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

Filing 38

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 Lanham
Act

trademark

infringement

and

unfair

competition

case

is

a

motion for a preliminary injunction filed by Plaintiff Potomac
Conference Corporation of Seventh-Day Adventists d/b/a Takoma
Academy

(“Potomac

Conference”

“Plaintiff”)

only

as

to

Association,

Inc.

(“TAAA,

or

“Takoma

Defendant
Inc.”

association” or “Defendant”).1

or

Takoma

Academy”

or

Academy

Alumni

“incorporated

alumni

(ECF No 12).

The issues have

been fully briefed and a preliminary injunction hearing was held
on

August

22-23,

2013.2

On

September

5,

2013,

the

parties

1

Although Plaintiff lodges the complaint against two
defendants – TAAA, Inc. and Henry Pittman, TAAA, Inc.’s former
president – Plaintiff seeks the preliminary injunction only
against TAAA, Inc.
2

On August 29, 2013, Plaintiff submitted a post-hearing
supplemental brief. Subsequently, TAAA, Inc. filed a motion to

jointly requested 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).

For the reasons that follow, Plaintiff’s motion for a

preliminary injunction will be granted.
I.

Background
A.

Factual Background

The following facts are based on the current record.
case

involves

association.

a

dispute

between

a

school

and

an

This
alumni

Takoma Academy is a secondary school that provides

educational services to children from grades nine (9) through
twelve (12).

The Potomac Conference owns and operates a number

of Seventh-day Adventist churches and schools, including Takoma
strike this document.
Defendant’s motion to strike does not
seek to strike any portion of a pleading; rather it aims to
strike a document that Plaintiff submitted after a hearing. See
Fed.R.Civ.P. 7(a). Federal Rule of Civil Procedure 12(f) allows
the court to strike certain matters “from a pleading.” Pursuant
to Federal Rule of Civil Procedure 7(a), “pleadings” include a
complaint, a counterclaim, a third-party complaint, an answer,
and a reply, if ordered. Rule 12(f) may only address the papers
listed in Rule 7(a). See, e.g., Hrivnak v. NCO Portfolio Mgmt.,
Inc., 723 F.Supp.2d 1020, 1029 (N.D.Ohio 2010) (“While some
courts have employed Fed.R.Civ.P. 12(f) to strike an affidavit
or a brief, or portions thereof, there is no basis in the
Federal Rules for doing so.”). Because there is no basis in the
Federal Rules for striking Plaintiff’s post-hearing supplement,
Defendant’s motion to strike is denied. Defendant alternatively
requested that the court provide an opportunity for Defendant to
respond to Plaintiff’s post-hearing supplement. No response to
Plaintiff’s supplemental submission is necessary to resolve the
pending motion.
2

Academy.

Washington Training Institution founded Takoma Academy

in 1904; Takoma Academy then became a separate institution as
part of the Potomac Conference in 1934.

(ECF No. 1 ¶ 10).

The

school has used names “Takoma Academy” and “TA” since it was
founded in 1904.
“students,

(Testimony of Keith Hallam).

faculty,

school as “TA.”

and

friends”

of

Takoma

Takoma

Takoma

Academy

Academy

know

the

The school uses “Takoma Academy” and “TA” on

its letterhead, on signs, and in newsletters.
Several

Furthermore,

Academy

Alumni

faculty

Association

(Id.).

members

(“TAAA”

or

established

the

“unincorporated

alumni association”) in the 1970s during J.P. “Prof Laurence’s”
tenure

as

principal

of

Takoma

Academy.

(Pl.’s

Hr’g

Ex.

6,

Plaintiff’s Fact Sheet (Apr. 17, 2013)); (see also Pl.’s Hr’g
Ex. 12, Letter from Richard Osborn dated April 1, 1977).

Dr.

Richard Osborn, a faculty representative from Takoma Academy,
worked with “Prof Laurence” and “spearheaded the formation of
the [Takoma Academy Alumni Association].”

(Id.).

Both school

alumni and representatives from Takoma Academy served on the
nineteen (19) - member alumni board.

(Id.).

Takoma Academy

oversaw TAAA and controlled its finances and assets.
12, at 2).

(ECF No.

Specifically, TAAA’s Constitution and By-Laws from

April 1989 provides that:
[s]uch funds as may be necessary to carry
out the purposes of the Association shall be
provided by the Treasurer of Takoma Academy
3

in
accordance
with
the
procedures
and
authorizations as may be established from
time to time by the Principal or the Board
of Trustees of Takoma Academy.
All funds
received by the Association from any source
whatsoever
will
be
remitted
to
Takoma
Academy to be held by the Treasurer, either
as part of the general funds of Takoma
Academy or segregated in accordance with
limitations that may be imposed by any gift.
(Pl.’s

Hr’g

Constitution

Ex.
and

19,

Takoma

By-Laws).

TAAA

Academy
also

Alumni

traditionally

under Takoma Academy’s tax-exempt umbrella.
Plaintiff’s Fact Sheet).

Association
operated

(Pl.’s Hr’g Ex. 6,

Takoma Academy further provided a gift

receipt to donors who contributed to TAAA for donors to qualify
for a tax exemption.

(Id.).

Takoma Academy also maintained a

database of alumni contact information through Rick Feldman, a
Takoma Academy alumnus.

(Testimony of Keith Hallam and David

Daniels).
Henry Pittman (“Pittman”), a Takoma Academy alumnus, became
TAAA’s president in April of 2011.

TAAA and Takoma Academy

eventually disagreed about the mission of the alumni association
and the level of control that Takoma Academy should exercise
over

the

alumni

association.

Based

on

testimony

at

the

preliminary injunction hearing, the alumni association, under
Mr. Pittman’s leadership, wanted to raise funds for individual
Takoma Academy alumni in addition to fundraising for the school
and its students.

(Pl.’s Hr’g Ex. 31, Message from TAAA, Inc.’s

4

Board of Directors dated January 30, 2013).

Furthermore, the

alumni association wished “fundraising to occur independently of
the [Takoma Academy] Board’s approval and the Board’s control
over funds.”

(Id.).

authorization

from

Consequently, on April 10, 2012, without
Takoma

Academy,

(ECF

No.

12-2,

at

1

(affidavit of David Daniels)), Mr. Pittman filed Articles of
Incorporation with the Maryland State Department of Assessments
and Taxation to incorporate the alumni association and establish
Takoma

Academy

“incorporated

Alumni
alumni

Association,
association”).

Inc.

(“TAAA,

(Pl.’s

Hr’g

Inc.”
Ex.

or
20,

Articles of Incorporation dated April 10, 2012).
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.

(Pl.’s Hr’g Ex. 1, Plaintiff’s registration

of “Takoma Academy”).
the

“Takoma

Academy”

On May 7, 2013, Plaintiff also registered
design

mark,

with

the

initials

“TA”

appearing in the middle of the seal, superimposed over each
other.

The stylized term and year “EST. 1904” appear at the

bottom of the seal inside concentric circles.

The certificate

of registration indicates that the design mark has been used in
commerce since December 31, 2006.

5

(Pl. Hr’g Ex. 65).

The

certificate of registration indicates that the design mark was
registered on February 26, 2013, but corrected on May 7, 2013.
Then, on June 7, 2012, the Takoma Academy Board of Trustees
“voted

to

TAAA,

withdraw

Inc.

and

Defendants.”
Daniels)).

support

promptly

(ECF.

No.

and

disassociate

the

school

gave

notice

of

12-2,

at

(affidavit

2

such

from

action
of

to

David

On June 14, 2012, Keith Hallam, the Vice President

of Education for Potomac Conference of Seventh-Day Adventists,
sent an email to Mr. Pittman informing him of this decision and
requested that Mr. Pittman “cease using the name Takoma Academy
or holding [his] organization as in any way associated with
Takoma Academy.”

(Pl.’s Hr’g Ex. 55, Letter from Keith Hallam

dated June 14, 2012).

Mr. Hallam further requested that “all

monies being held by [TAAA, Inc.] be returned to the school
along with alumni rosters and contact information.”

(Id.).

On July 9, 2012, after Mr. Pittman incorporated the alumni
association, the TAAA Board voted to approve the incorporation.
(Pl.’s Hr’g Ex. 25, July 9, 2012 Board of Directors Meeting
Minutes).

On July 29, 2012, TAAA, Inc. held a membership vote

“to affirm the officers’ decision to have the governance of . .
. association remain with alumnus.”

(Pl.’s Hr’g Ex. 27, Message

from Pittman dated August 2, 2012).

Thirteen alumni association

members

voted

“to

affirm

officers’

decision

to

have

the

governance of the Takoma Academy Alumni Association, Inc. remain
6

with

alumnus

and

not

under

the

governance

of

the

Board

of

Trustees of Takoma Academy and/or the Potomac Conference of the
Seventh-day

Adventist

Church.”

(Pl.’s

Hr’g

Ex.

58,

Voting

Ballot from July 29, 2012).
On January 17, 2013, Takoma Academy sent a second 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” and to “immediately return to Takoma
Academy all databases, alumni lists and other property belonging
to Takoma Academy which were given to [Pittman] when [he] became
president of the Takoma Academy Alumni Association.”

(Pl.’s

Hr’g Ex. 2, Cease and Desist Letter dated January 17, 2013)
(emphasis in original).
On March 21, 2013, Mr. Pittman filed an Application for
Recognition of Exemption under Section 501(c)(3) of the Internal
Revenue

Code

(“Form

1023)

with

the

Internal

(“IRS”), which was approved on May 31, 2013.

Revenue

Service

(Pl.’s Hr’g Ex.

57, TAAA, Inc.’s Application for 501(c)(3) status).

In the

“history” section of the application, Mr. Pittman answered “no”
to the question of whether TAAA, Inc. is “a successor to another
organization.”

(Id. at 5).

Instead of ceasing to use “Takoma Academy” and “TA,” as
requested in Plaintiff’s Cease and Desist letters, on April 12,
2013, TAAA, Inc., through the law firm of Finnegan, Henderson,
7

Farabow, Garrett & Dunner, LLP, sent Takoma Academy its own
Cease

&

Desist

letter

demanding

that

Takoma

Academy

“[i]mmediately cease and desist from all further use of the
TAKOMA ACADEMY ALUMNI ASSOCIATION MARK” and “[r]emove all such
materials utilizing the TAKOMA ACADEMY ALUMNI ASSOCIATION mark
online or otherwise in its possession or control, including all
copies in electronic or printed form.”

(Pl.’s Hr’g Ex. 8, Cease

and Desist Letter from Defendant, dated April 12, 2013).
That

same

day,

on

April

12,

2013,

TAAA,

Inc.

filed

an

application with the USPTO to register the service mark “Takoma
Academy Alumni Association” for “[a]ssociation services, namely
promoting interests of alumni of Takoma Academy.”
Ex.

53,

mark).

Registration

of

“Takoma

Academy

Alumni

(Pl.’s Hr’g
Association”

Plaintiff maintains that Takoma Academy continues to

have an alumni association, TAAA, and that “TAAA, Inc. is not in
any way associated with or sponsored by Takoma Academy.”

(Id.).

(Pl.’s Hr’g Ex. 7, Letter from Potomac Conference dated April
18, 2013; see also ECF No. 12-3, at 2 (Affidavit of Takoma
Academy)).

TAAA elected a new president on April 28, 2013.

(ECF No. 12-3, at 2 (Affidavit of Takoma Academy)).
Plaintiff

alleges

that

after

the

incorporation

and

even

after Takoma Academy disassociated from TAAA, Inc. on June 7,
2012 and sent a second Cease and Desist Letter on January 17,
2013,

TAAA,

Inc.

continued

–

and
8

still

continues

–

to

use

“Takoma Academy,” “TA,” “Takoma Academy Alumni Association,” and
“TAAA” in communications with Takoma Academy alumni.
12-1, at 4).
acts.

