Action Ink, Inc. v. Anheuser-Busch, Inc.

• Decision Date: 17 October 2013
• Docket Number: Civil Action No. 12–141.
• Citation: 959 F.Supp.2d 934
• Parties: ACTION INK, INC. v. ANHEUSER–BUSCH, INC.
• Court: U.S. District Court — Eastern District of Louisiana

959 F.Supp.2d 934

ACTION INK, INC.

v.ANHEUSER–BUSCH, INC.

Civil Action No. 12–141.

United States District Court, E.D. Louisiana.

July 17, 2013.

Order Denying Reconsideration Oct. 17, 2013.

Mary Ellen Roy, Dan Brian Zimmerman, Phelps Dunbar, LLP, Jonathan Percy Lemann, Robert Emmet Couhig, Jr., Couhig Partners, LLC, Michael L. Eckstein, Eckstein Law Firm, APC, New Orleans, LA, for Plaintiff.

Phillip A. Wittmann, Lesli D. Harris, Michael Q. Walshe, Jr., Stone, Pigman, Walther, Wittmann, LLC, New Orleans, LA, John P. Halski, Cadwalader, Wickersham & Taft, New York, NY, Peter E. Moll, Cadwalader, Wickersham & Taft LLP, Washington, DC, for Defendant.

ORDER AND REASONS

SARAH S. VANCE, District Judge.

Before the Court is defendant Anheuser–Busch's motion for summary judgment on its counterclaim and plaintiff's claims. For the following reasons, the Court GRANTS defendant's motion for summary judgment on all of plaintiff's claims and on defendant's counterclaim. The Court DENIES defendant's request for attorneys' fees.

I. BACKGROUND

This trademark infringement and unfair competition case arises out of a dispute between plaintiff Action Ink, Inc., a sports marketing firm, and defendant Anheuser–Busch, Inc. In 1984, plaintiff filed an application to register the mark “THE ULTIMATE FAN” (“the Mark”) and submitted with its application a flyer explaining the concept of holding competitions among sports fans.¹ After requiring several changes to plaintiff's application, on July 9, 1985, the United States Patent and Trade Office (PTO) issued a registration for the Mark for the stated purpose of “promoting the goods and/or services of others by conducting a contest at sporting events.” ²

Plaintiff's president, Michael Eckstein, stated in an affidavit that plaintiff worked with several NBA teams between 1983 and 1987 to hold THE ULTIMATE FAN contests and promotions.³ Plaintiff attempted to conduct more promotions with NBA teams, meeting with product sponsors and commissioning a model mock poster, but these efforts were unsuccessful.⁴ During this period, the New Orleans Breakers of the United States Football League also held a THE ULTIMATE FAN competition, and plaintiff tried to work with the team on additional promotions.⁵ The first contact between plaintiff and defendant occurred in 1988, when Eckstein wrote to defendant requesting that it stop using the phrase “THE ULTIMATE CUBS FAN BUD MAN SEARCH” on infringement grounds.⁶ Counsel for the Chicago Cubs disputed the claim, arguing that the phrases were different and that the reference to “ultimate” was merely descriptive.⁷

In June 1991, Eckstein submitted an affidavit to the PTO, in which he stated that the Mark had been in continuous use in interstate commerce for five consecutive years from the date of registration.⁸ At the expiration of the trademark in 2005, plaintiff applied for renewal of the Mark, which was granted.⁹

In 1995, plaintiff learned that Major League Baseball (MLB) was considering holding an “Ultimate Fan” contest. After plaintiff sent a cease and desist letter, the MLB agreed to add language to its signs indicating that the phrase “Ultimate Fan” was being used with plaintiff's permission.¹⁰ Over the past twenty years, plaintiff has contacted numerous other entities about possible infringement of the Mark, sending over 60 cease and desist letters between 2006 and 2012.¹¹ Some organizations agreed to stop using the phrase,¹² and two companies, GEICO Insurance and Louisiana Lottery, settled with plaintiff in response to cease and desist letters.¹³ In addition, after plaintiff notified Tulane University of its alleged infringement in 2004 and 2009, Tulane contributed tickets to a charity as payment and discontinued its promotion.¹⁴ On April 26, 2013, Tulane signed a licensing agreement with plaintiff, under which Tulane was allowed to use the Mark between January 1, 2013 and June 30, 2014 in exchange for the donation to charity of 300 tickets to Tulane athletic events.¹⁵ No other entities have entered into licensing agreements with plaintiff for use of the Mark.¹⁶

