Action Ink, Inc. v. Anheuser-Busch Inc.

Filing 146

ORDER AND REASONS granting defendant's motion 112 for summary judgment on all of plaintiff's claims and on defendant's counterclaim. The Court DENIES defendant's request for attorneys' fees.. Signed by Chief Judge Sarah S. Vance on 7/17/13. (jjs, )

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
ACTION INK, INC.

CIVIL ACTION

VERSUS

NO: 12-141

ANHEUSER-BUSCH, INC.

SECTION: R

ORDER AND REASONS
Before the Court is defendant Anheuser-Busch's motion for
summary judgment on its counterclaim and plaintiff's claims. For
the following reasons, the Court GRANTS defendant's motion for
summary judgment on all of plaintiff's claims and on defendant's
counterclaim. The Court DENIES defendant's request for attorneys'
fees.
I.

BACKGROUND
This trademark infringement and unfair competition case

arises out of a dispute between plaintiff Action Ink, Inc., a
sports marketing firm, and defendant Anheuser-Busch, Inc. In
1984, plaintiff filed an application to register the mark "THE
ULTIMATE FAN" ("the Mark") and submitted with its application a
flyer explaining the concept of holding competitions among sports
fans.1 After requiring several changes to plaintiff's
application, on July 9, 1985, the United States Patent and Trade
1

R. Doc. 112-5 at 114-121.

Office (PTO) issued a registration for the Mark for the stated
purpose of "promoting the goods and/or services of others by
conducting a contest at sporting events."2
Plaintiff's president, Michael Eckstein, stated in an
affidavit that plaintiff worked with several NBA teams between
1983 and 1987 to hold THE ULTIMATE FAN contests and promotions.3
Plaintiff attempted to conduct more promotions with NBA teams,
meeting with product sponsors and commissioning a model mock
poster, but these efforts were unsuccessful.4 During this period,
the New Orleans Breakers of the United States Football League
also held a THE ULTIMATE FAN competition, and plaintiff tried to
work with the team on additional promotions.5 The first contact
between plaintiff and defendant occurred in 1988, when Eckstein
wrote to defendant requesting that it stop using the phrase "THE
ULTIMATE CUBS FAN BUD MAN SEARCH" on infringement grounds.6
Counsel for the Chicago Cubs disputed the claim, arguing that the
phrases were different and that the reference to "ultimate" was
merely descriptive.7

2

Id. at 113.

3

R. Doc. 128-6 at 3.

4

Id. at 3-4.

5

Id. at 4; Pl. Ex. 12.

6

R. Doc. 128-6 at 5.

7

Pl. Ex. 15; Def. Ex. 49.
2

In June 1991, Eckstein submitted an affidavit to the PTO, in
which he stated that the Mark had been in continuous use in
interstate commerce for five consecutive years from the date of
registration.8 At the expiration of the trademark in 2005,
plaintiff applied for renewal of the Mark, which was granted.9
In 1995, plaintiff learned that Major League Baseball (MLB)
was considering holding an "Ultimate Fan" contest. After
plaintiff sent a cease and desist letter, the MLB agreed to add
language to its signs indicating that the phrase "Ultimate Fan"
was being used with plaintiff's permission.10 Over the past
twenty years, plaintiff has contacted numerous other entities
about possible infringement of the Mark, sending over 60 cease
and desist letters between 2006 and 2012.11 Some organizations
agreed to stop using the phrase,12 and two companies, GEICO
Insurance and Louisiana Lottery, settled with plaintiff in
response to cease and desist letters.13 In addition, after
plaintiff notified Tulane University of its alleged infringement
in 2004 and 2009, Tulane contributed tickets to a charity as

8

R. Doc. 112-5 at 137.

9

Id. at 143-49.

10

Pl. Ex. 25.

11

R. Doc. 128-6 at 13; Def. Ex. 3, p. 181.

12

R. Doc. 128-6 at 13.

13

Id. at 18.
3

payment and discontinued its promotion.14 On April 26, 2013,
Tulane signed a licensing agreement with plaintiff, under which
Tulane was allowed to use the Mark between January 1, 2013 and
June 30, 2014 in exchange for the donation to charity of 300
tickets to Tulane athletic events.15 No other entities have
entered into licensing agreements with plaintiff for use of the
Mark.16
In 2009, plaintiff contacted three NFL teams about
promotional contests that it felt infringed its trademark.17 Upon
hearing that defendant was responsible for two of the promotions,
plaintiff sent a cease and desist letter to defendant in
September 2009 related to its promotion entitled "Bud Light©/
Washington Redskins Ultimate Fan Sweepstakes."18 Defendant
responded and requested more information, but no further action
resulted.19 In 2011, plaintiff became aware of defendant's use of
the phrase "Ultimate Fan Experience" during a Bud Light promotion
advertised in supermarkets and in commercials aired during NFL

14

Id. at 15.

