Tarsus Connect, LLC v. Cvent, Inc.

Decision Date02 April 2020
Docket NumberCivil Action No. 1:17-cv-05165-SDG
Citation452 F.Supp.3d 1334
Parties TARSUS CONNECT, LLC, Plaintiff/Counter Defendant, v. CVENT, INC., Defendant/Counter Plaintiff.
CourtU.S. District Court — Northern District of Georgia

Stephen M. Schaetzel, Steven Matthew Philbin, Ashley Nicole Klein, Sarah Mae Kessler, Meunier Carlin & Curfman, LLC, Atlanta, GA, for Plaintiff/Counter Defendant.

H. Jonathan Redway, Melissa Alcantara, Dickinson Wright, PLLC, Washington, DC, Henry D. Fellows, Jr., Michael Coleman Gretchen, Fellows La Briola, LLP, Atlanta, GA, for Defendant/Counter Plaintiff.

ORDER

Steven D. Grimberg, United States District Court Judge

This matter is before the Court on Defendant/Counter Plaintiff Cvent, Inc.'s motion for summary judgment on Plaintiff/Counter Defendant Tarsus Connect, LLC's claims and Cvent's counterclaims [ECF 71], as well as Tarsus' motion for partial summary judgment on its own claims [ECF 149].1 For the following reasons, Cvent's motion is GRANTED as to Tarsus' claims and DENIED as to Cvent's counterclaims; and Tarsus' motion for partial summary judgment is DENIED .

I. BACKGROUND

Unless otherwise noted, the following facts are not disputed by the parties or are supported by undisputed evidence in the record.2 Tarsus is a "leading travel hospitality company that provides trade shows, corporate events, exhibitions and related goods and services throughout the United States."3 Christopher Collinson serves as Tarsus' President.4 Cvent is a "leading cloud-based enterprise event management company" that, among other things, "provides business networking opportunities and computer application training" in the fields of event planning, venue sourcing, marketing, and promotion.5

From 1974 until 2016, Tarsus operated under the legal name "Collinson & Company."6 Tarsus also adopted different trade names during this period, including "Collinson Media & Events," "Collinson Publishing," and "Collinson Media."7 In 2007, Tarsus hosted an event entitled "Rejuvenate Marketplace," its first trade show.8 After this show, Tarsus began hosting additional events it promoted under a variant of the "MARKETPLACE" moniker.9 Tarsus' trade shows are "reverse style" events wherein suppliers (e.g. , hoteliers and conference destinations) visit booths hosted by meeting planners.10 Tarsus' role is coordinating the appointments so that meeting planners and suppliers can successfully connect.11 Tarsus prescreens and vets all prospective trade show meeting planners.12

In 2009, Tarsus first utilized the "connect" term when it published a magazine entitled "Connect Meetings Intelligence" and hosted its first "CONNECT Marketplace" trade show.13 After the first "CONNECT Marketplace," Tarsus hosted a new event each year at a different location.14

On September 22, 2011, Tarsus applied for the registration of two trademarks with the United States Patent and Trademark Office ("USPTO"): "CONNECT" and "CONNECT MARKETPLACE."15 Tarsus identified the services claimed in both marks as "organizing, promoting and conducting exhibits, trade shows and events for business purposes."16 During prosecution, the USPTO Trademark Examiner issued a 2(d) "likelihood of confusion" rejection for both marks, citing a mark already on the register.17 Tarsus contested the rejection of both marks.18 The Trademark Examiner accepted Tarsus' argument as to the "CONNECT MARKETPLACE" mark.19 As such, on December 4, 2012, the USPTO issued Tarsus a trademark registration for "CONNECT MARKETPLACE."20 On March 5, 2013, the Trademark Examiner issued a final likelihood of confusion rejection on the "CONNECT" trademark application.21 Tarsus did not contest this final rejection and abandoned the "CONNECT" application.22

Cvent began operating in 1999 as a registration software service provider.23 Since 2000, Cvent has promoted and sold its services under the name Cvent, Inc.24 Cvent sells three software products: (1) the hospitality cloud; (2) the event cloud for mid-market; and (3) the Cvent cloud for the enterprise space.25 Prior to 2015, Cvent hosted various user technology conferences to promote and educate consumers on its products.26 In 2014, Cvent debuted a mobile application entitled "CVENT CONNECT," which allowed customers to electronically view materials during seminars.27 In late-2014, Cvent decided to combine its user conferences into one larger conference.28 On January 22, 2015, Cvent announced the introduction of its "CVENT CONNECT" user conference.29 A portion of the "CVENT CONNECT" conference included a trade show networking event.30