(ECF No.

Plaintiff identifies numerous allegedly infringing

First, Defendant uses “Takoma Academy Alumni Association”

and “Takoma Academy Alumni Association, Inc.” interchangeably in
communicating with alumni.
33,

34).

For

instance,

(Id.); (see also Pl.’s Hr’g. Exs.
ongoing

notices

from

TAAA,

Inc.

to

alumni about upcoming events use both “Takoma Academy Alumni
Association”

and

interchangeably.
TAAA, Inc.).

“Takoma

Academy

Alumni

Association,

Inc.”

(Pl.’s Hr’g. Exhs. 33 - 41, missives from

Furthermore, several missives from TAAA, Inc. are

titled “Takoma Academy Alumni Association,” but Defendant signs
as “[y]our Takoma Academy Alumni Association, Inc . . .

circa

1977,” which Plaintiff asserts suggests that TAAA, Inc. is the
same unincorporated alumni association that continues to exist
under Takoma Academy.

(Id., Exs. 35-37; see also Pl.’s Hr’g Ex.

36 (announcement from TAAA, Inc. about appointment of Board of
Directors

under

Association”)).

the

heading

Defendant

further

“Takoma
makes

Academy
statements

Alumni
such

as

“TAAA, Inc., your alumni association . . .” in its missives to
Takoma Academy alumni.

(Pl.’s Hr’g Ex. 32, Letter from Henry

Pittman dated March 8, 2013) (emphasis added)).
Moreover,

both

Plaintiff

and

TAAA,

Inc.

host

competing

alumni events referencing “Takoma Academy” in their promotional
9

materials to alumni.
12, at 5).

(Pl.’s Hr’g Exs. 3, 4; see also ECF No.

For instance, both TAAA and TAAA, Inc. hosted golf

tournaments for alumni the weekend of April 26-28, 2013.
Both

organizations

also

fundraise

and

attempt

donations from the same alumni population.

(Id.).

to

collect

(ECF No. 1-2, at 18

(message from Pittman)).
Additionally,

TAAA,

www.taalumni.org,

which

Alumni,”

Inc.

Academy,”

“Takoma

Association.”

is

operates

replete
and

with

the

a

website,

references

“Takoma

to

Academy

“TA

Alumni

(Pl.’s Hr’g Ex. 42, TAAA, Inc.’s website).

On

January 29, 2013, TAAA, Inc. also created a page on the LinkedIn
website,3

in

Alumni.
Alumni

which

it

references

“TAAA”

and

Takoma

Academy

(Pl.’s Hr’g Ex. 43, LinkedIn page of Takoma Academy
Association,

Facebook

page

that

Inc.).

Finally,

includes

the

TAAA,

logo

Inc.

“The

maintains

Official

a

Takoma

Academy Alumni Association (TAAA)” and which alumni can join,
“like,” and on which they can post comments.

(Pl.’s Hr’g Ex.

45, TAAA, Inc.’s Facebook Page).
Plaintiff asserts ownership of the marks and maintains that
the

above

activity

and

Defendant’s

continued

use

of

“Takoma

Academy,” “TA,” “Takoma Academy Alumni Association,” and “TAAA”
creates

a

likelihood

of

confusion

3

and

has

LinkedIn is a professional network
individual and company profiles and groups.
10

caused

that

actual

includes

confusion among alumni and the general public.
Plaintiff

contends

contacted

the

that

school

several

“regarding

Takoma

Specifically,

Academy

their

alumni

confusion

over

have
the

purported affiliation between TAAA, Inc. and Takoma Academy.”
(ECF No. 12-3, at 1 (affidavit of Takoma Academy)).

Alumni have

submitted emails expressing their confusion over the use of the
marks by both Plaintiff and TAAA, Inc. and questioned which
alumni association is real or fake.
B.

(ECF No. 12-6, 12-7).

Procedural History

Plaintiff filed a complaint on April 16, 2013, alleging
four

types

of

claims:

(1)

trademark

infringement

and

unfair

competition under the Lanham Act, 15 U.S.C. §§ 1114(1)(a) and
1125(a) (against both TAAA, Inc. and Mr. Pittman); (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 TAAA, Inc. and Mr.
Pittman);

and

(4)

conversion

TAAA, Inc. and Mr. Pittman).
Plaintiff

sought

a

by

wrongful

Inc.

opposed

(against

(ECF No. 1 ¶¶ 31-67).

preliminary

Defendant TAAA, Inc. on June 28, 2013.
TAAA,

detention

Plaintiff’s

injunction

only

(ECF No. 12).

motion

for

a

against

Defendant
preliminary

injunction on August 9, 2013 (ECF No. 17) and Plaintiff replied
on August 16, 2013.

(ECF No. 18).

Plaintiff’s

for

motion

a

During a two-day hearing on

preliminary
11

injunction,

Plaintiff

presented testimony from the following witnesses: Sharon Froom,
a

1976

Takoma

Academy

graduate;

Dr.

Hamlet

Canosa,

Vice

President for Education at the Columbia Union Conference and a
former member of the Takoma Academy Board of Directors; Keith
Hallam, Vice President of Education for Potomac Conference of
Seventh-Day
graduate

Adventists;

and

former

Ellen

Nixon,

Treasurer

of

a

1957

the

Takoma

Academy

unincorporated

alumni

association and Takoma Academy; David Daniels, former Principal
of Takoma Academy from July 2009 through June 30, 2012, who
served as the Chief Executive Officer of the Takoma Academy
campus;

Ronnie

fundraising

and

Earl

Mills,

alumni

assistant

affairs.

to

TAAA,

the
Inc.

principal
then

for

presented

testimony from the following witnesses: Henry Pittman, former
President of TAAA since April of 2011, and as of March 2013,
former president of TAAA, Inc.; Cathy Mills, former president of
TAAA from the late 1980s to the early 1990s, and the current
president of TAAA, Inc.
On

August

29,

supplemental letter.

2013,

Plaintiff

(ECF No. 25).

filed

a

post-hearing

Defendants then moved to

strike Plaintiff’s letter on August 30, 2013, (ECF No. 26), and
Plaintiff opposed this motion on September 10, 2013 (ECF No.

12

29).

As

stated

above,

Judge

Schulze

held

a

settlement

conference on October 21, 2013, but the parties did not settle.4
II.

Analysis
A

preliminary

injunction

is

an

extraordinary

remedy

and

will only be granted if the plaintiff clearly establishes that:
(1) it is likely to succeed on the merits; (2) it is likely to
suffer irreparable harm in the absence of preliminary relief;
(3) the balance of the equities tips in its favor; and (4) an
injunction is in the public interest.

Winter v. Natural Res.

Def. Council, Inc., 555 U.S. 7, 20 (2008); see also Real Truth
About Obama, Inc. v. Fed. Election Comm’n, 575 F.3d 342, 346 (4th
Cir.

2009),

rev’d

on

other

grounds,

559

U.S.

1089

(2010).

Plaintiff must prove all four elements to obtain relief.
A.

Likelihood of Success on the Merits

To

prevail

on

a

trademark

infringement

and

unfair

competition claim under Sections 32(1) and 43(a) of the Lanham
4

On December 6, 2013, Plaintiff filed a letter stating that
despite representations made at the preliminary injunction
hearing, TAAA, Inc. continues to use the word “official” “in
connection with its description of itself and its activities” on
Facebook, and representing to alumni that it is the successor to
the unincorporated alumni association. (ECF No. 32). Defendant
responded on December 20, 2013, explaining that “Facebook policy
only allows Groups with over 200 ‘likes’ to change its name only
. . . [a]s no ruling has been issued on the preliminary
injunction, let alone the fact that mediation has not formally
been concluded, Defendant was unsure as to the proper
alternative name for the Group Page.”
(ECF No. 33, at 3).
Plaintiff replied on December 27, 2013.
(ECF No. 34).
The
parties
essentially
relitigate
their
positions
in
these
submissions.
13

Act, a plaintiff must show that it “has a valid, protect[a]ble
trademark and that the defendant’s use of a colorable imitation
of the trademark is likely to cause confusion among consumers.”
Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43
F.3d 922, 930 (4th Cir. 1995).5

On a preliminary injunction,

plaintiff must show that it is likely to succeed on the merits.

5

Section 32 of the Lanham Act applies to registered marks,
and provides that:
(1) Any person who shall,
consent of the registrant-

without

the

(a)
use
in
commerce
any
reproduction,
counterfeit, copy, or colorable imitation of
a registered mark in connection with the
sale, offering for sale, distribution, or
advertising of any goods or services on or
in connection with which such use is likely
to cause confusion . . .
shall be liable in a civil action by the
registrant for the remedies hereinafter
provided.
15 U.S.C. § 1114(1). Section 43(a) of the Lanham Act applies to
unregistered marks, and provides that:
(1) 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 fact,
which –
(A) is likely to cause confusion, or
cause mistake, or to deceive as to
affiliation, connection, or association
such person with another person, or as
14

to
the
of
to

1.

Validity, Protectability, and Ownership of the Marks

At issue in this case is Defendant’s use of the following
marks

and

initials/abbreviations:

“TAKOMA

ACADEMY,”

“TA,”

“TAKOMA ACADEMY ALUMNI ASSOCIATION,” and “TAAA.”
“For

a

plaintiff

to

prevail

on

a

claim

of

trademark

infringement, the plaintiff must first and most fundamentally
prove that it has a valid and protectable mark.”
Inc.

v.

Motorola,

Inc.,

245

F.3d

335,

340

(4th

MicroStrategy
Cir.

2001).

Registration of a trademark is prima facie evidence that the
registrant owns the trademark and it is valid.

U.S. Search, LLC

v. U.S. Search.com Inc., 300 F.3d 517, 524 (4th Cir. 2002).

The

certificate of registration supplies “the registrant [with] . .
.

prima facie evidence that its mark is not generic in the eyes

of the relevant public . . . and that its mark . . . at a
minimum

is

descriptive

and

has

obtained

secondary

meaning.”

America Online, Inc. v. AT & T Corp., 243 F.3d 812, 816 (4th Cir.
2001) (emphasis in original).

“[T]he Commissioner [of Patents

and Trademarks] need not require evidence of secondary meaning

the origin, sponsorship, or approval of his
or
her
goods,
services,
or
commercial
activities by another person . . .
shall be liable in a civil action by any
person who believes that he or she is or is
likely to be damaged by such act.
15 U.S.C. § 1125(a).
15

if

the

applied-for

mark

is

inherently

suggestive, arbitrary, or fanciful.”

Id.

distinctive

by

being

This is a significant

procedural advantage for the registrant.

See Retail Servs.,

Inc. v. Freebies Publishing, 364 F.3d 535, 542 (4th Cir. 2004).
“Because the PTO may not register a generic mark, the fact that
a mark is registered is strong evidence that the mark satisfies
the statutory requirements for the distinctiveness necessary for
trademark protection.”

Id.; see also 15 U.S.C. §§ 1052(e), (f),

1057(b).

a

certificate

of

to

establish

that

would

“Without

be

required

registration,
the

the

disputed

owner

mark

was

sufficiently distinctive to warrant trademark protection in the
first place.”

Id.; see also Pizzeria Uno Corp. v. Temple, 747

F.2d 1522, 1529 (4th Cir. 1984).
is

to

satisfy

the

burden

of

The effect of the presumption
the

entity

seeking

protection in the absence of rebutting evidence.

trademark

See America

Online, 243 F.3d at 818; see also Tie Tech, Inc. v. Kinedyne
Corp., 296 F.3d 778, 783 (9th Cir. 2002) (“In trademark terms,
the registration is not absolute but is subject to rebuttal.

In

essence, the registration discharges the plaintiff’s original
common

law

burden

of

proving

validity

in

an

infringement

action.”).
Registration thus grants a presumption of ownership in the
trademark, and the party challenging the registrant’s ownership
“must

overcome

the

presumption
16

by

a

preponderance

of

the

evidence.”

