Harp v. El Bahdry Rahme, Civil Action No. 12–02401.

• Decision Date: 25 November 2013
• Docket Number: Civil Action No. 12–02401.
• Parties: Everlina Laurice HARP, Plaintiff, v. Laurice El Bahdry RAHME, et al., Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

984 F.Supp.2d 398

Everlina Laurice HARP, Plaintiff,
v.
Laurice El Bahdry RAHME, et al., Defendants.

Civil Action No. 12–02401.

United States District Court,
E.D. Pennsylvania.

Nov. 25, 2013.

[984 F.Supp.2d 404]

Everlina Laurice Harp, Norristown, PA, pro se.

MEMORANDUM
EDUARDO C. ROBRENO, District Judge.

Table of Contents

I.	BACKGROUND and PROCEDURAL HISTORY	405
II.	LEGAL STANDARD	408

A.	Summary Judgment Standard	408
B.	Scope of “Uncontested” Facts	408

III. DISCUSSION
409

A.
Defendants' Motion for Summary Judgment
409

1.
Infringement of, or Unfair Competition with, Plaintiff's trademarks “Everlina & Laurice” or “Laurice” (Counts 1–2, 4)
409

a.
The Evidence of Record as to each Lapp Factor
411

i.	Similarity between Plaintiff's and Defendants' marks (Lapp Factor 1)	411
ii.	Strength of Plaintiff's “Everlina & Laurice” and “Laurice” marks (Lapp Factor 2)	413
iii.	Price and other factors indicating care and attention o f consumers in purchasing the parties' products (Lapp Factor 3)	415
iv.	Length of time Defendants have used “Laurice & Co.” without evidence of actual confusion by consumers (Lapp Factor 4)	416
v.	Intent of Defendants in adopting the “Laurice & Co.” mark (Lapp Factor 5)	416
vi.	Evidence of actual confusion by consumers (Lapp Factor 6)	417
vii.	Channels of trade and advertising media used by Plaintiff and Defendants (Lapp Factor 7)	418
viii.	Plaintiff's and Defendants' Target Consumers (Lapp Factor 8)	418
ix.	Relationship of Plaintiff's and Defendants' products in the minds of consumers (Lapp Factor 9)	419
x.	Evidence of converging markets (Lapp Factor 10)	419

b.
Balancing the Ten Lapp Factors
420

2.	Counterfeiting Plaintiff's trademarks (Count 3)	420
3.	Dilution of Plaintiff's trademarks (Count 5)	420
4.	Intentional Interference with Plaintiff's Actual and Prospective Business Relations (Count 6)	422
5.	Civil Conspiracy (Count 7)	423

B.
Plaintiff's Cross Motion for Summary Judgment
423

IV. CONCLUSION
424

[984 F.Supp.2d 405]

Currently pending in this case is a motion for summary judgment filed by Defendants Laurice El Badry Rahme (“Rahme”), Laurice El Badry Rahme, Ltd. (“Rahme Ltd.”), and Saks Fifth Avenue Enterprises (“Saks”) (collectively, “Defendants”), and a “Counterclaim,” which the Court construes as a cross motion for summary judgment, filed by Plaintiff Everlina Laurice Harp (“Plaintiff”). The factual record is sparse in this case but the material facts are uncontested. Plaintiff's allegations do not form a basis for any of the legal claims she asserts. Accordingly, the Court will grant Defendants' motion for summary judgment as to all counts and will deny Plaintiff's motion for summary judgment as to all counts.

I. BACKGROUND and PROCEDURAL HISTORY

Since 1994, Plaintiff ¹ has been in the business of developing, marketing, distributing, selling, and promoting jewelry-cleaning services, polishing products, perfume products, soaps, and lotions. See Am. Compl. ¶ 10, ECF 36. Plaintiff applied for a trademark to establish her brand identity in April 1994. Id. ¶ 12. The United States Patent and Trademark Office registered her trademark, “Everlina Laurice,” on January 1, 1997. Id.² Since this time, Plaintiff has traded under the names “Everlina Laurice,” “Everlina,” and “Laurice.” Id. ¶ 13.

On February 12, 2004, Defendant Rahme Ltd. filed a petition to cancel the registration of trademark “Everlina Laurice.” See Pl.'s Resp. Mot. Dismiss 11, Aug. 14, 2012, ECF No. 49. Rahme Ltd. also sought to register the mark “Laurice” for perfumes, colognes, and room fragrances but its application was denied. See Defs.' Reply, Ex. A, 1–3, ECF No. 88–2.³ Rahme Ltd. then withdrew its petition to cancel. See Am. Compl., Ex. C, Def. Rahme's Withdrawal of Petition to Cancel Pl.'s trademark.

[984 F.Supp.2d 406]

In a letter dated April 5, 2012, Plaintiff contacted Saks regarding the sale of perfumes with the “Laurice & Co.” mark in Saks's department stores. Id., Exs. B1–B2. Plaintiff stated that Defendant Saks's use of the “LAURICE” mark in connection with the sale of Defendant Rahme Ltd.'s Bond No. 9 perfume line constituted trademark infringement, as such use was likely to cause confusion with Plaintiff's registered “EVERLINA LAURICE” and common law “LAURICEt” marks. Id., Ex. B1. Saks did not respond to Plaintiff's letter and did not cease sales and marketing of the alleged infringing product. Id. ¶ 16. In an apparent further attempt to protect her original mark, Plaintiff obtained an additional registered trademark for the name “LAURICE” on June 12, 2012. Id., Ex. D.

