Vacation Rental Partners, LLC v. Vacaystay Connect, LLC

Filing 56

MEMORANDUM Opinion and Order. Signed by the Honorable Manish S. Shah on 3/28/2017: Vacation Rental Partner, LLC's motion for summary judgment, 35 , is granted. A status hearing is set for April 12, 2017 at 9:30 a.m. [For further detail see attached order.] Notices mailed. (psm, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
VACATION RENTAL PARTNERS, LLC,
Plaintiff,

No. 15 CV 10656

v.
VACAYSTAY CONNECT, LLC,

Judge Manish S. Shah

Defendant.
MEMORANDUM OPINION AND ORDER
Vacation Rental Partners, LLC, alleges trademark infringement and related
claims against VacayStay Connect, LLC, arising out of the companies’ respective
VAYSTAYS and VACAYSTAY marks. Vacation Rental moves for summary
judgment on all of its claims, except for Count III (a claim under the AntiCybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)). For the following
reasons, the motion is granted.
I.

Legal Standards
Summary judgment is appropriate if the movant shows that there is no

genuine dispute as to any material fact and the movant is entitled to judgment as a
matter of law. Spurling v. C & M Fine Pack, Inc., 739 F.3d 1055, 1060 (7th Cir.
2014); Fed. R. Civ. P. 56(a). A genuine dispute as to any material fact exists if “the
evidence is such that a reasonable jury could return a verdict for the nonmoving
party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Justifiable
inferences are drawn in the nonmovant’s favor, id. at 255, and the party seeking

summary judgment has the burden of establishing that there is no genuine dispute
as to any material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
II.

Background1
Gameday Housing, LLC was formed in 2006. [50-1] ¶ 2.2 Its business

involved the online advertisement and booking of vacation and temporary rental
properties. [50-1] ¶ 3. Initially, Gameday focused on properties near college
campuses on weekends coinciding with major sporting events but eventually
expanded its business to include other types of vacation rentals. [50-1] ¶ 3.
Gameday intended to maintain its www.gamedayhousing.com website but also
launch a new website at www.vaystays.com for luxury vacation rentals; it acquired
www.vaystays.com in December 2013. [44] ¶ 11; [50-1] ¶¶ 3, 9. On February 12,
2014, Gameday filed a federal intent-to-use trademark application, Serial No.
Bracketed numbers are entries on the district court docket. VacayStay’s response to
Vacation Rental’s Local Rule 56.1 statement of facts is [44]. Vacation Rental’s response to
VacayStay’s statement of additional facts is [50]. When disputing Vacation Rental’s Rule
56.1 statements, VacayStay’s responses are not concise, as required by Local Rule 56.1, but
in many instances comprise several pages. Instead of briefly stating the point of
disagreement and citing to controverting evidence, VacayStay extensively quotes the
evidence cited by Vacation Rental—often not objecting to the contents of that evidence but
instead merely pointing out that Vacation Rental’s statements summarize it. VacayStay
also repeatedly objects that Vacation Rental’s statements of facts contain “multiple distinct
statements such that a response to the whole is not possible.” Vacation Rental’s statements,
however, are not lengthy or convoluted. Such nit-picking obstructs the goal of Local Rule
56.1, which is to permit the district court to identify at summary judgment which material
facts are in dispute. The parties’ Rule 56.1 statements and responses are viewed with this
principle in mind. Unless otherwise noted, the facts related below are undisputed or are
considered undisputed because the responding party did not properly controvert the factual
statement as required by local rule.
1

[50-1] is a declaration filed in support of Vacation Rental’s reply brief, addressing the
circumstances of Gameday’s assignment of its intent-to-use application for the VAYSTAYS
mark. Vacation Rental contends that it was unaware that the validity of the assignment
was in question until VacayStay’s response brief. VacayStay did not object to this filing or
request a sur-reply, and the declaration is considered with the rest of the factual record.

2

2

86/192,191, for the VAYSTAYS mark. [44] ¶ 12. The following month, the owners of
Gameday formed a new entity, named Vacation Rental Partners, LLC. [50-1] ¶ 4.
Gameday assigned its intent-to-use application to Vacation Rental, effective May 6,
2014 (although the assignment was not executed until September 11, 2014). [44]
¶ 12; [50-1] ¶¶ 3–5. Through a Contribution and Exchange Agreement dated May 7,
2014, Gameday’s owners exchanged their interest in Gameday for interest in
Vacation Rental, and Gameday was dissolved shortly thereafter. [50-1] ¶¶ 5–6.3
Vacation Rental also kept Gameday’s business location and employees. [50-1] ¶¶ 5–
7.
Vacation Rental filed a statement of use on October 28, 2014, and on
February 24, 2015, the application issued as U.S. Registration No. 4,693,380. [44]
¶ 14.4 Among other things, the registration covers real estate listings and rental
services for short-term and vacation property rentals. [44] ¶ 16. In connection with
the VAYSTAYS mark, Vacation Rental serves a variety of property suppliers, from
individual property owners to large hotel companies (such as Wyndham Hotels &
Resorts). [44] ¶ 18. Through www.vaystays.com, Vacation Rental offers these
VacayStay argues that no “asset purchase” agreement was produced in discovery but
Vacation Rental asserts that the Contribution and Exchange Agreement was produced and
shows the rollover of Gameday into Vacation Rental. There is no dispute as to the
authenticity of the agreement, and, as VacayStay concedes, the record also includes
testimony from the companies’ owners as to the transfer of assets from Gameday to
Vacation Rental.
3

Originally, this October filing stated that the date of first use in commerce was June 2014.
In June 2016, Vacation Rental filed a Section 7 request to amend the date of its first use in
commerce to October 28, 2014, although Vacation Rental cites evidence that it began using
the VAYSTAYS mark for consumer bookings in June 2014. [43-2]; [44] ¶ 13; [50] ¶ 10.
VacayStay mentions the amendment but does not argue that Vacation Rental’s registration
was abandoned or fraudulently obtained.
4