While the parties dispute nearly all the specific facts, it is clear from the record that Cvent and Tarsus maintained a business relationship during this period. On February 29, 2012, Cvent and Tarsus entered into a multi-year contract whereby Tarsus agreed to, among other things, "[w]ork with Cvent to establish a Cvent-Sponsored Best practices webinar for attendees" of Tarsus' events.31 On March 21, 2014, Cvent and Tarsus executed a second contract in which Tarsus agreed to "[w]ork with Cvent to establish 2 Cvent-Sponsored thought leadership webinars annually" for subscribers to Tarsus' events.32 In accordance with these two contracts, Tarsus implemented Cvent's registration software, requiring attendees of Tarsus' trade shows to register using that software.33 Tarsus also promoted Cvent as a partner and encouraged its customers to use Cvent's software products.34 Cvent sent a number of its employees to Tarsus' trade shows, including "Connect Marketplace" events.35 For example, in 2012 and 2014, Cvent agreed to be a gold level sponsor of the "Connect Marketplace" trade show.36 In 2013, Cvent upgraded its status to a platinum level sponsor.37

On January 11, 2016, Tarsus issued a press release announcing it would begin operating under the trade name "Connect Marketplace."38 Tarsus introduced a new logo and website reflecting the name change.39 Tarsus also renamed all of its "Marketplace" trade show events so that each included the "connect" term.40 Conversely, on February 5, 2016, Cvent filed a federal trademark application for the mark "CVENT CONNECT."41 On February 8, 2016, Cvent filed a federal trademark application for the "CVENT CONNECT" design mark.42 The USPTO did not cite to or reference Tarsus during its prosecution of Cvent's marks.43 Tarsus did not contest either of Cvent's applications.44

In late-2016, Tarsus Group, PLC acquired Collinson & Company.45 After the acquisition, the company's legal name changed to "Tarsus Connect, LLC."46 On June 27, 2017, the USPTO approved Cvent's applications for trademark rights in "CVENT CONNECT" and placed the marks on the principal register.47

On December 14, 2017, Tarsus initiated this action, alleging five counts against Cvent for: federal trademark infringement (Count I); false designation of origin and unfair competition (Count II); Georgia common law trademark infringement and unfair competition (Count III); unfair and deceptive trade practices (Count VI); and trademark dilution (Count V).48 On April 16, 2018, Cvent filed its Answer and asserted four counterclaims against Tarsus for: declaratory judgment (Counts I, II, and III) and an alternative claim for federal trademark infringement (Count IV).49 Tarsus filed its Amended Complaint on May 7, 2018, adding a Georgia law claim for unfair competition and encroachment (Count VI) and a claim under 15 U.S.C. § 1119 seeking the cancellation of Cvent's federally registered trademark (Count VII).50

On January 22, 2019, Cvent filed a motion for summary judgment on Tarsus' claims and its own counterclaims.51 Pursuant to the Court's October 22, 2019 Order,52 Tarsus filed a combined brief in opposition to Cvent's motion for summary judgment and partially seeking summary judgment on its claims.53 With the Court's leave, Tarsus filed a corrected, combined brief on November 13, 2019.54 On November 26, 2019, Cvent filed its combined response in opposition to Tarsus' motion for partial summary judgment and reply in support of its motion for summary judgment.55 Tarsus filed its reply in support of its motion for partial summary judgment on December 5, 2019.56 On February 6, 2020, the Court heard oral argument from the parties on the motions.

II. LEGAL STANDARD

Summary judgment is appropriate when "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). A fact is "material" only if it can affect the outcome of the lawsuit under the governing legal principles. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). "Factual disputes that are irrelevant or unnecessary" are not material. Id. A factual dispute is "genuine ... if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Id.

A party seeking summary judgment has the burden of informing the district court of the basis for its motion and identifying those portions of the record that demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). If a movant meets its burden, the party opposing summary judgment must present evidence showing either (1) a genuine issue of material fact or (2) that the movant is not entitled to judgment as a matter of law. Id. at 324, 106 S.Ct. 2548. The non-movant "may not rest upon the mere allegations or denials of his pleading, but ... must set forth specific facts showing that there is a genuine issue for trial." Anderson , 477 U.S. at 248, 106 S.Ct. 2505. If the evidence relied on by the non-movant is "merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249, 106 S.Ct. 2505.

In determining whether a genuine issue of material fact exists, the evidence is viewed in the light most favorable to the party opposing summary judgment, "and all justifiable...

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