United States District Court, N.D. Alabama, Southern Division
SHARON LOVELACE BLACKBURN, Senior District Judge.
This case is before the court on Plaintiff's Motion for Judgment on the Pleadings. (Doc. 20.) Upon consideration of the motion, the supporting and opposing memoranda, arguments of counsel, and the relevant law, the court finds that plaintiff's Motion is due to be granted in part and denied in part.
STANDARD OF REVIEW
Federal Rule of Civil Procedure 12(c) provides that "[a]fter the pleadings are closed-but early enough not to delay trial-a party may move for judgment on the pleadings." "Judgment on the pleadings under Rule 12(c) is appropriate when there are no material facts in dispute, and judgment may be rendered by considering the substance of the pleadings and any judicially noticed facts." Horsley v. Rivera, 292 F.3d 695, 700 (11th Cir. 2002) (citing Hawthorne v. Mac Adjustment, Inc., 140 F.3d 1367, 1370 (11th Cir. 1998)); see also Douglas Asphalt Co. v. Qore, Inc., 541 F.3d 1269, 1273 (11th Cir. 2008) ("Judgment on the pleadings is appropriate when there are no material facts in dispute and the moving party is entitled to judgment as a matter of law."). "Where the plaintiff moves for judgment on the pleadings, the fact allegations of the answer are taken to be true, but those of the complaint are taken as true only where and to the extent that they do not conflict with those of the answer. Thus, [a] plaintiff may not move for judgment on the pleadings where the answer raises issues of fact which if proved would defeat recovery." Parker v. DeKalb Chrysler Plymouth, 459 F.Supp. 184, 187-88 (N.D.Ga. 1978) (citing Bass v. Hoagland, 172 F.2d 205 (5th Cir. 1949), Cert. denied, 338 U.S. 816, 70 S.Ct. 57, 94 L.Ed. 494 (1949)).
FACTUAL BACKGROUND AND PROCEDURAL HISTORY
Plaintiff Peoplelink LLC ("Peoplelink") is an Indiana-based company formed in 1987 that "provides employment staffing and placement services as well as consultation services in connection with business and personnel management." (Doc. 13 ¶¶ 1-3.) Peoplelink currently conducts business in sixteen states throughout the Midwest, Northeast, East, South, and Southeast. ( Id. ¶ 2.) On September 18, 1995, Peoplelink's predecessor in interest filed an application with the United States Patent and Trademark Office to register the "PEOPLELINK" service mark for use in offering "consultation (business and personnel management)." (Doc. 1-1 at 1; Doc. 16 ¶ 7.) That application was registered as U.S. Service Mark Registration No. 2, 008, 114 (the "114 Registration") on October 15, 1996. ( Id. ) Peoplelink then filed another application on March 14, 2000 to register the "PEOPLELINK" mark with a puzzle piece logo separating the words "People" and "link" for use in offering "employment staffing and placement services, " and that application was registered as U.S. Service Mark Registration No. 2, 711, 721 (the "721 Registration") on April 29, 2003. (Doc. 1-1 at 2; Doc. 16 ¶ 6.) Finally, on May 10, 2011, Peoplelink filed a third application to register the "PEOPLELINK" word mark for use in offering "employment staffing and placement services, " and that application issued on May 22, 2012 as U.S. Service Mark Registration No. 4, 145, 433 (the "433 Registration"). (Doc. 1-1 at 3; Doc. 16 ¶ 6.)
Defendant Birmingham Personnel Services, Inc. d/b/a PeoplelinkHR ("PHR") is a business offering job placement services in Alabama under the common law mark "PeopleLinkHR" since November 14, 2003. (Counterclaim Doc. 14 ¶ 4.) PHR has continuously used this mark to promote, advertise, and offer its services throughout the state of Alabama. ( Id. ¶¶ 5, 12.) PHR has never offered consultation services. ( Id. ¶ 8.)
