Jalinski Advisory Grp. v. JBL Fin. Servs.
| Decision Date | 29 September 2022 |
| Docket Number | 4:19 CV 1914 DDN |
| Parties | JALINSKI ADVISORY GROUP, INC. and WEALTH QUARTERBACK, Plaintiffs, v. JBL FINANCIAL SERVICES, INC., Defendant. |
| Court | U.S. District Court — Eastern District of Missouri |
This matter is before the Court on the renewed motion of defendant JBL Financial Services, Inc. for summary judgment. (Doc 168.) The Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. § 1331 and 15 U.S.C §§ 1114 and 1125. The parties have consented to the exercise of plenary authority by the undersigned United States Magistrate Judge under 28 U.S.C. § 636(c).
For the reasons set forth below, defendant's motion for summary judgment is denied.
The following facts are uncontroverted by the parties, unless otherwise noted. Plaintiff Jalinski Advisory Group (JAG) is a New Jersey corporation providing insurance products plaintiff Wealth Quarterback, a corporation affiliated with plaintiff, provides investment advisory services. (Plaintiff Jalinski Advisory Group, Inc., and Defendant JBL Financial Services, Inc.'s First Amended Joint Statement of Contested and Uncontested Material Facts ¶¶ 1g, 1i 113a (hereinafter SOF ¶ ___)). Plaintiff JAG began using the marks “Financial Quarterback” or “The Financial Quarterback” in reference to its services at least as early as 2006. SOF ¶ 136a. Plaintiff JAG is the owner of the trademark “The Financial Quarterback” and “Financial Quarterback” under four different registration numbers: 4722740, 5346563, 5633102, and 5346562. SOF ¶¶ 17a-b. Plaintiff JAG is also the owner of the “The Financial Quarterback” trademark under registration number 3782665, which is identified by the U.S. Trademark Office as being “cancelled” and “dead” due to plaintiff's voluntary abandonment of the registration. SOF ¶¶ 18-20a. Plaintiff JAG and plaintiff Wealth Quarterback have never had a written trademark license agreement, and Wealth Quarterback does not pay plaintiff for use of the mark. SOF ¶ 126a.
Defendant is a St. Louis-based entity providing a variety of financial and retirement planning and advisory services, which it promotes using the term “Retirement Coach.” SOF ¶¶ 35, 4160a, 60c, 61a. Since as early as December 1, 2004, defendant has used “Retirement Coach” in its newsletter, “The Coach's Corner.” SOF ¶ 60a. Defendant has also been using the term “Retirement Coach” in its radio program, “Straight Talk on Retirement,” since May 2006. SOF ¶ 61a. Defendant's radio program is terrestrially broadcast in eastern Missouri and central Illinois, and it has been available via internet streaming since 2007. SOF ¶¶ 61b, 62a. Defendant also uses the word “coach” and phrase “Retirement Coach” frequently when posting on social media. SOF ¶¶ 181a, 182a.
In July 2017, defendant hired a third party, FMG Suite, to update its website; in the process, FMG Suite added “financial quarterback” and “quarterback” into the content of the website. SOF ¶ 177a. Plaintiffs identified multiple uses of “financial quarterback” by defendant on defendant's website and social media pages, in close proximity to links to and/or advertisements for defendant's newsletter and radio program. SOF ¶¶ 71b, 174b. In May 2017, defendant posted the following message on Facebook: “We pride ourselves on always simplifying complex terms into understandable terminology to come up with a game plan that works for you! #finance #retirement #quarterbacks #gameplan #coachingsession.” (Doc. 124-36 at 2.) In April 2018, defendant posted messages on Facebook and Twitter that each included the sentence “We pride ourselves on being your financial quarterbacks!” (Id.) These three social media posts, as well as three posts from March 2018 that did not include the words “financial” and/or “quarterback,” include an image of a football team. (Id. at 2-6.) Screen captures from defendant's website as of October 2016 and July 2017 show that the defendant described itself as “coach, quarterback, and adviser” for its clients. (Doc. 124-5 at 3; Doc. 124-20 at 3; Doc. 67-4 at 4.) Additionally, screen captures from October 2017, April 2018, and January 2019 show that defendant's website included the phrase “We pride ourselves on being your financial quarterbacks.” (Doc. 67-4 at 1-3.)
Defendant learned of the use of “financial quarterback” on its website on July 13, 2019, after plaintiff JAG filed this action. SOF ¶ 178a. Defendant removed the phrase “financial quarterback” from its website on July 15, 2019. SOF ¶ 80a. Plaintiffs have not identified an instance wherein defendant used “Financial Quarterback” or “The Financial Quarterback” in defendant's newsletter or radio program. SOF ¶ 174a. There is no evidence that defendant was aware of plaintiff prior to the filing of this action. SOF ¶ 147a.
