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Spire, Inc. v. Cellular South, Inc.

United States District Court, S.D. Alabama, Southern Division

September 11, 2017

SPIRE, INC., Plaintiff,



         This 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, [1] and the parties post-hearing briefs (Docs. 59, 60).

         I. Background

         A. Procedural

         On June 14, 2017, Plaintiff Spire, Inc. (Spire -- a provider of natural gas fueling services)[2]initiated this action against Cellular South, Inc. (C SPIRE - a wireless telecommunications business that also provides television and internet services)[3] to address matters of confusion and dilution between the companies' trademarks which emerged as part of Spire's rebranding of its businesses.[4]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.

         On July 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).

         On August 14, 2017, Cellular South filed a Rule 65(b) motion for entry of a temporary restraining order and injunction against Spire.[5] (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.

         B. Factual Timeline[6]

         9/20/11: 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 SEALED)

         2012: 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).

         9/27/12: 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).

         11/9/12: Laclede began using Spire mark for its natural gas stations. TR II 186.

         1/20/13: 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.

         12/23/13: 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).

         Feb. 2014: Laclede's began rebranding all companies under its umbrella to Spire. TR II 89-90 (Willingham).

         6/10/14: 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).

         Sept. 2014: Laclede acquires Alabama Gas Corporation (Alagascorp).

         12/2/14: Cellular South applies for trademark for C SPIRE Home. (Hrg. Ex. D-5).

         6/10/15: 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.

         8/11/15: Laclede conducts another trademark search; 275 pages resulted. TR II 106-107 (Willingham and Hrg. Ex P-BB).

         9/9/15: Laclede applied to USPTO to register SPIRE INC #86751779. (Hrg. Ex. D-11A).

         2016: 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.

         1/4/16: Laclede applications ##86864712, 86864729, 86864721. (Hrg. Ex. D-11B-D)

         3/24/16: Laclede issues press release about the name change to Spire, Inc. TR II 144, 157, 158 (Willingham). Rebranding covered by and Birmingham Business Journal. Id. at 122.

         3/28/16: 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.

         April 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).

         4/1/16: 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.

         4/27/16: Cellular South files Opposition to Spire's mark registration in the USPTO. Opposition (#91227574) pending. Hrg. Ex. P-J.

         4/28/16: Laclede shareholders approve new name/logo. TR II 122 (Willingham).

         4/29/16: Spire launched new Spire website, changed NYSE ticker symbol to Spire, and all employee email were changed to Spire. TR II 122 (Willingham).

         June-Aug. 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.

         8/29/16: Spire submitted answer to Cellular South in USPTO, reaffirmed rebranding. TR II 126-127 (Willingham).

         Sept. 2016 Spire acquires Mobile Gas.

         Dec. 2016: Spire annual report issues. TR II 129-130 (Willingham). Proclaimed self as Spire in MS, worldwide, webpage, etc. Id. Hrg. Ex. P-O.

         2/21/17: 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).

         4/17/17: Cellular South withdraws dilution by blurring claims before USPTO.

         7/27/17: 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).

         Aug. 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.

         II. Burden of Proof

         Cellular 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.

         III. Lanham Act & Preliminary Injunction

         The 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).

         According 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.

         In 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.

         IV. Substantial likelihood of success on the merits

         A. Federal/Common Law Trademark Infringement/Unfair Competition: Counts I, II

         As set 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 ...

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