In February 2014, Peoplelink acquired 2AM Group, a premium technical services provider with offices located in Alabama. (Doc. 16 ¶ 10.) Peoplelink plans to open a new facility in Alabama in the immediate future, using the "PEOPLELINK" mark, to provide staffing services for Alabama-based employers, including 2AM Group. ( Id .; see also Counterclaim Doc. 14 ¶ 10.) Peoplelink sent PHR a cease and desist letter on July 1, 2014 demanding that PHR discontinue use of the "Peoplelink" mark, (Doc. 13 ¶ 8), and on this same day, PHR filed a name reservation for "PeoplelinkHR, LLC" with the Alabama Secretary of State. ( See Doc. 20-1 at 4 n.2.) Peoplelink asserts that, sometime after Peoplelink's acquisition of 2AM Group, an employee of 2AM Group called PHR because of the employee's mistaken belief that the two businesses were affiliated, although defendant denies this assertion based on its lack of knowledge. (Doc. 13 ¶ 17; see Doc. 14 ¶ 17.)
Plaintiff filed this action on August 8, 2014, seeking injunctive relief and damages against defendant for federal trademark infringement and unfair competition in violation of the Lanham Act, 15 U.S.C. § 1114(1) and 1125(a), (Doc. 1), and filed a Second Amended Complaint asserting those same claims on September 15, 2014, (Doc. 13). In response to plaintiff's Complaint, defendant filed a Counterclaim, asserting claims against plaintiff for federal trademark infringement, false designation of origin, and unfair competition in violation of the Lanham Act, common law trademark infringement, and deceptive trade practices in violation of Ala. Code § 8-19-1. (Counterclaim Doc. 14 ¶ 1.) Plaintiff then filed the instant Motion for Judgment on the Pleadings, (Doc. 20), seeking judgment in its favor on both its claims and defendant's counterclaims, ( id. at 1).
Plaintiff alleges that defendant has used a "Peoplelink" service mark that is "virtually identical" to plaintiff's marks, that the services provided by defendant under the "PeoplelinkHR" mark are identical to the services offered by plaintiff under its "Peoplelink" marks, and that this usage by defendant constitutes trademark infringement and unfair competition in violation of sections 1114(1) and 1125(a) of the Lanham Act. (Doc. 13 ¶¶ 16, 21, 31.) "15 U.S.C. § 1114 covers infringement of a federally registered trademark, while 15 U.S.C. § 1125(a) more broadly covers any word, term, name, symbol, or device' that is likely to cause confusion.'" ITT Corp. v. Xylem Group, LLC, 963 F.Supp.2d 1309, 1317 n.2 (N.D.Ga. 2013) (citing Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir. 1985)).
"Service marks are any word, name, symbol, or device, or any combination thereof [used]... to identify and distinguish the services of one person... from the services of others and to indicate the source of the services...." Tana v. Dantanna's, 611 F.3d 767, 772 n.3 (11th Cir. 2010) (quoting 15 U.S.C. § 1127) (internal quotations omitted). To prevail on federal claims of trademark infringement and unfair competition, the registrant must show: "(1) that it is the prior owner of the mark, and (2) that the defendant's trade name or service mark is the same or confusingly similar to plaintiff's so that there exists a likelihood of confusion to consumers as to the proper origin of the services." Breakers of Palm Beach, Inc. v. Int'l Beach Hotel Devel., Inc., 824 F.Supp. 1576, 1582 (S.D. Fla. 1993); see also Suntree Techs., Inc. v. Ecosense Intern., Inc., 693 F.3d 1338, 1346 (11th Cir. 2012) (stating that the same test applies to trademark infringement and unfair competition claims).
15 U.S.C. § 1057(b) provides that "[a] certificate of registration of a mark upon the principal register... shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate...." Section 1057(c) establishes priority:
Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except for a person whose mark has not been abandoned and who, prior to such filing... has used the mark ...