Spire Inc. v. Cellular South, Inc.
ORDER denying Cellular South, Inc.'s 29 Motion for Preliminary Injunction; and Cellular South's Alabama common law unfair compensation claim is dismissed as a matter of law. Signed by Chief Judge Kristi K. DuBose on 9/11/17. (cmj)
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ALABAMA
CELLULAR SOUTH, INC.,
CIVIL ACTION 17-00266-KD-N
This matter is before the Court on Defendant Cellular South, Inc.’s Rule 65 motion for
preliminary injunction (Docs. 29, 30, 44), Plaintiff Spire, Inc.’s Opposition (Docs. 33, 43), the
August 30-31, 2017 evidentiary hearing,1 and the parties post-hearing briefs (Docs. 59, 60).
On June 14, 2017, Plaintiff Spire, Inc. (Spire -- a provider of natural gas fueling services)2
initiated this action against Cellular South, Inc. (C SPIRE – a wireless telecommunications business
that also provides television and internet services)3 to address matters of confusion and dilution
1 Including the exhibits admitted at the hearing and the testimony of the parties’ witnesses (Suzie Hayes (Senior
Vice-President of Consumer Markets for Cellular South) and Rhonda Jane Harper (research and legal consultant – expert
in consumer research and branding) for Defendant; Jessica Willingham (Vice-President Corporate Communications and
Marketing for Spire) and Jacob Jacoby, Ph.D. (expert in trademark survey research and branding (consumer perception))
2 Per the Complaint, “Spire is a public utility holding company whose primary business is to own and operate
utility subsidiaries that provide the safe and reliable delivery of natural gas service to customers across Alabama,
Mississippi, and Missouri.” (Doc. 1 at 4 at ¶8). Spire is the 5th largest publicly traded natural gas company in the United
States, serves more than 1.7 million residential, commercial and industrial customers in Alabama, Mississippi and
Missouri, and through subsidiaries and predecessors in interests traces its history back more than 180 years to Mobile
Gas, Alabama Gas Corporation and the Laclede Gas Light Company. (Id. at 6).
3 Per the Complaint, “Cellular South’s primary business is wireless telecommunications...also provides other
telecommunication goods and services, including television and internet services. (Doc. 1 at 4 at ¶11). Cellular South
was incorporated in 1984 and offers a comprehensive suite of wireless and fiber-based communications products and
services (including high speed internet) as well as cloud services. (Doc. 30 at 4).
between the companies’ trademarks which emerged as part of Spire’s rebranding of its businesses.4
Specifically, Spire filed a declaratory judgment action asking the Court to declare that it is not
infringing on Cellular South’s trademarks (C SPIRE, etc), that there is no confusion between each
company’s trademarks, and that Cellular South lacked any basis for issuing a March 2016 cease and
desist letter to Spire. (Doc. 1). As relief, Spire seeks a judgment from the Court that its use of the
marks does not infringe or violate any trademark rights of Cellular South; that it is entitled to register
the marks with the USPTO; a judgment cancelling or preventing registration of certain new C SPIRE
marks pursuant to 15 U.S.C. § 1064(3) and/or 15 U.S.C. § 1119; Section 1120 damages; costs; and a
finding that this is a Section 1117 exceptional case, awarding attorneys’ fees to Spire.
On July 6, 2017, Cellular South filed an answer, and asserted five (5) counterclaims for
federal trademark infringement (Count I), federal unfair competition (Count II), common law
trademark infringement and unfair competition (Count III), state trademark dilution (Count IV) and a
declaratory judgment (Count V), relying on the Federal Trademark Act of 1946, 15 U.S.C. § 1051 et
seq. (the Lanham Act) and Mississippi and Alabama law. (Doc. 8). On July 27, 2017 Spire filed an
amended complaint, asserting two (2) cause of action: 1) a declaration as to non-infringement, nondilution and registrability (that there is no likelihood of confusion and/or dilution); and 2)
cancellation and prevention of registration of Cellular South’s trademarks and civil liability under 15
U.S.C. § 1064(3), 1119 and 1120. (Doc. 19). On August 10, 2017, Cellular South filed an answer to
Spire’s amended complaint. (Doc. 26).
On August 14, 2017, Cellular South filed a Rule 65(b) motion for entry of a temporary
restraining order and injunction against Spire.5 (Doc. 30). Cellular South seeks a finding by this
4 The parties have been disputing these issues before the United States Patent & Trademark Office (USPTO)
since April 2016.
5 At that time the parties had been litigating this case since mid-June, had received notice of the motion and were
represented by counsel, and had already submitted briefing on the motion with further briefing ordered. The Court thus
determined the motion should be treated as one for a preliminary injunction. Burk v. Augusta-Richmond Cty., 365 F.3d
Court that there is a likelihood of confusion among consumers as to the marks, that Spire’s use of the
marks has infringed or will infringe on Cellular South’s marks, that Spire’s use of the marks
constitutes or will constitute unfair competition, unfair trade practices or deception, that Spire’s use
of marks has diluted or will dilute Cellular South’s marks under Alabama and Mississippi law, and
that pursuant to 15 U.S.C. § 1052(a) and (d) Spire’s marks should not be registered. Cellular South
seeks a preliminary and permanent injunction prohibiting Spire from using the marks (or any
confusingly similar version) as a source identifier for the goods and services identified in Spire’s
applications or any other related goods and services – focused currently on Spire’s recent rebranding
and marketing efforts.
Cellular South begins doing business “under one or more of the C SPIRE Marks” to
rebrand itself as C SPIRE (Doc. 8 at 21; TR II 139 (Hayes and Hrg. Ex. D-4). This brand launch
takes time and costs approximately $12.8 million (Hr. Ex. D1-SEALED). Cellular South has spent
approximately $275 million on marketing since 2011 (including $140 million in MS and $18 million
in AL). (Hrg. Ex. D-2, D-3 SEALED)
The Laclede Group, Inc. started looking at rebranding, name development etc. TR II
91-92 (Willingham). Laclede chose the name Spire in 2012. Id. at 94 (Willingham).
Laclede ordered a trademark search. TR II 94-95 (Willingham and Hrg. Ex. P-Z).
Laclede did not find any company confusion and not identify any competitors, etc. Id. Looked for
competitors in business line (goods/services class). Id. at 97. Comprehensive search was 455 pages
and C SPIRE not show up at all. Id. at 99. Laclede did not know the company existed. Id. at 93-94
Laclede began using Spire mark for its natural gas stations. TR II 186.
LXE, LLC (subsidiary of Honeywell Intl.) entered into a consent agreement with
Cellular South in which it was agreed that the word mark Spire was not confusing as used in the
relative market. Honeywell sold antennas for infrastructure, not to consumers. TR. 79 (Hayes)
Honeywell (via LXE and now subsidiary Hand Held Products, Inc.) owns/uses #2534546 Spire for
antennas for wireless communications.
Laclede continues using word mark Spire for natural gas vehicle fueling services. TR
1247, 1262 (11th Cir. 2004).
6 This timeline is derived from the Complaints and hearing testimony and exhibits. Records cites are as follows:
TR (August 30th testimony) and TR II (August 31st testimony).
II 83, 139, 222-223 (Willingham). The mark is displayed in a combination of gray, blue and white.
TR II 223 (Willingham).
Laclede’s began rebranding all companies under its umbrella to Spire. TR II 89-90
Laclede registers Spire mark for fueling stations. TR II 83, 141, 142 (Willingham and
Hrg. Ex. D-11F). Used on 2 stations- SC and MO - not in MS or AL. Id. Also used on a nationwide
website. Id. (Principal Register (#4548479) by Laclede).
Laclede acquires Alabama Gas Corporation (Alagascorp).
Cellular South applies for trademark for C SPIRE Home. (Hrg. Ex. D-5).
Laclede conducts another trademark search; 596 pages resulted. TR II 101-103, 220
(Willingham and Hrg. Ex P-AA). C SPIRE was identified in this search. Id. C SPIRE not in same
business so believed to be irrelevant to Laclede. Id. The results show over 150 active registrations
for spire, including 18 in MS and 15 in AL. Id.
Laclede conducts another trademark search; 275 pages resulted. TR II 106-107
(Willingham and Hrg. Ex P-BB).
Laclede applied to USPTO to register SPIRE INC #86751779. (Hrg. Ex. D-11A).
Laclede began “master rebranding” campaign. TR II 142, 144, 186 (Willingham and
Hrg. Ex. D-11A and D-11B). Spire began rebranding most of its operations under spire brand name.
(Doc. 1 at 7). Spire uses the marks for promoting, offering and rendering natural gas
marketing/fueling in AL, MS, MO and SC.
Laclede applications ##86864712, 86864729, 86864721. (Hrg. Ex. D-11B-D)
Laclede issues press release about the name change to Spire, Inc. TR II 144, 157, 158
(Willingham). Rebranding covered by Al.com and Birmingham Business Journal. Id. at 122.
Cellular South sends a cease and desist letter to Laclede. TR II 117-118 (Willingham);
Hrg. Ex. P-R. Cellular South asserts that Spire’s trademarks infringed/diluted CSPIRES trademarks
(Doc. 1-2). Cellular South complains about Spire’s use of mark and damage and or potential damage.
Laclede officially and formally changes name to Spire Inc. TR II 129, 131
(Willingham). Prior to April 27, 2016 Cellular South was not aware that the Spire brand launch had
already occurred. TR 104 (Hayes).
Spire responded to Cellular South, and told them it had been using spire mark since
December 2013. TR II 118-119 (Willingham); Hrg. Ex. P-I.
Cellular South files Opposition to Spire’s mark registration in the USPTO. Opposition
(#91227574) pending. Hrg. Ex. P-J.
Laclede shareholders approve new name/logo. TR II 122 (Willingham).
Spire launched new Spire website, changed NYSE ticker symbol to Spire, and all
employee email were changed to Spire. TR II 122 (Willingham).
Cellular South files Opposition to Spire’s trademark application ##86864712,
86864729, 86864721. Opposition #91229269. Oppositions # 91227574 and 91229269 consolidated
before USPTO as #91227574. In Opposition. Cellular South claims likelihood of confusion, diluting
by blurring, false suggestion of a connection/disparagement. Hrg. Ex. P-L and P-M.
Spire submitted answer to Cellular South in USPTO, reaffirmed rebranding. TR II
Spire acquires Mobile Gas.
Spire annual report issues. TR II 129-130 (Willingham). Proclaimed self as Spire in
MS, worldwide, webpage, etc. Id. Hrg. Ex. P-O.
Spire submits interrogatory response to Cellular South before the USPTO, again
stating its rebranding process continues and noting completion expected by end of 2017. TR II 128129 (Willingham and Hrg. Ex. P-N).
Cellular South withdraws dilution by blurring claims before USPTO.
Spire submits materials to Mississippi public service utilities commission with specific
timelines. TR II 158-159, 161-162 (Willingham). Shows launch date 8/30/17. Id. (Hrg. Ex. D-20).
