Jones v. Am. Council On Exercise, CIVIL ACTION H-15-3270

CourtUnited States Courts of Appeals. United States Court of Appeals (1st Circuit)
Writing for the CourtGray H. Miller United States District Judge
Docket NumberCIVIL ACTION H-15-3270
Decision Date18 October 2016




October 18, 2016


Pending before the court are (1) a motion for summary judgment filed by defendant American Council on Exercise ("ACE") (Dkt. 27); (2) a motion to exclude ACE's summary judgment evidence filed by plaintiff Michael Jones (Dkt. 39); (3) a motion to exclude ACE's new summary judgment evidence filed by Jones (Dkt. 49); and (4) a motion to exclude Jones's expert Robert Esquerre filed by ACE (Dkt. 46). After considering the motions, related filings, and applicable law, the court is of the opinion that the objections in the motions to exclude ACE's summary judgment evidence should be SUSTAINED IN PART AND OVERRULED IN PART, ACE's motion to exclude expert Robert Esquerre should be GRANTED IN PART AND DENIED IN PART, and the motion for summary judgment should be DENIED.


This is a trademark infringement and unfair competition case relating to the term "Medical Exercise Specialist." Dkt. 5. Plaintiff Michael Jones, who holds an undergraduate degree in physical therapy and a doctorate degree in physiology, is the founder of American Academy of Health, Fitness & Rehabilitation Professionals ("AAHRFP"). Id. Jones claims that he created a program to train and certify fitness professionals who work with post-rehabilitation patients and that

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he uses the term "Medical Exercise Specialist" in connection with the certification, course, and exam. Id. He has been using the term since 1994 and claims that he has spent hundreds of thousands of dollars advertising the program. Id.

In the late 1990s, Jones requested that ACE certify his course as "ACE approved." Id. ACE approved the course for a fee, which Jones was required to renew periodically. Id. At some point, Jones discontinued renewing. Id.

Jones contends that ACE eventually launched a competing certification, which it initially called "Advanced Clinical Exercise Specialist" and from 2008 through 2015 called "Advanced Health and Fitness Specialist." Id. Jones alleges that ACE began using the term "Medical Exercise Specialist" in 2015 to describe its competing certification. Id. Jones asserts that he owns a common-law trademark to the term "Medical Exercise Specialist," and he initiated this lawsuit to stop ACE from infringing on the mark. Id. Jones also seeks lost profits and other damages for ACE's alleged infringement. Id. ACE filed an answer in which it asserts various defenses including that its use of the term "Medical Exercise Specialist" is "fair use." Dkt. 18.

ACE has filed a motion for summary judgment in which it argues that the court should grant summary judgment on all of Jones's claims in its favor on its fair use defense. Dkt. 27. ACE also asserts that it is entitled to summary judgment because Jones used the phrase "Medical Exercise Specialist" as both a certification mark to certify people who passed the test and also as a mark to sell products and services for training people to take the certification test. Id. ACE argues that using the mark for both things invalidates any common law trademark Jones may have had. Id. ACE additionally requests that the court grant summary judgment on its naked licensing defense,1 arguing

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that the term "Medical Exercise Specialist" has lost any trademark significance and should be deemed abandoned because Jones has not exercised any control over how certified Medical Exercise Specialists use the mark. Id. Jones contends that obvious factual issues preclude summary judgment on all of ACE's theories. Dkt. 37. Jones also asserts a plethora of evidentiary objections, and ACE moves to exclude Jones's branding expert, Robert Esquerre. Dkts. 39, 46, 49.


Jones objects to evidence attached to ACE's motion for summary judgment and evidence attached to ACE's reply in support of its motion for summary judgment. Dkts. 39, 49. ACE attached forty-three exhibits to its motion for summary judgment. See Dkt. 27 & Exs. Jones objects to thirty-seven of the forty-three exhibits. See Dkt. 39. ACE attached sixty-three exhibits to its reply. Dkt. 44 & Exs. Jones objects to all of the reply exhibits except Exhibit A-54. Dkt. 49. The court will organize these objections into broad categories and rule on the categories rather than discussing each exhibit individually.

