Potomac Conference Corporation of Seventh-day Adventists v. Takoma Academy Alumni Association, Inc. et al

Filing 36

MEMORANDUM OPINION. Signed by Chief Judge Deborah K. Chasanow on 3/4/14. (sat, Chambers)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
:
POTOMAC CONFERENCE
CORPORATION OF SEVENTH-DAY
ADVENTISTS,
d/b/a TAKOMA ACADEMY,

:
:

v.

:

Civil Action No. DKC 13-1128

:
TAKOMA ACADEMY ALUMNI
ASSOCIATION, INC., et al.

:
:

MEMORANDUM OPINION
Presently

pending

and

ready

for

resolution

in

this

trademark infringement and federal unfair competition, common
law unfair competition, and conversion action is a motion to
dismiss (ECF No. 9) filed by Defendants Takoma Academy Alumni
Association, Inc. (“TAAA, Inc.” or “unincorporated association”)
and Henry Pittman (“Mr. Pittman”) (collectively “Defendants”).
The issues are fully briefed and a hearing was held on August
22-23, 2013.

On September 5, 2013, the parties submitted a

joint request to refer the matter to a magistrate judge for
mediation.

The case was subsequently referred to Magistrate

Judge Jillyn K. Schulze for ADR.

A settlement conference was

held on October 21, 2013, but no settlement was reached (ECF No.
31).

The

court

now

rules.

For

the

Defendants’ motion to dismiss will be denied.

following

reasons,

I.

Background
Factual Background1

A.
The

Potomac

Adventists

Conference

(“Potomac

Corporation

Conference”

or

of

“Takoma

Seventh-day
Academy”

or

“Plaintiff”) owns and operates a number of Seventh-day Adventist
churches and schools, including Takoma Academy.

Takoma Academy

is a faith-based secondary school providing educational services
to children in grades nine (9) through twelve (12).
Training
Academy

Institution
then

became

founded
a

Takoma

separate

Potomac Conference in 1934.

Washington

Academy

in

1904;

institution

as

part

Takoma
of

the

(ECF No. 1 ¶ 10).

Plaintiff alleges that Takoma Academy is also known as “TA”
and that Takoma Academy has “continuously and exclusively” used
the “Takoma Academy” and “TA” marks since the school’s founding
in 1904 “in connection with the promotion, sale, and provision
of its educational goods and services.”

(Id.).

Plaintiff also

alleges that Takoma Academy has displayed “Takoma Academy” and
“TA” on “the school building, letterhead, correspondence, bills,
direct mailings, and school and alumni newsletters.”

(Id. ¶

11).
Plaintiff asserts that Takoma Academy Alumni Association
(“TAAA”

or

“unincorporated

alumni

1

association”)

is

an

For the motion to dismiss, the well-pled allegations in
Plaintiff’s complaint are accepted as true.
See Mylan Labs.,
th
Inc. v. Matkari, 7 F.3d 1130, 1134 (4 Cir. 1993).
2

unincorporated
established

alumni

in

contributions,

the

association

1970s

and

to

fundraise

that

Takoma

organize

alumni

for

school.

the

Academy

events,
(Id.

solicit
¶

12).

Plaintiff also contends that Takoma Academy maintained mailing
lists,

phone

numbers,

email

addresses,

and

other

alumni

information, which was consolidated into a database and that
Rick Feldman (“Feldman”), a Takoma Academy alumnus, voluntarily
maintained.
oversaw

(Id. ¶ 13).

TAAA

and

Specifically,
checks

controlled

according

raised

by

Plaintiff avers that Takoma Academy

TAAA

operating account.

to

TAAA’s

the

were

finances

complaint,

deposited

and

“[a]ll

into

assets.

fundraising

Takoma

Academy’s

All invoices relating to alumni activities

for TAAA were paid through Takoma Academy’s operating account.”
(Id. ¶ 12).
Mr.

Pittman,

president

in

Plaintiff,

a

April

Potomac

Takoma
of

Academy

2011.

(Id.

Conference

and

alumnus,
¶

TAAA

14).

became

TAAA’s

According

eventually

to

disagreed

about the operations and independence of the alumni association.
(Id. ¶ 15).

Consequently, on April 10, 2012, Mr. Pittman filed

Articles of Incorporation with the Maryland State Department of
Assessments

and

Taxation

(see

ECF

No.

1-2,

at

4-11)

to

incorporate the alumni association and establish Takoma Academy
Alumni Association, Inc. (“TAAA, Inc.” or “incorporated alumni
association”).

(ECF No. 1 ¶ 16).
3

Plaintiff asserts that Takoma

Academy did not authorize the incorporation and that “Pittman
was fully aware that his action was not approved by Plaintiff.”
(Id.).
According to the complaint, in May of 2012, one month after
Mr. Pittman incorporated the alumni association, “Manny Montero,
the resident agent and purported general counsel for TAAA, Inc.
.