Aug. 2017: Spire’s rebranding continues. TR II 162 (Willingham). Spire has communicated to the
Willmut, Mobile Gas and Alagascorp customers about becoming Spire. Id. All employees while not
yet wearing new uniforms, are wearing Spire hats, Spire ID badges, and signage transition has
already begun (vehicle fleet started last week as part of an 8 week process). Id.
Burden of Proof
Cellular South asserts five (5) counterclaims for: 1) federal trademark infringement, 15 U.S.C.
§ 1114 (Count I); 2) federal unfair competition, Section 43 of the Lanham Act, 15 U.S.C. § 1125(a)
(Count II); 3) common law trademark infringement and unfair competition (Count III); 4) Mississippi
and Alabama state trademark dilution (Count IV); and 5) a declaratory judgment (Count V). Cellular
South requests injunctive relief against Spire and thus bears the burden of proving entitlement to such
Lanham Act & Preliminary Injunction
The Lanham Act prohibits the unauthorized use of a registered trademark in connection with
“the sale, offering for sale, distribution, or advertising of any goods or services.” 15 U.S.C. §
1114(1)(a). The Act confers the “power to grant injunctions, according to the principles of equity
and upon such terms as the court may deem reasonable, to prevent the violation of any right of the
registrant of a mark registered” in the USPTO. 15 U.S.C. § 1116(a). Nevertheless, “[a] preliminary
injunction is an extraordinary and drastic remedy not to be granted unless the movant clearly
establishes the burden of persuasion as to the four requisites.” Am. Civil Liberties Union of Fla., Inc.
v. Miami–Dade Cty. Sch. Bd., 557 F.3d 1177, 1198 (11th Cir. 2009). The four (4) prerequisites are: 1)
a substantial likelihood of success on the merits; 2) irreparable injury/harm will be suffered unless the
injunction issues; 3) threatened injury to the movant outweighs whatever damage/harm the proposed
injunction may cause the non-movant; and 4) the injunction would not be adverse to the public
interest. FF Cosmetics FL, Inc. v. City of Miami Beach, 2017 WL 3431453, *4 (11th Cir. Aug. 10.
2017). “Failure to show any of the four factors is fatal, and the most common failure is not showing
a substantial likelihood of success on the merits. See, e.g., Schiavo, 403 F.3d at 1226 n. 2, 1237;
Church v. City of Huntsville, 30 F.3d 1332, 1342 (11th Cir.1994); Cunningham v. Adams, 808 F.2d
815, 821 (11th Cir.1987).” Miami-Dade, 557 F.3d at 1198. As a drastic remedy, “its grant is the
exception rather than the rule[.]” Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir. 2000). “If the
movant is unable to establish a likelihood of success on the merits, a court need not consider the
remaining conditions prerequisite to injunctive relief.” Johnson & Johnson Vision Care, Inc. v. 1–800
Contacts, Inc., 299 F.3d 1242, 1247 (11th Cir. 2002).
According to Cellular South: 1) it adopted the mark C SPIRE long before (since September
2011) Spire began using the mark Spire; and 2) the Spire mark is likely to cause confusion or mistake
or deceive the public as to affiliation, connection, origin, sponsorship or approval (trademark
infringement, unfair competition and dilution). Cellular South relies on the testimony and reports of
Rhonda Harper (expert in consumer research and branding) and Susie Hayes (V.P. of Consumer
Markets for Cellular South) in support.
In contrast, according to Spire, it has been using the mark since December 2013 without any
confusion. Spire also asserts that Cellular South cannot establish a substantial likelihood of success
on the merits because the marks are not likely to be confused because: natural gas and
telecommunications services are not closely related; the parties operate in different and unrelated
industries with different products, channels of trade and consumers; and the colors, appearance and
pronunciation of the marks differ.
Additionally, Spire highlights Cellular South’s Consent
Agreement with another entity in which: 1) Cellular South agreed that the marks used between them,
which both share the word term “spire” and are both in the telecommunications field “can coexist in
the marketplace without confusion, deception, or mistake to the relevant consumers[--]” representing
such to the USPTO; and 2) Cellular South contractually limited its use of its C Spire marks to
telecommunications goods/services which contradicts its current claims that Spire’s natural gas
services is within its “natural zone of expansion.” Spire also relies upon the report and testimony of
Dr. Jacob Jacoby (expert in trademark research and branding) and testimony of Jessica Willingham
(V.P. of Spire communications and marketing) in support.
Substantial likelihood of success on the merits
Federal/Common Law Trademark Infringement/Unfair Competition: Counts I, II
As set forth in Choice Hotels Int’l v. Key Hotels of Atmore Ii, LLC, 2016 WL 6652453, *3
(S.D. Ala. Nov. 9, 2016): “Section 32(1) of the Lanham Act attaches liability for trademark
infringement when a person ‘use[s] in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark’ which ‘is likely to cause confusion, or to cause mistake, or to
deceive.” 15 U.S.C. § 1114(1)(a).’” “In order to prevail on a trademark infringement claim based on
a federally registered mark, ‘the registrant must show that (1) its mark was used in commerce by the
defendant without the registrant's consent and (2) the unauthorized use was likely to cause confusion,
or to cause mistake or to deceive.’” Optimum Tech., Inc. v. Henkel Consumer Adhesives, Inc., 496
F.3d 1231, 1241 (11th Cir. 2007). Additionally, “[o]rdinarily, trademark infringement cases are
predicated on the complaint that the defendant employed a trademark so similar to that of the plaintiff
that the public will mistake the defendant's products for those of the plaintiff…The unauthorized use
of a trademark which has the effect of misleading the public to believe that the user is sponsored or
approved by the registrant can constitute infringement.….” Burger King Corp. v Mason, 710 F.2d
1480, 1491-1492 (11th Cir. 1983) (internal citations omitted).
Moreover, the Lanham Act makes actionable the false designation and misleading use of
marks, likely to confuse or deceive, to protect against unfair competition. 15 U.S.C. § 1125. See also
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003) (citing 15 U.S.C. § 1127).
Section 43(a)(1)(A) creates a claim for any person injured by another's use of a mark that “is likely to
cause confusion, or to cause mistake, or to deceive” as to the origin of a product or service. 15 U.S.C.
§ 1125(a)(1)(A). To prevail, a trademark owner must establish: 1) trademark rights in a mark or name
and 2) that the other party adopted a mark or name that was the same, or confusingly similar, such
that consumers were likely to confuse the two. Fla. Int’l, 830 F.3d at 1265. “While nearly identical to
the likelihood-of-confusion standard…for federal trademark infringement claims, § 43(a) of the
Lanham Act ‘is broader ... in that it covers false advertising or description whether or not it involves
However, a plaintiff must prove the same elements for unfair
competition under 15 U.S.C. § 1125(a) as for a trademark infringement claim. Suntree Techs., Inc. v.
Ecosense Int'l, Inc., 693 F.3d 1338, 1346 (11th Cir. 2012).
In the Eleventh Circuit these two (2) federal claims are often assessed together because “the
same facts that support a claim for trademark infringement are also sufficient to support a claim for
unfair competition…” Escot Bus Lines, LLC v. Florida Express Bus, LLC, 2017 WL 1005954, *3
(M.D. Fla. Mar. 15, 2017). See also Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472,
1475 n.3 (11th Cir. 1991) (noting same facts support trademark infringement and unfair competition);
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Additionally, the “factors relevant to
establishing likelihood of confusion relative to trademark infringement, are essentially the same
factors relevant to establishing a likelihood of confusion with respect to...unfair competition....”
Safeway Stores, Inc. v. Safeway Discount Drugs, 675 F.2d 1160, 1163-1164 (11th Cir. 1982); Tally–
Ho, Inc. v. Coast Comm. College Dist., 889 F.2d 1018, 1025-1026 (11th Cir. 1989) (noting the
elements are the same).
Further, this Court's analysis of Cellular South’s Alabama and Mississippi common law
trademark infringement counterclaims is the same as the analysis for the claims under federal law.
Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1521 (11th Cir.
1991); Alfa Corp. v. Alfa Mortg., Inc. 560 F.Supp.2d 1166, 1175 (M.D. Ala. 2008); Git-R-Done
Prod., Inc. v. Giterdone C Store, LLC, 226 F.Supp.3d 684, 691 (S.D. Miss 2016). The same holds
true for Cellular South’s Mississippi common law unfair competition counterclaim.7 Git-R-Done,
226 F.Supp.3d at 691; Powertrain Inc. v. American Honda Motor Co., Inc., 2007 WL 2254346, *2
(N.D. Miss. Aug. 2, 2007).
For the federal and common law trademark infringement counterclaims and the federal and
Mississippi unfair competition counterclaims, Cellular South must establish: 1) it has a valid mark;
and 2) Spire’s use of the contested mark is likely to cause confusion. Dieter v. B&H Indus. of Sw.
Fla., Inc., 880 F.2d 322 (11th Cir. 1989). The parties do not dispute Cellular South’s “C SPIRE” is a
valid federally registered mark. Whether there is a likelihood of consumer confusion depends on
7 However, this Court’s analysis of Cellular South’s Alabama common law unfair competition counterclaim
differs. Notably, “Alabama does not recognize a common-law tort of unfair competition” and the undersigned will not
sua sponte craft a viable counterclaim for Cellular South from the facts alleged. Alfa Corp. 560 F.Supp.2d at 1175; Way
Int’l v. Church of the Way Int’l, 2017 WL 432466, *9 (N.D. Ala. Feb. 1, 2017). As such, Cellular South’s Alabama
common law unfair competition claim is DISMISSED.
seven (7) factors: 1) the distinctiveness 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 consuming public. Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1360 (11th Cir. 2007);
Conagra v. Singleton, Inc., 743 F.2d 1508, 1514 (11th Cir. 1984). “Of the seven factors, the type of
mark and the evidence of actual confusion are the most important.” Caliber Aut. Liq., Inc. v. Premier
Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 935 (11th Cir. 2010); Dieter, 880 F.2d at 326.
Distinctiveness of Mark
Trademark protection is only available to “distinctive” marks (marks capable of
distinguishing the owner’s goods from others), Two Pesos, 505 U.S. at 768-769, as “marks that serve
the purpose of identifying the source of the goods or services[.]” Forman, 509 F.3d at 1357. A mark
is distinctive and thus capable of trademark protection based on whether it has inherent or acquired
distinctiveness through secondary meaning. Id. “A plaintiff has a protectable interest in a mark if the
mark is inherently distinctive…If the mark is not inherently distinctive, a plaintiff can obtain rights in
the mark only if the mark acquires secondary meaning…” Donut Joe’s, Inc. v. Interveston Food
Servs., LLC, 101 F.Supp.3d 1172, 1181 (N.D. Ala. 2015).