15

Pl. Ex. 51.

16

R. Doc. 128-6.

17

Id. at 15.

18

Pl. Ex. 52.

19

Id.; R. Doc. 128-6 at 16.
4

games.20 In November 2011, plaintiff sent a cease and desist
letter to defendant, to which defendant responded that it would
not cease its activities since it was not infringing plaintiff's
mark.21
On January 19, 2012, plaintiff sued defendant for trademark
infringement and false designation of origin under the Lanham Act
and violation of state law. Defendant filed a counterclaim,
seeking cancellation of plaintiff's federal registration of the
Mark.22 Defendant then filed a motion for summary judgment on its
counterclaim and all of plaintiff's claims, which is now before
the Court.23
Plaintiff also filed a separate suit on January 6, 2012,
against the New York Jets and Arkadium, Inc. for trademark
infringement based on the defendants' registration of the
"Ultimate Fan" mark in connection with a computer game software
program ("the Jets case").24 On May 30, 2013, Judge Milazzo
issued an Order granting summary judgment for the defendants in
Action Ink, Inc. v. New York Jets, LLC at al25 ("the Jets

20

R. Docs. 128-6 at 16; 112-5 at 105.

21

R. Doc. 128-6 at 17.

22

R. Doc. 10.

23

R. Doc. 125.

24

Civ. No. 2:12-cv-00046, R. Doc. 1.

25

Civ. No. 2:12-cv-00046, R. Doc. 128.
5

Order"). Judge Milazzo held that Action Ink had abandoned the
Mark. She thus dismissed plaintiff's claims against the New York
Jets and Arkadium, Inc. for federal trademark infringement, false
designation of origin, and common law trademark infringement and
unfair competition, since each of the claims required plaintiff
to possess a valid trademark.26
After the Jets Order was issued, the parties to this case
submitted briefing to the Court discussing its effect on
Anheuser-Busch's pending motion for summary judgment. The Court
has reviewed these submissions, along with the other documents in
the summary judgment record, and rules as follows.
II.

STANDARD
Summary judgment is warranted when “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.” Fed. R. Civ.
P. 56(c)(2); see also Celotex Corp. v. Catrett, 477 U.S. 317,
322-23 (1986); Little v. Liquid Air Corp., 37 F.3d 1069, 1075
(5th Cir. 1994). When assessing whether a dispute as to any
material fact exists, the Court considers “all of the evidence in
the record but refrains from making credibility determinations or
weighing the evidence.” Delta & Pine Land Co. v. Nationwide
Agribusiness Ins. Co., 530 F.3d 395, 398 (5th Cir. 2008). All

26

Id. at 27-28.
6

reasonable inferences are drawn in favor of the nonmoving party,
but “unsupported allegations or affidavits setting forth
‘ultimate or conclusory facts and conclusions of law’ are
insufficient to either support or defeat a motion for summary
judgment.” Galindo v. Precision Am. Corp., 754 F.2d 1212, 1216
(5th Cir. 1985); Little, 37 F.3d at 1075.
If the dispositive issue is one on which the moving party
will bear the burden of proof at trial, the moving party “must
come forward with evidence which would ‘entitle it to a directed
verdict if the evidence went uncontroverted at trial.’” Int’l
Shortstop, Inc. v. Rally’s, Inc., 939 F.2d 1257, 1263-64 (5th
Cir. 1991). The nonmoving party can then defeat the motion by
either countering with sufficient evidence of its own, or
“showing that the moving party’s evidence is so sheer that it may
not persuade the reasonable fact-finder to return a verdict in
favor of the moving party.” Id. at 1265.
If the dispositive issue is one on which the nonmoving party
will bear the burden of proof at trial, the moving party may
satisfy its burden by merely pointing out that the evidence in
the record is insufficient with respect to an essential element
of the nonmoving party's claim. See Celotex, 477 U.S. at 325.
The burden then shifts to the nonmoving party, who must, by
submitting or referring to evidence, set out specific facts
showing that a genuine issue exists. See id. at 324. The

