Opinion
CIVIL ACTION FILE NO. 1:17-CV-3430-MHC
2020-02-12
D. H. PACE COMPANY, INC. d/b/a Overhead Door Company of Atlanta, Plaintiff, v. AARON OVERHEAD DOOR ATLANTA LLC, Jeremy Ryan Lucia, and Stephenie Lucia, Defendants.
Jennifer Fairbairn Deal, Richard Charles Henn, Jr., Kilpatrick Townsend & Stockton, LLP, Atlanta, GA, for Plaintiff. Lisa Pavento, Meunier Carlin & Curfman, LLC, Atlanta, GA, Michael C. Kendall, Kendall Mandell, LLC, Samantha Rose Mandell, Kendall Law Group, LLC, Douglasville, GA, for Defendants.
Jennifer Fairbairn Deal, Richard Charles Henn, Jr., Kilpatrick Townsend & Stockton, LLP, Atlanta, GA, for Plaintiff.
Lisa Pavento, Meunier Carlin & Curfman, LLC, Atlanta, GA, Michael C. Kendall, Kendall Mandell, LLC, Samantha Rose Mandell, Kendall Law Group, LLC, Douglasville, GA, for Defendants.
ORDER
MARK H. COHEN, United States District Judge
Plaintiff D.H. Pace Company, Inc. d/b/a Overhead Door Company of Atlanta ("Pace") brings this action based on allegations that Defendants Aaron Overhead Door Atlanta LLC ("Aaron"), Jeremy Ryan ("Ryan") Lucia, and Stephenie Lucia (collectively, "Defendants") have been operating a garage door business that uses a domain name, social media handles, and other words and phrases that are designed to mislead and confuse consumers into believing that Aaron is the same company or somehow affiliated with Pace. Compl. [Doc. 1]. This case comes before the Court on Plaintiff Pace's Motion for Partial Summary Judgment [Doc. 81], and Defendants’ Motion for Summary Judgment on Counts VI and VII of Plaintiff's Amended Complaint (Libel and Slander) [Doc. 86]. I. BACKGROUND
The parties have filed on the docket both publicly redacted and sealed unredacted versions of the motions for partial summary judgment and certain supporting documents. For purposes of this Order, the Court cites to the sealed unredacted versions for completeness and consistency, but will endeavor not to reveal any information in its Order which the Court deems proprietary.
At the outset, the Court notes that as this case is before it on the parties’ cross motions for summary judgment, the Court views the evidence presented by the parties in the light most favorable to the non-movants and has drawn all justifiable inferences in favor of the non-movants. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ; Sunbeam TV Corp. v. Nielsen Media Research, Inc., 711 F.3d 1264, 1270 (11th Cir. 2013). In addition, the Court has excluded assertions of facts that are immaterial or presented as arguments or legal conclusions or any fact not supported by citation to evidence (including page or paragraph number). LR 56.1B(1), NDGa. Further, the Court accepts as admitted those facts in the parties’ respective statements of material facts that have not been specifically controverted with citation to the relevant portions of the record. LR 56.1B(2)(a)(2), NDGa. See Statement of Undisputed Material Facts in Supp. of Pl.’s Mot. for Partial Summ. J. ("Pace's SMF") [Doc. 84-2]; Defs.’ Resp. to Pace's SMF ("Aaron's Resp. to SMF") [Doc. 102-1]; Defs.’ Statement of Additional Material Facts for Trial in Opp'n to Pl.’s Mot. for Partial Summ. J. ("Aaron's Add'l SMF") [Doc. 102-2]; Pl.’s Reply in Supp. of its Statement of Undisputed Material Facts in Supp. of Pl.’s Mot. for Partial Summ. J. ("Pace's SMF Reply") [Doc. 123-2]; Pl.’s Resp. to Aaron's Add'l SMF ("Pace's Resp. to Add'l SMF") [Doc. 123-1]; Defs.’ Statement of Undisputed Facts in Supp. of their Mot. for Summ. J. on Counts VI and VII of Pl.’s Am. Compl. (Libel and Slander) ("Aaron's SMF") [Doc. 86-1]; Pl.’s Resp. to Aaron's SMF ("Pace's Resp. to SMF") [Doc. 91-1]; Pl.’s Statement of Additional Undisputed Material Facts in Opp'n to Defs.’ Mot. for Partial Summ. J. ("Pace's Add'l SMF") [Doc. 91-2]; Defs.’ Resp. to Pace's Add'l SMF ("Aaron's Resp. to Add'l SMF") [Doc. 119-1].
A. Pace's Business and Distributorship Agreements
Since 1921, Overhead Door Corporation ("ODC"), an Indiana corporation, has been engaged in the business of designing, manufacturing, selling, and servicing upward-acting doors and the equipment for operating such doors. Distributor's Agreement (Nov. 15, 1981) ("1981 Agreement") [Doc. 105-1] at 1. ODC is a subsidiary of Sanwa Holdings Company, a Japanese company. Pace's Add'l SMF ¶ 25; Aaron's Resp. to Add'l SMF ¶ 25. ODC markets its products nationwide through authorized ODC distributors, giving them the right to use ODC's trademarks and tradenames, "Overhead Door Corporation" and "Overhead Door," in connection with selling and marketing ODC's products. 1981 Agreement at 1. In 1981, Pace obtained an ODC authorized distributorship in Georgia. Id.
Pace is a Delaware corporation with its principal place of business in Olathe, Kansas. Pace's SMF ¶ 2; Aaron's Resp. to Pace's SMF ¶ 2. Pace's principal place of business for its ODC operations is in Atlanta, Georgia. Pace's Add'l SMF 21; Aaron's Resp. to Add'l SMF ¶ 21. Pace's parent company is E.E. Newcomer Enterprises, Inc., and is owned by people or trusts within the United States. Id. ¶ 22.
In the past decade, Pace has invested over $8.5 million in advertising and promoting ODC's brand in the Atlanta area marketplace. Pace's SMF ¶ 14; Aaron's Resp. to SMF ¶ 14; Decl. of John Nale ("Nale Decl.") [Doc. 83] ¶¶ 12-13. Specifically, Pace advertised under the name "Overhead Door Company of Atlanta" (the "ODC Tradename") on its website, and on social media platforms, global search engines, other online and printed service directories, and radio programs. Nale Decl. ¶¶ 13-21. Pace has alleged its specific sales volumes in Georgia under the ODC Tradename for the years 2007 through 2016. Pace's SMF ¶ 32; Aaron's Resp. to Pace's SMF ¶ 32. B. Aaron's Business
The specific dollar amounts of the yearly sales volumes are filed under seal.
In 1968, a garage door company, "Aaron Overhead Door," was founded in California and later acquired by the Conte family. Dep. of Larry Conte (June 4, 2018) ("Conte Dep.") [Doc. 122-3] at 9:17-22, 17:11-15. Larry Conte ("Conte"), the son of the family, hired Ryan around 2006 as a marketer for Aaron Overhead Door. Conte Dep. at 38:6-11. After his parents retired and stopped the company, Conte started "Aaron Overhead Doors," with a different name and a different tax ID number. Id. at 10:17-25, 11:5-24. Ryan visited Conte in California to receive training on how to sell, install, and repair garage doors. Id. at 43:9-21. Conte understood that Ryan owned the name "Aaron Overhead Doors" in Georgia, and they had a verbal agreement that if Ryan ever sold his business, he would give Conte fifteen percent of the profits. Id. at 49:8-14, 57:14-20.