George & Co. LLC v. Imagination Entm’t Ltd., 575

F.3d 383, 400 n.15 (4th Cir. 2009) (citing Vuitton et Fils S.A.
v. J. Young Enters., Inc., 644 F.2d 769, 775-76 (9th Cir. 1981)).
Nevertheless, the United States Court of Appeals for the Fourth
Circuit has noted that “[t]o acquire ownership of a trademark it
is not enough to have invented the mark first or even to have
registered it first; the party claiming ownership must have been
the first to actually use the mark in the sale of goods or
services.”

Emergency One, Inc. v. American Fire Eagle Engine

Co., Inc., 332 F.3d 264, 267 (4th Cir. 2003).
a.

“Takoma Academy”

“Takoma Academy” is the only service mark at issue which
Plaintiff registered.6

Specifically, Plaintiff registered the

“Takoma Academy” mark on February 5, 2013.

(Pl.’s Hr’g Ex. 1,

Plaintiff’s registration of “Takoma Academy”).

15 U.S.C. § 1065

provides that a mark becomes incontestable if it has “been in
continuous use for five consecutive years subsequent to the date
of . . . registration and is still in use in commerce.”

Because

Plaintiff has not used the registered “Takoma Academy” mark for
five

consecutive

years

subsequent

to

the

February

5,

2013

registration, Plaintiff is entitled to a rebuttable presumption

6

Although Defendant has applied to register “Takoma Academy
Alumni Association” with the USPTO (see ECF No. 12-8), the
record does not indicate that the USPTO has approved the
application and issued a certificate of registration.
17

of ownership and the mark is contestable.

See 15 U.S.C. § 1065.

Any persons challenging a registrant’s ownership may assert all
available legal or equitable defenses or defects, such as the
lack of ownership by the registrant.

See 15 U.S.C. § 1115(a).

The challenger bears the burden of refuting the registrant’s
presumption of ownership.

See Brittingham v. Jenkins, 914 F.2d

447, 455 (4th Cir. 1990).
Thus far, TAAA, Inc. has not rebutted the presumption of
ownership that attached to the “Takoma Academy” mark by way of
the registration.

Defendant argues that Plaintiff’s presumption

of ownership of the “Takoma Academy” mark is limited to the
context

in

which

it

was

registered,

namely

services only and not for alumni affairs.
The

Fourth

Circuit

has

trademark registration.

not

adopted

for

educational

(ECF No. 17, at 6).

such

a

narrow

view

of

See Synergistic Intern., LLC v. Korman,

470 F.3d 162, 173-74 (4th Cir. 2006) (holding that the PTO’s
registration of a suggestive mark should be broadly construed,
and the appropriate reading is not limited to the text of the
mark’s

registered

purpose).

Plaintiff’s

certificate

of

registration for the mark “Takoma Academy” states the purpose as
“educational services, namely providing courses of instruction
at the secondary (9th-12th grade) level, in class 41.”
Hr’g

Ex.

1,

International,

Certificate
the

court

of

Registration).

refused
18

to

limit

In
the

(Pl.’s

Synergistic

scope

of

the

mark’s protection to the context in which it was registered.
The mark at issue in Synergistic International was registered
for

use

in

connection

with

buildings and vehicles.”

the

“installation

of

glass

in

Defendant in that case argued that

plaintiff could not own the exclusive right to use its mark in
connection with the repair of windshields because it was never
registered
finding

for

that

windshield

purpose.
repair

The

and

Fourth

windshield

Circuit

disagreed,

installation

to

be

related services; the court was guided by the principle that a
mark is entitled to protection against “the same or a confusing
mark on the same product, or related products, and even on those
which may be considered by some to be unrelated but which the
public is likely to assume emanate from the trademark owner.”
Synergistic Intern., 470 F.3d at 173 (quoting Pizzeria Uno, 747
F.2d at 1527).
Educational
encompass

alumni

services

that

activities

a

school

associated

would be considered related products.
Villanova

Alumni

(E.D.Pa.

2000)

protectability

Educ.

Found.,

(noting

that

and

ownership

Inc.,
the

of

provides

with

that

inherently
school

and

See Villanova Univ. v.
123

F.Supp.2d

presumption

Villanova

of

293,

302

validity,

University’s

marks

also extended to charitable services because the “educational
activities of a non-profit educational institution inherently
encompass

charitable

services
19

.

.

.

[and]

[t]hus,

the

registration certificate logically extends to the University’s
use of these marks in fundraising activities that are necessary
to support its education and entertainment activities.”).

As

Plaintiff points out, alumni services are “necessary, inherent
and natural activities undertaken by the school in furtherance
of its educational services and mission.”
Based

on

the

unincorporated

current
alumni

record,

Takoma

association

in

(ECF No. 18, at 15).
Academy

the

founded

1970s,

the

the

alumni

association operated under Takoma Academy’s umbrella since the
1970s,

the

coordinated

alumni
by

association’s

and

through

finances

the

were

school

conducted

pursuant

to

and
the

Constitution and By-Laws, and Takoma Academy maintained alumni
information.
certificate

(ECF. No. 1 ¶¶ 12-13).
for

“Takoma

Academy”

Although the registration
does

not

specify

alumni

services, it appears that the registration logically extends to
the school’s use of “Takoma Academy” in alumni activities, the
fundraising

from

which

is

used

to

support

initiatives and extracurricular activities.

its

education

Accordingly, the

current record supports that Plaintiff has shown a likelihood of
establishing that “Takoma Academy” is a valid and protectable
mark.

20

b.

“Takoma Academy Alumni Association”

Plaintiff

has

Association.”
federal

law

not

registered

“Takoma

Academy

Alumni

Whether an unregistered mark is protected under
depends

upon

its

classification

–

either

as

“generic,” “descriptive,” “suggestive,” or “arbitrary/fanciful.”
See

U.S.

protection

Search,

300

accorded

distinctiveness.

to

F.3d
a

at

523.

mark

Thus,

hinges

on

the

the

degree

extent

of

of
its

Retail Servs. Inc., 364 F.3d at 538 (quoting

Two Pesos, Inc. v. Taco Cabana Inc., 505 U.S. 763, 768 (1992)).
Marks that are suggestive or arbitrary are considered “strong
and

presumptively

protection.

valid”

and

are

entitled

Pizzeria Uno, 747 F.2d at 1527.

to

trademark

In contrast, a

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

Id.

“Descriptive marks merely describe a

function, use, characteristic, size, or intended purpose of the
product.”
connotes,

Id.
without

In contrast, “[a] mark is suggestive if it
describing,

some

characteristic of the product.”

quality,

ingredient,

or

Retail Servs. Inc., 364 F.3d at

539 (quotations, citations, and brackets omitted).

The clearest

way to distinguish between a descriptive and suggestive mark is
to look to the manner in which the mark’s message is conveyed:
“if the mark imparts information directly, it is descriptive,”
but [i]f it stands for an idea which requires some operation of
the imagination to connect it with the goods, it is suggestive.”
21

George & Co., 575 F.3d at 394 (quoting Pizzeria Uno, 747 F.2d at
1528).
The distinction between suggestive and descriptive marks is
an important one, as suggestive marks are treated as inherently
distinctive, while descriptive ones are not.
F.3d at 394.

OBX-Stock, 558

The Lanham Act thus “accord[s] protection [to

descriptive

marks]

meaning.’”

Larsen v. Terk Techs. Corp., 151 F.3d 140, 148 (4th

Cir. 1998).

only

if

they

have

acquired

a

‘secondary

Saying that a trademark has acquired “secondary

meaning” means that a descriptive mark has become sufficiently
distinctive to establish “a mental association in buyers’ minds
between the alleged mark and a single source of the product.”

2

McCarthy on Trademarks and Unfair Competition § 15:5 (4th ed.
updated Dec. 2013); Sara Lee, 81 F.3d at 464 (explaining that
“secondary meaning” exists when, “in the minds of the public,
the primary significance of a product feature or term is to
identify

the

source

of

the

product

itself.”

(internal quotation marks omitted)).7

7

rather

than

the

product

As McCarthy explains, “[w]hile the ‘focus’ of secondary
meaning is the ‘consuming public,’ it need not be proven among
the general public if a product is targeted at only a specific
segment of the general public.”
2 McCarthy on Trademark and
th
Unfair Competition § 15:46 (4 ed. updated Dec. 2013); President
& Trustees of Colby College v. Colby College-New Hampshire, 508
F.2d 804, 808 (1st Cir. 1975) (College could prove secondary
meaning by showing “the congruence of its name and its
institution in the minds of an appreciable number of individuals
broadly associated with other institutions of higher education
22

Here, both parties seem to agree that “Takoma Academy” is a
descriptive mark.8

Even absent a presumption of validity and

ownership afforded to “Takoma Academy” from its registration, as
will be seen, Plaintiff has shown a likelihood of success in
demonstrating

that

it

acquired

common

law

rights

to

“Takoma

Academy” and “Takoma Academy Alumni Association” and that both
have acquired secondary meaning.
First, the registration certificate for “Takoma Academy”
reflects that the mark was first used in commerce on December
31, 1904.

(Pl.’s Hr’g Ex. 1, Registration Certificate).

Based

on testimony from Keith Hallam, Plaintiff has since used the
mark continuously, and it is prominently displayed on the school

in a given geographic area”); Centaur Commc’ns, Ltd. v. A/S/M
Communications, Inc., 830 F.2d 1217 (2d Cir. 1987) (“[I]t is only
necessary to show that a substantial segment of the relevant
group of consumers made the requisite association between the
product and the producer.”) (emphasis added).
8

Although neither party addresses this in their briefs,
“Takoma Academy Alumni Association” may be a collective
membership mark, which is a trademark “used by the members of a
cooperative,
association,
or
other
collective
group
or
organization.”
Nat’l Bd. for Certification in Occupational
Therapy, Inc. v. American Occupational Therapy Assoc., 24
F.Supp.2d 494, 503 n.6 (D.Md. 1998) (quoting 15 U.S.C. § 1127);
see also Villanova, 123 F.Supp.2d at 296 (noting that “Villanova
Alumni Association” is a collective membership mark that
identified members of the alumni association and was used in
connection with services offered by the alumni association and
Villanova graduates).
As will be seen, regardless of whether
“Takoma Academy Alumni Association” is a collective membership
mark, Plaintiff has demonstrated a likelihood that “Takoma
Academy Alumni Association” acquired secondary meaning among
alumni.
23

building,

letterhead,

correspondence,

and school and alumni newsletters.
With

respect

Nixon,

who

to

“Takoma

served

as

bills,

direct

mailings,

(See also ECF No. 17-2).

Academy

Alumni

Association,”

Takoma

Academy’s

Treasurer

Ellen
(and

subsequently TAAA’s Treasurer) from 1972-1986, testified that in
the

1970s,

member,

Takoma

Mr.

Association.
from

July

Academy’s

Osborne,

to

principal

create

the

appointed
Takoma

a

faculty

Academy

Alumni

David Daniels, former Principal of Takoma Academy

2009

through

June

30,

2012,

and

Chief

Executive

Officer of the Takoma Academy campus, testified that Plaintiff
used the term “Takoma Academy Alumni Association” in mailings,
in planning activities and weekend events, and in soliciting
funds and support from alumni.9

Mr. Davis also testified that

Plaintiff used the name “Takoma Academy Alumni Association” in
planning alumni week.
Mr. Daniels further testified that Plaintiff established
the “worthy student fund,” which the school operated to provide
tuition scholarships to students.
money

Takoma

Academy

Alumni

According to Mr. Daniels, the

Association

raised

was

used

to

support this fund, and donors to TAAA received a tax deduction
receipt as a result of the donation.