.

.

threatened

Feldman

and

demanded

access

to

the

Alumni

Information” contained in the database Plaintiff maintained, and
that “[u]nder the threat of legal action, and based on ignorance
of

any

provided

dispute
access

Defendants.

between

Plaintiff

to

Alumni

the

and

Defendants,”

Information

to

Feldman

Montero

and

(Id. ¶ 17).2

On May 31, 2012, one month after the incorporation of the
alumni association, Plaintiff filed a trademark application with
the United States Patent and Trademark Office (“USPTO”) for the
term “Takoma Academy,” and the USPTO registered the mark on
February 5, 2013.

(ECF No. 1-2, at 2).

Then, on June 7, 2012,

Plaintiff voted to disassociate itself from TAAA, Inc. “after
learning of the formation of TAAA, Inc.”

(ECF No. 1 ¶ 18; see

also ECF No. 1-2, at 19 (message from Pittman) (“On June 7,
2012, the Takoma Academy Board of Trustees and the leadership of
the Potomac Conference of Seventh-day Adventist Church voted to

2

Mr. Montero is one of the counsel of record for the
Defendants in this case.
4

take

permanent

control

of

Takoma

Academy

Alumni

Association

(TAAA) and administer the association under the authority of the
Board of Trustees and the Potomac Conference.”)).

Plaintiff

contends that after disassociating, it demanded that Defendants
“cease any use of the Marks.”3

(ECF No. 1 ¶ 18).

On January 17,

2013, Takoma Academy sent a Cease and Desist letter addressed to
Mr. Pittman, demanding that “any and all use of the name Takoma
Academy and TA, or any derivatives thereof, immediately cease”
(ECF No. 1 ¶ 24) and to “immediately return to Takoma Academy
all

databases,

alumni

Takoma

Academy

which

became

president

of

lists
were
the

and

given
Takoma

other
to

property

[Mr.

Academy

belonging

Pittman]
Alumni

when

to

[he]

Association.”

(ECF No. 1-2, at 43) (emphasis in original).
Plaintiff asserts that Defendants nevertheless “continue to
use Plaintiff’s Marks to identify their corporation TAAA, Inc.”
(ECF

No.

1

¶

19).

Specifically,

Plaintiff

asserts

that

Defendants created a Facebook page and a Takoma Academy Alumni
Association, Inc. group on the LinkedIn website on January 29,
2013, after Defendants received the Cease and Desist Letter.4

On

these websites, TAAA, Inc. purports to be affiliated with Takoma
Academy.

(Id. ¶ 21; see also ECF No. 1-2, at 34-36).

3

In the complaint, Plaintiff refers to “TA” and “Takoma
Academy” as “the Marks.” (ECF No. 1 ¶ 11).
4

LinkedIn is a professional
individual company profiles and groups.
5

network

that

includes

Plaintiff alleges that Defendants use the “TA” and “Takoma
Academy” marks in their communications with alumni.

Plaintiff

also contends that Defendants send “numerous messages to alumni
using TAAA and TAAA, Inc. interchangeably.”
ECF

No.

1-2,

at

18-32).

Plaintiff

(Id. ¶ 20; see also

further

avers

that

both

Takoma Academy and TAAA, Inc. planned competing alumni weekends
with

a

golf

tournament

referencing

“Takoma

Academy,”

“Takoma Academy Alumni Association,” and “TAAA.”
at 12-16, 45).

“TA,”

(ECF No. 1-2,

Plaintiff maintains that Mr. Pittman “continues

to guide, advise, and induce TAAA, Inc. to use Plaintiff’s Marks
and

benefits

therefrom

president thereof.”

by

(Id.

having
¶ 26).

installed

himself

as

the

Finally, Plaintiff asserts

that Defendants filed an application with the USPTO to register
“Takoma Academy Alumni Association” as a mark.
Based

on

the

record,

Defendants’

application

(Id. ¶ 30).

with

the

USPTO

remains pending.
B.

Procedural Background

Plaintiff filed a complaint on April 16, 2013.
1).
and

(ECF No.

Plaintiff alleged four claims: (1) trademark infringement
unfair

competition

under

the

Lanham

Act,

15

U.S.C.

§§

1114(1)(a) and 1125(a) (against both Defendants); (2) vicarious
trademark infringement and unfair competition under the Lanham
Act, 15 U.S.C. §§ 1114(1)(a) and 1125(a) (against Mr. Pittman);
(3) common law unfair competition (against both Defendants); and
6

(4) conversion by wrongful detention (against both Defendants).
(Id. ¶¶ 31-67).

