CFA Institute v. Andre

• Decision Date: 25 November 2014
• Docket Number: Civil Action No. 14–320 BAH
• Citation: 74 F.Supp.3d 462
• Parties: CFA Institute, Plaintiff, v. Antoine Andre, Defendant.
• Court: U.S. District Court — District of Columbia

74 F.Supp.3d 462

CFA Institute, Plaintiff

v.Antoine Andre, Defendant.

Civil Action No. 14–320 BAH

United States District Court, District of Columbia.

Signed November 25, 2014

Ann Katherine Ford, Jerald R. Hess, DLA Piper LLP, John McClung Nading, Quarles & Brady LLP, Washington, DC, for Plaintiff.

Antoine Andre, Washington, DC, pro se.

MEMORANDUM OPINION

BERYL A. HOWELL, United States District Judge

The plaintiff, CFA Institute, filed this trademark infringement suit against the defendant, Antoine Andre, alleging that the defendant is improperly using the plaintiff's marks in violation of the Lanham Act, 15 U.S.C. § 1051 et seq., as well as Federal and District of Columbia unfair competition law. See Compl. ¶¶ 3, ECF No. 1. Pending before the Court is the motion of the defendant, who is proceeding pro se, to dismiss the plaintiff's Complaint “for lack of jurisdiction, improper venue, insufficient service of process, or failure to state a claim.” Def.'s Mot. Dismiss (“Def.'s Mot.”) at 1, ECF No. 7. For the reasons set forth below, the defendant's motion is denied.

I. BACKGROUND

The plaintiff is “an internationally renowned global, not-for-profit association of investment professionals.” Compl. ¶ 8. Among the plaintiff's enterprises is a certification service, under which the plaintiff “certifies the financial analysis services of others.” Id. ¶ 11. The plaintiff “owns twelve United States trademark registrations ... with a date of first use at least as early as 1962.” Id. ¶ 10. Among those marks are “CFA,” “Chartered Financial Analyst,” “CFA Institute,” and variations on those marks. See id. ¶ 11.

The mark “CFA Chartered Financial Analyst” was registered with the United States Patent and Trademark Office on December 17, 2002 and was deemed incontestable on September 3, 2008 for “financial analysis services.” Compl. ¶ 17; id. Ex. E. (United States Trademark Registration No. 2661114) at 1, ECF No. 1–5. The mark “CFA” is registered for “association services, namely, the promotion of interest and professional standards in the field of financial analysts,” as well as for “educational services” and for “printed publications in the field of financial analysis and in support of the interests of financial analysts,” and is also incontestable. See Compl. ¶¶ 13–15; id. Exs. A–C (United States Trademark Registration Nos. 935504; 2493899; 2495459). Since these marks are “incontestable,” the plaintiff has the right to “exclusive use of the” plaintiff's marks “throughout the United States in connection with” financial analysis services.

See Compl. ¶ 27; see also 15 U.S.C. § 1115(b).

The plaintiff's members “are awarded the right to use the CFA Certification Mark” and “the professional designation ‘Chartered Financial Analyst,’ or ‘CFA’ ” after, inter alia, amassing a set amount of professional experience and passing “a series of three rigorous, six-hour examinations.” Compl. ¶¶ 30–31. The plaintiff asserts that its marks “hold great value for [the plaintiff's] charterholders,” and that its marks are recognized “as the definitive standard for measuring competence and integrity in the fields of portfolio management and investment analysis,” id. ¶¶ 35, 37.

The plaintiff alleges that the defendant, who is not certified by the plaintiff, “adopted and began using marks that are identical to or substantially indistinguishable from” three of the plaintiff's marks: CFA, CFA Institute, and Chartered Financial Analyst. Compl. ¶¶ 39–40. Specifically, the plaintiff alleges that the defendant “deliberately and willfully holds himself out as ‘Tony Andre, CFA’ ... to suggest falsely that he has been certified by CFA Institute, is a CFA charterholder, and is entitled to use” the plaintiff's marks. Id. ¶ 45. The plaintiff further alleges that (1) the defendant's “[s]ervices are in direct competition with” the plaintiff's services, id. ¶ 41; (2) the defendant's use of the plaintiff's marks “is identical to and confusingly similar to” the plaintiff's marks “in appearance, sound, meaning, and commercial impression,” id. ¶ 42; and (3) the defendant's use of the plaintiff's marks “trades off the goodwill of” the plaintiff's marks, id. ¶ 43. The plaintiff asserts that “[c]onsumers are likely to believe mistakenly that Defendant successfully completed the rigorous CFA Program and adheres to the CFA Institute Code of Ethics and Standards of Professional Conduct,” which, the plaintiff contends, “is likely to harm consumers.” Id. ¶ 49. The plaintiff asserts that it has requested the defendant cease using its marks, but such requests have been rebuffed.See id. ¶ 47.

The defendant responded to the complaint by filing his one page “Motion to Dismiss Under Rule 12(b) for Lack of Jurisdiction, Improper Venue, Insufficient Service of Process, or Failure to State a Claim.” Def.'s Mot. at 1. The plaintiff filed a timely opposition, see Pl.'s. Opp'n Def.'s Mot. (“Pl.'s Opp'n”) at 3, ECF No. 12, and the defendant did not reply.