3

properties to consumers for direct bookings. Vacation Rental also advertises and
distributes properties through third-party websites such as www.homeaway.com
and www.vrbo.com. [44] ¶¶ 17–18. When a consumer books a Vacation Rental
property through a third-party website (e.g., Homeaway or VRBO), Vacation Rental
handles the transaction and uses the VAYSTAYS mark in connection with the
booking. [44] ¶¶ 17, 49. The VAYSTAYS mark appears on Vacation Rental’s
property listings, including listings on third-party websites, and Vacation Rental
also uses its mark in communications with property managers and owners, and at
trade shows. [44] ¶¶ 17–18.
Defendant VacayStay Connect, LLC, also provides vacation rental services to
property suppliers (including property owners, property managers, and resorts) and
consumers who book the properties. [44] ¶ 35. The company was founded in
December 2011 as Vacation Storebuilder, LLC. [44] ¶ 20. A few months prior to its
founding, in September 2011, Vacation Storebuilder registered www.vacaystay.com.
[44] ¶ 29. The website was placed under password protection because Vacation
Storebuilder was focusing on property rental distribution through third-party
channels, rather than using its own site to directly interact with consumers. [44]
¶¶ 29–34. The parties dispute whether www.vacaystay.com has been consistently
password protected or if it was ever open to the public. For example, some
employees of Interval International had password access to the website, and there
are screenshots indicating VacayStay may have made it available to the public for a
brief period after Vacation Rental filed suit. [44] ¶¶ 29–34.

4

On September 30, 2014, Vacation Storebuilder changed its name to
VacayStay Connect. [44] ¶ 21. In the weeks leading up to the name change,
Vacation Storebuilder also registered two new websites: www.vacaystayconnect.com
and www.vacaystaystorebuilder.com. [44] ¶ 36. VacayStay still operates these
websites, and both use logos prominently featuring the VACAYSTAY mark. [44]
¶¶ 37–38.
VacayStay distributes rental properties through Homeaway and other thirdparties, working with property suppliers (individual homeowners, property
managers, innkeepers, resorts, and property management companies) and
consumers who book properties. [44] ¶¶ 35, 39, 44. VacayStay uses its VACAYSTAY
mark while listing properties on third-party sites, including Homeaway and VRBO,
and uses the VACAYSTAY mark while handling consumers’ bookings. [44] ¶¶ 41,
43. VacayStay also works with Wyndham Hotels & Resorts. [44] ¶ 44. Both
Vacation Rental and VacayStay compete for similar vacation rental inventory and
corporate suppliers (such as Wyndham). [44] ¶¶ 44, 48.
Around 2012 and 2013, when VacayStay was still operating under the name
Vacation Storebuilder, it contracted with Interval International to develop a
distribution platform for Interval’s inventory of vacation rental properties. [44]
¶¶ 22–23. The first end-to-end booking on this platform occurred in May 2014,
although the parties dispute whether the booking was merely a test booking for
Interval or whether it involved an actual consumer reservation. [44] ¶ 24.
(VacayStay does not argue or cite evidence to show that this May 2014 booking used

5

the VACAYSTAY mark. The email confirmation shows “Vacation Storebuilder,” not
VACAYSTAY.) By September 16, 2014, however, VacayStay had a consumer
reservation for a vacation rental, with the booking confirmation generated by
[e-mail]. [44] ¶ 24; [50] ¶ 12.5
Vacation Rental first learned of www.vacaystayconnect.com in August 2015.
[44] ¶ 19. At an industry exhibition a few months later, a potential third-party
distributor confused Vacation Rental’s representative and marketing materials
(bearing the VAYSTAYS mark) with VacayStay’s representative and materials
(bearing the VACAYSTAY mark), which he had seen earlier in the day. [44] ¶ 47.
By November 2015, Vacation Rental sued VacayStay for trademark infringement.
[1]; [21]; [44] ¶ 45. VacayStay brought counterclaims for trademark infringement of
its VACAYSTAY mark and for cancellation of Vacation Rental’s mark. [22]. These
counterclaims were dismissed without prejudice because VacayStay failed to allege
any commercial bookings prior to February 12, 2014 (Vacation Rental’s priority
date)—at most, VacayStay’s counterclaim alleged pre-marketing maneuvers
insufficient to establish rights in a trademark. [32]. VacayStay did not move for
leave to replead and never pled any affirmative defenses. After discovery, Vacation
Rental moved for summary judgment on all claims except for Count III (a claim
under the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)). [35].
These May and September 2014 bookings were submitted to the court under seal as
“PX10” and “PX17,” respectively, but were not filed on the docket. Any document previously
submitted under seal and referenced in this opinion shall be unsealed (and filed on the
docket). The parties shall file a joint statement listing the applicable docket entries, and the
Clerk’s Office will then be directed to unseal those entries on the court’s CM/ECF system.
See City of Greenville, Ill. v. Syngenta Crop Prot., LLC, 764 F.3d 695, 697 (7th Cir. 2014).
5

6

III.

Analysis
Vacation Rental seeks summary judgment on its claims against VacayStay

for trademark infringement under the Lanham Act (15 U.S.C. § 1114(1)(a)), unfair
competition under the Lanham Act (15 U.S.C. § 1125(a)(1)(A)), violating the Illinois
Uniform Deceptive Trade Practices Act (815 ILCS 510/1 et seq.), and violating the
Illinois Consumer Fraud and Deceptive Business Practices Act (815 ILCS 505/1 et
seq.). To prevail on either claim under the Lanham Act, a plaintiff must show (1)
that its mark is protectable, and (2) that the defendant’s use of that mark is likely
to cause confusion among consumers. CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d
660, 673 (7th Cir. 2001). The state law claims are also analyzed under the likelihood
of confusion standard and mirror the infringement analysis. See AHP Subsidiary
Holding Co. v. Stuart Hale Co., 1 F.3d 611, 619 (7th Cir. 1993); Aliano v. Ferriss,
2013 IL App (1st) 120242, ¶ 23; Chicago’s Pizza, Inc. v. Chicago’s Pizza Franchise
Ltd. USA, 384 Ill.App.3d 849, 865 (1st Dist. 2008).
Vacation Rental maintains that its federal trademark registration is prima
facie evidence of its mark’s validity and that the factual record demonstrates
likelihood of confusion. VacayStay responds that Vacation Rental’s trademark
registration is void because the intent-to-use application was invalidly assigned and
because VacayStay has priority of use. VacayStay also contends that there is a
genuine factual dispute as to likelihood of confusion.
A.

