United States District Court, S.D. Alabama, Southern Division
ZP NO. 314, LLC, Plaintiff,
ILM CAPITAL, LLC, et. al., Defendants.
F. BIVINS UNITED STATES MAGISTRATE JUDGE.
action is before the Court on Plaintiff ZP No. 314, LLC's
(“ZP's”) Motion to Alter, Amend, or Vacate
the Court's Order or, in the Alternative, Motion for
Certification of Order for Interlocutory Appeal (Doc. 133);
Defendants' Motion for Reconsideration (Doc. 135); and
ZP's Motion for Oral Argument (Doc. 137), Motion to
Strike (Doc. 140), and Motion to Stay the Case (Doc. 141).
For each of the following reasons, ZP's motion to alter,
amend, or vacate (Doc. 133) is DENIED;
Defendants' motion for reconsideration (Doc. 135) is
DENIED; and ZP's motion for oral
argument (Doc. 137), motion to strike (Doc. 140), and motion
to stay the case (Doc. 141) are MOOT.
first to ZP's motion to alter, amend, or vacate the
Court's previous order denying ZP's motion for
summary judgment and granting Defendants' motion for
summary judgment, in part (Docs. 130, 133), the Court notes
at the outset that the premise of ZP's argument for
reconsideration of the Court's previous order is that
“[t]he Eleventh Circuit has established binding
precedent in Jysk Bed ‘n Linen v. Dutta Roy,
810 F.3d 767 (11th Cir. 2015), which squarely held that
action by the United States Patent & Trademark
Office (“PTO”) in not requiring evidence
of ‘secondary meaning' is presumptive evidence of
the inherent distinctiveness (as opposed to
‘acquired distinctiveness') of a mark.” (Doc.
133 at 1) (emphasis added). Stated differently, ZP argues
that the fact that the United States Patent and
Trademark Office (USPTO) did not require ZP to produce
evidence of “secondary meaning” is presumptive
evidence of the inherent distinctiveness (as opposed
to “acquired distinctiveness”) of ZP's marks.
ZP argues that its marks were inherently distinctive
at the time of Defendants' alleged infringing conduct in
this case, including at the time of Defendants' initial
registrations of the domain names in this case, which
pre-dated ZP's registrations of its marks with the USPTO.
ZP further argues that, because its marks were inherently
distinctive, as ostensibly evidenced by the USPTO not
requiring proof of acquired secondary meaning, the Court
should not have considered whether ZP's marks had
acquired secondary meaning, but, rather, should have
proceeded with its legal analysis of ZP's claims based on
the premise that the marks were inherently
distinctive. ZP's arguments are misplaced.
despite insisting repeatedly that the USPTO found that
ZP's marks were inherently distinctive when it
granted registration of the marks, ZP has pointed to no
evidence in the record whatsoever to support that alleged
“fact.” Moreover, despite insisting that the
USPTO granted ZP's application for registration of its
marks without requiring ZP to produce evidence of
“secondary meaning, ” which ostensibly would
imply a finding of inherent distinctiveness by the USPTO, ZP
has again cited no evidence whatsoever to support that
alleged “fact.” Indeed, the only citation to any
evidence related to these alleged “facts” is
ZP's reference to Exhibit 19 to Doc. 121, which includes
a certificate of registration of the “One Ten Student
Living” mark with the USPTO, notice of publication of
the “One Ten” mark by the USPTO, and the State of
Alabama registration of the “One Ten” mark. (Doc.
121-19 at 2). Nowhere in these documents or in any other
evidence before the Court is there any indication of any
consideration by the USPTO of the alleged inherent
distinctiveness of ZP's marks. Contrary to ZP's
arguments, there is no evidence that the USPTO instructed ZP
that it would be unnecessary to produce evidence of secondary
meaning of its marks; there is no evidence that ZP's
marks were determined, expressly or impliedly, by the USPTO
to be inherently distinctive; nor is there any evidence of
any action or inaction by the USPTO with respect to any
alleged finding of inherent distinctiveness of the
marks. Thus, ZP's arguments for reconsideration fail for
this reason alone.
