Bankers Fidelity Life Insurance Company v. Senior Security Corp.

Filing 19

OPINION ; signed by Judge Robert Holmes Bell (Judge Robert Holmes Bell, kcb)

UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
BANKERS FIDELITY LIFE INSURANCE
COMPANY,
Plaintiff,
Case No. 1:13-CV-675
v.
HON. ROBERT HOLMES BELL
SENIOR SECURITY CORP.,
Defendant.
/
OPINION
On June 21, 2013, Plaintiff Bankers Fidelity Life Insurance Company filed a
complaint against Defendant Senior Security Corp. alleging trademark infringement and
unfair competition. (Dkt. No. 1.) On August 6, 2013, default was entered as to Defendant
for failure to plead or otherwise defend. (Dkt. No. 8.) This matter is before the Court on
Plaintiff’s motion for entry of judgment.1 (Dkt. No. 9.)
I. Findings of Fact
“On a motion for entry of default judgment pursuant to Rule 55(b)(2), allegations of

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On August 12, 2013, Defendant filed an answer “pro se.” (Dkt. No. 10.) Following a
motion to strike that answer filed by Plaintiff (Dkt. No. 12), Defendant filed a motion for
extension of time to file answer and a motion for “entry of additional information discovered and
presented by defendant.” (Dkt. Nos. 13, 16.) The Court cannot consider Defendant’s answer or
motions unless the default entered on August 6, 2013 (Dkt. No. 8) is set aside. To the extent
Defendant’s motions may be liberally construed as motions to set aside the default, a corporation
must be represented by an attorney in federal court. See Doherty v. Am. Motors Corp., 728 F.2d
334, 340 (6th Cir. 1984). Accordingly, the motions will be denied, and Plaintiff’s motion to
strike the answer will be granted.

fact in the complaint are taken as true unless they are contradictory on the face of the
document.” Kelley v. Carr, 567 F. Supp. 831, 840 (W.D. Mich. 1983) (citing Thomson v.
Wooster, 114 U.S. 104 (1885)); see also Ford Motor Co. v. Cross, 441 F. Supp. 2d 837, 846
(E.D. Mich. 2006) (“Once a default is entered against a defendant, that party is deemed to
have admitted all the well pleaded allegations in the Complaint.”).
Accordingly, the Court finds the following background facts: Since at least 1992,
Plaintiff has used its family of SENIOR SECURITY marks for its insurance products and
services. (Compl. ¶ 8.) These marks were registered on the Principal Register of the U.S.
Patent and Trademark Office. (Compl. ¶¶ 10-16.) Plaintiff’s U.S. Registration Nos.
2835929 for SENIOR SECURITY SERIES; 3273443 for SENIOR SECURITY; 2835928
for SENIOR SECURITY; 2781439 for SENIOR SECURXITY PLUS; and 3273444 for
SENIOR SECURITY PLUS have acquired incontestable status and are in full force and
effect.

(Compl. ¶¶ 17-18.)

Plaintiff’s SENIOR SECURITY marks are well known

throughout the insurance services field and have substantial goodwill associated with them.
(Compl. ¶¶ 20-21.)
The Court also finds the following operative facts: Defendant is using the SENIOR
SECURITY designation in its company name and in connection with the advertising,
promotion, offering for sale, and selling of insurance products and services. (Compl. ¶ 24.)
Until recently, Defendant used this designation in connection with the use of the domain
name seniorsecuritycorp.com, a website promoting Defendant and its insurance products.

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(Id.)

