actua actuall custo customer mer confusi confusion on cookies to enable essential site functionality, as well as marketing,  between Day One Mortgage and plaintiff’s plaintiff’s trademark, “A-1 Mortgag Mortgage.” e.” personalization, and analytics. You may change your settings at any time Goldbl Goldblum/ um/Def Defenda endants nts benefi benefitte tted d from from custom customer er confusi confusion, on, in the form form of  of  or accept the default38. settings.

 business and profits, due to customer confusion between Day One Mortgage and plaintiff’s

Privacy Policy

trademark, “A-1 Mortgage.” Marketing Personalization 39.

During During the relav relavant ant time time peri period, od, the the gross gross profits profits of defenda defendants nts was, at a

Analytics Save

Accept All

6

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 7 of 16

minimum, $72,000. 40.

Plaintif Plaintifff has been been caus caused ed signi signific ficant ant dama damages ges inc includi luding ng costs costs in the the appro approxima ximate te

amount of $3,150.21 and attorney’s fees in the approximate amount of $44,458.50 through the end of November and anticipated attorneys fees of an additional $13,775 for the month of  December, for a total of $58,233.50. Goldblum’s actions subsequent to the “Cease and Desist” Letter and during this Litigation

41.

On Janua January ry 11, 11, 2006 2006,, Couns Counsel el for for A-1 A-1 Mor Mortga tgage ge C Corp orpora oratio tion n sent sent a ce cease ase and

desist letter to defendants; however, Goldblum continued to operate as he had being doing. 42.

On Janua January ry 25, 25, 2006 2006,, Goldb Goldblum lum “sold” “sold” his reside residenc ncee to his friend, friend, Damian Damian Holc, Holc,

in an effort to make himself “judgment proof.” 43.

Goldbl Goldblum um and his family family,, howev however, er, conti continued nued to reside reside in the house house and pay

monthly rent to the new “owner.” “owner.” Goldblum paid the new “owner” more in rent payments than he previously paid in mortgage payments. 44.

On or or about about May May 18, 2006, 2006, this Court Court enter entered ed a prelimi prelimina nary ry injuncti injunction on agai agains nstt

defendants. 45.

Within Within approxi approximat mately ely two weeks weeks of of this this Court’ Court’ss ruli ruling, ng, Goldbl Goldblum um cont contact acted ed the the

This website stores data of such as Department Banking to complain about plaintiff, in an effort to further harm plaintiff. cookies to enable essential site functionality, as well as marketing, 46. During During the cour course se of of this this liti litigati gation on,, defen defendant dantss have have refus refused ed to to compl comply y with with personalization, and analytics. You may change your settings at any time discovery orders, Goldblum has refused to answer questions at his deposition, and prematurely or accept the default settings.

left his deposition (and was then ordered to return to his deposition and answer questions by this

Privacy Policy

Court - see doc. no. 38), and then plead the Fifth Amendment in response to certain questions Marketing Personalization

upon his return.

Analytics Save

Accept All

7

 

Case 2:06-cv-00338-AJS

47.

Document 69

Filed 01/03/2007

Page 8 of 16

On Septem September ber 18, 2006, 2006, the the day day before before the schedul scheduled ed depos depositi ition on of Mr. Holc, Holc,

Goldblum filed for bankruptcy and, despite no cancellation ca ncellation of that deposition, Damian Holc failed to appear for his subpoenaed deposition testimony. III.

Standard of of Re Review

Summary judgment under Fed.R.Civ.P. 56(c) is appropriate “‘if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if  any, 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.”   Woodside v. School Dist. Dist. of Philadelphia Bd. of   Educ., 248 F.3d 129, 130 (3d Cir. 2001), quoting Foehl v. United States, 238 F.3d 474, 477 (3d

Cir.2001) (citations omitted). In deciding a summary judgme judgment nt motion, the court must “view the evidence . . . through the prism of the substantive evidentiary burden” to determine “whether a  jury could reasonably find either that the plaintiff plaintiff proved his case by tthe he quality and quantity of  the evidence required by the governing law or that he did not.” Anderson v. Consolidated Rail  Corp., 297 F.3d 242, 247 (3d Cir. 2002), quoting  Anderson  Anderson v. Liberty Lobby, Inc., 477 U.S. 242,