In 2015, Ryan began installing, repairing, and selling garage doors in Atlanta, Georgia. Pace's SMF ¶ 40; Aaron's Resp. to Pace's SMF ¶ 40. Owned by Ryan, Aaron is headquartered in Buford, Georgia, and advertises using the names "Aaron Overhead Doors Atlanta, Aaron Overhead Door Atlanta, and Aaron Overhead Doors." Id. ¶ 44. Until approximately April 2018, Aaron used the following logo:
Pace's SMF ¶ 54; Aaron's Resp. to SMF ¶ 54. Aaron began using the following modified logo around April 2018:
Pace's SMF ¶ 55; Aaron's Resp. to SMF ¶ 55. Aaron admits there is overlap between its business and Pace's business, and that there is similarity in the goods and services offered and how they are advertised, marketed, and promoted. Aaron's Resp. to SMF ¶ 145. Aaron also admits that it, like Pace, is in the business of offering garage door products and garage door installation and repair services. Id. ¶¶ 147-49.
C. The ODC Trademarks and Tradename
ODC owns U.S. Reg. No. 1,807,028, registered on November 30, 1993, which covers the below ribbon mark:Trademark Principal Register No. 1,807,028 [Doc. 83-1 at 2]. ODC also owns U.S. Reg. No. 5,149,005, registered on February 28, 2017, which covers the below red ribbon mark:
The only differences between mark numbers 1,807,028 and 5,149,005 are that the latter mark is filled in with the color red and its borders are white instead of black.
Trademark Principal Register No. 5,149,005 [Doc. 83-1 at 3-4]. Mark number 5,149,005 was registered for the use of metal and non-metal overhead doors and the electronic controls for operating such doors. Id. Finally, ODC owns U.S. Reg. No. 5,149,006, also registered on February 28, 2017, which covers the red ribbon mark below:
Trademark Principal Register No. 5,149,006 [Doc. 83-1 at 5-6]. Mark number 5,149,006 was registered for the use in connection with providing services in the field of metal and non-metal overhead doors and the electronic controls for such. Id.
Pace alleges that ODC incorporates the registered red ribbon mark with the words, "Overhead Door" into the below logo:
Pace's SMF ¶10. However, this combined mark is not registered. Pace's SMF Reply ¶ 11; see also Pl.’s Mem. in Supp. of its Partial Mot. for Summ. J. ("Pace's MPSJ") [Doc. 84-1] at 3 n.5. Notably, ODC's legal counsel stated in 2007, in reference to enforcing trademark rights in Iowa,
we do not have exclusive rights to the words "Overhead" or "Overhead Door" ... Unless we have some concrete evidence that they are holding themselves out to the public as your distributorship or that they are using our logos ... it is unlikely that we will be able to prevent
them from using the "Overhead" wording in their ads.
E-mail from Christine S. Johnson, Legal Counsel, Overhead Door Corporation, to Martin Fauchier (May 8, 2007) [Doc. 97-4] at 1.
D. Pace's Allegations of Trademark Infringement and Customer Confusion
On March 14 and April 14, 2017, Pace sent letters to Aaron alleging unfair competition and demanding that Aaron "cease and desist from all of the use of the trade name ‘Overhead Door’ in connection with [Aaron's] good and services" as well as other confusing "titles/phrases" that are similar to "Overhead Door Company of Atlanta." [Doc. 82-22]. In addition, Pace also sent demand letters or e-mails requesting the same to ten other Georgia companies who are alleged to have been using some combination of the terms "Overhead Door," "Atlanta," or both in their business names or in their advertising [Docs. 106-2, 106-3, 106-4, 106-5, 109-9, 110-2, 110-3, 110-4].
Pace attached to its motion thirty-three phone call transcriptions between potential customers and Aaron representatives, where customers called requesting services from "Overhead Door," but were unclear if they reached the correct business or were unsure if Aaron performed their prior service or not. [Docs. 82-31, 82-33 through 82-35, 82-37, 82-38, 82-40, 82-42, 82-44, 82-45, 82-47, 82-49, 82-51, 82-53, 82-55, 82-57, 82-59, 82-60, 82-62, 82-64, 82-66, 82-68, 82-70, 82-72, 82-73, 82-75, 82-76, 82-78, 82-80, 82-82 through 82-84, 82-86]. Pace also exchanged internal emails about potential customer confusion, and received documented customer complaints, about at least seven other Georgia companies with the term "overhead door" in their business name or in their advertising [Docs. 109-10, 110-5, 111-2 through 111-8].
E. Pace's Allegations of Libel and Slander
At the conclusion of fact discovery, this Court granted Pace leave to amend its initial Complaint to add claims of libel and slander, after it discovered the content of certain calls and text conversations. Nov. 27, 2018, Order [Doc. 71]. Pace asserts that the following three conversations constitute evidence to support its additional claims:
(1) Customer Vicky Oquendo called Ryan on January 7, 2017 and asked if Aaron was the company that had originally fixed her garage door.
The call proceeded as follows:
Oquendo: So there is a lot of overhead garage door people with the same name, so my question is, I'm wondering if there is any way I can find out if it's your company I used to repair my door.
....
Ryan: Yeah I don't think it was us. We just started this location in August 1, 2015. So we're just like a year and a half old.
Oquendo: Oh, you're not the ones then. Not that it matters, I'm just saying you're not the ones that repaired it last time.
....
Oquendo: ... My little control thing says Liftmaster.
Ryan: Okay, yeah, so The Overhead Door Company does not install Liftmaster. They actually bought Genie out. They're a Japanese owned company. And they have acquired Genie and they install Genie's now.
Oquendo: Oh, okay. So what are they called ... Overhead Company?
Ryan: Yeah, the Overhead Door Company of Atlanta or The Overhead Door Company of Greater Hall County. Yeah, those two companies.
Vicky Oquendo Call Transcription (Jan. 6, 2017) ("Oquendo Call") [Doc. 82-45] at 2.
(2) Customer Annette Dunn called Ryan on February 27, 2017, requesting help with her garage door:
Dunn: Ya'll [sic], when I bought this house 7 years ago ya'll [sic] put a monitor on my door for me ... And the motor seems to be working fine, but sometimes the door will go up, and sometimes it won't ... And I need somebody to fix it for me.
Ryan: Okay, so real quick, I just want to make sure that we're on the same page. This location has only been open for a year and a half so I want to make sure you know that you may not be calling the same company. Who are you trying to reach?
...
Ryan: Oh okay. The Overhead Door Company is a Japanese company, they're a franchise. They have 3 locations in Georgia, that I am aware of. One in Atlanta, one in Gainesville, and one in Athens. I do not have their phone number, but it is easily found if you type in Overhead Door Corporation Atlanta, or whatever. Whatever location is closes [sic] to you.
Dunn: Well I did that[,] but I put in Gainesville and this is the number I got.
Ryan: Okay, so that one they actually go off of.... yeah[,] I'm sorry. The reason is because our name is Aaron Overhead Doors. Unaffiliated with the Overhead Door Company. So[,] the one in Gainesville is called Overhead Door Corporation of Greater Hall County. If you type that in, you should be able to see it. I mean, I'd be more than happy to help you out, but I just don't want to mislead you in thinking that we're a company that you've done business with, when we haven't done business with you.
Dunn: Well, are you in competition with Overhead Door?
Ryan: Yes ma'am.
Dunn: Okay, well, I don't care who does it. I just would like to have my door fixed. Do you do that?
Ryan: Okay, yes’ [sic] ma'am and we would love to service your door.
Dunn: Okay.
Annette Dunn Call Transcription on Feb. 27, 2017 ("Dunn Call")
[Doc. 82-49] at 2.
