CrossFit, Inc. v. Mustapha et al

Filing 178

Judge F. Dennis Saylor, IV: ORDER entered. MEMORANDUM AND ORDER. Mustaphas oral motion for reconsideration is DENIED, and CrossFits motion for entry of judgment is GRANTED in part and DENIED in part. (Maynard, Timothy)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_____________________________________
)
CROSSFIT, INC.,
)
)
Plaintiff,
)
)
v.
)
)
DONNY MUSTAPHA, individually and )
d/b/a CROSSTRAIN SPORTS CLUB,
)
f/k/a CHELMSFORD SPORTS CLUB,
)
)
Defendant.
)
_____________________________________)

Civil Action No.
13-11498-FDS

MEMORANDUM AND ORDER ON
PLAINTIFF’S MOTION FOR ENTRY OF JUDGMENT
SAYLOR, J.
This is an action for trademark infringement. Plaintiff CrossFit, Inc., is a Delaware
corporation principally engaged in the business of fitness training. Defendant Donny Mustapha,
who is proceeding pro se, runs the CrossTrain Sports Club in North Chelmsford, Massachusetts.1
CrossFit has brought suit against Mustapha, contending that he infringed on its registered
“CrossFit” trademark. The complaint asserts four claims: (1) trademark infringement under the
Lanham Act; (2) false designation of origin under the Lanham Act; (3) trademark dilution under
the Lanham Act; and (4) violation of Mass. Gen. Laws ch. 93A.
In September 2013, the Court entered a preliminary injunction enjoining Mustapha from
using the CrossFit mark and any substantially similar variation.2 In July and August 2014, both

1

The CrossTrain Sports Club was formerly called the Chelmsford Sports Club. It now appears to be called
the CrossBox Training Center.

parties moved for summary judgment. CrossFit moved for summary judgment on its trademark
infringement claim and contended that Mustapha’s use of the marks “CrossFit,” “CrossBox,”
“CrossKick,” and “CrossTrain” infringed on its trademark as a matter of law. It also moved for
summary judgment on its Chapter 93A claim and requested statutory damages and attorneys’
fees. Mustapha moved for summary judgment solely on the ground that CrossFit’s claims were
barred by the doctrine of unclean hands. In February 2015, Mustapha filed a trademark
application for “CrossBox” with the Trademark Trial and Appeal Board (“TTAB”). CrossFit
filed an opposition to that application in July 2015, and the TTAB suspended the proceeding
pending the outcome of this litigation.
The Court denied Mustapha’s motion for summary judgment and granted CrossFit’s
motion for summary judgment as to its infringement claim for Mustapha’s use of the “CrossFit”
mark. The Court, however, denied CrossFit’s motion as to its infringement claims for the
“CrossBox”, “CrossKick”, and “CrossTrain” marks (the “new marks”), concluding that CrossFit
had not established a likelihood of confusion as a matter of law. The Court granted summary
judgment for CrossFit on its Chapter 93A claim, but concluded that a trial was necessary to
determine whether Mustapha acted willfully for damages purposes.
CrossFit has moved for an entry of judgment because it wishes to proceed before the
TTAB in order to oppose Mustapha’s application for the “CrossBox” mark. Specifically,
CrossFit requests that the Court (1) enter judgment on its trademark infringement claim for the
“CrossFit” mark (Count One) and its Chapter 93A claim (Count Four), (2) convert the existing

2

After CrossFit moved to modify the preliminary injunction, the Court adopted the report and
recommendation of Magistrate Judge Dein in December 2014, which enjoined Mustapha from (1) using the phrase
“Fitness isn’t a sport it’s a lifestyle,” and (2) using “Fitness” (capitalized) when adjacent to “Cross.”

2

preliminary injunction into a permanent injunction, and (3) award it statutory damages pursuant
to 15 U.S.C. § 1117(c) in the amount of $200,000. CrossFit has stipulated to dismissing its
claims for trademark infringement as to the new marks, its claim for treble damages for a willful
violation of Chapter 93A, and its claims for Lanham Act false designation (Count Two) and
trademark dilution (Count Three). CrossFit has made those dismissals, however, “contingent
upon the entry of a permanent injunction . . . and an award of statutory damages.” (Pl. Mem.
12). Mustapha has opposed CrossFit’s motion and has made an oral motion for reconsideration
of the Court’s summary judgment order. Essentially, Mustapha contends that “CrossFit” is a
generic mark not subject to protection under the Lanham Act.
For the following reasons, Mustapha’s motion for reconsideration will be denied, and
CrossFit’s motion for an entry of judgment will be granted in part and denied in part. The Court
will award CrossFit statutory damages in the amount of $10,000.
I.