There are four (4) levels of
“distinctiveness” listed from weakest to strongest: 1) generic (marks that suggest the basic nature of
the product or service); 2) descriptive (marks identify the characteristic or quality of a product or
service); 3) suggestive (marks that suggest characteristics of the product or service and require an
effort or “leap” of the imagination by the consumer to be understood as descriptive “to get from the
mark to the product”); and 4) arbitrary or fanciful (marks that bear no relationship to the product or
service, the strongest category). Tana v. Dantanna’s, 611 F.3d 767, 774 (11th Cir. 2010); Caliber, 605
F.3d at 939; Gift of Learning Found, Inc. v. TCG, Inc., 329 F.3d 792, 797-798 (11th Cir. 2003). See
generally Forman, 509 F.3d at 1357-1358; John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966,
975 (11th Cir. 1983); Belen Jesuit Prep. School, Inc. v. Sportswear, Inc., 2016 WL 4718162, *8 (S.D.
Fla. May 3, 2016). Courts must determine whether the mark is strong or weak in order to determine
the level of protection to be extended to the mark. Harland, 711 F.2d at 973. Strong marks are given
strong protection over a wide range of related products and services. Id. “[T]he rationale is that the
more well-known the mark, the deeper is the impression it creates upon the public's consciousness
and the greater the scope of protection to which it is entitled.” Turner Greenberg Assoc., Inc. v. C&C
Imports, Inc., 320 F.Supp.2d 1317, 1332 (S.D. Fla. 2004) (citing Freedom Savings & Loan Assn. v.
Way, 757 F.2d 1176, 1182 (11th Cir. 1985)). The Eleventh Circuit also considers third party use of
the same or similar mark, when assessing a mark’s strength. Harland, 711 F.2d at 974-975 (citing
cases stating that “[a] strong trademark is one that is rarely used by parties other than the owner of the
trademark, while a weak trademark is one that is often used by other parties”).
Cellular South contends that the “C SPIRE” mark is strong because it is “arbitrary” (and
famous or well-known), and while there are third-party uses of “spire,” none involve publicly traded
companies coming directly into Cellular South’s “footprint,” using identical logos, selling home and
telecommunication services, and marketing goods and services to the same consumers. (Doc. 30).
At the evidentiary hearing, Hayes testified to the well known brand recognition of C SPIRE, citing
2016 and 2017 market surveys for Mississippi indicating C SPIRE has a “high brand preference” and
the general health of the brand is “very strong,” with 88% brand awareness in that State. (Hrg. Ex. D9, D-10; TR 20-23, 25, 68, 69-70 (Hayes)). Per Hayes, the surveys place C SPIRE “on par” with
AT&T and Verizon in terms of recognition such that the C SPIRE mark is “famous.” Id. Hayes
testified that C SPIRE became known through marketing efforts, but by the November 11, 2011
launch of the IPhone, the mark was well known. (TR 69-70 (Hayes)). Cellular South adds that it has
built a strong reputation for high quality goods and services under the C SPIRE mark with extensive
advertising and sales such that its mark is well known and distinctive with enormous value and
According to Spire, Cellular South’s mark is not “famous,” is only “suggestive,” as it
suggests characteristics of the goods and services provided, and extensive third party use of “spire”
has caused dilution (e.g., more than 150 active federal trademark registrations and applications in the
USPTO’s database with trademarks using the term “spire”, 14 entities in Alabama which incorporate
“spire” into their name, and 8 entities in Mississippi that incorporate “spire” into their name)) such
that C SPIRE is not entitled to protection as a strong trademark. See, e.g., Fla. In’tl, 830 F.3d at
1257-1258; Donut Joe’s, 101 F.Supp.3d at 1185; Alltel Corp. v. Actel Integ. Comm. Inc., 42
F.Supp.2d 1265, 1271 (S.D. Ala. 1999). Spire also references Cellular South’s Consent Agreement
with a third party, as underscoring the “weak” nature of the mark.
The evidence supports a finding that in the State of Mississippi, Cellular South’s C SPIRE
mark is at least “well known.” Cellular South has presented no evidence to the Court of its marks’
distinctiveness in any other state, including Alabama. In contrast, Spire has submitted significant
evidence of the use of the term “spire” being heavily diluted nationwide. Upon consideration, the
Court finds that Cellular South has not established a substantial likelihood of showing that its mark is
arbitrary and thus entitled to the highest protection.
Similarity between Marks
Similarity is determined by considering the “overall impression created by the marks,
including a comparison of the appearance, sound, and meaning of the marks, as well as the manner in
which they are displayed.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int'l Imports, Inc., 756 F.2d
1525, 1531 (11th Cir. 1985).
Cellular South contends the marks are “nearly identical in appearance, sound, connotation and
commercial impression” which is “most obvious when” viewed side-by-side, and in light of the
Harper survey (37% rate of confusion). (Doc. 30). Cellular South claims the marks are similar in
font, kerning or spacing and type face and the only difference on some of the marks is that there is a
“C” in front of the Cellular South mark versus a double “C” or a hidden “S” or a handshake in some
of Spire’s marks. (TR 15, 47-50, 53-55, 74 (Hayes); TR II 225-226; Hrg. Ex. D-12 and D-24 (style
guides),; Hrg. Ex. D-13). At the evidentiary hearing Hayes testified that Cellular South’s logo will be
confused with Spire’s logo because “the average consumer driving down the road at 55 miles per
hour seeing a billboard will likely think Cellular South altered its logo and changed its color to
orange.” TR 55 (Hayes). Cellular South also relies on Harper’s summation that after viewing the two
company’s websites, the companies use the word spire virtually identically in font, kerning and
impression. (Hrg. Ex. D-40).
In contrast, Spire contends that a comparison of its marks based on “the appearance, sound
and meaning of the marks, as well as the manner in which the marks are used” Fla. Int’l, 830 F.3d
at 1260, emphasizes the dissimilarities and shows they are distinguishable, particularly when
examined as encountered in the real world (sequentially not necessarily “side by side”). Custom
Mfg. and Eng. Inc., v. Midway Servs., Inc., 508 F.3d 641, 652 (11th Cir. 2007) (“[we reject such a
theory of infringement in a vacuum, as liability under the Lanham Act is properly tied to the realworld context in which the alleged trademark use occurs. Cf. Homeowners Group, Inc., 931 F.2d at
1106 (noting that the likelihood-of-confusion inquiry must consider “the operative facts of the real
world” and “the performance of the marks in the commercial context,” and cautioning that the
“appearance of the litigated marks side by side in the courtroom does not accurately portray actual
market conditions”) (internal quotation marks and citation omitted). Like the proverbial tree falling in
a forest, the unauthorized use of a trademark that is never perceived by anyone cannot be said to
create a likelihood of consumer confusion.)”).
For appearance, Spire’s mark is orange, with block lettering in a specific font, and has a
symbol after the lettering (two staggered semi-circles, representing a handshake). Cellular South’s
mark is blue, with rounded lettering in a different font, and has a symbol before the lettering (a “c”
with beams of varying lengths surrounding it). For sound, they are pronounced differently: one
versus two syllables, and one using “c” while the other does not.
The Court notes as well, that
Cellular South has made prior representations to the USPTO (Honeywell agreement) that its use of
the letter “c” in its logo sufficiently distinguishes it from another third-party mark that also uses the
word “spire” in their mark.8
Upon consideration, the only identical aspect of each company’s logo is the logo’s
incorporation of the same word, “spire.” Otherwise, the colors are different, fonts are different
(although only slightly), spacing is somewhat different, and the art (C with rays versus handshake) is
different (style, placement and color). While, at a quick glance, the spacing of the letters and same
use of the word “spire” may make them appear similar, the Court concludes that the overall
impression created by the appearance, sound and meaning of the marks are distinguishable. This
factor weighs slightly in Cellular South’s favor.
Similarity between Products and Services
For this factor courts assess whether the products and services “are the kind that the public
attributes to a single source, not whether….the purchasing public can readily distinguish between”
them. Caliber, 605 F.3d at 939-940; Fla. Int’l, 830 F.3d at 1261. Namely, whether the products and
services sold under the competing marks are “so related in the minds of consumers that they get the
sense that a single producer is likely to put out both.” Fla. Int’l, 830 F.3d at 1261.
Cellular South contends that the goods and services identified in Spire’s mark applications
8 The court recognizes that the context in which Cellular South made the representation is distinguishable from
the facts of this case. In the agreement with Honeywell it was clear that Cellular South’s opinion was that “spire” and “C
Spire” would not be confused in the relevant market. At trial Cellular South presented testimony that the relevant
market for Honeywell was businesses involved in infrastructure, not common consumers.
(the “classes”) are “overlapping or highly related to the goods and services” it provides and “fall
within the natural zone of expansion” (apparently in the future) of Cellular South’s goods and
services. (Doc. 30 at 18). As illustration, Cellular South asserts that it provides local and long
distance transmission of telecommunications, and “similarly,” Spire offers local and long distance
transmission of gas. (Id.) Per Cellular South: “someone may move into a new home or office and
need to set up phone, internet, television and gas. In that case, he or she could call C Spire for the first
three and Spire for the last. The potential for confusion is obvious.” (Id. at 19).
At the evidentiary hearing, Hayes summarized Cellular South’s position: these are both goods
or services “you utilize in your home.” TR 99 (Hayes). Hayes explained that Cellular South’s
position is rooted on its future “road map” and “plans” to “own the household” by branching out into
lighting controls, thermostats, CO2 detectors, etc. for the household, and based on that potential new
direction of its business, claiming similarity of products. TR. 11, 13, 27, 30-32, 43-45, 76, 99
(Hayes). Hayes testified that Cellular South is a utility like Spire, and that their method of delivery is
the same as Cellular South has 7,000 miles of fiber cable underground and Spire supplies natural gas
through underground pipelines. TR 13, 31-32, 43, 45 (Hayes). Cellular South thus blankets the
similarity of products and services under a “utilities” umbrella – both are utilities and regulated by
the Public Service Commission. TR II 226.
Put simply, the parties are not competitors (with the possible exception that they both might
sell CO2 monitors in the future).
Spire’s natural gas energy services are distinct and unrelated to
Cellular South’s telecommunication goods and services. Hayes testified that Cellular South does not
distribute or sell natural gas or oil and has no plans to do so in the future. TR 76, 81 (Hayes).
Similarly, Harper testified that Cellular South and Spire do not compete against each other. TR 181
(Harper). Additionally, as Cellular South asserted to the USPTO, its buyers sign up for phone or
computer services not “by mistake” nor “without full knowledge as to the source of those services.”
This fact alone minimizes the likelihood of confusion with the Spire marks.
There is also not evidence of actual confusion. Willingham testified that she is not aware of
any actual confusion with the Spire mark from its first use in December 2013 through the present date
with any business, including Cellular South. TR II 84, 120 (Willingham). Also, Dr. Jacoby’s
testimony and findings indicate that it is highly unlikely that any consumers seeking
telecommunications services would call a natural gas company for such services, or think that one is
linked with the other – noting only 2.7% of consumers may think the businesses could be associated.