In the complaint, Plaintiff seeks, inter alia,

an injunction barring Defendants from further use of “TAKOMA
Academy,”

“TA,”

or

“any

mark,

word,

or

name

similar

to

Plaintiff’s Marks which is likely to cause confusion or mistake
or to deceive.”

(Id. at 14).

Defendants moved to dismiss on May 10, 2013 pursuant to
Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6).
No. 9).
lacks

(ECF

Defendants argue that under Rule 12(b)(1), the court

subject

matter

jurisdiction

over

Plaintiff’s

trademark

infringement and unfair competition claim (Count I) and that
furthermore, Plaintiff lacks standing because the unincorporated
alumni

association

acquired

common

law

rights

to

the

phrase

“Takoma Academy Alumni Association” and Plaintiff acquiesced to
its use.
as

to

(Id., at 8).

Mr.

Pittman

Defendants further seek dismissal only

pursuant

to

Rule

12(b)(6)

for

vicarious

trademark infringement (Count II), common law unfair competition
(Count

III),

and

conversion

(Count

IV).

Plaintiff

opposed

Defendants’ motion on May 28, 2013, (ECF No. 10), and Defendant
replied on June 10, 2013 (ECF No. 11).
II.

Analysis
A.

Subject Matter Jurisdiction

Generally, “questions of subject matter jurisdiction must
be decided ‘first, because they concern the court’s very power
7

to hear the case.’”

Owens-Illinois, Inc. v. Meade, 186 F.3d

435, 442 n.4 (4th Cir. 1999) (quoting 2 James Wm. Moore et al.,
Moore’s Federal Practice § 12:30[1] (3d ed. 1998)).

Plaintiff

bears the burden of proving that subject matter jurisdiction
properly exists in federal court.

See Evans v. B.F. Perkins

Co., a Div. of Standex Int’l Corp., 166 F.3d 642, 647 (4th Cir.
1999).

In considering a Rule 12(b)(1) motion, the court “may

consider

evidence

outside

the

pleadings”

to

help

determine

whether it has jurisdiction over the case before it.

Richmond,

Fredericksburg & Potomac R.R. Co. v. United States, 945 F.2d
765, 768 (4th Cir. 1991); see also Evans, 166 F.3d at 647.
court

should

grant

such

a

motion

“only

if

the

The

material

jurisdictional facts are not in dispute and the moving party is
entitled to prevail as a matter of law.”

Richmond, 945 F.2d at

768.
A challenge to subject matter jurisdiction may take two
forms:

a

facial

challenge,

asserting

that

the

allegations

pleaded in the complaint are insufficient to establish subject
matter jurisdiction, or a factual challenge, asserting “‘that
the

jurisdictional

allegations

of

the

complaint

[are]

not

true,’” or that other facts, outside the four concerns of the
complaint preclude the exercise of subject matter jurisdiction.
Kerns

v.

United

States,

585

F.3d

8

187,

192

(4th

Cir.

2009)

(citation omitted); see also Buchanan v. Consol. Stores Corp.,
125 F.Supp.2d 730, 736 (D.Md. 2001).
First,

Defendants

make

a

facial

attack,

contending

that

Plaintiff’s trademark infringement and unfair competition claims
require resolution of state law corporate governance matters,
and are veiled attempts to “invalidate the business decision of
the TAAA Board.”

(ECF No. 9-1, at 10).

For the reasons stated

on the record at the August 22-23, 2013 hearing and those stated
below, Defendants’ facial challenge fails.
District courts have original jurisdiction over all civil
actions arising under the Constitution, laws, or treaties of the
United States.
district

28 U.S.C. § 1331.

courts

“original

28 U.S.C. § 1338(a) gives

jurisdiction

of

any

civil

action

arising under any Act of Congress relating to . . . trademarks,”
and the Lanham Act, 15 U.S.C. §§ 1051 et seq.

Additionally,

district courts have “original jurisdiction of any civil action
asserting

a

claim

of

unfair

competition

when

joined

with

a

substantial and related claim under the . . . trademark laws.”
28 U.S.C. § 1338(b).
Generally,

whether

any

of

a

plaintiff’s

claims

“arise

under” federal law is determined by application of the wellpleaded

complaint

rule.

Ali

v.

Giant

Good

LLC/Stop

&

Shop

Supermarket Co., LLC, 595 F.Supp.2d 618, 621 (D.Md.2009) (citing
Franchise Tax Bd. v. Constr. Laborers Vacation Trust, 463 U.S.
9

1, 103 (1983)).

According to the well-pleaded complaint rule,

“federal jurisdiction exists only when a federal question is
presented

on

complaint.”
(1987).

the

face

of

the

plaintiff’s

properly

pleaded

Caterpillar Inc. v. Williams, 482 U.S. 386, 392

The existence of a state law question does not defeat

jurisdiction “when the complaint shows that the claim for relief
arises under a cause of action created by federal law.”

