Field of Screams, LLC v. Olney Boys and Girls Community Sports Association, Inc.

Filing 79

MEMORANDUM OPINION. Signed by Chief Judge Deborah K. Chasanow on 3/14/11. (sat, Chambers)

Field of Screams, LLC v. Olney Boys and Girls Community Sports Association, Inc.

Doc. 79

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND : FIELD OF SCREAMS, LLC v. : : : OLNEY BOYS AND GIRLS COMMUNITY SPORTS ASSOCIATION : Civil Action No. DKC 10-0327

MEMORANDUM OPINION Presently pending in this trademark case is a motion for a preliminary injunction (ECF No. 46) filed by Plaintiff, as well as two related motions in limine (ECF Nos. 60, 65) filed by Plaintiff.1 on The issues are fully briefed and a hearing was held 2-3, 2010. For the reasons that follow,

September

Plaintiff's motion for a preliminary injunction will be denied and both motions in limine will be denied. I. Background A. Factual Background

This is a case about two haunted attractions sharing a common name. One is in Pennsylvania. The other is in Maryland.

A motion to dismiss (ECF No. 50) filed by Defendant was also pending. This memorandum opinion addresses only the three motions related to Plaintiff's request for a preliminary injunction; a separate opinion resolves Defendant's motion to dismiss.

1

Dockets.Justia.com

Both purportedly involve activities such as "haunted hayrides and haunted houses." 1. (ECF No. 44, Am. Compl. ¶ 70).

The Pennsylvania Field of Screams

Plaintiff Field of Screams, LLC operates a Halloween-themed haunted attraction based in Mountville, Pennsylvania called

"Field of Screams."2

The Pennsylvania Field of Screams started

in 1993 as a small hayride, run as a side business by brothers Gene and Jim Schopf. It has been called Field of Screams3 since

that time, and the brothers have used the same font and design (with "splash") to display the Field of Screams name from the beginning.4 14, 2006 by The Schopfs formed Field of Screams, LLC on August filing a Certificate of Organization with the

Pennsylvania Secretary of State. remains a family-run business.

(Def.'s Ex. 2).5

Plaintiff

The Pennsylvania Field of Screams is a member of the Haunted House Association ("HHA") and the International Association of Haunted Attractions ("IAHA"). (Pl.'s Exs. 2, 3).
3 4

2

The name was suggested by a third individual.

Plaintiff concedes, however, that it does not hold the federal trademark registration for the name "Field of Screams." The Schopfs also recently executed a Bill of Sale and LLC Operating Agreement transferring all assets related to the Pennsylvania Field of Screams to the LLC. (ECF No. 72 ¶ 5; ECF No. 72-1, at 4-40). Those documents have effective dates of August 14, 2006. (Id.). 2
5

The attraction is open to the public from mid-September through the first week in November, though preparations take place throughout the year. the attraction has since From its beginnings as a hayride, grown to incorporate a variety of

activities spread over a 35-acre farm: haunted house), Frightmare Asylum (a

the Den of Darkness (a haunted house),6 and a

haunted hayride through a cornfield.

The attraction also hosts

an entertainment area with two large stages, a novelty shop, ticket booths, five food trailers, a small game arcade, and four smaller stages.7 Three full-time employees, part-time

assistants, and roughly 400 volunteers (who assist in "scaring" and other activities) staff the operation. The Schopfs have

invested substantial sums in developing the attraction. Over the course of its existence, Plaintiff's Field of

Screams has changed its target market.

The enterprise initially As the target

targeted 12- to 18-year-old children for a $5 show. attraction market has has grown more Gene sophisticated, Schopf however, the the

expanded;

identified

attraction's

Plaintiff's two haunted houses host skits and shows, wherein actors and automatically-triggered machines would scare participants. The attractions incorporate computer-controlled scares, pyrotechnics, and more. Various performances and competitions take place throughout the entertainment area, such as "battles of the bands," "rap battles," and other activities. 3
7

6

current target market as 12- to 60-year-old patrons for what is now a $25 attraction. Gene Schopf also characterized the

venue's "target area" as the states of Pennsylvania, New Jersey, Maryland, and Delaware, or a "two hour radius" from Mountville.8 Jim Schopf testified that the Schopfs began targeting the

Baltimore and Philadelphia markets in 1999. The Pennsylvania Field of Screams has spent more than $1.1 million advertising in various ways. (Pl.'s Ex. 26). Beginning

in 1999, the Schopf brothers began preparing press kits that they distributed to radio stations, television stations, and

newspapers.

(See Pl.'s Ex. 3).

