Way International, The v. Church of the Way International, The et al
MEMORANDUM OPINION. Signed by Judge R David Proctor on 2/1/2017. (AVC)
2017 Feb-01 PM 01:01
U.S. DISTRICT COURT
N.D. OF ALABAMA
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
THE WAY INTERNATIONAL,
THE CHURCH OF THE WAY
INTERNATIONAL, et al.,
Case No.: 7:15-CV-370-RDP
In the last few decades, parties, courts, and commentators have emphasized the value of
private alternative dispute resolution as a substitute for litigation in public courts. The Apostle
Paul may have been ahead of his time in this area, although for different “policy” reasons. In his
first letter to the Church at Corinth, he warned the Church not to take their lawsuits before
secular courts. I Cor. 6:1 (New Living Translation) (“When one of you has a dispute with
another believer, how dare you file a lawsuit and ask a secular court 1 to decide the matter instead
of taking it to the believers!”). Despite this admonition, the parties in this case -- two ministry
organizations -- are embroiled in a dispute over the use of “marks” that has found its way on to
this court’s docket. The court stands ready, willing, and (hopefully) able to rule on it.
This matter is before the court on Plaintiff The Way International’s Motion for Summary
Judgment (Doc. # 32). The Motion has been fully briefed. (Docs. # 37-41, 45).
Other translations refer to a secular court as “the ungodly” (New International Version), “the unjust”
(King James Version) or “the unrighteous” (English Standard Version). This court does not self-adopt any of these
Summary of Relevant Facts
If facts are in dispute, they are stated in the manner most favorable to the non-movant,
and all reasonable doubts about the facts have been resolved in favor of the non-movant. See
Fitzpatrick v. City of Atlanta, 2 F.3d 1112, 1115 (11th Cir. 1993); Info. Sys. & Networks Corp. v.
City of Atlanta, 281 F.3d 1220, 1224 (11th Cir. 2002). These are the “facts” for summary
judgment purposes only. They may not be the actual facts that could be established through live
testimony at trial. See Cox. v. Adm’r U.S. Steel & Carnegie, 17 F.3d 1386, 1400 (11th Cir.
1994). Having said that, a review of the record shows that the facts relevant to this motion are
not genuinely in dispute. The parties certainly have a dispute. But it is not factual in nature.
Plaintiff, The Way International is a non-denominational Biblical research, teaching, and
fellowship ministry with an international membership. (Doc. # 32-5 ¶ 3, p. 1). Originally
incorporated in 1947, The Way International changed its corporate name to The Way, Inc. in
1955, and subsequently to The Way International in 1974. (Doc. # 32-5 ¶ 5, p. 2). Plaintiff
currently operates eleven separate fellowships with about 200 followers in the State of Alabama,
including two separate fellowships in Birmingham. (Doc. # 32-5 ¶ 5, p. 2).
The Way International has used the mark THE WAY for over sixty years and the mark
THE WAY INTERNATIONAL for over forty years in connection with the provision of its
religious educational services, publications, and related goods and services in the United States
and throughout the world. (Doc. # 32-5 ¶ 5, p. 2). In Alabama, where Defendants are located,
The Way International has used its marks for over forty years. (Doc. # 32-5 ¶ 5, p. 2).
The Way International has expended time, effort, and money promoting its organization
and its goods and services under the marks THE WAY and THE WAY INTERNATIONAL.
(Doc. # 32-5 ¶ 6, 7, p. 2). As a result of Plaintiff’s promotional efforts and extensive use of its
marks, Plaintiff has established national and worldwide recognition of the marks, and people
involved in religious studies and fellowship associate the marks with Plaintiff. (Doc. # 32-5 ¶ 7,
In the late 1990s, The Way International began promoting its goods and services online
by launching its official website located at TheWay.org. (Doc. # 32-5 ¶ 10, pp. 3-4). In
addition, Plaintiff has registered the following domain names: TheWayInternational.net,
TheWayInternational.org, TheWayInternational.info, TheWay.com, TheWay.net, TheWay.info,
TheWayMinistry.net, TheWayMinistry.info, and WayInternational.org, which Plaintiff uses to
redirect Internet browsers to its official website. (Doc. # 32-5 ¶ 11, p. 4; Doc. # 32-6).
