CFA INSTITUTE v. ANDRE

Filing 13

MEMORANDUM OPINION regarding the defendant's 7 Motion to Dismiss. Signed by Judge Beryl A. Howell on November 25, 2014. (lcbah1)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
CFA INSTITUTE,
Plaintiff,

Civil Action No. 14-320 (BAH)

v.

Judge Beryl A. Howell

ANTOINE ANDRE,
Defendant.

MEMORANDUM OPINION
The plaintiff, CFA Institute, filed this trademark infringement suit against the defendant,
Antoine Andre, alleging that the defendant is improperly using the plaintiff’s marks in violation
of the Lanham Act, 15 U.S.C. § 1051 et seq., as well as Federal and District of Columbia unfair
competition law. See Compl. ¶¶ 3, ECF No. 1. Pending before the Court is the motion of the
defendant, who is proceeding pro se, to dismiss the plaintiff’s Complaint “for lack of
jurisdiction, improper venue, insufficient service of process, or failure to state a claim.” Def.’s
Mot. Dismiss (“Def.’s Mot.”) at 1, ECF No. 7. For the reasons set forth below, the defendant’s
motion is denied.
I.

BACKGROUND
The plaintiff is “an internationally renowned global, not-for-profit association of

investment professionals.” Compl. ¶ 8. Among the plaintiff’s enterprises is a certification
service, under which the plaintiff “certifies the financial analysis services of others.” Id. ¶ 11.
The plaintiff “owns twelve United States trademark registrations . . . with a date of first use at
least as early as 1962.” Id. ¶ 10. Among those marks are “CFA,” “Chartered Financial Analyst,”
“CFA Institute,” and variations on those marks. See id. ¶ 11.
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The mark “CFA Chartered Financial Analyst” was registered with the United States
Patent and Trademark Office on December 17, 2002 and was deemed incontestable on
September 3, 2008 for “financial analysis services.” Compl. ¶ 17; id. Ex. E. (United States
Trademark Registration No. 2661114) at 1, ECF No. 1-5. The mark “CFA” is registered for
“association services, namely, the promotion of interest and professional standards in the field of
financial analysts,” as well as for “educational services” and for “printed publications in the field
of financial analysis and in support of the interests of financial analysts,” and is also
incontestable. See Compl. ¶¶ 13–15; id. Exs. A–C (United States Trademark Registration Nos.
935504; 2493899; 2495459). Since these marks are “incontestable,” the plaintiff has the right to
“exclusive use of the” plaintiff’s marks “throughout the United States in connection with”
financial analysis services. See Compl. ¶ 27; see also 15 U.S.C. § 1115(b).
The plaintiff’s members “are awarded the right to use the CFA Certification Mark” and
“the professional designation ‘Chartered Financial Analyst,’ or ‘CFA’” after, inter alia, amassing
a set amount of professional experience and passing “a series of three rigorous, six-hour
examinations.” Compl. ¶¶ 30–31. The plaintiff asserts that its marks “hold great value for [the
plaintiff’s] charterholders,” and that its marks are recognized “as the definitive standard for
measuring competence and integrity in the fields of portfolio management and investment
analysis,” id. ¶¶ 35, 37.
The plaintiff alleges that the defendant, who is not certified by the plaintiff, “adopted and
began using marks that are identical to or substantially indistinguishable from” three of the
plaintiff’s marks: CFA, CFA Institute, and Chartered Financial Analyst. Compl. ¶¶ 39–40.
Specifically, the plaintiff alleges that the defendant “deliberately and willfully holds himself out
as ‘Tony Andre, CFA’ . . . to suggest falsely that he has been certified by CFA Institute, is a

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CFA charterholder, and is entitled to use” the plaintiff’s marks. Id. ¶ 45. The plaintiff further
alleges that (1) the defendant’s “[s]ervices are in direct competition with” the plaintiff’s services,
id.¶ 41; (2) the defendant’s use of the plaintiff’s marks “is identical to and confusingly similar
to” the plaintiff’s marks “in appearance, sound, meaning, and commercial impression,” id.¶ 42;
and (3) the defendant’s use of the plaintiff’s marks “trades off the goodwill of” the plaintiff’s
marks, id. ¶ 43. The plaintiff asserts that “[c]onsumers are likely to believe mistakenly that
Defendant successfully completed the rigorous CFA Program and adheres to the CFA Institute
Code of Ethics and Standards of Professional Conduct,” which, the plaintiff contends, “is likely
to harm consumers.” Id. ¶ 49. The plaintiff asserts that it has requested the defendant cease
using its marks, but such requests have been rebuffed. See id. ¶ 47.
The defendant responded to the complaint by filing his one page “Motion to Dismiss
Under Rule 12(b) for Lack of Jurisdiction, Improper Venue, Insufficient Service of Process, or
Failure to State a Claim.” Def.’s Mot. at 1. The plaintiff filed a timely opposition, see Pl.’s.
Opp’n Def.’s Mot. (“Pl.’s Opp’n”) at 3, ECF No. 12, and the defendant did not reply.
II.