II. LEGAL STANDARD

Although the caption of the defendant's motion suggests that the defendant is moving for dismissal under Federal Rules of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction; 12(b)(3) for improper venue; 12(b)(5) for insufficient service of process; and 12(b)(6) for failure to state a claim upon which relief could be granted, the substance of the defendant's motion indicates that he is moving to dismiss the complaint under 12(b)(1) and 12(b)(6) only. See Defs.' Mot. at 1. Consequently, the standards for dismissal on those two grounds are reviewed below. Castro v. United States, 540 U.S. 375, 381–82, 124 S.Ct. 786, 157 L.Ed.2d 778 (2003) (noting courts retain power to reclassify pro se litigant's motion “to create a better correspondence between the substance of a pro se motion's claim and its underlying legal basis”); see also Haines v. Kerner, 404 U.S. 519, 520, 92 S.Ct. 594, 30 L.Ed.2d 652 (1972) (holding that allegations from pro se litigants are “[held] to less stringent standards than formal pleadings drafted by lawyers.”); Tate v. Dist. of Columbia, 627 F.3d 904, 912 (D.C.Cir.2010).

A. Federal Rule of Civil Procedure 12(b)(1)

“ ‘Federal courts are courts of limited jurisdiction,’ possessing ‘only that power authorized by Constitution and statute.’ ” Gunn v. Minton, ––– U.S. ––––, 133 S.Ct. 1059, 185 L.Ed.2d 72 (2013) (quoting Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375, 377, 114 S.Ct. 1673, 128 L.Ed.2d 391 (1994) ). Indeed, federal courts are “forbidden ... from acting beyond our authority,” NetworkIP, LLC v. FCC, 548 F.3d 116, 120 (D.C.Cir.2008), and, therefore, have “an affirmative obligation ‘to consider whether the constitutional and statutory authority exist for us to hear each dispute.’ ” James Madison Ltd. by Hecht v. Ludwig, 82 F.3d 1085, 1092 (D.C.Cir.1996) (quoting Herbert v. National Academy of Sciences, 974 F.2d 192, 196 (D.C.Cir.1992) ). Absent subject matter jurisdiction over a case, the court must dismiss it. Arbaugh v. Y & H Corp., 546 U.S. 500, 506–07, 126 S.Ct. 1235, 163 L.Ed.2d 1097 (2006) ; Fed. R. Civ. P. 12(h)(3).

When considering a motion to dismiss under Rule 12(b)(1), the court must accept as true all uncontroverted material factual allegations contained in the complaint and “ ‘construe the complaint liberally, granting plaintiff the benefit of all inferences that can be derived from the facts alleged’ and upon such facts determine jurisdictional questions.” Am. Nat'l Ins. Co. v. FDIC, 642 F.3d 1137, 1139 (D.C.Cir.2011) (quoting Thomas v. Principi, 394 F.3d 970, 972 (D.C.Cir.2005) (quoting Barr v. Clinton, 370 F.3d 1196, 1199 (D.C.Cir.2004) )). The court need not accept inferences drawn by the plaintiff, however, if those inferences are unsupported by facts alleged in the complaint or amount merely to legal conclusions. See Browning v. Clinton, 292 F.3d 235, 242 (D.C.Cir.2002). Moreover, in evaluating subject matter jurisdiction, the court, when necessary, may “ ‘undertake an independent investigation to assure itself of its own subject matter jurisdiction,’ ” Settles v. United States Parole Comm'n, 429 F.3d 1098, 1107–1108 (D.C.Cir.2005) (quoting Haase v. Sessions, 835 F.2d 902, 908 (D.C.Cir.1987), and consider facts developed in the record beyond the complaint, id. See also Herbert v. National Academy of Sciences, 974 F.2d 192, 197 (D.C.Cir.1992) (in disposing of motion to dismiss for lack of subject matter jurisdiction, “where necessary, the court may consider the complaint supplemented by undisputed facts evidenced in the record, or the complaint supplemented by undisputed facts plus the court's resolution of disputed facts.”); Alliance for Democracy v. FEC, 362 F.Supp.2d 138, 142 (D.D.C.2005). The burden of establishing any jurisdictional facts to support the exercise of the subject matter jurisdiction rests on the plaintiff. See Hertz Corp. v. Friend, 559 U.S. 77, 96–97, 130 S.Ct. 1181, 175 L.Ed.2d 1029 (2010) ; Thomson v. Gaskill, 315 U.S. 442, 446, 62 S.Ct. 673, 86 L.Ed. 951 (1942) ; Moms Against Mercury v. FDA, 483 F.3d 824, 828 (D.C.Cir.2007).

B. Federal Rule of Civil Procedure 12(b)(6)

Federal Rule of Civil Procedure 8(a)(2) requires that a complaint contain “a short and plain statement of the claim showing that the pleader is entitled to relief,” to encourage brevity and, at the same time, “give the defendant fair notice of what the ... claim is and the grounds upon which it rests.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (ellipses in original; internal quotations and citations omitted); Tellabs, Inc. v. Makor Issues & Rights, Ltd., 551 U.S. 308, 319, 127 S.Ct. 2499, 168 L.Ed.2d 179 (2007). The Supreme Court has cautioned that although “Rule 8 marks a notable and generous departure from the hyper-technical, code-pleading regime of a prior era, [ ] it does not unlock the doors of discovery for a plaintiff armed with nothing more than conclusions.”

Ashcroft v. Iqbal, 556 U.S. 662, 678–79, 129 S.Ct. 1937, 173 L.Ed.2d 868 ...