The Way International owns 16 federal trademark registrations comprised of or
containing the marks THE WAY and THE WAY INTERNATIONAL (Doc. # 32-5 ¶ 8, p. 2).
The registrations for THE WAY and the WAY INTERNATIONAL are set forth in the chart
INT. CL. 41 educational services-namely,
providing religious teaching services by
means of motion pictures and slide
presentations and producing and presenting
musical, dramaticomusical, and dramatic
productions and presenting works of art,
publishing of periodicals and booklets of a
INT. CL. 16 religious paperback and
hardback books, study manuals, and
INT. CL. 16 religious paperback and
hardback books; religious brochures and study
manuals; stationery, namely, note cards,
invoices, and gift certificates
INT. CL. 9 audiotapes, videotapes, records,
cds and cassettes in the field of religion
INT. CL. 35 retail bookstore services in the
field of religion
INT. CL. 41 educational services, namely,
providing religious teaching services by
means of motion pictures and slide
presentations; entertainment services, namely,
producing and presenting musical,
dramaticomusical, and dramatic productions
and presenting works of art in the field of
religion; publishing of periodicals and
booklets of a religious nature
INT. CL. 9 digital materials, namely, cds, and
dvds in the field of religion; downloadable
audio files, multimedia files, written
documents, audio material, video material
featuring information in the field of religion
(Doc. # 32-7 – 32-13). The Way International actively polices possible infringements of its
marks, and takes action to protect its marks as appropriate under the circumstances. (Doc. # 32-5
¶ 15, p. 4).
Defendants began operating a nondenominational Biblical ministry in October or
November 2014. (Doc. # 23 ¶ 23). Defendants Pastor Mason and Ms. Mason selected the name
“The Church Of The Way International” for their ministry. (Doc. # 23 ¶ 24).
registered with the Alabama Secretary of State under the name “The Church Of The Way
International.” (Doc. # 32-14).
thechurchofthewayinternational.org (the “Domain Name”). (Doc. # 23 ¶ 25; Doc. # 32-15).
Defendants are using the Domain Name in connection with the website at the following URL:
http://thechurchofthewayinternational.org. (Doc. # 23 ¶ 42; Doc. # 32-16). Defendants provide
prayer, worship, and outreach services, offer religious teaching materials including a series of
audio CDs, and solicit charitable contributions. (Doc. # 23 ¶ 23; Doc. # 32-16).
Prior to receiving the letters from the Plaintiff’s attorney requesting that Defendants stop
using Plaintiff’s marks, Defendants had never heard of Plaintiff (Doc. # 39 ¶ 7) and they deny
having any intent to profit from the use of Plaintiff’s marks. (Doc. # 39 ¶ 12).
Defendants have used (and continue to use) “The Church Of The Way International” and
http://thechurchofthewayinternational.org to promote and advertise their services and products,
including religious teaching services, and also to solicit monetary contributions. (Doc. # 23 ¶ 27;
Doc. # 32-16). Defendants have not obtained any authorization from The Way International to
use its marks. (Doc. # 23 ¶ 22; Doc. # 32-5 ¶ 18, p. 5). After Defendants received Plaintiff’s
letter demanding that the Defendants cease use of “The Church Of The Way International” and
http://thechurchofthewayinternational.org, Defendants continued to use the marks and Domain
Name, and their use of them has continued. (Doc. # 23 ¶ 28; Doc. # 32-16).
On April 29, 2016, the same day that Plaintiff filed its Motion for Summary Judgment,
Defendants filed a Trademark/Service Mark Application with the United States Patent and
Trademark Office, Serial Number: 87019245, seeking to register the mark “The Church Of The
Way International.” (Doc. # 45-4).
Summary Judgment Standard
Under Federal Rule of Civil Procedure 56(c), summary judgment is proper “if the
pleadings, depositions, answers to interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as to any material fact and that the moving
party is entitled to judgment as a matter of law.” Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986). The party asking for summary judgment always bears the initial responsibility of
informing the court of the basis for its motion and identifying those portions of the pleadings or
filings that it believes demonstrate the absence of a genuine issue of material fact. Celotex, 477
U.S. at 323. Once the moving party has met its burden, the Rule requires the non-moving party
to go beyond the pleadings and -- by pointing to affidavits, or depositions, answers to
interrogatories, and/or admissions on file -- designate specific facts showing that there is a
genuine issue for trial. See id. at 324.