254 (1986). When the non-moving party will bear the burden of proof at trial, the moving m oving party's This website stores can databe such as  burden “discharged by ‘showing’ -- that is, pointing out to the District Court -- that there cookies to enable essential site functionality, as well as marketing, is an and absence of evidence evidenc personalization, analytics. You e to support the non-moving party's case.” Celotex Corp. v. Catrett , 477 may change your settings at any time U.S. 317,settings. 325 (1986). If the moving party has carried carried this burden, the burden shifts to the nonor accept the default

moving party who cannot rest on the allegations alle gations of the pleadings and must “do more than simply

Privacy Policy

show that there is some metaphysical doubt as to the material facts.”  Matsushita Elec. Indus. Co. Marketing Personalization

v. Zenith Radio Corp., 475 U.S. 574, 586 (1986); Petruzzi's IGA Supermarkets, Inc. v. Darling-

Analytics Save

Accept All

8

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 9 of 16

 Delaware Co., 998 F.2d 1224, 1230 (3d Cir. 1993). Thus the non-moving party cannot rest on

the pleadings, but instead must go beyond the pleadings and present “specific facts showing that there is a genuine issue for trial,” Fed.R.Civ.P. 56(e), and cannot rely on unsupported assertions, conclusory allegations, or mere suspicions in attempting to survive a summary judgment motion. Williams v. Borough of W. Chester , 891 F.2d 458, 460 (3d Cir.1989) (citing Celotex, 477 U.S. at

325 (1986)). The non-moving party must respond “by pointing to sufficient cognizable evidence to create material issues of fact concerning every element as to which the non-moving party p arty will  bear the burden of proof at trial.” Simpson v. Kay Jewelers, Div. Of Sterling, Inc., 142 F. 3d 639, 643 n. 3 (3d Cir. 1998), quoting Fuentes v. Perskie, 32 F.3d 759, 762 n. 1 (3d Cir. 1994). “In considering a motion mo tion for summary judgment, a district court may not make ma ke credibility determinations or engage in any weighing of the evidence; instead, the non-moving party's evidence ‘is to be believed and all justifiable inferences are to be drawn in his favor.’  Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).”  Marino v. Industrial Crating Co., 358 F.3d

241, 247 (3d Cir. 2004.) See also Doe v. County of Centre, PA, 242 F.3d 437, 446 (3d Cir. 2001) (court must view facts in the light most favorable, draw all reasonable inferences, and resolve all doubts, in favor of the nonmoving nonmov ing party ). This website data as IVstores . D iscusuch ssion cookies to enable essential site functionality, as well as marketing, moved for summary judgment and argues in support thereof that defendants personalization, andPlaintiff analytics.has You may change your settings at any time conduct this case violates the Lanham Act. 15 U.S.C. § 1125(a)(1999). Section 1125 of the or accept the default in settings.

Lanham Act protects qualified federally unregistered unregistered trademarks from infringment, provided that

Privacy Policy

interstate commerce is involved. Marketing Personalization

In order to set forth a valid trademark claim under the Lanham Act, plaintiff must

Analytics Save

Accept All

9

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 10 of 16

establish that the marks are valid and legally protectable; (2) the marks are owned by plaintiff; plaintiff; and, (3) defendants’ use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods or services. Checkpoint Systems, Inc. v. Check point Software Technologies, Inc., 269 F.3d 270, 279 (3d Cir. 2001) ; Opticians Association of America v.  Independent Opticians of America, 920 F.2d 187, 192 (3d Cir. 1990). Valid and Legally Protected Mark

Whereas here, the mark was not federally registered registered and has not achieved “inconstestability,” the validity and legal protectability of the mark depends upon the proof of  secondary meaning, unless the unregistered or contestable mark is “inherently distinctive.”  Ford   Motor Co. v. Summit Motor Products, 930 F.2d 277, 291-292 (3d Cir. 1991)(citations omitted).

