United States District Court, S.D. Alabama, Southern Division
K. DUBOSE CHIEF UNITED STATES DISTRICT JUDGE.
matter is before the Court on Defendant Cellular South,
Inc.'s Rule 65 motion for preliminary injunction (Docs.
29, 30, 44), Plaintiff Spire, Inc.'s Opposition (Docs.
33, 43), the August 30-31, 2017 evidentiary hearing,
the parties post-hearing briefs (Docs. 59, 60).
14, 2017, Plaintiff Spire, Inc. (Spire -- a provider of
natural gas fueling services)initiated this action against
Cellular South, Inc. (C SPIRE - a wireless telecommunications
business that also provides television and internet
services) to address matters of confusion and
dilution between the companies' trademarks which emerged
as part of Spire's rebranding of its
businesses.Specifically, Spire filed a declaratory
judgment action asking the Court to declare that it is not
infringing on Cellular South's trademarks (C SPIRE, etc),
that there is no confusion between each company's
trademarks, and that Cellular South lacked any basis for
issuing a March 2016 cease and desist letter to Spire. (Doc.
1). As relief, Spire seeks a judgment from the Court that its
use of the marks does not infringe or violate any trademark
rights of Cellular South; that it is entitled to register the
marks with the USPTO; a judgment cancelling or preventing
registration of certain new C SPIRE marks pursuant to 15
U.S.C. § 1064(3) and/or 15 U.S.C. § 1119; Section
1120 damages; costs; and a finding that this is a Section
1117 exceptional case, awarding attorneys' fees to Spire.
6, 2017, Cellular South filed an answer, and asserted five
(5) counterclaims for federal trademark infringement (Count
I), federal unfair competition (Count II), common law
trademark infringement and unfair competition (Count III),
state trademark dilution (Count IV) and a declaratory
judgment (Count V), relying on the Federal Trademark Act
of 1946, 15 U.S.C. § 1051 et seq. (the
Lanham Act) and Mississippi and Alabama law. (Doc. 8). On
July 27, 2017 Spire filed an amended complaint, asserting two
(2) cause of action: 1) a declaration as to non-infringement,
non-dilution and registrability (that there is no likelihood
of confusion and/or dilution); and 2) cancellation and
prevention of registration of Cellular South's trademarks
and civil liability under 15 U.S.C. § 1064(3), 1119 and
1120. (Doc. 19). On August 10, 2017, Cellular South filed an
answer to Spire's amended complaint. (Doc. 26).
August 14, 2017, Cellular South filed a Rule 65(b) motion for
entry of a temporary restraining order and injunction against
Spire. (Doc. 30). Cellular South seeks a finding
by this Court that there is a likelihood of confusion among
consumers as to the marks, that Spire's use of the marks
has infringed or will infringe on Cellular South's marks,
that Spire's use of the marks constitutes or will
constitute unfair competition, unfair trade practices or
deception, that Spire's use of marks has diluted or will
dilute Cellular South's marks under Alabama and
Mississippi law, and that pursuant to 15 U.S.C. §
1052(a) and (d) Spire's marks should not be registered.
Cellular South seeks a preliminary and permanent injunction
prohibiting Spire from using the marks (or any confusingly
similar version) as a source identifier for the goods and
services identified in Spire's applications or any other
related goods and services - focused currently on Spire's
recent rebranding and marketing efforts.
Cellular South begins doing business “under one or more
of the C SPIRE Marks” to rebrand itself as C SPIRE
(Doc. 8 at 21; TR II 139 (Hayes and Hrg. Ex. D-4). This brand
launch takes time and costs approximately $12.8 million (Hr.
Ex. D1-SEALED). Cellular South has spent
approximately $275 million on marketing since 2011 (including
$140 million in MS and $18 million in AL). (Hrg. Ex. D-2, D-3
The Laclede Group, Inc. started looking at rebranding, name
development etc. TR II 91-92 (Willingham). Laclede chose the
name Spire in 2012. Id. at 94 (Willingham).
Laclede ordered a trademark search. TR II 94-95 (Willingham
and Hrg. Ex. P-Z). Laclede did not find any company confusion
and not identify any competitors, etc. Id. Looked
for competitors in business line (goods/services class).
Id. at 97. Comprehensive search was 455 pages and C
SPIRE not show up at all. Id. at 99. Laclede did not
know the company existed. Id. at 93-94 (Willingham).
Laclede began using Spire mark for its natural gas stations.
TR II 186.
LXE, LLC (subsidiary of Honeywell Intl.) entered into a
consent agreement with Cellular South in which it was agreed
that the word mark Spire was not confusing as used in the
relative market. Honeywell sold antennas for infrastructure,
not to consumers. TR. 79 (Hayes) Honeywell (via LXE and now
subsidiary Hand Held Products, Inc.) owns/uses #2534546 Spire
for antennas for wireless communications.
