ZP NO. 314, LLC v. ILM Capital, LLC et al

Filing 152

ORDER ruling on the following motions: Denying 133 Motion to Amend Magistrate Judge Order, Denying 135 Motion for Reconsideration, Finding as moot 137 Motion for Oral Argument, Finding as moot 140 Motion to Strike & Finding as moot 141 Motion to Stay. Signed by Magistrate Judge Sonja F. Bivins on 11/16/18. (mpp) Copies to counsel.

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ALABAMA
SOUTHERN DIVISION
ZP NO. 314, LLC,
Plaintiff,
vs.
ILM CAPITAL, LLC, et. al.,
Defendants.

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CIVIL ACTION NO. 16-00521-B

ORDER
This action is before the Court on Plaintiff ZP No. 314, LLC’s
(“ZP’s”) Motion to Alter, Amend, or Vacate the Court’s Order or,
in

the

Alternative,

Interlocutory

Appeal

Motion
(Doc.

for

Certification

133);

Defendants’

of

Order
Motion

for
for

Reconsideration (Doc. 135); and ZP’s Motion for Oral Argument (Doc.
137), Motion to Strike (Doc. 140), and Motion to Stay the Case
(Doc. 141).

For each of the following reasons, ZP’s motion to

alter, amend, or vacate (Doc. 133) is DENIED; Defendants’ motion
for reconsideration (Doc. 135) is DENIED; and ZP’s motion for oral
argument (Doc. 137), motion to strike (Doc. 140), and motion to
stay the case (Doc. 141) are MOOT.
Turning first to ZP’s motion to alter, amend, or vacate the
Court’s previous order denying ZP’s motion for summary judgment
and granting Defendants’ motion for summary judgment, in part
(Docs. 130, 133), the Court notes at the outset that the premise
of ZP’s argument for reconsideration of the Court’s previous order

is that “[t]he Eleventh Circuit has established binding precedent
in Jysk Bed ‘n Linen v. Dutta Roy, 810 F.3d 767 (11th Cir. 2015),
which squarely held that action by the United States Patent &
Trademark Office (“PTO”) in not requiring evidence of ‘secondary
meaning’ is presumptive evidence of the inherent distinctiveness
(as opposed to ‘acquired distinctiveness’) of a mark.”
at 1) (emphasis added).

(Doc. 133

Stated differently, ZP argues that the

fact that the United States Patent and Trademark Office (USPTO)
did not require ZP to produce evidence of “secondary meaning” is
presumptive evidence of the inherent distinctiveness (as opposed
to “acquired distinctiveness”) of ZP’s marks.

ZP argues that its

marks were inherently distinctive at the time of Defendants’
alleged infringing conduct in this case, including at the time of
Defendants’ initial registrations of the domain names in this case,
which pre-dated ZP’s registrations of its marks with the USPTO.
ZP

further

argues

that,

because

its

marks

were

inherently

distinctive, as ostensibly evidenced by the USPTO not requiring
proof of acquired secondary meaning, the Court should not have
considered whether ZP’s marks had acquired secondary meaning, but,
rather, should have proceeded with its legal analysis of ZP’s
claims

based

distinctive.1

on

the

premise

that

the

marks

were

inherently

ZP’s arguments are misplaced.

ZP states: “By virtue of their registration with the PTO without
a requirement of a showing of secondary meaning, ZP’s Marks are
1

2

First, despite insisting repeatedly that the USPTO found that
ZP’s

marks

were

inherently

distinctive

when

it

granted

registration of the marks, ZP has pointed to no evidence in the
record whatsoever to support that alleged “fact.”

Moreover,

despite insisting that the USPTO granted ZP’s application for
registration of its marks without requiring ZP to produce evidence
of “secondary meaning,” which ostensibly would imply a finding of
inherent distinctiveness by the USPTO, ZP has again cited no
evidence whatsoever to support that alleged “fact.”

Indeed, the

only citation to any evidence related to these alleged “facts” is
ZP’s

reference

to

Exhibit

19

to

Doc.

121,

which

includes

a

certificate of registration of the “One Ten Student Living” mark
with the USPTO, notice of publication of the “One Ten” mark by the
USPTO, and the State of Alabama registration of the “One Ten” mark.
(Doc. 121-19 at 2).
evidence

before

the

Nowhere in these documents or in any other
Court

is

there

any

indication

of

any

consideration by the USPTO of the alleged inherent distinctiveness
of ZP’s marks.

Contrary to ZP’s arguments, there is no evidence

that the USPTO instructed ZP that it would be unnecessary to
produce evidence of secondary meaning of its marks; there is no
evidence that ZP’s marks were determined, expressly or impliedly,

presumed to have been inherently distinctive at the time of all of
Defendants’ wrongful conduct, and this presumption of inherent
distinctiveness is alone sufficient to preclude summary judgment
for the Defendants.” (Doc. 133 at 4).
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by the USPTO to be inherently distinctive; nor is there any
evidence of any action or inaction by the USPTO with respect to
any alleged finding of inherent distinctiveness of the marks.
Thus, ZP’s arguments for reconsideration fail for this reason
alone.
Moreover, ZP’s attempt to rely on the Eleventh Circuit’s
decision in Jysk is misplaced.

In Jysk, the court found that the

marks (“by design” and “by design furniture.com”) had acquired
secondary meaning after being used by the plaintiff for twentytwo years.

In addition, the court noted evidence suggesting that

the mark may also have been inherently distinctive.