Secondary meaning is demonstrated where, “in the minds of the public, the primary significance significance of a product feature or term is to identify the source of the product itself.”  Id. at 292, quoting  Freixinet, S.A. v. Admiral Wine & Liquor Co., 731 F.2d 148, 152 (3d Cir. 1984). Although there

is no real concensus on the necessary elements of secondary meaning, a non-exclusive list of  factors which may be considered includes: the extent of sales and advertising leading to buyer  association; length of use; exclusivity of use; the fact of copying; customer surveys; customer  This website stores data such as testimony; the use of the mark in trade journals; the size of the company; the number of sales; the cookies to enable essential site functionality, as well as marketing, number customers; personalization, andof analytics. You and actual confusion.  Id., citing CIBA- GEICY Corp. v. Bolar  may change your settings at any time or accept the default settings.Co. Inc., 747 F.2d 844, 852 (3d Cir. 1984)(other citations omitted).  Pharmaceutical Privacy Policy

As noted above, one exception to the secondary meaning analysis is where the mark is

considered “inherently distinctive.”  Id., citing United States Jaycees v. Philadelphia Jaycees, Marketing Personalization

639 F.2d 134, 142 (3d Cir. 1981).

Analytics Save

Accept All

10

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 11 of 16

“Inherently distinctive” marks, which qualify for protection even though they are not federally registered, are classified into four categories: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary (or fanciful).  A.J. Canfield Co. V. Hornickman, 808 F.2d 291, 296 (3d Cir. 1986). While generic terms function as the common descriptive name of a product class, descriptive terms describe a characteristic characteristic or ingredient of the article to which it refers.  Id. at 296, citing Keebler Co. v. Roviro Biscuit Corp., 624 F.2d 366, 374 (1st Cir. 1980). And, while suggestive terms suggest, rather than describe the characteristics of the goods, arbitrary arbitrary terms  bear no logical or suggestive relation to the actual characteristics characteristics of the goods.  Id.  Terms which are arbitrary or suggestive are treated as “inherently distinctive” and thus automatically qualify for trademark protection at least in those geographic and product areas in which the senior user  applies it to its goods. Id. citing Keebler , 624 F.2d at 374 n. 8. Mark terms which are descriptive may still be entitled to trademark protection, but only if the claimant proves p roves that consumers identify the term with the claimant, because that identification proves secondary meaning.  Id. To establish whether a mark is suggestive, most courts rely on the “imagination test” under which a term is suggestive “if it requires imagination, thought or perception to reach a This website stores data such as conclusion as to the nature of the goods.”  Id. at 297. A mark is descriptive if it it conveys cookies to enable essential site functionality, as well as marketing, information aboutYou the product, its qualities, ingredients, or characteristics.  Id.  Because there is personalization, and analytics. may change your settings at any time or accept the nodefault logicalsettings. or suggested relationship to its product, the mark “A-1” qualifies as an arbitrary or a

suggestive mark, or at a minimum, it qualifies qu alifies as a descriptive mark.

Privacy Policy

Marketing

If a mark is descriptive, a plaintiff must establish it has acquired a “secondary meaning,”

Personalization

in order to became valid and entitled entitled to trademark protec protection. tion. As mentioned hereinabove, the

Analytics Save

Accept All

11

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 12 of 16

Court may look to a non-exclusive list of factors to determine whether the mark has achieved “secondary meaning.”  Ford Motor Co., 930 F.2d at 291-292; see also, Times Mirror Magazines,  Inc. v. Las Vegas Sports News, LLC , 212 F3d. 157, 165 (3d Cir. 2000)(to establish whether mark 

has achieved “secondary meaning,” the Court considers: (1) the length and exclusivity of use of  the mark; (2) the size or prominence of the plaintiff’s enterprise; (3) the existence of substantial advertising by the plaintiff; (4) established place in the market; and, (5) proof of intentional copying). In its motion for summary judgment and supporting documents, plaintiff has put forth evidence that “A-1 Mortgage,” “A-1 Mortgage of Cranberry” and “A-1” trade names have achieved secondary meaning in in the relative geographic geographic area. Plaintiff has used the indicated indicated trade names for nearly 10 years, and plaintiff’s use of these trade names has been exclusive and continuous during that time. Further, as to the size or prominence of plaintiff’s business business and use of substantial advertising, plaintiff has set forth, through the affidavit testimony of Mr. Coyne (doc. no. 67 - exhibit 9), and Maria Makozy (president (president of A-1 Mortgage) (doc. no. 6 67 7 - exhibit 1), that A-1 has spent in excess ex cess of 4 million dollars on its advertising campaign, and that its trade names have become well known within the mortgage brokerage and financial services trade and This website stores data such as the consuming public. Accordingly, this Court finds that plaintiff’s marks marks have acquired cookies to enable essential site functionality, as well as marketing, secondary meaning in the relevant geographic area, and therefore, rise to the level of being valid personalization, and analytics. You may change your settings at any time or accept the default settings. and legally protected marks. Privacy Policy Marketing