Laclede continues using word mark Spire for natural gas
vehicle fueling services. TR II 83, 139, 222-223
(Willingham). The mark is displayed in a combination of gray,
blue and white. TR II 223 (Willingham).
2014: Laclede's began rebranding all companies under its
umbrella to Spire. TR II 89-90 (Willingham).
Laclede registers Spire mark for fueling stations. TR II 83,
141, 142 (Willingham and Hrg. Ex. D-11F). Used on 2 stations-
S.C. and MO - not in MS or AL. Id. Also used on a
nationwide website. Id. (Principal Register
(#4548479) by Laclede).
2014: Laclede acquires Alabama Gas Corporation (Alagascorp).
Cellular South applies for trademark for C SPIRE Home. (Hrg.
Laclede conducts another trademark search; 596 pages
resulted. TR II 101-103, 220 (Willingham and Hrg. Ex P-AA). C
SPIRE was identified in this search. Id. C SPIRE not
in same business so believed to be irrelevant to Laclede.
Id. The results show over 150 active registrations
for spire, including 18 in MS and 15 in AL. Id.
Laclede conducts another trademark search; 275 pages
resulted. TR II 106-107 (Willingham and Hrg. Ex P-BB).
Laclede applied to USPTO to register SPIRE INC #86751779.
(Hrg. Ex. D-11A).
Laclede began “master rebranding” campaign. TR II
142, 144, 186 (Willingham and Hrg. Ex. D-11A and D-11B).
Spire began rebranding most of its operations under spire
brand name. (Doc. 1 at 7). Spire uses the marks for
promoting, offering and rendering natural gas
marketing/fueling in AL, MS, MO and SC.
Laclede applications ##86864712, 86864729, 86864721. (Hrg.
Laclede issues press release about the name change to Spire,
Inc. TR II 144, 157, 158 (Willingham). Rebranding covered by
Al.com and Birmingham Business Journal. Id. at 122.
Cellular South sends a cease and desist letter to Laclede. TR
II 117-118 (Willingham); Hrg. Ex. P-R. Cellular South asserts
that Spire's trademarks infringed/diluted CSPIRES
trademarks (Doc. 1-2). Cellular South complains about
Spire's use of mark and damage and or potential damage.
2016: Laclede officially and formally changes name to Spire
Inc. TR II 129, 131 (Willingham). Prior to April 27, 2016
Cellular South was not aware that the Spire brand launch had
already occurred. TR 104 (Hayes).
Spire responded to Cellular South, and told them it had been
using spire mark since December 2013. TR II 118-119
(Willingham); Hrg. Ex. P-I.
Cellular South files Opposition to Spire's mark
registration in the USPTO. Opposition (#91227574) pending.
Hrg. Ex. P-J.
Laclede shareholders approve new name/logo. TR II 122
Spire launched new Spire website, changed NYSE ticker symbol
to Spire, and all employee email were changed to Spire. TR II
2016: Cellular South files Opposition to Spire's
trademark application ##86864712, 86864729, 86864721.
Opposition #91229269. Oppositions # 91227574 and 91229269
consolidated before USPTO as #91227574. In Opposition.
Cellular South claims likelihood of confusion, diluting by
blurring, false suggestion of a connection/disparagement.
Hrg. Ex. P-L and P-M.
Spire submitted answer to Cellular South in USPTO, reaffirmed
rebranding. TR II 126-127 (Willingham).
2016 Spire acquires Mobile Gas.
2016: Spire annual report issues. TR II 129-130 (Willingham).
Proclaimed self as Spire in MS, worldwide, webpage, etc.
Id. Hrg. Ex. P-O.
Spire submits interrogatory response to Cellular South before
the USPTO, again stating its rebranding process continues and
noting completion expected by end of 2017. TR II 128-129
(Willingham and Hrg. Ex. P-N).
Cellular South withdraws dilution by blurring claims before
Spire submits materials to Mississippi public service
utilities commission with specific timelines. TR II 158-159,
161-162 (Willingham). Shows launch date 8/30/17. Id.
(Hrg. Ex. D-20).
2017: Spire's rebranding continues. TR II 162
(Willingham). Spire has communicated to the Willmut, Mobile
Gas and Alagascorp customers about becoming Spire.
Id. All employees while not yet wearing new
uniforms, are wearing Spire hats, Spire ID badges, and
signage transition has already begun (vehicle fleet started
last week as part of an 8 week process). Id.
Burden of Proof
South asserts five (5) counterclaims for: 1) federal
trademark infringement, 15 U.S.C. § 1114 (Count I); 2)
federal unfair competition, Section 43 of the Lanham Act, 15
U.S.C. § 1125(a) (Count II); 3) common law trademark
infringement and unfair competition (Count III); 4)
Mississippi and Alabama state trademark dilution (Count IV);
and 5) a declaratory judgment (Count V). Cellular South
requests injunctive relief against Spire and thus bears the
burden of proving entitlement to such relief.
