Safeway Transit LLC v. Discount Party Bus, Inc. et al

Filing 129

FINDINGS OF FACT, CONCLUSIONS OF LAW, AND ORDER FOR JUDGMENT. See Order for Specifics. LET JUDGMENT BE ENTERED ACCORDINGLY. (Written Opinion). Signed by Chief Judge John R. Tunheim on 8/13/2018. (JMK)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
SAFEWAY TRANSIT LLC and
ALEKSEY SILENKO,

Civil No. 15-3701 (JRT/HB)

Plaintiffs,
v.
DISCOUNT PARTY BUS, INC., an
inactive Minnesota corporation,
PARTY BUS MN LLC, a Minnesota
limited liability company, and
ADAM FERNANDEZ,

FINDINGS OF FACT,
CONCLUSIONS OF LAW, AND
ORDER FOR JUDGMENT

Defendants.

Michael H. Frasier, RUBRIC LEGAL LLC, 233 Park Avenue South, Suite
205, Minneapolis, MN 55415, for plaintiffs.
Casey A. Kniser and Adam E. Szymanski, PATTERSON THUENTE
CHRISTENSEN PEDERSEN, PA, 80 South Eighth Street, Suite 4800,
Minneapolis, MN 55402, for defendants.

The parties to this case are Twin Cities party bus proprietors. In September 2015,
Plaintiff Safeway Transit LLC (“Safeway”), run by Plaintiff Aleksey Silenko, brought this
trademark action against Defendants Discount Party Bus. Inc., and Party Bus MN LLC
(collectively, “DPB”), owned by Defendant Adam Fernandez.

Plaintiffs accuse

Defendants of infringing the descriptive marks “RentMyPartyBus” and “952 Limo Bus.”
The Court conducted a bench trial on May 14, 2018, and the parties provided final written
submissions on May 30, 2018. Having considered the evidence and arguments of counsel,

the Court now enters the following Findings of Fact, Conclusions of Law, and Order for
Judgment, pursuant to Federal Rule of Civil Procedure 52(a)(1).
FINDINGS OF FACT
1.

The Findings of Fact set forth herein are undisputed or have been proved by

a preponderance of the evidence.
2.

To the extent the Court’s Conclusions of Law include what may be

considered Findings of Fact, they are incorporated herein by reference.
I.

THE PARTIES
3.

Around 2000, Adam Fernandez started Party Bus MN – the first party-bus

company in the Twin Cities region. (Tr. 120:22-24, 174:22-177:2; see Exs. D6-D7.)1 In
2004, he formed Discount Party Bus Co., LLC, and in 2010, he converted it into Discount
Party Bus, Inc. (Tr. 119:22-120:1.) He formed Party Bus MN LLC in 2014. (Tr. 120:22121:1.) Fernandez is the sole owner, officer, and employee of both companies, which
operate as a single entity. (Tr. 119:10-21, 120:2-12.) DPB markets its business at
discountpartybus.com and discountpartybusmn.com. (Tr. 124:11-125:4, 128:16-129:3.)
4.

In September 2008, Aleksey Silenko formed Party Bus MN LLC and

changed its name to Safeway Transit LLC in October 2008. (Tr. 13:22-14:25, 16:13-23;
Exs. P1-P2.) Safeway is a competing party bus company serving the Twin Cities region.

Citations to “Tr.” refer to the transcript of the trial conducted on May 14, 2018. (Tr. of
Trial, May 22, 2018, Docket No. 117.) Citations to “Ex.” refer to trial exhibits. (See Joint Ex.
List, May 11, 2018, Docket No. 113.)
1

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(Tr. 13:22-14:2.) Silenko is and has always been its director of business, responsible for
budgeting, marketing, and operations. (Tr. 13:6-21.) Safeway operates the websites
rentmypartybus.com and 952limobus.com. (Tr. 20:1-12, 38:1-11; Exs. P5, P11.)
II.

DPB’S PRIOR USAGE
5.

DPB used “Party Bus MN” as a business name beginning no later than 2004.

(Tr. 177:5-179:5; Exs. D6-D7.)
6.

DPB used “Party Bus MN,” “Rent My Party Bus,” and “952 Limo Bus” in

print advertising before 2008, including on fliers distributed by Fernandez.2 (Tr. 183:19185:1, 186:9-188:3; Exs. D11-D12.)
7.