Background
The relevant facts are set forth in the Court’s November 16, 2015 summary judgment

memorandum and order. The following background is provided only for summary purposes.
CrossFit, Inc., is a sports fitness training company. It owns sixteen federally registered
trademarks and service marks for the word mark “CrossFit,” including trademarks for fitness
training, fitness equipment, nutritional supplements, computer software related to tracking
exercises, entertainment services, clothing, and footwear. The trademark for the “CrossFit” trade
name and service mark used in connection with fitness training services, Registration No.
3,007,458, was issued on October 18, 2005.
The CrossTrain Sports Club is a fitness facility in Chelmsford that is owned by Donny

3

Mustapha. In May 2012, Mustapha contacted CrossFit to determine the process for becoming an
affiliate. At some point between June and October 2012, Mustapha’s club began offering
“CrossFit” classes, although it was not in fact affiliated with CrossFit. During that period,
Mustapha also applied for affiliation with CrossFit. After discovering Mustapha was using the
“CrossFit” mark in 2012, CrossFit demanded that he remove all references to “CrossFit” on the
club’s website and promotional materials. In January 2013, CrossFit discovered that Mustapha
was still using the “CrossFit” mark. CrossFit demanded that Mustapha immediately cease any
use of the name. Mustapha responded by promising to remove all references to “CrossFit” from
the club’s website and advertising materials.
In June 2013, CrossFit discovered that Mustapha had begun to use the term “CrossFit”
again. CrossFit then filed this action on June 21, 2013. The complaint asserts claims for
(1) trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114(1), (2) false
designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1), (3) trademark
dilution in violation of the Lanham Act, 15 U.S.C. § 1125(c), and (4) unfair and deceptive trade
practices in violation of Mass. Gen. Laws ch. 93A.
On August 29, 2013, CrossFit moved for a preliminary injunction to prevent Mustapha
from using the “CrossFit” mark. On September 30, 2013, the Court issued a preliminary
injunction against Mustapha’s use of the “CrossFit” mark, including any substantially similar
variation, in connection with his fitness-training services.
After the preliminary injunction, Mustapha changed the name of the club from the
“Chelmsford Sports Club” to the “CrossTrain Sports Club.” He also began promoting fitness
training classes that he refers to as “CrossBox,” “CrossKick,” and “CrossTrain.” He also started

4

using the slogan, “Fitness isn’t a sport it’s a lifestyle”–– a takeoff on the CrossFit slogan,
“Fitness as a Sport.”
On February 25, 2014, CrossFit filed a motion to modify the preliminary injunction,
seeking, among other things, to prevent Mustapha from using the terms “CrossBox”, “Cross
Kick”, “CrossTrain”, and “Fitness isn’t a sport it’s a lifestyle”, and to prevent him from using
the term “Fitness” when adjacent to the word “Cross” or any word containing the prefix “Cross.”
Mustapha voluntarily stopped using the slogan “Fitness isn’t a sport it’s a lifestyle” after the
motion was filed.
The Court referred the motion to the Magistrate Judge for a report and recommendation.
After multiple intervening proceedings, on August 4, 2014, the Magistrate Judge recommended
that the motion be granted in part and denied in part. After further proceedings, the Court
adopted the report and recommendation on December 4, 2014. The preliminary injunction was
modified to provide that Mustapha was required to delete any remaining references to, and was
enjoined from using, the phrase “Fitness isn’t a sport it’s a lifestyle.” He was also required to
replace all references to “Fitness” (capitalized) with “fitness” (lower case) when adjacent to
“Cross,” and was enjoined from using the word “Fitness” (capitalized) when adjacent to “Cross.”
CrossFit’s motion to modify the preliminary injunction to enjoin Mustapha’s use of the terms
“CrossBox,” “CrossKick,” and “CrossTrain” was denied.3
In July and August 2014, both parties moved for summary judgment. CrossFit moved for
summary judgment on its trademark infringement claim and contended that Mustapha’s use of
the “CrossFit” mark and the new marks infringed on its trademark as a matter of law. It also

Although CrossFit sought a preliminary injunction and later, summary judgment as to Mustapha’s alleged
infringement of the new marks, it never amended its complaint to include that relief.
3

