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

Filing 84

OPINION and ORDER Confirming Arbitrator's Rulings on Plaintiff's Trademark Claims. Signed by District Judge Bernard A. Friedman. (JCur)

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 COMPANY, INC., et al.,
Defendants.
_____________________________________/
OPINION AND ORDER CONFIRMING ARBITRATOR=S
RULINGS ON PLAINTIFF=S TRADEMARK CLAIMS
This matter is presently before the Court on (1) defendants= motion for
confirmation of the arbitrator=s trademark rulings [docket entry 70]; (2) plaintiff=s motion for
confirmation of the arbitrator=s trademark rulings [docket entry 71]; and (3) plaintiff=s motion for
permanent injunctive relief [docket entry 72]. Pursuant to E.D. Mich. 7.1(f)(2), the Court shall
decide these motions without a hearing.
In its September 11, 2015, opinion and order compelling arbitration in this matter,
the Court stated:
Plaintiff Singh Management Co., LLC, which is controlled
by certain members of the Grewal family, alleges that defendants
(certain other members of the Grewal family and entities they
control and individuals they employ) are infringing its ASingh@
trademark by using the mark in their company names, in their
websites, and in connection with advertising, promoting, offering
and selling various real estate services. Plaintiff asserts claims for
trademark infringement, unfair competition, and false designation
of origin under federal and state law and under the Michigan
Consumer Protection Act. Plaintiff also alleges that defendants
have violated its copyright in a certain photograph. For relief
plaintiff seeks an injunction, damages, costs, interest, and attorney
fees.

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*

*

The parties agreed, and Judge Alexander ordered, that all disputes
between the parties (both Aprior and subsequent@ to the date of the
order) would be arbitrated B not only those Arelating in any way to
the operation of Singh Companies,@ but also Aall other claims or
defenses raised by any of the parties.@ This definition of the
disputes to be arbitrated is all-encompassing and most certainly
does include the new claims raised in the instant lawsuit over
ownership of the Singh trademark as well as the alleged misuse of
the copyrighted photograph. The use/misuse of the mark and
photograph clearly relates to Athe operation of Singh Companies,@
and the use/misuse thereof obviously is the subject of a claim by a
party. These claims, along with those raised in Grewal, must be
arbitrated before Barry Howard because this is what the parties
agreed to do and it is what the state court ordered.
Singh Mgmt. Co., LLC v. Singh Bldg. Co., Inc., No. 15-CV-11478, 2015 WL 13039634, at *1, *3
(E.D. Mich. Sept. 11, 2015). The Court ordered that A[a]ll claims raised in this case must be
arbitrated before Barry Howard along with all claims raised in the [Oakland County] Grewal
matter. The Court retains jurisdiction to entertain post-arbitration motions to enter judgment on
the arbitration award and for injunctive relief.@ Id. at *4.
The Amore than 195 Parties . . . in the United States and India,@ Arbitration and
Award p. 1 n.1, proceeded to arbitrate their long list of claims and counterclaims before retired
Judge Howard. In an exceptionally thoughtful, painstakingly detailed, 103-page opinion, Judge
Howard noted:
After the Arbitrator was appointed by consent of the
Parties, the Parties engaged in significant discovery over an
extended period of time. A multitude of discovery disputes arose
and the Arbitrator issued 24 Orders addressing discovery and the
Arbitration process over a period of a year. The Parties
exchanged hundreds of thousands of pages of discovery and
conducted a number of depositions, including taking depositions in
India. The Arbitration Hearing dates were adjourned on at least
two occasions to permit additional discovery and to address
concerns raised by the Parties regarding completion of expert
opinions and expert discovery.