7

nonmovant may not rest upon the pleadings, but must identify
specific facts that establish a genuine issue for trial. See,
e.g., id. at 325; Little, 37 F.3d at 1075 ("Rule 56 'mandates the
entry of summary judgment, after adequate time for discovery and
upon motion, against a party who fails to make a showing
sufficient to establish the existence of an element essential to
that party's case, and on which that party will bear the burden
of proof at trial.'" (quoting Celotex, 477 U.S. at 332)).
III. DISCUSSION
A. Trademark Infringement Claim
The Lanham Act provides a cause of action for trademark
infringement against a person who “uses (1) any reproduction,
counterfeit, copy[,] or colorable imitation of a mark; (2)
without the registrant's consent; (3) in commerce; (4) in
connection with the sale, offering for sale, distribution[,] or
advertising of any goods; (5) where such use is likely to cause
confusion, or to cause mistake or to deceive.” Am. Rice, Inc. v.
Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)
(alterations in original).
Defendant contends that plaintiff has failed to establish
the elements of a trademark infringement claim under the Lanham
Act. To maintain its claim, plaintiff must demonstrate that the
mark at issue is protectable, that plaintiff is the senior user
of the mark, and that there is a likelihood of confusion between
8

its mark and defendant's mark. Union Nat'l Bank of Tex., Laredo,
Tex., v. Union Nat'l Bank of Tex., Austin, Tex., 909 F.2d 839,
844 (5th Cir. 1990). Defendant argues that (1) plaintiff did not
engage in the requisite use of the Mark; (2) even if it did use
the Mark at one point, plaintiff has since abandoned it; (3) the
Mark is descriptive and thus does not merit protection; and (4)
plaintiff has failed to put forth evidence of a likelihood of
confusion. Defendant further argues that the Jets Order
collaterally estops plaintiff from arguing that the Mark has not
been abandoned.27
The Court holds that summary judgment for defendant on
plaintiff's trademark infringement claim is appropriate for two
independent reasons: (1) plaintiff has abandoned the Mark; and
(2) plaintiff has failed to show a likelihood of confusion
between its purported mark and defendant's mark.
1. Abandonment of the Mark
It is uncontroverted that plaintiff obtained a federal
registration for THE ULTIMATE FAN in 1985 and renewed it in 2005.
Under 15 U.S.C. § 1115(a), registration of a mark is "prima facie
evidence of the validity of the registered mark . . ., of the
registrant's ownership of the mark, and of the registrant's
exclusive right to use the registered mark in commerce on or in

27

See R. Doc. 139.
9

connection with the goods or services specified in the
registration . . . ."
Yet, "[o]wnership of trademarks is established by use, not
by registration." Union Nat'l Bank of Tex., Laredo, Tex., 909
F.2d at 842; see also 15 U.S.C. § 1127 (defining a trademark as a
"word, name, symbol, or device . . . used by a person, or which a
person has a bona fide intention to use in commerce," and in turn
defining "use in commerce" as "the bona fide use of a mark in the
ordinary course of trade, and not made merely to reserve a right
in a mark" (emphasis added)). And under the Lanham Act, even if a
registrant has owned the mark at one time -- indeed, even if the
trademark registration has become inconstestable -- an opposing
party may successfully defend against an infringement claim by
showing that the registrant has abandoned the mark. See 15 U.S.C.
§ 1115(b)(2). A mark is deemed abandoned if "its use has been
discontinued with an intent not to resume such use." 15 U.S.C. §
1127.
In the Jets Order, Judge Milazzo ruled that Action Ink has
abandoned the Mark because it has failed to use the Mark since
1995 and has shown no intent to resume such use. That ruling is
binding on this Court via the doctrine of collateral estoppel.
Collateral estoppel, also known as issue preclusion, bars
"'successive litigation of an issue of fact or law actually
litigated and resolved in a valid court determination essential

10

to the prior judgment,' even if the issues recurs in the context
of a different claim." Taylor v. Sturgell, 553 U.S. 880, 892
(2008) (quoting New Hampshire v. Maine, 532 U.S. 742, 748-49
(2001)). The purposes of collateral estoppel are to protect
parties from multiple lawsuits, to avoid the possibility of
inconsistent decisions, and to conserve judicial resources. Lytle
v. Household Mfg., Inc., 494 U.S. 545, 553 (1990). To establish
collateral estoppel, a party must show "(1) that the issue at
stake [is] identical to the one involved in the prior litigation;
(2) that the issue has been actually litigated in the prior
litigation; and (3) that the determination of the issue in the
prior litigation has been a critical and necessary part of the
judgment in that earlier action." Rabo Agrifinance, Inc. v. Terra
XXI, Ltd., 583 F.3d 348, 353 (5th Cir. 2009). Litigants who were
not parties to the earlier proceeding may nonetheless assert
collateral estoppel based on that proceeding, as long as the
party against whom collateral estoppel applies had a full and
fair opportunity to litigate the issue in the previous suit. Id.;
see also Blonder-Tongue Labs., Inc. v. Univ. Of Ill. Found., 402
U.S. 313, 349-50 (1971) (patentee estopped from asserting
validity of patent in second suit after patent was declared
invalid in earlier action involving a different defendant).
All three of the requirements stated in Rabo Agrifinance are
met in this case. The issue of whether Action Ink has abandoned