They continue to prepare a

press kit each year and have sent press kits to recipients in Maryland since at least 2001. Plaintiff has advertised on radio (See, e.g.,

stations since 1998, primarily in Pennsylvania. Pl.'s Exs. 27, 31). coverage since the

It has hosted a media day to garner media opening of the attraction. It uses

billboards and floats. related websites.

The venue also advertises on haunt-

In addition, Plaintiff maintains its own website for the attraction. (Pl.'s Ex. 18). Among other things on the website,

Patrick Konopelski, President of the IAHA and expert in the haunted attraction industry, concluded that a commercial haunted attraction like Plaintiff's Field of Screams could attract a "core customer base" willing to travel 2-3 hours. 4

8

patrons can purchase tickets and obtain directions from a number of locations. Since 1993, Plaintiff has distributed brochures containing information such as directions and event descriptions, which

also bear the "Field of Screams" logo. 2).

(See, e.g., Pl.'s Ex.

These brochures are distributed as far as the Baltimore

region, with 40,000 brochures purchased for distribution in that region in 1999, 60,000 brochures in 2002, and 245,000 brochures in 2009. of Field (Pl.'s Exs. 21, 23). of Screams Christine Eshelman, an employee for brochure distribution,

responsible

explained that she now targets areas within a two-hour radius of Lancaster, Pennsylvania. The distribution routes for the

brochures have not encompassed, at any time, the District of Columbia or Olney, Maryland. (Pl.'s Ex. 22).

The brochures contain coupons that ­ at least since 1999 ­ have borne codes reflecting where the coupons were originally distributed (e.g., "L" for Lancaster, Pennsylvania). These

codes allow the Pennsylvania Field of Screams to track where redeemed coupons originated; in 1999, for instance, 172 coupons were redeemed from brochures originally distributed in the

Baltimore region (out of 4,745 total brochure coupons redeemed). (Pl.'s Ex. 24). In 2002, 176 Baltimore-area coupons were

5

redeemed

(out

of

2,969

brochure

total

brochure

coupons

redeemed).9

(Id.). advertising has apparently paid off and the

Plaintiff's business evolved.

The attraction had an estimated 2,000 patrons In 2008, 24). Jim

in its first year, but drew 20,000 patrons by 1999. more than 66,000 customers attended. (Pl.'s Ex.

Schopf testified to seeing cars in the Pennsylvania Field of Screams parking lot from Pennsylvania, Maryland, New Jersey, and New York. 16.6% of An analysis of online ticket sales also revealed Plaintiff's customers who purchased tickets online

between 2005 and 2009 have zip codes located within a thirtymile radius of Olney, Maryland. (Pl.'s Ex. 37 ¶ 11).

Plaintiff's Field of Screams has also earned some attention from mainstream and haunt-related media. Among other publications, Plaintiff's (See Pl.'s Exs. 6-18). Field of Screams was

covered in Haunted Attractions magazine, Fright Times magazine, Haunt World magazine, and Scared Stiff magazine. The

Pennsylvania Field of Screams has been featured on the Travel Channel. (Pl.'s Ex 18). The attraction has been mentioned on

The Howard Stern Show.

Various "celebrities" have also visited,

Thus, if one extrapolates from the coupon figures, roughly 6% of Plaintiff's customers came from the Baltimore region in 2002. 6

9

including Gunnar Hanson of The Texas Chainsaw Massacre, Stacy Kiebler, Booker T, and (this year) Eddie Munster. Hauntworld

Magazine also rated the Pennsylvania Field of Screams as a top "scream park/haunted hayride," and The Baltimore Sun featured the attraction in articles in 1999, 2000, and 2001. 14-16). (Pl.'s Ex.

Based on this exposure, Plaintiff's expert10 on the

haunted attraction industry concluded that Plaintiff's Field of Screams is nationally recognized. (Defendant's expert

disagreed, concluding that Plaintiff's "national media" exposure only went to those within the industry, not to consumers.) 2. The Maryland Field of Screams

Defendant Olney Boys and Girls Community Sports Association is a non-profit organization that provides athletic programs for children. Two full-time employees and more than 1,000

volunteers staff the organization.

Started in 1969 with 123

children, the organization grew to 3,000 participants in 2000. After the organization opened a 118-acre park in 2002, it has since grown to 7,000 participants and 10 athletic programs.

Defendant's work has earned it the Maryland Nonprofits Seal of Excellence and other awards.