Arthur

Young & Co. v. City of Richmond, 895 F.2d 967, 971 (4th Cir.
1990).

A federal court may exercise supplemental jurisdiction

over claims that otherwise would not be within its jurisdiction
when the claims arise from the same set of facts as those claims
that are properly before the court.

See 28 U.S.C. § 1367(a).5

Claims are part of the same case or controversy if they stem
from a “common nucleus of operative facts.”
Inc., 263 F.3d 110, 116 (4th

Rosmer v. Pfizer

Cir. 2001) (citing

Workers of Am. v. Gibbs, 383 U.S. 715, 725 (1966)).

United Mine
Generally,

only a “loose factual connection between the claims” is required
for claims to arise from a common nucleus of operative facts.

5

A court may decline supplemental jurisdiction when: (1) a
claim raises a complex or novel state law issue; (2) the state
claim substantially predominates; (3) all claims over which the
court had original jurisdiction are dismissed; or (4) there are
exceptional circumstances. 28 U.S.C. § 1367(c). Here, none of
these elements favor denying supplemental jurisdiction over
Plaintiff’s state law claims for common law unfair competition
and conversion.
10

Posey v. Calvert Cnty. Bd. Of Educ., 262 F.Supp.2d 598, 600
(D.Md. 2003).
Plaintiff

correctly

states

that

the

court

has

original

jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338 based on
claims brought under the Lanham Act.

The Lanham Act does not

confer jurisdiction “simply because the subject in dispute is a
trademark”; the complaint must allege a violation of the statute
– not just a violation of ownership rights – to state a Lanham
Act claim.

Gibraltar, P.R., Inc. v. Otoki Group, Inc., 104 F.3d

616, 619 (4th Cir. 1997).

Defendants argue that Plaintiff’s

complaint merely mentions federal law but does not present a
federal

question.

This

argument

is

misplaced.

Plaintiff’s

allegations support federal question jurisdiction despite the
presence of state law claims.

Specifically, Plaintiff alleges a

violation of the Lanham Act because Defendants use the marks
over which Plaintiff asserts ownership – via registration of the
“Takoma

Academy”

mark

with

the

USPTO

and

common

law

use;

Plaintiff also argues that Defendants’ use of the marks creates
a likelihood of confusion.

(ECF No. 1 ¶ 38).

Accordingly, Counts I and II of Plaintiff’s complaint arise
under Sections 1114 and 1125 of the Lanham Act and the court may
exercise

supplemental

jurisdiction

over

state law claims in Counts III and IV.

11

Plaintiff’s

remaining

Defendants
this

action

also

on

the

challenge
ground

Plaintiff’s

that

“the

standing

to

bring

unincorporated

alumni

association owns the trademark right to its name by virtue of
the

Potomac

Conference’s

forty

years

of

acquiescence

on

the

matter” and thus is the only entity with standing to pursue
trademark infringement and unfair competition claims.
9-1, at 11).

(ECF No.

As stated on the record at the August 22-23, 2013

hearing, because Defendants’ standing argument is so intertwined
with the merits of the parties’ dispute, the court declines to
address it at this time.

Accordingly, the court will dismiss

without prejudice Defendants’ motion to dismiss insofar as it
challenges standing.
B.

Failure to State a Claim – Rule 12(b)(6)

1.

Standard of review

Rule 12(b)(6) tests the legal sufficiency of a complaint,
but does not “resolve contests surrounding the facts, the merits
of a claim, or the applicability of defenses.”

Presley v. City

of Charlottesville, 464 F.3d 480, 483 (4th Cir. 2006).
certain

specified

satisfy

the

cases,

“simplified

a

plaintiff’s

pleading

complaint

standard”

of

Except in
need

Rule

only
8(a),

Swierkiewicz v. Sorema N.A., 534 U.S. 506, 513 (2002), which
requires a “short and plain statement of the claim showing that
the

pleader

is

entitled

to

relief.”

Fed.R.Civ.P.

8(a)(2).

Nevertheless, “Rule 8(a)(2) still requires a ‘showing,’ rather
12

than a blanket assertion, of entitlement to relief.”
Corp. v. Twombly, 550 U.S. 544, 556 n.3 (2007).
must

consist

of

more

than

“a

formulaic

Bell Atl.

That showing

recitation

of

the

elements of a cause of action” or “naked assertion[s] devoid of
further factual enhancement.”

Ashcroft v. Iqbal, 556 U.S. 662,

678 (2009) (internal citations omitted).
In its determination, the court must consider all well-pled
allegations in a complaint as true, Albright v. Oliver, 510 U.S.
266, 268 (1994), and must construe all factual allegations in
the light most favorable to the plaintiff.