9

By contrast, Mr. Davis

Mr. Davis indicated during cross-examination that the
school generated the mailings, including newsletters, in
conjunction with the unincorporated alumni association, using
the name “Takoma Academy Alumni Association.”
24

testified that individuals who donated to TAAA, Inc. and asked
for tax deduction receipts from Plaintiff were denied because
the school was not associated with TAAA, Inc.

This testimony

that Takoma Academy gave tax deduction receipts to donors to
Takoma

Academy

Alumni

Association,

and

donors

subsequently

sought such deductions from Takoma Academy when they contributed
to TAAA, Inc., suggests that alumni associate “Takoma Academy
Alumni Association” with Plaintiff.
whether

“Villanova

meaning,

the

affirmative,

Alumni

Villanova
noting

Association”

court

that

Similarly, in addressing

answered

“[l]ike

acquired
the

secondary

question

‘Villanova’

and

in

the

‘Villanova

University,’ the primary significance of ‘Villanova Alumni’ is
identification with the plaintiff.”
like

in

Villanova,

Mr.

Daniels

123 F.Supp.2d at 303.
testified

that

association functioned as part of the academy.

the

Much
alumni

As evidenced by

the testimony, consumers of the alumni association’s services
affiliated “Takoma Academy Alumni Association” with Plaintiff.
Accordingly,
established

based
a

on

likelihood

the
of

present

record,

success

in

Plaintiff

showing

that

has

“Takoma

Academy Alumni Association” acquired secondary meaning.
In addition to the question of the mark’s distinctiveness,
the parties dispute its ownership.
is

a

successor

“TAKOMA

ACADEMY

in

interest

ALUMNI

to

TAAA,

ASSOCIATION”
25

TAAA, Inc. asserts that it
and

has

used

exclusively,

the

openly,

name
and

notoriously for over forty years (since the 1970s).
17,

at

4).

TAAA,

Inc.

argues

that

it,

rather

(ECF No.

than

Takoma

Academy, acquired common law rights to “Takoma Academy Alumni
Association”

before

Plaintiff

registered

the

mark

“Takoma

Academy”; TAAA, Inc. contends that TAAA, the alleged predecessor
to

TAAA,

Inc.,

was

the

prior

user

of

the

mark.

Defendant

presumably asserts this to challenge Plaintiff’s ownership over
both “Takoma Academy” and “Takoma Academy Alumni Association.”
The present record does not support Defendant’s position.
Even if TAAA, Inc. is the successor in interest to TAAA, a
point that need not be reached to resolve the instant dispute,
TAAA,

Inc.

at

best

had

an

implied

license

to

use

Academy” or “Takoma Academy Alumni Association.”

“Takoma

An implied

license “arises out of the objective conduct of the parties,
which

a

reasonable

man

would

agreement has been reached.”

regard

as

indicating

that

an

Allen-Myland v. Int’l Bus. Mach.

Corp., 746 F.Supp. 520, 549 (E.D.Pa. 1990); see also Diamonds
Direct USA, Inc. v. BFJ Holdings, Inc., No. 3:12CV303-HEH, 2012
WL 2505282, at *3 (E.D.Va. June 28, 2012) (“[t]he existence of
an implied trademark license is a factual issue which turns on
the objective conduct of the parties.”).

A significant factor

to be considered in this factual analysis is the existence of a
special interlocking relationship between entities.

Diamonds

Direct, USA, Inc., No., 3:12CV303-HEH, 2012 WL 2505282, at *3.
26

Permission to use the trademarks coupled with the exercise of
reasonable

control

over

such

use

suggests

that

an

implied

license existed between the parties, even where no contract was
made.

See United States Jaycees v. Philadelphia Jaycees, 639

F.2d 134, 140 n.7 (3d Cir. 1981) (“The district court found . . .
that state and local chapters affiliated with the United States
Jaycees were permitted during the term of the affiliation to use
the

National’s

trade

and

service

marks.

Thus

license agreement existed.” (emphasis added)).
determine

the

determine

if

infringing

existence
the

the

person

trademark

of
is

an

implied

engaging

without

an

in

some

of

Furthermore, to

license,
acts

implied

type

one

that

must

would

license.

be

Exxon

Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1076 (5th Cir.
1997).
At this juncture, Plaintiff has demonstrated the likelihood
that Takoma Academy, rather than TAAA, Inc., owned the marks.
Whatever right the alumni association obtained to use the name
existed by way of an implied license from the school.
Publ’ns,

Inc.

v.

Chinese

Yellow

Pages

(New

York)

See Tap

Inc.,

925

F.Supp. 212, 218 (S.D.N.Y. 1996) (since the license did not give
the licensee the right to transfer its license rights, those
rights

were

personal).

As

the

Supreme

Court

of

the

United

States observed, “[w]here consent by the owner to the use of his
trade-mark by another is to be inferred from his knowledge and
27

silence merely, ‘it lasts no longer than the silence from which
it

springs;

license.’”

it

is,

Menendez

in
v.

reality,

more

than

a

128

Holt,

no

revocable

U.S.

514,

524

(1888).

Testimony from the preliminary injunction hearing suggests that
Plaintiff formed TAAA in the 1970s and authorized the alumni
association
students.

to

raise

Keith

funds

Hallam

to

support

testified

the

that

school

before

and

its

incorporation,

Takoma Academy permitted TAAA to use the name because the school
and

the

unincorporated

relationship.10

The

alumni

evidence

association

to

date

had

suggests

a

working

that

Takoma

Academy exercised a sufficient degree of control over TAAA’s
operation such that it is likely an implied license was created.
First, based on the evidence, Takoma Academy faculty members and
students founded the alumni association.

(Pl.’s Hr’g Ex. 6,

Plaintiff’s Fact Sheet (Apr. 17, 2013)); (see also Pl.’s Hr’g
Ex. 12, Letter from Richard Osborn dated April 1, 1977).

Ellen

Nixon, who served as Takoma Academy’s Treasurer from 1972-1986
and was employed by the school when the alumni association was
established, testified that former students requested from the
principal

that

Takoma

Academy

create

10

an

alumni

association.

Mr. Hallam also testified that the incorporated alumni
association, under Mr. Pittman’s leadership, had a different
mission than TAAA.
Specifically, as explained at the hearing,
TAAA, Inc.’s mission is to assist individual alumni by raising
funds for them, as opposed to raising funds to support Takoma
Academy, generally.
28

See,

e.g.,

defendant

Villanova
was

University,

formed

in

1972

123
with

F.Supp.2d
the

at

307

permission

(“the

of

the

University and authorized by the University to raise funds to
support Villanova athletics under the corporate name ‘Villanova
Educational
Club.’”).

Foundation’

and

under

the

trade

name

‘Wildcat

Takoma Academy then appointed a faculty member, Dr.

Richard Osborn, and thereafter established the Takoma Academy
Alumni Association Constitution and By-Laws.

(Pl.’s Hr’g Ex.

19, Takoma Academy Alumni Association Constitution and By-Laws).
In

fact,

as

Defendant

points

out,

two

(2)

members

from

the

Takoma Academy Trustees and two (2) members from the Takoma
Academy faculty served on TAAA’s Board of Directors – hence,
Takoma

Academy

played

association’s operations.
controlled

TAAA’s

a

role

overseeing

(ECF No. 9-1, at 3).

finances

Constitution and By-Laws.

in

and

assets

as

the

alumni

Takoma Academy

prescribed

by

the

(Pl.’s Hr’g Ex. 19, Takoma Academy

Alumni Association Constitution and By-Laws).

Takoma Academy,

rather than the alumni association, also provided gift receipts
for tax-exemption purposes to donors who contributed to TAAA.
(Pl.’s

Hr’g

Ex.

6,

Plaintiff’s

Fact

Sheet).

David

Daniels

testified that the alumni association conferred with the school
on activities, further suggesting that the alumni association
operated under the school’s control, even if informally.
relationship

between

the

school
29

and

the

alumni

The

association

suggests that Plaintiff granted an implied license to the alumni
association to use Plaintiff’s marks under reasonable control of
the school.
Even if TAAA, Inc. possessed a license to use the marks or
names at issue through its affiliation with Takoma Academy, that
license terminated when Plaintiff disassociated on June 7, 2012,
shortly

after

United

Mr.

States

Pittman

Jaycees,

filed

639

Articles

F.2d

at

143

of

Incorporation.

(“[t]hrough

the

Philadelphia group’s affiliation with the national organization,
the local chapter had the right to use the mark.”).

Courts have

held that “a licensee’s right to use a licensor’s trademark
expires with the termination of their agreement.”

Id.; Dial-A-

Mattress Operating Corp. v. Mattress Madness, Inc., 847 F.Supp.
18, 20 n.1 (E.D.N.Y. 1994) (“[a]n agreement conferring a license
to use a trademark for an indefinite time, whether oral, written
or

by

implication,

is

terminable-at-will

by

the

licensor.”);

Birthright v. Birthright, Inc., 827 F.Supp. 1114, 1135 (D.N.J.
1993)

(since

an

implied

license

is

terminable

at

will,

the

licensor could properly terminate the license and therefore end
the licensee’s right to use the mark).

Takoma Academy appears

to have made its decision to revoke the license clear when it
disassociated on June 7, 2012 and later sent Mr. Pittman (and
TAAA, Inc.) a second Cease and Desist letter on January 17,
2013, to “cease and desist activities related to or in the name
30

of “Takoma Academy,” “Takoma Academy Alumni Association,” “TA”
or

any

derivatives

thereof.”

(Pl.’s

Daniels’s

testimony

supports

this

testified

that

Pittman

formed

when

Hr’g

point

–

TAAA,

Ex.

2).

David

specifically,

Inc.

there

was

he
no

assignment of the name “Takoma Academy Alumni Association” that
came with the incorporation.11
Defendant
from

Takoma

contends

Academy,

that

but

TAAA

Plaintiff

was
has

an

independent

provided

entity

evidence

to

support that TAAA clearly existed under Takoma Academy as the
“umbrella organization,” at the very least overseeing the alumni
association’s finances.

See Ad Hoc Comm. Of the Baruch Black

and Hispanic Alumni Ass’n v. Bernard M. Baruch College, 726
F.Supp. 522, 523 (S.D.N.Y. 1989) (noting that Baruch College
recognizes a single alumni association for all of its graduates
and “gave permission to that organization to use its name – as
to

which

it

has

a

proprietary

interest.”

(emphasis

added)).

Although in the context of a discrimination claim, the principle
enunciated in Bernard M. Baruch College is instructive here.
Specifically, the opinion provides that:
[T]he form of organization for conducting
Baruch College’s alumni affairs is one of
the several forms colleges and/or their
alumni
have
adopted
to
handle
the
11

Mr. Daniels also testified that the Board did not
transfer assets to the incorporated alumni association and did
not give authority to transfer the alumni database and the
alumni mailing list.
31

relationship.
While, as observed, these
differ in structural approach, one factor is
generally common, which is that there is a
single
umbrella
organization,
special
interest groups existing, if at all, as
affiliates within the larger structure.
Id.

Furthermore,

“[i]t

is

irrelevant

whether

the

parties

thought of the arrangement at the time in terms of an implied
license.
is

based

The test for whether or not an implied license existed
solely

on

the

objective

conduct

Villanova Univ., 123 F.Supp.2d at 308.

of

the

parties.”

Accordingly, regardless

of whether TAAA, Inc. is a legally recognizable successor in
interest to TAAA, TAAA used “Takoma Academy” and “Takoma Academy
Alumni Association” pursuant to an implied license from Takoma
Academy, which Plaintiff revoked when it disassociated on June
7, 2012.
c.
“TA”

“TA” and “TAAA”
and

“TAAA”

are

initials/abbreviations

for

“Takoma

Academy” and “Takoma Academy Alumni Association,” respectively.
“Initials for a descriptive phrase merely represent short forms
of the words for which they stand and should receive the same
degree of protection as those words.”