LEGAL STANDARD
Although the caption of the defendant’s motion suggests that the defendant is moving for

dismissal under Federal Rules of Civil Procedure 12(b)(1) for lack of subject matter jurisdiction;
12(b)(3) for improper venue; 12(b)(5) for insufficient service of process; and 12(b)(6) for failure
to state a claim upon which relief could be granted, the substance of the defendant’s motion
indicates that he is moving to dismiss the complaint under 12(b)(1) and 12(b)(6) only. See Defs.’
Mot. at 1. Consequently, the standards for dismissal on those two grounds are reviewed below.
Castro v. United States, 540 U.S. 375, 381–82 (2003) (noting courts retain power to reclassify
pro se litigant’s motion “to create a better correspondence between the substance of a pro se

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motion’s claim and its underlying legal basis”); see also Haines v. Kerner, 404 U.S. 519, 520
(1972) (holding that allegations from pro se litigants are “[held] to less stringent standards than
formal pleadings drafted by lawyers.”); Tate v. Dist. of Columbia, 627 F.3d 904, 912 (D.C. Cir.
2010).
A.

Federal Rule of Civil Procedure 12(b)(1)

"'Federal courts are courts of limited jurisdiction,' possessing 'only that power authorized
by Constitution and statute.'" Gunn v. Minton, 133 S. Ct. 1059 (2013) (quoting Kokkonen v.
Guardian Life Ins. Co. of Am., 511 U.S. 375, 377 (1994)). Indeed, federal courts are "forbidden .
. . from acting beyond our authority," NetworkIP, LLC v. FCC, 548 F.3d 116, 120 (D.C. Cir.
2008), and, therefore, have "an affirmative obligation 'to consider whether the constitutional and
statutory authority exist for us to hear each dispute.'" James Madison Ltd. by Hecht v. Ludwig, 82
F.3d 1085, 1092 (D.C. Cir. 1996) (quoting Herbert v. National Academy of Sciences, 974 F.2d
192, 196 (D.C. Cir. 1992)). Absent subject matter jurisdiction over a case, the court must dismiss
it. Arbaugh v. Y&H Corp., 546 U.S. 500, 506-07 (2006); FED. R. CIV. P. 12(h)(3).
When considering a motion to dismiss under Rule 12(b)(1), the court must accept as true
all uncontroverted material factual allegations contained in the complaint and "’construe the
complaint liberally, granting plaintiff the benefit of all inferences that can be derived from the
facts alleged’ and upon such facts determine jurisdictional questions." Am. Nat'l Ins. Co. v.
FDIC, 642 F.3d 1137, 1139 (D.C. Cir. 2011) (quoting Thomas v. Principi, 394 F.3d 970, 972
(D.C. Cir. 2005) (quoting Barr v. Clinton, 370 F.3d 1196, 1199 (D.C. Cir. 2004))). The court
need not accept inferences drawn by the plaintiff, however, if those inferences are unsupported
by facts alleged in the complaint or amount merely to legal conclusions. See Browning v.
Clinton, 292 F.3d 235, 242 (D.C. Cir. 2002). Moreover, in evaluating subject matter jurisdiction,
the court, when necessary, may "’undertake an independent investigation to assure itself of its
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own subject matter jurisdiction,’" Settles v. United States Parole Comm'n, 429 F.3d 1098, 11071108 (D.C. Cir. 2005)(quoting Haase v. Sessions, 835 F.2d 902, 908 (D.C. Cir. 1987), and
consider facts developed in the record beyond the complaint, id. See also Herbert v. National
Academy of Sciences, 974 F.2d 192, 197 (D.C. Cir. 1992)(in disposing of motion to dismiss for
lack of subject matter jurisdiction, “where necessary, the court may consider the complaint
supplemented by undisputed facts evidenced in the record, or the complaint supplemented by
undisputed facts plus the court's resolution of disputed facts.”); Alliance for Democracy v. FEC,
362 F. Supp. 2d 138, 142 (D.D.C. 2005). The burden of establishing any jurisdictional facts to
support the exercise of the subject matter jurisdiction rests on the plaintiff. See Hertz Corp. v.
Friend, 559 U.S. 77, 96-97 (2010); Thomson v. Gaskill, 315 U.S. 442, 446 (1942); Moms Against
Mercury v. FDA, 483 F.3d 824, 828 (D.C. Cir. 2007).
B.