See Harrison v.

Westinghouse Savannah River Co., 176 F.3d 776, 783 (4th Cir.
1999) (citing Mylan Labs., Inc. v. Matkari, 7 F.3d 1130, 1134
(4th

Cir.

1993)).

The

court

need

not,

however,

accept

unsupported legal allegations, Revene v. Charles County Comm’rs,
882 F.2d 870, 873 (4th Cir. 1989), legal conclusions couched as
factual

allegations,

Iqbal,

556

U.S.

at

679,

or

conclusory

factual allegations devoid of any reference to actual events,
United Black Firefighters v. Hirst, 604 F.2d 844, 847 (4th Cir.
1979).

See also Francis v. Giacomelli, 588 F.3d 186, 193 (4th

Cir. 2009).

“[W]here the well-pleaded facts do not permit the

courts to infer more than the mere possibility of misconduct,
the complaint has alleged, but it has not ‘show[n] . . . that
the pleader is entitled to relief.’”
(quoting Fed.R.Civ.P. 8(a)(2)).
13

Iqbal, 556 U.S. at 679

Courts cannot weigh the facts

or assess the evidence at this stage, but a complaint entirely
devoid of any facts supporting a given claim cannot proceed.
2.
Trademark Infringement
the Lanham Act6

and

Unfair

Competition

under

The standards for asserting Lanham Act claims for trademark
infringement and unfair competition based on the inappropriate
use of a mark are largely the same.

Likewise, “the test for

trademark infringement and unfair competition under state law is
the same as the test under the Lanham Act.”

Sterling Acceptance

Corp. v. Tommark, Inc., 227 F.Supp.2d 460, 460 (D.Md. 2002)
(citing Resorts of Pinehurst, Inc. v. Pinehurst Nat’l Corp., 148
F.3d 417, 422 (4th Cir. 1998)); Microsoft Corp. v. Grey Computer,
910 F.Supp. 1077, 1088 (D.Md. 1995)).

In particular, to allege

either type of claim successfully, a plaintiff must establish:
(1) that it possesses a mark; (2) that the
defendant used the mark; (3) that the
defendant’s use of the mark occurred ‘in
commerce’; (4) that the defendant used the
mark ‘in connection with the sale, offering
for sale, distribution, or advertising’ of
6

Defendants have moved to dismiss Plaintiff’s trademark
infringement and unfair competition claim under the Lanham Act
in Count I for lack of subject matter jurisdiction, but not for
failure to state a claim upon which relief can be granted. (ECF
No. 9-1, at 12).
Defendants allege, however, that at bottom,
“Plaintiff’s
Complaint
fails
to
demonstrate
trademark
infringement” by TAAA, Inc. and thus Mr. Pittman cannot be held
vicariously liable for trademark infringement.
(Id., at 13).
Accordingly,
the
court
will
examine
the
sufficiency
of
Plaintiff’s
trademark
infringement
and
federal
unfair
competition claims under the Lanham Act before turning to
Plaintiff’s vicarious trademark infringement and common law
unfair competition claims against Mr. Pittman.
14

goods
or
services;
and
(5)
that
the
defendant used the mark in a manner likely
to confuse consumers.
People for the Ethical Treatment of Animals v. Doughney, 263
F.3d 359, 364 (4th Cir. 2001); accord Lamparello v. Falwell, 420
F.3d 309, 313 (4th Cir. 2005).

The likelihood of confusion is a

factual issue dependent on the circumstances of each case and is
ill-suited on a motion to dismiss.

See Petro Stropping Ctrs.,

L.P. v. James River Petroleum, Inc., 130 F.3d 88, 92 (4th Cir.
1997).7

Nevertheless, “a conclusory and ‘formulaic recitation’

of the elements of a trademark infringement cause of action is
insufficient to survive a motion to dismiss.”

Hensley Mfg. v.

ProPride, Inc., 579 F.3d 603, 609 & n.3 (6th Cir. 2009).
When the USPTO issues a certificate of registration, that
registration provides prima facie evidence of: (1) the validity
of the mark and its registration; (2) the registrant’s mark; and
(3) the registrant’s “exclusive right” to use the mark on or in
connection

with

the

goods

and

7

services

specified

in

the

Defendants do not dispute in their motion to dismiss
Plaintiff’s contention that Defendants’ use of the marks creates
a likelihood of confusion among alumni.
But even if they did,
the facts alleged in the complaint are sufficient to state a
claim for relief.
The complaint alleges that two competing
alumni associations fundraise, plan, and organize alumni events,
all the while using the same marks in their communications with
alumni to solicit contributions and encourage attendance at
events. (ECF No. 1 ¶¶ 28, 29). The allegation that both alumni
associations use “Takoma Academy” and target largely the same
audiences is sufficient to plead likelihood of confusion. (Id.
¶¶ 36, 39, 40).
15

certificate

of

Search.com,

Inc.,

registrant’s
services

registration.
300

right

becomes

to

F.2d
use

a

U.S.