Vacation Rental’s VAYSTAYS Mark Is Protectable

Whether a party has established protectable rights in a trademark is a caseby-case determination under the totality of the circumstances. Johnny Blastoff, Inc.
7

v. Los Angeles Rams Football Co., 188 F.3d 427, 433 (7th Cir. 1999). A party may
acquire a protectable right in a trademark only through use of the mark in
connection with its product or service. Id. Federal registration of a mark is prima
facie evidence of the validity and ownership of the mark, as of the application date.
15 U.S.C. § 1057(b); 15 U.S.C. § 1115(a); 2 McCarthy on Trademarks & Unfair
Competition § 16:19 (4th ed.). Vacation Rental rests on its application and
registration as prima facie evidence of its mark protectability and priority as of
February 12, 2014. (VacayStay does not dispute that February 12, 2014 is Vacation
Rental’s nationwide priority date for the VAYSTAYS mark. [44] ¶ 15.) But
“[r]egistration itself establishes only a rebuttable presumption of use as of the filing
date,” and a trademark application is always subject to previously established
common law trademark rights of another party. Zazu Designs v. L’Oreal, S.A., 979
F.2d 499, 504 (7th Cir. 1992). An alleged infringer has the burden to rebut the
presumption of a registered mark’s validity. Publications Int’l, Ltd. v. Landoll, Inc.,
164 F.3d 337, 340 (7th Cir. 1998).
1.

VacayStay’s Unpled Affirmative Defense Is Not Waived

As a threshold issue, Vacation Rental contends that VacayStay waived its
affirmative defense to the validity of the VAYSTAYS trademark registration by
failing to plead it as an affirmative defense and instead waiting until summary
judgment to attack its validity. VacayStay argues that: (1) VacayStay used its mark
in commerce in May and September 2014, before Vacation Rental’s first use in
commerce in October 2014, and (2) Gameday invalidly assigned the intent-to-use
application to Vacation Rental, in violation of 15 U.S.C. § 1060(a)(1).
8

Federal Rule of Civil Procedure 8(c) requires affirmative defenses to be pled.
Because federal registration is prima facie evidence of the validity of the
VAYSTAYS mark and ownership, challenging that validity is an affirmative matter
outside the scope of Vacation Rental’s prima facie case—it is VacayStay’s burden to
prove as an affirmative defense or counterclaim. See, e.g., Nasalok Coating Corp. v.
Nylok Corp., 522 F.3d 1320, 1326 (Fed. Cir. 2008) (“Invalidity of the mark was an
affirmative defense that could have been raised, not part of the plaintiff’s cause of
action [for trademark infringement].”); Publications Int’l, 164 F.3d at 340
(“[R]egistration creates a presumption of validity, implying that the defendant has
the laboring oar on all issues relating to validity.”).
While a defendant’s failure to plead an affirmative defense may waive it,
DeValk Lincoln Mercury, Inc. v. Ford Motor Co., 811 F.2d 326, 334 (7th Cir. 1987),
courts find waiver of a defense “only if the plaintiff is harmed by the defendant’s
delay in asserting it.” Matthews v. Wisconsin Energy Corp., Inc., 642 F.3d 565, 570
(7th Cir. 2011) (marks omitted). Vacation Rental argues that it was harmed by the
delay because, during discovery, it was unaware that these arguments would be
raised. VacayStay’s current priority argument is different than the priority
argument formerly asserted in its counterclaims. But Vacation Rental was
sufficiently aware of possible priority disputes and had the opportunity to prepare
for this issue during discovery.
The argument that Vacation Rental’s trademark was invalidly assigned,
however, was not pled or alluded to in any way until VacayStay’s summary

9

judgment response brief. This argument should have been pled as an affirmative
defense. But Vacation Rental was able to sufficiently confront the issue in its reply
brief (and by submitting an additional declaration) and therefore was not prejudiced
by VacayStay’s delay in raising it. Although VacayStay’s decision to spring its
affirmative defense in its response brief was ill-advised, the validity of Vacation
Rental’s trademark registration will be addressed on its merits. To defeat summary
judgment on the protectability of the VAYSTAYS mark based on its affirmative
defense, VacayStay must come forward with evidence showing the existence of a
genuine factual dispute that, if successful, would invalidate Vacation Rental’s
registration.
2.

Vacation Rental Has Priority of Use

VacayStay has not shown a genuine issue of material fact to rebut Vacation
Rental’s priority of use. VacayStay asserts that it used its VACAYSTAY mark in
commerce in May 2014, five months prior to Vacation Rental’s first use of the
VAYSTAYS mark in commerce. There are two problems with this argument. First,
by filing its intent-to-use application and obtaining federal registration, Vacation
Rental established constructive use of the trademark nationwide, 15 U.S.C.
§ 1057(b), meaning that as of the date of the application (February 12, 2014),
Vacation Rental “establishe[d] a priority date with the same legal effect as the
earliest actual use of a trademark at common law.” 2 McCarthy on Trademarks &
Unfair Competition § 16:17 (4th ed.). Notably, VacayStay does not dispute that
Vacation Rental’s priority date is February 12, 2014, [44] ¶ 15, and makes no
argument that it used the VACAYSTAY mark in commerce prior to that date.
10