Defendant’s use of SENIOR SECURITY is identical in sound, meaning, and

appearance to Plaintiff’s pre-existing marks. (Compl. ¶ 25.) On August 10, 2010, Plaintiff
contacted Defendant advising it of the existence of the trademarks and requesting that
Defendant discontinue all use of SENIOR SECURITY. (Compl. ¶ 27.) On September 24,
2010, Defendant’s CEO and President Terrance Buyze contacted Plaintiff and advised that
Defendant had discontinued the use of SENIOR SECURITY. (Compl. ¶ 28.) In early 2013,
Plaintiff discovered that Defendant was again making use of SENIOR SECURITY in the
same fashion as before. (Compl. ¶ 29.) Following a series of email messages, Buyze advised
Plaintiff that Defendant would not discontinue use of SENIOR SECURITY. (Compl. ¶ 34.)
II. Conclusions of Law
“Even after default, however, it remains for the court to consider whether the
unchallenged facts constitute a legitimate cause of action, since a party in default does not
admit mere conclusions of law.” 10 Wright & Miller, Federal Practice and Procedure: Civil,
§ 2688. “[B]efore granting a default judgment, the Court must first ascertain whether ‘the
unchallenged facts constitute a legitimate cause of action, since the party in default does not
admit mere conclusions of law.’” Cunningham v. MEC Enter., Inc., No. 10-13409, 2012 WL
1094330, at *3 (E.D. Mich. Mar. 2, 2012) (quoting Chanel v. Gordashevsky, 558 F. Supp.
2d 532, 535-36 (D.N.J. 2008)).
The Sixth Circuit “use[s] the same test to decide whether there has been trademark
infringement, unfair competition, or false designation of origin: the likelihood of confusion

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between the two marks.” Audi AG v. D’Amato, 469 F.3d 534, 542-43 (6th Cir. 2006) (citing
Two Pesos v. Taco Cabana, 505 U.S. 763, 780 (1992)). The following factors should be
considered in determining whether there is a likelihood of confusion: “(1) strength of
plaintiff’s mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of
actual confusion; (5) marketing [] channels used; (6) degree of purchaser care; (7)
defendant’s intent in selecting the mark; and (8) likelihood of expansion in selecting the
mark.” Audi AG, 469 F.3d at 542-43 (citing Wynn Oil Co. v. Thomas, 839 F.2d 1183, 118690 (6th Cir. 1988)). Based on the strength of Plaintiff’s marks, the similarity of the insurance
products offered by Plaintiff and Defendant, the similarity in sound, meaning, and
appearance of Defendant’s use of Plaintiff’s marks, the similarities in customers of the
parties’ respective services, the use of the internet as a marketing tool for Defendant’s
products, and Defendant’s knowledge that it has been using Plaintiff’s marks without
permission, the Court concludes that there is a strong likelihood of confusion, and that
Defendant is liable for trademark infringement, pursuant to 15 U.S.C. § 1114, and unfair
competition, pursuant to 15 U.S.C. § 1125 .
III. Relief Requested
Plaintiff’s complaint seeks injunctive relief and damages in the form of compensatory
damages, treble damages, and attorneys fees. However, Plaintiff’s motion for judgment
requests only injunctive relief. Injunctive relief for trademark infringement is permitted
pursuant to 15 U.S.C. § 1116. However, a permanent injunction may not automatically issue

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upon a finding of trademark infringement; a court must still analyze the traditional factors.
See eBay Inc. v. MercExchange LLC, 547 U.S. 388, 391-92 (2006). “A plaintiff seeking a
permanent injunction must demonstrate that it has suffered irreparable injury, there is no
adequate remedy at law, ‘that, considering the balance of hardships between the plaintiff and
defendant, a remedy in equity is warranted,’ and that it is in the public’s interest to issue the
injunction.” Audi AG, 469 F.3d at 550 (quoting eBay, 547 U.S. at 391).
Defendant’s use of Plaintiff’s marks in connection with the advertising, promotion,
offering for sale, and selling of insurance products and services has caused irreparable injury
to Plaintiff’s business, reputation, and goodwill. There is no adequate remedy at law because
if Defendant is allowed to continue using Plaintiff’s marks there will be potential for future
harm. An injunction is in the public’s interest because it will prevent consumers from being
misled. Last, in balancing the hardships between the parties, the Court agrees with Audi AG
that an infringer “faces no hardship in refraining from willful trademark infringement.” 469
F.3d at 550. While Defendant faces no hardship, Plaintiff faces hardship in the form of loss
of sales and harm to reputation and goodwill. Consequently, the Court finds that injunctive
relief is warranted.
An order consistent with this opinion will be entered.

Dated: August 26, 2013

/s/ Robert Holmes Bell
ROBERT HOLMES BELL
UNITED STATES DISTRICT JUDGE

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