United States Conference

of Catholic Bishops v. Media Research Ctr., 432 F.Supp.2d 616,
623

(E.D.Va.

Anheuser-Busch

2006);
Inc.,

see
676

also

G.

F.Supp.

Heileman

1436,

1493

Brewing

Co.

(E.D.Wis.

v.

1987)

(claiming that, as a practical matter, initials do not differ

32

significantly in their trademark role from the descriptive words
they represent).

“An abbreviation of a descriptive term which

still conveys to the buyer the descriptive connotation of the
original term will be held to be descriptive.”
575

F.3d

at

394-95

(citing

2

Thomas

George & Co.,

McCarthy,

McCarthy

of

Trademarks and Unfair Competition § 11:32 (4th ed. updated Dec.
2013) (collecting cases)); see also id. § 7:11 (“If a series of
letters is merely a recognizable abbreviation for a descriptive
or

generic

term,

the

abbreviation

is

also

classified

as

descriptive or generic.”).
An abbreviation of a descriptive term may be protectable
upon a showing of secondary meaning.

See Metro. Opera Ass’n v.

Metro. Opera Ass’n of Chi., 81 F.Supp. 127, 129 (D.Ill. 1948)
(noting that “MET,” short for the descriptive term “METROPOLITAN
OPERA” has acquired secondary meaning); cf. G. Heileman Brewing
Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 994-99 (7th Cir. 1989)
(holding

that

descriptive
meaning

was

“L.A.”

words

was

“low

acquired).

a

descriptive

alcohol”
As

for

abbreviation

beer

discussed

for

the

and

no

secondary

supra,

to

establish

secondary meaning, a plaintiff must prove that “a substantial
number

of

present

or

prospective

customers

understand

the

designation when used in connection with a business to refer to
a particular person or business enterprise.”

Proof of secondary

meaning “entails a rigorous evidentiary standard.”
33

U.S. Search,

300 F.3d at 525.

This is especially true when a party seeks to

establish that initials pointing to the source of a product have
acquired secondary meaning.
F.2d at 994.

See G. Heileman Brewing Co., 873

Six factors inform whether a party has established

secondary meaning: (1) advertising expenditures; (2) consumer
studies linking the mark to a source; (3) sales success; (4)
unsolicited media coverage; (5) attempts to plagiarize the mark;
and (6) the length and exclusivity of the mark’s use.

U.S.

Search, 300 F.3d at 525 (citing Perini Corp. v. Perini Constr.,
Inc.,

915

F.2d

121,

(4th

125

Cir.

1990)).

Circumstantial

evidence can support a finding of secondary meaning.

Frosty

Treats, Inc. v. Sony Computer Entm’t Am., Inc., 426 F.3d 1001,
1005 (8th Cir. 2005).
The various testimonies from Plaintiff’s witnesses and the
present

record

suggest

that

“TA”

and

“TAAA”

are

initials/abbreviations for “Takoma Academy” and “Takoma Academy
Alumni

Association,”

and

students

and

alumni.12

Bishops,

432

F.Supp.2d

have

been

United
at

623

12

widely

States

known

as

such

Conference

of

Catholic

(“Catholic

News

Service”

by

was

As stated previously, although Plaintiff did not
separately register “TA” and “TAAA” as service marks, on May 7,
2013, Plaintiff registered the “Takoma Academy” design mark,
with the initials “TA” appearing in the middle of the seal,
superimposed over each other. The stylized term and year “EST.
1904” appear at the bottom of the seal inside the concentric
circles.
The certificate of registration indicates that the
design mark has been used in commerce on December 31, 2006.
(Pl. Hr’g Ex. 65).
34

merely descriptive, and thus the initials for that name [CNS]
were

likewise

merely

descriptive

and

could

only

receive

protection after a showing of secondary meaning “in the eyes of
the

public.”

(emphasis

added)).

Keith

Hallam,

the

Vice

President of Education for Potomac Conference, testified that
“Takoma

Academy”

has

also

been

known

as

“TA”

to

students,

faculty, and friends of the school for over one hundred years,
that “TA” has been used continuously on letterhead and signs in
front of the school, in emails and newsletters, and that no
other school uses “TA.”
aware

of

any

other

Mr. Hallam also stated that he was not

schools

using

that

name.

He

further

testified that “Takoma Academy Alumni Association” began over
forty years ago.

Furthermore, the evidence includes excerpts

from

a

the

Globe,

newspaper

that

the

alumni

association

published, in which “TA” and “TAAA” are used as short-hand for
“Takoma

Academy”

respectively.

and

(See

“Takoma
ECF

Nos

Academy
9-5,

Alumni

17-1,

Association,”

17-3);

Nat.

Cable

Television Assoc., Inc. v. Am. Cinema Editors, Inc., 937 F.2d
1572,

1574

(Fed.Cir.

1991)

(“the

undisputed

and

extensive

evidence of record shows that the name ‘American Cinema Editors’
is frequently shortened to ‘ACE’ or ‘the ACE’ by its officers,
by members, by film professionals, and in the press and that
this usage began long prior to 1979.”); see also id. at 1578
(“The record before us discloses numerous newspaper articles and
35

other references to Editors’ awards as ‘ACE AWARDS’ since the
1950s,

as

well

as

evidence

of

Editors’

own

use

of

ACE

connection with its award ceremonies since that time.

in

Whether

such usage is deemed analogous to service mark use or further
use of its trade name in connection with awards is not material.
The wide-spread use by persons in the entertainment industry
confirms

that

the

acronym

ACE

is

strongly

Editors and its achievement awards.”).

associated

Indeed, TAAA, Inc. does

not argue that “TA” or “TAAA” lack secondary meaning.
Defendant

submitted

multiple

with

excerpts

from

the

In fact,

Globe

with

references to “TA” and “TAAA.”
Instead,

Defendant

appears

to

rely

on

the

successor

in

interest argument in opposing Plaintiff’s rights to “TA” and
“TAAA.”
“TA”

Specifically, Defendant maintains that it has rights to

and

“TAAA”

because

association,

used

argument

is

misplaced

that,

based

namely

“TA”

TAAA,

and
for

on

“TAAA”

the

the

the

unincorporated

since

same
present

the

reasons

alumni

1970s.

This

discussed

supra,

record,

Plaintiff

has

established the likelihood of success in showing that the alumni
association at most had an implied license to use these marks.
Furthermore, there is no evidence that any institution other
than Potomac Conference or the alumni association – by way of an
implied license – used “TA” or “TAAA.”

Cf. FS Servs., Inc. v.

Customer Farm Servs., Inc., 471 F.2d 671, 674 (7th Cir. 1972)
36

(holding that plaintiff failed to establish secondary meaning
with respect to the letters FS alone

because “[o]ther companies

operated within the same general market area using the words
‘farm supply’ and ‘farm service’ or their abbreviations in their
titles or marks.”).
Moreover, “[e]vidence of actual confusion also is relevant
to determining whether secondary meaning has been established.”
Fair

Isaac

Corp.

v.

Experian

Info.

Solutions,

Inc.,

645

F.Supp.2d 734, 760 (D.Minn. 2009); see also Lone Star, 43 F.3d
at 936 n.16 (“Even if ‘Lone Star’ were deemed descriptive, the
evidence

of

actual

confusion

certainly

demonstrates

that

mark has acquired secondary meaning in this case.”).

the

Here,

Plaintiff has offered evidence of actual confusion among alumni
because of Defendant’s use of “TA” and “TAAA,” which further
supports

that

Plaintiff

has

demonstrated

establishing secondary meaning.

likelihood

of

For instance, Sharon Froom, a

1976 Takoma Academy alumna, testified that she received emails
from

both

alumni

organization

was

associations
affiliated

and

with

was

the

confused

school.

about
The

evidence

reflects that Ms. Froom sent an email to Ron Mills stating:
It is difficult to know which emails are
from TA officially and which ones are from
the Pittman Alumni association. I recommend
that you use a logo and the TA address on
every email and I recommend you put this in
the header . . . I am busy and often scan
emails quickly.
I found it difficult to
37

which

remember all the names and players and to
figure out whether an email or event was
real or “fake.”
(Pl.’s Hr’g Ex. 62).

Furthermore, Defendant created a Facebook

page entitled “The Official Takoma Academy Alumni Association
(TAAA).”

Dr. Hamlet Canosa testified that he was confused and

joined this page thinking it was the page of the “official”
alumni

association.

Similarly,

Defendant

(See

also

created

a

Pl.’s

LinkedIn

Hr’g
page

Exs.
on

45-51).

January

29,

2013, referencing “TAAA,” which provides that “TAAA is a yearround service-oriented association that serves Takoma Academy
alumnus,

current

community.”

students

&

faculty

(Pl.’s Hr’g Ex. 43).

and

the

surrounding

David Daniels also testified

that there was actual confusion, as he received inquiries from
alumni who donated to TAAA, Inc., but did not receive a taxexemption receipt from Plaintiff, as was the case when alumni
previously donated to TAAA.
The

American

Trial

Lawyers

See, e.g., Am. Ass’n for Justice v.
Ass’n,

698

F.Supp.2d

1129,

1143

(D.Minn. 2010) (finding evidence of actual consumer confusion
persuasive in determining secondary meaning; evidence of actual
confusion

included

individual

sending

membership

dues

to

Defendant because “[He] thought [he] was sending membership dues
to ATLA (Association of Trial Lawyers of America) because [the
Association’s] name and logo appear to be almost identical”;
evidence

of

actual

confusion

also
38

included

statement

from

another

individual

similarity

of

stating

the

terms

that

“[b]ecause

‘The

of

American

the

Trial

obvious
Lawyers’

Association’ and ‘The ATLA’ to the terms Association of Trial
Lawyers of America and ATLA, I mistakenly believed that this
solicitation had been sent by the organization I know as ATLA
and

the

Association

of

Trial

Lawyers

of

America.”).

The

testimony adduced at the hearing and the present record reflect
that

Plaintiff

has

established

the

likelihood

of

success

in

showing that the relevant consumers – Takoma Academy alumni associate “TA” and “TAAA” with Plaintiff and Defendant’s use
thereof has caused confusion over TAAA, Inc.’s association with
Plaintiff.
Based on the foregoing, Plaintiff has shown a likelihood of
establishing

that

“TA”

and

“TAAA”

have

acquired

secondary

meaning and are thus protectable.
2.

Defenses

Defendant

raises

fair

use,

laches,

and

acquiescence

defenses to the use of “Takoma Academy.”
a. Fair Use Doctrine:
Defendant argues that:
[a]bsent a claim to the name ‘Takoma
Academy,’ it is unclear what legal interest,
if any, the Potomac Conference actually has
in any alumni association at all. And even
if a valid and protectable trademark existed
(which it does not), TAAA, Inc. use would
nonetheless be defensible under 15 U.S.C. §
39

as

1115(b), for
doctrine.
(ECF No. 17, at 6).

example

under

the

fair

use

Defendant contends that Plaintiff merely

objects to Defendant’s use of the name “Takoma Academy,” and
there is no other way for TAAA, Inc. to describe its members.
(Id. at 7 n.6).
Fair use is defined as “a use, otherwise than as a mark, .
. . of a term or device which is descriptive of and used fairly
and in good faith only to describe the goods or services of such
party, or their geographic origin.”
The

analysis

in

Villanova

Found., Inc. is instructive.

Univ.

15 U.S.C. § 1115(b)(4).

v.

Villanova

Alumni

Educ.

The defendant in that case also

argued that it was not using “Villanova” or “Villanova Alumni”
in a trademark sense but in a descriptive sense.
at 303.