TR II 9, 12 (Jacoby).
Further, case law provides that when the products and services are not related, confusion is
“The greater the similarity between the products and services, the greater the likelihood of
confusion. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 976 (11th Cir.1983);
see also Therma–Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 632 (6th Cir.2002) (if the
goods or services are totally unrelated, confusion is unlikely; if the goods or services are
somewhat related but not competitive, the likelihood of confusion turns on other factors). The
use of similar marks does not constitute infringement if the products at issue are unrelated.
Walter v. Mattel, Inc., 210 F.3d 1108, 1111 (9th Cir.2000) (no likelihood of confusion
between commercial illustrator using the name “Pearl Beach” and toy company's “Pearl
Beach Barbie” product); Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 557 (10th
Cir.1998) (no likelihood of confusion where marks were same word but visually distinct,
parties were not competitors, products were geared toward distinct populations, defendant's
services were very expensive, the purchase of which required an especially high degree of
sophistication and care, and plaintiff presented little evidence of actual confusion).
HBP, Inc. v. American Marine Holdings, Inc., 290 F.Supp.2d 1320, 1332, 1334-1335 (M.D. Fla.
2003) (citing and discussing cases which found there was no likelihood of confusion because the
trademarks were for products were sold in different industries, including the case of General Motors
Corp. v. Cadillac Marine & Boat Co., 226 F. Supp. 716, 722, 727-728, 833 (W.D. Mich. 1964)
(discussing Cadillac cars versus Cadillac boats and rejecting plaintiff's theory that “public confusion
automatically follows the use of the trademark ‘Cadillac’ upon any other product, no matter how
unrelated it may be to Cadillac automobiles” and holding “[w]hile Cadillac cars and defendant's
Cadillac boats are means for transportation….they do not possess the same descriptive
properties....This differential makes them void of inherent confusing characteristics.”….)).
Case law also suggests that direct or actual competition with the same or similar
goods/services is required for an infringement claim to survive. For example, in as the Eleventh
Circuit explained in Tally–Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018 (11th Cir. 1989), an
infringement action is based on the likelihood of consumer confusion between suppliers of competing
goods. Id. at 1024. "It is critical to note the distinction between a trademark infringement action and a
trademark dilution action. At common law, a trademark was intended to differentiate between
different sources of competing goods. Thus, an infringement action is based on the likelihood of
consumer confusion between suppliers of competing goods in the same geographic locale...” See
also e.g., Peoplelink, LLC v. Birmingham Personnel Servs., Inc., 2015 WL 3966258, *8 (N.D. Ala.
Jun. 30, 2015) (“n an infringement action, the plaintiff must initially demonstrate…actual…product
competition with the alleged infringer” (citing Tally-Ho)); Little League Baseball, Inc. v. Kaplan,
2009 WL 10668763, *7 (S.D. Fla. Mar. 3, 2009) (differentiating trademark infringement and dilution
claims noting that dilution occurs “where companies produce different goods or services and where
there is no likelihood of consumer confusion between the two marks…In this way, dilution claims are
different from infringement claims”); Whitney Info. Network, Inc. v. Xcentric Ventures, LLC, 2005
WL 1677256, *4 (M.D. Fla. Jul. 14, 2005), vacated and remanded on other grounds by Whitney, 199
Fed. Appx. 738 (11th Cir. 2006) ("[t]o state a valid common law claim for trademark
infringement....the plaintiff must also show actual or intended competition....Defendants do not sell
similar products as those of the Plaintiffs.....Consequently, the Plaintiffs have failed to state a claim
upon which relief can be granted on common law trademark infringement"); EBSCO Indus., Inc. v.
LMN Enterp., Inc., 89 F.Supp.2d 1248, 1263 at note 22 (N.D. Ala. 2000) (“As the Eleventh Circuit
explained in Tally–Ho…an infringement action is based on the likelihood of consumer confusion
between suppliers of competing good”).
And notably, with regard to Cellular South’s “zone of natural expansion” argument, “the
senior user of a mark cannot monopolize markets that neither his trade nor his reputation has
reached.” Tally-Ho, 889 F.2d at 1027-1028 (citing J. McCarthy…§ 26:1, at 284) (emphasis added).
The “zone of natural expansion” doctrine provides the senior user with only “some limited ‘breathing
space’ in which to expand beyond its current actual use.” J. McCarthy…§ 26:8, at 302.” Id. at 1028
Finally, Cellular South suggests customer service confusion and inconvenience in calling one
company when trying to reach the other. (Doc. 30 at 20). No evidence of customer service issues
was submitted to the Court, only speculation. Thus, this argument is unpersuasive. Delta Air Lines,
Inc. v. Wunder, 2015 WL 11347586, *13 (N.D. Ga. Dec. 28, 2015) (finding “no evidence to support
any actual customer confusion. Thus, this factors weighs in the ....[non-movant’s] favor”). Cf. Ross
Bicycles, Inc. v. Cycles USA, Inc., 765 F.2d 1502, 1508 (11th Cir. 1985) (inquiries from “an
undetermined number of potential customers” held to be “no clear evidence” of actual confusion);
In sum, the Court finds the products and services are similar in only one way; the products are
both utilities delivered underground (method of delivery or transmission). Otherwise the products are
distinguishable. This factor does not weigh in favor of Cellular South.
Similarity of sales methods is assessed with reference to the similarity of customers and sales
outlets between the entities, Tana, 611 F.3d at 778, and “where, how and to whom the parties’
products are sold[,]” Fla. Int’l, 830 F.3d at 1261. “The likelihood of confusion is reduced when the
goods of the parties are sold to different classes of buyers through different channels of distribution,
even when there is some similarity between the products. See 4 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 24:51 (4th Ed.2000).” Miller’s Ale House, Inc. v. Boynton
Carolina Ale House, LLC, 2009 WL 6812111, *13 (S.D. Fla. Oct. 13, 2009) (noting that the
customer base was similar because both businesses were casual dining and drinking restaurants).
“Dissimilarities between the manner of sale and the typical customers of the parties' services lessen
the possibility of confusion….the parties' outlets and customer bases need not be identical, but some
degree of overlap should be present…to support…confusion.” Fla. Int’l, 830 F.3d at 1261.
Cellular South contends that its channels of trade and distribution “run the gamut” (direct
selling, door to door, wholesale, retail, door to door, TV, radio, newspapers, online, banners, social
media, direct mail, company vehicles, employee uniforms, customer invoices, signage at retail
locations, signage at sponsorships (jumbotrons, ballparks, high school football), internet, social
media, direct mailing (TR 33, 35-36, 39, 58, 64, 66)). From this, Cellular South argues that because
Spire delivers its products to its customers’ homes and travels to those homes for servicing – like
Cellular South does – then “the goods and services provided under the SPIRE Marks are, or would
be, offered through at least some of the same, substantially similar, and/or overlapping channels of
trade as those through which C Spire offers its goods and services….the goods and services provided
under the SPIRE Marks are, or would be, offered to the same, substantially similar, and/or
overlapping classes of consumers as those to which C Spire caters.” (Doc. 30 at 21). Per Hayes,
Cellular South consumers are defined as “all consumers from the time they are old enough to sign a
contract” including individuals, businesses, government agencies, hospitals, etc. TR 36 (Hayes).
According to Hayes, “we are talking about marketing to the same consumers with same media and
markets” and it does not matter how careful or sophisticated a consumer is because “when driving
down the road at 55 mph and see a billboard…customers get confused” -- “people don’t read
advertising, they don’t watch television commercials. They consume advertising in passing” such that
it is “very very likely” given the same people, with the same media, the same message and near
identical logos, consumers will be confused. TR 98 (Hayes). Cellular South contends that because it
and Spire will use or have used the same channels of advertising and sales – households and
businesses and traditional sales channels -- this factor supports its claim. TR II 226-227.
According to Spire, it has no retail stores where it sells its services to the public whereas
Cellular South uses retail stores and faces retail store competition (e.g. AT&T, Verizon, etc.). Spire
also states it uses separate and distinct channels of sale for natural gas; natural gas customers
encounter entirely different and distinct experiences (e.g., gas purchases cannot select from a long list
of competing providers while telecommunications purchasers can); and natural gas customers are
focused on heating/cooling options, not telecommunications, such that the class of customers is
wholly distinct. TR II 76-78, 80-82, 88-89, 166-170 (Willingham). Per Willingham, because Spire
has no retail stores, customers have to call Spire or go to the website to become a client. Moreover,
Spire’s marketing is geared towards natural gas being better than other energy sources (electric, coal,
etc.). Spire also focuses it’s marketing on safety and energy efficiency and the benefits to the
community from using natural gas. (Id.)
Cellular South’s advertising and sales argument is based on a faulty premise -- that Cellular
South and Spire are using the same available channels of advertising to compete against one another.
Such is not the case. The businesses are in two different fields or sectors of the utilities market.
Further, apart from stating its customers are homeowners and businesses, Cellular South has not
shown how a cell phone or internet customer is similar to a natural gas customer. In sum, while the
“how” maybe similar (traditional avenues of advertising/media) and the where (Mississippi and
Alabama) may become the same, the “what” is not the same. This factor does not weigh in favor of
Similarity of advertising methods is assessed by comparing the parties’ advertisements and
audiences reached. Fla. Int’l, 830 F.3d at 1262-1263. “The greater the similarity, the greater the
likelihood of confusion.” Id. at 1262. The standard is not identical methods but “whether there is
likely to be significant enough overlap in the [audience]…that a possibility of confusion could
result.” Id. at 1263. In short, “whether the…ads are likely to reach the same audience.” Id.
As detailed supra, Cellular South advertises and promotes goods/services in many ways
including via television, radio, advertising, print, direct mail, internet, etc., and contends that Spire
“has used or intends to use the same advertising mediums and outlets” which weighs in favor of a
likelihood of confusion. (Doc. 30 at 22; Hrg. Ex. D-21 (Facebook add)). According to Spire, while it
may use the same or similar advertising method (TV, radio, mail, etc., see supra) its advertising is
focused on a different audience with a different message: namely, encouraging business and/or
residential consumers to switch from energy competitors (electric, coal, propane, etc.) to natural gas,
and thus competing with providers of alternate forms of energy (i.e., not focused on a telecom
consumer audience and not competing for telecom services). The undersigned acknowledges that
some of Spire’s advertising campaign is similar to Cellular South’s. But, while both companies may
use the same or similar advertising methods and styles, because the companies are not competitors in
the telecom industry, they are necessarily communicating distinct and different advertising messages
to different audiences. This factor is neutral.
