Potomac Conference Corp. v. Takoma Acad. Alumni Ass'n, Inc.

• Decision Date: 04 March 2014
• Docket Number: Civil Action No. DKC 13–1128.
• Citation: 2 F.Supp.3d 758
• Court: U.S. District Court — District of Maryland
• Parties: POTOMAC CONFERENCE CORPORATION OF SEVENTH–DAY ADVENTISTS, d/b/a Takoma Academy, v. TAKOMA ACADEMY ALUMNI ASSOCIATION, INC., et al.

2 F.Supp.3d 758

POTOMAC CONFERENCE CORPORATION OF SEVENTH–DAY ADVENTISTS, d/b/a Takoma Academy,

v.TAKOMA ACADEMY ALUMNI ASSOCIATION, INC., et al.

Civil Action No. DKC 13–1128.

United States District Court,

D. Maryland.

Filed March 4, 2014.

H. Dean Bouland, Jr., Carrie McMahon Freeman, Bouland and Brush LLC, Christopher J. Lyon, James B. Astrachan, Astrachan Gunst Thomas PC, Baltimore, MD, for Potomac Conference Corporation of Seventh–Day Adventists, d/b/a Takoma Academy.

Michael Alexander Ostroff, Jude Edward Wikramanayake, Rafael Marcelo Montero, Montero Law Group LLC, Silver Spring, MD, for Takoma Academy Alumni Association, Inc., et al.

MEMORANDUM OPINION

DEBORAH K. CHASANOW, District Judge.

Presently pending and ready for resolution in this trademark infringement and federal unfair competition, common law unfair competition, and conversion action is a motion to dismiss (ECF No. 9) filed by Defendants Takoma Academy Alumni Association, Inc. (“TAAA, Inc.” or “unincorporated association”) and Henry Pittman (“Mr. Pittman”) (collectively “Defendants”). The issues are fully briefed and a hearing was held on August 22–23, 2013. On September 5, 2013, the parties submitted a joint request to refer the matter to a magistrate judge for mediation. The case was subsequently referred to Magistrate Judge Jillyn K. Schulze for ADR. A settlement conference was held on October 21, 2013, but no settlement was reached (ECF No. 31). The court now rules. For the following reasons, Defendants' motion to dismiss will be denied.

I. BackgroundA. Factual Background¹

The Potomac Conference Corporation of Seventh—day Adventists (“Potomac Conference” or “Takoma Academy” or “Plaintiff”) owns and operates a number of Seventh-day Adventist churches and schools, including Takoma Academy. Takoma Academy is a faith-based secondary school providing educational services to children in grades nine (9) through twelve (12). Washington Training Institution founded Takoma Academy in 1904; Takoma Academy then became a separate institution as part of the Potomac Conference in 1934. (ECF No. 1 ¶ 10).

Plaintiff alleges that Takoma Academy is also known as “TA” and that Takoma Academy has “continuously and exclusively” used the “Takoma Academy” and “TA” marks since the school's founding in 1904 “in connection with the promotion, sale, and provision of its educational goods and services.” ( Id.). Plaintiff also alleges that Takoma Academy has displayed “Takoma Academy” and “TA” on “the school building, letterhead, correspondence, bills, direct mailings, and school and alumni newsletters.” ( Id. ¶ 11).

Plaintiff asserts that Takoma Academy Alumni Association (“TAAA” or “unincorporated alumni association”) is an unincorporated alumni association that Takoma Academy established in the 1970s to organize alumni events, solicit contributions, and fundraise for the school. ( Id. ¶ 12). Plaintiff also contends that Takoma Academy maintained mailing lists, phone numbers, email addresses, and other alumni information, which was consolidated into a database and that Rick Feldman (“Feldman”), a Takoma Academy alumnus, voluntarily maintained. ( Id. ¶ 13). Plaintiff avers that Takoma Academy oversaw TAAA and controlled TAAA's finances and assets. Specifically, according to the complaint, “[a]ll fundraising checks raised by TAAA were deposited into Takoma Academy's operating account. All invoices relating to alumni activities for TAAA were paid through Takoma Academy's operating account.” ( Id. ¶ 12).

Mr. Pittman, a Takoma Academy alumnus, became TAAA's president in April of 2011. ( Id. ¶ 14). According to Plaintiff, Potomac Conference and TAAA eventually disagreed about the operations and independence of the alumni association. ( Id. ¶ 15). Consequently, on April 10, 2012, Mr. Pittman filed Articles of Incorporation with the Maryland State Department of Assessments and Taxation ( see ECF No. 1–2, at 4–11) to incorporate the alumni association and establish Takoma Academy Alumni Association, Inc. (“TAAA, Inc.” or “incorporated alumni association”). (ECF No. 1 ¶ 16). Plaintiff asserts that Takoma Academy did not authorize the incorporation and that “Pittman was fully aware that his action was not approved by Plaintiff.” ( Id.).