(3) In a text message conversation on March 10, 2017, an un-identified person texted Aaron asking for a quick service of a Genie model garage opener. Text Log (Mar. 10, 2017) [Doc. 92-1]. Ryan responded, "Thanks for reaching out! Either way we would replace it with a Liftmaster ... We wouldn't repair it. Some companies do ... In our experience, Genie openers haven't been durable enough to repair." Id. The person responded, "K ty. I'll pass." Id. Ryan responded, "Genie is owned by Overhead Door Corp. It's a Japanese company. I'd start there because they made the opener and can fix it." Id. The person responded, "Good idea. Thanks for expedited reply." Id.
F. Amended Complaint
Based on the foregoing, Pace asserts the following claims against Defendants: (1) unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) (Count I); (2) deceptive trade practices under the Georgia Uniform Deceptive Trade Practices Act ("GUDTP"), O.C.G.A. § 10-1-372(a), (b)(2) (Count II); (3) unfair competition under OCGA § 23-2-55 and Georgia common law (Count III); (4) trademark infringement under Georgia common law (Count IV); (5) false or misleading advertising in violation of Section 43(a) of the Lanham Act and O.C.G.A. § 10-1-421 (Count V); (6) libel in violation of O.C.G.A. § 51-5-1 (Count VI); and (7) slander in violation of O.C.G.A. § 51-5-4 (Count VII). First Am. Compl. [Doc. 72] ¶¶ 42-56. Pace asserts Counts I-V against all Defendants and Counts VI and VII against all Defendants except Stephenie Lucia. See infra n.5.
II. LEGAL STANDARD
Summary judgment is appropriate when "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). A party seeking summary judgment has the burden of informing the district court of the basis for its motion and identifying those portions of the record which it believes demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions," and cannot be made by the district court in considering whether to grant summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ; see also Graham v. State Farm Mut. Ins. Co., 193 F.3d 1274, 1282 (11th Cir. 1999).
If a movant meets its burden, the party opposing summary judgment must present evidence demonstrating a genuine issue of material fact or that the movant is not entitled to judgment as a matter of law. Celotex, 477 U.S. at 324, 106 S.Ct. 2548. In determining whether a genuine issue of material fact exists, the evidence is viewed in the light most favorable to the party opposing summary judgment, "and all justifiable inferences are to be drawn" in favor of that opposing party. Anderson, 477 U.S. at 255, 106 S.Ct. 2505 ; see also Herzog v. Castle Rock Entm't, 193 F.3d 1241, 1246 (11th Cir. 1999). A fact is "material" only if it can affect the outcome of the lawsuit under the governing legal principles. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. A factual dispute is "genuine" if the evidence would permit a reasonable jury to return a verdict for the nonmoving party. Id.
"If the record presents factual issues, the court must not decide them; it must deny the motion and proceed to trial." Herzog, 193 F.3d at 1246. But summary judgment for the moving party is proper "[w]here the record taken as a whole could not lead a rational trier of fact to find for the non-moving party." Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (citation omitted).
III. DISCUSSION
The parties have filed cross-motions for summary judgment as to specific counts of the Amended Complaint. Pace contends that it is entitled to judgment as a matter of law as to Counts I, II, III, and IV because Pace (1) owns a valid mark in the ODC Tradename and (2) Aaron's use of the infringing marks and internet advertising are likely to cause confusion. Pace's MPSJ at 9-10. Aaron contends that it is entitled to judgment as a matter of law on Counts VI and VII because Pace cannot establish slander per se or proof of special damages. Defs.’ Brief in Supp. of Mot. for Summ. J. on Counts VI and VII of Pl.’s Am. Compl. ("Aaron's MPSJ") [Doc. 86-2].
The Court notes that any claims against Defendant Stephenie Lucia are excluded from consideration in this Order. Specifically, Pace states that it does not seek summary judgment against her on Counts I, II, III, and IV, and does not bring any of its libel or slander claims against her in the first instance. Pace's MPSJ at 1 n.1; Pace's Resp. to SMF ¶ 10; 30(b)(6) Dep. at 16:10-13. Moreover, the Court notes that Pace has omitted Count V from its motion. See Pace's MPSJ. of Mot. for Summ. J. on Counts VI and VII of Pl.’s Am. Compl. ("Aaron's MPSJ") [Doc. 86-2].
A. Pace's Motion for Partial Summary Judgment on Count I (Unfair Competition Under the Lanham Act)
Count I of Pace's Amended Complaint alleges unfair competition pursuant to Section 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a), which provides as follows:
(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a). "Section 43(a) of the Lanham Act creates a federal cause of action for unfair competition ... [and] forbids unfair trade practices involving infringement of trade dress, services marks, or trademarks, even in the absence of federal trademark registration." Univ. of Fla. v. KPB, Inc., 89 F.3d 773, 775-76 (11th Cir. 1996) (citations omitted). To prevail on a claim under Section 43(a) of the Lanham Act, a plaintiff must show: "(1) that it had prior rights to the mark at issue and (2) that the defendant had adopted a mark that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two." Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2001) (citing Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 358 (11th Cir. 1997) ); see also Crystal Entm't & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320 (11th Cir. 2011).
Thus, two questions must be answered in this case: (1) does Pace have any enforceable rights in the ODC tradename "Overhead Door Company of Atlanta" and, if so, (2) is Aaron's use of "Aaron Overhead Doors Atlanta," "Aaron Overhead Doors," "OverheadDoorAtl," or "Overhead Door" confusingly similar so that consumers would likely confuse them with Overhead Door Company of Atlanta?
Pace acknowledges that ODC actually owns this tradename. Pace's SMF ¶ 3.
1. Enforceable Rights in the ODC Tradename
The Court notes that Pace's motion for partial summary judgment argues that Aaron's "Infringing Marks," which it defines as "Aaron Overhead Doors Atlanta, Aaron Overhead Doors, OverheadDoorAtl, Overhead Door, and variations thereof, as well as the domain name aaronoverheaddoors.com," are confusingly similar to the ODC Tradename. Pace's MPSJ at 5, 9. Pace has presented facts regarding the red ribbon mark, but it does not contend that Aaron's logos are also infringing on its trademark rights. See id. at 8-31. Thus, the Court only considers Pace's rights in the ODC Tradename, and whether summary judgment should be granted to protect such rights from the Infringing Marks, as defined herein.
Pace claims that "ODC owns the federally registered Red Ribbon trademark incorporated in the logo below:"Pace's MPSJ at 3; Pace's SMF ¶ 10. However, Pace admits that its federal trademark registrations cover only the red ribbon's shape and color but not the words "Overhead Door." Pace's MPSJ at 3 n.5.
The Eleventh Circuit has recognized that valid rights may still exist in an unregistered trademark under the Lanham Act as long as the mark is "sufficiently distinctive," or "capable of distinguishing the owner's goods from those of others." Tana v. Dantanna's, 611 F.3d 767, 773 (11th Cir. 2010) (internal quotation marks and citations omitted). The Eleventh Circuit recognizes four types of marks, in increasing distinctiveness:
(1) generic—marks that suggest the basic nature of the product or service; (2) descriptive—marks that identify the characteristic or quality of a product or service; (3) suggestive—marks that suggest characteristics of the product or service and require an effort of the imagination by the consumer in order to be understood as descriptive; (4) arbitrary or fanciful—marks that bear no relationship to the product or service, and the strongest category of trademarks.
Tana, 611 F.3d at 774 (quoting Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 797-98 (11th Cir. 2003) ).
