The Pond Guy, Inc. et al v. Aquascape Designs, Inc. et al

Filing 47

OPINION & ORDER denying Plaintiff's 16 30 Motion for Preliminary Injunction. Signed by District Judge Nancy G. Edmunds. (CBet)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION

The Pond Guy, Inc., a Michigan
corporation, and Jason Blake d/b/a The
Pond Guy, a Michigan resident,

Case No.13-13229
Honorable Nancy G. Edmunds

Plaintiffs,
v.
Aquascape Designs, Inc., an Illinois
corporation, and Gregory G. Wittstock, an
Illinois resident,
Defendants.
/

OPINION AND ORDER DENYING PLAINTIFFS' MOTION FOR A PRELIMINARY
INJUNCTION [16 & 30]

Currently before the Court is Plaintiffs’ motion for a preliminary injunction. A hearing
was held on this matter on May 29, 2014, which was continued to and completed on June
9, 2014. For the reasons set forth below, the Court DENIES Plaintiffs’ motion.
I.

FINDINGS REGARDING BACKGROUND FACTS
1. Plaintiffs in this case are The Pond Guy, Inc., and its principal, Jason Blake

("Blake"). Defendants are Aquascape Designs, Inc., and its principal, Gregory Wittstock
("Wittstock"). Both parties are in the “water features” business, which entails the installation
and servicing of landscape design elements that have water as their focus, such as ponds
and waterfalls of varying sizes. The parties also sell parts and equipment necessary for the
maintenance and installation of water features.

2. The conflict in this case arises from the use of the phrase “The Pond Guy.”
Defendants applied for registration of the phrase "The Pond Guy" ("the mark") as a
trademark on August 5, 1999. Pls.' Ex. 101, Defs.' USPTO Application. Plaintiffs applied
for registration of the same phrase as a service mark on October 1, 1999. Pls.' Ex. 102,
Pls.' USPTO Application. Plaintiffs, in their registration application identified January 1996
as the earliest use of the mark, while Defendants' application claims December 1990 as
their first use of the mark. Defendants' application was pending for approximately two-anda-half years, and on December 18, 2001, the U.S. Patent and Trademark Office (the
"USPTO") issued a final action denying Defendants' application. Defs.' Ex. 555, USPTO
Final Office Action. Plaintiffs' eventually received federal registration from the USPTO on
March 4, 2003 for the “The Pond Guy” service mark for “aquatic management services”
under International Class 37. Pls.' Ex. 113, Service Mark Registration.
3. Plaintiffs use the mark as the name of their business, and as a brand name
insofar as the products they produce and sell are branded with the mark. See, e.g., Defs.'
Ex. 551, The Pond Guy Catalog. As Blake testified, Plaintiffs also sell products produced
by other companies, including by Defendants.1 Blake also testified that Plaintiffs use the
mark to identify him, personally.
4. The parties are in agreement that Defendants have used and continue to use the
mark in several ways, but they have never sold any products branded with the mark.
Defendants primarily use the mark to identify Wittstock. See, e.g., Defs.' Ex. 720-743,
Various Marketing Material. That is, in most if not all of Defendants print marketing and

1

All references to testimony are to the testimony given at the hearings held on May 29,
2014, and June 9, 2014.
2

educational materials, Defendant Wittstock includes a message to the consumer, which is
“signed” with Defendant Wittstock’s signature, immediately followed by the phrase “a.k.a.
‘The Pond Guy’”, printed in the same cursive font as the signature. Id. Defendants' more
recent use of the mark on the internet will be addressed below, as it is central to Plaintiffs'
motion.
5. Blake testified that Plaintiffs participate in the consumer retail market. Wittstock
and Jeff Payton, one of Wittstock's employees, testified that Defendants' sales are made
in the wholesale market, and indirectly in the retail market. That is, the overwhelming
majority of sales made by Defendants are made to one or another type of intermediary that
then re-sells Defendants' products. During his direct examination, Mr. Payton explained that
even when an end-use retail customer goes to Defendants' website to make a purchase,
the transaction is actually facilitated through the Shopatron program, which coordinates a
sale by a retailer in close geographic proximity to the buyer.
6. Defendants have, however, established a history of at least two marketing
channels, targeting both the re-selling intermediary and the retail consumer. Wittstock
testified that his goal since 1995 has been to produce marketing material directed to the
ultimate consumer of his products. Defendants' marketing activity has consisted of various
catalogs distributed from the mid-1990s through the present, educational seminars and
“how-to” books relating to the installation of water features, and as of 2012, their social
media activity. According to Wittstock, the educational materials are geared towards both
professional contractors and the “do-it-yourself” inclined homeowners. The record supports
a conclusion that the mark was used in Defendants’ print media marketing at least as early

