Kassa v. Detroit Metro Convention & Visitors Bureau

• Decision Date: 07 December 2015
• Docket Number: Case No. 15-cv-13153
• Citation: 150 F.Supp.3d 831,117 U.S.P.Q.2d 1317
• Court: U.S. District Court — Eastern District of Michigan
• Parties: Mark Kassa, Plaintiff, v. Detroit Metro Convention & Visitors Bureau et al., Defendants.

150 F.Supp.3d 831

117 U.S.P.Q.2d 1317

Mark Kassa, Plaintiff,

v.Detroit Metro Convention & Visitors Bureau et al., Defendants.

Case No. 15-cv-13153

United States District Court, E.D. Michigan, Southern Division.

Signed December 7, 2015

Scott S. Yaldo, Yaldo Law, PLLC, Birmingham, MI, for Plaintiff.

C. David Bargamian, Josh J. Moss, Michael K. Steinberger, Todd R. Mendel, Barris, Sott, Detroit, MI, for Defendants.

OPINION AND ORDER GRANTING DEFENDANTS' MOTION TO DISMISS (ECF #9)

MATTHEW F. LEITMAN, UNITED STATES DISTRICT JUDGE

INTRODUCTION

Plaintiff Mark Kassa (“Kassa”) holds several trademarks with respect to the phrases “The D” and “Welcome to the D” (the “Marks”). In this action, Kassa claims that Defendants Detroit Metro Convention & Visitors Bureau and Detroit Sports Commission (collectively “Defendants”) infringed the Marks when they included the phrase “Welcome to the D” on banners and signs that they displayed promoting two sporting events in the City of Detroit. Defendants deny that their banners and signs infringed the Marks. The Court agrees. Accordingly, for the reasons stated in this Opinion and Order, Defendants' Motion to Dismiss (ECF #9) is GRANTED.

RELEVANT FACTUAL ALLEGATIONS¹

A. Kassa's Registration and Use of the Marks

Kassa is a “musician and entrepreneur” who hosts an online talk show, the “Welcome to the D Show.” (First Am. Compl., ECF #12 at ¶7.) Kassa also “operates an online apparel and accessories store [ ] that sells various products related to Detroit and music.” (Id. ) These products include items promoting Kassa's band and his talk show. (See id. )

In connection with these commercial ventures, Kassa owns numerous trademarks for the phrases “Welcome to the D” and “The D”:

Specifically, [Kassa] is the owner of three trademarks for the mark “Welcome to the D” for (i) “clothing, namely, shirts and hats” (United States Registration No. 3,724,089), (ii) “entertainment services in the nature of live musical performances” (United States Registration No. 4,117,605), and (iii) “entertainment in the nature of an on-going special variety, news, music or comedy show featuring entertainment news and content broadcast over television, satellite, audio, and video media; entertainment, namely, a continuing music and entertainment news show broadcast over television, satellite, audio, and video media; entertainment, namely, a continuing music and entertainment news show broadcast over television, satellite and internet mediums” (United States Registration No. 4,376,110).

Additionally, [Kassa] is the owner of two trademarks for the mark “The D” for (i) “clothing, namely, shirts and hats” (United States Registration No. 4,316,115) and (ii) “entertainment services in the nature of live musical performances” (United States Registration No. 4,333,876).

(Id. ) Kassa has “allocated considerable resources and has dedicated significant effort in promoting and developing” the Marks. (Id. at ¶10.) Kassa has further “continually used the 'Welcome to the D' mark in connection with the promotion, advertising, and sale of entertainment services and related apparel and accessories.” (Id. at ¶9.)

Kassa also operates a website found at the following internet address: http:/ welcometothed.com. Kassa's website—which is referenced in his First Amended Complaint (see ECF 15 at ¶7, Pg. ID 163)—confirms that “the D” is a shorthand reference or nickname for the City of Detroit. For instance, Kassa tells visitors to his site that his family has been part of the “fabric of Detroit since 1929” and that during his musical career he has been “proud to represent 'the D.”' (See http://welcometothed.com/about/.) Kassa further encourages those buying apparel bearing the Marks to “wear these items with pride because you are representing one of the greatest cities in America!” (See id .)

B. Defendants Use of the Phrase “Welcome to the D”

In 2012, the Detroit Tigers and San Francisco Giants played in Major League Baseball's World Series. The Tigers hosted two games at their home stadium, Comerica Park, which is located in the City of Detroit. In 2015, the City of Detroit hosted another prominent sports event, the USA Volleyball Open National Championships. (First Am. Compl. at ¶12.) In connection with both the Word Series and the Volleyball Championships, “Defendants put up various signs and banners around the City of Detroit” that included the phrase “Welcome to the D.” (Id. ) These “signs and banner[s] were particularly noticeable on street lampposts and the lobbies of hotels and other businesses.” (Id. )

Kassa attached examples of these signs and banners to his pleadings. (See ECF #15 at 8-12, Pg. ID 193-197.) The banners for both the World Series and the Volleyball Championships are similar. As depicted below, the phrase “Welcome to the D” appears at the top of the banner; the logo of the sports event and/or promoter of the event appears in the middle of the banner; the phrase “Where Champions Are Made And Championships Are Played” appears below the sponsors' logos; and Defendants' logos appear at the bottom.