The last two categories of marks, suggestive and arbitrary or fanciful, are "deemed inherently distinctive because their intrinsic nature serves to identify a particular source of a product and are generally entitled to trademark protection." Id. (internal quotation marks and citation omitted). While generic marks are generally incapable of receiving trademark protections, "[d]escriptive marks, though not inherently distinctive, may become sufficiently distinctive to enjoy trademark protection by acquiring ‘secondary meaning.’ " Id. (citing 15 U.S.C. § 1052(f), and Coach House Rest., Inc. v. Coach and Six Rests., Inc., 934 F.2d 1551, 1560 (11th Cir. 1991) ).
Pace contends that it has enforceable rights in the ODC Tradename because the term is sufficiently distinctive. Pace's MPSJ at 10. Specifically, Pace contends that its composite mark, "Overhead Door Company of Atlanta" is "at a minimum, descriptive" but "indisputably not generic." Id. at 12. Pace bases its argument on the contention that Aaron "has no evidence that consumers in the Greater Atlanta Area consider Pace's composite mark generic" and the testimony of its linguistics expert, Robert Leonard, who has opined, after reviewing "language databases, dictionaries, trade usage, the parties’ usage, and consumer usage," that the phrase "Overhead Door Company of Atlanta" is not a generic term for garage doors "since it refers to who as opposed to what." Id. at 13. In response, Aaron contends that the phrase "Overhead Door Company" is a generic term and that the addition "of Atlanta" only adds a geographic description to an otherwise generic term. Aaron's Resp. to Pace's MPSJ at 13-17.
As an initial matter, to the extent that Pace attempts to shift the burden of establishing that the classification of the ODC tradename to Aaron, that would be contrary to law, as Pace has the burden of proof to determine the strength of the ODC mark. See, e.g., Welding Servs., Inc. v. Forman, No. 2:05-CV-96-WCO, 2006 WL 8445326, at *4 (N.D. Ga. May 24, 2006) (citing G. Heileman Brewing Co. v. Anheuser–Busch, Inc., 873 F.2d 985, 993-94 (2d Cir. 1980) ("Since the WSI marks are not registered, [the] plaintiff has the burden of establishing that these marks are not generic.")), aff'd, 509 F.3d 1351 (11th Cir. 2007) ; see also 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 12:12 (5th ed. 2019) (stating that if a mark is not federally registered, the party who claims to own the trademark bears the burden of proving that the mark is not generic).
A term or phrase is generic when it is commonly used to depict a genus or type of product, rather than a particular product. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). When a term is generic, "trademark protection will be denied save for those markets where the term still has not become generic and a secondary meaning has been shown to continue." Id. at 10. We have held that "the burden is on plaintiff to prove that its mark is a valid trademark ... [and] that its unregistered mark is not generic." Reese Publishing Co. v. Hampton Int'l Communications, Inc., 620 F.2d 7, 11 (2d Cir. 1980).
Murphy Door Bed Co. v. Interior Sleep Sys., Inc., 874 F.2d 95, 100 (2d Cir. 1989) ; see also Robarb, Inc. v. Pool Builders Supply of the Carolinas, Inc., 696 F. Supp. 621 (N.D. Ga. 1988) ("[The] plaintiff has the burden of showing either that its trade dress is inherently distinctive or that it has acquired secondary meaning."). Whether a given term is generic is a question of fact. In re Watts, 8 F. App'x 967, 968 (Fed. Cir. 2001) (citing In re Nett Designs Inc., 236 F.3d 1339, 1341 (Fed. Cir. 2001) ). The Court finds that Pace has failed to meet its burden to establish that the term "Overhead Door" is not generic.
"A term which suggests the basic nature of the service is generic and is typically incapable of achieving service mark protection because it has no distinctiveness." Coach House Rest., 934 F.2d at 1560. The Merriam-Webster Dictionary defines "overhead" to mean "operating, lying, or coming from above," and the word "door" to mean "a usually swinging or sliding barrier by which an entry is closed and opened." Overhead, Merriam-Webster's Collegiate Dictionary (11th ed. 2003); Door, Merriam-Webster's Collegiate Dictionary (11th ed. 2003). The use of the combination of the words "overhead door" simply refer to a "barrier" which "comes from above" and has been considered to be a generic term. See PSK, LLC v. Hicklin, 757 F. Supp. 2d 836, 860 (N.D. Iowa 2010) ("[T]he court holds that ‘overhead’ is a generic term when used in connection with garage doors."). This is consistent with other decisions holding that the combination of two words which merely indicate the basic nature of the product is the essence of a "generic" term. See Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312, 1321 (11th Cir. 2012) (affirming grant of summary judgment on grounds that the words " ‘ale house’ ... are generic words for a facility that serves beer and ale, with or without food"); Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 18-21 (1st Cir. 2008) (reversing district court's finding that the phrase "duck tour" was non-generic); Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 976 (8th Cir. 2006) (affirming grant of summary judgment on grounds that the term "Brick Oven" is generic); Best Buy Warehouse v. Best Buy Co., Inc., 920 F.2d 536, 537 (8th Cir. 1990) (affirming summary judgment in favor of defendant where district court "held that the phrase ‘best buy’ is generic as a matter of law"). In addition, the fact that Pace uses a generic term such as "Overhead Door" coupled with a geographic identifier ("of Atlanta") does not automatically convert a generic term into one that is descriptive. Miller's Ale House, 702 F.3d at 1321.
The cases cited by Pace are inapposite. See, e.g., Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 363 (11th Cir. 1997) (affirming decision that the plaintiff was not entitled to priority over the descriptive words "Lone Star"); Country Floors, Inc. v. Partnership Composed of Gepner & Ford, 930 F.2d 1056, 1063 (3d Cir. 1991) (reversing grant of summary judgment to partnership selling ceramic tiles under the name "Country Tiles" over a company selling tiles under the name "Country Floors" where the court made inappropriate credibility determinations).
The only evidence presented by Pace to show that "Overhead Door of Atlanta" is not generic is the opinion testimony of a linguist, Dr. Robert Leonard. Pace's MPSJ at 13. Dr. Leonard opines that "neither OVERHEAD DOOR COMPANY OF ATLANTA nor OVERHEAD DOOR is a generic term" based on a search of websites, dictionaries, Google trends, and consumer reviews. Expert Report of Robert Leonard, Ph.D. [Doc. 82-12]. Although this evidence provides some support for Pace's position, it is not dispositive, given other indicia that the term may be generic.
Although Aaron attempts to raise a Daubert objection to Dr. Leonard's opinion in its responses to Pace's Statement of Undisputed Material Facts (see Aaron's Resp. to SMF ¶¶ 33-38), Aaron did not file a Daubert motion as required by this Court's Local Rules. See LR 26.2C, NDGa ("Any party objecting to an expert's testimony based on Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 113 S. Ct. 2786, 125 L.Ed.2d 469 (1993) shall file a motion no later than the date the proposed pretrial order is submitted.")
In the case of a descriptive mark, a "[p]laintiff has the burden of sustaining a high degree of proof in establishing a secondary meaning for a descriptive term" which "must be considered by the court when ruling on a motion [for] summary judgment." Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1525 (11th Cir. 1991). "A name has acquired secondary meaning when the primary significance of the term in the minds of the consuming public is not the product but the producer." Knights Armament Co. v. Optical Sys. Tech., Inc., 654 F.3d 1179, 1188 (11th Cir. 2011) (internal quotation marks omitted) (quoting Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007) ). In other words, secondary meaning requires that a "name denotes to the consumer or purchaser ‘a single thing coming from a single source.’ " Tartell v. S. Fla. Sinus & Allergy Ctr., Inc., 790 F.3d 1253, 1257 (11th Cir. 2015) (quoting Am. Television & Commc'ns Corp. v. Am. Commc'ns & Television, Inc., 810 F.2d 1546, 1549 (11th Cir. 1987) ).