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as 1996 or 1997. Defs.' Ex. 558, 1996 Catalogue, and Defs.' Ex. 583, 1997 Parade of
Ponds.
7. The parties dispute Defendants' participation in the direct retail sales market, and
the evidence of retail sales by Defendants consists mainly of the testimony of Wittstock and
Mr. Payton on the issue. Regardless of the dispute as to Defendants' retail sales activity,
the issues in this case are less about direct sales than they are about direct marketing,
particularly via the internet, which is discussed in greater detail below.
8. Defendants did use the mark as the name of the publishing company through
which they produced many of their printed marketing and educational materials.
Specifically, Defendants called their publishing company “Pond Guy Publications.”
Defendants unsuccessfully applied for registration of the “Pond Guy Publications” mark in
2003 and received a final rejection from the USPTO in 2004 which concluded that the
requested registration would likely cause confusion with Plaintiffs mark, “The Pond Guy.”
Plaintiffs concede that Defendants' publishing arm closed in 2007. Pls.' Ex. 122, USPTO
Office Action. While Defendants' use of the mark as the name of its publishing company
may be relevant for a ruling on damages, it is not pertinent to the instant motion.
9. Over the approximately fifteen years that the parties have co-existed, there has
been relatively little interaction between them, beyond Plaintiffs’ use of Defendants’
wholesale business. However, in 2000, 2001, and 2005 there was some correspondence
between the parties regarding each other’s perceived trademark infringement. Pls.' Ex.
104-106, 110-111, & 124, Correspondence between the parties. Nothing came of those
mild flare ups, beyond, perhaps, establishing notice of the parties respective positions on
the use of the mark.
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10. Wittstock's testimony confirmed that Defendants have relatively recently
increased their use of the internet as a marketing tool, and have been in the process of
filming a reality television show about their business to air on the Nat Geo Wild channel.
The show was previously titled "Pond Guys", but has since been re-titled, and as of this
writing it is scheduled to be called “Pond Stars.” Defendants have no control over the name
of the show.
11. Additionally, Plaintiffs have established that on two occasions, individuals were
confused by the Defendants' use of the mark. One instance involved a confused customer,
and the other instance involved a confused vendor. Pls.' Ex. 145 & 148. The third instance
of confusion that Plaintiffs attempt to establish is that of Wittstock himself, by way of an
internet post in which Blake was "tagged." This is not evidence of confusion, as there are
any number of more plausible explanations for the tagging than the one suggested by
Plaintiffs, including that Blake was simply inadvertently added to the post. Plaintiffs,
therefore, have established two instances of confusion.
12. Plaintiffs filed the lawsuit and the instant motion for a preliminary injunction,
seeking extremely broad injunctive relief. Defendants oppose the motion, and NGC
Network US and NGC Network International (“Nat Geo”), were permitted to file an amicus
curiae brief regarding the harmful effect the requested relief would have on the continued
production of the television program mentioned above.

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II.

FINDINGS REGARDING THE BASES OF PLAINTIFF’S PRELIMINARY
INJUNCTION MOTION
A. Marketing Channels, the Internet, and Prior Use of the Mark
13. Defendants have established a variety of marketing channels, both in traditional