Indeed, VacayStay’s counterclaim was dismissed because it lacked allegations that
the mark was used in commerce before Vacation Rental’s priority date.
“Registration itself establishes only a rebuttable presumption of use as of the
filing date,” Zazu Designs, 979 F.2d at 504, but VacayStay has not shown that it can
rebut this presumption by showing sufficient use in commerce prior to either
Vacation Rental’s filing date or statement of use. VacayStay’s use of its
unregistered mark occurred after Vacation Rental’s filing date and, prior to October
2014, amounted to token use at that. See id. (token use of an unregistered mark is
not enough to acquire rights). Viewing the record in VacayStay’s favor, it completed
its first end-to-end booking on the Interval platform in May 2014 and completed its
first consumer reservation in mid-September 2014. The September booking used the
VACAYSTAY mark, but VacayStay has not shown or argued that the May booking
actually involved use of the VACAYSTAY mark (as opposed to its old Vacation
Storebuilder name). Even assuming both bookings were sales using the
VACAYSTAY mark, they are insufficient to establish priority over Vacation Rental.
Two bookings (four months apart) are simply not enough to link the VACAYSTAY
mark with VacayStay’s services in the minds of consumers, nor put other businesses
on notice of VacayStay’s unregistered mark. See, e.g., Zazu Designs, 979 F.2d at 503
(a few shampoo bottles sold over the counter and mailed out of state were
insufficient to establish priority for unregistered mark).6

Beginning in March 2014 and extending into 2015, VacayStay also attended trade shows
to market its services under the VACAYSTAY mark, acquired several large resort rental
distribution accounts, and spent considerable sums advertising under the VACAYSTAY
6

11

3.

Gameday’s Assignment Was Valid

VacayStay also argues that Vacation Rental’s registration is void because the
intent-to-use application for the VAYSTAYS mark was invalidly assigned, in
violation of 15 U.S.C. § 1060(a)(1). An anti-trafficking provision in the Lanham Act,
§ 1060(a)(1) specifies that, prior to the filing of a statement of use, an intent-to-use
application can only be assigned “to a successor to the business of the applicant, or
portion thereof, to which the mark pertains, if that business is ongoing and
existing.” As described in the legislative history, this provision was designed “to
prohibit assignments of intent-to-use applications unless the application is assigned
with the business associated with the intended use of the mark.” S. Rep. No. 100515, at 25 (1988); see 3 McCarthy on Trademarks & Unfair Competition § 18:13 (4th
ed.) (“If there is an ‘ongoing and existing’ business, [§ 1060(a)(1)] permits even an
intent to use application to be sold, but only to one who also buys the whole
‘business’ associated with that mark.”). An invalid assignment voids the underlying
application and resulting registration. Sebastian Brown Prods. LLC v. Muzooka
Inc., No. 15-CV-01720-LHK, 2016 WL 949004, at *8 (N.D. Cal. Mar. 14, 2016).
Section 1060(a)(1) requires, then, that the assignee (Vacation Rental) be a
successor of an ongoing and existing business (Gameday) to which the mark
pertains. VacayStay argues that that Vacation Rental is not a successor to

mark. [44] ¶ 52. But VacayStay does not argue that these marketing efforts are material
facts disputing Vacation Rental’s priority, see [43] at 8–9, and traditionally, advertising a
mark prior to the actual product sales or rendering of services is not “use in commerce”
sufficient to establish priority. 2 McCarthy on Trademarks and Unfair Competition § 16:12
(4th ed.).

12

Gameday, that “ongoing and existing business” requires the assignor to have
actually used the mark in commerce, and that Vacation Rental was not a “ongoing
and existing” business before the assignment. These arguments are not persuasive.
Based on the undisputed record, Vacation Rental is a successor to the entire
business of Gameday, which was ongoing and existing at the time of the
assignment. The entirety of Gameday’s business was rolled into Vacation Rental—
its owners, assets, business location, and employees. See, e.g., Marshak v. Green,
746 F.2d 927, 930 (2d Cir. 1984) (factors showing transfer of business and goodwill
with trademark include “continuity of management” and assignee producing
product or providing services substantially similar to that of the assignor); Money
Store v. Harriscorp Fin., Inc., 689 F.2d 666, 676 (7th Cir. 1982) (transfer of assets or
assignee’s provision of similar products or services shows transfer of goodwill with
mark). Although VacayStay quibbles that the assignment does not mention the
transfer of other assets or goodwill, VacayStay does not identify any authority
requiring the transfer of assets or goodwill in the assignment agreement itself—
instead, cases look to the overall facts and circumstances of the assignment. Here,
although executed several months later, the assignment was backdated to coincide
with Gameday’s rollover into to Vacation Rental, after which Gameday was
dissolved.
VacayStay also argues that the assignment was invalid because Gameday
was not an “ongoing and existing” business at the time of transfer. VacayStay
interprets “ongoing and existing” business to mean that the business used the mark

13

in commerce. Some courts have interpreted § 1060(a)(1) this strictly. See Greene v.
Ab Coaster Holdings, Inc., No. 2:10-CV-234, 2012 WL 4442749, at *9–10; Sebastian
Brown, 2016 WL 949004, at *10–12. In Railrunner N.A., Inc. v. New Mexico
Department of Transportation, Opposition No. 91172851, 2008 WL 8973295
(T.T.A.B. July 17, 2008), the Trademark Trial and Appeal Board voided an intentto-use application that was assigned before a statement of use was filed. The
Board’s decision rested on the applicant’s failure to provide any explanation of the
facts and circumstances of the assignment to show transfer of any assets other than
the application itself. Id. at *6. But the Board also mentioned in passing that
because § 1060(a)(1) requires intent-to-use applications to be transferred (if prior to
a statement of use) with at least that part of the applicant’s business to which the
mark pertains, such a transfer “is only permissible if the applicant actually has
such a business, i.e., if the applicant is already providing the goods or services
recited in the application.” Id. at *2.
However, only a few months after deciding Railrunner, the Board clarified in
Exel Oyj v. D’Ascoli, Opposition No. 91160397, 2008 WL 4354180 (T.T.A.B. Sept. 19,
2008) (non-precedential), that requiring an intent-to-use applicant to be using the
mark in at the time of the assignment would be reading § 1060(a)(1) “in a manner
that would be inconsistent with the intent behind” allowing trademark applications
based on an intent-to-use. Id. at *7. The Board stated:
The statute cannot be read to require, as a precondition for assignment
of an intent to use application, that there be an ongoing and existing
business, or portion thereof, for each of the goods in an intent to use
application. Rather, we consider the statute as allowing for assignment
14