To establish intent, Cellular South has to show that Spire has a conscious intent to capitalize
on its reputation/goodwill, is intentionally blind, or otherwise manifested improper intent in adopting
its mark. Caliber, 605 F.3d at 940; Custom Mfg., 508 F.3d at 648. Specifically, “[i]f it can be shown
that a defendant adopted a plaintiff's mark with the intention of deriving a benefit from the plaintiff's
business reputation, this fact alone may be enough to justify the inference that there is confusing
similarity.”…whether [the alleged infringer]…“had a conscious intent to capitalize on the plaintiff's
business reputation, was intentionally blind, or otherwise manifested improper intent” in adopting its
new name and acronym.” Fla. Int’l, 830 F.3d at 1263.
Cellular South argues that a “side by side” comparison of the social media material Spire
plans to use for marketing its gas companies (and rebranding), with that of Cellular South, “shows
that Spire intends to free-ride on C Spire’s name and goodwill” and that the timing of Spire’s
rebranding is “highly suspect” as it will happen in conjunction with the oncoming fall football
season (at which time Cellular South does a great deal of advertising). (Doc. 30 at 23). Cellular
South claims that Spire’s advertising and the way the videos are presented “are deliberately or
through their advertising agent copying” Cellular South because the videos are almost identical in
message and tone. TR II 227. Cellular South adds that Spire’s continuing to rebrand and expend
money towards same, despite receiving a cease and desist letter, goes to intent. TR II 227-228.
In response, Spire relies on Willingham’s testimony, noting Spire’s use of its mark since 2013
without challenge by anyone, much less Cellular South, until 2016. Willingham testified that the
intent in rebranding and renaming was to be completely different than anyone else; “we don’t want
the mark to be close to anyone else’s mark,” and that for example, Spire chose the color orange as it
represents energy and no one in the energy arena was using orange. TR II 114 (Willingham).
Willingham testified that Laclede, which is a 180 year old gas company, ordered a number of
trademark searches for the “spire” mark, starting back in September 2012, to identify any conflicts or
possible confusion with other businesses – i.e., any trademarks already “out there” in Spire’s business
line (goods and services class of Spire) -- and no conflicts or confusion were found. The results
showed, however, immense use of “spire” in the world: over 150 current and active registrations,
including 18 uses in Mississippi and 15 in Alabama.
Upon consideration, Cellular South has not submitted sufficient evidence that Spire intended
to capitalize on its reputation/goodwill, is intentionally blind, or otherwise manifested improper intent
in adopting its mark. Cellular South’s position is largely based on its unilateral interpretation of
Spire’s advertising and its conclusions about it, rather than evidence. Cellular South has provided no
evidence to the Court of Spire’s intention to take a “free ride on C Spire’s name and goodwill.” In
contrast, Spire, via Willingham’s testimony, has established that Spire, over almost a decade, ordered
a number of trademark searches and thoroughly researched the mark “spire,” as it wished to be
completely different than anyone else, to stand out, when it rebranded. Such testimony undermines
any “intent” by Spire to capitalize on C SPIRE. This factor does not weigh in favor of Cellular South.
Evidence of actual confusion is the best evidence of a likelihood of confusion, and courts
assess the existence and extent of any such confusion. Fla. Int’l, 830 F.3d at 1264; Custom Mfg., 509
F.3d at 1360. “[W]e must consider who was confused and how they were confused: ‘Short-lived
confusion or confusion of individuals casually acquainted with a business is worthy of little weight,
... while confusion of actual customers of a business is worthy of substantial weight.’ Safeway Stores,
675 F.2d at 1167; see also Aronowitz, 513 F.3d at 1239-40 (‘With regard to actual confusion, we
have specifically accorded ‘substantial weight’ to evidence that actual customers were confused by
the use of a mark as opposed to other categories of people.’)…..even two instances of actual
confusion is ‘worthy of some consideration’ when the right people are confused in the right way. See
Safeway Stores, 675 F.2d at 1167.” Fla. Int’l, 830 F.3d at 1264. “The rule courts usually apply is
that infringement occurs when “there is a likelihood of confusion in the mind[s] of an appreciable
number of ‘reasonably prudent’ buyers.” 2 J.T. McCarthy…§ 23:27, at 87–88.” Harland 711 F.2d at
979 at n.22.
According to Hayes’ (and Harper’s) evidentiary hearing testimony, Cellular South’s
confusion contentions appear based to its “road map” and future plans to “own the home” -- linked to
its recent registration application for home automation and security services (alarm services – alarm
systems, CO2 detectors, thermostats, garage door openers, lights, AC, door locks, lighting controls,
etc). TR 29-30 (Hayes); TR 134 (Harper). Namely, that Cellular South has been significantly
impacted by Comcast’s Xfinity foray into the telecom and internet industry, while historically only
cable, such that it is concerned about “other utility companies branding out into other areas” TR 59.
Per Hayes, “there’s nothing to keep someone like Spire …from doing the same thing” and “[d]on’t
think its’ a stretch at all” for a gas company like Spire to start selling telecommunication services”
as “they could do it tomorrow if they wanted to.” TR 60. Hayes’ testimony appears to bring to the
forefront Cellular South’s primary concern. However, said concern is not based on evidence. In
contradiction, Willingham testified that Spire has no plans to go into the telecom and internet
business. TR 75 (Willingham).
Cellular South admits that while it cannot show actual confusion, because there are no
instances of both companies advertising in the footprint of Alabama and Mississippi (TR 99 (Hayes);
TR II 228), the Court should still conclude that there is a potential for actual confusion based on
Harper and Jacoby’s findings. According to Harper, her 2017 survey revealed that after viewing the
company’s logos, “just shy of 37%” of consumers were confused, thinking Spire was affiliated with
Cellular South. TR 113, 126-127, 130 (Harper). In response to criticism that only the bare logos
were shown to the participants, Harper stated that she could not place Spire “in context” because it
was not yet in the marketplace and it is common to show a logo isolated (e.g., on a headset or
jumbotron). TR 141-142 (Harper). Harper also explained she did not want to show the logos as
actually used presently by Spire (in other markets) because she did not want to assume Spire would
use the same logo in the new market.. TR 141-142, 152-153 (Harper). Harper also expresses her
personal opinion that Spire may want to get into the telecom business some day, admitting she has
not seen any evidence of this, but presuming that consumers “certainly believe they could all be part
of the same utility company” (citing 15-17% of people think a utility company could conceivable
offer both services, per Dr. Jacoby). TR 175-176 (Harper).
Moreover, Hayes testified that there might be confusion and inconvenience with customer call
centers. She presented a “should anything happen” scenario (e.g., a catastrophe with Spire impacts
the image of Cellular South – explosion, environmental lawsuits, etc.), and that customers might
think Cellular South has rebranded or bought a gas company (brand instability) -- resulting in a loss
of control of reputation, consumer trust and goodwill. TR 63, 67-68 (Hayes). However, Hayes
submitted no evidence of this, just her opinion and speculation on the part of Cellular South. Hayes
also acknowledged that Cellular South customers are careful and sophisticated “in terms of buying
cellular service.” TR 79-81 (Hayes).
In contrast, Spire asserts, via Dr. Jacoby’s testimony, that Harper’s opinion is “fatally
flawed”, such that it cannot provide support for Cellular South’s claim. Specifically, Dr. Jacoby
opines that Harper used the wrong universe (used Jr. mark customer base instead of Sr.’s base), the
wrong stimuli (logos not shown in context), and the wrong protocols (did not use a control group to
test results if actual mark not present). TR II 16, 20-22, 24, 28, 53-59 (Jacoby). Spire also relies
upon Dr. Jacoby’s finding that it is highly unlikely that any consumers seeking telecommunications
services would call a natural gas company for telecommunications services. TR II 9, 12, 70 (Jacoby).
Moreover, Spire also references its agreement with Chesapeake, owner of ASPIRE ENERGY mark,
noting that this shows those companies could co-exist even within the energy industry with the two
marks – suggesting the “spire” mark is highly diluted. TR II 236-237 (Hrg. Ex. D-11A).
Upon consideration, the Court finds that there is no evidence of actual confusion. Delta Air
Lines, 2015 WL 11347586, *13 (finding “no evidence to support any actual customer confusion.
Thus, this factors weighs in the....[non-movant’s] favor”). As to potential confusion, there is
primarily conjecture and speculation by Cellular South. At most, the evidence, per Dr. Jacoby,
indicates that 15.3% of consumers thought a telecommunications business and a natural gas business
could be associated. Association, however, is not de facto confusion, and Cellular South has not
established otherwise by the evidence. This factor does not favor Cellular South.
Weighing of the seven (7) factors
Upon consideration, the court has weighed the factors and concludes, on balance, that Cellular
South has not shown a substantial likelihood of success on the merits for these counterclaims.
Alabama and Mississippi Trademark Dilution (Count IV)
Cellular South asserts state law dilution counterclaims against Spire pursuant to Ala. Code §
8-12-179 and Miss. Code Ann. § 75-25-25, (Doc. 8 at 35), which are very similar.
At the outset, Spire asserts that Cellular South’s state law dilution counterclaims are barred
per 15 U.S.C. § 1125(c)(6), which states that “[t]he ownership by a person of a valid registration ...
on the principal register under this chapter shall be a complete bar to” a state law dilution claim.
Here, however, there appears to be a dispute between the parties as to the validity of the registration
of the “spire” mark—as its registration is being contested. As expressed in Lovetap, LLC v. CVS
Health Corp., 2017 WL 3250374, *4 (N.D. Ga. Jul. 31, 2017) (emphasis added):
Congress was clear, through the language it enacted into law, that it intended for § 1125(c)(6)
to provide a complete bar to state dilution claims against valid registrations. The inclusion of
“valid,” based upon the plain meaning of the word, necessarily means that § 1125(c)(6) does
not apply to those federal registrations that are invalid. As such, the Court finds that when
there is a question as to the validity of a federally registered trademark, and a plaintiff seeks to
cancel that trademark with a well-pleaded complaint, §1125(c)(6) does not mandate
immediate dismissal of a plaintiff's related state claim for dilution.
The Court finds that as the validity of Spire’s mark appears to be in question, immediate dismissal of
the state law dilution claims, at the preliminary injunction stage, is not required.
Turning to the substantive state law dilution contentions, the Court finds as follows. Both the
9 As explained in the Comments to the Alabama statute: “This section does not require that there be
competition between the parties or confusion as to the source of the goods. The Alabama courts never
addressed this issue directly. However, in one case which dealt with injunctive relief from alleged
infringement of a trade name the court stated that all that was necessary to be shown was that the
complainant's trade was in danger of harm from use of its name by the respondent in such a manner as is likely
to deceive the public into belief that respondents' affairs are those of complainant. Thus to the extent that this
language might imply a necessity of proof as to confusion as to the source of the goods, the section would be a
modification of the Alabama law.”
Mississippi and Alabama statutes provide that the owner of a mark “which is famous and distinctive,
inherently or through acquired distinctiveness,” is entitled to an injunction “against another person’s
commercial use of a mark, if such use begins after the famous mark has become famous and is likely
to cause dilution of the famous mark[.]” Ala. Code § 8-12-17(a); Miss. Code Ann. § 75-25-25(a).