11

the Mark is the same in both this case and the Jets case, and it
was fully briefed on the defendants' motion for summary judgment
in the Jets case.28 Moreover, Judge Milazzo's conclusion on the
abandonment issue was a necessary predicate –- indeed, it was the
only predicate -- to her dismissal of Action Ink's claims.29
In its brief addressing the effect of the Jets Order on the
pending motion for summary judgment in this case, Action Ink does
not contend that the elements of collateral estoppel are not met.
In fact, it does not mention collateral estoppel. Plaintiff
argues only that Judge Milazzo's ruling on the abandonment issue
was incorrect on the merits. But the correctness or lack thereof
of the prior ruling is irrelevant to the application of
collateral estoppel principles. "Use of the doctrine represents
an informed choice that the occasional permanent encapsulation of
a wrong result is a price worth paying to promote the worthy
goals of ending disputes and avoiding repetitive litigation."
Johnson v. Watkins, 101 F.3d 792, 795 (2d Cir. 1996). Indeed, one
of the purposes of the doctrine is to avoid inconsistent

28

Indeed, Action Ink. spent 11 pages of its brief in
opposition to the motion for summary judgment arguing that it had
not abandoned the Mark. See Civ. No. 2:12-cv-00046, R. Doc. 104
at 7-18.
29

See Civ. No. 2:12-cv-00046, R. Doc. 128 at
Court finds that Action Ink has abandoned all rights
Consequently, the Mark is no longer enforceable. For
reasons, summary judgment is granted and Plaintiff's
dismissed.").
12

4 ("[T]he
in the Mark.
these
claims are

decisions, Lytle, 494 U.S. at 553 -- a purpose that could not
very well be achieved if the second court were entitled to
reexamine the conclusions of the first to determine their
correctness.
Plaintiff also suggests (but does not argue explicitly) that
the Jets Order is not final because plaintiff plans to file a
Rule 59 Motion and/or an appeal.30 This is incorrect. "A judgment
otherwise final . . . is not deprived of such finality by the
fact that time still permits commencement of proceedings in the
trial court to set aside the judgment . . . ." Restatement
(Second) of Judgments § 13 cmt. f (1982); see also Cycles, Ltd.
v. Navistar Fin. Corp., 37 F.3d 1088, 1090 (5th Cir. 1994)
(same). Similarly, "a judgment retains its preclusive impact on
appeal." Aguillard v. McGowen, 207 F.3d 226, 229 (5th Cir. 2000);
accord Restatement (Second) of Judgements § 13 cmt. f (1982).
Even if plaintiff did file a motion for reconsideration or an
appeal in the Jets case, plaintiff would still be collaterally
estopped from arguing in this Court that the Mark has not been
abandoned.
Accordingly, the Court holds that Action Ink has abandoned
the Mark.

30

See R. Doc. 140 at 8 ("Plaintiff respectfully disagrees
with the Order and Reasons and maintains it should be
reconsidered by a Rule 59 motion to be filed, or, alternatively,
reversed by appeal. Accordingly, it should not form the basis of
any determination to be made by this Court.").
13

2. Lack of Confusion
Moreover, even if plaintiff maintained valid ownership in
the Mark, it must also establish a likelihood of confusion
between its mark and defendant's mark to prevail on its claim of
infringement. Union Nat'l Bank of Tex., Laredo, Tex., 909 F.2d at
844. Plaintiff is unable to make this showing.
The Fifth Circuit considers the following nonexhaustive
“digits of confusion” to evaluate the likelihood of confusion:
type of trademark, mark similarity, product similarity, outlet
and purchaser identity, advertising media identity, defendant's
intent, actual confusion, and care exercised by potential
purchasers. Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d
221, 227 (5th Cir. 2009)(citing Marathon Mfg. Co. v. Enerlite
Prods. Corp, 767 F.2d 214, 217 (5th Cir. 1985)). Moreover, in a
case of reverse confusion such as here, in which a larger company
allegedly uses the mark of a smaller senior user so that the
senior user's product is associated with the larger company,
courts also assess the commercial strength of the junior user's
mark. Great Am. Rest. Co. v. Domino's Pizza LLC, 348 F.App'x 907,
909 (5th Cir. 2009) (citing A&H Sportswear, Inc. v. Victoria's
Secret Stores, Inc., 237 F.3d 198, 230 (3d Cir. 2000)).
The likelihood of confusion is typically a question of fact,
but “summary judgment is proper if the ‘record compels the
conclusion that the movant is entitled to judgment as a matter of
14