Federal Rule of Civil Procedure 12(b)(6)
Federal Rule of Civil Procedure 8(a)(2) requires that a complaint contain “a short

and plain statement of the claim showing that the pleader is entitled to relief,” to encourage
brevity and, at the same time, “give the defendant fair notice of what the … claim is and the
grounds upon which it rests.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007) (ellipses
in original; internal quotations and citations omitted); Tellabs, Inc. v. Makor Issues & Rights,
Ltd., 551 U.S. 308, 319 (2007). The Supreme Court has cautioned that although “Rule 8 marks
a notable and generous departure from the hyper-technical, code-pleading regime of a prior era,
[] it does not unlock the doors of discovery for a plaintiff armed with nothing more than
conclusions.” Ashcroft v. Iqbal, 556 U.S. 662, 678-79 (2009). To survive a motion to dismiss
under Federal Rule of Civil Procedure 12(b)(6), the “complaint must contain sufficient factual
matter, accepted as true, to state a claim to relief that is plausible on its face.” Wood v. Moss,
134 S. Ct. 2056, 2067 (2014) (quoting Iqbal, 556 U.S. at 678). A claim is facially plausible
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when the plaintiff pleads factual content that is more than “‘merely consistent with’ a
defendant’s liability,” but allows the court to draw the reasonable inference that the defendant is
liable for the misconduct alleged,” id. at 678 (citing Twombly, 550 U.S. at 556); see also Rudder
v. Williams, 666 F.3d 790, 794 (D.C. Cir. 2012). Although “detailed factual allegations” are not
required to withstand a Rule 12(b)(6) motion, a complaint must offer “more than labels and
conclusions” or “formulaic recitation of the elements of a cause of action” to provide “grounds”
of “entitle[ment] to relief,” Twombly, 550 U.S. at 555 (alteration in original), and “nudge[ ] [the]
claims across the line from conceivable to plausible,” id. at 570. Thus, “a complaint [does not]
suffice if it tenders ‘naked assertion[s]’ devoid of ‘further factual enhancement.’” Iqbal, 556
U.S. at 678 (quoting Twombly, 550 U.S. at 557). In considering a motion to dismiss for failure to
plead a claim on which relief can be granted, the court must consider the complaint in its
entirety, accepting all factual allegations in the complaint as true, even if doubtful in fact.
Twombly at 555; Sissel v. United States HHS, 2014 U.S. App. LEXIS 14397 (D.C. Cir. 2014) (in
considering Rule 12(b)(6) motion, the “court assumes the truth of all well-pleaded factual
allegations in the complaint and construes reasonable inferences from those allegations in the
plaintiff's favor, but is not required to accept the plaintiff's legal conclusions as correct”) (internal
quotations and citations omitted). In addition, courts may “ordinarily examine” other sources
“when ruling on Rule 12(b)(6) motions to dismiss, in particular, documents incorporated the
complaint by reference, and matters of which a court may take judicial notice.” Tellabs, Inc.,
551 U.S. 322 (citing Leatherman v. Tarrant County Narcotics Intelligence and Coordination
Unit, 507 U.S. 163, 164 (1993)); see also English v. District of Columbia, 717 F.3d 968, 971
(D.C. Cir. 2013).

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III.

DISCUSSION
The defendant contends that the plaintiff’s complaint should be dismissed for five

reasons, namely, because: (1) the amount in controversy is less than $75,000; (2) the defendant
did not use the mark “CFA Institute;” (3) the defendant “provided the plaintiff with the meaning
behind his CFA marks being related to: Certified Field Associate;” (4) the defendant “is not in
the business of Financial Services, Investment Management, and/or any form of
Securities/Services;” and (5) the defendant has “rights to use the CFA marks which the defendant
has been using for over 10 years within the Staffing industry as a Certified Field Associate.” See
Def.’s Mot. at 1. Even under the liberal pleading standard applied to pro se litigants, these
assertions are unpersuasive. Each ground is addressed below.
A.