That evidence

consisted of a letter from the USPTO to the owner of the mark
expressly

stating

distinctive
acquired

and

that

the

eligible

distinctiveness.

mark

for

appeared

registration

Specifically,

to

be

inherently

without
the

court

proof

of

stated,

“[a]dditionally, in a November 2012 letter, the United States
Patent and Trademark Office responded to Jysk’s application for
acquired

distinctiveness

status

for

the

bydesignfurniture.com

mark, stating that the application was ‘unnecessary because the
mark appears to be inherently distinctive and is eligible for
registration on the Principal Register without proof of acquired
distinctiveness.’”

Jysk, 810 F.3d at 779 (emphasis added).

In the instant case, there is no Jysk-like letter in the
record.

There is simply no evidence of an express or implied

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finding by the USPTO that ZP’s marks were inherently distinctive,
nor is there any evidence from which such a finding could be
inferred. The circumstances present in Jysk are simply not present
here.2
However,

in

a

case

similar

to

the

instant

one,

namely

Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C.,
931 F.2d 1519, 1524 (11th Cir. 1991), the plaintiff argued that
the

marks

“Investacorp”

and

“Investcorp”

were

“inherently

distinctive,” as evidenced by the USPTO’s action when it “passed
the [“Investcorp”] mark on to publication.”

The plaintiff argued

that the USPTO would not have passed the mark on to publication
unless

it

had

found

that

the

mark

was

more

than

“merely

descriptive” and, thus, that the USPTO must have found the marks
to be “inherently distinctive.” Id. at 1524. The Eleventh Circuit
rejected

the

plaintiff’s

argument

and

affirmed

the

district

court’s grant of summary judgment for the defendant, stating:
The soft spot in appellant’s argument is
that there is no recorded finding by the PTO
that [the] service mark was not descriptive.
Consequently, all that this Court can do is
guess at what the PTO’s determinations were
ZP also incorrectly states that, “[i]n Jysk, this Circuit
unequivocally held that where the PTO does not require evidence of
secondary meaning in a mark that is the subject of a pending
trademark application, then the mark is presumptively distinctive.
. . .”
(Doc. 133 at 5).
The Jysk court did not discuss any
presumption arising from the USPTO’s finding of inherent
distinctiveness but merely noted the USPTO’s finding, in addition
to the court’s finding of acquired secondary meaning. Jysk, 810
F.3d at 779.
2

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while evaluating the merit of each mark. We do
not know whether the PTO even considered the
descriptiveness of either mark. Although we
will
bestow
proper
respect
to
the
determinations of the PTO, we will not defer
to an ethereal determination that is not
affirmatively stated by the administrative
agency.
Therefore,
.
.
.
the
term
“Investacorp” is merely descriptive and hence
is not inherently distinctive.
Investacorp, 931 F.2d at 1524 (emphasis added).
In the instant case, as in Investacorp, there is no genuine
issue of material fact on the issue of whether ZP’s marks were
“inherently distinctive.”
evidence

whatsoever

The record is simply devoid of any

that

the

marks

were

anything

other

than

descriptive marks and not entitled to protection unless they
acquired secondary meaning prior to the dates that Defendants began
registering,

trafficking,

or

using

the

domain

names.

See

Investacorp, 931 F.2d at 1524. It necessarily follows that because
there

is

no

evidence

before

the

Court

suggesting,

let

alone

establishing, that ZP’s marks were entitled to any protection prior
to the date on which the marks were registered, there is no issue
of material fact precluding summary judgment for Defendants on
ZP’s

claims

of

alleged

trademark

violations

registration of the marks on July 25, 2017.

occurring

before

Accordingly, ZP has

presented no bases for altering the Court’s order denying ZP’s
motion for summary judgment.

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The Court further finds that ZP has failed to demonstrate
that an interlocutory appeal is appropriate in this case.
U.S.C.

§

1292(b)

allows

for

certification

of

an

issue

28
for

interlocutory review when the district court is “of the opinion
that such order involves a controlling question of law as to which
there is substantial ground for difference of opinion and that an
immediate appeal from the order may materially advance the ultimate
termination of the litigation.” 28 U.S. C. § 1292(b). The Eleventh
Circuit has explained that Ҥ 1292(b) sets a high threshold for
certification to prevent piecemeal appeals”, and that “[m]ost
interlocutory orders do not meet this test.”

OFS Fitel, LLC v.

Epstein, Becker and Green, P.C., 549 F.2d 1344, 1359 (llth Cir.
2008).

The undersigned finds that ZP has failed to demonstrate

that its motion involved a controlling question of law as to which
there

is

substantial

interlocutory

appeal

difference
will

of

materially

termination of this litigation.

opinion,

or

advance

the

that

an

ultimate

Accordingly, ZP’s request for an

interlocutory appeal is DENIED.
Turning,

next,

to

Defendants’

motion

for

reconsideration

(Doc. 135), the Court finds that Defendants have merely reasserted
the same arguments previously rejected by the Court.
those arguments will not be re-addressed here.

Therefore,

See Lucky Cousins

Trucking, Inc. v. QC Energy Res. Texas, LLC, 2016 U.S. Dist. LEXIS
188829, *2, 2016 WL 9211669, *1 (M.D. Fla. Sept. 20, 2016) (“The

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Court will not reconsider where the motion, rather than raise new
issues, merely relitigates what has already been found lacking.”).
Accordingly, Defendants’ motion for reconsideration (Doc. 135) is
DENIED.
Based on the foregoing, the Court finds that ZP’s motion for
oral argument (Doc. 137), motion to strike (Doc. 140), and motion
to stay these proceedings (Doc. 141) are MOOT.
DONE this 16th day of November, 2018.
/s/ SONJA F. BIVINS
UNITED STATES MAGISTRATE JUDGE

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