According to the complaint, in May of 2012, one month after Mr. Pittman incorporated the alumni association, “Manny Montero, the resident agent and purported general counsel for TAAA, Inc .... threatened Feldman and demanded access to the Alumni Information” contained in the database Plaintiff maintained, and that “[u]nder the threat of legal action, and based on ignorance of any dispute between Plaintiff and Defendants,” Feldman provided access to the Alumni Information to Montero and Defendants. ( Id. ¶ 17). ²

On May 31, 2012, one month after the incorporation of the alumni association, Plaintiff filed a trademark application with the United States Patent and Trademark Office (“USPTO”) for the term “Takoma Academy,” and the USPTO registered the mark on February 5, 2013. (ECF No. 1–2, at 2). Then, on June 7, 2012, Plaintiff voted to disassociate itself from TAAA, Inc. “after learning of the formation of TAAA, Inc.” (ECF No. 1 ¶ 18; see also ECF No. 1–2, at 19 (message from Pittman) (“On June 7, 2012, the Takoma Academy Board of Trustees and the leadership of the Potomac Conference of Seventh-day Adventist Church voted to take permanent control of Takoma Academy Alumni Association (TAAA) and administer the association under the authority of the Board of Trustees and the Potomac Conference.”)). Plaintiff contends that after disassociating, it demanded that Defendants “cease any use of the Marks.” ³ (ECF No. 1 ¶ 18). On January 17, 2013, Takoma Academy sent a Cease and Desist letter addressed to Mr. Pittman, demanding that “any and all use of the name Takoma Academy and TA, or any derivatives thereof, immediately cease” (ECF No. 1 ¶ 24) and to “immediately return to Takoma Academy all databases, alumni lists and other property belonging to Takoma Academy which were given to [Mr. Pittman] when [he] became president of the Takoma Academy Alumni Association.” (ECF No. 1–2, at 43) (emphasis in original).

Plaintiff asserts that Defendants nevertheless “continue to use Plaintiff's Marks to identify their corporation TAAA, Inc.” (ECF No. 1 ¶ 19). Specifically, Plaintiff asserts that Defendants created a Facebook page and a Takoma Academy Alumni Association, Inc. group on the LinkedIn website on January 29, 2013, after Defendants received the Cease and Desist Letter. ⁴ On these websites, TAAA, Inc. purports to be affiliated with Takoma Academy. ( Id. ¶ 21; see also ECF No. 1–2, at 34–36).

Plaintiff alleges that Defendants use the “TA” and “Takoma Academy” marks in their communications with alumni. Plaintiff also contends that Defendants send “numerous messages to alumni using TAAA and TAAA, Inc. interchangeably.” ( Id. ¶ 20; see also ECF No. 1–2, at 18–32). Plaintiff further avers that both Takoma Academy and TAAA, Inc. planned competing alumni weekends with a golf tournament referencing “Takoma Academy,” “TA,” “Takoma Academy Alumni Association,” and “TAAA.” (ECF No. 1–2, at 12–16, 45). Plaintiff maintains that Mr. Pittman “continues to guide, advise, and induce TAAA, Inc. to use Plaintiff's Marks and benefits therefrom by having installed himself as the president thereof.” ( Id. ¶ 26). Finally, Plaintiff asserts that Defendants filed an application with the USPTO to register “Takoma Academy Alumni Association” as a mark. ( Id. ¶ 30). Based on the record, Defendants' application with the USPTO remains pending.

B. Procedural Background

Plaintiff filed a complaint on April 16, 2013. (ECF No. 1). Plaintiff alleged four claims: (1) trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114(1)(a) and 1125(a) (against both Defendants); (2) vicarious trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114(1)(a) and 1125(a) (against Mr. Pittman); (3) common law unfair competition (against both Defendants); and (4) conversion by wrongful detention (against both Defendants). ( Id. ¶¶ 31–67). In the complaint, Plaintiff seeks, inter alia, an injunction barring Defendants from further use of “TAKOMA Academy,” “TA,” or “any mark, word, or name similar to Plaintiff's Marks which is likely to cause confusion or mistake or to deceive.” ( Id. at 14).

Defendants moved to dismiss on May 10, 2013 pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6). (ECF No. 9). Defendants argue that under Rule 12(b)(1), the court lacks subject matter jurisdiction over Plaintiff's trademark infringement and unfair competition claim (Count I) and that furthermore, Plaintiff lacks standing because the unincorporated alumni association acquired common law rights to the phrase “Takoma Academy Alumni Association” and Plaintiff acquiesced to its use. ( Id., at 8). Defendants further seek dismissal only as to Mr. Pittman pursuant to Rule 12(b)(6) for vicarious trademark infringement (Count II), common law unfair competition (Count III), and conversion (Count IV). Plaintiff opposed Defendants' motion on May 28, 2013, (ECF No. 10), and Defendant replied on June 10, 2013 (ECF No. 11).

II. AnalysisA. Subject Matter Jurisdiction

Generally, “questions of subject matter jurisdiction must be decided ‘first, because they concern the court's very power to hear the case.’ ” Owens–Illinois, Inc. v. Meade, 186 F.3d 435, 442 n. 4 (4th Cir.1999) ( quoting 2 James Wm. Moore et al., Moore's Federal Practice § 12:30 [1] (3d ed. 1998)). Plaintiff bears the burden of proving that subject matter jurisdiction properly exists in federal court. See Evans v. B.F. Perkins Co., a Div. of Standex Int'l Corp., 166 F.3d 642, 647 (4th Cir.1999). In considering a Rule 12(b)(1) motion, the court “may consider evidence outside the pleadings” to help determine whether it has jurisdiction over the case before it. Richmond, Fredericksburg &...