The expert, Konopelski, had some prior experience with Plaintiff. Konopelski owns his own haunted attraction that was originally named Field of Screams; he changed the name when the Schopfs asserted that they had used the name first. 7

10

Shortly

after

opening

its

new

park

in

2002,

Defendant

decided to develop a haunted attraction to generate revenue to support operations. In celebration of the organization's new

"Field of Dreams" (i.e., the park) (Def.'s Ex. 6), Defendant dubbed its haunted attraction the "Field of Screams." Defendant

was not aware of the Pennsylvania Field of Screams when the name was chosen. Defendant's Field of Screams started with a featured event: a haunted walk through the forest, wherein costumed volunteers spooked visitors. In 2006, Defendant expanded, adding a haunted Defendant

hayride, a corn maze, and a two-story haunted house. also began employing makeup, professionals and performances. to do

pyrotechnics, invested

animatronics,

Defendant

substantial sums in improving the attraction.

The attraction is

open during the month of October, but preparations take place year-round.11 The event now generates about 14.5% of Defendant's

total budget each year. Like Plaintiff, Defendant has an extensive marketing plan. Defendant markets on-site with signs and banners at its facility to its target audience: middle school and high school age

Defendant's Executive Director Elizabeth Deal conceded that Plaintiff's and Defendant's attractions offer a similar experience. 8

11

facilities

that

use

the

park.

It

uses

other

advertising

throughout Montgomery County and pays for advertising in the Washington Post, the Rockville Gazette, and the Olney Gazette. Defendant distributes one-page flyers at high school football games in Montgomery County and Howard County, as well as

football games at George Mason University and the University of Maryland. Defendant also does "quite a bit" of radio

advertising on two radio stations in Washington, D.C. established a website in 2006.12

Defendant

All of these advertisements

"prominently say" that the attraction is in Olney, Maryland. Defendant does not sell tickets to its Field of Screams online; instead, patrons may buy tickets in only one of two ways. Members of the Association may purchase discounted

advance tickets through sponsors. buy tickets at the gate.

The rest of the public must

Defendant collects certain information from patrons at its Field of Screams. In addition to signing a waiver warning

patrons of potential dangers in the attraction, customers are asked to provide their zip code, their name, their address, and explain where they heard about the attraction. (Def.'s Ex. 7).

The front page of Defendant's Field of Screams website does not identify any association with the Olney Boys and Girls Community Sports Association, but it does identify the location of the attraction as Olney. (Pl.'s Ex. 20). 9

12

Using a sample of these waiver forms, Deal determined where customers to the Maryland Field of Screams were coming from. In

2007, "virtually nobody" came to the Maryland Field of Screams from Pennsylvania. (Def.'s Ex. 8). The same was true in 2008

and 2009, with only ten patrons coming from Pennsylvania in those years. from (Def.'s Exs. 9, 10). Howard, and Instead, most patrons come Prince George's Counties.

Montgomery,

Defendant's attraction is estimated to draw a few patrons from areas such as Frederick County, Anne Arundel County, and points in Virginia and the District of Columbia, in addition to some customers from the Baltimore area (425 in 2008 and 260 in 2009). (Id.). Professor Thomas Maronick concluded that Defendant occupies an entirely different market than Plaintiff. concluded geographic that the two attractions draw Professor Maronick from draws different from a

areas:

Defendant's

attraction

geographic area south of Interstate 70 in Maryland (with a focus on middle and high school students), while Plaintiff draws from the York-Lancaster, Pennsylvania area (with a focus on middle school through adult consumers). there was a "huge area" Professor Maronick suggested Defendant's market and

between

Plaintiff's market that would render it "highly improbable" that a customer in Lancaster would attend the event in Olney. 10 He

observed that younger patrons would not be able to travel very far, while older patrons would be unwilling to drive two or more hours to attend an attraction for 45 minutes ­ the amount of time he estimated patrons spent at haunted attractions. In change addition, the name Deal of its explained event that be forcing Defendant to She

would

"devastating."

estimated that at least $50,000 would be wasted if Defendant were forced to adopt a new mark. 3. Other Fields of Screams13

In addition to the two Fields of Screams attractions in this case, Defendant has introduced evidence of several other "Fields of Screams." The Chairman of Defendant's Board of

Directors, Daniel Dionosio, said he was aware of 26 haunted events called "Field of Screams."14 Dionosio explained that

there were "pages and pages and pages" of references to the name in a Google search; a customer from Maryland confirmed that there were "a lot of" Field of Screams on a Google search, while Defendant's expert likewise agreed that there were 440,000

Plaintiff has moved to exclude references to other entities or registrations using the name "Field of Screams." As will be explained below, such references are relevant and useful evidence in a case such as the present one. Plaintiff's expert was aware of two other attractions with the name. 11
14

13

Google hits from the name. holds a federally registered

Neither Plaintiff nor Defendant mark under the name "Field of

Screams," although another party in Kentucky does.15

Field of

Screams is also the name of a manual for setting up a haunted attraction. 4. (Pl.'s Ex. 5).