printed forms and on the internet. There is no dispute that Defendants have a long history
of using the mark to market their products and services to professional contractors and
retailers, undoubtedly dating to before Plaintiffs' trademark registration.
14. As to the Defendants' use of traditional media as a means of marketing to both
the retail and wholesale markets, the testimony of both Blake and Wittstock supports a
finding that Defendants engaged in aggressive traditional media marketing almost from the
inception of their business and that Wittstock used the mark as means of identifying himself
personally at marketing events such as seminars and conventions by speaking it aloud. As
to the geographic extent of that, however, the evidence presented to the Court does not
establish with any certitude a set territory. That being said, Mr. Payton's testimony on
behalf of Defendants regarding the distribution of printed marketing media including
catalogs, magazines, and books in the tens-of-millions of copies from the mid-1990s though
the mid-to-late-2000s is strongly suggestive of a national or near-national geographic use.
However, as Defendants have largely phased it out, their use of print media is less
pertinent to this motion than their use of the internet, beyond, of course, as a benchmark
for establishing a consistent use by Defendants of the mark in all of their marketing efforts
across various media dating back to the inception of their business.
15. During the hearing, both parties made reference to the history of their
respective presence on the internet. Neither party, however, has submitted sufficient
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evidence to the Court detailing exactly what their historical internet presence consisted of.
Seeing as this is a key issue in dispute, the Court turns to the Internet Archive, found at
https://archive.org/web/, for the taking of judicial notice. As a resource the accuracy of
which cannot reasonably be questioned, the Internet Archive has been found to be an
acceptable source for the taking of judicial notice. See, In re Methyl Tertiary Butyl Ether
(MTBE) Products Liab. Litig., 2013 WL 6869410 (S.D.N.Y. Dec. 30, 2013) (taking judicial
notice of certain reports by way of an internet archive search and citing Juniper Networks,
Inc. v. Shipley, 394 Fed. App'x 713, at *1 (Fed.Cir.2010) (indicating that the Internet Archive
may be an appropriate source for judicial notice), and; Martins v. 3PD, Inc., 2013 WL
1320454, at *16 n. 8 (D.Mass. Mar. 28, 2013) (taking judicial notice of “the various historical
versions of a website available on the Internet Archive at Archive.org as facts readily
determinable by resort to a source whose accuracy cannot reasonably be questioned”).
16. The Court takes judicial notice of the parties' historical internet presence as
represented by the Internet Archive. Specifically, with regard to Defendants' use of the
phrase "the Pond Guy" as an identifying mark for Wittstock directed at both end-use
consumers and professional contractors and retailers, the Court finds that Defendants have
been making such a use of the mark on the internet since at least February 29, 2000. See,
https://web.archive.org/web/20000229123655/http://www.aquascapedesigns.com/pondguy2.htm, and; https://web.archive.org/web/20000229140817/http://www.aquascapedsigns.com/pondguyfrm.htm.
17. This finding is based on both the tone and content of the above cited archival
internet material, which on one page identifies Wittstock as "The Pond Guy" and on the
other page is clearly directed at an end-use consumer. An example of language appearing
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on the archived website that clearly has as its intended audience the end-use retail
consumer is the following entreaty: "[d]on’t delay in joining the thousands of people who
have enhanced their property and their lives with water features." Id.
18. Plaintiffs sought to introduce expert opinion testimony regarding Defendants'
use of the mark in their internet marketing and how that use could negatively impact
Plaintiffs' business. The Court allowed Plaintiffs' proposed expert to testify, however,
beyond accepting as true that Defendants use the mark in the back-end code of their
various websites - a fact which Defendants do not deny, so much as they attempt to explain
it away - the Court does not accept or adopt Plaintiffs' proposed expert's opinions, primarily
because despite his qualifications, his opinions were based almost entirely on speculation,
and therefore do not meet the statutory requirements of Federal Rule of Evidence 702.
B. Genericness
19. While the Court is not at this time ruling on the issue of whether or not the mark
is generic, the issue of genericness is key to the resolution of the instant motion, and
evidence on this point was submitted to the Court. Defendants point out that a Google
search reveals numerous other companies across the United States that incorporate the
phrase "the pond guy" into their business names. Also in support of this assertion,
Defendants offer a list of nineteen of their own customers that use the mark as a business
name. Defs.' Ex. 565. Plaintiffs object to Defendants' evidence on this point, but they do not
deny that there are other companies using the mark. Instead, Plaintiffs' play down the
importance of such use, to wit Blake testified that many of these companies are small
businesses serving only the localities in which they are established. The Court sees
Plaintiffs' explanation as actually supporting Defendants' position, in that if there are
8

numerous small businesses using the mark across the country, and they all provide the
same or similar services, that fact goes toward the proposition that people everywhere
understand the mark in its primary, generic meaning.
20. Furthermore, Blake testified that he regularly refers to his employees as "pond
guys" and "pond gals," and that when he was first starting his business, upon arriving at a
customer's house, his arrival would be announced by the statement "the pond guy is here."
III.

CONCLUSIONS OF LAW
A. The Standard on a Motion for a Preliminary Injunction
In the Sixth Circuit it is firmly established that the district courts balance the following

factors in addressing a motion for a preliminary injunction:
(1) the likelihood that the movant will succeed on the merits; (2) whether the
movant will suffer irreparable harm without the injunction; (3) the probability
that granting the injunction will cause substantial harm to others; and (4)
whether the public interest will be advanced by issuing the injunction.
Miller v. City of Cincinnati, 622 F.3d 524, 533 (6th Cir. 2010). Furthermore, “[n]one of these
factors, standing alone, is a prerequisite to relief; rather, the court should balance them.”
Connection Distrib. Co. v. Reno, 154 F.3d 281, 288 (6th Cir. 1998).
B. Plaintiffs Have Not Demonstrated a Likelihood of Success on the Merits
Plaintiffs’ complaint raises numerous claims in addition to their federal trademark
claim, however, Plaintiffs’ motion for a preliminary injunction is based wholly on the
trademark claim. In assessing Plaintiffs’ likelihood of success on the merits, the Court looks
to what is required of a Lanham Act plaintiff in order to demonstrate trademark
infringement.

9

The Sixth Circuit has stated that such a plaintiff must show that the defendant’s use
of the mark “is likely to cause confusion among consumers regarding the origin of the
goods offered by the parties.” Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 412
(6th Cir. 2006) (citing Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music
Center, 109 F.3d 275, 280 (6th Cir.1997). Furthermore,
[i]n order to determine confusion, this Court examines the eight so-called
Frisch factors: “(1) strength of the plaintiff's mark, (2) relatedness of the
goods or services, (3) similarity of the marks, (4) evidence of actual
confusion, (5) marketing channels used, (6) likely degree of purchaser care,
(7) the defendant's intent in selecting its mark, and (8) likelihood of expansion
of the product lines.” Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP,
423 F.3d 539, 548 (6th Cir.2005) (citing Frisch's Rests., Inc. v. Elby's Big Boy
of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.1982), cert. denied, 459 U.S.
916, 103 S.Ct. 231, 74 L.Ed.2d 182 (1982)). “These factors imply no
mathematical precision, but are simply a guide to help determine whether
confusion is likely.” Id. (citing Homeowners Group, Inc. v. Home Mktg.
Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir.1991) ).
Gen. Motors Corp., 468 F.3d at 412.
The above factors, however, “imply no mathematical precision, but are simply a
guide to help determine whether confusion is likely.” Id. Moreover, “not all of these factors
may be particularly helpful in any given case.” Id., 468 F.3d at 413.
The Court also notes that while the above factors comprise the test for determining
whether or not consumer confusion is likely in a given case, consumer confusion is not the
only factor in the likelihood of success on the merits analysis required for a preliminary
injunction in a trademark infringement case. In particular, in this case, Defendants argue
fair use, prior use, and acquiescence on the part of the Plaintiff.

