Singh Management Company, LLC v. Singh Development Company, Inc. et al

Filing 114

OPINION and ORDER ON REMAND. Signed by District Judge Bernard A. Friedman. (JCur)

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5430 Filed 11/20/20 Page 1 of 12

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
SINGH MANAGEMENT CO., LLC,
Plaintiff,

Civil Action No. 15-CV-11478

vs.

HON. BERNARD A. FRIEDMAN

SINGH BUILDING CO., INC., et al.,
Defendants.
______________________________/
OPINION AND ORDER ON REMAND
This matter is presently before the Court on remand from the court of appeals,
which vacated this Court’s order denying defendants’ motion to clarify and amend the judgment
(see docket entries 86 and 90) and instructed this Court to further explain the basis for its
judgment. See Singh Mgmt. Co., LLC v. Singh Dev. Co., Inc., 774 F. App’x 921 (6th Cir. 2019).
This case is not as complicated as the parties have portrayed it. The case has been
arbitrated, and the Court’s only remaining function is to give effect to the arbitrator’s decision.
That decision, which found that plaintiff owns the “Singh” trademark and that defendants have
infringed it, includes the scope of the injunctive relief this Court should issue because the parties
submitted this issue to the arbitrator for decision and voluntarily participated in the proceedings
– after the arbitrator issued his lengthy written decision in January 2017 – to clarify and refine
that aspect of his ruling. While the parties’ arbitration agreement left it to the Court to grant any
injunctive relief, they allowed the arbitrator to determine the parameters of such relief by
submitting the issue to him without objection. See Nationwide Mut. Ins. Co. v. Home Ins. Co.,
330 F.3d 843, 846 (6th Cir. 2003) (noting that “[a] party may waive its objection to the
jurisdiction of the arbitrators by acquiescing in the arbitration with knowledge of the possible

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5431 Filed 11/20/20 Page 2 of 12

defect”); Kamakazi Music Corp. v. Robbins Music Corp., 684 F.2d 228, 231 (2d Cir.1982) (“[i]t
is hornbook law that parties by their conduct may agree to send issues outside an arbitration
clause to arbitration.”). As both parties voluntarily submitted the issue of remedy to the
arbitrator, the Court shall do nothing more than give effect to his decision.
In his January 2017 decision, the arbitrator stated:
After their terminations, the Plaintiffs [defendants in the
instant action]1 cr[e]ated various entities with the State of
Michigan . . . that begin with “Singh”as the first word within the
entities name. The Plaintiffs[’] use of the name “Singh” within
these various entities creates confusion in the marketplace because
the type of services being offered by Pargat and Darshan through
these entities is similar or the same as those being offered by
Defendants, the owner of the Singh mark.
*

*

*

[S]ufficient evidence was presented that the name “Singh” in
relationship to residential construction, senior housing
communities and apartment communities and other business
services offered by Defendants is well known in this geographical
area and that there exists strong consumer recognition of the Singh
brand.
There was also sufficient evidence presented that the
services that Pargat and Darshan intend to offer through their
newly created Singh entities is similar or the same to those offered
by Defendants through the established Singh Organization.
*

*

*

The Arbitrator finds that the Frisch factors above, when
applied to the evidence presented by the Parties on these issues
leads to the conclusion that consumers would likely be confused
if Plaintiffs continued to use the name “Singh” alone in the names
of their business entities which are unrelated to those of the
Defendants.12 However, the Arbitrator does find that as their given

1

In the arbitration and this case, the parties’ roles are reversed. Plaintiffs in this case
were the defendants in the arbitration, and vice-versa.
2

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5432 Filed 11/20/20 Page 3 of 12

surname, the Plaintiffs may use the name “Singh” in the name of
a business entity provided that the name is used as the surname
given to Plaintiffs in conjunction with their full names.
For example, the Arbitrator finds that Plaintiffs are
precluded from operating a business under the name Singh
Building Company, Inc., but finds that it would not infringe on
Defendants’ rights if the name “Darshal Singh Grewel Building
Company, Inc.” was used. Accordingly, the Arbitrator finds that
equity supports the injunctive relief requested by the Defendants
and finds that the issuance of a Permanent Injunction is warranted
to prevent the Plaintiffs from using the Singh mark and Singh
name as described herein.
*