5

moved for summary judgment on its Chapter 93A claim. Mustapha moved for summary
judgment solely on the ground that CrossFit’s claims were barred by reason of unclean hands. In
February 2015, Mustapha filed a trademark application for “CrossBox” with the TTAB.
CrossFit opposed Mustapha’s application in July 2015, and the TTAB suspended the proceeding
pending the outcome of this litigation.
The Court issued a memorandum and order denying Mustapha’s motion for summary
judgment and granting in part CrossFit’s motion for summary judgment. The Court granted
summary judgment for CrossFit on its trademark infringement claim for Mustapha’s use of the
“CrossFit” mark. The Court also granted summary judgment for CrossFit on its Chapter 93A
claim. The Court, however, denied CrossFit’s summary judgment motion on its infringement
claims for the new marks and on its allegations that Mustapha violated Chapter 93A willfully.
On those issues, the Court determined that there were genuine issues of material fact warranting
a trial.
II.

Analysis
CrossFit has moved for entry of judgment on its trademark infringement and Chapter

93A claims. CrossFit also requests that the Court convert the preliminary injunction into a
permanent injunction, and award it statutory damages pursuant to 35 U.S.C. 1117(c) in the
amount of $200,000.4 Finally, CrossFit has indicated that it is prepared to dismiss with prejudice
Count Two, Count Three, any remaining trademark infringement claims for Mustapha’s use of
the new marks, and any remaining claims under Chapter 93A for Mustapha’s allegedly willful

During the hearing on its motion, CrossFit also indicated that it will be seeking attorneys’ fees pursuant to
Mass. Gen. Laws ch. 93A, § 11.
4

6

conduct. Instead, CrossFit seeks to challenge Mustapha’s application for the “CrossBox” mark
before the TTAB.
Mustapha opposes CrossFit’s motion primarily on the ground that the Court’s
conclusions at the summary judgment stage were incorrect. During the hearing on CrossFit’s
motion, Mustapha made an oral motion for reconsideration of the Court’s summary judgment
order. Specifically, Mustapha contends that the “CrossFit” mark is generic, and is therefore
unworthy of trademark protection.
A.

Mustapha’s Motion for Reconsideration

To support his contention that the “CrossFit” mark is generic, Mustapha raised several
pieces of evidence outside the summary-judgment record, including an Internet search he
conducted for the term “CrossFit” that produced a large number of results.
The Court will construe Mustapha’s argument as an oral motion for reconsideration under
Fed. R. Civ. P. 59(e), and deny the motion.5 The “CrossFit” mark was federally registered and
had been in use for five consecutive years when Mustapha began to use it. As the Court noted in
its summary judgment order:
Whether a mark is afforded trademark protection depends upon where the mark
fits along a spectrum of categories that includes generic, descriptive, suggestive,
arbitrary, and fanciful marks. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
763, 768 (1992). If a trademark is federally registered, it is entitled to a legal
presumption of ownership and validity. See 15 U.S.C. § 1115(a) (registration of
mark “shall be prima facie evidence of the validity of the registered mark . . . and
of the registrant’s right to use the registered mark in commerce on or in
The Court has “substantial discretion and broad authority” to grant a motion for reconsideration pursuant
to Fed. R. Civ. P. 59(e). Ruiz Rivera v. Pfizer Pharm., LLC, 521 F.3d 76, 81-82 (1st Cir. 2008). A motion for
reconsideration will be granted upon a showing of (1) a “manifest error of law,” (2) new evidence, or (3) a
misunderstanding or other error “not of reasoning but apprehension.” Id. A Rule 59(e) motion cannot be used to
“advance a new argument that could (and should) have been presented prior to the district court's original ruling.”
Cochran v. Quest Software, Inc., 328 F.3d 1, 11 (1st Cir. 2003). Nor is a Rule 59(e) motion an appropriate means to
“repeat old arguments previously considered and rejected.” National Metal Finishing Co., Inc. v. Barclays
American/Commercial, Inc., 899 F.2d 119, 123 (1st Cir. 1990).
5

7

connection with the goods or services specified in the certificate”); Equine Techs,
Inc. v. Equitechnology, Inc., 68 F.3d 542, 545 (1st Cir. 1995). A trademark in
continuous use for at least five consecutive years subsequent to registration is
“incontestable.” Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812,
820 (1st Cir. 1987). Mustapha does not contest that the “CrossFit” mark was
federally registered and in use for five consecutive years. Accordingly, the mark
is entitled to trademark protection.
(November 16, 2015 Order at 12). Mustapha still has not presented any legitimate evidence that
the mark has become generic through the process known as genericide, an affirmative defense
against alleged trademark infringement, or otherwise. See Freecycle Network, Inc. v. Oey, 505
F.3d 898, 905 (9th Cir. 2007) (“Where the majority of the relevant public appropriates a
trademark term as the name of a product (or service), the mark is a victim of ‘genericide’ and
trademark rights generally cease.”). Accordingly, Mustapha’s motion for reconsideration will be
denied.
B.

