Anello Fence, LLC v. Vca Sons, Inc.
| Decision Date | 28 January 2019 |
| Docket Number | Civil Action No. 13-3074 (JMV) (JBC) |
| Parties | ANELLO FENCE, LLC, Plaintiff, v. VCA SONS, INC. d/b/a FREEDOM FENCE, et al., Defendants. |
| Court | United States District Courts. 3th Circuit. United States District Courts. 3th Circuit. District of New Jersey |
Not for Publication
This trademark case arises out of a family dispute over the use of the last name "Anello" in competing outdoor fencing businesses in northern New Jersey. D.E. 1. Plaintiff Anello Fence, LLC, is owned by S. Steven Anello. Defendant VCA Sons, Inc. ("VCA") d/b/a Freedom Fence, is owned by Steven's cousins: Vincenzo Anello, Jr.; Salvatore Anello; Christopher Anello; and Anthony Anello. Plaintiff sued for trademark infringement, contributory trademark infringement, misrepresentation, false designation of origin, false advertising, unfair competition, unjust enrichment, and tortious interference. D.E. 1. Defendant VCA has counterclaimed for cancellation of trademark registration, false advertising, cybersquatting, and unfair competition. D.E. 59.
Currently pending before this Court are three motions: (1) Defendant VCA's motion for summary judgment on Plaintiff's Counts I and II (Sections 32(a) and 43(a) of the Lanham Act, 15 U.S.C. § 1125), D.E. 133; (2) Defendant VCA's motion for summary judgment1 on the remaining counts, D.E. 134; and (3) Defendant VCA's motion in limine to preclude the testimony of Plaintiff's damages expert, Gary Rosen, D.E. 135. After the initial briefing, Plaintiff requested leave to supplement the record with certain additional arbitration awards. D.E. 149. The Court reviewed all submissions,2 and considered the motions without oral argument pursuant to Fed. R. Civ. P. 78(b) and L. Civ. R. 78.1(b). For the reasons that follow, Plaintiff's request to supplement the record is granted, Defendant VCA's motions for summary judgment are granted, and Defendant VCA's motion in limine is denied as moot.
This case centers on a family dispute among cousins who operate competing fencing businesses. In 1963, brothers Emilio Anello, Sr. and Joseph Anello started Anello Brothers, Inc., a fencing company in northern New Jersey. Oleski SOMF ¶ 8. Their younger brother, Vincenzo Anello, Sr., joined the business in 1971. Id. Steven, the owner of Plaintiff Anello Fence, is the son of Emilio Sr., and the nephew of Vincenzo Sr. McDaniel SOMF ¶¶ 3-5. The owners ofDefendant VCA, Vincenzo Anello, Jr.; Salvatore Anello; Christopher Anello; and Anthony Anello, are the sons of Vincenzo Sr. and the cousins of Steven. Id. at 7; Oleske SOMF ¶ 7. Plaintiff Anello Fence is in Morris County, New Jersey and is a "fence contractor that sells, installs, maintains and manufactures both residential and commercial fences[.]" Oleske SOMF ¶¶ 2-3. Defendant VCA offers similar products and services and is located within a mile of Plaintiff. Id. ¶¶ 10, 44.
Some of the above-mentioned individuals and entities are no strangers to litigation amongst themselves. Plaintiff references a number of prior adjudications in efforts to bolster its present claims. Since Plaintiff relies so heavily on these prior adjudications, primarily in arguing issue preclusion, the Court examined them. Because Plaintiff often mischaracterized the nature and outcome of these prior adjudications, the Court includes an accurate description of these prior matters. The Court also borrows from the factual accounts detailed in these prior adjudications to shed light on the events surrounding and leading up to the present case.4
The first matter began in 2003. See D.E. 140-3, Ex. A. After Joseph retired from Anello Brothers, the relationship between Emilio Sr. and Vincenzo Sr. began to deteriorate as their sons entered the business. D.E. 140-4, Ex. G at 2. The two brothers could not agree on the roles of their respective sons. Id. In 2003, the brothers decided that only one son each could work at Anello Brothers. Id. As a result, three of Vincenzo Sr.'s sons departed and started VCA Sons (which stands for Vincenzo and Catherine Anello's sons). Id.; Oleske SOMF ¶¶ 1-2.
Following the creation of VCA in 2003, Emilio Sr., acting individually and on behalf of Anello Brothers, filed a verified complaint against Vincenzo Sr., VCA, and Salvatore. D.E. 140-3, Ex. A. Essentially, Emilio Sr. believed that Vincenzo Sr. was steering business away from Anello Brothers and to his sons at VCA. D.E. 140-4, Ex.G. at 3. Therefore, he requested an order to show cause with temporary restraints to, among other things: (a) terminate Vincenzo Sr.'s employment at Anello Brothers; (b) require Vincenzo Sr., Salvatore, and VCA to turn over all Anello Brothers confidential business information and property; and (c) bar VCA from using the Anello name in conducting its business. D.E. 140-3, Ex. A at 2. Vincenzo Sr., VCA, and Salvatore did not file an opposition to this emergent request. Id.