Alleged Confusion alleges has led that to Defendant's of use of the Field Once, of for

Plaintiff Screams mark

instances

confusion.

instance, an actor at the Maryland Field of Screams mistakenly called Plaintiff's Field of Screams when he attempted to call in sick. Gene Schopf also reported that there were "ticket mix-

ups," wherein patrons purchased tickets from the wrong venue. For example, a mother from Olney, Maryland mistakenly emailed the Pennsylvania Field of Screams and attempted to book a

birthday party.

(Pl.'s Ex. 1).

Susan Jackson-Lee testified

that she purchased tickets from Plaintiff's Field of Screams website thinking they were for Defendant's Field of Screams, as she "thought it was the parent company." Sandra Schopf reported

that she received several phone calls at the Pennsylvania Field of Screams meant for the Maryland Field of Screams. Witnesses

Even if not otherwise admissible, courts are free to take judicial notice of federal trademark registrations. In re Chippendales USA, Inc., 622 F.3d 1346, 1356 (Fed.Cir. 2010). 12

15

for Defendant stated that they were not aware of any patrons who mistakenly attended the Maryland attraction rather than the

Pennsylvania attraction. These instances of confusion led Plaintiff to send a cease and desist letter to Defendant on January 29, 2007. 38). two (Pl.'s Ex.

That letter reflects that Plaintiff was aware of at least instances of confusion as of 2007. (Id.). Dionosio

testified that Defendant responded to the letter with a request for more information, but did not receive any response from Plaintiff. Plaintiff's When Defendant's stating counsel that it sent another letter the to

counsel

considered

matter

dropped, Defendant received a response that the matter was not dropped. Defendant continued using the "Field of Screams" name.

It did not hear anything else from Plaintiff until the filing of this lawsuit. B. Procedural Background

Plaintiff originally filed a verified complaint on October 15, 2009, in the United States District Court for the Eastern District of Pennsylvania. six counts, including and (ECF No. 1). federal unjust and That complaint alleged Maryland trademark and unfair

infringement

dilution,

enrichment,

competition under Maryland and Pennsylvania law. 62).

(Id. ¶¶ 22-

Each of these claims stemmed from Defendant's allegedly 13

improper use of Plaintiff's senior mark.

The complaint sought a

judgment "in the amount of profits gained by Defendant through its use of Plaintiff's trademark" and an injunction barring

Defendant from further using of the "Field of Screams" mark. (Id. ¶ 63). (ECF No. 3). month later. Plaintiff also sought a preliminary injunction. Defendant filed a motion to dismiss just over a (ECF No. 19), which the court granted in part on (ECF No. 29). The case was then transferred

January 12, 2010. to this court.

(ECF No. 31).

Plaintiff filed an amended complaint alleging the same six counts on March 15, 2010 (ECF No. 44),16 along with an amended motion for a preliminary injunction (ECF No. 46). Defendant (ECF

moved to dismiss the amended complaint on March 29, 2010. No. 50).

After a requested delay from counsel, the court held a

motions hearing on both Plaintiff's motion for a preliminary injunction and Defendant's motion to dismiss on September 2-3, 2010. Importantly, both parties agreed at that hearing that any

preliminary injunction would only apply to the 2011 Halloween

Plaintiff filed another amended complaint on March 29, 2010. (ECF No. 49). That complaint appears to be identical to the one filed on March 15, which was apparently refiled simply to include a redlined version. 14

16

season ­ not the 2010 season.17 parties then followed. II. Analysis A. Standard of Review

Post-hearing briefing from both

(ECF Nos. 71 & 76).

Plaintiff has moved for a preliminary injunction pursuant to Federal Rule of Civil Procedure 65 and the Lanham Act. No. 46). (ECF

"A preliminary injunction is an extraordinary remedy."

Real Truth About Obama, Inc. v. Fed. Election Comm'n, 575 F.3d 342, 345 (4th Cir. 2009), vacated on other grounds by 130 S.Ct. 2371 (2010) and reissued in part, 607 F.3d 355 (4th Cir. 2010). To obtain a preliminary injunction, a plaintiff must establish four elements: "[1] that he is likely to succeed on the merits,

[2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public

This concession could be read as an acknowledgment that Defendant would suffer substantial harm from the entry of a preliminary injunction as to the then-current season. The cost of a name change in any season, however, could be substantial, and Deal's comments that a name change could lead to a loss of customers is supported by logic as well. Plaintiff attempts to dismiss these harms as "self-inflicted" (ECF No. 47, at 17), but the Fourth Circuit has specifically cautioned that "it is error for a district court to conclude that any harm that would be suffered by a defendant was self-inflicted and thus entitled to lesser weight in the balancing-of-the-harms portion of the preliminary injunction calculus." Scotts Co. v. United Indus. Corp., 315 F.3d 264, 285 (4th Cir. 2002). 15