Search,

517,

524

mark

in

incontestable

once

(4th

LLC

Cir.

commerce
the

U.S.

2002).

A

goods

and

for

mark

v.

has

been

in

continuous service for five years subsequent to the date of
registration.

See 15 U.S.C. § 1065.

If a mark is contestable

or has not been registered with the USPTO, its validity and
protectability

under

distinctiveness.”

trademark

law

is

“tied

to

[its]

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).8
Courts measure a mark’s distinctiveness along a spectrum
that

encompasses

four

broad

categories:

generic

marks,

descriptive marks, suggestive marks, and arbitrary or fanciful
marks.

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, 393-394 (4th Cir. 2009).

A more distinctive

mark enjoys greater protection under trademark law.
are

suggestive

or

arbitrary

are

considered

Marks that
“strong

and

presumptively valid” and are entitled to trademark protection.

8

“Distinctiveness is a question of fact, whether the
question
is
inherent
distinctiveness
or
acquired
distinctiveness.”
St. Luke’s Cataract & Laser Inst., P.A. v.
Sanderson, 573 F.3d 1186, 1208 (11th Cir. 2009).
16

Pizzeria

Uno

Corp.,

747

F.2d

at

1527.

In

contrast,

a

descriptive mark is entitled to protection only upon proof of
secondary meaning.

Id.

The United States Court of Appeals for

the Fourth Circuit has defined “secondary meaning” - sometimes
referred

to

as

acquired

public’s

understanding

distinctiveness

that

the

mark,

-

as

when

“the

used

in

consuming
context,

refers, not to what the descriptive word ordinarily describes,
but

to

the

identify.”

particular

that

the

mark

protected

when

establish

a

mental

mark

and

meant

to

they

a

Put differently, descriptive marks are
have

Plaintiff

“become

association
single

Servs., 364 F.3d at 539.

sufficiently

in

source

minds

of

product.”

the

grants

between

to
the

Retail

(emphasis in original).

registered

registration

distinctive

buyers’

the

mark

“TAKOMA

ACADEMY”

USPTO on February 5, 2013. (ECF No. 1, at 2).
of

is

Perini Corp. v. Perini Constr., Inc., 915 F.2d 121,

125 (4th Cir. 1990).

alleged

business

a

presumption

of

with

the

The certificate
ownership,

which

Defendants must overcome by a preponderance of the evidence.
See George & Co., 575 F.3d at 400 n.15.

Defendants argue that

the unincorporated alumni association, TAAA, holds common law
rights “with respect to the subject phrase” by way of “fortyplus year history” and that the incorporated alumni association,
TAAA,

Inc.,

unincorporated

as

the

alumni

alleged

successor-in-interest

association,
17

thus

continues

to
to

the
hold

common-law rights to use “Takoma Academy Alumni Association.”
(ECF No. 9-1, at 8-9).

Defendants essentially maintain that

Plaintiff acquiesced to the unincorporated alumni association’s
use of the marks by allowing the incorporated alumni association
to use the marks.
It

is

(Id. at 11).

not

appropriate,

however,

to

consider

what

is

essentially an estoppel by acquiescence affirmative defense at
this

time.

acquiescence,

An

affirmative

is

not

defense,

ordinarily

such

considered

as
on

estoppel
a

motion

by
to

dismiss because the plaintiff is not required to negate it in
its complaint.

The purpose of a motion to dismiss under Rule

12(b)(6) is to “test the legal adequacy of the complaint, and
not

to

address

the

merits

of

any

affirmative

defenses.”

Richmond, Fredericksburg & Potomac R.R. Co. v. Forst, 4 F.3d
244, 250 (4th Cir. 1993).

“A court may consider defenses on a

12(b)(6) motion only ‘when the face of the complaint clearly
reveals the existence of a meritorious affirmative defense.’”
E. Shore Markets, Inc. v. J.D. Assoc. Ltd. P’ship, 213 F.3d 175,
185 (4th Cir. 2000); see also 5A Charles Alan Wright & Arthur R.
Miller, Federal Practice and Procedure § 1357, at 348 (2d ed.
1990).
That is not the case here.

In fact, Plaintiff’s complaint

pleads facts rendering it plausible that the “Takoma Academy”
mark is descriptive, that it has acquired secondary meaning, and
18

that

Defendants’

use

of

“Takoma

Academy,”

“TA,”

and

“Takoma

Academy Alumni Association” infringes on Plaintiff’s trademarks
rights.