*

*

[P]laintiffs are not precluded or prevented from using the “Singh”
surname in the title of their businesses, provided the surname is
used in conjunction with the Plaintiffs’ full name as discussed
herein and not in the form as the stylized Singh mark registered
with the USPTO. Accordingly, the Arbitrator finds that the
injunctive relief to be granted by the Federal Court should be
narrowly tailored to permit the Plaintiffs’ use of their surname
“Singh” (provided it is used in conjunction with their full name,
i.e. Darshan Singh Grewel or Pargat Singh Grewel) in the manner
ruled by the Arbitrator herein.
*

*

*

[T]he Arbitrator finds that the stylized Singh mark
registered with the USPTO was always intended to be and is in
fact the property of the Defendants and the Singh organization.
The use of the Singh stylized mark or the Singh name in the
manner in which the Plaintiffs have attempted to utilize same is
therefore found to be in violation of the rights of the Defendants
in the Singh mark. However, while the Plaintiffs are found to have
violated the Defendants[’] rights in their use of the Singh mark,
there was insufficient evidence that any damages have been
suffered by the Defendants resulting therefrom. Accordingly, the
Arbitrator awards no damages to the Defendants, but does find that
a permanent injunction would be appropriate. However, the
injunctive relief to be granted (appropriately by the Federal Court
in enforcement of this award), should be narrowly tailored to
effect the intent of the Arbitrator’s ruling.
The Arbitrator finds that the Plaintiffs are prohibited from
3

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5433 Filed 11/20/20 Page 4 of 12

using the Singh mark or the Singh name alone in the same manner
as the Defendants’ use of the Singh name. However, as their
surname, if used in conjunction with their first and last names, i.e.,
Darshal Singh Grewel or Pargat Singh Grewel, there is no
likelihood of confusion and the Plaintiffs are entitled to use their
name Singh in the manner described in this Opinion.
__________
12
When referencing the use of the word “Singh” alone in the
business entity name, the Arbitrator is referring to the use of the
word “Singh” as the only identifying name to describe the type of
service being offered, such as those entities Plaintiffs created after
their terminations which are Defendants in the Trademark Action,
i.e. Singh Building Company, Inc., Singh Development Company,
Inc., Singh Group, LLC, Singh Group II, LLC, Singh Lending
LLC d/b/a Team Singh, Singh Mortgage Group, LLC[,] Singh
Property Management, LLC and Singh Real Estate, LLC. It is the
use of the name “Singh” alone (without more to distinguish the
business from Defendants’ operations) that the Arbitrator finds is
likely to cause confusion.
Arbitration Op. & Award, at 97, 99-101, 103 (PageID.3521, 3523-25, 3527) (citations omitted).
In February 2017, both sides asked the arbitrator to clarify various aspects of his
decision. Plaintiff sought no clarification as to the injunction regarding the mark, but did seek
a “corrective assignment” of the mark from the individual defendants to plaintiff. See
PageID.3585. Defendants sought clarification as to the scope of the injunction: “The Award
discusses certain hypothetical instances of the use of the name which may or may not be
permitted. We seek to confirm our understanding of your ruling.” PageID.3588.
On February 21, 2017, the arbitrator held a status conference with counsel to
address their requests for clarification. On February 28, the arbitrator issued a post-arbitration
order stating, in relevant part:
4. Plaintiffs and Defendants shall each prepare a proposed order,
for review by the Arbitrator, consistent with the Arbitrator’s
rulings on the trademark issue in the Award. . . . The Arbitrator
will then review each order and render a decision as to which
4

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5434 Filed 11/20/20 Page 5 of 12

Order is appropriate based on the Opinion and Award issued.
PageID.3592.
On March 29, 2017, plaintiff submitted a proposed order which, if the arbitrator
approved, would be submitted to this Court for entry.2 Plaintiff’s proposed order stated in
relevant part:
7. The Remaining Defendants . . . are hereby permanently
ENJOINED from using . . . the SINGH mark . . . other than in
conjunction with the full names “Darshal Singh Grewel” and
“Pargat Singh Grewel” so long as such use does not draw attention
to the name “Singh” apart from the remaining names; . . .
PageID.3605. The same day, defendants submitted a proposed order that stated, in relevant part:
1. The Trademark Defendants shall be and hereby are
PERMANENTLY ENJOINED and restrained from:
a. Using the Singh Mark in any commerce, advertisement or for
any other reasons; and
b. Using the word “Singh” alone as the only identifying name to
describe its business in a manner that it likely to cause confusion
with any common law rights Singh LLC has in the word Singh.
PageID.3613-14.