In 2009, plaintiff contacted three NFL teams about promotional contests that it felt infringed its trademark.¹⁷ Upon hearing that defendant was responsible for two of the promotions, plaintiff sent a cease and desist letter to defendant in September 2009 related to its promotion entitled “Bud Light©/ Washington Redskins Ultimate Fan Sweepstakes.” ¹⁸ Defendant responded and requested more information, but no further action resulted. ¹⁹ In 2011, plaintiff became aware of defendant's use of the phrase “Ultimate Fan Experience” during a Bud Light promotion advertised in supermarkets and in commercials aired during NFL games.²⁰ In November 2011, plaintiff sent a cease and desist letter to defendant, to which defendant responded that it would not cease its activities since it was not infringing plaintiff's mark.²¹

On January 19, 2012, plaintiff sued defendant for trademark infringement and false designation of origin under the Lanham Act and violation of state law. Defendant filed a counterclaim, seeking cancellation of plaintiff's federal registration of the Mark.²² Defendant then filed a motion for summary judgment on its counterclaim and all of plaintiff's claims, which is now before the Court.²³

Plaintiff also filed a separate suit on January 6, 2012, against the New York Jets and Arkadium, Inc. for trademark infringement based on the defendants' registration of the “Ultimate Fan” mark in connection with a computer game software program (“the Jets case”).²⁴ On May 30, 2013, Judge Milazzo issued an Order granting summary judgment for the defendants in Action Ink, Inc. v. New York Jets, LLC et al.²⁵ (“the Jets Order”). Judge Milazzo held that Action Ink had abandoned the Mark. She thus dismissed plaintiff's claims against the New York Jets and Arkadium, Inc. for federal trademark infringement, false designation of origin, and common law trademark infringement and unfair competition, since each of the claims required plaintiff to possess a valid trademark.²⁶

After the Jets Order was issued, the parties to this case submitted briefing to the Court discussing its effect on Anheuser–Busch's pending motion for summary judgment. The Court has reviewed these submissions, along with the other documents in the summary judgment record, and rules as follows.

II. STANDARD

Summary judgment is warranted when “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(c)(2); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir.1994). When assessing whether a dispute as to any material fact exists, the Court considers “all of the evidence in the record but refrains from making credibility determinations or weighing the evidence.” Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co., 530 F.3d 395, 398 (5th Cir.2008). All reasonable inferences are drawn in favor of the nonmoving party, but “unsupported allegations or affidavits setting forth ‘ultimate or conclusory facts and conclusions of law’ are insufficient to either support or defeat a motion for summary judgment.” Galindo v. Precision Am. Corp., 754 F.2d 1212, 1216 (5th Cir.1985); Little, 37 F.3d at 1075.

If the dispositive issue is one on which the moving party will bear the burden of proof at trial, the moving party “must come forward with evidence which would ‘entitle it to a directed verdict if the evidence went uncontroverted at trial.’ ” Int'l Shortstop, Inc. v. Rally's, Inc., 939 F.2d 1257, 1263–64 (5th Cir.1991). The nonmoving party can then defeat the motion by either countering with sufficient evidence of its own, or “showing that the moving party's evidence is so sheer that it may not persuade the reasonable fact-finder to return a verdict in favor of the moving party.” Id. at 1265.

If the dispositive issue is one on which the nonmoving party will bear the burden of proof at trial, the moving party may satisfy its burden by merely pointing out that the evidence in the record is insufficient with respect to an essential element of the nonmoving party's claim. See Celotex, 477 U.S. at 325, 106 S.Ct. 2548. The burden then shifts to the nonmoving party, who must, by submitting or referring to evidence, set out specific facts showing that a genuine issue exists. See id. at 324, 106 S.Ct. 2548. The nonmovant may not rest upon the pleadings, but must identify specific facts that establish a genuine issue for trial. See, e.g., id. at 325, 106 S.Ct. 2548;Little, 37 F.3d at 1075 (“Rule 56 ‘mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.’ ” (quoting Celotex, 477 U.S. at 332, 106 S.Ct. 2548)).

III. DISCUSSIONA. Trademark Infringement Claim

The Lanham Act provides a cause of action for trademark infringement against a person who “uses (1) any reproduction, counterfeit, copy[,] or colorable imitation of a mark; (2) without the registrant's consent; (3) in commerce; (4) in connection with the sale, offering for sale, distribution [,] or advertising of any goods; (5) where such use is likely to cause confusion, or to cause mistake or to deceive.” Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir.2008) (alterations in original).

Defendant contends that plaintiff has failed to establish the elements of a trademark infringement claim under the Lanham Act. To maintain its claim, plaintiff must demonstrate that the mark at issue is protectable, that plaintiff is the senior user of the mark, and that there is a likelihood of confusion between its mark and defendant's mark. Union Nat'l Bank of Tex., Laredo, Tex. v....