Plaintiff Owns the Mark 

Because plaintiff A-1 Mortgage is a Pennsylva Pen nsylvania nia corporation which provides mortgage

Personalization

 brokerage and financial services and is the exclusive owner of the trademark “A-1 “A-1 Mortgage,”

Analytics Save

Accept All

12

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 13 of 16

which is registered under Pennsylvania Trademark Registration No. 3011052, it is indisputable that plaintiff owns the trademarks. Likelihood of Confusion

In Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983), the United States Court of Appeals for the Third Circuit set forth a list of relevant factors to determine likelihood of confusion. These factors, which are known as the Lapp factors, include: (1) (2) (2) (3) (4) (5 (5)) (6) (6) (7) (7) (8) (9) (10)) (10

the degree degree of of ssimi imilar larity ity betwee between n th thee owner owner’s ’s mark mark and and the the alleg alleged ed infr infring inging ing mark; the str tren engt gth h of the owne owner’ r’ss mar mark; the price price of of the the goods goods and other other factor factorss iindi ndicat cative ive of the care care and and atten attentio tion n expected of consumers when making a purchase; the length length of time time the the defenda defendant nt has used used the the mark mark with without out evidenc evidencee of of actu actual al confusion; th thee iint nten entt o off the the defe defend ndan antt in in ado adopt ptin ing g the the mar mark; k; the evid eviden ence ce of act actua uall conf confus usio ion; n; whethe whetherr the the goo goods, thou thoug gh not comp compeeting, ting, ar are marke markete ted d throu through gh the the same same channels of trade and advertised adve rtised through the same media; the extent extent to whic which h th thee targe targets ts of the the part parties ies’’ sale saless eff efforts orts ar aree the the same; same; the relation relationshi ship p of the goods goods in in the minds minds of consumer consumerss becaus becausee of the simi simila larit rity y of functions; and other other facts facts sugg suggest esting ing that that the consu consuming ming public public might might expect expect the the prior o owner wner to to manufacture a product in the defendant’s market or that he is likely to expand into that market.

 Lapp , 721 F.2d 463. This website stores data suchatas cookies to enable essential site the degree of similarity between the owner's mark and the alleged infringing functionality, as well“Although as marketing, personalization, and analytics. You may change your is settings at factor any time mark but one in the multi-factor confusion analysis, [Courts] have recognized that when or accept the default settings.

 products directly compete, mark similarity similarity ‘may be the most important of the ten factors in Privacy Policy

 Lapp.’” Checkpoint Systems, Inc., 269 F.3d at 281 (citations omitted). omitted). Marks are confusingly

Marketing

similar if the overall impression created by the marks is essentially the same.  Id. A court must

Personalization Analytics Save

Accept All

13

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 14 of 16

compare the sound, appearance appea rance and meaning of the marks to determine whether they are confusingly similar.  Id. (citations omitted). This Court finds that the names “A-1 Mortgage” and “Day One Mortgage” sound so similar to one another that it is virtually impossible to distinguish between the two, especially over the radio. In fact, Mr. Mr. Coyne, mistook the “Day One” commercial for tthe he “A-1” commercial. Further, both names have have the number one and mortgage in tthe he title, so their  appearance is also confusingly similar. similar. After weighing the other Lapp factors, this Court finds that the majority of the factors (including the strength of the owners mark; the amount of time defendant defenda nt has used the mark  without actual confusion; the evidence of actual confusion; the intent of the defendant in using the mark; whether the services were advertised through the same geographic area; the extent ex tent to which the target of the parties’ sale efforts are the same; and the relationship of the goods in the minds of consumers because beca use of similarity of functions) weigh heavily in favor of plaintiff and against defendant. The Court also recognizes that defendant de fendant was previously employed employed by A-1 Mortgage, and therefore, the intent of the defendant in adopting the mark “Day One Mortgage,” and advertising This website stores data such as in the same mediums, with virtually identical advertis a dvertisements, ements, weighs heavily on this Court’s cookies to enable essential site functionality, as well as marketing, impression that defendant’s use of plaintiff’s trademark was done in bad faith and with the intent personalization, and analytics. You may change your settings at any time or accept the settings. to default directly compete with plaintiff. plaintiff. Merely by choosing the confusingly similar similar name “Day One

Mortgage” this Court would find that defendant’s intended to capitalize upon the reputation and