2

This point is worth emphasizing. Under its March 29, 2017, cover letter, plaintiff
submitted a proposed consent judgment and permanent injunction containing the abovequoted ¶ 7 (PageID.3602-08) and also a “proposed post-arbitration order no. __” stating that
pursuant to the arbitrator’s award “Defendants [plaintiff in the instant action] may apply to
the United States District Court for the Eastern District of Michigan for an order confirming
the Arbitrator’s rulings on the trademark issues in the Award in the form of [the proposed
consent judgment and permanent injunction].” PageID.3597. This language and course of
conduct plainly evince plaintiff’s acquiescence in the arbitrator not only deciding the merits
of its trademark claims but also the scope of the injunction this Court should enter. The
Court therefore “find[s] that Singh Management waived its rights under the agreement [for
the Court to fashion the remedy] by acquiescing to the arbitrator’s jurisdiction on this issue.”
Singh Mgmt. Co., LLC, 774 F. App’x at 928 (Nalbandian, J., concurring).
5

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5435 Filed 11/20/20 Page 6 of 12

On May 16, 2017, the arbitrator’s assistant sent counsel the following email:
Judge Howard has requested that I contact you concerning the
proposed Judgment/Preliminary Injunction Orders submitted by
the parties . . . . Upon his review, Judge Howard does not believe
that either order is acceptable given the actual findings and rulings
set forth in the Award. Accordingly, he has directed me to instruct
the Defendants (Plaintiff in the Trademark action) to submit a new
order to him for consideration that addresses only the rulings made
in the Arbitration Award. In other words, the Order should not
include any relief that was not specifically ordered in the Award.
. . . Upon submission of a new order, the Plaintiffs/Trademark
Defendants will be given the opportunity to provide their
comments to same for Judge Howard to consider.
PageID.3622.
In response to this directive, plaintiff submitted a proposed order that stated, in
relevant part:
4. Plaintiffs [defendants in the instant action] are prohibited from
using the SINGH Mark or the Singh name alone in the same
manner as the Defendants’ [sic] use the Singh name. Id. at 103.
However, as their surname, if used in conjunction with their first
and last names, i.e. Darshan Singh Grewel or Pargat Singh Grewel,
there is no likelihood of confusion and the Plaintiffs are entitled to
such use of their Singh. Id.
PageID.3625.
In an letter to the arbitrator dated June 6, 2017, Defendants objected to plaintiffs’
proposal for the following reasons:
The Award found that the use of the name “Singh” alone by
the Trademark Defendants without more to distinguish their
business from that of the Trademark Plaintiffs is likely to cause
confusion. (See Award, p. 100, fn 12.) By way of example,
however, the Award indicated that the use by Pargat and Darshan
of their full names (Darshan Singh Grewel Building Company,
Inc.) in connection with any future business was sufficiently
distinguishable to prevent confusion with Singh LLC’s rights in
the word Singh.
6

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5436 Filed 11/20/20 Page 7 of 12

The language “without more to distinguish” in your
Opinion must be included in the Proposed Injunction Order
because it captures the fact that if the term Singh were used in
connection with unrelated services or in a different jurisdiction,
there would be no likelihood of confusion with Singh LLC’s rights
in the word “Singh” alone. Similarly, the Award cannot mean – as
proposed by Singh, LLC – that the only use by the Trademark
Defendants of the word Singh that is sufficiently distinguishable
to prevent confusion is as part of their full name. (Award, p. 101.)
Under the multi-factor Frisch analysis followed in your
Opinion, an injunction that limits the Trademark Defendants to
operating businesses only under their full name is too broad and
not intended under the Award. The result of this would be that the
Arbitrator is affirmatively selecting the only future business name
under which Pargat and Darshan will operate going forward to the
exclusion of an unlimited number of other names that would be
sufficiently distinct from any rights of Singh LLC in the Singh
name.
PageID.3629-30 (emphasis in original). Defendants proposed the following alternative wording
to paragraph 4 of the order plaintiffs had drafted:
4. Plaintiffs [defendants in the instant action] are prohibited from
using the SINGH Mark or the Singh name alone without more to
distinguish its business(es) from Defendant’s business(es) which
use(s) the Singh name. Id. at 100 at fn. 12; 103. For example, as
their surname, if used in conjunction with their first and last
names, i.e. Darshal Singh Grewel or Pargat Singh Grewel, there is
no likelihood of confusion and the Plaintiffs are entitled to such
use of their surname Singh. Id.
PageID.3632-33.
On July 13, 2017, the arbitrator issued an Order Regarding Trademark Rulings
in which he stated, in relevant part:
Having reviewed and considered the proposed orders, the
Arbitrator’s Opinion and Award[,] and the Arbitrator otherwise
being fully advised in the premises:
IT IS HEREBY ORDERED that for the reasons set forth in
the Arbitration Award:
7