1. The doctrines of laches and acquiescence
10

As an initial matter the Court will address Defedants’ arguments based on Plaintiffs’
long delay in brining suit. Defendants argue that Plaintiffs’ claims should be barred by the
doctrine of laches. The Sixth Circuit, however, has explicitly stated that while laches
‘precludes a plaintiff from recovering damages, it does not bar injunctive relief.” Kellogg
Company v. Exxon Corporation, 209 F.3d 562, 568-69 (6th Cir.2000). As such, in order to
successfully defend against Plaintiffs’ preliminary injunction motion along this line of
argument, Defendants must establish acquiescence. Id.
The Sixth Circuit has noted that “[a]lthough both laches and acquiescence require
proof that the party seeking to enforce its trademark rights has unreasonably delayed
pursuing litigation and, as a result, materially prejudiced the alleged infringer, acquiescence
requires more.” Id. Furthermore, “[t]o deny injunctive relief in trademark litigation, ... some
affirmative conduct in the nature of an estoppel, or conduct amounting to ‘virtual
abandonment,’ is necessary.” Id. (quoting Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d
362, 366 n. 2 (6th Cir.1985)).
Here, Defendants note that Plaintiffs offered to attempt to reach a “cross license
agreement” in a 2005 letter as evidence that Plaintiffs acquiesced in Defendants’ use of the
mark. The Court does not see it that way. In fact, a reasonable reading of the 2005 letter
leads the Court to the conclusion that Plaintiffs sought to address what they deemed to be
infringing activity without immediately resorting to litigation, which is a measured way of
expressing displeasure with Defendants’ activity without unnecessarily escalating the
situation. It is not, however, an indication of acquiescence. Additionally, Defendants argue
that Plaintiffs’ sale of Acquascape products indicates acquiescence. Again, Defendants
miss the mark. There is no indication that the products produced by Defendants that
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Plaintiffs sold were marked with the “The Pond Guy” mark, which would be strong evidence
of acquiescence; indeed, Defendants sell no products at all that have “The Pond Guy”
actually inscribed on the product or the label. Plaintiffs, therefore, in selling Defendants’
products, did not acquiesce in any infringing activity. Plaintiffs can continue their
commercial relationship with Defendants without acquiescing in Defendants’ allegedly
infringing behavior.
The Court finds that Defendants have not shown the affirmative conduct required
by the Sixth Circuit to establish acquiescence sufficient to bar injunctive relief.
As the Court has found that laches is not an effective defense and that the record
does not support Defendants’ claims of acquiescence, Plaintiffs’ arguments regarding
progressive encroachment to justify a delay in filing suit need not be addressed.
2. Defendants’ prior use of the mark
Second, the Court will address Defendants’ prior use of the mark. The Sixth Circuit
has made clear that “the determination of prior use of a service mark presents a mixed
question of law and fact.” Allard Enterprises, Inc. v. Advanced Programming Res., Inc., 146
F.3d 350, 355 (6th Cir. 1998) (“Allard I”). That being said, it is settled law that an
unregistered senior user of a mark does have rights in the mark that are not vitiated by way
of the junior user’s registration. Allard Enterprises, Inc. v. Advanced Programming Res.,
Inc., 249 F.3d 564, 572 (6th Cir. 2001) (“Allard II”) (noting that “[t]he territorial rights of a
holder of a federally registered trademark are always subject to any superior common law
rights acquired by another party through actual use prior to the registrant's constructive
use.”).