ZP's attempt to rely on the Eleventh Circuit's
decision in Jysk is misplaced. In Jysk, the
court found that the marks (“by design” and
“by design furniture.com”) had acquired
secondary meaning after being used by the plaintiff for
twenty-two years. In addition, the court noted evidence
suggesting that the mark may also have been
inherently distinctive. That evidence consisted of a
letter from the USPTO to the owner of the mark expressly
stating that the mark appeared to be inherently distinctive
and eligible for registration without proof of acquired
distinctiveness. Specifically, the court stated,
“[a]dditionally, in a November 2012 letter,
the United States Patent and Trademark Office responded to
Jysk's application for acquired distinctiveness status
for the bydesignfurniture.com mark, stating that the
application was ‘unnecessary because the mark appears
to be inherently distinctive and is eligible for
registration on the Principal Register without proof of
acquired distinctiveness.'” Jysk, 810 F.3d
at 779 (emphasis added).
instant case, there is no Jysk-like letter in the
record. There is simply no evidence of an express or implied
finding by the USPTO that ZP's marks were inherently
distinctive, nor is there any evidence from which such a
finding could be inferred. The circumstances present in
Jysk are simply not present here.
in a case similar to the instant one, namely Investacorp,
Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C.,
931 F.2d 1519, 1524 (11th Cir. 1991), the plaintiff argued
that the marks “Investacorp” and
“Investcorp” were “inherently distinctive,
” as evidenced by the USPTO's action when it
“passed the [“Investcorp”] mark on to
publication.” The plaintiff argued that the USPTO would
not have passed the mark on to publication unless it had
found that the mark was more than “merely
descriptive” and, thus, that the USPTO must have found
the marks to be “inherently distinctive.”
Id. at 1524. The Eleventh Circuit rejected the
plaintiff's argument and affirmed the district
court's grant of summary judgment for the defendant,
The soft spot in appellant's argument is that there is
no recorded finding by the PTO that [the] service
mark was not descriptive. Consequently, all that this Court
can do is guess at what the PTO's determinations were
while evaluating the merit of each mark. We do not know
whether the PTO even considered the descriptiveness of either
mark. Although we will bestow proper respect to the
determinations of the PTO, we will not defer to an
ethereal determination that is not affirmatively stated by
the administrative agency. Therefore, . . . the term
“Investacorp” is merely descriptive and hence is
not inherently distinctive.
Investacorp, 931 F.2d at 1524 (emphasis added).
instant case, as in Investacorp, there is no genuine
issue of material fact on the issue of whether ZP's marks
were “inherently distinctive.” The record is
simply devoid of any evidence whatsoever that the marks were
anything other than descriptive marks and not entitled to
protection unless they acquired secondary meaning
prior to the dates that Defendants began
registering, trafficking, or using the domain names.
See Investacorp, 931 F.2d at 1524. It
necessarily follows that because there is no evidence before
the Court suggesting, let alone establishing, that ZP's
marks were entitled to any protection prior to the date on
which the marks were registered, there is no issue of
material fact precluding summary judgment for Defendants on
ZP's claims of alleged trademark violations occurring
before registration of the marks on July 25, 2017.
Accordingly, ZP has presented no bases for altering the
Court's order denying ZP's motion for summary
Court further finds that ZP has failed to demonstrate that an
interlocutory appeal is appropriate in this case. 28 U.S.C.
§ 1292(b) allows for certification of an issue for
interlocutory review when the district court is “of the
opinion that such order involves a controlling question of
law as to which there is substantial ground for difference of
opinion and that an immediate appeal from the order may
materially advance the ultimate termination of the
litigation.” 28 U.S.C. § 1292(b). The Eleventh
Circuit has explained that “§ 1292(b) sets a high
threshold for certification to prevent piecemeal
appeals”, and that “[m]ost interlocutory orders
do not meet this test.” OFS Fitel, LLC v. Epstein,
Becker and Green, P.C., 549 F.2d 1344, 1359 (llth Cir.
2008). The undersigned finds that ZP has failed to
demonstrate that its motion involved a controlling question
of law as to which there is substantial difference of
opinion, or that an interlocutory appeal will materially
advance the ultimate termination of this litigation.
Accordingly, ZP's request for an interlocutory appeal is
next, to Defendants' motion for reconsideration (Doc.
135), the Court finds that Defendants have merely reasserted
the same arguments previously rejected by the Court.
Therefore, those arguments will not be re-addressed here.
See Lucky Cousins Trucking, Inc. v. QC Energy Res. Texas,
LLC, 2016 U.S. Dist. LEXIS 188829, *2, 2016 WL 9211669,
*1 (M.D. Fla. Sept. 20, 2016) (“The Court will not
reconsider where the motion, rather than raise new issues,
merely relitigates what has already been found
lacking.”). Accordingly, Defendants' motion for
reconsideration (Doc. 135) is DENIED.
on the foregoing, the Court finds that ZP's motion for
oral argument (Doc. 137), motion to strike (Doc. 140), and
motion to ...