Entry of Judgment and Permanent Injunction

CrossFit requests that the Court enter judgment on its trademark infringement claim for
Mustapha’s infringement of the “CrossFit” mark and on its Chapter 93A claim. The Court has
already entered summary judgment for CrossFit as to those claims, and Mustapha has failed to
provide a reason why the Court should not enter judgment. Accordingly, the Court will enter
judgment for CrossFit on Counts One and Four.6
CrossFit also requests that the Court convert the existing preliminary injunction into a
permanent injunction. The Court entered the preliminary injunction on September 30, 2013, and
modified it on December 4, 2014. Under the Lanham Act, a court may permanently enjoin a

6

The entry of judgment does not encompass (1) any claims against Mustapha for infringement of the new
marks or (2) any claims against Mustapha for a willful violation of Chapter 93A. As discussed below, those claims
will be dismissed in accordance with CrossFit’s stipulation.

8

party found liable for trademark infringement where “the principles of equity warrant.” 15
U.S.C. § 1116(a). In addition to succeeding on the merits, a party seeking a permanent
injunction must demonstrate:
(1) that it has suffered an irreparable injury; (2) that remedies available at law,
such as monetary damages, are inadequate to compensate for that injury; (3) that,
considering the balance of the hardships between the [parties], a remedy in equity
is warranted; and (4) that the public interest will not be disserved by a permanent
injunction.
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390 (2006). The Court, in granting the
initial preliminary injunction and again in modifying it, weighed those four factors and
concluded that CrossFit warranted equitable relief. Nothing has changed since those
dates, except that CrossFit has succeeded on the merits of its trademark infringement
claim against Mustapha for his use of the “CrossFit” mark. Accordingly, Mustapha will
be permanently enjoined from (1) using the “CrossFit” mark, including any substantially
similar variation, in connection with his fitness-training services, (2) using the phrase
“Fitness isn’t a sport it’s a lifestyle,” and (3) using the word “Fitness” (capitalized) when
adjacent to “Cross.”
C.

Statutory Damages

Instead of attempting to prove actual damages at a trial, CrossFit has requested statutory
damages pursuant to 15 U.S.C. § 1117(c). Section 1117(c) provides as follows:
In a case involving the use of a counterfeit mark (as defined in § 1116(d) of this
title) in connection with the sale, offering for sale, or distribution of goods or
services, the plaintiff may elect, at any time before final judgment is rendered by
the trial court, to recover, instead of actual damages and profits under subsection
(a) of this section, an award of statutory damages for any such use in connection
with the sale, offering for sale, or distribution of goods or services in the amount
of—

9

(1) not less than $1,000 or more than $200,000 per counterfeit mark per
type of goods or services sold, offered for sale, or distributed, as the court
considers just; or
(2) if the court finds that the use of the counterfeit mark was willful, not
more than $2,000,000 per counterfeit mark per type of goods or services
sold, offered for sale, or distributed, as the court considers just.
The Lanham Act defines a “counterfeit mark” as a “counterfeit of a mark that is registered on the
principal register in the [USPTO] for such goods or services sold, offered for sale, or distributed
and that is in use, whether or not the person against whom relief is sought knew such mark was
so registered.” 15 U.S.C. § 1116(d)(1)(B); see also Gabbanelli Accordions & Imp., L.L.C. v.
Gabbanelli, 575 F.3d 693, 698 (7th Cir. 2009) (“[Defendant] placed the [plaintiff’s] mark on
accordions made by a company that was not authorized to manufacture accordions for sale in the
United States under the [plaintiff’s] name; this made its use of the name counterfeiting.”).
It is undisputed that CrossFit’s mark was registered and that Mustapha was not
authorized to use the mark in connection with his club. Accordingly, because CrossFit has
elected to proceed without attempting to prove that Mustapha’s infringement was willful, it is
entitled to an award of statutory damages of not less than $1,000 and not more than $200,000
under § 1117(c)(1).
The Lanham Act provides no guidance as to the determination of statutory damages,
leaving the matter to the Court’s discretion. CrossFit requests an award in the amount of
$200,000, the maximum permissible for non-willful infringement under § 1117(c). In
determining the appropriate amount of statutory damages, a district court is “only limited by
what the court considers just.” Gucci Am., Inc. v. Duty Free Apparel, Ltd., 315 F. Supp. 2d 511,
520 (S.D.N.Y. 2004) (internal citation and quotations omitted). When awarding statutory

