Burris Carpet Plus Inc. v. Burris

Decision Date30 June 2010
Docket NumberNo. 20090104.,20090104.
Citation2010 ND 118,785 N.W.2d 164
PartiesBURRIS CARPET PLUS, INC., Plaintiff, Appellant and Cross-Appellee v. Jerrod BURRIS, Derek Burris, and Dan Burris, Defendants, Appellees and Cross-Appellants.
CourtNorth Dakota Supreme Court

DeWayne A. Johnston (argued) and Jacey Layne Johnston (appeared), GrandForks, N.D., for plaintiff, appellant and cross-appellee.

Patrick W. Fisher (argued) and John Benjamin Wangberg (on brief), Grand Forks, N.D., for defendants, appellees and cross-appellants Jerrod Burris and Dan Burris.

Mark R. Western (argued) and William P. Harrie (on brief), Fargo, N.D., for defendant, appellee and cross-appellant Derek Burris.

VANDE WALLE, Chief Justice.

[¶ 1] Burris Carpet Plus, Inc. ("BCP"), appealed and Jerrod Burris, Derek Burris, and Dan Burris (collectively "Burrises") cross-appealed from a district court order and judgment granting the Burrises' motion for summary dismissal and denying BCP's motion for summary judgment. BCP also appealed from a district court order partially granting its motion to compel discovery. We affirm.

I

[¶ 2] BCP is a North Dakota corporation, which was incorporated in June 2000. BCP is involved in retail flooring sales and has a retail location in Grand Forks. BCP does business and advertises under the name "Burris Carpet Plus." Don Burris is BCP's president and sole shareholder. Don Burris has worked in the flooring industry since approximately 1974.

[¶ 3] The Burrises are all related to Don Burris. Jerrod and Derek Burris are Don Burris's children, and Dan Burris is Don Burris's brother. The Burrises are all involved in the flooring industry and have used the name "Burris" in various flooring related businesses.

[¶ 4] In 1988, Dan Burris started a carpet cleaning business in East Grand Forks, Minnesota, called Burris Quality Carpet Cleaning. The business name was registered with the Minnesota Secretary of State. Derek Burris bought part of this business from Dan Burris in 2001, and operated the business in the Grand Forks area while Dan Burris operated the business in the Erskine, Minnesota area. Derek Burris has continued to operate the business using the name Burris Quality Carpet Cleaning and other similar names, including D.J. Burris Quality Carpet Cleaning and Burris Carpet Cleaning. Derek Burris rented space for his carpet cleaning business from BCP in BCP's retail location. His rent included the use of BCP's secretarial staff to answer phone calls for his business and schedule appointments. Derek Burris moved out of BCP's retail location in December 2005.

[¶ 5] Between 1993 and December 2001, Jerrod Burris installed carpet using the name Burris Carpet Installation. Jerrod and Dan Burris have installed flooring and carpet together since December 2001, using the name Jerrod & Dan Burris Flooring Installation and other similar names, including Jerrod Burris Flooring Installation, Burris Carpet Installation, and J & D Carpet Installation. In 2000, Jerrod and Dan Burris began installing flooring for BCP as independent contractors. Their relationship with BCP was terminated in late 2006.

[¶ 6] Between late 2006 and March 2007, Jerrod Burris sold carpet in the Grand Forks area, using the names D.J. Burris Quality Carpet Cleaning & Sales, Burris Carpet, Burris Carpet Sales, Burris Carpet Installation, Jerrod and Dan Burris Flooring Installation, and Burris Quality Carpet.

[¶ 7] On March 15, 2007, BCP received a Certificate of Trademark Registration for "Burris (the word)" as a trademark to be used with "miscellaneous services." In the registration, BCP claimed the mark had been used on store fronts, vehicles andadvertisements since January 1, 1974, and in North Dakota since March 1, 1999.

[¶ 8] In September 2007, BCP sued the Burrises for trademark infringement, false designation of origin, and unfair competition, seeking damages and injunctive relief. BCP requested discovery and later filed a motion to compel discovery. In July 2008, after an earlier hearing, the district court partially granted BCP's motion to compel. BCP amended its complaint in April 2008, adding claims of infringement of a registered business name, infringement of a registered trade name, and conspiracy.

[¶ 9] BCP moved for summary judgment, and the Burrises responded and filed cross-motions for summary judgment. After arguments, the district court granted the Burrises' motions for summary judgment and dismissed all of BCP's claims. A judgment was subsequently entered.