DPB did not use “Rent My Party Bus” or “952 Limo Bus” online before

2008.3 (Tr. 139:15-18, 140:20-24.) Nor did DPB prove by a preponderance of the evidence
that it used “Party Bus MN” online before 2008, although it may have. (See Tr. 15:1-16:4,
142:11-146:22; Exs. P35, D13.)
8.

DPB stopped using the three terms no later than 2009 because Safeway began

using them. (Tr. 72:13-22, 139:24-142:10.)

Fernandez testified that DPB used “952 Limo Bus” in print advertising with Twin Cities
Fun, but the 2004 and 2007 receipts in evidence are each for an “Online Listing Insertion Order,”
(Tr. 179:7-185:1, Exs. D1-D4), and the “952 Limo Bus” flier in evidence is undated. (Ex. D12.)
As such, there is no documentary evidence proving that “952 Limo Bus” was used in print
advertising before 2008. Despite this lack of corroboration, the Court credits Fernandez’s
testimony that the “952 Limo Bus” flier was used for print advertising before 2008.
2

3

Although it appears that the 2004 and 2007 Twin Cities Fun receipts were for online
advertising, Fernandez testified that DPB did not use the terms online before 2008.

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III.

SAFEWAY’S USAGE
9.

Safeway used “Rent My Party Bus” in print advertising beginning no later

than 2009, including on fliers distributed by Silenko. (Tr. 22:23-24:1, 28:19-31:7; Ex. P9.)
Safeway used “952 Limo Bus” in print advertising beginning in 2013, including with
Lavender magazine and on business cards distributed by drivers. (Tr. 57:12-59:6, 67:2370:15; Exs. P15, P18.)
10.

Safeway displayed a “Rent My Party Bus” decal on its first bus in 2008. (Tr.

18:13-20; Ex. P3.) Safeway displayed decals with one or more of the terms “Rent My
Party Bus,” “952 Limo Bus,” and “Party Bus MN” on all its buses from 2008 to at least
2015. (Tr. 48:12-51:11, 54:25-56:15, 65:12-67:22; Exs. P10, P14, P17.)
11.

Safeway registered the domain name partybusmn.com in September 2008,

the domain name rentmypartybus.com in October 2008, and the domain name
952limobus.com in May 2011. (Tr. 19:4-20:24, 38:4-21; Exs. P4-5, P11.) Based on
Silenko’s testimony and Internet Archive captures of the websites from the period in
question,4 Safeway operated a website at rentmypartybus.com beginning no later than
2009, operated a website at partybusmn.com that forwarded visitors to the
rentmypartybus.com site beginning no later than 2010, and operated a separate website at
952limobus.com beginning no later than 2013. (See Tr. 19:20-25, 20:18-24, 38:20-24;

4

The Court may take judicial notice of Internet Archive documents. E. Coast Test Prep LLC
v. Allnurses.com, Inc., – F. Supp. 3d –, 2018 WL 614732, at *11 (D. Minn. Jan. 29, 2018) (citing
Marten Transp., Ltd. v. Plattform Advert., Inc., No. 14-2464, 2016 WL 1718862, at *2-4 (D. Kan.
Apr. 29, 2016) (collecting cases)); see Fed. R. Evid. 201(b)(2), 201(c)(1).

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Wayback Machine, http://web.archive.org/web/*/www.partybusmn.com (last visited
August

13,

2018);

Wayback

Machine,

https://web.archive.org/web/*/www.rentmypartybus.com (last visited August 13, 2018);
Wayback

Machine,

https://web.archive.org/web/*

/www.952limobus.com (last visited August 13, 2018).)
12.

Safeway began using the phone number 952-LIMO-BUS to market its “952

Limo Bus” brand beginning in 2011. (Tr. 36:9-37:23.)
13.