The substantive law will identify which facts are material and which are irrelevant. See
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). All reasonable doubts about the facts
and all justifiable inferences are resolved in favor of the non-movant. See Fitzpatrick v. City of
Atlanta, 2 F.3d 1112, 1115 (11th Cir. 1993). A dispute is genuine “if the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248. If
the evidence is merely colorable, or is not significantly probative, summary judgment may be
grated. See id., at 249.
When faced with a “properly supported motion for summary judgment, [the non-moving
party] must come forward with specific factual evidence, presenting more than mere
allegations.” Gargiulo v. G.M. Sales, Inc., 131 F.3d 995, 999 (11th Cir. 1997). As Anderson v.
Liberty Lobby, Inc. teaches, Rule 56(c) “does not allow the plaintiff to simply rest on [her]
allegations made in the complaint; instead, as the party bearing the burden of proof of trial, [s]he
must come forward with at least some evidence to support each element essential to [her] case at
trial.” Anderson, 477 U.S. at 252. “Mere allegations” made by a plaintiff are insufficient. Id.
Summary judgment is mandated “against a party who fails to make a showing sufficient
to establish the existence of an element essential to that party’s case, and on which that party will
bear the burden of proof at trial.” Celotex Corp., 477 U.S. at 322. “Summary judgment may be
granted if the non-moving party’s evidence is merely colorable or is not significantly probative.”
Sawyer v. Southwest Airlines Co., 243 F. Supp.2d 1257, 1262 (D. Kan. 2003) (citing Anderson,
477 U.S. at 250-51).
“[A]t the summary judgment stage the judge’s function is not himself to weigh the
evidence and determine the truth of the matter but to determine whether there is a genuine issue
for trial.” Anderson, 477 U.S. at 249. “Essentially, the inquiry is ‘whether the evidence presents a
sufficient disagreement to require submission to the jury or whether it is so onesided that one
party must prevail as a matter of law.’” Sawyer, 243 F. Supp.2d at 1262 (quoting Anderson, 477
U.S. at 251-52); see also LaRoche v. Denny’s, Inc., 62 F. Supp.2d 1366, 1371 (S.D. Fla. 1999)
(“The law is clear … that suspicion, perception, opinion, and belief cannot be used to defeat a
motion for summary judgment.”).
Plaintiff’s Complaint contains five counts against Defendants: (1) Federal Trademark
Infringement under 15 U.S.C. ' 1114(1); Federal Unfair Competition under 15 U.S.C. '
1125(a)(1); (3) Federal Cybersquatting under 15 U.S.C. ' 1125(d)(1); (4) Alabama Common
Law Trademark Infringement and Unfair Competition; and (5) Unlawful & Deceptive Trade
Practices Under Ala. Code ' 8-19-5. (Doc. # 1). The court addresses each of these claims, in
turn. After careful review, and for the reasons stated below, the court concludes that Plaintiff’s
Motion for Summary Judgment is due to be granted in part and denied in part.
Count I - Federal Trademark Infringement under 15 U.S.C. ' 1114(1)
A person is liable for infringement under the Lanham Act if he uses a mark in commerce
that is confusingly similar to a registered mark. See 15 U.S.C. § 1114(1)(a); Sovereign Military
Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Florida Priory of the
Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The
Ecumenical Order, 809 F.3d 1171, 1181 (11th Cir. 2015).
“A plaintiff bringing an infringement action must prove ‘first, that its mark is valid and,
second, that the defendant's use of the contested mark is likely to cause confusion.’” Sovereign
Military Hospitaller, 809 F.3d at 1181 (quoting Dieter v. B & H Industries of Southwest Florida,
Inc., 880 F.2d 322, 326 (11th Cir. 1989)). The Eleventh Circuit has set forth a seven factor
balancing test that courts should apply in evaluating whether there is a likelihood of confusion.
