Breaking the Chain Found. v. Capitol Educational

• Decision Date: 15 December 2008
• Docket Number: Civil Action No. 08-356(CKK).
• Citation: 589 F.Supp.2d 25
• Parties: BREAKING THE CHAIN FOUNDATION, INC., Plaintiff, v. CAPITOL EDUCATIONAL SUPPORT, INC., Defendant.
• Court: U.S. District Court — District of Columbia

Page 25

589 F.Supp.2d 25

BREAKING THE CHAIN FOUNDATION, INC., Plaintiff, v. CAPITOL EDUCATIONAL SUPPORT, INC., Defendant.

Civil Action No. 08-356(CKK).

United States District Court, District of Columbia.

December 15, 2008.

COPYRIGHT MATERIAL OMITTED

Susan M. Kayser, David M. Jaquette, Nina Minon Osseiran, Howrey LLP, Washington, DC, for Plaintiff.

MEMORANDUM OPINION

COLLEEN KOLLAR-KOTELLY, District Judge.

Plaintiff Breaking the Chain Foundation, Inc. ("BCF") filed a Complaint in this case against Defendant Capitol Educational Support, Inc. ("CES") on February 28, 2008 alleging violations of Plaintiff's federal and common law trademark rights. See Compl., Docket No. [1]. Although properly and timely served with the Complaint and Summons, Defendant failed to respond to the Complaint, and the Clerk of the Court, upon motion by Plaintiff, entered default against Defendant on August 11, 2008. See Clerk's Entry of Default as to CES, Docket No. [14]. Presently before the Court is Plaintiff's [16] Motion for Default Judgment. Having thoroughly considered Plaintiff's submissions, including the attachments thereto, applicable case law, statutory authority, and the record of the case as a whole, the Court shall GRANT IN PART, HOLD IN ABEYANCE IN PART, and DENY WITHOUT PREJUDICE IN PART Plaintiff's [16] Motion for Default Judgment. Specifically, the Court grants Plaintiff's Motion as to liability and its request for injunctive relief, holds in abeyance Plaintiff's Motion as to its request for monetary damages, and denies without prejudice Plaintiff's Motion as to its request that Defendant be ordered to deliver to Plaintiff for destruction materials in Defendant's control and possession bearing Plaintiff's trademark, for the reasons stated below.

I. BACKGROUND

Plaintiff filed a Complaint in the above-captioned case on February 28, 2008, alleging: (1) federal trademark infringement in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); (2) federal unfair competition, false designation of origin, and trade name infringement in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) violation of the Anticybersquatting Consumer Protection Act ("ACPA"), § 43(d) of the Lanham Act, 15 U.S.C. § 1125(d); (4) trademark infringement in violation of the common law of the District of Columbia; and (5) unfair competition in violation of the common law of the District of Columbia. Compl. ¶¶ 26-53.

Plaintiff is a District of Columbia non-profit corporation whose mission is to eradicate inter-generational incarceration in the Washington, D.C. area and provide support services to children of incarcerated persons. Compl. ¶¶ 1, 6-7. As is relevant to the instant case, Plaintiff owns federal trademark registration number 3,375,836 for the design mark "BREAKING THE CHAIN FOUNDATION,"¹ and, at the time of the Complaint, had a pending application for the word mark "BREAKING THE CHAIN FOUNDATION."² Id. ¶ 14. Plaintiff provides a wide variety of community services throughout the D.C. area under the trademark "BREAKING THE CHAIN," including a mentoring program, tutoring program, financial sponsorship program, social service referral program, as well as charitable fund-raising for children of incarcerated parents. Id. ¶¶ 8-9.

According to the Complaint, Defendant is a non-profit corporation in the District of Columbia that also provides educational and support services to children of incarcerated persons and students enrolled in underperforming public schools. Id. ¶ 2. Plaintiff alleges that Defendant, without authority or permission, used Plaintiff's trademark in connection with the provision of services similar or identical to those provided by Plaintiff. Id. ¶ 16. Specifically, Plaintiff alleges that Defendant impermissibly used the trademark "BREAKING THE CHAIN" to raise funds for children of incarcerated parents and in connection with Defendant's mentoring program for children of incarcerated parents. Id. ¶¶ 17-19.

Defendant was served with the Complaint and Summons on June 23, 2008, and was therefore required to respond by July 14, 2008. See Return of Service/Affidavit, Docket No. [10]; see also Pl.'s Mot. for Default J., Docket No. [16], at 2. Defendant failed to file an answer or otherwise respond to Plaintiff's Complaint, and Plaintiff subsequently moved for entry of default as to Defendant. See Pl.'s Aff. for Entry of Default, Docket No. [13]. On August 11, 2008, the Clerk of the Court entered default against Defendant. See Clerk's Entry of Default as to CES, Docket No. [14]. Plaintiff now moves for entry of default judgment. See Pl.'s Mot. for Default J.