II

[¶ 10] Summary judgment is a procedural device used to promptly resolve a controversy on the merits without a trial if either party is entitled to judgment as a matter of law and the material facts are undisputed or if resolving the disputed facts would not alter the result. In re Estate of Dionne, 2009 ND 172, ¶ 8, 772 N.W.2d 891. " 'Summary judgment is inappropriate if neither party is entitled to judgment as a matter of law or if reasonable differences of opinion exist as to the inferences to be drawn from the undisputed facts.' " KAT Video Prod., Inc. v. KKCT-FM Radio, 1997 ND 21, ¶ 5, 560 N.W.2d 203 (quoting Larson v. Baer, 418 N.W.2d 282, 286 (N.D.1988)). Whether a district court has properly granted a motion for summary judgment is a question of law, which this Court reviews de novo on the record. Dionne, at ¶ 8.

[¶ 11] When we review a district court's decision on a motion for summary judgment, we view the evidence in a light most favorable to the party opposing the motion and give the opposing party all favorable inferences. KAT, 1997 ND 21, ¶ 5, 560 N.W.2d 203. In determining whether summary judgment is appropriate, the court may examine the pleadings, depositions, admissions, affidavits, interrogatories, and inferences to be drawn from the evidence. Id. The moving party must show there are no genuine issues of material fact and the case is appropriate for judgment as a matter of law. Abdullah v. State, 2009 ND 148, ¶ 9, 771 N.W.2d 246. A party resisting the motion for summary judgment "cannot merely rely on the pleadings or other unsupported conclusory allegations, but must present competent admissible evidence by affidavit or other comparable means which raises an issue of material fact." Id. " 'In summary judgment proceedings, neither the trial court nor the appellate court has any obligation, duty, or responsibility to search the record for evidence opposing the motion for summary judgment.' " Id. (quoting Fish v. Dockter, 2003 ND 185, ¶ 15, 671 N.W.2d 819).

III

[¶ 12] BCP argues the district court improperly granted the Burrises' motions for summary judgment on BCP's common law and registered trademark infringement claims. BCP claims it has a valid trademark for "Burris (the word)" and the Burrises infringed upon the mark. BCP contends the district court erred in concluding BCP's mark was not protected because it is a surname, finding BCP was not the first to use the mark, and ordering the cancellation of BCP's "Burris" trademark.

[¶ 13] The district court dismissed BCP's common law and statutory trademark claims, ruling the Burrises had allestablished they had used the word "Burris" in their various business names prior to BCP's incorporation and, to the extent the word "Burris" can be a protected trademark, the Burrises established they had prior use of the word. The court also concluded BCP did not "use" the mark as required for ownership because BCP only used the word as part of its corporate name. The court dismissed the trademark claims, finding "[a]s a matter of law, BCP is precluded from arguing it owns the name/word 'Burris' as it has failed to set forth facts supportive of its claim of use and ownership of the name/word 'Burris' and the undisputed evidence is that BCP was not the first to use or display the word/name in the marketplace."

[¶ 14] Trademarks and service marks may be registered and receive protection under N.D.C.C. ch. 47-22. A trademark is "any word, name, symbol, or device or any combination thereof adopted and used by a person to identify goods made or sold by that person and to distinguish them from goods made or sold by others." N.D.C.C. § 47-22-01(6). A service mark is "any word, name, symbol, or device or any combination thereof used by a person to identify and distinguish the services of one person, including a unique service, from the services of others, and to indicate the source of the services, even if that source is unknown." N.D.C.C. § 47-22-01(5). Any person who adopts and uses a mark may register the mark with the secretary of state. N.D.C.C. § 47-22-03.

[¶ 15] Any person who "use[s], without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under [N.D.C.C. ch. 47-22] ... shall be liable to a civil action by the owner of such registered mark...." N.D.C.C. § 47-22-11. Although N.D.C.C. ch. 47-22 provides for the registration of trademarks and service marks in North Dakota and provides a cause of action, it does not provide the substantive law protecting infringement, which stems from common law. KAT, 1997 ND 21, ¶ 6, 560 N.W.2d 203. Furthermore, statutory trademark law does not adversely affect a person's common law trademark rights. N.D.C.C. § 47-22-13.

[¶ 16] The purpose of trademark law is " 'to prevent one person from passing off his goods or his business as the goods or business of another.' " KAT, 1997 ND 21, ¶ 7, 560 N.W.2d 203 (quoting American Steel Foundries v. Robertson, 269 U.S. 372, 380, 46 S.Ct. 160, 70 L.Ed. 317 (1926)). To prevail on a trademark infringement claim, a plaintiff must first show it has a valid mark that merits protection. See Brennan's, Inc. v. Brennan's Restaurant, L.L.C., 360 F.3d 125, 129 (2d Cir.2004); B & B Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383, 387 n. 2 (8th Cir.2009). A valid trademark is a "distinctive mark, symbol, or designation used by a producer or manufacturer to identify and distinguish his services or goods from the services or goods of...

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