12

As noted above, the Court has found that Wittstock has been using the phrase “The
Pond Guy” to identify himself, since at least 1996 or 1997, which is two or three years prior
to Plaintiffs’ application for registration of the “The Pond Guy” mark.
Assuming, arguendo, that Defendants' evidence of prior use establishes some rights
under the Allard cases, Plaintiffs claim that while Defendants may have previously been
using the mark within the limits set by their prior use, the current use of the mark by
Defendants has exceeded any rights that the prior use may have created. That is, Plaintiffs
contend that Defendants’ use of the mark for their social media marketing campaign is
outside the bounds set by Defendants' use of the mark prior to Plaintiffs' registration.
The evidence has established that Defendants’ use of the mark in their printed
materials consisted of many millions of catalogs and magazines distributed in the U.S. and
Canada, and that Wittstock himself spoke the mark as an identifier in countless personal
appearances. The evidence also establishes that from the inception of Defendants'
marketing initiatives in the 1990's, Defendants attempted, and in large part succeeded in
saturating the market on as wide a scale as their budgets would allow.
Complicating this issue, however, is the fact that in the twenty-plus years that
Wittstock has been using the mark in print, communication technology has been entirely
revolutionized. As Allard II notes, a focus on "territorial rights" and the "geographic extent"
of the prior use is of limited utility when determining whether Defendants' use of the mark
on the internet, a use completely divorced from the concept of geography, falls within the
bounds meted out by his mid-1990's use of the mark. On that point, the Allard II court
stated that "due to the paucity of caselaw addressing concurrent trademark rights and
internet use, the district court may want to consider cases addressing the role of national
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advertising by parties with concurrent trademark rights." Allard II, 249 F.3d at 575. While
that decision was issued some thirteen years ago, there does not appear to have been
much development of the caselaw on this issue in general, and the specific circumstances
of this case may present a matter of first impression. Indeed, the Allard II court went on to
point out that while there may be some straightforward presentations of this issue, it is
more complicated when the junior user is the holder of the federal registration, as is the
case here. Id.
The Court's determination that Defendants have been using the mark on the internet
since at least February 2000 - which is three years prior to Plaintiffs' registration of the mark
- somewhat simplifies the analysis because it allows for an evaluation of Defendants' use
of the mark on the internet over time, as opposed to a forced comparison between
Defendants' use of the mark in traditional media with their use on the internet and avoids
a futile attempt at applying concepts of geographic territoriality to the internet.
In light of the Court's discussion below, however, on the issue of the mark's strength,
the Court will not now rule definitively on the extent to which Defendants' prior use of the
mark on the internet entitles them to the unfettered use of mark on the internet going
forward, except to say that the facts currently established regarding Defendants' internet
presence at least as early as February 2000 do not bode well for Plaintiffs’ ultimate success
on the merits in this case.

3. Fair Use

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Defendants briefly mention the fair use doctrine as a defense to Plaintiffs' claims.
Defendants do not fully develop their arguments on this point, however a brief analysis of
the issue leads the Court to the conclusion that the fair use doctrine is of no avail to
Defendants. That is, “[i]n evaluating a defendant's fair use defense, a court must consider
whether [the] defendant has used the mark: (1) in its descriptive sense; and (2) in good
faith.” Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 612 (6th Cir. 2009) (citing ETW Corp.
v. Jireh Pub., Inc., 332 F.3d 915, 920 (6th Cir.2003)). Here, the Court finds that while
Defendants are using the mark, in part, in its descriptive sense, they are also in large part
using it to personally identify Wittstock. Such a use is not purely descriptive of the products
and services provided by Defendants. Id. Thus, the fair use defense is not applicable to
Defendants' use of the mark.
4. The eight Frisch factors do not weigh in favor of a finding that Plaintiffs
are likely to succeed on the merits as to Defendants’ use of the mark
Having addressed ancillary arguments regarding Plaintiffs’ success on the merits,
the Court now turns to the heart of a Lanham Act trademark infringement preliminary
injunction analysis, the eight so-called Frisch factors.
a. Strength of Plaintiffs’ mark
Defendants argue that Plaintiffs’ mark is weak because it is generic. Plaintiffs argue
that the mark has become incontestible under the Lanham Act, which is true. However, 15
U.S.C. § 1065 explicitly states that “no incontestable right shall be acquired in a mark which
is the generic name for the goods or services or a portion thereof, for which it is registered.”
15 U.S.C. § 1065(4) (West). Therefore,
[t]he mark's incontestable status...does not protect it from a challenge...premised on
a claim that it has become generic. See 15 U.S.C. § 1065. Nevertheless, because
15