The seven factors are as follows:
(1) strength of the mark alleged to have been infringed; (2) similarity of the
infringed and infringing marks; (3) similarity between the goods and services
offered under the two marks; (4) similarity of the actual sales methods used by the
holders of the marks, such as their sales outlets and customer base; (5) similarity
of advertising methods; (6) intent of the alleged infringer to misappropriate the
proprietor's good will; and (7) the existence and extent of actual confusion in the
Sovereign Military Hospitaller, 809 F.3d at 1181 (quoting Tana v. Dantanna's, 611 F.3d 767,
774–75 (11th Cir. 2010)). The district court “does not have to consider all of these factors in
every case and in some cases, ‘new’ factors may merit consideration.” Id. (quoting Swatch
Watch, S.A. v. Taxor, Inc., 785 F.2d 956, 958 (11th Cir. 1986)). The court addresses the relevant
factors below after a discussion of the Defendants’ challenge to the marks at issue.
Defendants’ Challenge to the Validity of Plaintiff’s Marks
In challenging the validity of Plaintiff’s registered marks, Defendants offer little more
than conclusory allegations of invalidity. Specifically, Defendants “deny that the Plaintiff has a
valid protected mark. The Defendants contend the term ‘The Way’ is a generic mark and, if
capable of being a valid protected mark is given the lowest level of protection.” (Doc. # 38 at 5).
The argument fails for at least two reasons. First, Defendants offer no evidence to support this
assertion. Absent any factual support, Defendants arguments are insufficient to preclude
summary judgment on the issue of validity of the marks. See Leigh v. Warner Bros., 212 F.3d
1210, 1217 (11th Cir. 2000).
Second, and moreover, this argument ignores the fact that registration of a trademark on
the principal register of the USPTO is prima facie evidence of validity and establishes a
presumption that the mark is protectable or distinct. 15 U.S.C. § 1057(b); see also Welding
Servs., Inc. v. Forman, 509 F.3d 1351, 1357 n. 3 (11th Cir. 2007); Edge Sys. LLC v. Aguila, 186
F. Supp. 3d 1330, 1346 (S.D. Fla. 2016) (“Registration of a trademark establishes a rebuttable
presumption that it is distinctive.”). After five years of continuous use, the owner of a registered
trademark may file an affidavit and have the mark declared “incontestable.” Wilhelm Pudenz,
GmbH v. Littlefuse, Inc., 177 F.3d 1204, 1208 (11th Cir. 1999) (citing 15 U.S.C. § 1065).
“Incontestability offers two key benefits for plaintiffs complaining about an infringement. With
respect to the first element of infringement—validity—incontestability provides ‘conclusive
evidence of the validity of the registered mark and of the registration of the mark, of the
registrant's ownership of the mark, and of the registrant's exclusive right to use the registered
mark in commerce.’” Sovereign Military Hospitaller, 809 F.3d at 1183 (quoting 15 U.S.C. §
1115(b) (emphasis in original). “Registration alone, by contrast, provides only “prima facie
evidence of ... validity.” Id. (quoting § 1115(a) (emphasis in original). See also Park ‘N Fly, Inc.
v. Dollar Park and Fly, Inc., 469 U.S. 189, 196 (1985) (the Lanham Act expressly provides that
before a mark becomes incontestable an opposing party may prove any legal or equitable defense
which might have been asserted if the mark had not been registered, however, once a mark is
incontestable the registration is conclusive evidence of the registrant's exclusive right to use the
mark, subject only to the defenses enumerated in the statute). Six of Plaintiff’s federally
registered Marks are incontestable. (Docs. # 32-7 – 32-12).
Finally, 15 U.S.C. § 1115(b) allows for certain enumerated defenses, but the court finds
those inapplicable here. Further, any such defenses only “rebut the conclusive presumption of
validity that comes with incontestability.” Sovereign Military Hospitaller, 809 F.3d at 1191. A
defendant seeking to rely upon any of these statutory defenses “must still identify some
additional reason why the plaintiff's marks are invalid.” Id. This, Defendants have not done.
Accordingly, the court concludes that Defendants’ incontestable marks are valid.
Application of the Seven Factors
The Eleventh Circuit has discussed how to weigh the seven “likelihood of confusion”
factors, noting that the process “entails more than the mechanistic summation of the number of
factors on each side.” Custom Mfg. & Eng'g, Inc. v. Midway Servs., 508 F.3d 641, 649 (11th Cir.