Both statutes define a famous mark as, “widely recognized by the general consuming public of this
state or a significant geographic area in this state as a designation of source of the goods or services
or the business of the mark's owner.” Ala. Code § 8-12-17(b); Miss. Code Ann. § 75-25-25(b). Both
statutes share similar factors to determine whether a mark is famous: 1) “[t]he duration, extent, and
geographic reach of advertising and publicity of the mark in this state[;]” 2) [t]he amount, volume,
and geographic extent of sales offered under the mark in this state[;]” 3) “[t]he extent of actual
recognition of the mark in this state or a significant geographic area in this state[;]” and 4) whether
the mark is registered at the state or federal level. Ala. Code § 8-12-17(b)(1-4). Miss. Code Ann. §
75-25-25(b)(1-4). Moreover, the statutes provide: “the owner of a famous mark shall be entitled to
injunctive relief throughout the geographic area in which the mark is found to have become famous
prior to commencement of the junior use, but not beyond the borders of this state.” Ala. Code § 8-1217(c) and Miss. Code Ann. § 75-25-25(c) (emphasis added).
To prevail on its Alabama state law dilution claims, Cellular South must show: 1) the C
SPIRE mark is famous; 2) Spire adopted its mark after Cellular South’s C SPIRE mark became
famous; 3) Spire’s mark diluted Cellular South’s C SPIRE mark; and 4) Spire’s use is commercial
and in commerce. Alfa Corp., 560 F. Supp. 2d at 1176. For Mississippi, courts consider: 1) degree
of inherent or acquired distinctiveness of the mark in the state; 2) duration and extent of use of the
mark in connection with the goods and services; 3) duration and extent of advertising and publicity of
the mark in the state; 4) geographical extent of the trading area in which the mark is used; 5) channels
of trade for the goods or services with which the owner's mark is used; 6) degree of recognition of the
owner's mark in its and in the other's trading areas and channels of trade in the state; and 7) nature
and extent of use of the same or similar mark by third parties. Montalto v. Viacom Int’l, Inc., 545
F.Supp.2d 556, 561 (S.D. Miss. 2008).
“[T]he plaintiff's burden of proof for dilution under § 8–12–17 ... [i]s essentially the same as
under federal law.” Alfa Corp., 560 F.Supp.2d at 1176. A dilution action then, “is based on the
concept that a strong trademark has value beyond its ability to distinguish a good or service’s
source” and it “protects the owners of such strong, distinctive marks from the diminution of
consumer goodwill by competitors or non-competitors.” Id. at note 3. As explained in Kaplan, 2009
WL 10668763, *7 (internal citations omitted):
Trademark dilution occurs where companies produce different goods or services and where
there is no likelihood of consumer confusion between the two marks…In this way, dilution
claims are different from infringement claims. The theory of recovery for dilution claims is
“that the public associates the same mark with two entities and that association infringes on
the senior user's property right by preventing the mark to serve as a unique identify of the
senior user alone.” ... “A dilution action ... is based on the concept that a strong trademark has
value beyond its ability to distinguish a good or service's source. A dilution action protects the
owners of such strong, distinctive marks from the diminution of consumer good will by
competitors or non-competitors.”…. “Thus, dilution occurs where the trademark is blurred by
the junior uses or where the junior use damages the good associations originally attributed to
the senior use.”….
A party is entitled to injunctive relief if they own a famous mark that is distinctive and
another entity uses that trademark or name in commerce causing blurring or tarnishing of the
mark. 15 U.S.C. § 1125(c)(1). An owner of a famous mark can prevail on a dilution claim if
the owner shows that the mark is famous and demonstrates the likelihood of confusion—a
plaintiff need not show actual dilution. 15 U.S.C. § 1125(c)(1)….
And as explained in Alfa Corp., 560 F. Supp.2d at 1176-1177:
To succeed on a trademark dilution claim, a plaintiff must prove “1) its mark is famous; 2) the
defendant adopted its mark after the plaintiff's mark became famous; 3) the defendant's mark
diluted the plaintiff's mark; and 4) the defendant's use is commercial and in commerce.”
….The nonexclusive list of factors a court may consider to determine whether a mark is
famous and, therefore, deserving of protection from dilution, include: (1) the degree of
inherent or acquired distinctiveness; (2) the duration and extent of use of the mark; (3) the
duration and extent of advertising and publicity; (4) the geographical extent of the area in
which the mark is used; (5) the channels of trade in which the mark is used; (6) the degree of
recognition of the mark in the areas and channels of trade used by the owner and the entity
allegedly diluting the mark; and (7) the nature and extent of use of the same or similar marks
by third parties; and (8) whether the mark is registered on the principal register…..
Cf. EBSCO Indus., 89 F.Supp.2d at 1263 (“this court has used the five prong test for dilution
[restated by the Second Circuit]…(1) the senior mark must be famous; (2) the senior mark must be
distinctive; (3) the junior use must be a commercial use in commerce; (4) the junior use must begin
after the senior mark has become famous and (5) the junior mark must cause dilution of the senior
Spire contends that: 1) Cellular South’s mark is not famous; 2) there are hundreds of other
registrations for, and uses of, “spire”, across a wide range of industries; 3) Spire’s use of “spire” does
not further dilute Cellular South’s use of its mark, because the term “spire” is already diluted; and 4)
Spire has been using the mark since December 2013. TR 6, 90. Cellular South, in contrast, argues
that the marks are distinctive, strong and famous, and became so before Spire began to use or
proposed to use the “spire” mark in virtually identical markets to advertise and sell its goods and
services in Mississippi and Alabama (“since September 2011”).
At the hearing, Cellular South presented the testimony of Hayes in support of its dilution
claims to argue its mark is “famous” (or well-known) and was “famous” before Spire began using the
“spire” mark. Hayes testified to market studies, for the State of Mississippi, from March 2016 and
June 2017 (Hrg. Ex. D-9 and D-10). Hayes provided no evidence or testimony as to any market
studies for the State of Alabama or any dilution in the state. In doing so, Hayes testified that the
Cellular South mark was famous, in Mississippi, as of those dates. Cellular South acknowledges the
many hundreds of other registrations or applications for marks using the word spire, but explains that
“they are for other products.” TR 90 (Hayes). In response, Spire presented evidence of its use of the
mark in December 2013, more than two (2) years before the March 2016 market study in Mississippi
upon which Cellular South relies.
As for Cellular South’s Alabama dilution claim, no evidence has been submitted as to the C
SPIRE mark being “famous” in Alabama before Spire’s first use of the “spire” mark in December
2013. As such, Cellular South’s injunctive request is denied as to this claim.
With regard to Cellular South’s Mississippi dilution claim, the evidence Cellular South has
submitted speaks to the C SPIRE mark being “famous” a number of years after Spire’s first use of a
version of the “spire” mark in December 2013. TR. Ex. D-9 and D-10. In other words, the studies
Cellular South has brought to the Court’s attention provide no evidence of any pre-existing famous C
SPIRE mark (i.e., the C SPIRE mark being famous before Spire’s first use of this version of the
“spire” mark in December 2013). Other reference made by Cellular South to the C SPIRE mark’s
“famous” nature is vague in substance (e.g., IPhone testimony) and overall insufficient to establish
the C SPIRE mark was famous before December 2013.
However, as to other versions of the “spire” mark, used during 2016, Cellular South has
provided some evidence that the C SPIRE mark was famous at that time. However, even assuming
arguendo that the C SPIRE mark was famous in Mississippi as of March 2016, Cellular South still
has to submit evidence showing that the public associates (or will likely associate) the same mark
with both Cellular South and Spire, and that such association infringes on Cellular’ South’s rights “by
preventing the mark to serve as a unique identify of the senior user alone.” Cellular South has to also
show that the C SPIRE mark is blurred (or is likely to be blurred) by Spire’s use of the “spire” mark.
The Court has considered the testimony and evidence by Harper and Hayes, and on balance – and
while close – finds that it cannot conclude that Cellular South has established a substantial likelihood
of success on the merits for the Mississippi state law dilution counterclaims.
Declaratory Judgment (Count V)
Cellular South seeks a declaratory judgment finding that: 1) there is a likelihood of confusion
among consumers as to the marks; 2) Spire’s use of the marks has infringed or will infringe on the
Cellular South marks; 3) Spire’s use of the marks constitutes or will constitute unfair competition,
unfair trade practices, or deception; and 4) Spire’s use of the marks has diluted or will dilute the
Cellular South marks under Alabama and Mississippi law. (Doc. 30 at 26). Cellular South also
requests that the Court enter an order denying registration of Spire’s marks on the principal register
pursuant to 15 U.S.C. § 1052(a) and (d), because Spire’s mark “will confuse people into believing the
goods and services” from Cellular South and Spire “emanate from the same source[;]” and Spire’s
use of the mark would “disparage and falsely suggest a connection with” Cellular South, “causing
loss, damage or injury.” (Id.) In contrast, according to Spire, Cellular South’s declaratory judgment
counterclaim merely duplicates the other counterclaims such that the same arguments for trademark
infringement, unfair competition, dilution and state law claims, supra, apply to this claim. (Doc. 43
at 24 at note 15). Upon consideration, because the other counterclaims request the same relief sought
in the declaratory judgment counterclaim, Cellular South’s declaratory judgment does not appear to
“serve a useful purpose.” FairWarning IP, LLC v. CynergisTek, Inc., 2015 WL 5430355, *2 (M.D.
Fla. Sept. 14, 2015); The Macknight Food Group, Inc. v. The Santa Barbara Smokehouse, Inc., 2015
WL 6380644, *2 (S.D. Fla. Oct. 22, 2015). This counterclaim then, appears to be redundant of the
other counterclaims for which preliminary injunctive relief is also sought. Additionally, as for that
portion of Cellular South’s declaratory judgment counterclaim that seeks entry of an order denying
Spire its registration of the marks, there is nothing presently to enjoin. Cellular South has already
filed an opposition to the registration in the USPTO and those proceedings have been suspended
pending the litigation in this Court “wherein both parties have invoked this Court’s authority to
determine registrability, which will thus have a direct bearing on the outcome” of the USPTO action.
Thus, upon consideration, the Court finds that Cellular South has not met its burden of showing a
substantial likelihood of success on the merits of its declaratory judgment counterclaim.
At the outset, the undersigned is persuaded by eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388 (2006) and Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 22 (2008) that a presumption of
irreparable harm does not attach in a trademark case. Rather, a party seeking a preliminary injunction
must “demonstrate that irreparable injury is likely in the absence of an injunction.” The Court follows
the rationale of Uber Promotions, Inc. v. Urber Tech., Inc., 162 F. Supp.2d 1253, 1261-1262 (N.D.