of intent to use applications when (i) the overall business of the
applicant was transferred, or (ii) if the intent to use applicant
remained an “ongoing and existing” business after the assignment, the
portion thereof to which the mark pertains was transferred. The
statute must allow for the transfer of a[n intent to use] application
claiming a bona fide intention to use the mark for goods which are not
yet in production or which may be in the planning stage, and which
may represent an extension of an applicant’s business. The statute
does not require that the mark ultimately must be used on each of the
goods identified in the application that has been transferred lest the
assignment, ex post facto, be rendered invalid. The anti-trafficking
provision of the statute merely requires that if the application is
transferred prior to use of the mark, and the transferor remains an
ongoing and existing business after the transfer, that the transfer be
accompanied by that portion of the transferor’s business to which the
mark pertained, i.e., that portion of the business that would have used
the mark had there been no transfer.
Id. This reasoning makes sense. Section 1060(a)(1) was designed to allow
assignment of intent-to-use applications before actual use—the provision prohibits
assignments unless the application is “assigned with the business associated with
the intended use of the mark.” S. Rep. No. 100-515, at 25 (1988) (emphasis added).
As explained in Exel, the point of the statute was to allow for the transfer of an
intent-to-use application “claiming a bona fide intention to use the mark for goods
which are not yet in production or which may be in the planning stage, and which
may represent an extension of an applicant’s business.” 2008 WL 4354180, at *7
(emphasis added). Prior to filing a statement of use, an applicant may not have
actually used the mark in commerce yet, but it may have goodwill or existing
business tied to the mark (e.g., relationships based on planned use of the mark)—
that is enough to ensure that a trademark has no existence separate from the
product or service it symbolizes. See S. Rep. No. 100-515, at 31 (1988) (“[Section
1060(a)(1)] is consistent with the principle that a mark may be validly assigned only
15

with the business or goodwill attached to the use of the mark.”). Vacation Rental
has shown that there is no genuine dispute of material fact that, as of the
assignment, it was the successor to Gameday’s ongoing and existing business
pertaining to the VAYSTAYS mark. By that point in time, Gameday had registered
www.vaystays.com, had hired several employees (including a web developer and
salespeople to market the VAYSTAYS brand), and was attempting to get property
listings to market as vacation rentals. [43-1] at 5–6; [44] ¶ 11.
VacayStay also argues that “ongoing and existing” business requires not only
that Gameday—the applicant—had some business, but that Vacation Rental itself
was an ongoing and existing business prior to the assignment. This argument
misreads § 1060(a)(1) and its associated case law, which make clear that the
ongoing and existing business must pertain to the mark and be transferred with the
application because it is the manifestation of the goodwill associated with the
intended use of the mark. It is irrelevant that Vacation Rental was not formed until
the mark was transferred, as long as it received the existing business to which the
mark pertained. Also, the testimony VacayStay cites to show that Vacation Rental
was not yet in business indicates merely that, in May 2014, Vacation Rental did not
yet have an actual customer booking for a vacation rental property. See [43-1] at 5–
6. But actual use in commerce is not required under § 1060(a)(1).
VacayStay has not shown a genuine issue of material fact to rebut the
presumption that Vacation Rental’s VAYSTAYS mark is validly registered and
therefore protectable. The remaining question for summary judgment is whether

16

there is a genuine issue of material fact over a likelihood of confusion between the
VAYSTAYS and VACAYSTAY marks.
B.

There Is A Likelihood of Confusion

Ordinarily, “likelihood of confusion” is question of fact, but it “may be
resolved on summary judgment if the evidence is so one-sided that there can be no
doubt about how the question should be answered.” CAE, 267 F.3d at 677 (marks
omitted). The likelihood of confusion is determined by a balancing test that looks to
seven factors: (1) similarity between the marks in appearance and suggestion; (2)
similarity of the products; (3) the area and manner of concurrent use; (4) the degree
of care likely to be exercised by consumers; (5) the strength of the plaintiff’s mark;
(6) whether actual confusion exists; and (7) whether the defendant intended to
“palm off” his product as that of the plaintiff. Id. at 678. No single factor is
dispositive, but the three most important factors are: the similarity of the marks,
the defendant’s (bad faith) intent, and evidence of actual confusion. Id.
Vacation Rental argues that VacayStay has already admitted the likelihood
of confusion, through a pre-litigation desist letter and its (now-dismissed)
counterclaims. The pre-litigation desist letter from VacayStay stated that “it would
appear from [Vacation Rental’s] letter . . . that Vacation Rental Partners’ use of the
mark ‘Vaystays’ is causing substantial confusion in the market place, and violates
the common law trademarks rights of [VacayStay],” and the letter demanded that
Vacation Rental immediately cease and desist from using VAYSTAYS, “as
continued use thereof violates [VacayStay’s] trademark rights and will damage
[VacayStay’s] brand, image and reputation.” [38-8] at 18. VacayStay’s infringement
17

counterclaims similarly stated that Vacation Rental’s use of the VAYSTAYS mark
“is likely to deceive and cause confusion, mistake and deception among consumers
or potential consumers as to the source or origin of [VacayStay’s] services and the
sponsorship or endorsement of those services by VacayStay.” [22] at 26, ¶ 19.
Viewing all inferences in VacayStay’s favor, as the nonmovant, VacayStay’s
counterclaim is not an admission of the likelihood of confusion. Looking at both
VacayStay’s counterclaim and its answer to Vacation Rental’s complaint, VacayStay
was pleading likelihood of confusion in the alternative. See, e.g., Adler v. Pataki, 185
F.3d 35, 41 (2d Cir. 1999) (Rule 8 “offers sufficient latitude to construe separate
allegations in a complaint as alternative theories, at least when drawing all
inferences in favor of the nonmoving party.”); Douglas Equip., Inc. v. Mack Trucks,
Inc., 471 F.2d 222, 224 (7th Cir. 1972) (assertion in third-party complaint was an
alternative pleading, not an admission); Continental Ins. Co. v. Sherman, 439 F.2d
1294, 1298 (5th Cir. 1971) (“[O]ne of two inconsistent pleas cannot be used as
evidence in the trial of the other.”); 30B Fed. Practice & Procedure Evid. § 7026
(2014 ed.) (“[A]n admission in one alternative in the pleadings in the case does not
nullify a denial in another alternative as a matter of pleading” because “the purpose
of alternative pleadings is to enable a party to meet the uncertainties of proof, [so]
policy considerations demand that alternative pleadings not be admitted . . . as an
admission of a party-opponent.”).
The admissibility of VacayStay’s letter is a closer call. A cease and desist
letter may be excluded from the protections of Federal Rule of Evidence 408 if it