Plaintiff JAG has one client in Missouri but states that it has received calls from potential clients located in Missouri. SOF ¶¶ 81, 82a. Defendant serves some clients in states where plaintiff has a presence, including Texas and Florida; however, the majority of its clients reside in Missouri and Illinois. SOF ¶¶ 85, 87b. Plaintiffs have not identified any actual confusion or lost leads due to defendant's use of the phrase “Retirement Coach.” SOF ¶¶ 93a, 94a.
Defendant previously filed several motions for summary judgment. (Doc. 89, 90, 91, 93.) On April 20, 2022, the Court granted the motions for summary judgment on the issues of defendant's superior common law rights in “Retirement Coach” and the noninfringement of U.S. Registration No. 3782665. It denied the motion for summary judgment as to damages alleged by Wealth Quarterback. Most relevant here, it granted in part and denied in part the motion for summary judgment as to likelihood of confusion, granting the motion as it related to defendant's use of “Retirement Coach” alone, but otherwise denying it. (Doc. 155.)
Now before the Court is defendant's renewed motion for summary judgment on the issue of fair use. (Doc. 168.)
Summary judgment is appropriate “if there is no dispute of material fact and reasonable fact finders could not find in favor of the nonmoving party.” Shrable v. Eaton Corp., 695 F.3d 768, 770 (8th Cir. 2012); see also Fed.R.Civ.P. 56(a). The party moving for summary judgment must demonstrate the absence of a genuine issue of material fact and that it is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A dispute is genuine if the evidence may prompt a reasonable jury to return a verdict for either the plaintiff or the defendant, and it is material if it would affect the resolution of a case. Anderson v. Liberty Lobby Inc., 477 U.S. 242, 248, 252 (1986); Rademacher v. HBE Corp., 645 F.3d 1005, 1010 (8th Cir. 2011).
The burden shifts to the non-moving party to demonstrate that disputes of fact do exist only after the movant has made its showing. Anderson, 477 U.S. at 252. It is the nonmoving party's burden to set forth affirmative evidence and specific factual support by affidavit and other evidence to avoid summary judgment. Id. at 256; Iverson v. Johnson Gas Appliance Co., 172 F.3d 524, 530 (8th Cir. 1999). If reasonable minds could differ as to the import of the evidence, summary judgment is not appropriate. Anderson, 477 U.S. at 250.
Fair use is an affirmative defense to trademark infringement where the use of the mark “is descriptive of and used fairly and in good faith only to describe the goods or services” of the allegedly infringing party. 15 U.S.C. § 1115(b)(4). The Supreme Court has recognized that “some possibility of consumer confusion must be compatible with fair use.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004). Even where the plaintiff claiming infringement has shown likelihood of confusion, “the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense that a term is used descriptively, not as a mark, fairly, and in good faith.” Id. at 124.
Descriptive fair use
Defendant argues that its use of “financial quarterback” was descriptive of its services and that the mark itself is descriptive; therefore, its uses were descriptive fair use. (Doc. 169 at 14-15.) It emphasizes that its uses of the mark were in good faith and were not visually prominent. (Id.)
Plaintiffs argue in response that, in the absence of a controlling test in the Eighth Circuit, the Court should analyze descriptive fair use using the test created by the Ninth Circuit in KP Permanent Make-Up, Inc. v. Lasting Impression I Inc., 408 F.3d 596, 609 (9th Cir. 2005). (Doc. 175 at 9.) The relevant factors include (1) the degree of likely confusion; (2) the strength of the trademark; (3) the descriptive nature of the term for the product or service being offered by the defendant and the availability of alternate descriptive terms; (4) the extent of the use of the term prior to the registration of the trademark; and (5) any differences among the times and contexts in which the defendant has used the term. KP Permanent, 408 F.3d at 609. Plaintiffs contend that the degree of likely confusion and the strength of the trademark are jury issues. (Doc. 175 at 13.) They argue that “financial quarterback” is not descriptive of defendant's services, and alternative descriptions of its services are available. (Id. at 15.) They contend that, while other banks and institutions used the phrase “financial quarterback” prior to plaintiff JAG's adoption of it, such use was not descriptive or continuous and consistent. (Id. at 16.) Last, they assert that there are no allegations or evidence as to differences among the times and contexts in which defendant used the...
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