AGS Holdings, Inc. v. Custom Personalized Lawn Care Corp.
| Decision Date | 18 March 2022 |
| Docket Number | 20-10873 |
| Court | U.S. District Court — Eastern District of Michigan |
| Parties | AGS HOLDINGS, INC., Plaintiff, v. CUSTOM PERSONALIZED LAWN CARE CORPORATION, Defendant. |
Before the court is Defendant Custom Personalized Lawn Care Corporation's Motion for Summary Judgment. (ECF No.19). Plaintiff, AGS Holdings, Inc., filed a complaint against Customer Personalized Lawn Care Corporation (also known as Custom Lawn Care, or “CLC”), accusing CLC of trademark infringement and violating the Michigan Consumer Protection Act. (ECF No. 1, PageID.6-10). CLC moves for summary judgment, arguing that it did not infringe AGS's trademark and that it did not engage in unfair competition under Michigan law. For the reasons discussed below, the court will GRANT IN PART AND DENY IN PART Defendant's Motion. More specifically, the court GRANTS summary judgment as to the claims related to AGS's registered stylized Defender mark, but DENIES summary judgment as to the claims related to AGS's unregistered "Defender" mark.
This action involves the alleged infringement of two trademarks-a registered trademark and an alleged common law mark. Plaintiff AGS is a Michigan company that provides lawn and tree care services. (ECF No. 1, PageID.2). AGS has two divisions-a Lush Lawn division and a Safari Tree division. (Id. at PageID.3). In January of 2018, AGS began to offer what it named the "Defender" program under its Safari Tree division. Id. Under the Defender program AGS provides periodic pest control treatments that extend throughout Michigan's bug season. Id. On January 9, 2018, AGS filed an application to trademark the word "Defender" with the "D" appearing in the shape of a shield (hereinafter "stylized Defender mark"). (ECF No. 1-4, PageID.23). The United States Patent and Trademark Office ("USPTO") registered the trademark on April 16, 2019. Id. AGS uses the stylized Defender mark to brand its Defender Program as follows:
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Defendant CLC is a company that provides fertilization, weed control, and outdoor pest control services primarily to residential customers. (ECF No. 19, PageID.253). In approximately October or November of 2018, CLC upgraded its website and used the word "Defender" to name one of its mosquito and pest control treatment plans:
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(ECF No. 19, PageID.253). CLC decided to name its treatment plan the "Defender Plan" to play off of a Dow Chemical product that was previously named "Defendor." (ECF No. 19-2, PageID.283). CLC used the term "Defender Plan" only on its website, and not in written advertising. ). CLC stopped using the term "Defender Plan" in approximately November of 2020. (ECF No. 19, PageID.254). CLC asserts that it was not aware of AGS's stylized Defender trademark until AGS filed this lawsuit. Id.
AGS's complaint asserts (1) infringement of its stylized Defender mark in violation of 15 U.S.C. §1114[1]; (2) federal trademark infringement and unfair competition in violation of 15 U.S.C. §1125(a); (3) Michigan common law trademark infringement and unfair competition; and (4) a violation of the Michigan Consumer Protection Act. (ECF No. 1, PageID.6-10). CLC answered the complaint on June 3, 2020, denying liability and asserting the fair use doctrine as an affirmative defense. (ECF No. 6, PageID.46). CLC filed the present motion for summary judgment asserting, among other things, that it has not used AGS's trademarks. The motion is fully briefed, the court conducted a hearing at which it heard arguments from both sides, and the motion is now ready for determination. (ECF Nos. 19, 20, 23).
When a party files a motion for summary judgment, it must be granted “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). “A party asserting that a fact cannot be or is genuinely disputed must support the assertion by: (A) citing to particular parts of materials in the record . . .; or (B) showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.” Fed.R.Civ.P. 56(c)(1). The standard for determining whether summary judgment is appropriate is “whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.” State Farm Fire & Cas. Co. v. McGowan, 421 F.3d 433, 436 (6th Cir. 2005) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52 (1986)). Furthermore, the evidence and all reasonable inferences must be construed in the light most favorable to the non-moving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
Where the movant establishes the lack of a genuine issue of material fact, the burden of demonstrating the existence of such an issue then shifts to the non-moving party to come forward with “specific facts showing that there is a genuine issue for trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). That means the party opposing a motion for summary judgment must make an affirmative showing with proper evidence, and to do so the non-movant must “designate specific facts in affidavits, depositions, or other factual material showing ‘evidence on which the jury could reasonably find for the plaintiff.'” Brown v. Scott, 329 F.Supp.2d 905, 910 (6th Cir. 2004). In order to fulfill this burden, the non-moving party only needs to demonstrate the minimal standard that a jury could ostensibly find in his favor. Anderson, 477 U.S. at 248; McLean v. 988011 Ontario, Ltd., 224 F.3d 797, 800 (6th Cir. 2000). However, mere allegations or denials in the non-movant's pleadings will not satisfy this burden, nor will a mere scintilla of evidence supporting the non-moving party. Anderson, 477 U.S. at 248, 251.
The court's role is limited to determining whether there is a genuine dispute about a material fact, that is, if the evidence in the case “is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248. Such a determination requires that the court “view the evidence presented through the prism of the substantive evidentiary burden” applicable to the case. Id. at 254. Thus, if the plaintiff must ultimately prove its case at trial by a preponderance of the evidence, on a motion for summary judgment the court must determine whether a jury could reasonably find that the plaintiff's factual contentions are true by a preponderance of the evidence. See Id. at 252-53. Finally, if the nonmoving party fails to make a sufficient showing on an essential element of its case for which it carries the burden of proof, the movant is entitled to summary judgment. Celotex, 477 U.S. at 323. The court must construe Rule 56 with due regard not only for the rights of those “asserting claims and defenses that are adequately based in fact to have those claims and defenses tried to a jury, ” but also for the rights of those “opposing such claims and defenses to demonstrate in the manner provided by the Rule, prior to trial, that the claims and defenses have no factual basis.” Id. at 327.
In Count I of its complaint AGS asserts that CLC infringed on its registered trademark, in violation of 15 U.S.C. §1114, by having a program called the “Defender Plan”. (ECF No. 1, PageID.6). AGS owns Trademark Registration No. 5, 729, 067-the stylized Defender mark. (ECF No. 1-4). CLC counters that it never used AGS's trademark; therefore it cannot be liable under the Lanham Act. (ECF No. 19, PageID.256, 264). AGS responds that its stylized Defender mark is entitled to trademark protection because it has been registered by the USPTO. (ECF No. 20, PageID.404). Further, AGS argues that CLC's use of the word Defender is likely to be confused with its stylized Defender trademark. (ECF No. 1, PageID.6; ECF No. 20, PageID.411). CLC replies that there is no evidence that it ever used AGS's stylized Defender mark, hence the court should dismiss all of Plaintiff's claims regarding the stylized Defender mark. (ECF No. 25, PageID.481).
15 U.S.C. § 1114. The “use of a protected mark or [the] use of a misleading representation is a prerequisite to the finding of a Lanham Act violation.” Holiday Inns Inc. v. 800 Rsrv., Inc., 86 F.3d 619, 626 (6th Cir. 1996). In Holiday Inns, the plaintiff brought suit against the defendant, alleging that the defendant had infringed its trademark of its telephone number, 1-800-HOLIDAY (1-800-465-4329). Id...
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