18

does not contain any suggestion of compromise. See, e.g., Sunstar, Inc. v. AlbertoCulver Co., No. 01 C 0736, 2004 WL 1899927, at *22 (N.D. Ill. Aug. 23, 2004). The
majority of VacayStay’s letter does not suggest compromise and instead disputes
Vacation Rental’s priority, contends that VacayStay has priority in its mark, and
demands that Vacation Rental stop use of the VAYSTAYS mark. But the conclusion
of the letter states that VacayStay was interested in resolution “without litigation”
and refers to hearing from Vacation Rental soon, [38-8] at 18, which could be read
as an invitation to settle the parties’ competing infringement positions. It is a close
question, but the purpose of Rule 408 is “to encourage settlements which would be
discouraged if such evidence were admissible.” Fed. R. Evid. 408, Advisory Comm.
Note. VacayStay’s letter has enough to suggest an interest in settlement so as to be
inadmissible under Rule 408.
Even without VacayStay’s admission of the likelihood of confusion, the
factual record in this case is so one-sided that summary judgment for Vacation
Rental is appropriate.
1.

VacayStay’s Intent

Vacation Rental argues that VacayStay’s bad faith intent is evidenced
through its attempt to drive Vacation Rental from the market through threats and
expansion—for example by threatening suit and, after Vacation Rental filed suit, by
unveiling www.vacaystay.com to compete with www.vaystays.com. There is no
evidence, however, that VacayStay was aware of Vacation Rental’s VAYSTAYS
mark when it created its own VACAYSTAY mark around the same time. Although
VacayStay’s vacation rental business under the VACAYSTAY may have largely
19

expanded after Vacation Rental’s VAYSTAYS trademark registration, Vacation
Rental’s examples do not necessarily show that VacayStay intended to palm off its
vacation rental properties and services as Vacation Rental’s properties and services,
instead of merely aggressively protecting its own unregistered mark. This factor
does not weigh heavily in Vacation Rental’s favor. But, although proof of intent is a
“particularly important” factor in the likelihood-of-confusion analysis, AutoZone,
Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008), it “is not necessary to prove
trademark infringement.” CAE, 267 F.3d at 686.
2.

Strength of the VAYSTAYS Mark

Another weak factor for Vacation Rental is the strength of the VAYSTAYS
mark. “The ‘strength’ of a trademark refers to the mark’s distinctiveness, meaning
its propensity to identify the products or services sold as emanating from a
particular source.” CAE, 267 F.3d at 684. “The stronger the mark, the more likely it
is that encroachment on it will produce confusion.” AutoZone, 543 F.3d at 933. A
mark’s strength ordinarily corresponds to its economic and marketing strength. Id.
Vacation Rental offers little evidence on the economic or marketing strength of its
mark, other than to point out that its mark strongly suggests the idea of a place to
stay on vacation, that VacayStay could only identify one other company using a
similar mark (VAYCAYHERO), and that Vacation Rental has successfully attracted
inventory from corporate clients such as Wyndham Hotels & Resorts. In absence of
evidence of Vacation Rental’s economic and marketing strength, and in the face of
Vacation Rental’s concession that VacayStay is the larger company, this is not a
factor in Vacation Rental’s favor.
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3.

Consumers’ Degree of Care

The remaining factors, however, weigh in favor of finding a likelihood of
confusion. There is an increased likelihood of confusion when consumers are less
likely to exercise a degree of care and discrimination in their purchases. CAE, 267
F.3d at 683. The more widely accessible and inexpensive the products or services,
the more likely consumers are to use a lesser degree of care in discerning between
marks. Id. While not necessarily inexpensive, the vacation rental market is largely
conducted over the internet, [44] ¶ 8, meaning that it is widely accessible. See CAE,
267 F.3d at 683 (products offered on internet were widely accessible). And it is not
uncommon for the same vacation property to be listed on multiple websites
simultaneously, [44] ¶ 8, which could also increase the likelihood of confusion about
the source of the vacation rental properties. See, e.g., Fuji Photo Film Co. v.
Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 596 (5th Cir. 1985) (lack of
customer care in product purchase coupled with extensive advertising increased
likelihood of confusion). VacayStay argues that its “real” clients are sophisticated
corporate property suppliers—not consumers who book the advertised properties—
who are more likely to exercise a high degree of care. But, as detailed further below,
Vacation Rental has identified instances where sophisticated corporate clients
confused the two marks, suggesting that customer sophistication has little weight in
this case. See, e.g., CAE, 267 F.3d at 683 (customers’ technical sophistication about
their industry does not necessarily equate to trademark sophistication).

21

4.

Similarity of Services

A likelihood of confusion may exist even if the parties are not in direct
competition or if their products and services are not identical. CAE, 267 F.3d at 679
“Closely related products are those that would reasonably be thought by the buying
public to come from the same source, or thought to be affiliated with, connected
with, or sponsored by, the trademark owner.” Id. (marks omitted); see AutoZone,
543 F.3d at 931 (“[O]ur inquiry in comparing the two products is not whether they
are interchangeable, but whether the parties products are the kind the public might
very well attribute to a single source (the plaintiff).”) (marks omitted). Here, it is
undisputed that both parties offer temporary vacation or property rental services,
first by obtaining suitable properties from suppliers (e.g., property owners,
corporate clients) and then using the internet to offer the properties to consumers
for booking. VacayStay argues that it does business with commercial and corporate
entities, who it considers its true clients—as opposed to property renters, who
admittedly pay VacayStay to book the properties—but Vacation Rental also has
corporate clients as property suppliers. Even if VacayStay focuses more on
corporate clients, the parties’ services and clients sufficiently overlap to suggest a
likelihood of confusion. See CAE, 267 F.3d at 678–79 (affirming summary judgment
for trademark registrant where some of the infringer’s products and services
overlapped with the registrant’s).
5.