Kassa maintains that Defendants have no connection to him and did not “at any time have any authority to make use of any of the Mark[s] in connection with the World Series, Volleyball Event, or any other event.” (First. Am. Compl. at ¶14.) Kassa says that Defendants' use of the “Welcome to the D” mark caused “confusion to consumers” and “diluted the distinctiveness and associated goodwill” of the Marks. (Id. at ¶¶ 14-15.)

PROCEDURAL HISTORY

Kassa filed this action against Defendants on September 3, 2015. (See Compl., ECF #1.) Kassa thereafter filed a First Amended Complaint. (See First Am. Compl., ECF #15.) The First Amended Complaint asserts five claims against Defendants: “Federal Trademark Infringement” (see id. at ¶¶ 18-21); “Federal Trademark Dilution” (see id. at ¶¶23-28); “False Designation of Origin” (see id. at ¶¶ 30-33); “Common Law Trademark Infringement” (see id. at ¶¶ 35-39); and “Unfair Competition under Michigan Common Law” (see id. at ¶¶ 41-45). All of Kassa's claims relate to Defendants' purported wrongful use of the Marks on banners and signs placed throughout the City of Detroit.

On October 2, 2015, Defendants filed a motion to dismiss Kassa's Complaint (the “Motion to Dismiss”)² . (See ECF #9.) The Court held a hearing on the Motion to Dismiss on November 20, 2015, and it now grants the Motion to Dismiss and dismisses the First Amended Complaint in its entirety.

GOVERNING LEGAL STANDARD

Defendants seek relief under Federal Rules of Civil Procedure 12(b)(6). Rule 12(b)(6) provides for dismissal of a complaint when a plaintiff fails to state a claim upon which relief can be granted. See Fed. R. Civ. P. 12(b)(6). “To survive a motion to dismiss” under Rule 12(b)(6), “a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.”' Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868, (2009) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). A claim is facially plausible when a plaintiff pleads factual content that permits a court to reasonably infer that the defendant is liable for the alleged misconduct. Id. (citing Twombly , 550 U.S. at 556, 127 S.Ct. 1955 ). When assessing the sufficiency of a plaintiff's claim, a district court must accept all of a complaint's factual allegations as true. See Ziegler v. IBP Hog Mkt., Inc. , 249 F.3d 509, 512 (6th Cir.2001). “Mere conclusions,” however, “are not entitled to the assumption of truth. While legal conclusions can provide the complaint's framework, they must be supported by factual allegations.” Iqbal , 556 U.S. at 664, 129 S.Ct. 1937. A plaintiff must therefore provide “more than labels and conclusions,” or “a formulaic recitation of the elements of a cause of action” to survive a motion to dismiss. Twombly , 550 U.S. at 556, 127 S.Ct. 1955. “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id.

LEGAL ANALYSIS

A. Kassa's Federal Trademark Infringement Claim

1. Defendants Used the Marks in a Non-Trademark Way

A trademark is “any word, name, symbol, or device ... used by a person ... to identify and distinguish his or her goods ... from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. To state a claim for federal trademark infringement, a defendant “must allege facts establishing that (1) [he] owns the registered trademark; (2) the defendant used the mark in commerce; and (3) the use was likely to cause confusion.” Hensley Mfg. v. ProPride, Inc. , 579 F.3d 603, 609 (6th Cir.2009). The third requirement—“whether the defendant's use of [a] disputed mark is likely to cause confusion among consumers”—is “[t]he touchstone for liability” for federal trademark infringement. Id. at 610 (quoting Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr. , 109 F.3d 275, 280 (6th Cir.1997) ).

When determining whether a likelihood of confusion exists, courts normally weigh the following factors:

(1) strength of the senior mark; (2) relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) the intent of defendant in selecting the mark; and (8) likelihood of expansion of the product lines.

Id.

However, before a court examines these factors, it must first determine “whether [a] defendant [is] using the challenged mark in a way that identifies the source of [its] goods [or services].” Id. (internal quotation marks omitted). If a defendant is not using a mark as an identifier, “then the mark is being used in a 'non-trademark way' and trademark infringement laws, along with the eight-factor analysis, do not even apply.” Id. (quoting Interactive Products. Corp. v. a2z Mobile Office Solutions, Inc. , 326 F.3d...