Specifically, Plaintiff alleges that it has used “TA”

and “Takoma Academy” “continuously and exclusively . . . since
the school’s founding in 1904 in connection with the promotion,
sale,
(ECF

and
No.

provision
1

¶

of

10).

its

educational

Plaintiff

goods

further

and

contends

services.”

that

Takoma

Academy has used “TA” and “Takoma Academy” “to identify Takoma
Academy’s services and distinguish them from the services of
other

educational

prominently
building,

institutions,

displaying

letterhead,

and

using

by

among

such

correspondence,

other

Marks

bills,

on

things,

the

direct

mailings,

and school and alumni newsletters, among other things.”
12).

school

(Id. ¶

Plaintiff argues that Defendants’ use of “Takoma Academy”

and “TA” in the formation of TAAA, Inc., in communications with
the general public and Takoma Academy alumni, and in connection
with fundraising efforts and alumni activities has a likelihood
of

causing

–

and

has

actually

caused

constitutes trademark infringement.

–

confusion,

and

this

(Id. ¶ 28).

Considering the liberal pleading standard under Rule 8(a),
plaintiff

has

pled

sufficient

trademark

infringement

and

facts

federal

competition.

19

at
and

this

stage

common

law

to

show

unfair

3.
Vicarious
Trademark
Infringement
and
Unfair
Competition (Count II) and Common Law Unfair Competition
(Count III)
“‘Vicarious

liability’

in

the

trademark

context

is

essentially the same as in the tort context: plaintiff seeks to
impose liability based on the defendant’s relationship with a
third party tortfeasor.”

Rosetta Stone Ltd. v. Google, Inc.,

676 F.3d 144, 165 (4th Cir. 2012).

A joint tortfeasor may bear

vicarious liability for trademark infringement by another.

See

Hard Rock Café Licensing Corp. v. Concessions Servs., Inc., 955
F.2d 1143, 1150 (7th Cir. 1992).

This theory of liability for

vicarious trademark infringement exists where “the defendant and
the

infringer

have

an

apparent

or

actual

partnership,

have

authority to bind one another in transactions with third parties
or

exercise

product.”

joint

ownership

or

control

over

the

infringing

Rosetta Stone, Ltd., 676 F.3d at 165 (quoting Hard

Rock Café Licensing Corp., 955 F.2d at 1150) (emphasis added).
Here,

Defendants’

main

contention

is

that

Mr.

Pittman

cannot be held vicariously liable for trademark infringement
because Plaintiff cannot show, as a threshold issue, that the
incorporated

alumni

infringement.
that

acts

(ECF No. 9-1, at 13).

Plaintiff

intentionally

association’s

has

caused

not
or

put

forth

induced

said

constituted

trademark

Defendants further assert
evidence

that

infringement.”

“Pittman
(Id.).

Plaintiff, however, is not required to allege that Mr. Pittman
20

acted intentionally to plead vicarious trademark infringement;
instead, Plaintiff must show only that Mr. Pittman exercised
joint control with TAAA, Inc. over the infringing conduct.
Plaintiff has pled sufficient facts to survive a motion to
dismiss on Counts II and III as to Mr. Pittman’s liability.
First, Plaintiff asserts that Mr. Pittman exercised control over
TAAA, Inc.’s actions, controlled the “funds he raise[d] by and
through

TAAA,

Inc.”

in

his

role

as

President,

organized,

advertised, and hosted alumni week “using Plaintiff’s Marks to
communicate

with

alumni

regarding

that

alumni

week,”

and

continued to use the marks irrespective of the Cease and Desist
letter Plaintiff sent, which letter was specifically addressed
to him.

(ECF No. 1 ¶¶ 47, 48, 53); see RGS Labs Intern., Inc.

v. The Sherwin-Williams Co., 2010 WL 317778, at *3 (S.D.Fla.
Jan. 11, 2010)(denying defendant’s motion to dismiss vicarious
liability claim where plaintiff alleged that defendant was sole
member of infringing company, which had some control over the
infringing

product).

Second,

Mr.

Pittman

incorporated

the

alumni association by filing Articles of Incorporation on April
10, 2012, thus establishing TAAA, Inc.
No.

1-2,

at

incorporating

4-11).
the

alumni

Thus,

(Id.

Plaintiff

association,

Mr.

¶ 16; see also ECF
maintains

that

by

Pittman

exercised

control over the allegedly infringing entity itself.