2007). “These factors imply no mathematical precision, but are simply a guide to help determine
whether confusion is likely. They are also interrelated in effect. Each case presents its own
complex set of circumstances and not all of these factors may be particularly helpful in any given
case.” Id. at 650 (internal citations omitted).
(i) Strength of the Mark Alleged to Have Been Infringed
In the Eleventh Circuit, even though members of that court have questioned whether the
principle is correct, “incontestable marks are presumptively strong.” Sovereign Military
Hospitaller, 809 F.3d at 1184 (citing Dieter v. B & H Industries of Southwest Florida, Inc., 880
F.2d 322, 329 (11th Cir.1989) (prior panel decision). Here, Defendants have offered no evidence
-- and scarce argument -- to overcome this presumption. Therefore, this court is bound to hold
that Plaintiffs’ six incontestable marks are presumptively strong.
(ii) Similarity of the Infringed and Infringing Marks
Plaintiff has successfully registered the marks “THE WAY” and “THE WAY
INTERNATIONAL” in connection with its ministry and religious goods and services. Six of
those registrations have become incontestable. In October 2014, Defendants began operating
their ministry under the name “The Church Of The Way International” for their ministry. (Doc.
# 23 ¶ 24). The name Defendants selected incorporates both of Plaintiff’s incontestable marks
(“THE WAY” and “THE WAY INTERNATIONAL”) in connection with a religious institution
or ministry. The court does not hesitate to find that the marks used by the parties are similar.
In addressing this factor, Defendants again argue that Plaintiff’s marks were not
appropriate for trademark registration. (See, e.g. Doc. # 38 at 6-7). The fact remains, however,
that the USPTO accepted the marks on the Federal Register. And, since then six of those marks
have now become incontestable. Any quarrel Defendants have with whether the marks should
have been registered is insufficient to create an issue of fact as to whether they were, in fact
registered and are now incontestable. Moreover, Plaintiff has submitted a decision by the
Trademark Trial and Appeal Board holding that the mark “THE WAY” is neither generic nor
merely descriptive of Christianity or followers of Christ. (Doc. # 45-1).2
(iii) Similarity between the Goods and Services Offered under the
Plaintiff’s marks are registered for the following classes of goods and services C Class 9:
audiotapes, videotapes, records, cds and cassettes, including digital materials, namely, cds, and
dvds in the field of religion; downloadable audio files, multimedia files, written documents,
audio material, video material in the field of religion; Class 16: religious paperback and hardback
books, study manuals, and stationery-namely, notecards, invoices, and gift certificates; Class 35:
retail bookstore services in the field of religion; Class 41: educational services, namely,
providing religious teaching services by means of motion pictures and slide presentations;
entertainment services, namely, producing and presenting musical, dramaticomusical, and
dramatic productions and presenting works of art in the field of religion; publishing of
periodicals and booklets of a religious nature. (Doc. # 32-1 at 5-6).
Defendants distinguish their goods and services by noting that they place a primary
emphasis on a traditional church type setting with a local congregation and a fixed location.
They also argue that there are vast differences in the religious teaching of both organizations.
However, this assertion merely highlights the fact that both parties similarly offer religious
teaching, services and goods, although they may be representative of different “denominations.”
Therefore, the court finds that the parties’ use of the competing marks took place within similar
classes of goods and services.
To be crystal clear, although the court in no way views the TTAB’s decisions as precedential, in this
instance its decision is persuasive.
(iv) Similarity of the Actual Sales Methods Used
Both parties advertise their religious goods and services via the Internet on their
respective websites and social media platforms. Defendants admit as much. (Doc. # 38 at 7).
Defendants use Plaintiff’s marks in their Twitter handle @TheWayIntl.” Defendants’ argument
that the types of education materials sold by Defendants is different from that offered by Plaintiff
is belied by the similarity of their goods and services as discussed above. But it is also irrelevant
here. This factor addresses the sales methods, which are without doubt similar.
(v) Similarity of Advertising Methods
This factor requires little analysis. Defendants concede that they, like Plaintiff, use social
media to spread their name and build attendance. (Doc. # 38 at 8).