law.’” Xtreme Lashes, 576 F.3d at 227 (quoting Bd. of Supervisors
for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co.,
550 F.3d 465, 474 (5th Cir. 2008)). Generally, no single “digit”
is dispositive of the existence of a likelihood of confusion.
Id.; Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 150
(5th Cir. 1985) (citing Armco, Inc. v. Armco Burglar Alarm Co.,
693 F.2d 1155, 1159 (5th Cir. 1983)). Here, although the phrases
at issue and the concepts they promote are the same, the other
factors either weigh in favor of defendant or cannot be assessed
by the Court due to a lack of evidence. The Court will consider
each factor in turn.
a. The Commercial Strength of the Junior User's Mark
The evidence adduced to date suggests that any commercial
strength enjoyed by defendant by virtue of the "Ultimate Fan"
mark is quite weak. Defendant has demonstrated that many other
companies run "Ultimate Fan" promotions, including in connection
with contests held among sports fans. This significantly lessens
the likelihood that the phrase, while known to the public, is
associated with defendant specifically. Cf. Xtreme Lashes, 576
F.3d at 228 (noting that widespread use of a term in commerce
weighs against the strength of a mark employing that term,
particularly if the term is common in the plaintiff's specific
market). For example, "Ultimate Fan" contests were held in
connection with Conference USA, a college athletic conference,
15

the Los Angeles Angels, the Chicago Bulls, the New England
Patriots, and the Seattle Seahawks.31 In addition to these uses
of "Ultimate Fan" in the same context in which plaintiff sought
to use it, defendant provides dozens of examples of promotions
involving the phrase, drawn from documents produced by
plaintiff,32 as well as 157 other examples of use of the phrase.33
Moreover, plaintiff acknowledged during his deposition that over
60 cease and desist letters were sent between 2006-2012,
indicating the prevalence of the phrase.34
Indeed, plaintiff has put forth no evidence, such as surveys
or consumer testimonials, indicating that the public associates
the words "the Ultimate Fan" with defendant. Plaintiff points to
a letter from the Seattle Seahawks, in which the team responded
to plaintiff's letter about use of the Mark. The letter stated
that the team was not aware that it had used the "Ultimate Fan"
in any advertisements. It further noted that its research turned
up only a Budweiser promotion using the term "Ultimate Seahawks
Fan."35 But, this identification of defendant's promotional
campaign does not demonstrate that the words "Ultimate Fan" have

31

R. Docs. 112-7 at 17, 62; 112-8 at 22, 41, 62.

32

R. Doc. 127 at 29-34.

33

R. Doc. 127 at 35-60.

34

Def. Ex. 3, p. 181.

35

Pl. Supp. Ex. 5.
16

come to represent defendant. Rather, the Seahawks merely
indicated that the promotion plaintiff complained of did not
originate from the Seahawks, but rather from defendant. Further,
the uses of the phrase that plaintiff points to in arguing that
defendant infringed its mark were accompanied by the words "Bud"
or "Bud Light," defendant's own strong trademarks.36 Indeed,
whether defendant is even using "the Ultimate Fan" as a trademark
or service mark is doubtful, given its constant use of its own
strong trademarks when it employs the phrase "Ultimate Fan."37
Therefore, plaintiff has failed to put forth evidence that
defendant enjoys strong commercial strength for the phrase at
issue. This factor accordingly favors the defendant.
b. Defendant's Intent
As to defendant's intent, there is no evidence that
defendant wished to take advantage of goodwill associated with
plaintiff in using the phrase, which again weighs against a
finding of likelihood of confusion. Cf. Sec. Ctr., Ltd. v. First
Nat'l Sec. Ctrs., 750 F.2d 1295, 1301-02 (5th Cir. 1985)
(declining to find trademark infringement when there was no
evidence that defendant's choice of name was underhanded or

36

Pl. Ex. 52; R. Docs. 128-6 at 16; 112-5 at 105.