II. LEGAL STANDARD

Federal Rule of Civil Procedure 55(a) provides that the clerk of the court must enter a party's default "[w]hen a party against whom a judgment for affirmative relief is sought has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise." FED. R. CIV. P. 55(a). After a default has been entered by the clerk of the court, a court may enter a default judgment pursuant to Rule 55(b). FED. R. CIV. P. 55(b). "The determination of whether default judgment is appropriate is committed to the discretion of the trial court." Int'l Painters and Allied Trades Indus. Pension Fund v. Auxier Drywall, LLC, 531 F.Supp.2d 56, 57 (D.D.C.2008) (citing Jackson v. Beech, 636 F.2d 831, 836 (D.C.Cir.1980)). Upon entry of default by the clerk of the court, the "defaulting defendant is deemed to admit every well-pleaded allegation in the complaint." Int'l Painters and Allied Trades Indus. Pension Fund v. R.W. Amrine Drywall Co., Inc., 239 F.Supp.2d 26, 30 (D.D.C.2002) (internal citation omitted). "Although the default establishes a defendant's liability, the court is required to make an independent determination of the sum to be awarded unless the amount of damages is certain." Id. (citing Adkins v. Teseo, 180 F.Supp.2d 15, 17 (D.D.C.2001)). Accordingly, when moving for a default judgment, the plaintiff must prove its entitlement to the amount of monetary damages requested. Id. "In ruling on such a motion, the court may rely on detailed affidavits or documentary evidence to determine the appropriate sum for the default judgment." Id.

III. DISCUSSION

A. Liability

Where, as here, there is a complete "absence of any request to set aside the default or suggestion by the defendant that it has a meritorious defense, it is clear that the standard for default judgment has been satisfied." Auxier Drywall, LLC, 531 F.Supp.2d at 57 (internal quotation marks omitted). The Clerk of the Court entered Defendant's default, and the factual allegations in the Complaint are therefore taken as true. See R.W. Amrine Drywall Co., Inc., 239 F.Supp.2d at 30. The Court finds that Plaintiff's Complaint sufficiently alleges facts to support Plaintiff's claims. The Court notes that, although Plaintiff's Complaint asserts five separate counts, Plaintiff's claims may be generally grouped into two categories for purposes of determining liability.

First, Counts I, II, IV, and V of the Complaint allege, in respective order: (a) federal trademark infringement pursuant to § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), Compl. ¶¶ 26-30; (b) unfair competition, false designation of origin and trade name infringement pursuant to § 43(a) 15 U.S.C. § 1125(a), id. ¶¶ 31-37; (c) common law trademark infringement, id. ¶¶ 45-50; and (d) common law unfair competition, id. ¶¶ 51-53. Claims under 15 U.S.C. § 1114(1) and 15 U.S.C. § 1125(a) are measured by the same standards under the Lanham Act, although the former section requires registration of the mark at issue, while the latter does not. See Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F.Supp.2d 1, 26 (D.D.C. 2006); see also A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir.2000). Plaintiff's claims for common law trademark infringement and unfair competition are evaluated under the same standards as well. See Ward One Democrats, Inc. v. Woodland, 898 A.2d 356, 361 (D.C.2006); see also Globalaw Ltd., 452 F.Supp.2d at 26-27. Accordingly, Plaintiff's claims set forth in Counts I, II, IV, and V may be evaluated together for purposes of liability.

To prevail on these claims, "the plaintiff must show (1) that it owns a valid trademark, (2) that its trademark is distinctive or has acquired a secondary meaning, and (3) that there is a substantial likelihood of confusion between the plaintiff's mark and the alleged infringer's mark." Globalaw Ltd., 452 F.Supp.2d at 26-27 (internal quotation marks omitted). Moreover, as to the claim for trademark infringement under 15 U.S.C. § 1114(1), Plaintiff must have a registered trademark. Id. By default, Defendant admits that Plaintiff has a valid (and registered) trademark that has a distinctive and/or secondary meaning and that there is a substantial likelihood of confusion. See Compl. ¶¶ 10-15, 23, 26-36, 45-53.

Second, to state a cybersquatting claim under the ACPA, a plaintiff must allege that: (1) its trademark is a distinctive or famous mark entitled to protection; (2) the defendant's domain name is identical or confusingly similar to the plaintiff's mark; and (3) that defendant registered its domain name with the bad faith intent to profit from it. 15 U.S.C. § 1125(d)(1)(A); see also Klayman v. Judicial Watch, Inc., 247 F.R.D. 10, 15 (D.D.C.2007) (citing Shields v. Zuccarini, 254 F.3d 476, 482 (3d Cir.2001)). By default, Defendant admits that Plaintiff has a trademark that is distinctive and/or famous and that is entitled to protection, that Defendant's domain name is identical or confusingly similar to Plaintiff's trademark, and that Defendant registered its domain name with the bad faith intent to profit from it. See Compl. ¶¶ 10-15, 23, 38-44. Accordingly, the Court determines that Plaintiff is entitled to default judgment as to liability on its claims.

B. Appropriate Relief

Plaintiff requests relief in the form of injunctive relief,...