10

damages in trademark cases, “courts have tended to use their wide discretion to compensate
plaintiffs, as well as to deter and punish defendants . . . .” Louis Vuitton Malletier & Oakley, Inc.
v. Veit, 211 F. Supp. 2d 567, 583-84 (E.D. Pa. 2002). In determining the appropriate amount of
statutory damages under the Lanham Act, courts have evaluated
(1) the expenses saved and profits reaped by the defendant; (2) the revenues lost
by the plaintiff; (3) the value of the [trademark]; (4) the deterrent effect on
infringers other than the defendant; (5) whether the defendant’s conduct was
innocent or willful; (6) whether the defendant has cooperated in providing
particular records from which to assess the value of the infringing material
produced; and (7) the potential for deterring the defendant.
Tiffany (NJ) LLC v. Dong, 2013 WL 4046380, at *5 (S.D.N.Y. Aug. 9, 2013) (citation omitted).
Applying those factors to this case, it appears that CrossFit should be awarded statutory
damages in an amount significantly less than $200,000. There has been no evidence that the
Chelmsford Sports Club reaped significant profits from its use of the CrossFit mark. Nor does it
appear that Mustapha’s use of the mark on a local sports club’s website caused CrossFit to lose
significant revenues. The Court doubts that a high damages award would have any generaldeterrent effect on other infringers, although of course it understands why the owner of a mark
must act vigilantly to protect its rights. The need to specifically deter Mustapha, a pro se
defendant who has been embroiled in this litigation for more than two years, appears to be a
minor factor. While CrossFit is willing to forego proving that Mustapha’s infringement was
willful, it appears to be something other than wholly innocent—particularly that portion of the
infringement that occurred after June 2013. Finally, the Court cannot ignore the fact that
CrossFit will be awarded its reasonable attorneys’ fees under Mass. Gen. Laws ch. 93A, which
will also be a substantial financial consequence of the infringement. Accordingly, the Court will
award statutory damages in the amount of $10,000.
11

CrossFit’s petition for reasonable attorneys’ fees as a prevailing party on its Chapter 93A
claim remains outstanding. CrossFit is hereby ordered to file its petition for reasonable
attorneys’ fees and costs by March 4, 2016.
D.

Dismissal of Remaining Claims

CrossFit has stipulated that it is willing to dismiss its claims for false designation of
origin and trademark dilution if the Court enters a permanent injunction and awards it statutory
damages.7 The Court has entered a permanent injunction and awarded CrossFit statutory
damages. Accordingly, Counts Two and Three will be dismissed.
III.

Conclusion
For the foregoing reasons, Mustapha’s oral motion for reconsideration is DENIED, and

CrossFit’s motion for entry of judgment is GRANTED in part and DENIED in part. It is hereby
ordered that:
1. The Clerk shall enter judgment for plaintiff CrossFit, Inc., on Count One for
trademark infringement in violation of 15 U.S.C. § 1114 and Count Four for unfair
and deceptive trade practices in violation of Mass. Gen. Laws ch. 93A.
2. Defendant Donny Mustapha will be permanently enjoined from (1) using the
“CrossFit” mark, including any substantially similar variation, in connection with his
fitness-training services, (2) using the phrase “Fitness isn’t a sport it’s a lifestyle,”
and (3) using the word “Fitness” when adjacent to “Cross.” That injunction shall
issue separately from this memorandum and order.
3. Plaintiff CrossFit, Inc., is awarded statutory damages pursuant to 15 U.S.C. § 1117(c)

7

CrossFit has also indicated that it will not pursue its claims for trademark infringement as to the new
marks or for a willful violation of Chapter 93A.

12

in the amount of $10,000.
4. Counts Two and Three are hereby dismissed.
Plaintiff CrossFit, Inc., is hereby ORDERED to file its application for reasonable
attorneys’ fees and costs pursuant to Mass. Gen. Laws ch. 93A no later than March 4, 2016.
So Ordered.
/s/ F. Dennis Saylor
F. Dennis Saylor IV
United States District Judge

Dated: February 11, 2016

13