37

Nonetheless, the Court will assume for purposes of the
likelihood of confusion analysis that defendant uses the phrase
as a service mark.
17

intended to allow the defendant to profit from the name
recognition of its competitor). Indeed, plaintiff has not used
the Mark in any recent public campaigns; this fact alone prevents
the public from associating the Mark with plaintiff. Since
plaintiff cannot demonstrate that it had established any name
recognition for the phrase, and given the widespread use of the
phrase "Ultimate Fan" by many companies, there is nothing to
support a finding that defendant intended to pirate plaintiff's
goodwill.38
c. Type of Trademark
"'Type of trademark' refers to the strength of the senior
mark." Xtreme Lashes, 576 F.3d at 227. In determining the level
of protection that should be afforded to marks, courts assign
them to "'categories of generally increasing distinctiveness':
(1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or
(5) fanciful." Id. (quoting Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 768 (1992)). "The latter three categories of marks,
because their intrinsic nature serves to identify a particular
source of a product, are deemed inherently distinctive and are
entitled to protection." Two Pesos, 505 U.S. at 768. Generic

38

Any argument by plaintiff that its 1988 letter to
defendant demonstrates defendant's awareness of the Mark and
defendant's bad faith must fail, given the ten-year delay between
the first notice of alleged infringement and defendant's
promotions at issue and plaintiff's lack of use of the Mark
during that time.
18

marks, which refer to the class of which a good is a member,
receive no protection, while descriptive marks, which provide an
attribute of a good, merit protection only if they have a
secondary meaning. Xtreme Lashes, 576 F.3d at 227. "[T]he
categorization of a term is properly considered a matter of fact
because the appropriate categorization is not self-evident."
Union Nat. Bank of Texas, Laredo, Tex., 909 F.2d at 846.
Registration of a mark with the PTO constitutes prima facie
evidence of the mark's validity, which may be rebutted by
establishing that the mark is not inherently distinctive. See
Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 237
(5th Cir. 2010).
Defendant argues that plaintiff's mark is at best
descriptive and that plaintiff has presented no secondary meaning
for the Mark. But plaintiff responds that the Mark is
incontestable, and incontestable marks "are conclusively presumed
to have to be nondescriptive or to have acquired secondary
meaning." Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1184-85
(5th Cir. 1980). Under 15 U.S.C. § 1065,
[T]he right of the owner to use [a] registered mark in
commerce for the goods or services on or in connection
with which such registered mark has been in continuous
use for five consecutive years subsequent to the date of
such registration and is still in use in commerce, shall
be incontestable.

19

Eckstein testified that in 1991, he filed a Statement of
Continuous Use in which he stated that the Mark was still in
use.39
As discussed above, the plaintiff abandoned the Mark and so
has not preserved ownership in it. But assuming for the purposes
of this analysis that plaintiff owns the Mark, the Court will
accord the Mark nondescriptive status. Even under that
assumption, the Mark is entitled to minimal protection because it
is at best suggestive rather than fanciful or arbitrary.
Terms that are arbitrary or fanciful bear no relationship to
their associated products or services. See Soweco, Inc., 617 F.2d
at 1184 (citing "Kodak" as example of arbitrary or fanciful
term). Here, plaintiff's mark THE ULTIMATE FAN is associated with
a contest among sports fans. As described by plaintiff, the
phrase would appear on a poster depicting an individual
surrounded by products, a team's logo, and the team's players,
thereby indicating the type of "fan" at issue.40 To determine
whether the word "ultimate" bears a relationship to services
involving a contest among fans, the Court will look to the
dictionary. "[T]he dictionary definition of [a] word is an
appropriate and relevant indication of the ordinary significance
and meaning of words to the public." Am. Heritage Life Ins. Co.

39

R. Doc. 112-5 at 42-44.

40

R. Doc. 112-5 at 123-24.
20

v. Heritage Life Ins. Co., 494 F.2d 3, 11 n.5 (5th Cir. 1974)
(internal citation omitted). Webster's New World College
Dictionary (4th ed. 1999) defines the word "ultimate" as "beyond
which it is impossible to go" and "greatest or highest possible;
maximum; utmost." Id. at 1551. An "ultimate fan" could be one who
has the highest level of support for a team, but it could also
refer to an individual who wins a contest among fans to select a
"greatest" fan. A competition among fans is a logical way in
which to identify an "ultimate fan." The Court therefore finds
that a relationship exists between the phrase and the service it
represents and that the Mark is not arbitrary or fanciful.
Instead, the Mark is suggestive: it "suggests, but does not
describe, an attribute of the good; it requires the consumer to
exercise his imagination to apply the trademark to the good."
Xtreme Lashes, 576 F.3d at 227. Because the Court finds that
plaintiff's mark does not fall into the two highest levels of
distinctiveness, the scope of the protection it receives is
lower. Id. Accordingly, this factor does not favor a finding of
likelihood of confusion. See Elvis Presley Enters., Inc. v.
Capece, 141 F.3d 188, 201 (5th Cir. 1998) ("The stronger the
mark, the greater the protection it receives because the greater
the likelihood that consumers will confuse the junior user's use
with that of the senior user."); Exxon Corp. v. Tex. Motor Exch.
of Hous., Inc., 628 F.2d 500, 504 (5th Cir. 1980) (noting that