(vi) Intent of the Alleged Infringer
“The sixth factor asks whether the defendant adopted its mark ‘with the intent of deriving
benefit from the reputation of the plaintiff.’” Sovereign Military Hospitaller, 809 F.3d at 1188
(quoting Exxon Corp. v. Tex. Motor Exch. of Houston, Inc., 628 F.2d 500, 506 (5th Cir. 1980)).
“‘Bad faith in the adoption and use of a trademark normally involves ... efforts by a party to
“pass off” its product as that of another.’” Id. (quoting Amstar Corp. v. Domino's Pizza, Inc., 615
F.2d 252, 263 (5th Cir. 1980)).
Where there is evidence of an intent to derive a benefit from the use of another party’s
marks, that fact may justify an inference that there is confusing similarity. But the existence of
such an intent is not necessary to support a finding that there is a “likelihood of confusion.”
Sovereign Military Hospitaller, 809 F.3d at 1188. Here, prior to receiving letters from Plaintiff’s
attorney requesting that Defendants stop using Plaintiff’s marks, Defendants state that they had
never heard of Plaintiff. (Doc. # 39 ¶ 7). Defendants further deny having any intent to profit from
the use of Plaintiff’s Marks. (Doc. # 39 ¶ 12). However, there is also evidence that Defendants
refused to cease using Plaintiff’s marks, including the incontestable ones, after being put on
notice of the existence of the federal trademark registrations. And while Defendants argue that
the registrations were somehow invalid, that argument ignores the fact of the registrations and
their incontestability. As discussed above, because of their incontestability, Plaintiff’s marks are
conclusively valid.3 Moreover, on the same day that Plaintiff filed its Motion for Summary
Judgment, Defendants filed a Trademark/Service Mark Application with the United States Patent
and Trademark Office, Serial Number: 87019245, seeking to register the mark “The Church Of
The Way International.” (Doc. # 45-4).4 Defendants’ proposed mark incorporates Plaintiff’s
incontestable marks. On balance, and on this Rule 56 record, the evidence on this factor does not
weigh in favor of either party.
(vii) The Existence and Extent of Actual Confusion in the Consuming
Although “[t]he ‘best evidence’ that the parties' marks are likely to be confused is
evidence that the marks actually have been confused,” Sovereign Military Hospitaller, 809 F.3d
at 1189 (quoting Amstar Corp., 615 F.2d at 263), Plaintiff has not provided any evidence of
actual confusion of the marks. Nevertheless, “[e]vidence of actual confusion is ‘not necessary’
for the plaintiff to prevail on a claim of infringement … .” Id.
Defendants’ contention in this regard is curious. It may be best characterized in this manner: it is
acceptable to break a law with which one disagrees.
On April 29, 2016, Defendants sought to register their mark “The Church Of The Way International.”
(Doc. # 45-4). Ironically, on September 11, 2016, the USPTO issued a “Section 2(d) Refusal – Likelihood of
Confusion” on Defendants’ application. That refusal states, “Registration of the applied-for mark is refused because
of a likelihood of confusion with the marks in U.S. Registration Nos. 1155904, 2151377, 2458452, 2885949,
(last visited January 19, 2017). Marks 1155904, 2885949, 2885950, 2901294, and 4362413 are owned by Plaintiff
and are at issue in this case.
The Court’s Conclusions Based upon its Application of the Seven
Having considered and applied the Eleventh Circuit’s seven factor balancing test to the
Rule 56 record, the court agrees with the USPTO that Defendants’ use of their name “The
Church Of The Way International” for their ministry and related goods and services creates a
likelihood of confusion with Plaintiff’s incontestable marks “THE WAY” and “THE WAY
INTERNATIONAL” in connection with its ministry and related goods and services.
Because Plaintiff has presented undisputed evidence that its marks are valid and that
Defendants’ use of a similar mark is likely to cause confusion, Plaintiff's Motion for Summary
Judgment is due to be granted as to liability on Count I.