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5437 Filed 11/20/20 Page 8 of 12

1. The Trademark Defendants shall be permanently enjoined and
restrained from using the Singh Mark registered with the [USPTO]
....
2. The Trademark Defendants are permanently enjoined and
restrained from using the name “Singh” alone as the only
identifying proper noun used to describe their business.
3. There are no monetary damages awarded . . .
4. All claims against Jasjit “Renu” Takhar are dismissed with
prejudice.
PageID.3637.
In April 2018, the Court issued an order confirming the arbitrator’s rulings on the
trademark claims, stating, in relevant part:
[T]he Court shall and hereby does confirm the arbitrator’s opinion
and award precisely as written, including as clarified by the
arbitrator’s July 13, 2017, Order Regarding Trademark
Rulings, as reflected in the judgment entered simultaneously with
this order. Accordingly,
IT IS ORDERED that defendants’ motion for confirmation
of the arbitrator’s trademark rulings [docket entry 70]is granted to
the extent indicated in the judgment.
IT IS FURTHER ORDERED that plaintiff’s motion for
confirmation of the arbitrator’s trademark rulings [docket entry
71] is granted to the extent indicated in the judgment.
IT IS FURTHER ORDERED that plaintiff’s motion for
permanent injunctive relief [docket entry 72] is granted to the
extent indicated in the judgment.
The accompanying judgment stated in relevant part:
IT IS ORDERED AND ADJUDGED that judgment be and
is hereby granted for plaintiff and against defendants.
IT IS FURTHER ORDERED AND ADJUDGED that
plaintiff is the owner of the Singh stylized mark (#2,247,287).
8

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5438 Filed 11/20/20 Page 9 of 12

IT IS FURTHER ORDERED AND ADJUDGED that
defendants are enjoined from using the Singh stylized mark.
IT IS FURTHER ORDERED AND ADJUDGED that
defendants are enjoined from using the word “Singh” in any of
their business names as the only identifying name to describe the
type of service being offered; defendants may use the word
“Singh” in the name of a business entity provided that the name is
used as the surname given to defendants in conjunction with their
full names.
Defendants then filed a motion to clarify and amend the final paragraph of the
judgment. Defendants argued that the Court’s stated intention to “confirm the arbitrator’s opinion
and award precisely as written, including as clarified by the arbitrator’s July 13, 2017, Order “ was
not correctly reflected in the final paragraph of the judgment because the judgment prohibited
defendants from “using the word ‘Singh’ in any of their business names as the only identifying name
to describe the type of service being offered,” whereas defendants believed the judgment should
have prohibited them from “using the name ‘Singh’ alone as the only identifying proper noun used
to describe their business.”3 Finding this argument frivolous, the Court denied the motion to clarify
and amend the judgment.
The court of appeals has vacated this Court’s order denying defendants’ motion with
instructions to “clarify its ruling,” Singh Mgmt. Co., LLC , 774 F. App’x at 927, because it is unclear
whether the Court adopted the arbitrator’s January 2017 ruling or his less restrictive July 2017
ruling. The court of appeals noted:
The January Award stated that “consumers would likely be
confused if [Darshan and Pargat] continued to use the name

3

Defendants also argued that “[t]he Judgment should further provide for the dismissal of
Trademark Defendant Jasjit Renu Takkar.” Id. This argument is moot, as plaintiff later
voluntarily dismissed the complaint as to this defendant. See docket entries 99, 100, and 104.
9

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5439 Filed 11/20/20 Page 10 of 12

‘Singh’ alone in the names of their business entities which are
unrelated to those of [Singh Management].” But the arbitrator also
found that because Singh was Darshan and Pargat's last name, they
“may use the name ‘Singh’ in the name of a business entity
provided that the name is used as the surname given to Plaintiffs
in conjunction with their full names.”
*