A. Curriculum Vitae (Ex. A-1)

Jones objects to Exhibits A-1, a curriculum vitae of one of ACE's experts, as hearsay. Dkt. 39. Hearsay is a statement that "the declarant does not make while testifying at the current trial or hearing;" and that "a party offers in evidence to prove the truth of the matter asserted in the statement." Fed. R. Evid. 801(c). While the curriculum vitae is technically hearsay and thus likely will not be admitted as evidence at trial absent a stipulation between the parties, this does not prevent the court from relying on the curriculum vitae to determine whether the expert is qualified, which is the reason ACE submitted the curriculum vitae. See Dkt. 52 (ACE explaining that the curriculum vitae is offered as background information to establish that this individual may give expert testimony). Moreover, the expert has testified that the document is indeed his curriculum vitae, see

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Dkt. 27, Ex. 34 (ECF No. 28-10), which potentially makes this document admissible subject to Federal Rule of Evidence 807, the residual exception to the rule against hearsay.2 Jones's objection to the curriculum vitae at Exhibit A-1 is OVERRULED. However, Jones may reassert this objection prior to trial.

B. Incomplete Deposition Testimony (Exs. A-2, A-18, A-32, A-116A, A-116B)

Jones objects to Exhibits A-2, A-18, A-32, A-116A, and A-116B, which are all deposition excerpts, under the Rule of Optional Completeness. Dkts. 39, 49. Under Federal Rule of Evidence 106, "[i]f a party introduces all or part of a writing or recorded statement, an adverse party may require the introduction, at that time, of any other part - or any other writing or recorded statement - that in fairness ought to be considered at the same time." Fed. R. Evid. 106. Because this is the summary judgment stage and Jones is free to complete any incomplete testimony cited by ACE in its response to the motion for summary judgment, these objections are OVERRULED.

Jones also objects to Exhibit A-116A at 151:18-21 under Rule 1002 "to the extent the witness is purporting to testify about actual records." Dkt. 49. ACE notes that in the cited testimony the witness does not refer to records and merely notes that ACE's programs are accredited and another organization's programs are not. Dkt. 55. ACE contends that this testimony is based on the witness's personal knowledge. Id. The court agrees. Jones's objection is OVERRULED.

C. Online Dictionary Definitions (Exs. A-3, A-17, A-39)

1. Hearsay. Jones objects to Exhibits A-3, A-17, and A-39, which are online dictionary

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definitions, as hearsay. Dkt. 39. Exhibit A-3 is the definition of the term "bridge the gap." See Dkt. 27, Ex. A-3. ACE does not rely on this exhibit is its motion or reply, so the court need not address the hearsay objection. Exhibits A-17 and A-39 both contain the definition of the word "specialist." See Dkt. 27, Exs. A-17, A-39. ACE contends dictionary evidence is not hearsay in trademark cases because it is not used to prove the truth of the matter asserted but is instead "provided to show the ordinary significance and meaning of words to the public (not the abstract truth of the definition)." Dkt. 52. The Fifth Circuit has observed that the dictionary definition is a good starting place for determining whether a phrase is generic, descriptive, suggestive, or arbitrary and fanciful, and definitions are "appropriate and relevant evidence," but they are not dispositive. Union Nat'l Bank of Tex., Laredo, Tex. v. Union Nat'l Bank of Tex., Austin, Tex., 909 F.2d 839, 847 (5th Cir. 1990). The definitions, then, are not to prove the meaning of the word but to show how the public perceives the word. The hearsay objections to the dictionary definitions relating to words contained within the alleged mark, which are contained at Exhibits A-17 and A-39, are OVERRULED.

2. Relevance. Jones also objects to the definitions at Exhibits A-17 and A-39 as irrelevant because the meaning of one part of the mark, "specialist," has little bearing on the meaning of the entire mark, "medical exercise specialist." Dkt. 39. ACE does not appear to rely on the definiton found at Exhibit A-39. ACE uses Exhibit A-17 to support its contention that "ACE selected the term Medical Exercise Specialist instead of Medical Exercise Professional because the term 'specialist' in the healthcare field denotes a person who hold specialized training, specialized knowledge, skills and ability and can provide specialized services." Dkt. 27. Under 15 U.S.C. § 1115(b)(4), ACE must prove that it chose the term in good faith in order to make out its fair use defense. The court

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finds the definition of "specialist" is relevant for this purpose. Jones's objections to the relevance of Exhibits A-17 and E-39 are OVERRULED.

D. ACE Article Relating to Exercise for Medical Conditions (EXS. A-4 through A-7)

Jones objects to Exhibits A-4 through A-7, which are articles and press releases relating to ACE's programs and exercising to help with medical conditions, as hearsay. Dkt. 39. ACE responds that the articles are offered to show non-trademark use of the words alleged to be a mark, not for the truth of the articles. Dkt. 52. The only one of these articles cited in the motion is Exhibit A-6, which ACE uses as a secondary exhibit to show that ACE launched its "Clinical Exercise Specialist" certification in 1998. Dkt. 27. This launch is what the article is about, so it is being used for the truth of the matter asserted. Jones's objection...

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