17

interest." Council,

Id. at 364 (quoting Winter v. Natural Res. Def. Inc., 129 S.Ct. 365, 374 (2008)). All four

requirements must be satisfied. entitled to a preliminary

Id.18

Plaintiff suggests it is because Defendant is

injunction

infringing and diluting its mark.19 B. The Likelihood of Success court must first consider Plaintiff's likelihood of

success on its infringement claim. injunction, Plaintiff bears the

To obtain a preliminary burden" of making a

"heavy

"clear showing" that the claim will succeed. Obama, 575 F.3d at 349.

Real Truth About

As explained in the prior decision on

Defendant's motion to dismiss, to prevail under Section 43(a) of the Lanham Act, a plaintiff must "first and most fundamentally prove that it has a valid and protectable mark." U.S. Search,

LLC v. U.S. Search.com Inc., 300 F.3d 517, 523 (4th Cir. 2002)

Defendant cites several cases applying the "balanceof-hardship" standard, which formerly applied in the Fourth Circuit. See generally Blackwelder Furniture Co. of Statesville The Fourth v. Seilig Mfg. Co., 550 F.2d 189 (4th Cir. 1977). Circuit has more recently repudiated that standard, as it stands in "fatal tension with the Supreme Court's 2008 decision in Winter." Real Truth About Obama, 575 F.3d at 347 ("Because of its differences with the Winter test, the Blackwelder balanceof-hardship test may no longer be applied in granting or denying preliminary injunctions in the Fourth Circuit."). The court has dismissed Plaintiff's Lanham Act dilution claim. Therefore, this decision will discuss only the trademark infringement claim. 16
19

18

(quoting MicroStrategy, Inc. v. Motorola, Inc., 245 F.3d 335, 341 (4th Cir. 2001)). The plaintiff must then show "that the

defendant's use of an identical or similar mark is likely to cause confusion among consumers." Id. (citing Perini Corp. v. A

Perini Constr., Inc., 915 F.2d 121, 124 (4th Cir. 1990)).

review of the evidence reveals that Plaintiff "has not, at this preliminary stage in the litigation, made a clear showing that it is likely to succeed on the merits at trial, even though we do not decide the merits nor intend to foreclose any outcome on the merits." Real Truth About Obama, 575 F.3d at 349.

Plaintiff must first establish that it owns a valid and protectable mark. protection is The court has already explained how trademark in its decision on the motion to

established

dismiss, but a few basic principles are worth repeating here. As the court to a noted before, "[w]hether is trademark to protection the mark's

extends

proposed

mark

tied

distinctiveness."

Retail Servs., Inc. v. Freebies Publ'g, 364

F.3d 535, 538 (4th Cir. 2004); Int'l Bancorp v. LLC Societe des Bains de Mer et du Cercle des Destrangers a Monaco, 329 F.3d 359, 363 (4th Cir. 2003) (same). Courts measure distinctiveness (1)

along a spectrum that encompasses four broad categories:

generic marks, (2) descriptive marks, (3) suggestive marks, and (4) arbitrary or fanciful marks. 17 See Pizzeria Uno Corp. v.

Temple, 747 F.2d 1522, 1527 (4th Cir. 1984); see also George & Co., LLC v. Imagination Entm't Ltd., 575 F.3d 383, 393-94 (4th Cir. 2009). "Generic words, which are the common name of a product or the genus of which the particular product is a species, can never be valid marks under any circumstances." OBX-Stock, Inc.

v. Bicast, Inc., 558 F.3d 334, 340 (4th Cir. 2009) (quotations and citations omitted). arbitrary or fanciful At the other end of the spectrum are marks, which are considered inherently Sara Lee

distinctive and receive "the greatest protection."

Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). "Fanciful marks . . . typically involve made-up words created for the sole purpose of serving as a trademark. Arbitrary marks

. . . typically involve common words that have no connection with the actual product, as they do not suggest or describe any quality, ingredient, or characteristic, so the mark can be

viewed as arbitrarily assigned."

George & Co., 575 F.3d at 394

(citations and quotations omitted). Somewhere between arbitrary/fanciful marks and generic ones lie two additional "Descriptive size, 364 categories: marks or F.3d merely suggestive describe purpose a of and descriptive use,

marks.

function, the and

characteristic, Retail Servs.,

intended at 539 18

product." citations

(quotations

omitted).