123 F.Supp.2d

In rejecting this argument, the court reasoned that the

“‘fair use’ doctrine does not apply when the defendant’s use of
the

mark

in

question

‘implicate[s]

the

source-identification

function that is the purpose of trademark’ . . . The defendant’s
prominent use of ‘Villanova’ and ‘Villanova Alumni’ in its name
and logo, however, is not descriptive use.”

Id.

The opinion

explained that the “use of protected marks in a name and logo is
precisely the use as an ‘attention-getting symbol’ . . . The
defendant uses its name and logo on all of its written materials
and on the homepage of its website.”

40

Id. at 304.

Here too, based on the current record, Defendant’s use of
the

marks

does

not

appear

to

be

descriptive.

Defendant’s

missives to alumni suggest affiliation with Potomac Conference,
as

evidenced

by

testimony

that

alumni

understood

Defendant’s

emails to be from the alumni association affiliated with Potomac
Conference

and

testimony

from

Mr.

Daniels

that

alumni

have

donated to TAAA, Inc. under the false impression that they would
receive tax-exempt receipts from Potomac Conference, as was the
case when they had donated to TAAA.

Furthermore, Defendant

prominently displays “Takoma Academy” on its Facebook page and
on

LinkedIn.

(ECF.

Nos.

12-3,

12-5,

12-6).

indicate a desire to associate with Plaintiff.

Such

actions

See, e.g., Bd.

of Supervisors v. Smack Apparel Co., 550 F.3d 465, 489 (5th Cir.
2008) (explaining that “[i]n order to avail [itself] of the
nominative fair use defense ‘the defendant (1) may only use so
much of the mark as necessary to identify the product or service
and

(2)

may

not

do

anything

that

suggests

sponsorship, or endorsement by the markholder.’”).

affiliation,
Moreover,

the evidence thus far reflects that Defendant continues using
the “Takoma Academy” mark irrespective of the two cease and
desist

letters

from

Plaintiff

–

this

supports

Plaintiff’s

position that Defendant may not be using “Takoma Academy” in
good faith.

Accordingly, the present record does not support

this defense.
41

b.

Laches

“In a trademark case, courts may apply the doctrine of
estoppel by laches to deny relief to a plaintiff who, though
having knowledge of an infringement, has, to the detriment of
the defendant, unreasonably delayed in seeking redress.”
Lee, 81 F.3d at 461.

Sara

In determining whether laches may operate

as a defense to an infringement claim, a court should consider
the following factors: (1) whether the owner of the trademark
knew of the infringing use; (2) whether the owner’s delay in
challenging

the

unreasonable;

infringement

and

(3)

of

whether

the
the

mark

infringing

unduly prejudiced by the owner’s delay.
at 456.

was

inexcusable
user

has

or

been

Brittingham, 914 F.2d

The doctrine, however, is sparingly applied where, as

here, a plaintiff seeks only equitable relief.

See Skippy, Inc.

v. CPC Int’l, Inc., 674 F.2d 209, 212 (4th Cir. 1982) (“While the
availability of laches as a defense to claims for injunctive
relief may be limited . . . laches will bar a claim for damages
for bad faith infringement.”).
The

record

does

not

reflect

delayed bringing this case.

that

Plaintiff

unreasonably

To the extent that a plaintiff’s

prior knowledge may give rise to the defense of estoppel by
laches, such knowledge must be of a pre-existing, infringing use
of a mark.

As discussed supra, Plaintiff has demonstrated that

the alumni association had an implied license to use Plaintiff’s
42

marks.

Notably, after Pittman formed TAAA, Inc. and continued

using the marks, Plaintiff sent a Cease and Desist letter to
TAAA,

Inc.

association
license.

in

June

proposed

2012

-

two

incorporation

months

(ECF. No. 1 ¶ 18).

-

after

thereby

the

alumni

revoking

the

Plaintiff sent a second cease and

desist letter on January 17, 2013, and filed the pending action
three months thereafter, after failed attempts at resolution.
(Id.

¶

24.).

interest,

Furthermore,

estoppel

by

in

laches

consideration

may

not

be

of

the

invoked

public

to

deny

injunctive relief if it is apparent that the infringing use is
likely to cause confusion.

See Sara Lee, 81 F.3d at 462; Univ.

of Pittsburgh v. Champion Products, Inc., 686 F.2d 1040, 1044 (3d
Cir.

1982)

(“Because

laches

is

an

equitable

doctrine,

its

application is inextricably bound up with the nature and quality
of the plaintiff’s claim on the merits relevant to a prospective
injunction.”).
owner

“has

As the Fourth Circuit recognized, the trademark

no

obligation

confusion looms large.’”

to

sue

until

‘the

likelihood

Sara Lee, 81 F.3d at 462.

of

The Fourth

Circuit has also held “strong proof of likelihood of confusion –
indeed, actual confusion – trumps the defenses of laches and
acquiescence.”
Corp.,

148

F.3d

Resorts of Pinehurst, Inc. v. Pinehurst Nat.
417,

423

(4th

Cir.

1998).

Plaintiff

has

demonstrated the likelihood of establishing that Defendant’s use
of the marks creates a likelihood of confusion.
43

Accordingly,

based on the record, Defendant’s laches defense is similarly
unavailing.
c.

Acquiescence

The doctrine of acquiescence bars an infringement action
only

when

deed,

the

trademark

expressly

or

owner,

impliedly

Sara Lee, 81 F.3d at 462.

through

consents

“affirmative
to

the

word

infringement.”

Acquiescence requires evidence of

active, not merely passive consent by the trademark owner.
Defendant

argues

association

to

that

use

by

the

or

allowing

marks

the

unincorporated

continuously

since

the

Id.

alumni
alumni

association’s establishment in the 1970s, Plaintiff acquiesced
to the marks’ use.
trademark

owner

Estoppel by acquiescence requires that the
knowingly

and

actively

defendant’s infringing use of the mark.

consent

to

the

At this point, there is

no indication that Plaintiff affirmatively acquiesced to TAAA,
Inc.’s use of the marks, especially in light of the two cease
and desist letters it sent to Defendant upon learning of its use
of the marks.13

Moreover, public policy dictates that – like the

doctrine of estoppel by laches – estoppel by acquiescence not be
rigidly applied in cases where the likelihood of confusion is
apparent.

As

set

forth

in

13

detail

below,

Plaintiff

has

Indeed,
Mr.
Hallam
testified
that
soon
after
incorporation, he became concerned that TAAA, Inc. functioned as
an independent entity from Potomac Conference but continued to
use the school’s name.
44

demonstrated the likelihood of establishing that Defendant’s use
of the marks creates a likelihood of confusion.

Accordingly,

the present record also does not support this defense.
3.

Likelihood of Confusion

The

Fourth

question,

for

Circuit

purposes

has

of

advised

that

determining

“[t]he

liability

in

ultimate
[Section

1125(a)] trademark infringement actions, is whether there exists
a likelihood that an appreciable number of ordinarily prudent
purchasers will be misled, or indeed simply confused, as to the
source of the goods in question.”

Perini Corp., 915 F.2d at 127

(internal quotation marks and citations omitted).

A likelihood

of

practice

confusion

exists

“if

the

defendant’s

actual

is

likely to produce confusion in the minds of consumers about the
origin of the goods or services in question.”

CareFirst of Md.,

Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006)
(internal citation and quotation marks omitted).

In evaluating

whether such confusion exists, the court “look[s] to how the two
parties actually use their marks in the marketplace to determine
whether the defendant’s use is likely to cause confusion.”
The

Fourth

Circuit’s

likelihood

of

confusion

instructs courts to consider nine factors:
(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
45

case

Id.
law

identify;
(4)
the
similarity
of
facilities used by the markholders; (5)
similarity
of
advertising
used
by
markholders; (6) the defendant’s intent;
actual confusion; (8) the quality of
defendant’s
product;
and
(9)
sophistication of the consuming public.
George

&

Co.,

575

F.3d

at

393;

see

also

Ga.

the
the
the
(7)
the
the
Pac.

Consumer

Prods., Inc. v. Von Drehle Corp., 618 F.3d 441, 454 (4th Cir.
2010).

The Fourth Circuit has emphasized, however, that all of

the factors are not always relevant or of equal importance in
every case.

George & Co., 575 F.3d at 393.

Moreover, while

evidence of actual confusion is not required, it is the “most
important factor.”

Id. at 398; see also Lone Star, 43 F.3d at

937 (noting that the actual confusion factor is “entitled to
substantial weight as it provides the most compelling evidence
of likelihood of confusion”).

Finally, “[i]t has been stated

that in trademark infringement cases, the trial judge may draw
on [her] own experience and observation to make an informed
judgment as to likelihood of confusion.”

The Citrus Grp., Inc.

v. Cadbury Beverages, Inc., 781 F.Supp. 386, 390 (D.Md. 1991).
Careful

consideration

of

the

foregoing

factors

and

the

evidence submitted by the parties leads to the conclusion that
Plaintiff has established the likelihood that it will make the
requisite showing of likelihood of confusion.

46

a. Similarity of Marks, Services, and Advertising
The

similarity

undisputed here.14

of

the

marks

used

by

both

parties

is

Furthermore, “Takoma Academy” is the dominant

part of Takoma Academy Alumni Association, Inc.

See World Gym

Licensing, Ltd. v. Fitness World, Inc., 47 F.Supp.2d 614, 621622 (D.Md. 1999) (stating that, in “evaluating the similarity of
two trademarks, greater weight [should be] given to the dominant
or salient portions of the marks” (internal citations omitted);
Lone Star, 43 F.3d at 926 n.1, 936 (the phrase “Lone Star” is
the dominant mark in the names “Lone Star Grill” and in the
alleged infringer’s name “Lone Star Café” where both entities
were involved in restaurant service); Philip Morris, Inc. v.
Imperial Tobacco Co. (of Great Britain and Ireland), Ltd., 251
F.Supp.

362,

“PLAYER’S”

was

380
the

(E.D.Va.

1965)

(finding

“distinguishing,

that

dominant,

the

and

word

salient

feature” of the trademark although “PLAYER’S Navy Cut” was the
complete registered mark; defendant had no right to use the
dominant feature “PLAYER’S” either alone or in combination with
other words).

Here, Defendant uses both “Takoma Academy Alumni

Association” and “Takoma Academy Alumni Association, Inc.” and
derivatives

thereof

in

its

advertising

part of both is “Takoma Academy.”

14

efforts;

the

dominant

(See, e.g., Pl.’s Hr’g Ex. 36

In the opposition, Defendant also does not dispute the
strength or distinctiveness of the marks at issue.
47

(announcement
Directors

from

TAAA,

under

Inc.

the

about

heading

appointment
“Takoma

of

Board

Academy

of

Alumni

Association”)).
Moreover, TAAA, Inc. uses “Takoma Academy,” “TA,” “Takoma
Academy Alumni Association,” and “TAAA” to identify the same
services that Plaintiff provides to alumni.

Defendant contends

that Plaintiff and Defendant offer different services in that
TAAA,

Inc.

is

an

alumni

association

offering

“benevolent

services to its members, Takoma Academy faculty and students,
such

as

fraternity,

charity

“[c]onsumers

of

fourteen-to

eighteen-year-olds

guardians.”

(ECF No. 17, at 8).

contrast

to

“consumers
students

Potomac

and

consumers

of
of

TAAA,
the

Inc.

connectivity,”

Conference’s

of

and

their

are

typically

parents

and/or

Defendant maintains that in

Potomac

services

institution

services

whereas

that

Conference’s

are

graduates

may

no

services,
and

longer

former

have

any

connection to the school other than the fact they attended the
school at some point in their lives.”
misplaced.

(Id.).

This argument is

As noted in Villanova, “the defendant’s argument

that the University does not use ‘Wildcats’ in connection with
charitable services is of no moment given the strong connection
.

.