Similarity of Concurrent Use

The concurrent-use factor assesses “whether there is a relationship in use,
promotion, distribution, or sales between the goods or services of the parties.” CAE,
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267 F.3d at 681. Courts “look to whether the parties use the same channels of
commerce, target the same general audience, or use similar marketing procedures.”
Id. at 682. Here, Vacation Rental and VacayStay use the same channels of
commerce, distributing (i.e., listing) vacation rental properties through the internet.
Both use the third-party websites VRBO and Homeaway (among others), although
Vacation Rental also offers direct bookings through its website. The companies use
their marks in a similar manner—identifying and promoting vacation and
temporary property rentals. They also target “the same general audience,” id.,
including the same property suppliers (such as Wyndham Hotels & Resorts) and the
same consumer market for vacation rental bookings on the internet. The companies
even attend the same trade shows. VacayStay does not dispute that the parties both
advertise properties through third-party websites (e.g., Homeaway). To dispute use,
VacayStay submitted a declaration from its chief operating officer to show that
Vacation Rental distributes property listings through a third-party, LeisureLink,
which is a known competitor of VacayStay. [43-3] at ¶¶ 6–7. VacayStay contends
that this shows that Vacation Rental uses a different channel than VacayStay to
advertise rental properties. But it actually confirms that the parties target the same
competitive market, even if they sometimes use different third-parties to list
properties.
6.

Similarity of Marks

In the likelihood of confusion analysis, two of the three most important
factors—similarity of the marks and actual confusion—weigh most heavily in favor
of finding a likelihood of confusion in this case. Marks are viewed as a whole and
23

are compared “in light of what happens in the marketplace and not merely by
looking at the two marks side-by-side.” AutoZone, 543 F.3d at 929–30. “[T]he test is
not whether the public would confuse the marks, but whether the viewer of an
accused mark would be likely to associate the product or service with which it is
connected with the source of products or services with which an earlier mark is
connected.” Id. at 930. Viewed from this perspective, the VAYSTAYS and
VACAYSTAY marks are similar.
Both companies use their respective marks in the text of their website
addresses (www.vaystays.com, www.vacaystay.com, www.vacaystayconnect.com,
www.vacaystaystorebuilder.com), to identify their vacation rental businesses to
property suppliers (including at trade shows and as property account names for
activation by corporate suppliers), and to identify their companies’ vacation rental
services and affiliated property listings to consumers (on distributor websites and
during the booking process). The only difference between the text of the two marks
is the extra syllable “ca” and the plural versus singular form. For trademarks, a
difference in plural versus singular form is not material. See, e.g., Mushroom
Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47–48 (2d Cir. 1978); Virginia
Polytechnic Inst. & State Univ. v. Hokie Real Estate, Inc., No. 7:10CV00466, 2011
WL 926862, at *6 (W.D. Va. Mar. 15, 2011). Both parties’ marks share the term
“stay,” preceded by “vay” or “vacay,” which appear to be shortened variants of
“vacation.” These terms imply an association with the temporary and vacation
rental nature of both companies’ services. VacayStay argues that Vacation Rental

24

did not submit any consumer evidence to support the similarity between “vay” and
“vacay” and their association with the idea of “vacation,” but those observations are
apparent on the face of the terms. VacayStay makes no argument or suggest
another reasonable inference from those terms. The only reasonable inference is
that the marks were designed for consumers to associate VAYSTAYS and
VACAYSTAY marks with a place to “stay” on “vacation.”
VacayStay also contends that the marks, when displayed on the internet, are
visually dissimilar. VacayStay does not, however, describe the visual dissimilarity
between the marks or expand on this argument, and it is not the court’s
responsibility to fill in the gaps in VacayStay’s legal arguments. A review of the
examples of the parties’ logos, as attached to the complaint and in the summary
judgment record, show that in some instances the marks are visually similar—e.g.,
all caps, in a sans-serif font. Compare [21-2] at 2; with [21-4] at 2. In other
instances, the marks differ slightly. For example, VAYSTAYS is sometimes depicted
capitalized, in black, accompanied by the small symbol of a lion’s head, while
VACAYSTAY is in letter case (“VacayStay”) in green and/or blue. In some instances,
“VacayStay” is accompanied by another word in blue (such as CONNECT,
DISTRIBUTION, or STOREBUILDER), and/or a stacked-diamond symbol or a
dotted line overhead. Compare [38-2] at 6–13; with [21-4] at 2; [21-6] at 2; [21-8] at
2–3; [22-3] at 2–5; [38-4] at 4–8; [38-8] at 22–30. While there are visual differences
between certain depictions of the marks, none of the differences serve to distinguish
the marks from each other and they are similar enough (and similarly placed on

25

websites, as a header or small icon near the property listing) as to weigh in favor of
likelihood of confusion.
7.

Actual Confusion

“[E]vidence of actual confusion, if available, is entitled to substantial weight
in the likelihood of confusion analysis,” and even just “[o]ne instance of actual
confusion has been deemed sufficient to weigh in favor of finding a likelihood of
confusion.” CAE, 267 F.3d at 685–86. Vacation Rental has submitted employees’
declarations detailing interactions with customers who confused Vacation Rental
and VacayStay’s marks and services. VacayStay objects to this evidence as hearsay.
These statements are not hearsay because they are “not offered to prove the truth of
the customer’s assertion that there is a connection or affiliation between the parties,
but only to prove the confused state of mind of the customer.” 4 McCarthy on
Trademarks & Unfair Competition § 23:15 (4th ed.) (citing Fun-Damental Too, Ltd.
v. Gemmy Indus. Corp., 111 F.3d 993, 1003–04 (2d Cir. 1997)); see International
Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1089 (7th Cir.
1988) (“[T]he letter, phone calls, and inquiries received by the plaintiff, as well as
the testimony of plaintiff’s employees” were not hearsay and “constitute[d]
probative evidence of a likelihood of confusion.”).
Vacation Rental’s employees have documented several instances where
customers or prospective customers (including property suppliers and third-party
distribution channels) confused the companies’ marks. In October 2015, at an
industry exhibition, the chief operations officer of a prospective third-party
distributor website confused Vacation Rental’s representative (displaying the
26