A court should consider four factors when determining whether a mark has acquired secondary meaning: "(1) [T]he length and nature of the name's use; (2) the nature and extent of advertising and promotion of the name; (3) the efforts of the proprietor to promote a conscious connection between the name and the business; and (4) the degree of actual recognition by the public that the name designates the proprietor's product or service." Tartell, 790 F.3d at 1257 (quoting Tana, 611 F.3d at 776 ). "Actual identification is best proved by surveys or other quantifiable proof, and, absent such data, it is very difficult to prove." Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp. 2d 1360, 1371 (N.D. Ga. 2010) (quoting Gulf Coast Commercial Corp. v. Gordon River Hotel Assocs., No. 2:05-CV-564-FTM-33SPC, 2006 WL 1382072, at *10 (M.D. Fla. May 18, 2006) ).
Pace argues that secondary meaning was created by the combined effect of (a) its exclusive ownership of the tradename for more than eighty years, (b) its significant advertising budget, (c) its sales volume, and (d) the fact that "consumers use and understand that the Overhead Door Company of Atlanta mark and variations refer to Pace." Pace's MPSJ at 14-15. Although it does not appear that Aaron contests the facts establishing Pace's continued use of the tradename, the amount of money Pace has spent on advertising, and the amount of Pace's sales, Aaron asserts that Pace has failed to show that consumers understand that the primary significance of the phrase "Overhead Door Company of Atlanta" is not the product but the producer. Aaron's Resp. to Pace's MPSJ at 21-23. Even assuming arguendo that the ODC Tradename is descriptive, this Court finds that Pace has not met its burden for purposes of summary judgment to demonstrate that the mark has acquired secondary meaning.
Pace supports its assertion that consumers identify the mark with Pace, as opposed to the product of overhead doors, with the declaration of John Nale, its Executive Vice President and Southeast Regional Manager, in which he avers, "Pace's advertising associates the Overhead Door Company of Atlanta mark with a single source." Pace's MPSJ at 15 (citing Nale Decl. ¶ 13). "[I]t is not the amount of money spent on advertising that is important, but the results achieved with the money spent." Atlanta Allergy, 685 F. Supp. 2d at 1369 (quoting Bank of Texas v. Commerce Sw., Inc., 741 F.2d 785, 788 (5th Cir. 1984) ). Although there is undisputed evidence that Pace has made a concerted effort to promote its product, which is relevant to the inquiry of secondary meaning, this fact without more does not conclusively establish secondary meaning. See Brooks Shoe Mfr. Co. v. Suave Shoe Corp., 716 F.2d 854, 860-61 (11th Cir. 1983) ("[E]vidence of extensive advertising and other promotional efforts does not necessarily indicate that prospective buyers of athletic shoes would associate the "V" design on Brooks shoes with a particular source."); see also Miller's Ale House, 702 F.3d at 1321 ("[T]he fact that Miller's expanded its locations and spent more [on] advertising provides little to no indication of public perception, because it has no bearing on how that expansion and advertising was received."). Pace has not proferred any surveys or other quantitative evidence to establish that its customers identify the ODC Tradename with Pace's product. Am. Television & Commc'ns Corp., 810 F.2d at 1550-51. Pace also does not present testimony from any customer that the ODC Tradename meant Pace's business to them as opposed to just the product of overhead garage doors. See Vision Ctr. v. Opticks, Inc., 596 F.2d 111, 119 (5th Cir. 1979) (finding that the testimony of seven customers that "Vision Center" meant the plaintiff's business to them, testimony that the plaintiff had occasionally received mail addressed to other establishments that had "vision" in their name, evidence that a customer of one of the defendant's stores in another city believed the plaintiff and the defendant were associated, and recognition of the plaintiff's long use of the term was insufficient to establish secondary meaning). In fact, ODC's own legal counsel at one time opined that it could not claim a protectable interest in the terms "Overhead" or "Overhead Door" unless there was "concrete evidence that another business was "holding themselves out to the public as your distributorship or that they are using our logos." E-mail from Christine S. Johnson, Legal Counsel, Overhead Door Corporation, to Martin Faunchier (May 8, 2007) at 1. There is no such evidence before this Court.
Pace attempts to support its conclusory statement—that their "advertising associates the [ODC] mark with a single source"—by its social media pages [Doc. 82-4], customer service awards [Doc. 82-9], and employee volunteering in the community [Doc. 82-10]. See Nale Decl. ¶ 13; Pace's SMF ¶ 15. However, while this evidence serves to reinforce the scope and efforts of their advertising, it does not reveal the effect of such advertising on public perception. See Miller's Ale House, 702 F.3d at 1321. In other words, even if Pace has shown that it tried to promote a conscious connection between the ODC Tradename and Pace, the present record does not conclusively establish that "consumers use and understand the Overhead Door Company of Atlanta mark and variations thereof to refer to Pace." Pace's MPSJ at 15.
In Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc), the United States Court of Appeals for the Eleventh Circuit adopted as binding precedent all decisions of the former Fifth Circuit issued before October 1, 1981.
Without any other market surveys, polling, or other quantitative evidence of customer perception, based upon the evidence currently before the Court, there are genuine disputed issues of material fact as to whether "Overhead Door Company of Atlanta" has acquired a secondary meaning. See Am. Television and Commc'ns Corp., 810 F.2d at 1549-50 (collecting cases) (affirming the district court's finding that there was no secondary meaning in a tradename where the plaintiff "presented no more than speculation about what its name might mean," in light of the lack of survey or other testimonial evidence, and in spite of "advertising, press releases, coverage in the media, [and] Time, Inc.’s annual reports"). Accordingly, because there remains a genuine issue of material fact as to Pace's enforceable rights in the ODC Tradename, summary judgment is inappropriate.
Even if the ODC Tradename was a descriptive mark that had acquired secondary meaning, the Court questions whether the Distributor Agreements between Pace and ODC permit Pace to litigate any infringement of a tradename that belongs to ODC, not Pace. Pace claims that the Distributor Agreements authorize them to protect the ODC Tradename and enforce their trademark rights against infringers in the Atlanta area. Pace's SMF ¶ 12. Upon Aaron's objection that the Distributor Agreements do not support this statement, Pace replied that their "trademark rights are not created by contract, but rather through use ." Pace's SMF Reply ¶ 12. Pace's argument here is misplaced, because Pace's sole right to sell ODC products, and to use the ODC Tradename in furtherance thereof, was granted by the Distributor Agreements. Surely Pace would not argue that it had a right to enforce the mark if the distributor agreements with ODC were terminated. The evidence before the Court consists of the 1981 Agreement and an agreement from 2016, both of which explicitly provide that ODC retains the ownership of its tradename and trademarks. See 1981 Agreement; Distributor Agreement (May 10, 2016) ("2016 Agreement") [Doc. 104-2]. While the 1981 Agreement is silent as to Pace's right to enforce ODC's trademark rights, the 2016 Agreement explicitly provides that ODC, not the distributor, "shall have the sole right ... to take actions to enforce its rights against any third party, which may be infringing any of [ODC's] Marks." 2016 Agreement at 3. Further, the 2016 Agreement states that "[Pace] shall not itself take any actions against any third party to prevent such third party's use of [ODC's] Marks (or any mark or term deceptively similar thereto) without first obtaining [ODC's] written consent to take such action." Id. Neither party has provided evidence of such consent, and, as such, the Court notes that without it, Pace does not appear to have the right to enforce any trademark rights in the ODC Tradename in the first instance.