the mark at issue was a federally registered mark, there is a presumption that the
term is non-generic and the defendant bears the burden of overcoming this
presumption.
Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 405 (6th Cir. 2002) (internal
citations omitted). To that end, Defendants argue that the mark is generic because it is
primarily a descriptive term, more readily used to indicate the type of products and services
the parties provide than to designate the source of a given product.
In the Sixth Circuit, “the test for whether a term is generic and therefore ineligible for
trademark protection is ‘whether the public perceives the term primarily as the designation
of the article.’” T. Marzetti Co. v. Roskam Baking Co., 680 F.3d 629, 633-34 (6th Cir. 2012)
(citing Gen. Conference Corp. of Seventh–Day Adventists v. McGill, 617 F.3d 402, 413 (6th
Cir.2010). Furthermore, “[i]f a mark is primarily associated with a type of product rather
than with the producer, it is generic.” Nartron Corp., 305 F.3d at 404.
The Nartron court also noted that “[g]eneric terms are also called ‘common
descriptive’ terms, as distinguished from ‘merely descriptive’ terms,” and that a “‘merely
descriptive’ term may be registered if it has become distinctive of the applicant's goods in
commerce but that “registration may be cancelled if the mark has become “the common
descriptive name of an article”. Id., 305 F.3d at 404, n. 7. (internal quotation marks and
citations omitted). The Nartron court goes on to provide the following explanation of the
difference between “common” and “merely” descriptive terms:
A “merely descriptive” mark, as opposed to a “common descriptive” one, is
often said to identify a characteristic of the thing. It is very similar to an
adjective. Judge Friendly illustrated the distinction between a generic and a
merely descriptive mark with the “Deep Bowl Spoon” example:
“Deep Bowl” identifies a significant characteristic of the article.
It is “merely descriptive” of the goods, because it informs one
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that they are deep in the bowl portion.... It is not, however, “the
common descriptive name” of the article (since) the implement
is not a deep bowl, it is a spoon.... “Spoon” is not merely
descriptive of the article, it identifies—the article—(and
therefore) the term is generic.
See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 10, n. 11
(2d. Cir.1976), quoting Fletcher, Actual Confusion as to Incontestability of
Descriptive Marks, 64 Trademark Rep. 252, 260 (1974). Where a mark
registered on the federal principal registry is “merely descriptive” and has
become incontestable pursuant to 15 U.S.C. § 1065, the mark is presumed
to have acquired a secondary meaning. See Liquid Controls Corp. v. Liquid
Control Corp., 802 F.2d 934, 936 (7th Cir.1986).
Id.
The mark at issue, “The Pond Guy,” is unarguably a descriptive term. The question
the Court will be tasked with resolving when ruling on the merits of this case, then, is
whether the mark is a “merely descriptive” term, in which case, as a registered trademark
it is entitled to protection, or a “common descriptive” term, in which case it is generic, and
its registration may be subject to cancellation.
On the record established for the purposes of the preliminary injunction motion, the
mark may indeed be the common descriptive term for a person with expertise in ponds.
That is, “pond” is clearly a common descriptive term, generally accepted to mean a “small
body of still water of artificial formation, made either by excavating a hollow in the ground
or by embanking and damming up a watercourse in a natural hollow.” Oxford English
Dictionary, available at http://www.oed.com/view/Entry/147571?rskey=8LVWBN&result=1#
eid. “Guy” is generally accepted as a colloquial synonym for “man.” Oxford English
Dictionary, fourth definition, available at http://www.oed.com/view/Entry/82780?rskey=4TEt
aq&result=2#eid.