*

*

The arbitrator issued an Order Regarding Trademark Rulings in
July 2017 (July Order), “to permit the Parties to present the rulings
of the Arbitrator on the Trademark Issues for use by the Federal
Court in entry of a judgment in the trademark proceeding.” The
July Order appeared to adopt Darshan and Pargat's less-restrictive
formulation, directing that Darshan and Pargat be “permanently
enjoined and restrained from using the name ‘Singh’ alone as the
only identifying proper noun used to describe their business.”
Singh Mgmt. Co., LLC, 774 F. App’x at 922-23.
The arbitrator’s January 2017 Award and his July 2017 Order must be read in
conjunction, and it was and remains the Court’s intention to give effect to both. In the January
2017 Award, the arbitrator clearly indicated that confusion arises when defendants “use the name
‘Singh’ alone in the names of their business entities.” PageID.3524. In footnote 12 of his Award,
the arbitrator listed several examples of companies defendants have created with names that must
be disallowed because they are likely to cause confusion with plaintiff’s Singh mark:
When referencing the use of the word “Singh” alone in the
business entity name, the Arbitrator is referring to the use of the word
“Singh” as the only identifying name to describe the type of service
being offered, such as those entities Plaintiffs created after their
terminations which are Defendants in the Trademark Action, i.e.
Singh Building Company, Inc., Singh Development Company, Inc.,
Singh Group, LLC, Singh Group II, LLC, Singh Lending LLC d/b/a
Team Singh, Singh Mortgage Group, LLC[,] Singh Property
Management, LLC and Singh Real Estate, LLC. It is the use of the
name “Singh” alone (without more to distinguish the business from
Defendants’ operations) that the Arbitrator finds is likely to cause
confusion.
10

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5440 Filed 11/20/20 Page 11 of 12

Award at 100 n.12 (PageID.3524). At the same time, the arbitrator indicated that it would not be
confusing if defendants used their full names in naming their business(es). As an example, the
arbitrator found that Darshan Singh Grewel Building Company, Inc., would not infringe (while
finding that Singh Building Company, Inc., did infringe). Id. at 100 (PageID.3524). The arbitrator
concluded that the injunction “should be narrowly tailored to permit the Plaintiffs’ use of their
surname ‘Singh’ (provided it is used in conjunction with their full name, i.e. Darshan Singh Grewel
or Pargat Singh Grewel) in the manner ruled by the Arbitrator herein.” Id. at PageID.3525.
In his July 2017 Order Regarding Trademark Rulings, the arbitrator stated that
defendants should be enjoined “from using the name ‘Singh’ alone as the only identifying proper
noun used to describe their business.” PageID.3637. This reaffirmed the arbitrator’s intention to
prohibit defendants from using the name “Singh” alone in naming any of their businesses, several
examples of which were listed in footnote 12. The difference between the January 2017 Award and
the July 2017 Order is that the former appeared to allow defendants to use the word Singh in only
one way, namely, by including defendants’ full names (Pargat Singh Greweal or Darshan Singh
Grewel) in naming their businesses, while the subsequent order did not suggest any particular noninfringing uses of the word Singh. In loosening his initial ruling, the arbitrator presumably found
force in defendants’ argument, raised in their June 6, 2017, letter, that his January 2017 award
should not be understood as having ruled “that the only use by the Trademark Defendants of the
word Singh that is sufficiently distinguishable to prevent confusion is as part of their full name.”
PageID.3629 (emphasis in original).
The Court understands the arbitrator’s July 2017 order to be a modification of his
January 2017 award. Michigan’s Uniform Arbitration Act, Mich. Comp. Laws § 691.1700, states:

11

Case 2:15-cv-11478-BAF-MJH ECF No. 114, PageID.5441 Filed 11/20/20 Page 12 of 12

“(1) On motion to an arbitrator by a party to an arbitration proceeding, the arbitrator may modify
or correct an award on any of the following grounds: . . . (c) To clarify the award.” In this case, both
sides asked the arbitrator to clarify his award, and he did so in July 2017 by ruling that defendants
may not use the stylized Singh mark at all and that they may not use “the name ‘Singh’ alone as the
only identifying proper noun used to describe their business.” This was a clarification/modification
of the ruling made in his January 2017 award, which appeared to indicate that defendants could use
“Singh” in naming a business only if they used their full names in the business name; the July 2017
order eliminated this ruling on permitted uses of the name Singh. It is this later modification of the
earlier ruling that the Court must incorporate in its judgment. Accordingly,

IT IS ORDERED that defendants’ motion to clarify and amend injunctive relief
[docket entry 86] is granted as follows: the judgment in this matter will be amended to indicate
that defendants are enjoined from using the name “Singh” alone as the only identifying proper
noun used to describe their business. Examples of disallowed uses are provided in footnote 12
of the arbitrator’s January 2017 award.

Dated: November 20, 2020
Detroit, Michigan

s/Bernard A. Friedman
BERNARD A. FRIEDMAN
SENIOR UNITED STATES DISTRICT JUDGE

12