Count II - Federal Unfair Competition under 15 U.S.C. ' 1125(a)(1)
To prove a federal unfair competition claim under 15 U.S.C. § 1125(a)(1)(A), a plaintiff
must show (1) that it had prior rights to the mark at issue and (2) that the defendant adopted a
mark or name that was the same, or confusingly similar, to plaintiff's mark such that consumers
would likely confuse the two. See Suntree Tech., Inc. v. Ecosense Int'l, Inc., 693 F.3d 1338, 1346
(11th Cir. 2012) (internal citations omitted). The legal standard for unfair competition under both
the Lanham Act and the common law has been held to be essentially the same as the standard for
trademark infringement. See Florida Int'l Univ. Bd. of Trustees v. Florida Nat. Univ., Inc., 91 F.
Supp. 3d 1265, 1284-85 (S.D. Fla. 2015); Turner Greenberg Assocs., Inc. v. C & C Imp., Inc.,
320 F.Supp.2d 1317, 1330 (S.D. Fla. 2004); Chanel, Inc. v. Italian Activewear of Fla., Inc., 931
F.2d 1472, 1475 n. 3 (11th Cir. 1991)). Courts therefore apply the same seven-factor “likelihood
of confusion” test to claims brought under 15 U.S.C. § 1125(a) as well as infringement claims.
See Florida Int'l Univ. Bd. of Trustees, 91 F. Supp. 3d at 1285; Custom Manufacturing, 508 F.3d
at 647–48. Thus, because Plaintiff’s unfair competition claim mirrors its trademark infringement
claim, its motion for summary judgment as to its Unfair Competition claim in Count II is
likewise due to be granted.
Count III - Federal Cybersquatting under 15 U.S.C. ' 1125(d)(1).
To establish a claim under the Anticybersquatting Consumer Protection Act (“ACPA”),
15 U.S.C. § 1125(d), a plaintiff must establish that “(1) it has a valid trademark entitled to
protection; (2) its mark is distinctive or famous; (3) the defendant's domain name is identical or
confusingly similar to ... the owner's mark; and (4) the defendant used, registered, or trafficked in
the domain name (5) with a bad faith intent to profit.” Vivid Entm't, LLC v. Baserva, , 2015 WL
5021417, *4 (M.D. Fla. Aug. 25, 2015) (quoting Sound Surgical Techs., LLC v. Leonard A.
Rubinstein, M.D., P.A., 734 F.Supp.2d 1262, 1275 (M.D. Fla. 2010) (internal quotation
“A finding of ‘bad faith’ is an essential prerequisite to finding an ACPA violation.” See
Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 947 (9th Cir. 2002). “Without a
finding of bad faith, [plaintiff's] cybersquatting claim necessarily fails.” Id. Courts have
identified two “quintessential example[s]” of bad faith: where a defendant “purchases a domain
name very similar to the trademark and then offers to sell the name to the trademark owner at an
extortionate price,” and where a defendant “intend[s] to profit by diverting customers from the
website of the trademark owner to the defendant's own website, where those consumers would
purchase the defendant's products or services instead of the trademark owner's.” Utah Lighthouse
Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1058 (10th Cir. 2008); see
also Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir.2003) (“Registering a famous
trademark as a domain name and then offering it for sale to the trademark owner is exactly the
wrong Congress intended to remedy when it passed the ACPA.”). Eleventh Circuit precedent
also requires a bad faith intent to profit. That is, “[p]roving [mere] ‘bad faith’ is not enough. A
defendant is liable only where a plaintiff can establish that the defendant had a ‘bad faith intent
to profit.’” Southern Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235, 1246 (11th Cir. 2009)
(citing 15 U.S.C. § 1125(d)) (emphasis in original). The requirement of proof of a bad faith
intent to profit limits the statute's scope and ensures that the ACPA targets only the specific evils
that Congress sought to prevent. This element removes from the ambit of the statute conduct that
might annoy or frustrate mark holders, but that Congress shielded from liability by requiring
indicia of the sort of bad faith it had in mind. See, e.g., S. Grouts & Mortars, 575 F.3d at 1246–
Here, Plaintiff has provided no indisputable evidence (and, really, no substantial evidence
for that matter) that Defendants possessed a bad faith intent to profit.