.

among

University.”

this

audience

between

‘Wildcats’

123 F.Supp.2d at 306 n. 17.

and

Villanova

Analyzed in context,

the record reflects that the parties target the same audience
48

when soliciting alumni donations, fundraising, or hosting alumni
events.
alumni

Of import here, Potomac Conference still operates an
association,

Takoma Academy)).

TAAA.

(See

ECF

No.

12-3

(Affidavit

of

As a result, evidence on the record suggests

that TAAA and TAAA, Inc. both offer virtually identical, if not
the same services, except that TAAA, Inc. intends to use the
money raised from alumni for a different purpose than Potomac
Conference
school

–

namely,

generally.

to

See,

benefit
e.g.,

individuals
Tropical

Nut

rather
&

than

Fruit

the

Co.

v.

Forward Foods, LLC, No. 3:13-cv-131, 2013 WL 2481521, at *3
(W.D.N.C. June 10, 2013) (“[A]lthough the parties seem to be
targeting different consumers, the Court finds that the goods
sold by both parties serve the same purpose, which is to provide
the consumer with a healthy food product, whether it is being
marketed to those concerned with weight or diabetes, those who
are elderly, college students concerned about their health . . .
Both

parties

products.”).

are

trying

to

sell

their

goods

as

health

food

Both parties appear to provide competing alumni

services and solicit funds from alumni.

“[W]here the parties

offer competing goods or services, the Court ‘need rarely look
beyond

the

mark

confusion exists.”

itself’

to

determine

whether

likelihood

of

Villanova, 123 F.Supp.2d at 306 (quoting

Ford Motor Co. v. Summit Motor Prods., Inc., 930 F.2d 277, 293
(3rd Cir. 1991); see also SunAmerica Corp. v. Sun Life Assurance
49

Co. of Canada, 890 F.Supp. 1559, 1575 (N.D.Ga. 1994) (“[w]here
the goods and services are directly competitive, the degree of
similarity required to prove a likelihood of confusion is less
than in the case of dissimilar products.”).
Furthermore, both parties appear to use nearly identical
advertising.
News,

987

See, e.g., Metro Publ’g, Ltd. v. San Jose Mercury

F.2d

637,

640

(9th

Cir.

1993)

(a

likelihood

of

confusion exists when consumers “are likely to assume that a
product or service is associated with a source other than its
actual source because of similarities between the two sources’
marks

or

marketing

techniques.”)

quotation marks omitted).

(citations

and

Indeed, Defendant acknowledges that

“there is some overlap in activities and audience.”
17, at 8).

internal

(ECF No.

Specifically, Defendant concedes that “both parties

often run fundraisers for the benefit of the institution and its
current students.

Potomac Conference may reach out to members

of the alumni association for donations to the school; and TAAA,
Inc. may reach out to current students as prospective members.”
(Id. at 9).

Both parties communicate with alumni to solicit

donations through “mailings, social media, advertisements, and
social gatherings” using similar, if not identical, marks.

See

Planned Parenthood Fed’n of Am., Inc. v. Problem Pregnancy of
Worcester, Inc., 398 Mass. 480, 488 (1986) (finding high degree
of

similarity

between

marks

where
50

both

corporations

had

in

common pregnancy testing and counseling services for pregnant
women;

“[t]he

so-called

services

are

similar,

as

are

the

prospective clients.”); Villanova, 123 F.Supp.2d at 306 (“Both
Villanova

University

and

‘Villanova,’

‘Villanova

Wildcats’

indicate

to

Defendant

use

the

Alumni,’

‘Wildcat’

collective

membership

designations

and
in

‘Villanova
a

group

of

individuals with a common interest – the activities of Villanova
University.”).
b.

Actual Confusion

Evidence of actual confusion is “entitled to substantial
weight as it provides the most compelling evidence of likelihood
of

confusion.”

Lone

Star,

43

F.3d

at

937;

see

also

HMH

Publishing Co., Inc. v. Brincat, 504 F.2d 713, 719 (9th Cir.
1974) (reasoning that actual confusion is “determinative in many
instances” in finding trademark infringement).

“This is so for

the obvious reason that if there is evidence of substantial
actual confusion, or, on the other hand, evidence that there is
no substantial actual confusion, such evidence will often by
itself answer the question as to whether there is a ‘likelihood
of confusion,’ between the . . . marks at issue.”

Giant Brands,

Inc. v. Giant Eagle, Inc., 228 F.Supp.2d 646, 654 (D.Md. 2002).
Despite

Mr.

Pittman’s

statement

at

the

preliminary

injunction hearing that “there is no confusion, just questions,”
there is evidence on the record of actual confusion among Takoma
51

Academy alumni and donors to the alumni association.

Sharon

Froom and Dr. Hamlet Canosa testified that they were confused.
Specifically,

Ms.

Froom

testified

at

the

hearing

that

she

received emails from both alumni associations and was confused
about which one was actually affiliated with Takoma Academy.15
On April 28, 2013, she sent an email expressing this confusion
to Ronnie Mills.
that

he

joined

associated
received

with

(Pl.’s Hr’g Ex. 62).
Defendant’s
Plaintiff.

inquiries

from

Facebook
David

individuals

Dr. Canosa testified
page

Daniels
who

thinking
testified

contributed

it

was

that

he

to

TAAA,

Inc. for purposes of raising money for the “worthy students
fund,” and thus expected a tax-exemption receipt from Potomac
Conference, which was the common practice.

Keith Hallam also

submitted an affidavit stating that “[s]everal Takoma Academy
alumni

have

contacted

the

school

15

via

email

regarding

their

The record reflects that Defendant makes statements such
as “TAAA, Inc., your alumni association” in communications to
alumni.
(Pl.’s Hr’g Ex. 32, Letter from Henry Pittman dated
March 8, 2013).
Defendants also make reference to TAAA in
advertising alumni events.
(See id. (“[w]e are excited to
announce that your TAAA Alumni Golf Tournament is back for a 14th
Year!”)).
Defendant
further
advertises
alumni
events
referencing “Takoma Academy Alumni Association.”
(Pl.’s Hr’g
Ex. 33, March 15, 2013 Notice from TAAA, Inc. about an upcoming
golf tournament).
In such advertisements, Defendant addresses
“[f]ellow TA Alumni & Friends of TAAAA.” (Id.). Defendant also
uses “Takoma Academy Alumni Association” and “Takoma Academy
Alumni Association, Inc.” interchangeably.
(Compare Pl.’s Hr’g
Exs. 33 & 34 – both are advertisements but source is identified
as Takoma Academy Alumni Association in one and Takoma Academy
Alumni Association, Inc. in another).
52

confusion over the purported affiliation between TAAA, Inc. and
Takoma

Academy.”

individual
Official

(ECF

wrote

Alumni

to

12-3

Mills,

Association

Alumni Association.
3).

Ron

No.

or

¶

2).

Specifically,

stating:
the

“are

ones

you

claiming

It’s very confusing.”

from
to

be

one
the
the

(ECF No. 12-7, at

Another individual wrote, “I wish I could understand what

is going on with this alumni issue.

I thought they were doing a

good job and raised all that money last year.
and I’m sure I’m not alone.”

I am so confused

(Id. at 7); see, e.g., Resorts of

Pinehurst, Inc., 148 F.3d at 422 (noting that evidence of actual
confusion

is

paramount

in

the

“likelihood

of

confusion”

hearing

highlights

analysis).
The

record

and

testimony

at

the

instances of actual confusion and on the whole, suggests that
Plaintiff

has

demonstrated

that

it

will

likely

succeed

in

establishing likelihood of confusion on the part of alumni and
donors to the alumni association.

Thus, the foregoing evidences

that Plaintiff established likelihood of success on the merits.
B. Irreparable Harm
To justify an injunction before trial on the merits, the
plaintiff must show that the irreparable harm it faces in the
absence

of

preliminary

relief

is

speculative, but actual and imminent.”
Breakthrough

Med.

Corp.,

952

F.2d
53

802,

“neither

remote

nor

Direx Israel, Ltd. v.
812

(4th

Cir.

1992).

Without

a

showing

that

the

plaintiff

will

suffer

imminent,

irreparable harm, the court cannot grant preliminary injunctive
relief.

Rum Creek Coal Sales, Inc. v. Caperton, 926 F.2d 353,

360 (4th Cir. 1991).
Plaintiff
Defendant’s

is

likely

continued

to

suffer

irreparable

unauthorized

use

of

harm
its

from
marks.

“Generally, a finding of irreparable harm is automatic in a
trademark

infringement

demonstrated
confusion.”

unlawful

case
use

where
and

the

the

trademark

likelihood

holder
of

has

consumer

Prosperity Sys., Inc. v. Ali, No. CCB-10-2024, 2010

WL 5174939, at *5 (D.Md. Dec. 15, 2010); Church of Scientology
Int’l v. Elmira Mission of the Church of Scientology, 794 F.2d
38,

43

(2d

Cir.

1986)

(“[A]

licensor

who

establishes

a

likelihood of confusion as to product source in a trademark
infringement

suit

irreparable

harm

injunction.”).
likelihood

of

simultaneously
essential
Thus

far,

success

on

infringement claim.
evidence

of

demonstrates

to

obtaining

Plaintiff
the

the
a

has

merits

requisite
preliminary

demonstrated

on

its

a

trademark

This, in and of itself, provides strong

irreparable

harm.

Scotts

Co.

v.

United

Indus.

Corp., 315 F.3d 264, 273 (4th Cir. 2002) (“In Lanham Act cases
involving trademark infringement, a presumption of irreparable
injury is generally applied once the plaintiff has demonstrated
a likelihood of confusion, the key element in an infringement
54

case.”); Lone Star, 43 F.3d at 938 (noting that a finding of
irreparable
confusion

injury
or

“ordinarily

possible

follows

risk

to

when

a

likelihood

reputation

of

appears”).

Furthermore, in Pizzeria Uno, the Fourth Circuit quoted with
approval

Judge

Learned

Hand’s

long-recognized

pronouncement

that, “if another uses [someone’s trademark], he borrows the
owner’s reputation whose quality no longer lies within his own
control.

This is an injury, even though the borrower does not

tarnish it, or divert any sales by its use.”

Pizzeria Uno, 747

F.2d at 1535 (quoting Yale Elec. Corp. v. Robertson, 26 F.2d
972, 974 (2d Cir. 1928));; Shell Oil Co. v. Commercial Petroleum,
Inc., 928 F.2d 104, 107 (4th Cir. 1991) (trademark infringement
and

unfair

wholesaler’s

competition
use

of

oil

claim

where

company’s

court

found

that

oil

trademark

was

likely

to

confuse and deceive consumers.).
Plaintiff provided sufficient evidence that it is likely to
suffer irreparable harm because it has lost control over its
marks due to Defendant’s continued unauthorized use, and thus
Plaintiff has no control over the quality of services provided
to alumni under the “Takoma Academy” name.
P’ship

v.

Kamara,

33

F.Supp.2d

443,

Merry Maids Ltd.
445

(D.Md.

1998)

(“Defendants’ unauthorized use of plaintiff’s trademarks gives
rise to irreparable injury, in that plaintiff has lost control
of

its

business

reputation

to
55

this

extent,

there

is

a

substantial likelihood of confusion of the purchasing public,
there

may

be

no

meaningful

monetary

recovery

available,

and

there is an inherent injury to the good will and reputation of
the plaintiff.”).

Ronnie Mills, assistant to the principal for

fundraising and alumni affairs, testified that TAAA, Inc.’s use
of

the

marks

has

hurt

fundraising

and

contributions

to

the

“worthy student fund,” although he averred that there was no way
to quantify the damage.