21

"[t]he greater the number of identical or more or less similar
trade-marks already in use on different kinds of goods," the
weaker the trademark and the less the likelihood of confusion).
d. Evidence of Actual Confusion
"[A]lthough a showing of actual confusion is not mandatory,
it is “patently the best evidence of likelihood of confusion.”
La. World Exposition, Inc. v. Logue, 746 F.2d 1033, 1041 (5th
Cir. 1984). During his deposition, Eckstein was asked whether he
had evidence of actual confusion as a result of defendant's
Ultimate Fan campaign with the Redskins in 2009, and he could not
identify specific examples of actual confusion.41 Further, in
responding to defendant's motion for summary judgment, plaintiff
did not address the issue of confusion or submit surveys from
consumers evincing their confusion about the origins of "Ultimate
Fan" promotions. Plaintiff's supplemental submissions concerning
likelihood of confusion, tendered in response to the Court's
request at oral argument on the summary judgment motion, likewise
did not contain evidence of actual confusion. This factor thus
militates strongly against a finding of likelihood of confusion.
Indeed, plaintiff's inability to produce any evidence of
actual confusion underscores the absence of its mark from the
public eye. The Court cannot evaluate the likelihood of confusion

41

R. Doc. 112-5 at 99-100.
22

based on the other factors that Xtreme Lashes discusses, such as
the two companies' retail outlets, purchasers, or media used,
because plaintiff has none to speak of for the Mark. Trademark
protection aims to avoid situations in which consumers cannot
identify the origin of goods or services and assume that a
similar mark indicates a connection between different companies.
See Capece, 141 F.3d at 201. Therefore, in determining whether
marks are sufficiently similar to result in consumer confusion,
courts focus on whether "prospective purchasers are likely to
believe that the two users are somehow associated." Id. Plaintiff
has not been involved in a promotion using the Mark in almost
twenty years. Thus, there is no possibility that consumers have
been unable to discern whether a contest called "The Ultimate
Fan" originates from plaintiff or another company because
plaintiff has no public presence related to the Mark.
Accordingly, the Court finds that plaintiff has failed to
demonstrate that genuine issues of fact exist as to a likelihood
of confusion between its mark and defendant's promotions, and
thus it cannot maintain its claim for trademark infringement.42

B.

False Designation of Origin Claim

Defendant also seeks summary judgment on plaintiff's claim
of false designation of origin. Under 15 U.S.C. § 1125(a)(1),

42

The Court need not reach defendant's argument that
plaintiff's claim is barred by laches.
23

Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce
any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin,
false or misleading description of fact, or false or
misleading representation of fact, which-(A) is likely to cause confusion, or to cause mistake, or
to deceive as to the affiliation, connection, or
association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person, or
(B) in commercial advertising or promotion,
misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person’s
goods, services or commercial activities,
shall be liable in a civil action by any person who
believes that he or she is likely to be damaged by such
act.
Plaintiff argues that defendant misidentified its claim as
one related to false advertising, when in fact it relates to §
1125(a)(1)(A). Plaintiff contends that defendant's use of THE
ULTIMATE FAN produces reverse confusion -- in other words, that,
by flooding the market with its similar campaign, defendant is
reducing the value of plaintiff's mark.
This claim fails for the same reasons as Action Ink's
trademark infringement claim.

First, a plaintiff who brings suit

under § 1125(a) must show that it has a valid trademark that is
entitled to protection. Riggs Mktg. Inc. v. Mitchell, 993 F.
Supp. 1301, 1305 (D. Nev. 1997). Action Ink, however, has
abandoned the Mark. Second, the Fifth Circuit has held that
"likelihood of confusion is the central evidentiary test" for

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both infringement claims and false designation of origin claims
under the Lanham Act. Am. Century Proprietary Holdings, Inc. v.
Am. Century Cas. Co., 295 F. App'x 630, 634 (5th Cir. 2008). As
explained above, plaintiff has failed to demonstrate a likelihood
of confusion, even if it is assumed that plaintiff did not
abandon the Mark. Accordingly, summary judgment on plaintiff's
claim of false designation of origin is appropriate.