Given that the Court has already determined that there is a dispute of fact as to whether the ODC Trademark has a secondary meaning, there is no need to determine whether Aaron's tradename is likely to confuse consumers. Am. Television & Commc'ns Corp., 810 F.2d at 1550. Nevertheless, because a consideration of this issue would also lead to a denial of summary judgment, the Court will discuss it below.
2. Likelihood of Confusion
The Eleventh Circuit uses a seven-factor test to determine likelihood of confusion:
(1) strength of the mark alleged to have been infringed; (2) similarity of the infringed and infringing marks; (3) similarity between the goods and services offered under the two marks; (4) similarity of the actual sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) similarity of advertising methods; (6) intent of the alleged infringer to misappropriate the proprietor's good will; and (7) the existence and extent of actual confusion in the consuming public.
Tana, 611 F.3d at 774-75. "In this Circuit, we are required to consider each of the seven factors." Welding Servs., 509 F.3d at 1361. Although the "likelihood of confusion is a question of fact, it may be decided as a matter of law" and the Eleventh Circuit routinely weighs the likelihood-of-confusion factors on summary judgment. Tana, 611 F.3d at 775 (citation and quotation omitted).
a. Strength of the Mark
"Whether a mark is generic, descriptive, suggestive, or arbitrary also plays into its strength, which is the first factor of our likelihood-of-confusion inquiry." Tana, 611 F.3d at 774 n.6. "The strength and distinctiveness of plaintiff's mark is a vital consideration in determining the scope of protection it should be accorded. Strong marks are widely protected, as contrasted to weak marks." John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 973 (11th Cir. 1983) (internal punctuation and citation omitted). The Court previously determined that Pace has not fulfilled its burden of proof that the ODC Trademark is distinctive as opposed to generic. To gauge the strength of a mark, a court also should consider the "degree to which third parties make use of the mark." Frehling Enters., Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1336 (11th Cir. 1999) (citing John H. Harland, 711 F.2d at 974-75 ). "The less that third parties use the mark, the stronger it is, and the more protection it deserves. Id.; see Investacorp, Inc., 931 F.2d at 1519 (noting that the likelihood of use by competitors is high where the name is made up of "formative" words).
There is evidence before the Court of other companies in the Atlanta area also using the term "overhead door" in their names. Specifically, Pace's own efforts to enforce its trademark rights have generated demand letters against at least nine different Atlanta-based garage door companies, and internal e-mails regarding a tenth company. [Docs. 106-2 through 106-5, 109-9, 110-2 through 110-4]. Moreover, Pace provided proof of customer confusion reports, documenting cases of at least seven more companies using a similar name or advertising in similar ways. [Docs. 109-10, 110-5, 111-2 through 111-8].
Finally, the extent of the use of a mark, as gauged by the duration of its use and the amount of advertising and promotion done on the mark is a final consideration. Gold Kist, Inc. v. ConAgra, Inc., 708 F. Supp. 1291, 1297 (N.D. Ga. 1989) (citing John H. Harland, 711 F.2d at 973-75 ). As previously discussed, Pace has used the mark for an extended period of time and has expended significant resources promoting its products. However, the evidence before the Court shows the mark is not distinctive and the fact that so many other companies use a similar name in the same city diminishes the strength of the ODC Tradename. See Frehling, 192 F.3d at 1336. Thus, this factor does not favor a finding of likelihood of confusion.
b. Similarity of the Mark
"When analyzing the similarity of the mark, the court must consider the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed." Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 939 (11th Cir. 2010) (quotation and citation omitted). As a general rule, "where the goods and services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dissimilar products." SunAmerica Corp. v. Sun Life Assurance Co. of Canada, 890 F. Supp. 1559, 1575 (N.D. Ga. 1994). However, "[c]ourts in this circuit have repeatedly found that marks otherwise confusingly similar in the abstract are rendered distinct by their presentation." Trilink Saw Chain, LLC v. Blount, 583 F. Supp. 2d 1293, 1315 (N.D. Ga. 2008).
In this case, there is a distinction between Pace's "overhead door" mark, which appears within a red ribbon, and the "Aaron Overhead Doors" mark, which appears in conjunction with a logo depicting the side of a house with garage doors. Compare Pace's SMF ¶ 10, with id. ¶¶ 54-55. Moreover, because the name "Aaron" is depicted alongside the term "overhead doors," it is less likely that the public would be confused with Pace's red ribbon containing the term "overhead door."
Thus, the Court finds that this factor does not support a finding of confusion.
c. Similarity of Products
"This factor requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties." Frehling, 192 F.3d at 1338. The test "is whether the goods are so related in the minds of consumers that they get the sense that a single producer is likely to put out both goods." Id.
The Court finds, and there does not appear to be a dispute that, Pace and Aaron are in the same or similar business of providing garage door products and services in the Atlanta area. See Aaron's Resp. to SMF ¶¶ 145, 147-49. Thus, this factor supports Pace's position.
d. Similarity of Actual Sales Methods and Advertising Methods
The parties’ sales methods "takes into consideration where, how, and to whom the parties’ products are sold." Caliber, 605 F.3d at 940. "The greater the similarity in advertising campaigns the greater the likelihood of confusion." Ross Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1508 (11th Cir. 1985). It is clear from the evidence that both Aaron and Pace advertise in similar ways; moreover, Aaron admits that there was similarity in how their goods and services were advertised, marketed and promoted. Aaron's Resp. to SMF ¶ 145. Thus, these two factors weigh in favor of Pace.
e. Intent of Infringing Party
If a defendant adopts a plaintiff's mark with the intent of obtaining benefit from the plaintiff's reputation, "that fact alone may be sufficient to justify the inference that there is confusing similarity." John H. Harland, 711 F.2d at 977 (internal punctuation and citations omitted). "When analyzing an alleged infringer's intent, we must determine whether the defendant adopted a plaintiff's mark with the intention of deriving a benefit from the plaintiff's business reputation." Caliber, 605 F.3d at 940 (internal quotation marks and citation omitted).
Pace has not submitted any evidence showing that Aaron had any intent to obtain a benefit from ODC's reputation. The evidence in the record suggests to the contrary. In the phone call transcripts that Pace provided, it does not appear that Ryan and his employees misrepresented themselves as ODC. See Oquendo Call; Dunn Call; Corey Robinson Call Transcription on Mar. 11, 2016 ("Robinson Call") [Doc. 82-49] at 2; Delores Davis Call Transcription on June 29, 2015 ("Davis Call") [Doc. 82-35]; Walt Sapronov Call Transcription on Oct. 19, 2016 ("Sapronov Call") [Doc. 82-42]; Willie Stevenson Call Transcription on Mar. 3, 2017 ("Stevenson Call") [Doc. 82-53]. In fact, the calls show that Aaron asserted multiple times that they were not the Overhead Door Company of Atlanta and, in some instances, provided the correct phone number. Id. Thus, the only evidence in the record supports the position that Aaron did not have the intent of obtaining benefit from the plaintiff's reputation.