Privacy Policy

Marketing goodwill of the “A-1 Mortgage” mark, but the fact that he h e conducted virtually identical means of  Personalization

advertising further establishes defendant’s defendant’s bad faith intent. Accordingly, under the facts as sset et

Analytics Save

Accept All

14

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 15 of 16

forth in plaintiff’s unopposed motion for summary judgment, and even when viewing the facts in the light most favorable to the non-moving party, this Court finds that defendants’ use of the marks has created a likelihood of confusion, and that such likelihood of confusion was intended  by Goldblum. Plaintiff has met its burden of proof on the merits of its trademark claim, under the Lanham Act, as it has demonstrated: demon strated: (1) that the marks are valid and legally protectable; (2) the marks are owned by plaintiff; and, (3) defendants’ use of the marks to identify goods or services is likely to create confusion. Checkpoint Systems, Inc., 269 F.3d 270. Plaintiff is entitled to a permanent injunction, damages, costs and attorney’s fees

This Court will grant plaintiff’s request for permanent injunctive relief because plaintiff  successfully established established the elements of the cause c ause of action and the merits of its case; there is no available remedy at law to prevent defendant from continuing to engage in violations of   plaintiff’s trademarks; and the balance of equities equities weighs in favor of granting a permanent injunction against defendants. Ciba-Geigy Corp. v. Bolar Pharmaceutical Co., Inc., 747 F.2d 844, 850 (3d Cir. 1984). Defendants are further liable to plaintiff in the amount of their gross profits which are, at This website stores data such as a minimum, $72,000 for the time period in question. Although plaintiff seeks an additional cookies to enable essential site functionality, as well as marketing, $50,000, and this Court personalization, and analytics. You recognizes that it may award, within its discretion, additional amounts may change your settings at any time or accept the default settings. where it finds that the amount amo unt of the recovery is inadequate, 15 U.S.C. § 111 1117(a), 7(a), this Court will

decline to do so here. Privacy Policy Marketing

The Lanham Act further provides that “[t]he Court in exceptional cases may award

Personalization

reasonable attorney’s attorney’s fees to to the prevailing party.” party.” 15 U.S.C. § 1117(a). A case may not be

Analytics Save

Accept All

15

 

Case 2:06-cv-00338-AJS

Document 69

Filed 01/03/2007

Page 16 of 16

deemed exceptional, however, unless the losing party is guilty of subjective bad faith.  Ferrero USA, Inc. v. Ozark Trading, Inc., 952 F.2d 44, 47 (3d Cir. 1991). Because this Court has already

found that defendant Goldblum Gold blum acted with bad faith in using a cconfusingly onfusingly similar similar mark, and his act of shifting his assets (his family home) to avoid a potential judgment further shows his knowledge that he had done something wrong, and that he was attempting to make himself   judgment proof. Further, his actions during the course of the litigation have done nothing to help his cause. Accordingly, this Court finds that this case is one of exceptional circumstances where  plaintiff, as the prevailing party, party, is entitled to reasonable attorney attorney’s ’s fees and costs. Plaintiff’s counsel has supplied an affidavit supporting its claim for legal fees of  approximately $44,458.50 through November, 2006, with anticipated fees of $13,775 for  December, 2006, and costs of $3,150.21 (doc. no. 67 - exhibit 11). This Court finds, based upon its prior extensive litigation experience and its review of numerous fee petitions over the past four years as a district district court judge, the hourly rate rate of $300 and the hours billed to be reasonable, and, therefore, this Court will award attorney’s fees and costs in the amount of $61,383.71. $61,38 3.71. V.

Conclusion

Accordingly, plaintiff’s motion for summary judgment will be GRANTED (doc. no. 67), This website stores data such as and judgment cookies to enable essentialwill site be entered in favor of plaintiff and against defendants in the amount of  functionality, as well as marketing, personalization, and analytics. You $133,383.71. may change your settings at any time or accept the defaultAn settings. appropriate order follows.

s/Arthur J. Schwab Arthur J. Schwab United States District Judge

Privacy Policy Marketing

cc: All counsel of record Personalization Analytics Save

Accept All

16

Sponsor Documents

Or use your account on DocShare.tips

Hide

Forgot your password?

Or register your new account on DocShare.tips

Hide

Lost your password? Please enter your email address. You will receive a link to create a new password.

Back to log-in

Close