After the submission of Summary Disposition motions by
the Defendants, which were denied with the limited exception of
the motion raised by Defendant Attorney Clarkson, the Arbitration
Hearing commenced on Monday, August 15, 2016. The hearing
took place over a period of twelve days. The hearing was
bifurcated with the first ten (10) days of the hearing (from August
15, 2016 through August 29, 2016) being spent presenting
evidence and testimony concerning the Parties= state law claims set
forth in Plaintiffs= Complaint and Defendants= Counterclaim. The
remaining two (2) days of the hearing (which proceeded on
September 19th and 20th) addressed the Defendants= Federal Court
Trademark claims.
Id. at 4-5.
After the parties submitted post-arbitration briefs and answered Judge Howard=s
requests for clarification of certain issues, Judge Howard issued his lengthy opinion and award.
For reasons explained in detail at pages 93-101, Judge Howard found in plaintiff=s favor on its
trademark claims. Specifically, he found that plaintiff owns the Aregistered stylized Singh
Mark,@ that defendants are prohibited from using this mark, that defendants= use of the Signh
name by itself creates confusion in the marketplace, that defendants= use of the Signh name Ain
the name of a business entity provided that the name is used as the surname given to [defendants]
in conjunction with their full names@ would not cause confusion, and that plaintiff is not entitled
to damages but that Aa Permanent Inunction preventing [defendants=] use of the stylized Singh
mark [should] be entered by the Federal Court in the Trademark Action.@ Id. at 97-101. Judge
Howard further explained:
The Arbitrator finds that the Frisch factors . . . lead[] to the
conclusion that consumers would likely be confused if
[defendants] continued to use the name ASingh@ alone in the names
of their business entities which are unrelated to those of the
[plaintiff].12/ However, the Arbitrator does find that as their given
surname, the [defendants] may use the name ASingh@ in the name
of a business entity provided that the name is used as the surname
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given to [defendants] in conjunction with their full names.
For example, the Arbitrator finds that [defendants] are
precluded from operating a business under the name Singh
Building Company, Inc., but finds that it would not infringe on
[plaintiff=s] rights if the name ADarshan Singh Grewal Building
Company, Inc.@ was used.
_____________________
12/
When referencing the use of the word ASingh@ alone in the
business entity name, the Arbitrator is referring to the use of the
word ASingh@ as the only identifying name to describe the type of
service being offered, such as those entities [defendants] 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 ASingh@ alone (without more to distinguish
the business from [plaintiff=s] operations) that the Arbitrator finds
is likely to cause confusion.
Id. at 100 & n.12. In a subsequent order, Judge Howard clarified that defendants should be
enjoined Afrom using the name >Singh= alone as the only identifying proper noun used to describe
their business.@
In the motions now before the Court, defendants seek an order confirming the
arbitrator=s award and enjoining them from using the stylized Singh mark and Afrom using the
name >Signh= alone as the only identifying proper noun used to describe their business.@ See
proposed order attached as Ex. 23 to defendants= motion for confirmation [docket entry 70].
Plaintiff also seeks confirmation of the arbitrator=s award, but argues that the Court should
prohibit defendants not only from using the stylized Singh mark but also from Aus[ing] the term
>Singh= in a manner likely, if not certain, to cause confusion with Singh B i.e. by naming
companies >Singh Homes Copperwood, LLC= >Brandywine Singh, LLC,= or >Singh of North
Oaks, LLC.=@

Pl.=s Br. In Support of Its Motion to Confirm the Arbitration Award at 6.
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Plaintiff requests the entry of an injunction enjoining defendants Afrom using the SINGH Mark
or any reproduction or confusingly similar variations thereof@ and Afrom using the Singh name in
any manner likely to cause confusion with Plaintiff Singh and the SINGH Mark, including by
using the name Singh alone or apart from Defendants= whole name.@ Pl.=s Mot. for Permanent
Injunctive Relief, Ex. A.
As the Court noted in its earlier order, both federal and state public policy favors
arbitration Aas a speedy, fair, and efficient alternative to litigation. See, e.g., Moses H. Cone
Mem=l Hosp. v. Mercury Constr. Corp., 460 U.S. 1, 24 (1983) (noting the Aliberal federal policy
favoring arbitration agreements@); Rooyakker & Sitz, P.L.L.C. v. Plante & Moran, P.L.L.C., 276
Mich. App. 146, 155 (2007).@ Singh Mgmt. Co., 2015 WL 13039634, at *2. In the present
case, plaintiff and defendants both seek confirmation of the arbitrator=s award, not that the award
be vacated or modified.

In accordance with this well recognized public policy, and in

accordance with all parties= request for confirmation, the 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.

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IT IS FURTHER ORDERED that plaintiff=s motion for permanent injunctive
relief [docket entry 72] is granted to the extent indicated in the judgment.

Dated: April 3, 2018
Detroit, Michigan

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

CERTIFICATE OF SERVICE
The undersigned certifies that the foregoing document was served upon counsel of record and
any unrepresented parties via the Court's ECF System to their respective email or First Class
U.S. mail addresses disclosed on the Notice of Electronic Filing on April 3, 2018.
s/Johnetta M. Curry-Williams
Case Manager

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