Plaintiff now brings this action for trademark infringement and related claims against Defendants, seeking both monetary damages and injunctive relief. Plaintiff filed an amended complaint on July 9, 2012 (ECF No. 36), asserting the following seven counts against all Defendants:

(1) Violation of the Lanham Act through Defendants' use of the names “Everlina,” “Laurice,” and “Everlina & Laurice” in connection with the sale of Bond No. 9 perfume;

(2) Violation of the Lanham Act through Defendants' use of the name “Laurice” in connection with a business not affiliated with Plaintiff;

(3) Violation of the Trademark Counterfeiting Statute;

(4) Common Law Unfair Competition;

(5) Violation of the Federal Trademark Dilution Act;

(6) Intentional Interference with Actual and Prospective Business Relations; and

(7) Civil Conspiracy.

Between July and November of 2012 Defendants moved to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), or, in the alternative, for a more definite statement. See Def. Saks's Mot. Dismiss, ECF No. 40; Def. Rahme's Mot. Dismiss, ECF No. 69. Plaintiff filed several responses to these motions. See Pl.'s Resp. Mot. Dismiss, Aug. 14, 2012; Pl.'s Resp. Mot. Dismiss, Nov. 15, 2012, ECF No. 71. A hearing was held on December 3, 2012 to consider the Defendants' pending motions. At the hearing the Court determined that the case turns in large part on whether Plaintiff actually alleges facts constituting trademark infringement and if so what products that infringement attaches to. The Court therefore concluded that a fuller factual record was warranted. See Hr'g Tr., 25:12–25:15, Dec. 3, 2012, ECF No. 81. Defendants' motions to dismiss were denied and the Court issued a new scheduling timeline, directing Defendants to file any motion for summary judgment within 30 days.

Pursuant to the Court's order, Defendants filed a motion for summary judgment on January 2, 2013 alleging that the material facts related to this case are not in dispute and that as a matter of law each of Plaintiff's claims fail. Central to this motion is Defendants' contention that “Laurice & Co.” has only been used as a business or trade name and never as a trademark. See Defs.' Mot. Summ. J., ECF No. 83.

Also on January 2, 2013, Defendant Rahme submitted to the Court a declaration with numerous attached exhibits representing her use of “Laurice & Co.” as a trade name in conjunction with the sales of her line of over 60 perfumes. See Decl. Laurice El Badry Rahme, ECF No. 84. Rahme's attachments include a certificate of incorporation of “Laurice El Badry Rahme Ltd.,” issued in 1989, and a certificate

[984 F.Supp.2d 407]

of assumed name of “Laurice & Co.,” dated May 30, 1995. See Decl. Laurice El Badry Rahme, Exs. B and C, ECF No. 84–1. The attachments also illustrate “Laurice & Co.” stickers that the parties referred to at the December 3, 2012 hearing. It appears that either a sticker or printed label located on the bottom or back of each of Defendants' products features: in large cursive type, “Bond No. 9,” and underneath, in smaller print, “New York,” the name of the specific perfume, such as “Park Avenue,” or “Chinatown,” and finally, “Laurice & Co. Ltd., New York, NY, 10012.” See generally Decl. of Laurice El Badry Rahme, Exs. F—YY (images of Defs.' product labels), ECF No. 84–2–84–7.

Plaintiff's response,⁴ filed on January 30, 2013, reiterates the conclusory statements that Defendants' use of “Laurice & Co.” amounts to trademark infringement and unfair competition, that Defendants' ownership of the domain name “www. lauriceco. com” diverts Plaintiff's customers,⁵ and that the United States Patent and Trademark Office's denial of Defendant Rahme Ltd.'s application to trademark “Laurice & Co.” because of likely confusion with Plaintiff's “Everlina & Laurice” mark provides evidence of likelihood of confusion. See Pl.'s Resp. Mot. Summ. J., Jan. 30, 2013, ECF No. 86.

Plaintiff also filed a short document on January 30, 2013, labeled “Counterclaim” which the Court construes as a cross motion for summary judgment. See Pl.'s Counterclaim, ECF No. 87. This submission largely duplicates Plaintiff's assertions in her response to Defendants' Rule 56 motion. Specifically, Plaintiff again argues that “Laurice” is an “extremely strong mark on the Trademark registry,” that Defendants' ownership of the “www. lauriceco. com” domain name infringes with Plaintiff's trademark rights, that a comparison the parties' marks shows a likelihood for confusion, and that Defendants are intentionally and maliciously trying to harm Plaintiff. Id.

Defendants filed a memorandum in reply to Plaintiff's response and a counterclaim to Defendants' Rule 56 motion (ECF Nos. 86, 87) arguing that Plaintiff's submissions are “improper in form and substance and should be given no consideration.” Defs.' Reply, 3, ECF No. 88. Defendants argue that Plaintiff does not refute any of Defendants' statements of fact. Id. at 2. Furthermore, Defendants argue that because Plaintiff's submissions fail to address any of Defendants' assertions of fact, these facts should be considered undisputed. Id. at 3 (citing Fed. R. Civ. Pro. 56(e); Fabral, Inc. v. B & B Roofing Co., Inc., 773 F.Supp.2d 539, 542–43 n. 4 (E.D.Pa.2011)). Additionally, Defendants characterize Plaintiff's submissions in opposition as merely “repeat[ing] her prior bare assertions and conclusory allegations.” Defs.' Reply 3, 4. In their reply Defendants also include exhibits

[984 F.Supp.2d 408]

that...