United States District Court, M.D. Alabama, Eastern Division
MEMORANDUM OPINION AND ORDER
C. MARKS CHIEF UNITED STATES DISTRICT JUDGE
3, 2019, Plaintiffs Lake Martin Realty, Inc. and Lake Martin
Realty, LLC, (“Lake Martin Realty”) filed an
amended complaint alleging trademark infringement and unfair
competition claims against Defendant The Lake Martin Real
Estate Company, LLC (“Lake Martin Real Estate”).
(Doc. 30). The parties are competing real estate and
brokerage companies that operate around Lake Martin in
Alabama. Specifically, the Plaintiffs allege a claim of false
designation of origin, passing off, and unfair competition
pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a)(1)(B). They also allege a claim of unfair competition
under Alabama common law. (Id.).
is premised on the Court's federal question jurisdiction
pursuant to 28 U.S.C. § 1331 and 15 U.S.C. § 1121,
and the Court's supplemental jurisdiction of the state
law claim pursuant to 28 U.S.C. § 1367(a).
pending before the Court is the Plaintiffs' motion for
partial summary judgment (doc. 33) seeking judgment solely
“on the issue that the LAKE MARTIN REALTY mark acquired
distinctiveness before the defendant began using its mark and
it is a protected mark.” (Id. at 1). The
Plaintiffs contend that they have common law trademark rights
to the mark “Lake Martin Realty” and the
Defendant is unlawfully infringing on that mark by using the
name “The Lake Martin Real Estate Company, LLC.”
The Defendant filed a response in opposition to the motion,
and the motion is now fully briefed and ripe for resolution.
Upon careful consideration of the motion, the briefs, and the
evidence filed in support of and in opposition to the motion,
the Court concludes that the Plaintiffs' motion for
partial summary judgment (doc. 33) is due to be denied.
judgment is proper if the evidence shows ‘that there is
no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.'”
Hornsby-Culpepper v. Ware, 906 F.3d 1302, 1311 (11th
Cir. 2018) (quoting Fed.R.Civ.P. 56(a)). “[A] court
generally must view all evidence and make all reasonable
inferences in favor of the party opposing summary
judgment.” Fla. Int'l Univ. Bd. of Trs. v. Fla.
Nat'l Univ., Inc., 830 F.3d 1242, 1252 (11th Cir.
2016). However, “conclusory allegations without
specific supporting facts have no probative value.”
Jefferson v. Sewon Am., Inc., 891 F.3d 911, 924-25
(11th Cir. 2018). If the record, taken as a whole,
“could not lead a rational trier of fact to find for
the non-moving party, ” then there is no genuine
dispute as to any material fact. Hornsby-Culpepper,
906 F.3d at 1311 (citing Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986)).
movant bears the initial burden of demonstrating that there
is no genuine dispute as to any material fact, and the movant
must identify the portions of the record which support this
proposition. Hornsby-Culpepper, supra (citing
Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986)).
The movant may carry this burden “by demonstrating that
the nonmoving party has failed to present sufficient evidence
to support an essential element of the case.”
Id. The burden then shifts to the non-moving party
to establish, by going beyond the pleadings, that a genuine
issue of material fact exists. Hornsby-Culpepper at
facts, taken in a light most favorable to the non-movant, are
January 2004, Russell Lands incorporated Lake Martin Realty,
Inc., but did not use the corporation for any purpose until
2009. (Doc. 35 at Ex. A & L). In 2009, Russell Lands
purchased an ERA franchise, and named the company ERA Lake
Martin Realty, LLC. (Id. at Ex. B). ERA Lake Martin
Realty was a real estate listings company doing business
around Lake Martin in Alabama. In 2013, the Plaintiffs
determined that their relationship with ERA did not benefit
them, so they negotiated a settlement and left the franchise
system. (Doc. 23, Tr. Prel. Inj. Hr'g at 25-27). The
Plaintiffs began operating as Lake Martin Realty, LLC, on
March 1, 2013. (Id. at 28).
18, 2018, Dusty Bowles, the owner and manager of the
Defendant registered the name “The Lake Martin Real
Estate Company, LLC” with the Alabama Secretary of
State, and started doing business under that name.
(Id.). In July 2018, Steve Forehand, Vice President
and General Counsel for Russell Lands on Lake Martin wrote to
Bowles requesting that she discontinue use of the words
“Lake Martin Real Estate” as part of her business
name. (Doc. 30, Ex. A). She declined, and this litigation
sole issue before the Court at this juncture is whether the
“LAKE MARTIN REALTY mark acquired distinctiveness
before the defendant began using its mark and is a protected
mark.” (Doc. 33 at 1). It is undisputed that the
Plaintiffs do not have a registered trademark. However, they