Plaintiff

alleges that TAAA, Inc., under Mr. Pittman’s control, guidance,
21

and advice as President and agent of TAAA, Inc., (id. ¶ 26),
continued to use Plaintiff’s marks in interstate commerce in
communicating and soliciting funds from alumni, irrespective of
Plaintiff’s demand that Mr. Pittman and TAAA, Inc. cease using
the marks, and despite “knowing it would create a likelihood of
confusion among alumni, consumers, and others.”
Thus,
Potomac

viewed

in

the

Conference

has

light
pled

most

favorable

sufficient

(Id. ¶¶ 47-53).
to

facts

Plaintiff,
to

survive

Defendants’ motion to dismiss Counts II and III.
4.
Under

Count IV – Conversion by Wrongful Detention
Maryland

law,

contains two elements.

the

common

law

tort

of

conversion

First, the plaintiff must prove the

defendant exerted “any distinct ownership or dominion . . .
over the personal property of another in denial of his right or
inconsistent with it.”

Darcars Motors of Silver Spring, Inc. v.

Borzym, 379 Md. 249, 261 (2004).

“This act of ownership for

conversion can occur either by initially acquiring the property
or by retaining it longer than the rightful possessor permits.”
Id.

Second, the defendant must have “an intent to exercise

dominion or control over the goods which is in fact inconsistent
with the plaintiff’s rights.”

Id. at 262.

Defendants do not specifically explain how Plaintiff fails
to state a conversion claim, but allege that “[t]he Plaintiff’s
Complaint

is

completely

devoid
22

of

any

factual

allegations

demonstrating Mr. Pittman engaged in any wrongdoing or obtained
a benefit from the actions complained” or that Mr. Pittman acted
fraudulently.
has

pled

(ECF No. 9-1, at 13).

sufficient

Plaintiff

alleges

“Plaintiff’s

Alumni

facts

to

To the contrary, Plaintiff

show

conversion

by

Information

conversion.
Defendants’

.

.

.

Specifically,
retention

under

the

guise

of
of

rightful ownership” even after Plaintiff disassociated from the
alumni association on June 7, 2012 and sent a Cease and Desist
Letter

to

Mr.

Pittman.

(ECF

No.

1

¶

63).

Conversion

encompasses “acts constituting an unauthorized and injurious use
of another’s property, or a wrongful detention after demand has
been made.”

Sher v. SAF Financial, Inc., 2011 WL 1466451, at *4

(D.Md.

15,

Apr.

2011)

(quoting

In

re

Yalkut,

143

N.M.

387

(2008)).
Here, Plaintiff addressed the January 17, 2013 Cease and
Desist Letter to Mr. Pittman, demanding from Mr. Pittman that he
return “all databases, alumni lists and other property belonging
to Takoma Academy which were given to [Mr. Pittman] when [he]
became president of the [unincorporated alumni association.]”
(Id. ¶¶ 64-66; see also ECF No. 1-2, at 43).

“Mere temporary

interference with property rights is not sufficient” to show
conversion, but here, Mr. Pittman’s interference is ongoing, not
temporary, as he has allegedly continued to withhold and use
“Alumni Information” which Plaintiff asserts belongs to Takoma
23

Academy.

Waterfall Farm Systems, Inc. v. Craig, 914 F.Supp.

1213, 1227 (D.Md. 1995).
[including

Mr.

Plaintiff alleges that “Defendants

Pittman]

continue

to

use

Plaintiff’s

Alumni

Information in an unauthorized manner in operating TAAA, Inc.
and communicating with Takoma Academy alumni and the general
public.”

(ECF No. 1 ¶ 66).

Defendants assert that Plaintiff’s complaint fails to show
that

Mr.

Pittman

“obtained

a

benefit

from

the

actions

complained,” (ECF No. 9-1, at 13), but Plaintiff need not show
that Mr. Pittman obtained a benefit from the alleged conversion.
Instead,

conversion

converted

“a

wrongfully
Porter,

requires

plaintiff’s

deprive[d]

144

Md.

261

a

a

goods

showing
to

plaintiff

(1923).

his
of

own

their

Here,

that

a

use,
use.”

Plaintiff

defendant
or

.

.

Kirby

alleged

.
v.

that

Defendants, including Mr. Pittman, continue to use and refuse to
return Plaintiff’s database with alumni information.

(ECF No. 1

¶¶ 13, 66).
Accordingly, Plaintiff states a plausible conversion claim
and Defendants’ motion to dismiss this Count as to Mr. Pittman
will also be denied.
C.
In
fees

Defendants’ Request for Attorneys’ Fees and Costs
the

and

motion

costs

to

because

dismiss,

Defendants

Plaintiff’s

request

complaint

“is

attorneys’
frivolous,

defamatory, and filed in bad faith, with substantial misleading
24

statements and misrepresentations.”

(ECF No. 9, at 2).

Neither

side is entitled to fees at this point.
III. Conclusion
For the foregoing reasons, Defendants’ motion to dismiss
will be denied.

A separate order will follow.

/s/
DEBORAH K. CHASANOW
United States District Judge

25