In contrast, "[a] mark is suggestive if it connotes,

without describing, some quality, ingredient, or characteristic of the product." Retail Servs., 364 F.3d at 539 (quotations, Suggestive

citations, and brackets omitted; emphasis added).

marks are treated as inherently distinctive, while descriptive ones are not. are protected "is OBX-Stock, 558 F.3d at 394. only if they have acquired that to a Descriptive marks secondary meaning, mark a has

which become

shorthand

for

saying

descriptive establish

sufficiently

distinctive

mental

association

in buyers' minds between the alleged mark and a Retail Servs., 364 F.3d at 539.

single source of the product."

The name "Field of Screams" would appear to be suggestive. Although the name may evoke a sense of what the business relates to, the name does not actually describe a particular

characteristic, function, or purpose of the product (i.e., a haunted attraction) bearing the mark. Thus, the name alone

might lead one to label the mark as suggestive (and therefore inherently distinctive). If the mark was merely descriptive, Plaintiff would need to prove secondary meaning, which it has failed to do. secondary Perini, Circuit meaning F.2d entails at 125 six vigorous evidentiary omitted). consider in "Proof of

requirements." The Fourth

915 has

(quotations factors 19 to

provided

determining

whether

a

mark

has

secondary

meaning:

"(1)

advertising

expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the

product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use." Id. at 125. None of these

factors is determinative and not all six need to be favorable to Plaintiff. B&J Enters., Ltd. v. Giordano, 329 F.App'x. 411, 417 Plaintiff must

(4th Cir. 2009) (citing Perini, 915 F.2d at 125).

show secondary meaning "(1) in the defendant's trade area and (2) prior to the time when the defendant entered the market." Perini, 915 F.2d at 125-26. Here, Plaintiff has not established that it will likely be successful in proving that its mark possesses secondary meaning in Defendant's trade area in 2002.20 The evidence produced at

the hearing reflects that Defendant's trade area is primarily Montgomery County, with a substantial focus on the region around Olney itself. Defendant's attendance surveys reflect that

Defendant draws the substantial portions of its customers from that region and Defendant focuses its advertising efforts there. Any remaining efforts were primarily focused on points south,

Plaintiff mistakenly looks to its own trade area, stating that "[t]he public within Plaintiff's geographic and marketing area associate the trademark with Plaintiff's haunted attraction and entertainment venue." (ECF No. 47, at 12-13). 20

20

near

Washington,

D.C.

and

Prince

George's

County.21

This

southern Maryland market is also entirely consistent with the "45-minute drive time" market size posited by Professor Maronick for haunted attractions of Defendant's type.22 that Defendant's attraction started in 2002, Therefore, given Plaintiff would

have to establish at trial that its mark had secondary meaning in the southern Maryland market before 2002. It Although is unlikely that Plaintiff some will be able of to do so.

Plaintiff

has

provided

evidence

advertising

expenditures,23 it has not provided any evidence that, as of 2002, the spending was directed at the southern Maryland market or that such spending was effective there. B&J Enters., 329

A much smaller number of customers were also drawn from points north, such as some parts of Howard County and the Baltimore area. The court may, of course, take judicial notice of geographic realties. "[G]eography has long been peculiarly susceptible to judicial notice." United States v. Bello, 194 st F.3d 18, 23 (1 Cir. 1999) (citations and brackets omitted); see also, e.g., United States v. Stewart, No. 3:07cr51, 2007 WL 2437514, at *1 n.2 (E.D.Va. Aug. 22, 2007) (taking judicial notice of "facts gleaned from internet mapping tools"); Jarman v. United States, 219 F.Supp. 108, 112 (D.Md. 1963) (taking judicial notice of area encompassed by 75-mile radius from city). Much of the advertising data provided is after 2002. Data relevant to secondary meaning coming after the appearance of the purportedly junior user is irrelevant. Commerce Nat'l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 439 (3d Cir. 2000). 21
23 22

21

F.App'x at 419 ("Absent a showing that such expenditures were effective associate in the causing mark the relevant group of consumers cannot J. to be

with

itself,

secondary

meaning 2

established."

(quotations

omitted));

accord

Thomas

McCarthy, McCarthy on Trademarks & Unfair Competition § 15:51 (4th ed. 2010) ("[T]he mere expenditure of money is not, in

itself, determinative of the actual result in buyers' minds. From experience, we know that some forms of advertising are like `water off the consumer's back,' and have no effect."). Indeed,

one of Plaintiff's primary forms of advertising ­ brochures ­ were not distributed anywhere near Defendant's market during the relevant period. Plaintiff's patrons in (Pl.'s Ex. 22). received the And the record suggests that only a negligible to number of

attraction 2002 from

closest

region

Defendant

where

Plaintiff did market, Baltimore.