Moreover, while the parties dispute the exact origin of "Aaron Overhead Door," Conte's control in the company, and whether these facts are relevant, the undisputed facts show that Ryan and Conte knew each other and that Ryan used a business name substantially similar to the name of a company that had been started in 1968, prior to Pace's introduction to the Atlanta area in 1981. Pace's Resp. to Add'l SMF ¶¶ 3-6. These facts further undermine any inference that Ryan adopted the mark with the intention of deriving a benefit from ODC's name and reputation in the Atlanta area. Thus, this factor does not support a finding of a likelihood of confusion.
f. Actual Confusion
"The last factor, actual confusion in the consuming public, is the most persuasive evidence in assessing likelihood of confusion." Tana, 611 F.3d at 779. Here, the phone call transcripts that Pace provided reveal that many customers were confused about who they were calling when they called Aaron for garage door services. See Robinson Call; Davis Call; Sapronov Call; Oquendo Call; Dunn Call; Stevenson Call. However, the Court notes that some customers were confused because of the numerous "Overhead Door" companies listed online. See Davis Call, Oquendo Call. Nevertheless, this factor supports a finding of likelihood of confusion.
g. Overall Balance of Factors
"The role of the court in reviewing a motion for summary judgment is to determine the ultimate question of whether, in light of the evidence as a whole, there is sufficient proof of a likelihood of confusion to warrant a trial of the issue." Tana, 611 F.3d at 775 n.7 ; ITT Corp. v. Xylem Group, LLC, 963 F. Supp. 2d 1309, 1319 (N.D. Ga. 2013) (citation omitted) ("To award summary judgment in a case where these factors are required to be weighed, the Court must consider the evidence in a light most favorable to the non-moving party and must conclude that no reasonable jury could reach a contrary result."). "Because the bottom line is the likelihood of consumer confusion, application of the Frehling factors entails more than the mechanistic summation of the number of factors on each side; it involves an evaluation of the ‘overall balance.’ " Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 649 (11th Cir. 2007) (quoting Frehling, 192 F.3d at 1342 ).
The issue of likelihood of confusion is not determined by merely analyzing whether a majority of the subsidiary factors indicates that such a likelihood exists. Rather, a court must evaluate the weight to be accorded the individual factors
and then make its ultimate decision. The appropriate weight to be given to each of these factors varies with the circumstances of the case.
AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1538 (11th Cir. 1986).
Pace contends that actual confusion is the best evidence of a likelihood of confusion and relies on the phone call transcriptions to show that actual confusion was pervasive. Pace's MPSJ at 18-21. Citing to Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir. 2008), Aaron responds that, in balancing the overall factors, actual confusion should be given less weight when, as here, the confusion resulted from the common usage of a generic term like "overhead door." Aaron's Resp. to Pace's MPSJ at 26.
In Boston Duck Tours, the court concluded that, given its conclusion that the phrase "duck tours" was generic, "the value of the evidence of actual confusion documented by Boston Duck [was] diminished substantially for the likelihood of confusion analysis." 531 F.3d at 25. The court ultimately treated the evidence "as largely irrelevant," because the confusion was "largely, if not exclusively, the product of Boston Duck's lack of competition in its early years and the use of a generic phrase to describe its product." Id. Courts within the Eleventh Circuit have adopted similar logic. See Reinalt-Thomas Corp. v. Mavis Tire Supply, LLC, 391 F. Supp. 3d 1261, 1268 (N.D. Ga. 2019) (quotation marks omitted) (citing Boston Duck Tours, 531 F.3d at 21 ) (further finding that "generic terms are considered in the public domain and cannot be appropriated," and noting that trademark law was "not intended to prevent confusion between two similar, generic marks"); see also Atlantic Nat'l Bank v. Atlantic S. Bank, No. CV208-147, 2010 WL 5067416, at *7-8 (S.D. Ga. July 29, 2010) (finding the evidence of actual confusion de minimis because "by choosing the name ‘Atlantic,’ Atlantic National accepted the risk that consumers might temporarily confuse it with the other Atlantic-named banks or other businesses operating in the southeast or along the Eastern seaboard"); Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 745 F. Supp. 2d 1359, 1373 (S.D. Fla. 2010) (finding that, while the evidence showed that customers were confused whether the two establishments were related, such evidence was irrelevant unless the mark was protectible in the first instance), aff'd, 702 F.3d 1312 (11th Cir. 2012).
Even if this Court found that Pace had some enforceable right in the ODC Tradename, which the Court has found it does not (see supra pp. 1328–34), the Court is persuaded by Boston Duck Tours and would not conclude that there is a likelihood of confusion. Considering the evidence in the light most favorable to Aaron, the Court finds that the factors supporting a likelihood of confusion—similarity of the sales and advertising methods, similarity of the products, and actual confusion—are outweighed by the remaining factors of strength of the mark, similarity of the mark, and intent of the infringing party. On balance, the Court finds the prevalence of the term "Overhead Door" in business names around Atlanta, shown by Pace's own attempts to limit its use and phone calls of customers confused by too many similar search results, is persuasive of the weakness of the ODC Tradename in a competitive market.
For the reasons discussed above, Pace has failed to carry its burden to establish that the ODC Trademark is not generic or that, even assuming the mark is descriptive, has established a secondary meaning. In addition, Pace has failed to show that Aaron's tradename is likely to confuse customers. Because disputed issues of material fact remain, Pace's Motion for Partial Summary Judgment as to Count I is DENIED.
B. Pace's Motion for Partial Summary Judgment on Counts II-IV (Related States Law Claims)
Pace also seeks summary judgment as to its state law claims under the Uniform Deceptive Trade Practices Act (Count II), O.C.G.A. § 10-1-372(a) (Count III), and common law trademark infringement (Count IV). Because the related state law claims of state trademark infringement, common law infringement and unfair competition, and deceptive trade practices involve a similar analysis, the Court's analysis of Count I is determinative of the outcome for Counts II, III, and IV. See Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 258-59 (5th Cir. 1980) (holding that the test for deceptive trade practices and unfair competition under Georgia law is the same as the test under the Lanham Act); Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 839 n.14 (11th Cir. 1983) (noting that Amstar "appear[ed] to support the district court's ruling" that claims alleging deceptive trade practices and unfair competition under Georgia law involve the same dispositive question as claims under the federal Lanham Act); see also Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1248 n.11 (11th Cir. 2007) (citation omitted) (noting that "the analysis of a Georgia unfair competition claim is ‘co-extensive’ with the analysis of a Lanham Act claim"); Kason Indus., Inc. v. Component Hardware Grp., 120 F.3d 1199, 1203 (11th Cir. 1997) (footnote omitted) ("It should be apparent that § 43(a) of the Lanham Act and § 10-1-372(a)(2) of [Georgia's Uniform Deceptive Trade Practices Act] provide analogous causes of action governed by the same standard."); Golden Bear Int'l, Inc. v. Bear U.S.A., Inc., 969 F. Supp. 742, 748 (N.D. Ga. 1996) ("The test of federal trademark infringement is whether there is a ‘likelihood of confusion’ as a result of Defendant's activities. Similarly, an unfair competition claim under § 43(a) of the Lanham Act also depends on establishing a likelihood of confusion.").
See supra n.11.
Having decided that Pace has not met its burden of proof on the federal Lanham Act claim in Count I, the Court finds that Pace also has not met its burden of proof on its state claims. Thus, the Court DENIES Pace's Motion for Partial Summary Judgment on Counts II, II, and IV.
C. Aaron's Motion for Partial Summary Judgment on Count VI (Libel) and Count VII (Slander)
Aaron argues that it is entitled to summary judgment on Pace's libel and slander per se claims because the purported statements—that Pace was "Japanese-owned" and was a "franchise"—were not injurious on their face and do not charge Pace with any defect of character, lack of knowledge, skill, or competency to carry out its business. Aaron's MPSJ at 7-8. Aaron also argues that summary judgment is proper because Pace failed to plead special damages for either count. Id. at 8-10. Pace believes there is "ample evidence" for a reasonable jury to conclude that Aaron's statements constituted libel or slander per se. Pace's Resp. to Aaron's MPSJ [Doc. 91] at 10-16.