For years, the Eleventh Circuit (along with many other circuits) held that courts should
“extend a presumption of irreparable harm once a plaintiff establishes a likelihood of success
on the merits of a trademark infringement claim.” N. Am. Med. Corp. v. Axiom Worldwide,
Inc., 522 F.3d 1211, 1227 (11th Cir.2008). The appropriateness of this presumption is
doubtful, however, after the Supreme Court's decision in eBay Inc. v. MercExchange, LLC,
547 U.S. 388….courts have applied its reasoning in the context of preliminary injunctions in
trademark cases and concluded that the presumption of irreparable harm is no longer good
law…..Other courts, while not going so far as to hold that the presumption of irreparable harm
is no longer appropriate in trademark cases, have suggested that that is the correct (and
inevitable, once the question is squarely presented) result….The Eleventh Circuit is in this
latter group of courts, having stated in dicta that “a strong case can be made that eBay's
holding necessarily extends to the grant of preliminary injunctions” in a trademarkinfringement case. Axiom Worldwide, 522 F.3d at 1228…. This Court is persuaded by eBay
that a presumption of irreparable harm is no longer appropriate in a trademark-infringement
case once a substantial likelihood of success on the merits is shown…..The Lanham
Act….provides that courts “shall have power to grant injunctions according to the principles
of equity.” 15 U.S.C. § 1116(a)…This does not suggest that irreparable harm should be
presumed in a trademark infringement case, but instead indicates that the appropriateness of
injunctive relief must be analyzed using the traditional framework. See Ferring Pharm., 765
F.3d at 215–17.
See e.g., Peter Letterese & Assocs., Inc. v. World Inst. of Scientology Enters., 533 F.3d 1287, 1323
(11th Cir. 2008) (citing Ebay and stating an injunction “does not automatically issue upon a finding of
copyright infringement[,]” but instead a movant must satisfy the four (4) factors).
Turning to the “irreparable injury” factor, per Parsons & Whittemore, Ent. Corp. v. Cello
Energy, LLC, 2008 WL 227952, *23 (S.D. Ala. Jan. 25, 2008) (internal citation omitted):
A plaintiff seeking a preliminary….injunction must show that the irreparable injury will occur
“during the pendency of the suit” unless the preliminary injunction issues….In other words,
the possibility that [movant]… will suffer an irreparable injury at some point after the
conclusion of this case does not justify the issuance of a preliminary injunction-…[movant]
must show that the injury will occur while this case is ongoing, before the parties and court
can obtain a final decision on the merits.
Additionally, “’[a] showing of irreparable injury is the sine qua non of injunctive relief.’…[e]ven
if…[movant] could establish a likelihood of success on the merits, the absence of a showing of
irreparable injury, ‘would, standing alone, make preliminary injunctive relief improper.’” Hoop
Culture, Inc. v. GAP Inc., 648 Fed. Appx. 981, 984 (11th Cir. 2016). Moreover, in trademark cases,
grounds for irreparable injury may include loss of control of reputation, loss of trade, loss of
customers, loss of goodwill and the possibility of confusion. See, e.g., Ferrellgas Partners, L.P. v.
Barrow, 143 Fed. Appx. 180, 190-191 (11th Cir. 2005); Jysk Bed’N Linen v. Dutta-Roy, 810 F.3d
767, 780 (11th Cir. 2015).
Cellular South has not persuaded the Court that it will suffer an irreparable injury during the
pendency of this lawsuit unless a preliminary injunction issues.
Cellular South asserts it has
established irreparable harm, or at the very least the imminent threat of irreparable harm via loss of
control of its reputation, loss of goodwill, and the likelihood of confusion between the parties’ marks.
Cellular South relies heavily on Choice Hotels, 2016 WL 6652453 at *4-5, which states that “[t]he
most corrosive and irreparable harm attributable to trademark infringement is the inability of the
victim to control the nature and quality of the defendant’s goods [and services]. Even if the
infringer’s products [and services] are of high quality, the plaintiff can properly insist that its
reputation should not be imperiled by the acts of another.” From this, Cellular South argues that if
Spire is allowed to rebrand Willmut, Alagascorp and Mobile Gas with the mark, it “will be at the
mercy of Spire with regard to its ability to control the nature and quality of the goods and services[.]”
(Doc. 30 at 28). Choice Hotels’ concerned companies in the same field of goods and services – the
hotel/motel business (a franchise and use of a mark). Cellular South and Spire do not produce/sell (or
associate with) the same goods/services such that one would logically (or necessarily) “be at the
mercy” of the nature and quality of the goods/services of the other, to be potentially “imperiled.”
At best, Cellular South’s evidence consists of speculation for harm to its reputation, goodwill
and business, with Spire’s use of the mark – e.g., “risk of a gas leak,” theoretical “negative customer
experiences,” “negative social posts” -- which it argues would then be incorrectly linked to, or
associated with, Cellular South. TR II 229. Simultaneously, however, Cellular South repeatedly
emphasizes the hundreds of millions of dollars and thousands of hours it has invested to “earn brand
trust, not just of its customers, but also its communities[,]” and that it has taken years of creating and
delivering a customer experience linked to the company’s name. (Doc. 30 at 28-29; TR II 229). The
Court finds it incongruous for Cellular South to argue how famous and well known its name is and
how vested it is with its customers and communities as a trusted brand, yet to simultaneously ask the
Court to conclude that Spire’s use of a mark – in a different industry, with a different business,
selling/providing different goods/services – is on the verge of causing the imminent loss or
destruction of all of those dollars and work hours unless an immediate injunction issues.
Additionally, as Spire correctly highlights, Cellular South’s ability to establish irreparable
injury is diminished by its own delay in seeking injunctive relief. (Doc. 33 at 2-3). Cellular South
explains the delay due to the injury not being “ripe” and the harm not being “immediate” until the
receipt of Spire’s July 27, 2017 rebranding filing with the Mississippi Public Service Commission.
(Doc. 44). Cellular South claims that until then, the harm was “only a possibility and was not
imminent.” (Doc. 44 at 2). Cellular South asserts: “Spire’s earlier conduct did not put” it on “notice
of an imminent threat of irreparable harm[,]” and that in the months after the March 24, 2016 name
change announcement “there was no evidence that Spire would move forward on its rebranding
efforts.” (Doc. 44 at 3). On August 21, 2017, Cellular South restated its position another way:
“[u]ntil now…to its “knowledge” -- Spire’s use of the mark (“if at all”) was limited to two service
stations (propane or gas refueling stations) in Missouri and South Carolina (outside its footprint), and
it was only when it was notified of Spire’s plan to rebrand in its “footprint” in August 2017, that it
sought injunctive relief.
(Id. at 4; Tr. at 8).
Given the evidence submitted, the Court is not
On June 20, 2014, the Spire mark was registered by Laclede in the USPTO. The evidence
reveals that Cellular South has had knowledge of Spire’s plans to rebrand its businesses since (the
latest) March 28, 2016, when Cellular South issued a cease and desist letter to Spire, stating that
Spire’s use of the mark had caused, was causing and will cause immediate injury. The letter
addressed Spire’s alleged “infringement and dilution” of Cellular South’s trademarks as Cellular
South “recently became aware” of the Laclede Group’s March 24, 2016 announcement that it was
changing its name to Spire. Cellular South wrote that use of the mark by Spire “infringes on C
Spire’s trademarks and may dilute its marks in violation of the federal and state trademark law[,]”
demanding that Spire “immediately cease and desist from using its Spire marks” as such use “will
subject your company to injunctive relief, actual damages, disgorgement of profits, costs and
attorneys’ fees.” (Hr. Ex. P-R). Cellular South added that “use of the Spire marks may cause, has
caused and/or is causing damage” to its business and reputation. (Id. at 2). On April 1, 2016, Spire
denied Cellular South’s allegations and stated that its rebranding would continue. (Hr. Ex. P-I).
In 2016, Spire’s registration was pending before the USPTO and on April 27, 2016 (and as
amended on June 27, 2016 and August 1, 2016), Cellular South filed an Opposition “based on
reported public comments by” Spire, that Spire “will change the names” of its businesses (e.g.,
Mobile Gas, Willmut Gas, etc.) to Spire following acquisition.
Spire repeatedly restated its
rebranding plans to Cellular South and in filings with the USPTO. As explained at the hearing, on
April 28, 2016, Spire’s shareholders committed to the rebrand publicly and the next day changed the
NYSE ticker symbol to Spire. As of August 2016, all of Laclede’s year-end financials were Spire
and the company had become Spire nationally. TR 5; TR II 239. Late Summer 2016, the annual
report announced the company is Spire. TR II 239. Spire also notified Cellular South of a rebranding
timeline with its February 21, 2017 Responses to Cellular South’s Interrogatories filed in the USPTO.
(Doc. 43-14 at 3). “Spire, Inc. is a holding company, and its operating subsidiaries are in the process
of rebranding to the SPIRE marks. The rebranding is currently expected to be completed by the end
of 2017.” (Id. (emphasis added)). Spire also included its rebranding plans in the documents provided
in response to Cellular South’s requests for production filed in the USPTO. And on June 14, 2017,
Spire filed this federal action, stating: “Spire currently uses the SPIRE marks in promoting, offering
and rendering its natural gas marketing and natural gas fueling related services in Alabama,
Mississippi, Missouri and South Carolina. Spire will begin using the SPIRE marks in promoting,
offering and rendering natural gas distribution services in Alabama, Mississippi and Missouri in
September 2017.” (Doc. 1 at 8 at ¶24 (emphasis added)). On July 27, 2017, Cellular South received
materials that Spire provided to the Mississippi Public Service Commission related to its rebranding
(with a timeline). On August 14, 2017, Cellular South moved for injunctive relief. (Doc. 30).
Faced with this rebranding history, Cellular South asks the Court to disregard its March 28,
2016 letter as evidence of its awareness of Spire’s rebranding. Cellular South claims it lacked
knowledge – at that time -- of a “rebranding timeline” and when, and whether definitively, Spire
would actually rebrand, such that any injury was only a possibility and not imminent. The presence
of the March 2016 letter indicates that Cellular South thought the harm or injury was actual or
imminent at that time, not prospective, potential or possible, yet failed to seek injunctive relief. (Doc.
44 at 4). And even if the Court disregards the letter, and Cellular South’s statements in same, and
presumes a rebranding timeline was somehow necessary for Cellular South to act, the fact remains
that as of February 21, 2017, Spire notified Cellular South that it was already rebranding and that the
process would finish by the end of 2017.10
In sum, Cellular South has provided insufficient explanation as to why it waited until August
14, 2017 to seek injunctive relief. Cellular South’s delay -- whether a few months or 18 months –
10 Spire continued to include a rebranding timeline in documents thereafter (e.g., 6/14/17 complaint filed in this
case referencing rebranding “in September 2017” (Doc. 1 at ¶ 24)).
militates against a finding of irreparable harm pending trial, and undercuts any sense of urgency.
Wreal, LLC v. Amazon.com, Inc., 2015 WL 12550932, *2 and 16-17 and notes 19-20 (S.D. Fla. Feb.