(See Pl.'s Ex. 24 (listing

only 176 coupons received from the Baltimore region)). Admittedly, the Pennsylvania Field of Screams has enjoyed some sporadic Stern national Show and media the was attention Travel via mentions on The

Howard

Channel. featured

Similarly, in The

Plaintiff's

attraction

occasionally

Baltimore Sun.

Nevertheless, these intermittent appearances on

the national and Maryland media scene are simply not enough to

22

establish a secondary meaning in the relevant Maryland market.24 Moreover, the Travel Channel's feature regarding Halloween-

related travel destinations does not demonstrate that potential haunt patrons in southern Maryland would think that the Maryland Field of Screams in Olney was in some way related to the

Pennsylvania Field of Screams.

Cf. Brennan's, Inc. v. Brennan's

Rest., LLC, 360 F.3d 125, 132 (2d Cir. 2004) ("[V]irtually all the articles and reviews discuss Brennan's New Orleans in the context of the City of New Orleans or a trip to New Orleans. This evidence in no way demonstrates that potential diners in New York City who find the word Brennan's on a restaurant awning will have any reason to think the restaurant is connected with Brennan's New Orleans, or even will have heard of Brennan's New Orleans."). As for Plaintiff's advertising in industry

publications and other participation in the haunt industry, such specialized customers advertising in any is not directed "toward prospective customers in

general

sense,"

particularly

southern Maryland.

U.S. Conference on Catholic Bishops v. Media

Research Ctr., 432 F.Supp.2d 616, 624 (E.D.Va. 2006) (finding

Also, much of the press coverage apparently occurred because the Schopfs began distributing press kits in 1999. It is questionable then whether that coverage could be termed "unsolicited." 23

24

attendance

at

industry

conventions

and

publication

in

trade

journals did not support finding of secondary meaning).25 Plaintiff has not produced a consumer survey. of such evidence is "telling." Although a survey is not The absence

George & Co., 575 F.3d at 396. "[s]urvey evidence is

required,

generally thought to be the most direct and persuasive way of establishing secondary meaning." U.S. Search, 300 F.3d at 526

n.13 (citing Zatarins, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983). attempts to plagiarize the mark.26 There is also no evidence of Similarly, although Plaintiff

enjoyed strong sales in the past,27 it has not brought forth

There is also no suggestion that Plaintiff's website was directed toward the southern Maryland market in 2002 and no information was provided about the origins of the website's users in 2002. Moreover, "[e]vidence of misdirected telephone calls to [Plaintiff] that were intended for [Defendant] does not constitute evidence of secondary meaning. If anything, it shows only that the public associates the name ["Field of Screams"] with [Defendant], rather than [Plaintiff]." U.S. Search, 300 F.3d at 526 n.11. Notably, Plaintiff submitted gross sales figures. The Fourth Circuit has distinguished between the usefulness of (1) simple gross figures and (2) a comparison between those gross revenues and the relevant market's total sales volume. See B&J Enters., 329 F.App'x at 420. The latter is more useful because it allows the court to assess market penetration. See 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 15:49 (4th ed. 2010) ("Raw sales figures need to be put into context to have any meaning. That is, if a company says that its sales of goods or services under the mark are $x, that 24
27 26

25

evidence

showing

that

the

success

stemmed

from

consumers

in

Defendant's area.

The website zip code analysis does not apply

to the relevant period (i.e., pre-2002) and anecdotal evidence of license plates in a parking lot does not accurately reflect where customers are coming from. As for continuous use, there has been substantial dispute over whether Plaintiff has continuously used the mark. For

instance, Defendant contends that Plaintiff had no rights to the name "Field of Screams" prior to Plaintiff's legal formation in 2006. (ECF No. 76, at 7). Plaintiff produced evidence after

the hearing that the Schopf brothers transferred the Field of Screams mark to Plaintiff via a Bill of Sale. 18). (ECF No. 71, at

In light of that evidence, it is at least reasonable to

believe that a jury would find that the use of the mark was continuous. See Nat'l Bd. for Certification in Occupational 24 F.Supp.2d

Therapy, Inc. v. Am. Occupational Therapy Ass'n,

494, 500 (D.Md. 1998) ("A sale of a business and of its good will carries with it the sale of the trade-mark used in

connection with the business, although not expressly mentioned in the instrument of sale." (quotations omitted)); cf. Chien

number cannot be said to be `impressive' or `persuasive' evidence of secondary meaning without knowing how $x compares with the norms of that industry."). 25

Ming Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 1460 (Fed.Cir. 1988) ("[T]itle to the trademark passed upon

incorporation."). of continuous and

Even so, Plaintiff has not provided evidence exclusive use of the mark in Defendant's

market.

