United States District Court, N.D. Alabama, Southern Division
MEMORANDUM OPINION & ORDER
G. CORNELIUS, U.S. MAGISTRATE JUDGE
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
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).
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
www.weightowellnessbham.com, 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). 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). 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).
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).
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). 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).
Standards of Review
Motion to Dismiss
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).
Motion for Summary Judgment
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.
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).