3, 2015). See also Wreal, LLC v. Amazon.com, Inc., 840 F.3d 1244, 1248-1249 (11th Cir. 2016)
(discussing a delay of only a few months and stating “the very idea of a preliminary injunction is
premised on the need for speedy and urgent action to protect a plaintiff's rights before a case can be
resolved on its merits.…a party's failure to act with speed or urgency in moving for a preliminary
injunction necessarily undermines a finding of irreparable harm”); 27-24 Tavern Corp. v. Dutch
Kills Centraal, 2015 WL 5772158, *21 (E.D.N.Y. Sept. 29, 2015) (“Plaintiff filed an intent-to-use
application with the USPTO….plaintiff has offered no explanation for why it delayed filing this
application for four months after it issued its cease and desist letter, and then waited another full
month to file the instant action…the Court is compelled to find that plaintiff's unexplained delay of
five months undercuts its claim of irreparable harm”); Kensington Partners v. Cordillera Ranch,
Ltd., 1998 WL 1782540 *11-13 (W.D. Tex. Jun. 16, 1998) (no urgency for injunctive relief and no
substantial threat of irreparable harm given 10-month delay between cease-and-desist letter and filing
of motion); Interactive Media Corp. v. Imation Corp., 2012 WL 4058064, *1 (D. Mass. Sept. 13,
2012) (delay of almost two years between cease and desist letter and injunctive motion suggests no
urgency and no irreparable injury).
Balance of Harms
For this factor, the inquiry is whether “the probable loss of consumer goodwill [to Cellular
South]…..outweighs the cost of delay” to Spire, who will be unable to sell its product using the
trademark until a decision is reached on the merits. Davidoff & Cie, S.A. v. PLD Int'l Corp., 263 F.3d
1297, 1304 (11th Cir. 2001). Cellular South bears the burden of showing the threatened injury
outweighs whatever damage an injunction may cause to Spire. Id. at 1300.
Cellular South asserts: “though the Willmut, Mobile Gas, and Alagasco websites feature a
note regarding the planned name change, to date, the company names, websites, and billing materials
of Willmut, Mobile Gas and Alagasco have not yet been changed. Spire will suffer little, if any, harm
by having to continue to use those names until this matter is resolved on the merits. Customers who
are already using the services of Willmut, Mobile Gas and Alagasco will likely continue to do so, and
will not be affected by a name change.” (Doc. 30 at 29; TR at 9). Cellular South adds that the
renaming of these three (3) companies is set to go forward on September 1, 2017, and that is why the
threat is imminent. TR at 9. Cellular South notes that since it began its rebranding of Cellular South
to C SPIRE in September 2011, it has spent $12.8 million on the rebrand and mass media with the
new name C SPIRE and since 2011 has spent about $275 million on the brand as a whole, while
Spire has only spent about $3 million. TR 15-17, 19 (Hayes); TR II 233. Cellular South adds further
that its ability to get and keep customers will be impacted by Spire’s use of the mark, especially if
there are environmental issues, gas leaks, explosions, etc., as that would cause substantial damage to
the reputation and goodwill it spend hundreds of millions to secure and will be impossible to get
back. TR 70-71 (Hayes). Cellular South adds that any monetary damage to Spire is ‘self-inflicted”
as it should have stopped rebranding upon receipt of the March 28, 2016 cease and desists letter. Id.
According to Spire, it will be substantially harmed and damaged because it has already
invested significant resources ($3,480,000 to develop the brand and $14 million in expression of the
new brand) which has been ongoing since March 2016, and will incur additional and unnecessary
costs if it is now forced to completely change or remove such rebranding; will suffer damage to its
business reputation; will impact its subsidiaries’ long-term supply contracts for the rebranded
equipment (uniforms, vehicles, etc. worth millions); will impact its customer communications (as
they have already been informed about the rebranding via bill inserts, social media, websites, etc.);
and the intangible cost via a loss of trust, customer confidence and goodwill, is extremely high in an
industry in which safety is an essential component (natural gas). TR II 135-138 (Willingham).
Specifically, Willingham testified to all the resources that have been or are being rebranded
with Spire and which will be impacted: building signage, website, customer connect portals, loss of
the master brand, email addresses, business cards, name badges, thousands of shirts, pants, uniforms,
etc. Id. Additionally, September 25, 2017 is first day employees wear Spire uniforms -- all been
distributed already in preparation for this “go orange day.” Id. The nationwide website changed in
April 2016 and business cards, access cards, buildings, etched class, welcome mats and trucks have
already changed. Id.
Moreover, Willingham testified about the master brand strategy with safety as paramount,
core of what Spire does, such that the customer has to be confident and “trust us.” Id. In that regard,
Spire has been communicating with the public, its employees, and the world since 3/24/16 via email,
bill insert, etc. that they were becoming Spire. Id. Per Willingham, “now we are the point that it’s all
done” so if it does not happen, significant trust issue will emerge and “make people question what
other things you say you will do won’t you” Id.
Upon consideration, the Court finds the balance of harms weighs in favor of Spire. This is not
a situation in which a trademark dispute is on the verge of happening or is only just now impacting
Cellular South. Spire already has been operating under the Spire mark since December 2013, for
natural gas vehicle fueling services. (Doc. 1 at 6; TR at 5). On June 20, 2014, the SPIRE mark was
registered in the USPTO (a valid and subsisting mark which has not been challenged by Cellular
South in the USPTO). (Doc. 1 at 6-7; TR at 5, 7). Spire has been publicly and formally engaged in
rebranding its operations with the SPIRE marks since 2016, and Cellular South has been aware of this
since (at least) the March 28, 2016 cease and desist letter. Spire disputed Cellular South’s trademark
allegations in response and notified Cellular South on April 1, 2016 that the rebranding process
would continue. Before filing the present action on June 14, 2017, Spire had “already commenced”
the rebranding of Alabama Gas Corporation and Mobile Gas “subsidiaries and operations under its
SPIRE trademarks” and asserted that it “currently uses the SPIRE marks in promoting, offering and
rendering its natural gas marketing and natural gas fueling related services in Alabama, Mississippi,
Missouri and South Carolina. Spire will begin using the SPIRE marks in promoting, offering and
rendering natural gas distribution services in Alabama, Mississippi and Missouri in September 2017.”
(Doc. 1 at 5 at ¶15 and 8 at ¶24)). Through the present date, Spire has already committed millions of
dollars, time, energy, resources, secured new inventory, uniforms, advertising, signage, etc., for
rebranding. See, e.g. Alltel Corp., 42 F.Supp.2d at 1274 (discussing facts related to a company’s
“considerable investment in its name”). Further, Spire’s business in that of natural gas with safety as
a paramount concern, and the trust and reliability of its customers is thus critical given the nature of
the business. TR II 240. A loss of customer confidence, if the new name and rebranding were
suddenly changed, would be harmful. Id.
In comparison, Cellular South’s injury would be an alleged loss of reputation and goodwill
due to an assumed likelihood of confusion of the products. As explained supra, Cellular South has
not made a convincing case (yet) on this argument. Also, any potential injury to Cellular South
appears minimal “given the current lack of overlap in competition” with Spire. Alltel Corp., 42
F.Supp.2d at 1274; HBP, Inc., 290 F.Supp.2d at 1332, 1334-1335 (discussing cases finding no
confusion as the trademarks were for products sold in different industries).
Courts consider whether issuance of an injunction will serve the public interest. Winter, 555
U.S. at 20; Wreal, 840 F.3d at 1247; Alltel Corp., 42 F. Supp.2d 1265. This factor concerns the
public's right not to be deceived or confused – i.e., preventing or avoiding unnecessary consumer
confusion in the marketplace. Davidoff, 263 F.3d at 1304.
Cellular South contends that with Spire’s use of the mark, there is a high likelihood that the
public will be confused as to the source and origin of its telecommunications goods/services with
those of the gas companies; confused customers will be inconvenienced and waste time and have a
negative experience by accidentally calling Spire’s customer service when they intend to call Cellular
South; and unique dangers to the public exist as such confused customers will call Cellular South to
report natural gas leaks/explosions. (Doc. 30 at 30; TR II 233; TR 62-63 (Hayes)).
Upon consideration, Cellular South has not provided sufficient evidence that entry of an
injunction will serve the public interest (that the public’s right not to be deceived or confused
customer is at risk by Spire’s use of the mark). At best, the evidence before the Court indicates that
the public interest factor is neutral.
Based upon the foregoing, and while close, Cellular South has not met its high burden11 such
that it is ORDERED that Cellular South, Inc.’s Rule 65 motion for preliminary injunction (Docs. 29,
30) is DENIED; and Cellular South’s Alabama common law unfair competition claim is
DISMISSED as a matter of law.
DONE and ORDERED this the 11th day of September 2017.
/s/ Kristi K. DuBose
KRISTI K. DUBOSE
CHIEF UNITED STATES DISTRICT JUDGE
11 See, e.g., Revette v. International Assn. of Bridge, Structural and Ornamental Iron Workers, 740 F.2d 892,
893 (11th Cir. 1984) (“Although there may be merit to these contentions, they present a sufficiently close question so that
the district court could probably have gone either way in its decision to a preliminary injunction. In such a case, there can
be no abuse of discretion”); Stockstill v. City of Picayune, 2017 WL 3037431, *10-11 (S.D. Miss. Jul. 18, 2017) (“But at
the end of the day, a close question, in the Court's view, means that the plaintiff has not shown a substantial likelihood of
success on the merits, which is the high burden he must carry at a preliminary injunction hearing. And, of course, the
Court expresses no view about what the ultimate resolution of the case might be”); Acumen Enterp. v. Morgan, 2011 WL
1227781, *2 (N.D. Tex Mar. 29, 2011) (“Although the parties appear to have similar appreciation for the term, that
appreciation does not necessarily mean that Defendant was ‘cybersquatting’ on a domain name that Plaintiff would
eventually seek to purchase. This question is close enough that a jury could rule for or against Plaintiff. Thus, Plaintiff has
not even shown that more likely than not a jury would rule in its favor, much less that a substantial likelihood of success
on the merits exists”); Gordon v. Holder, 721 F.3d 638, 645 at note 4 (D.C. Cir. 2013) (“we merely conclude that the
questions they raise are too close to call at this stage”); The Sandusky Cty. Dem. Party v. Blackwell, 340 F.Supp.2d 810,
813 (N.D. Ohio 2004) “(the question of likelihood of success is somewhat closer. Reasonable judges might reach
different conclusions on this question....The mere possibility of a different result on a close question is not, however, a
substantial likelihood of success on the merits”); Adkins v. Jones, 2007 WL 397044 (W.D. Mich. Feb. 1, 2007)
(“Plaintiff's ‘initial burden’ in demonstrating entitlement to preliminary injunctive relief is a showing of a strong or
substantial likelihood of success on the merits… plaintiff has not established a substantial likelihood of success on his
claim…this issue presents a close question, and plaintiff may ultimately succeed on this issue. However, plaintiff has not
established a substantial likelihood of success at this time”).
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