Moreover, even if the court considered Plaintiff's use

of the mark since 1993, "length of time alone is insufficient to establish secondary meaning." U.S. Search, 300 F.3d at 526

n.12; see also 815 Tonawanda Street Corp. v. Fay's Drug Co., 842 F.2d 643, 648 (2d Cir. 1988), cited by B&J Enters., 329 F.App'x 411 (concluding mark had no secondary meaning even where there was "long and exclusive use" of mark). In sum, "the record does not disclose that a substantial number of present market or would prospective associate customers" "Field of in the relevant with A mark

Maryland

Screams"

Plaintiff's attraction.

George & Co., 575 F.3d at 396.

that is not inherently distinctive and lacks secondary meaning, is not protectable. Thus, Plaintiff's case at this stage depends on the

purported "suggestive" nature of its mark.

Even if Plaintiff

has shown that its mark is inherently distinctive, however, it still needs to show likelihood of confusion in order to

establish a trademark violation.

26

In that regard, a cold analysis of the words composing the mark does not resolve the likelihood of confusion issue: To determine if a likelihood of confusion exists, we look to (1) the strength or distinctiveness of the plaintiff's mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant's intent; and (7) actual confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984). Not all of these factors are of equal importance, "nor are they always relevant in any given case." Anheuser-Busch, 962 F.2d at 320. However, evidence of actual confusion is "often paramount" in the likelihood-of-confusion analysis, Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 804 (4th Cir.2001). CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 267-68 (4th Cir. 2006). not establish that it The fact that a mark is suggestive does is conceptually strong when there is

significant third-party use of the mark, particularly in the same field. CareFirst, 434 F.3d at 269-70. Plaintiff actually

moved to exclude evidence of third-party use of the "Field of Screams" name as irrelevant. (ECF Nos. 50, 60). The United

States Court of Appeals for the Fourth Circuit, however, as stressed the significance of third-party use in this context. In CareFirst, for example, the court determined that a mark was not conceptually strong where the defendant produced extensive 27

evidence

of

third-party from

use,

including in the

"dozens

of

web as

page the

print-outs" plaintiff.

businesses

same

industry

CareFirst, 434 F.3d at 270 (citing U.S. Search, 300 Here, there was evidence of significant third26 other haunted attractions and a

F.3d at 525). party use,

including

trademark registration by another party.

"If the [Field of

Screams] mark were truly a distinctive term, it is unlikely that so many other businesses in the [haunt] industry would

independently think of using the same mark or similar variants of it." Nor, Id.28 despite Plaintiff's efforts, has it shown actual

confusion to the extent necessary to succeed.

The evidence of

anyone contacting one rather than the other site arises from use of the internet, where the users apparently were not careful in noticing the geographic location of the advertised entity. A

patron who wanted to attend Defendant's Olney Field of Screams

Given the above conclusions, Plaintiff's motions to exclude (ECF No.s 60, 65) will be denied. Defendant did not, however, properly authenticate and admit an item marked as Defendant's Exhibit 12. Therefore, the court chooses not rely on the contents of that exhibit. Defendant also objects to the consideration of several other items subjected as declarations attached to Plaintiff's post-hearing memorandum. Having reviewed the proffered exhibits and the objections thereto, the court will admit the declarations and the related exhibits, even though that evidence does not affect the court's ultimate conclusion. 28

28

did not realize that she had accessed Plaintiff's website, and an actor from Defendant's location attempted to call in sick using Plaintiff's contact information. Neither type of evidence

shows that people are confused into thinking the two locations are the same; only that they were confused about what location they were contacting. There was no evidence that anyone ended

up at Defendant's Olney location thinking it was Plaintiff's. Given the findings of lack of conceptual strength and

actual confusion, the fact that some of the other factors may be satisfied, such as the similarity of the marks or the general services provided, would not demonstrate likelihood of success. Plaintiff has not shown that it is likely to be successful on its claim for trademark violation. C. Other Preliminary Injunction Requirements

Because Plaintiff has failed to establish the first of the four preliminary injunction requirements, there is no need to discuss the remaining requirements. The court's decision not to

chart its analysis on the remaining factors in full does not indicate that Plaintiff satisfied them. To the contrary, the

court notes substantial problems for Plaintiff on each of the remaining factors, but no purpose would be served in addressing each in further detail.

29

III. Conclusion For the foregoing reasons, Plaintiff's motion for a

preliminary injunction will be denied and both motions in limine will be denied. A separate order will follow.

/s/ DEBORAH K. CHASANOW United States District Judge

30