Plaintiff alleges that this 2003 litigation "resulted in the issuance of an injunction, dated December 8, 2003, enjoining those defendants from using the 'Anello' name." Pl. Opp'n at 6. Plaintiff is mistaken as to the scope of the order. The December 8, 2003 court order ("2003 Order") clearly grants "temporary relief . . . pending a hearing on Plaintiff's application for a preliminary injunction." D.E. 140-3, Ex. A at 2. The 2003 Order is not a preliminary injunction, permanent injunction, or final judgment. Rather, it appears that the actual outcome of the litigation was an order requiring that Anello Brothers be sold to a third party or liquidated and dissolved by December 31, 2005. D.E. 140-4, Ex. G at 3.
The next cited litigation began in 2011 (the "2011 Lawsuits"). See D.E. 140-4, Ex. G. By way of background, in 2005, Steven decided to move to Florida with his family, intending at the time to permanently relocate. Oleske SOMF ¶ 6. In the years prior, he had also started his own New Jersey fencing company, A Decorative Fence Company. D.E. 140-4, Ex. G at 2. However, given his move to Florida, he decided to sell his business. Oleske SOMF ¶ 6. In 2006, Steven sold A Decorative Fence to VCA and began full-time employment in Florida as a law enforcementofficer. D.E. 140-4, Ex. G at 2; Oleske SOMF, Ex. A at 50 ¶¶ 18-23. Part of his sale of A Decorative Fence included a restrictive covenant prohibiting him from returning to the northern New Jersey fencing industry for a certain period. D.E. 140-4, Ex. G at 3.
Shortly before Thanksgiving 2006, Emilio Sr. unilaterally closed Anello Brothers. Id.; McDaniel SOMF ¶ 17. Upon this closing, Steven returned to New Jersey and formed Plaintiff Anello Fence on or about March 15, 2007. D.E. 140-4, Ex. G at 3; Compl. ¶ 19. Steven alleges that he used the name "Anello" in "Anello Fence, LLC" because it was his last name and he felt that the name was well known in the fencing industry. Oleske SOMF ¶ 11. In April 2007, Steven paid VCA $30,000 to void his restrictive covenant. D.E. 140-4, Ex. G at 3.
On November 17, 2009, Anello Fence secured a trademark on the Supplemental Register of the United States Patent and Trademark Office ("PTO") for its logo "ANELLO FENCE" (Reg. No. 3,713,566) in stylized lettering, with a triangle partially forming the letter A. McDaniel SOMF ¶ 18; D.E. 134-6, Ex. D at 12. The registration claimed first use of the mark in March 2007. McDaniel SOMF ¶ 18. The mark was subsequently cancelled on June 24, 2016. D.E. 134-6, Ex. D at 2. Therefore, it is not in dispute in this action.
On July 22, 2010, Anello Fence applied to register "ANELLO" on the Principal Register. Id. ¶ 19; D.E. 134-7, Ex. E at 27. It claimed first use in April 1963. Id. As noted, Anello Fence had only been in business since 2007; Anello Brothers had been in business from 1963 until it closed in 2006. The examiner refused registration as the mark was "merely a surname." McDaniel SOMF ¶ 20. On November 16, 2010, Anello Fence amended its application, alleging that the mark had "become distinctive of the goods/services through applicant's substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement." Id. (emphasis added). At the time, and as noted, Plaintiff Anello Fence had only beenin business for a little over three and a half years. See Compl. ¶ 19. Nonetheless, on July 5, 2011, the examiner issued Anello Fence the service mark ANELLO (Reg. No. 3,988,606) on the Principal Register. McDaniel SOMF ¶ 21; D.E. 134-7, Ex. E.
On March 21, 2013, Anello Fence applied to register "ANELLO FENCE" on the Principal Register as well. D.E. 134-8, Ex. F at 2. Again, Plaintiff claimed first use in April 1963. Id. at 5. Also, on its application, Plaintiff again asserted that "[t]he mark has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce . . . for at least the five years immediately before the date of this statement." Id. at 33-34. By this time, Anello Fence had been in operation for over five years. See Compl. ¶ 19. On October 29, 2013, the examiner issued Anello Fence the service mark ANELLO FENCE (Reg. No. 4,425,251) in stylized lettering, with a triangle partially forming the letter "A" on the Principal Register. D.E. 134-8, Ex. F at 2.
In the meantime, in Spring of 2011, Anello Brothers -- which had been "essentially defunct" since 2006, see D.E. 140-4, Ex. H. at 4 - held a shareholders' meeting. D.E. 140-4, Ex. G at 3. At the shareholders' meeting, Emilio Jr. joined with Vincenzo Sr. to oust Emilio Sr. from his position as president of the company. Id. The remaining shareholders then decided to re-open Anello Brothers (also doing business as Anello Brothers Fence Company, id. at 6 n. 5) over Emilio Sr.'s objection. Id. at 3.
Upon this re-opening, Steven, acting individually and on behalf of Plaintiff Anello Fence, sued the principals of Anello Brothers in April 2011 to prevent them from using the Anello name, asserting that he had spent much money developing and enhancing the...
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