The Amount In Controversy

In challenging the plaintiff’s claims for lack of jurisdiction, the defendant confuses the
statutory basis under which the plaintiff contends this Court has jurisdiction. While the
defendant challenges the complaint under 28 U.S.C. § 1332(a), the diversity jurisdiction statute
which requires the amount in controversy to exceed $75,000, the instant suit is brought pursuant
to the Federal Lanham Act, 15 U.S.C. § 1051 et seq., which is a “law[] . . . of the United States,”
over which “[t]he district courts . . . have original jurisdiction.” 28 U.S.C. § 1331. Therefore,
the Court has subject matter jurisdiction over the plaintiff’s Lanham Act claims under 28 U.S.C.
§1331, and the plaintiff’s state law claims under 28 U.S.C. § 1367(a), since the plaintiff’s claims
under the common law of the District of Columbia “are so related to claims in the action within
[the Court’s] original jurisdiction that they form part of the same case or controversy.”

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B.

The Plaintiff Has Pleaded That The Defendant Used The Plaintiff’s Mark

The plaintiff states throughout its complaint that the defendant is using several of the
plaintiff’s incontestable marks, including “CFA” and “Chartered Financial Analyst.” Compl. ¶¶
39, 45. Taking the allegations in the Complaint as true, which the Court must on a motion to
dismiss, the plaintiff has alleged adequately that the defendant is using the plaintiff’s marks in
violation of the Lanham Act and unfair competition law by “deliberately and willfully hold[ing]
himself out as ‘Tony Andre, CFA,’ in online profiles on third-party websites,” and by listing
“CFA, Chartered Financial Analyst” as one of his “Awards/Honors” in those profiles. Compl. ¶
45. If proven true, such actions would constitute trademark infringement under 15 U.S.C. § 1114
because it could constitute a “use in commerce . . . of a registered mark [that] . . . is likely to
cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Therefore, the
defendant’s contention is unavailing at the motion to dismiss stage, though it is conceivable that,
through discovery, he may be able to prove that he does not, in fact, use the plaintiff’s marks.
C.

The Remainder Of The Defendant’s Contentions Are Contradicted By The
Complaint

The defendant asserts that he uses the mark “CFA” in relation to the term “Certified Field
Associate,” and, as such, he is not infringing on the plaintiff’s mark. See Def.’s Mot. at 1. This
is directly contradicted by the plaintiff’s complaint, which the Court must accept as true for the
purposes of a motion to dismiss, since the plaintiff alleges that the defendant uses the term
“CFA, Chartered Financial Analyst” in his online profiles, screenshots of which are attached to
the Complaint. Compl. ¶ 45; id. Exs. M–P, ECF Nos. 1-13–1-16. For the purposes of a motion
to dismiss, the plaintiff need only “show (1) that it owns a valid trademark; (2) that its trademark
is distinctive or has acquired a secondary meaning, and (3) that there is a substantial likelihood
of confusion between the plaintiffs’ mark and the alleged infringer’s mark.” Globalaw Ltd. v.
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Carmon & Carmon Law Office, 452 F. Supp. 2d 1, 26–27 (D.D.C. 2006) (collecting cases)
(internal quotation marks and citation omitted). Here, the plaintiff has done so by asserting that
it owns the CFA, Chartered Financial Analyst, and CFA Institute marks, Compl. ¶ 11; that those
marks are uncontestable and, therefore, by definition distinctive or have acquired a secondary
meaning, see id. ¶¶ 13–25; see also 15 U.S.C. § 1115(b); and that there is a likelihood of
confusion between the plaintiff’s marks and the defendant’s use of the marks, see id. at 44–45,
49–51. Whether the defendant ascribes a different meaning to his use of the marks, whether and
for how long the defendant has used the marks, and whether the defendant is in the business of
financial services are factual disputes that are inappropriate to resolve on a motion to dismiss.
Consequently, the plaintiff has adequately set forth a complaint that, if proven true, would state a
claim upon which relief could be granted.
IV.

CONCLUSION
For the foregoing reasons, the defendant’s Motion to Dismiss is denied. The parties

shall, consistent with the Court’s Standing Order ¶ 3, ECF No. 3, file jointly a Meet and Confer
Report pursuant to Local Civil Rule 16.3(b), by December 9, 2014.
An Order consistent with this Memorandum Opinion will issue contemporaneously.
Digitally signed by Beryl A. Howell
DN: cn=Beryl A. Howell, o=District
Court for the District of Columbia,
ou=District Court Judge,
email=[e-mail]
ourts.gov, c=US
Date: 2014.11.25 18:22:29 -05'00'

Date: November 25, 2014

__________________________
BERYL A. HOWELL
United States District Judge

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