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Furthermore, the use of the word “guy” can have different, generally acceptable
connotations. Particularly enlightening on this issue is an example of the phrase in common
usage provided by Nat Geo as amicus curiae. Nat Geo, in providing examples of uses of
the phrase that may cause difficulty for it should the Court grant Plaintiffs' requested relief,
offers a scenario where a customer states “I don’t think we need a pool guy for that, I think
we need a pond guy.” Amicus br., 10. Such a statement communicates an understanding
that in common parlance appending the word “guy” to a noun signifies a person with
expertise related to that noun. Indeed, Blake freely admits to referring to his employees as
“pond guys and pond gals.”
In all fairness, Blake also testified that he felt that upon his arrival at a client’s home
the issuance of the announcement that “the pond guy is here” is analogous to a
homeowner proclaiming “the Orkin Man is here.” The Court is not convinced of the
equivalence of the two phrases, however, as the listener only knows why the “Orkin Man”
is there if he or she is familiar with the Orkin brand, whereas upon hearing the statement
“the pond guy is here” or “the pond guys are here” the listener has an immediate
understanding of, at the very least, the general reason for the visit.
Another hypothetical variation on this theme that highlights the potential genericness
of the phrase would be “le gars de l'étang,” which, roughly, is “the pond guy” in French. As
most Americans do not speak French, the announcement of the arrival of “le gars de
l'étang” at your home in, say, Cincinnati, would be met with puzzlement if you did not
already know that there was a company with that name in the business of servicing ponds.
As noted above, however, in plain English, “the pond guy” gives rise to a set of
expectations specific to the products and services the parties provide, without needing to
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know anything more about the parties themselves, whether you are in Los Angeles,
Cincinnati, or any other English speaking North American city.
In contrast, for example, the phrase “the big pond guys” would be a merely
descriptive use, because the addition of the word “big” to the term “pond guys” adds a
description of the characteristics of the term - much as in the “Deep Bowl Spoon” example
above - and would communicate to the listener something more specific, and uniquely
identifying about the individual arriving at their door.
The Court is of the opinion that it would not take much evidence to establish that
such a phrase is commonly descriptive, and a signifier of a type of person, that is a person
with pond expertise. Thus, “the pond guy” as a phrase is likely “primarily associated with
a type of product [or servicve] rather than with the producer [or service provider], [and may
be] generic.” Nartron Corp., 305 F.3d at 404. Therefore, despite its incontestible status as
a trademark, the Court cannot say with any degree of certainty that “The Pond Guy” mark
will escape being deemed a generic mark. It will be up to the parties, however, to make the
case one way or the other on this issue, either on motions for summary judgment or at trial.
In light of the above, on the current record, this factor weighs in favor of Defendants.
b. Relatedness of the goods or services
The goods and services in this case are related, indeed, they are very similar if not
identical. Both companies provide the products and services necessary to install a water
feature as a part of a consumer’s landscaping. The area where the goods and services
differ is educational material. Defendants, in addition to their main business line, have sold
how-to books, published magazine style printed materials with tips for professional
landscapers and homeowners, and they continue to host seminars and trade shows.
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Defendants use and have used the mark in many if not all of their marketing efforts. That
being said, the educational materials all relate back to the main business line, and as such,
this factor weighs in Plaintiffs’ favor.
c. Similarity of the marks
The marks are exactly the same when described as being comprised of the phrase
“The Pond Guy.” However, the actual presentation of the marks in printed material, on the
internet, and in the case of Plaintiffs, on products, are immediately distinguishable.
Defendants’ use of the mark has traditionally been as an add-on to Wittstock’s name at the
end of stylized messages to Defendants’ customers in marketing materials and appears
as a handwritten signature in quotation marks. Plaintiffs’ mark, on the other hand, is
presented in a block font, with a design intended to convey ripples in a pond emanating
from the top of the “d” in the word “pond,” with the phrase “we know ponds” or “simple
solutions” appearing beneath the mark. That being said, when Defendants use the mark
on the internet - which is a key use in this case - there is generally no special font used in
its presentation, and many of the internet uses occur in the background code where the
consumer never sees it.
The marks, therefore, despite some differences in presentation are sufficiently
similar that this factor favors Plaintiffs.
d. Evidence of actual confusion
Evidence of actual confusion is an important factor, especially in light of the fact that
the whole point of the Frisch analysis is to determine the likelihood of consumer confusion.
That being said, Plaintiffs’ evidence of actual confusion is anecdotal at best. Plaintiffs offer
three examples of consumer confusion, one being an incident involving a software vendor
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who confused the parties in his sales pitch, another being a social media post apparently
by Defendant Wittstock wherein Plaintiff Blake was “tagged,” and the third being a message
left with Plaintiffs that was intended for Defendants. The Sixth Circuit has stated that “four
incidents is not a considerable quantum of evidence of actual confusion, and minimal or
isolated instances of actual confusion are, obviously, less probative than a showing of
substantial actual confusion.” Champions Golf Club, Inc. v. The Champions Golf Club, Inc.,
78 F.3d 1111, 1120 (6th Cir. 1996). Here we have three examples, and one of them, that
of Defendant Wittstock “tagging” Plaintiff Blake is not even an example of consumer
confusion, as Defendant Wittstock can hardly be classified as a consumer in this instance,
and he may have had any number of reasons for tagging Blake in the post – although he
denies that tagging happened at all.
Acknowledging the importance of this factor, but faced with the paucity of evidence
provided by Plaintiffs in support of their position, the Court finds that this factor weighs in
favor of Defendants.
e. Marketing channels used
The marketing channels used factor is at the crux of Plaintiffs’ arguments. The Court
stated above that the record supports a finding that Defendants have marketed to both
contractors and retailers, and also to end-use consumers by way of their website since at
least February 2000. That being said, there is no doubting that Defendants have ramped
up their use of the internet as a marketing tool since the year 2000. Specifically,
Defendants have developed a heavy presence on the various social networking platforms
and increased the sophistication of their official company website. Indeed, Plaintiffs'
proposed expert reported on Defendants’ use of the words “the” “pond” and “guy” in both
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the visible content of their internet posts and the back-end coding of their websites.
Plaintiffs claim, but offer no evidence, that this increase in internet use is resulting in less
consumer traffic on their website. Plaintiffs’ proposed expert’s report goes into great
technical detail regarding Defendants’ use of the mark and its constituent parts as it relates
to website and search engine optimization, which are techniques designed to maximize a
website’s chances of appearing at or near the top of search results, but as noted above,
Plaintiffs' proposed expert did not report on Plaintiffs' website traffic or sales numbers as
they relate to Defendants' internet activity. Plaintiffs are complaining that Defendants are
outpacing them, however, there is no mention of Plaintiffs’ efforts to counter Defendants’
internet strategy with one of their own, nor is there any evidence of the effect that strategy
is having on either party's sales.
Furthermore, it does not appear that Defendants are using the mark in this context
any differently than described above, that is, to identify Defendant Wittstock as a person
with pond expertise. Whether the use is explicit, as at the top of a Facebook page, or
concealed in the code, the use of the mark by Defendants is all geared towards maintaining
Wittstock's persona as "the pond guy" on the internet to retailers, contractors, and the enduse retail consumer, which they have been doing, albeit to a lesser extent, since at least
2000.
This factor, therefore, weighs in Defendants' favor.
f. Likely degree of purchaser care
The likely degree of purchaser care is a factor that does not fall in favor of either
party. Given the market that the parties are participating in, purchasing behavior cannot be
easily homogenized. That is, some purchasers may not exercise very much care when
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purchasing, say, a replacement water filter. However, when making a more substantial
purchase, for instance, when having a large water feature installed in a back yard or
contracting for a long-term service and maintenance package, a consumer is likely to
exercise a much greater degree of care. Therefore, the degree of purchaser care is as
varied as the parties products and services, rendering this factor neutral.
g. Defendants’ intent in selecting its mark
The uncontested evidence is that Defendants selected and used the mark prior to,
or at the very least, contemporaneously with Plaintiffs’ first use of the mark. As such, there
can be no finding that Defendants selected the mark with any ill intent towards Plaintiffs and
their business. This factor, therefore, weighs in favor of Defendants.
h. Likelihood of expansion of the product lines
Both parties have broad product lines and a national presence thanks to the internet.
Plaintiffs conflate expansion of product lines with expansion of marketing efforts, pointing
to Defendants’ increased internet marketing activity as support for their position on this
factor. The factor calls for an examination of product lines, not marketing activity, which is
more properly considered under the “marketing channels used” factor, above.