C. Plaintiff's State Law Claims
Defendant also seeks summary judgment on plaintiff's claims
of unfair competition, unfair trade practices, and injury to
business reputation/dilution. The Louisiana Unfair Trade Practice
and Consumer Protection Act (LUTPA) prohibits "[u]nfair methods
of competition and unfair or deceptive acts in the conduct of any
trade or commerce." La. Rev. Stat. § 51:1405. "Likelihood of
confusion is the essential ingredient for claims of unfair
competition under both the Lanham Act and [LUTPA]." La. World
Exposition, 746 F.2d at 1039. A showing of a likelihood of
confusion presupposes the existence of a valid mark. See id. at
1040. Therefore, the Court's holdings that plaintiff (1)
abandoned the Mark and (2) failed to show likelihood of confusion
are dispositive as to plaintiff's state law claims of unfair
competition.
Plaintiff also has not demonstrated that defendant's
development and use of an "Ultimate Fan" promotional campaign
25

amounts to an unfair trade practice. There is no evidence
suggesting that this conduct "offends established public policy
and [] is immoral, unethical, oppressive, or unscrupulous," or
deceptive because "it amounts to fraud, deceit, or
misrepresentation." Monroe Med. Clinic, Inc. v. Hosp. Corp. of
Am., 622 So. 2d 760, 763 (La. Ct. App. 1993).
As for plaintiff's claims of injury to business reputation
or dilution, plaintiff asserts that its claim does not fall under
LUTPA but rather Louisiana's Anti-Dilution Statute, which states:
Likelihood of injury to business reputation or of
dilution of the distinctive qualify of a mark or trade
name shall be grounds for injunctive relief in cases of
infringement of a mark registered or not registered or in
cases of unfair competition notwithstanding the absence
of competition between the parties or the absence of
confusion as to the source of goods or services.
La. Rev. Stat. § 51:223.1. The statute "protects a mark based on
its strength . . . [and] such strength can be demonstrated by
showing a mark to either be distinctive or to have acquired a
secondary meaning." Prudhomme v. Procter & Gamble Co., 800 F.
Supp. 390, 395 (E.D. La. 1992).
Because defendant identified plaintiff's claim as falling
under LUTPA, it did not address the statute at issue in its
motion for summary judgment. Nevertheless, for the reasons
discussed above, the Court finds that plaintiff has failed to put
forth evidence establishing genuine issues of material fact as to
injury to its reputation or dilution of a distinctive mark.

26

First, plaintiff has abandoned the Mark, and a valid trademark is
a logical predicate to an anti-dilution claim. Second, plaintiff
has not submitted evidence that its reputation has been damaged,
that the public ever associated it with the phrase THE ULTIMATE
FAN, or that the association has been diluted. Any injury to the
plaintiff is mere conjuncture and insufficient to raise issues of
material fact.

D. Defendant's Counterclaim
Finally, defendant seeks summary judgment on its
counterclaim, in which it argues that plaintiff's mark should be
cancelled. Under 15 U.S.C. § 1064, a mark may be cancelled at any
time if it has been abandoned. Judge Milazzo has already ordered
the cancellation of the Mark based on her finding of
abandonment.43 Accordingly, defendant's motion for summary
judgment on its counterclaim will be granted.

E.

Attorneys' Fees

Under the Lanham Act, reasonable attorneys' fees may be
awarded to the prevailing party in "exceptional cases." 15 U.S.C.
§ 1117(a). "To recover attorneys' fees, the prevailing party must
demonstrate the exceptional nature of the case by clear and
convincing evidence.”

Scott Fetzer Co. v. House of Vacuums Inc.,

381 F.3d 477, 490 (5th Cir. 2004) (internal quotation marks

43

Civ. No. 2:12-cv-00046, R. Doc. 133.
27

omitted). To show that a case is exceptional, the defendant must
prove that the plaintiff brought it in bad faith. Id.
Defendant has not carried its burden. Although plaintiff
abandoned the Mark by failing to use it or demonstrate an intent
to resume use, its claims "are not so implausible as to
necessitate an inference of bad faith." Id. at 491. Defendants'
request for attorneys' fees is denied.
IV. CONCLUSION
For the foregoing reasons, the Court GRANTS defendant’s
motion for summary judgment on plaintiff's claims and GRANTS
defendant's counterclaim. The Court DENIES defendant's request
for attorneys' fees.

New Orleans, Louisiana, this 17th day of July 2013.
___

_________________________________
SARAH S. VANCE
UNITED STATES DISTRICT JUDGE

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