Lanham Act & Preliminary Injunction
Lanham Act prohibits the unauthorized use of a registered
trademark in connection with “the sale, offering for
sale, distribution, or advertising of any goods or
services.” 15 U.S.C. § 1114(1)(a). The Act confers
the “power to grant injunctions, according to the
principles of equity and upon such terms as the court may
deem reasonable, to prevent the violation of any right of the
registrant of a mark registered” in the USPTO. 15
U.S.C. § 1116(a). Nevertheless, “[a] preliminary
injunction is an extraordinary and drastic remedy not to be
granted unless the movant clearly establishes the burden of
persuasion as to the four requisites.” Am. Civil
Liberties Union of Fla., Inc. v. Miami-Dade Cty. Sch.
Bd., 557 F.3d 1177, 1198 (11th Cir. 2009).
The four (4) prerequisites are: 1) a substantial likelihood
of success on the merits; 2) irreparable injury/harm will be
suffered unless the injunction issues; 3) threatened injury
to the movant outweighs whatever damage/harm the proposed
injunction may cause the non-movant; and 4) the injunction
would not be adverse to the public interest. FF Cosmetics
FL, Inc. v. City of Miami Beach, 2017 WL 3431453, *4
(11th Cir. Aug. 10. 2017). “Failure to show
any of the four factors is fatal, and the most common failure
is not showing a substantial likelihood of success on the
merits. See, e.g., Schiavo, 403 F.3d at 1226 n. 2,
1237; Church v. City of Huntsville, 30 F.3d 1332,
1342 (11th Cir.1994); Cunningham v. Adams, 808 F.2d
815, 821 (11th Cir.1987).” Miami-Dade, 557
F.3d at 1198. As a drastic remedy, “its grant is the
exception rather than the rule[.]” Siegel v.
LePore, 234 F.3d 1163, 1176 (11th Cir. 2000).
“If the movant is unable to establish a likelihood of
success on the merits, a court need not consider the
remaining conditions prerequisite to injunctive
relief.” Johnson & Johnson Vision Care, Inc. v.
1-800 Contacts, Inc., 299 F.3d 1242, 1247
(11th Cir. 2002).
to Cellular South: 1) it adopted the mark C SPIRE long before
(since September 2011) Spire began using the mark Spire; and
2) the Spire mark is likely to cause confusion or mistake or
deceive the public as to affiliation, connection, origin,
sponsorship or approval (trademark infringement, unfair
competition and dilution). Cellular South relies on the
testimony and reports of Rhonda Harper (expert in consumer
research and branding) and Susie Hayes (V.P. of Consumer
Markets for Cellular South) in support.
contrast, according to Spire, it has been using the mark
since December 2013 without any confusion. Spire also asserts
that Cellular South cannot establish a substantial likelihood
of success on the merits because the marks are not likely to
be confused because: natural gas and telecommunications
services are not closely related; the parties operate in
different and unrelated industries with different products,
channels of trade and consumers; and the colors, appearance
and pronunciation of the marks differ. Additionally, Spire
highlights Cellular South's Consent Agreement with
another entity in which: 1) Cellular South agreed that the
marks used between them, which both share the word term
“spire” and are both in the telecommunications
field “can coexist in the marketplace without
confusion, deception, or mistake to the relevant
consumers[--]” representing such to the USPTO; and 2)
Cellular South contractually limited its use of its C Spire
marks to telecommunications goods/services which contradicts
its current claims that Spire's natural gas services is
within its “natural zone of expansion.” Spire
also relies upon the report and testimony of Dr. Jacob Jacoby
(expert in trademark research and branding) and testimony of
Jessica Willingham (V.P. of Spire communications and
marketing) in support.
Substantial likelihood of success on the
Federal/Common Law Trademark Infringement/Unfair
Competition: Counts I, II
forth in Choice Hotels Int'l v. Key Hotels of Atmore
Ii, LLC, 2016 WL 6652453, *3 (S.D. Ala. Nov. 9, 2016):
“Section 32(1) of the Lanham Act attaches liability for
trademark infringement when a person ‘use[s] in
commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark' which ‘is likely to
cause confusion, or to cause mistake, or to deceive.”
15 U.S.C. § 1114(1)(a).'” “In order to
prevail on a trademark infringement claim based on a
federally registered mark, ‘the registrant must show
that (1) its mark was used in commerce by the defendant
without the registrant's consent and (2) the unauthorized
use was likely to cause confusion, or to cause mistake or to
deceive.'” Optimum Tech., Inc. v. Henkel
Consumer Adhesives, Inc., 496 F.3d 1231, 1241
(11th Cir. 2007). Additionally,
“[o]rdinarily, trademark infringement cases are
predicated on the complaint that the defendant employed a
trademark so similar to that of the plaintiff that the public
will mistake the defendant's products for those of the