As

Defendants point out, both parties have full product lines and have been in the water
feature business for over twenty years; thus, this factor is neutral.
i. Frisch factor conclusion
With four factors weighing in favor of Defendants, two in favor of Plaintiff, and two
neutral, the Court concludes that there is a very low likelihood of confusion between the
parties' products and services. Additionally, the Court's findings on the potential
genericness of the mark undermine not only the outcome of Plaintiffs' position on "strength
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of the mark," but on also on the overall conclusions as to Plaintiffs' likelihood of success
on the merits.
The Frisch factors, therefore, favor a ruling for Defendants.
C. Irreparable Harm, Harm to Others, and The Public Interest
1. There is little to no evidence of the potential for irreparable harm arising
from Defendants’ use of the mark
In the Sixth Circuit, a showing of a likelihood of confusion or possible risk to a
plaintiff’s reputation is sufficient to create a presumption of irreparable harm in the
preliminary injunction analysis in the context of trademark infringement. Lucky's Detroit,
LLC v. Double L, Inc., 533 F. App'x at 555 (citing Wynn Oil Co. v Am. Way Serv. Corp., 943
F.2d 595, 608 (6th Cir. 1991). Defendants argue that the presumption set forth above was
done away with in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). eBay,
however, was a patent case, and the Sixth Circuit has not applied the rule laid out there to
trademark cases.
Regardless, as the Court has found that there is a very low likelihood of confusion
and Plaintiffs have not demonstrated a risk to their reputation, the irreparable injury prong
of the preliminary injunction analysis is not satisfied.
2. There is evidence suggesting that the requested injunction would cause
serious harm to others
The Court allowed Nat Geo to file an amicus brief in this case. Nat Geo’s brief raises
both the potential for an injunction to abridge its First Amendment rights and the serious
financial concerns that would arise should this Court enjoin the use of the mark. In short,
Nat Geo points out that much of the show has already been shot and an injunction of the

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sort sought by Plaintiffs would require a large amount of time and money to ensure that no
offhand use of the phrase “pond guy” makes it into the final version. Seeing as the show
is about men who install ponds, that may be a Sisyphian task. Additionally, Nat Geo’s
concerns regarding its free speech rights are very serious. Because the Court will not be
issuing an injunction at this time, however, Nat Geo’s First Amendment interests are
protected.
3. The public’s interest is in not granting the requested injunction
As the Court has voiced its concern regarding the possible generic nature of the
mark, the public’s interest lies in not granting the injunction. The Sixth Circuit has stated
that, “[t]o allow protection for generic terms would grant “a monopoly, since a competitor
could not describe his goods as what they are.” Nartron Corp., 305 F.3d at 404-05.
Additionally, enforcing trademark rights in a generic term is harmful to society as it stifles
innovation by curtailing the free exchange of ideas relating to the generic but trademarked
term. This factor, therefore, weighs in favor of not granting the requested injunction.
In light of the above, Plaintiffs have not satisfied the requirements for a preliminary
injunction, and their motion is DENIED.
D. Defendants’ use of “Pond Guy Publications” Was Likely an Infringing Use
The evidence before the Court suggests that Defendants' use of the mark as the
name of its publishing arm may have violated Plaintiffs' rights in the mark. In particular, the
USPTO's refusal to grant Defendants a registration in the "Pond Guy Publications" mark
on the grounds that it would likely cause confusion with Plaintiffs' mark is highly probative
on this issue. However, as it is not contested that the Pond Guy Publications arm of
Aquascape is no longer in operation, an injunction against its continued operation would
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serve no purpose. This issue, however, will be relevant at the damages stages of this
lawsuit.
IV.

CONCLUSION
For the reasons stated above the Court DENIES Plaintiffs’ motion for a preliminary

injunction.
SO ORDERED.
s/Nancy G. Edmunds
Nancy G. Edmunds
United States District Judge
Dated: June 24, 2014
I hereby certify that a copy of the foregoing document was served upon counsel of record
on June 24, 2014, by electronic and/or ordinary mail.
s/Carol J. Bethel
Case Manager

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