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Irwin Holdings, LLC v. Weigh To Wellness, LLC

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

August 15, 2019

IRWIN HOLDINGS, LLC, et al., Plaintiffs,



         Irwin Holdings, LLC, and American Family Care, Inc., commenced this action against Weigh to Wellness, LLC, under the Lanham Act, 15 U.S.C. § 1051, et seq. (Doc. 1). Pending before the undersigned is the defendant's motion seeking dismissal under Rule 12(b)(6) of the Federal Rules of Civil Procedure or, alternatively, summary judgment under Rule 56 of those rules. (Doc. 8). For the reasons discussed below, the defendant's motion is due to be denied.

         I. Facts

         American Family Care is a national network of medical clinics that provides primary, family, urgent, occupational, and outpatient care. (Doc. 1 at ¶ 10). Additionally, it offers its patients a medically-supervised weight loss program called “WeighToLive.” (Id.). Irwin Holdings filed an application for registration of the mark “WeighToLive” (the “WTL mark” or the “plaintiffs' mark”) on March 16, 2015, and obtained registration of the mark on June 14, 2016. (Id. at ¶ 10; Doc. 1-1; Doc. 1-3 at pp. 5-7). It licenses the WTL mark to American Family Care. (Doc. 1 at ¶ 11). In their complaint, the plaintiffs allege the WTL mark has been used in connection with the weight loss program offered by American Family Care since at least February 1, 2014. (Id. at ¶¶ 12-13). The application for registration of the WTL mark, as well as the certificate of registration for the mark, identifies February 1, 2014 as the mark's date of first use. (Doc. 1-1 at p. 2; Doc. 1-3 at p. 6).

         The defendant operates a medically-supervised weight loss program called “WeighToWellness” (the “WTW mark” or the “defendant's mark”) in the same Birmingham, Alabama market where several American Family Care clinics are located. (Doc. 1 at ¶¶ 15-17). Leslie Ellison formed the defendant in January 2014. (Doc. 8-1 at ¶ 6; Doc. 8-4). During that same month, she procured a license to use “obesity management lifestyle modification” software in the defendant's name, purchased the domain names and, and contracted an architectural firm to design a physical office space for the defendant. (Doc. 8-1 at ¶¶ 4-5, 7; Doc. 8-2; Doc. 8-3; Doc. 8-5). In April 2014, Ellison retained a construction company to build out the space. (Doc. 8-1 at ¶ 8; Doc. 8-6). Also in April 2014, the defendant purchased a banner bearing the WTW mark to promote its opening. (Doc. 8-1 at ¶ 9; Doc. 8-7). The defendant began displaying the banner in May 2014. (Doc. 8-1 at ¶ 9; Doc. 8-7). The defendant purchased a sign bearing the WTW mark in June 2014 and began displaying the sign in July 2014. (Doc. 8-1at ¶ 10; Doc. 8-8). Also in June 2014, the defendant purchased and began distributing promotional merchandise (e.g., pens, water bottles, plastic bags) bearing the WTW mark, procured and distributed business cards and letterhead bearing the WTW mark, and began selling to the public privately-labeled products (e.g., meal replacements and protein supplements). (Doc. 8-1 at ¶¶ 11-13; Doc. 8-9; Doc. 8-10).[2] The defendant began what it describes as “extensive” advertising using the WTW mark in community newspapers and through digital means and printed brochures in July 2014. (Doc. 8-1 at ¶ 14; Doc. 8-11).[3] It began advertising through a Facebook account shortly after opening and through an Instagram account in January 2015. (Doc. 8-1 at ¶ 15; Doc. 8-12).

         On June 2, 2015, the plaintiffs sent a letter to the defendant, demanding it immediately cease and desist use of the WTW mark on the grounds such use was likely to cause confusion amongst consumers and infringed on the plaintiffs' mark. (Doc. 1 at ¶ 18; Doc. 1-3). Ellison was not aware American Family Care offered a weight loss program or was using the WTL mark, or that Irwin Holdings had applied for registration of the mark, until she received the cease-and-desist letter. (Doc. 8-1 at ¶ 16). By a letter dated June 26, 2015, the defendant refused to discontinue use of the WTW mark, stating it believed the plaintiffs' claim of potential marketplace confusion was exaggerated. (Doc. 1 at ¶ 19; Doc. 1-4). Because the plaintiffs directed no further correspondence to the defendant, Ellison believed the plaintiffs were satisfied with the defendant's response and considered the matter closed. (Doc. 8-1 at ¶ 17).

         The plaintiffs commenced this action on May 22, 2018, asserting claims against the defendant for trademark infringement under 15 U.S.C. § 1114(1)(a) and unfair competition under 15 U.S.C. § 1125(a)(1). (Doc. 1 at ¶¶ 14, 21-36).[4] They seek an order permanently enjoining the defendant from using the WTW mark, as well as money damages. (Id. at ¶¶ 37-40, pp. 9-10). In response to the complaint, the defendant filed its motion seeking dismissal under Rule 12(b)(6) or, alternatively, summary judgment under Rule 56. As grounds for its motion, the defendant argues the plaintiffs' claims are barred by the doctrine of laches and, alternatively, that it is entitled to summary judgment based on its status as a prior user under 15 U.S.C. §§ 1057(c)(1) and 1115(b)(5).

         II. Standards of Review

         A. Motion to Dismiss

         Dismissal under Rule 12(b)(6) is appropriate if a complaint does not “contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. (citing Twombly, 550 U.S. at 556). “The plausibility standard is not akin to a ‘probability requirement,' but it asks for more than a sheer possibility that a defendant has acted unlawfully.” Id. “[L]abels and conclusions, ” “a formulaic recitation of the elements of a cause of action, ” and “naked assertion[s] devoid of further factual enhancement” are insufficient. Id. (quoting Twombly, 550 U.S. at 555, 557) (internal quotations omitted).

         B. Motion for Summary Judgment

         Under Rule 56 of the Federal Rules of Civil Procedure, “[t]he [district] court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). The party seeking summary judgment bears the initial burden of informing the district court of the basis for its motion and identifying those portions of the record the party believes demonstrate the absence of a genuine dispute as to a material fact. Celotex Corp., 477 U.S. at 323. If the moving party carries its initial burden, the non-movant must go beyond the pleadings and come forward with evidence showing there is a genuine dispute as to a material fact for trial. Id. at 324.

         The substantive law identifies which facts are material and which are irrelevant. Anderson, 477 U.S. at 248. A dispute is genuine if the evidence is such that a reasonable jury could return a verdict for the non-movant. Id. at 248. If the evidence is merely colorable or not significantly probative, summary judgment is appropriate. Id. at 249-50 (internal citations omitted). All reasonable doubts about the facts should be resolved in favor of the non-movant, and all justifiable inferences should be drawn in the non-movant's favor. Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1115 (11th Cir. 1993).

         III. ...

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