VAYSTAYS mark) with the VacayStay representative who he had met earlier in the
day. [44] ¶ 47. In June 2016, a rental director at Wyndham Hotels & Resorts
intended to activate a property for Vacation Rental but accidentally activated it for
VacayStay. When the mistake was brought to her attention, the director
acknowledged her confusion between VAYSTAYS and VACAYSTAY. [44] ¶ 46.
VacayStay argues that the director’s mistake could have been merely a
typographical error instead of “actual” confusion. But the point is that the director
admitted that she accidentally activated a property listing for VacayStay when she
had intended to activate it for Vacation Rental. And that same month, another
Wyndham director called Vacation Rental to clarify whether he should activate a
property for Vacation Rental under the VAYSTAYS account or the VACAYSTAY
account. [44] ¶ 46.
“[T]here can be no more positive or substantial proof of the likelihood of
confusion than proof of actual confusion,” and therefore “while very little proof of
actual confusion would be necessary to prove the likelihood of confusion, an almost
overwhelming amount of proof would be necessary to refute such proof.”
International Kennel, 846 F.2d at 1089. VacayStay has not come forward with any
evidence to refute evidence of actual confusion related to the source of the rival
VAYSTAYS and VACAYSTAY marks, as used in connection with the companies’
vacation rental businesses. By showing actual confusion, this factor overwhelmingly
establishes the likelihood of confusion.

27

The unrebutted evidence of customers’ actual confusion between the
VAYSTAYS and VACAYSTAY marks, combined with the similarity of the parties’
marks, services, clients, and market use so strongly show likelihood of confusion
that the circumstances warrant summary judgment. See CAE, 267 F.3d at 686–87.
C.

A Permanent Injunction Shall Issue

With its motion for summary judgment, Vacation Rental requests a
permanent injunction enjoining VacayStay from using the VACAYSTAY mark. The
rival mark VACAYSTAY infringes on Vacation Rental’s registered VAYSTAYS
mark, and 15 U.S.C. § 1116(a) gives courts the power to grant injunctive relief,
“according to the principles of equity,” to remedy Lanham Act violations.7 The
traditional equitable considerations for a permanent injunction are: (1) the plaintiff
has suffered an irreparably injury; (2) remedies at law (e.g., money damages) are
inadequate; (3) the balance of harms weighs in favor of an injunction; (4) the public
interest would not be disserved by a permanent injunction. eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006). Traditionally, “[a] showing of a
likelihood of confusion alone will suffice to support a grant of injunctive relief,”
Schutt Mfg. Co. v. Riddell, Inc., 673 F.2d 202, 206 (7th Cir. 1982), but the Seventh
Circuit has not addressed whether that still rings true in trademark cases after
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

The Illinois Deceptive Trade Practices Act also permits injunctive relief. 815 ILCS 510/3.
But under the Illinois Consumer Fraud and Deceptive Business Practices Act, only the
Illinois attorney general may seek an injunction against a defendant engaged in an
unlawful practice. Greenberg v. United Airlines, 206 Ill.App.3d 40, 45 (1st Dist. 1990).
7

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A permanent injunction is warranted. Without a permanent injunction,
Vacation Rental will be irreparably injured and will not have an adequate remedy
at law. Although Vacation Rental has not shown that it has lost any property
supplier customers or consumer bookings as a result of VacayStay’s rival mark, that
is not required and, indeed, Vacation Rental has shown instances of actual
confusion nearly resulting in property suppliers and potential clients placing
business intended for Vacation Rental with VacayStay. The damage to the goodwill
and prominence of the VAYSTAYS mark through public confusion with the
VACAYSTAY mark “is, in itself, an irreparable injury” that cannot be addressed by
mere money damages. Helene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d
1325, 1332 (7th Cir. 1977). “The 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,” Processed Plastic Co. v. Warner Communications,
675 F.2d 852, 858 (7th Cir. 1982), and “the owner of a mark is damaged by a later
use of a similar mark which place[s] the owner’s reputation beyond its control,
though no loss in business is shown.” International Kennel, 846 F.2d at 1091.
Although an injured plaintiff may be entitled to recover damages, proving
monetary loss due to infringement is “notoriously difficult.” Omega Importing Corp.
v. Petri-Kine Camera Co., 451 F.2d 1190, 1195 (2d Cir. 1971); see 5 McCarthy on
Trademarks & Unfair Competition § 30:2 (4th ed.) (“Injury to the trademark
owner’s reputation and good will as well as to consumer expectations is difficult, if
not impossible, to adequately compensate for after the fact.”). And money damages

29

would not adequately remedy loss of future sales from VacayStay’s continued use of
an infringing mark. See, e.g., A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc.,
166 F.3d 197, 208 (3d Cir. 1999) (permitting defendant to continue using its
infringing mark, in combination with disclaimer and royalty payment for future lost
sales, was an inappropriate remedy). Other equitable considerations also support
injunctive relief. While VacayStay will certainly be burdened by discontinuing use
of the VACAYSTAY mark, the balance of harms favors Vacation Rental, the priority
registrant with its superior rights to the mark. And the public interest is best
served by preventing consumer confusion caused by use of an infringing
trademark.8
Vacation Rental should submit a proposed injunction order in advance of the
next status hearing, and VacayStay will have an opportunity to object to its terms.
IV.

Conclusion
Vacation Rental Partner, LLC’s motion for summary judgment, [35], is

granted. A status hearing is set for April 12, 2017 at 9:30 a.m.
ENTER:
___________________________
Manish S. Shah
United States District Judge
Date: 3/28/27

VacayStay did not offer any arguments against injunctive relief, other than against
summary judgment on Vacation Rental’s claims.

8

30