Mr. Mills also testified that Plaintiff

lost control of its name as a result of TAAA, Inc.’s use; that
TAAA’s Inc.’s use has harmed the school’s reputation; that there
is potential that parents may no longer want to enroll their
children in Takoma Academy as a result; and that this battle for
the use of the marks and names between two competing alumni
associations
apathetic.
Alumni,

the

same

school

has

caused

some

to

become

See Ad Hoc Committee of Baruch Black and Hispanic

Ass’n,

relatively
that

of

726

small

solicitation

F.Supp.

at

organization,
efforts

by

524
the

a

(“Since
College

separate

the

BCAA

justifiably

alumni

unduly burden and possibly alienate alumni.”).

group

is

a

fears
would

In fact, Manny

Montero, an attorney representing TAAA, Inc. has stated that
“the issue has driven people away from the association, the
school and the church.”

(Pl.’s Hr’g Ex. 52, May 8, 2013 article

from Gazette.Net).

56

The present record supports Plaintiff’s position that its
reputation will be damaged because a “potential alumni donor of
Plaintiff

who

donates

impression

of

to

Plaintiff

TAAA,

or

their

Inc.

under

services

the

will

mistaken
have

that

negative impression of Plaintiff and its services, and likely
will convey that blemish on Plaintiff’s reputation to others.”
(ECF

No.

12-1,

at

26).

Plaintiff

has

demonstrated

that

Defendant’s use of the marks at issue deprives Plaintiff of its
good

will

and

reputation

and

that

Plaintiff

will

suffer

irreparable harm absent injunctive relief.
C. Balance of the Equities
The balance of the equities also tips in Plaintiff’s favor.
As

discussed

adversely

above,

affects

Defendant’s

Plaintiff’s

continued

control

use

over

its

of

the

marks

goodwill

and

reputation, which makes it likely that Plaintiff would suffer
irreparable

harm

as

a

result.

At

the

hearing,

Defendant

represented that “[i]f [they] are enjoined from fundraising in
alumni connections, [the] organization dies.”
64).

Defendant

asserted

that

using

a

(ECF No. 27, at

different

name

would

hinder its ability to advertise to its members” and consequently
its

existence.

(Id.

at

65).

Defendant

asserts

that

a

preliminary injunction would be “devastating.”
The court’s analysis in Prosperity is instructive on this
point.

That case involved a franchisee’s continued use of the
57

“PIZZA BOLI’S” marks even after termination of the franchise
agreement.

In balancing the equities, the court reasoned that

“[e]njoining
however,
pizza

[Defendant]

does

business

not

from

using

necessarily

under

his

the

preclude

own

name.

PIZZA

him

BOLI’s

from

Moreover,

mark,

operating
any

loss

a
of

business he might suffer from not being linked to the PIZZA
BOLI’s name is likely compensable in monetary damages.”
WL

5174939,

at

*5.

Similarly,

despite

TAAA,

2010
Inc.’s

protestations, it appears that Defendant may continue providing
alumni services to Takoma Academy alumni under a different name.
Defendant

further

contends

that

“[t]he

sole

purpose

and

mission of TAAA, Inc. is to provide community, fraternity and
charity

within

communities.

and
An

between

the

injunction

that

Takoma

Academy

effectively

and

prohibits

alumni
TAAA,

Inc. from any one or all of those activities would destroy the
only connection between its members.”

(ECF No. 17, at 12-13).

The Villanova court rejected this very argument, reasoning that
“it does not suffice to argue that the defendant in this case is
not using the marks ‘in an unwholesome or disparaging manner,’
but for ‘charitable purposes which benefit the students of [the
University].’”
injunction

123 F.Supp.2d at 310.

barring

use

of

the

marks

Indeed, a preliminary
at

issue

still

allows

Defendant to fundraise and host events for students and alumni.
Furthermore, based on the evidence thus far, Defendant used the
58

marks at best under an implied license; Defendant’s continued
use of the marks after Plaintiff has revoked the license may
“subject plaintiff in the public mind to responsibility for the
action of a group over which it has no further control.”

Grand

Lodge v. Eureka Lodge No. 5, 114 F.2d 46, 48 (4th Cir. 1940).
This further supports the conclusion that on balance, the risk
of harm to Plaintiff is particularly acute.
D. Public Interest
The

public

Defendant’s

interest

continued

also

use

of

weighs
“Takoma

in

favor

Academy,”

Academy Alumni Association,” and “TAAA.”

of

enjoining

“TA,”

“Takoma

“The purpose of a

trademark is to protect the public from confusion about ‘the
identity of the enterprise from which goods and services are
purchased.’”

Toolchex, Inc. v. Trainor, 634 F.Supp.2d 586, 594

(E.D.Va. 2008) (quoting AMP Inc. v. Foy, 540 F.2d 1181, 1185-86
(4th

Cir. 1976));

see also Merry Maids,

33 F.Supp.2d at 446

(“Preventing infringement . . . serves the public interest in
preventing consumer confusion.”).
that

the

defendant

public
from

interest
using

was

Pizza

Prosperity Systems, Inc. held

best

served

Boli’s

by

trademark

preventing
in

his

the

pizza

business because consumers believed that they were getting Pizza
Boli’s pizza made from officially approved ingredients, which
was not the case.

No. CCB-10-2024, 2010 WL 5174939, at *6.

Similarly,

stage,

at

this

Plaintiff
59

has

offered

sufficient

evidence that Takoma Academy alumni and donors to the alumni
association

believe

that

TAAA,

Plaintiff, which is not the case.

Inc.

is

affiliated

with

In a service mark case such

as this one, public interest “is most often a synonym for the
right of the public not to be deceived or confused.”

Opticians

Assoc. of Am. v. Indep. Opticians of Am., 920 F.2d 187, 197-97
(3d Cir. 1990) (internal citations omitted).

Although Defendant

asserts that it is not a competitor to Potomac Conference or
Takoma

Academy,

and

“alumni

can

donate

to

either

or

both

organizations without issue,” (ECF No. 17, at 14), Plaintiff has
sufficiently

established

that

Defendant’s

use

of

the

marks

creates, at the very least, a likelihood of confusion as to
affiliation and source, especially considering that Plaintiff
continues to operate an alumni association.

(ECF No. 12-3 ¶ 5,

Affidavit of Takoma Academy, “the unincorporated association,
known as the Takoma Academy Alumni Association, continues to
exist.”).

Indeed,

testimony

and

emails

from

alumni

provide

ample evidence of confusion as to which alumni association is
affiliated with Takoma Academy and to which they should donate.
Based on the foregoing, the requested preliminary injunction is
in the public interest.
In sum, Plaintiff has demonstrated that it is likely to
succeed on the merits, that it is likely to suffer irreparable
harm

absent

preliminary

injunctive
60

relief,

and

because

the

balance of the equities and the public interest also tip in
Plaintiff’s

favor,

Plaintiff’s

motion

for

a

preliminary

injunction will be granted.
E.

Bond

Pursuant

to

Federal

Rule

of

Civil

Procedure

65(c),

a

district court must fix a bond whenever it grants a preliminary
injunction.

The district court has discretion in fixing the

amount for the security bond, and in circumstances where the
risk of harm is remote, a nominal bond may suffice.

Hoechst

Diafoil Co. v. Nan Ya Plastics Corp., 174 F.3d 411, 421 n.3 (4th
Cir. 1999).

The Fourth Circuit explained:

In fixing the amount of an injunction bond,
the district court should be guided by the
purpose underlying Rule 65(c), which is to
provide a mechanism for reimbursing an
enjoined party for harm it suffers as a
result of an improvidently issued injunction
or restraining order.
The amount of the
bond,
then,
ordinarily
depends
on
the
gravity of the potential harm to the
enjoined party.
Id.
Plaintiff argues that the bond should be waived because no
damages

will

result

to

TAAA,

Inc.

(ECF.

No.

12,

at

23).

Plaintiff explains that TAAA, Inc. is a new entity formed on
April 2012 and thus has not “invested a substantial amount of
time and effort in promoting their services in comparison to the
time, effort, and funds Takoma Academy has devoted since being

61

established in 1904.”

(Id.).

Although Defendant argues that

TAAA, Inc. and Mr. Pittman “have incurred substantial attorneys’
fees and costs by being forced to file a Motion to Dismiss and
Opposition to a Motion for Preliminary Injunction,” (ECF No. 17,
at 15), Defendant does not provide any input as to the amount of
damages it would sustain should it later be determined that
Defendant was wrongfully enjoined.
substantial

risk

of

harm

to

There does not seem to be a

Defendant

and

Plaintiff

demonstrated a likelihood of success on the merits.

has

See, e.g.,

International Controls Corp. v. Vesco, 490 F.2d 1334 (2d Cir.
1974) (approving district court’s fixing bond amount at zero in
the

absence

of

evidence

regarding

likelihood

of

harm);

Prosperity Systems, Inc., No. CCB-10-2024, 2010 WL 5174939, at
*6 (setting bond in the amount of $5,000 where the risk of harm
was remote).
does

not

seem

Defendant is a newly incorporated association and
to

rely

on

alumni

contributions

for

its

own

livelihood.
In the absence of any meaningful evidence to assess the
amount of the bond, requiring Plaintiff to post a bond in the
amount

of

$2,000

appears

reasonable

under

the

circumstances,

without prejudice to the ability of either party to seek to
modify the amount in a future proceeding.

62

F.

Request for Attorneys’ Fees

Both parties seek attorneys’ fees.

At this stage of the

litigation, it is premature to award attorneys’ fees.
the

United

States,

including

the

federal

courts,

Courts of
follow

the

“American Rule,” meaning that each party to a lawsuit must bear
its own attorneys’ fees unless there is an express statutory
authorization to the contrary.
424, 429 (1983).
bear

its

own

Hensley v. Eckerhart, 461 U.S.

Under the American Rule, each party must also

litigation

costs

except

a

limited

number

of

enumerated costs (e.g., filing fees and deposition transcripts)
that are awarded to a prevailing party under Rule 54(d) of the
Federal

Rules

of

Civil

Procedure.

Plaintiff

is

not

a

“prevailing party” because the legal relationship between the
parties was not altered by the granting of Plaintiff’s motion
for a preliminary injunction.
82

(2007)

(holding

that

See Sole v. Wyner, 551 U.S. 74,

“[t]he

touchstone

of

the

prevailing

party inquiry . . . is the material alteration of the legal
relationship of the parties in a manner which Congress sought to
promote in the fee statute” and declining to find the plaintiff
a prevailing party where it obtained a preliminary, but not
permanent injunction).
Nor is this an exceptional case under Section 35(a) of the
Lanham Act, which provides that a court may award attorneys’
fees to the prevailing party in “exceptional cases.”
63

15 U.S.C.

§ 1117(a).

A case is exceptional when the conduct of the losing

party is “malicious, fraudulent, deliberate, and willful.”
at 600.
case

Id.

Other factors to be considered in determining whether a

is

exceptional

arguments,

and

include

failure

to

economic

cite

coercion,

controlling

law.

groundless
Ale

House

Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 144 (4th
Cir.

2000).

The

good

faith,

but

ultimately

unsuccessful,

assertion of a questionable claim or controversial legal theory
does not suffice to warrant an award of attorney's fees, even if
it turns out to be expensive for the prevailing party.

People

for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 370
(4th Cir. 2001) (concluding that defendant who had acted in “bad
faith”

for

purposes

of

the

Anticybersquatting

Consumer

Protection Act was not liable for attorney's fees because the
conduct did not rise to the level of “malicious, fraudulent,
willful or deliberate” because defendant had a genuine belief
that he had a right to use the mark).

Here, neither party’s

conduct appears to rise to the level of “malicious, fraudulent,
willful or deliberate.”
“exceptional

case.”

Nor does this seem to qualify as an

Accordingly,

the

request

for

fees by both parties is inappropriate at this juncture.

64

attorneys’

III. Conclusion
For

the

foregoing

reasons,

Plaintiff’s

preliminary injunction will be granted.
strike will be denied.

motion

a

Defendant’s motion to

A separate order will follow.

/s/
DEBORAH K. CHASANOW
United States District Judge

65

for