On the contrary,
Defendants have presented substantial evidence tending to negate such an intent in the form of
the Declaration of Pastor James H. Mason, III. (Doc. # 39). Thus, on this Rule 56 record, the
court cannot conclude that Defendants acted with the “bad faith intent to profit” required to
establish an ACPA violation. Plaintiff’s Motion is due to be denied as to Count III.
Count IV - State Law Infringement and Unfair Competition
Count IV asserts a claim of common law trademark infringement and unfair competition
under Alabama law. Alabama courts have long recognized a cause of action for unfair
competition through imitation of a competitor's trade name. Alfa Corp. v. Alfa Mortgage Inc.,
560 F. Supp. 2d 1166, 1175 (M.D. Ala. 2008) (citing Fuqua v. Roberts, 269 Ala. 59, 110 So.2d
886, 887 (1959)). “Alabama law does not recognize a common-law tort of unfair competition.”
Alfa Corp., 560 F. Supp. 2d at 1175.
“The test for the state-law infringement claim under Alabama common law is same as it
is under the Lanham Act. Id. (citing Arthur Young, Inc. v. Arthur Young & Co., 579 F.Supp. 384,
389 (N.D. Ala. 1983)). Therefore, because the court found Plaintiff is entitled to summary
judgment on its Lanham Act claim, the court similarly concludes Plaintiff is entitled to summary
judgment on its common law trademark infringement claim. See Alfa Corp., 560 F. Supp. 2d at
Count V - Deceptive Trade Practices under Alabama Code § 8–19–5
Plaintiff lacks standing to bring this claim. Under Alabama Code § 8–19–3(2), a
“consumer” is defined as “any natural person who buys goods or services for personal, family or
household use.” “Liability under the chapter is imposed against ‘[a]ny person which commits
one or more of the acts or practices declared unlawful under this chapter and thereby causes
monetary damage to a consumer ...’” EBSCO Indus., Inc. v. LMN Enterprises, Inc., 89 F. Supp.
2d 1248, 1266 (N.D. Ala. 2000) (quoting Ala.Code § 8–19–10); see also Deerman v. Federal
Home Loan Mortgage Corp., 955 F.Supp. 1393, 1399 (N.D. Ala. 1997). Because Plaintiff does
not meet the definition of a “consumer,” Plaintiff’s Motion is due to be denied as to this claim.
Plaintiff is entitled to injunctive relief due to Defendants’ trademark infringement. In the
words of the Honorable W. Keith Watkins of the Middle District of Alabama:
As discussed above, Plaintiff has established Defendant’s trademark infringement.
By virtue of Defendant's trademark infringement, Plaintiff has also established
irreparable harm and no adequate remedy at law, as it is usually recognized in
trademark infringement cases that there is no adequate remedy at law to redress
infringement, and infringement by its nature causes irreparable harm. Levi Strauss
& Co. v. Sunrise Int'l Trading, Inc., 51 F.3d 982 (11th Cir. 1995); GMC v. Phat
Cat Carts, Inc., 504 F.Supp.2d 1278 (M.D. Fla. 2006). Thus, the undersigned
finds Plaintiff is entitled to the entry of a permanent injunction.
Alfa Corp., 560 F. Supp. 2d at 1177.
Reasonable Costs and Attorneys’ Fees
As prevailing party, Plaintiff is entitled to an award of costs. The amount of those costs
remain to be determined. Further, the statute provides that “the court in exceptional cases may
award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). Plaintiff seeks fees
in addition to costs. The Eleventh Circuit has defined an exceptional case as one that can be
characterized as malicious, fraudulent, deliberate, and willful. Planetary Motion, Inc. v.
Techsplosion, Inc., 261 F.3d 1188, 1205 (11th Cir. 2001); Burger King Corp. v. Pilgrim's Pride
Corp., 15 F.3d 166, 168 (11th Cir. 1994).
The court believes that the record is not sufficiently developed to make a determination
as to whether this case is an “exceptional” case warranting an award of fees. An evidentiary
hearing will be necessary to evaluate this issue and will be set by separate order.
For all of these reasons, Plaintiff’s Motion for Summary Judgment is due to be granted in
part and denied in part. A separate order will be entered.
DONE and ORDERED this February 1, 2017.
R. DAVID PROCTOR
UNITED STATES DISTRICT JUDGE
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