As an initial matter, even though Pace responded to Aaron's Motion for Partial Summary Judgment with claims for special damages incurred as a result of Aaron's statements to customers, it failed to plead such special damages when it amended its Complaint to include the libel and slander claims. See First Am. Compl. Thus, Pace's claims are limited to libel per se and slander per se. See FED. R. CIV. P. 9(g) ("If an item of special damage is claimed, it must be specifically stated."); Bellemead, LLC v. Stoker, 280 Ga. 635, 639, 631 S.E.2d 693 (2006) ("Since [plaintiff] did not include in his amended complaint a plea for special damages ... his complaint is limited to one alleging slander per se."); see also Lamar v. Clayton Cty. School District, No. 1:13-CV-1600-HLM, 2014 WL 11462829, at *12 (N.D. Ga. Oct. 7, 2014) (citing Gilmour v. Gates, McDonald & Co., 382 F.3d 1312, 1314 (11th Cir. 2014) ) ("Plaintiff may not amend her pleadings through arguments in a brief in response to a motion for summary judgment.").
Slander, or oral defamation, consists of, in relevant part, "[m]aking charges against another in reference to his trade, office, or profession, calculated to injure him therein." O.C.G.A. § 51-5-4(a)(3). A type of slander, known as slander per se, does not require proof of special damages. Id. § 51-5-4(b) ; Bellemead, 280 Ga. at 637, 631 S.E.2d 693. Slander per se consists of words that are "especially injurious to the plaintiff's reputation because of the particular demands or qualifications of plaintiff's vocation," and they must either be "in connection with his calling or they must be of such a nature such as to charge him with some defect of character or lack of knowledge, skill, or capacity" as necessary to perform his job. Id. at 637, 631 S.E.2d 693 (quotation marks and citation omitted).
To determine if the words constitute slander per se, Georgia courts look to "the plain import of the words spoken." Id. (citation omitted); see also McGee v. Gast, 257 Ga. App. 882, 883, 572 S.E.2d 398 (2002). "Should extrinsic facts be necessary to establish the defamatory character of the words, the words may constitute slander, but they do not constitute slander per se." Cottrell v. Smith, 299 Ga. 517, 523, 788 S.E.2d 772 (2016) (quoting Bellemead, 280 Ga. at 637-38, 631 S.E.2d 693 ). Moreover, "the negative inference a hearer might take from the words does not subject the speaker to liability for slander per se." Bellemead, 280 Ga. at 637-38, 631 S.E.2d 693 (citing Palombi v. Frito-Lay, Inc., 241 Ga. App. 154, 155-56, 526 S.E.2d 375 (1999) (holding that the statement "we're going to get the bottom of this" was not sufficient to subject the speaker to liability for slander per se, despite plaintiff's allegations that there was innuendo of his wrongdoing)). "Truth is a complete defense to alleged libel or slander." Cottrell, 299 Ga. at 523, 788 S.E.2d 772 (citing O.C.G.A. § 51-5-6 ("The truth of the charge made may always be proved in justification of an alleged libel or slander."); see also Lucas v. Cranshaw, 289 Ga. App. 510, 512, 659 S.E.2d 612 (2008) (quotation marks and citation omitted) ("[T]ruth is a perfect defense to a defamation action.")).
"Libel" is a published "false and malicious defamation of another, expressed in print, writing, pictures, or signs, tending to injure the reputation of the person and exposing him to public hatred, contempt, or ridicule." O.C.G.A. § 51-5-1. "[T]he requirements for slander per se apply to libel per se because, as noted, the definition of slander in Georgia has been incorporated into the definition of libel." Cottrell, 299 Ga. at 524, 788 S.E.2d 772 ; see also Dun & Bradstreet, Inc. v. Miller, 398 F.2d 218, 222 nn.4-5 (5th Cir. 1968) ("The Georgia courts have engrafted the four slander categories into the libel statute, the result of which is that a libel falling into one of the first three slander categories is actionable without allegation or proof of special damages," where the first three categories are (1) imputing a crime, (2) charging a contagious disorder or debasing act, and (3) making "charges against another in reference to his trade, office, or profession, calculated to injure him").
Pace contends that Aaron's statements that Pace was a Japanese company were false because, while it is a subsidiary of Sanwa Holdings, it is not itself a Japanese company. Pace's Resp. to Aaron's MPSJ at 10 n.24. However, the fact that ODC is a subsidiary of a Japanese company means that they are at least partially owned by this parent company, even if they remain a separate and distinct entity for the purposes of establishing corporate liability. See JAMES S. RANKIN , JR. & ELIZABETH G. RANKIN , KAPLAN'S NADLER GEORGIA CORPORATIONS , LIMITED PARTNERSHIPS AND LIMITED LIABILITY COMPANIES § 3:32 (2019-2020 ed. 2019) (quotation marks omitted) (citing Subsidiary , BALLENTINE'S LAW DICTIONARY (3d ed. 1969); Indep. Gasoline Co. v. Bureau of Unemployment Comp., 190 Ga. 613, 10 S.E.2d 58 (1940) ) ("A subsidiary corporation is a corporation which is controlled by another corporation (usually called the ‘parent’ or ‘holding’ corporation) by reason of the latter company's ownership of at least a majority of the shares of the capital stock."). Thus, to the extent that any of Aaron's statements that Pace was Japanese-owned are true, this is a complete defense to Pace's libel and slander claims, and Aaron is entitled to judgment as a matter of law. See Cottrell, 299 Ga. at 523, 788 S.E.2d 772.
Nevertheless, assuming that Ryan's statements were false, they still do not constitute libel per se or slander per se. Not only does Pace fail to provide caselaw indicating that such statements have been deemed facially injurious, its claims that Aaron's statements were injurious is dependent on three inferences: (1) that such statements are racially charged; (2) that people in Atlanta prioritize locally-owned and operated businesses; and (3) that Pace has made extensive efforts to establish itself in the local market. Pace's Resp. to Aaron's MPSJ at 10-14. In so doing, Pace asks the Court to consider extrinsic facts, inferences, and innuendo, which precludes a determination that Ryan's statements constituted libel or slander per se. See Cottrell, 299 Ga. at 523, 788 S.E.2d 772 ; Bellemead, 280 Ga. at 637-38, 631 S.E.2d 693 ; Palombi, 241 Ga. App. at 155-56, 526 S.E.2d 375. Thus, Aaron is entitled to judgment as a matter of law on Pace's libel (Count VI) and slander (Count VII) per se claims, and Aaron's Motion for Partial Summary Judgment is GRANTED.
IV. CONCLUSION
For the foregoing reasons, it is hereby ORDERED that Plaintiff Pace's Motion for Partial Summary Judgment [Doc. 81] is DENIED as to Counts I, II, III, and IV, and Defendant Aaron's Motion for Partial Summary Judgment [Doc. 86] is GRANTED as to Counts VI and VII. Pace's libel and slander claims in Counts VI and VII are DISMISSED.
It is further ORDERED that the parties shall file their consolidated proposed pre-trial order within thirty (30) days of the date of this Order.
Although the parties have not briefed the issue, the Court remains concerned that Pace may not have the authority by virtue of its Distributorship Agreements with ODC to enforce any trademark rights in the ODC Tradename. See supra n.12. Accordingly, it is further ORDERED that within fourteen (14) days from the date of this Order, Pace submit a brief on this issue. Aaron shall file any response within fourteen (14) days of the filing of Pace's brief, and Pace shall have ten (10) days to file any reply thereto. IT IS SO ORDERED this 12th day of February, 2020.