Safeway used “Party Bus MN” and “Rent My Party Bus” for online

advertising with Facebook beginning no later than 2011. (Tr. 21:11-22:22, 42:23-47:5;
Exs. P6, P13.) Silenko testified that Safeway used the two terms for online advertising
with Facebook and Google AdWords beginning in 2008 or 2009. (Tr. 25:17-26:7, 41:716.) Silenko further testified that Safeway spent “[m]aybe $10,000 a year” on Google
AdWords in 2011 to promote the terms and that Safeway increased its budget for Google
AdWords each year thereafter. (Tr. 41:7-16, 56:23-57:11.) Although unsupported by
documentary evidence, the Court finds Silenko’s testimony that Safeway advertised with
Google generally credible. However, in light of documentary evidence showing that
Safeway spent less than $10,000 on advertising with Facebook from 2011 to early 2015,
(see Ex. P13), the Court finds Silenko’s testimony that Safeway spent $10,000 per year
advertising with Google not credible.
14.

Safeway used “952 Limo Bus” for online advertising with Facebook

beginning no later than 2013. (Tr. 39:2-21; see Ex. P12.) Silenko testified that Safeway
used the term for online advertising with Facebook and Google AdWords beginning in
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2011. (Tr. 39:2-21.) Although unsupported by documentary evidence, the Court finds this
testimony generally credible given Safeway’s other advertising.
15.

Safeway used “Party Bus MN” and “Rent My Party Bus” for Twitter

accounts beginning no later than 2014. (Tr. 27:1-28:18, Exs. P7, P8.) Safeway did not
prove by a preponderance of the evidence that it used the accounts before 2014.
16.

Safeway used “Rent My Party Bus” for online advertising with third-party

websites, including The Knot and Wedding Wire, beginning no later than 2015. (Tr. 59:762:2; Ex. P16.) Safeway did not prove by a preponderance of the evidence that it used the
terms for online advertising with third-party websites before 2015.
17.

Over time, Safeway’s party-bus business got busy. Its fleet grew from a

single bus to 16 or 18 buses in 2015 – more than any of its Twin Cities competitors. (Tr.
31:21-32:25, 54:1-24, 71:8-24.) Silenko testified that Safeway’s advertising led to steady
growth in the number of people who “Like” and follow its Facebook pages and respond to
its posts. (Tr. 32:15-24, 47:16-48:1, 63:5-8.) Although unsupported by documentary
evidence, the Court finds this testimony generally credible given Safeway’s growth.
IV.

ALLEGED INFRINGEMENT
18.

In 2009, Safeway registered some or all of the domain names

discountpartybus.com, discountpartybuses.com, and discountpartybusesmn.com, and had
registered all three by 2014.

(See Tr. 111:10-15, 147:4-11.)

Silenko used

discountpartybuses.com to advertise Safeway’s services. (Tr. 116:22-117:4.)

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19.

From 2009 to 2014, DPB sent four cease-and-desist letters to Safeway

regarding these three domain names. (Tr. 147:4-11, 193:7-194:14.) In March 2014, DPB
sued Safeway and Silenko in state court. (Tr. 75:23-76:22; Ex. P19.) Neither the ceaseand-desist letters nor the state-court action involved the rentmypartybus.com,
952limobus.com, or partybusmn.com domain names. (Tr. 147:12-148:7.) On April 30,
2014, the parties settled: Safeway would transfer the DPB-related domain names in
exchange for a release of liability. (Tr. 76:23-77:23, 149:11-150:11; Ex. P20.)
20.

The next day – instructed by counsel – Fernandez formed Party Bus MN

LLC, which in turn filed assumed name certificates for the names “Rent My Party Bus”
and “952 Limo Bus.” (Tr. 194:15-195:3, Exs. P23-P25, D10.)
21.

In November 2014, Fernandez – through Party Bus MN LLC – filed for two

Minnesota trademarks. (See Tr. 194:15-195:3.) First, he filed for the mark “952 Limo
Bus,” stating that the business first used the mark in 2006 and submitting for support
Safeway’s “952 Limo Bus” logo. (Tr. 83:25-85:12, 141:10-19; Ex. P28.) Second, he filed
for the mark “PartyBusMN,” stating that the business first used the mark in 2002 and
submitting for support a copy of the DPB website with a “Party Bus MN” logo apparently
superimposed over the top. (Tr. 142:11-146:22; see Exs. D8-D9, D13.) The two state
registrations were cancelled in May 2016. (See Tr. 3:24-4:1.)
22.

Contemporaneously, counsel for Fernandez’s Party Bus MN LLC filed for

two federal trademarks. (See Tr. 195:11-14.) First, counsel filed for the mark “Rent My
Party Bus,” stating that the business had used the mark since at least 2002 and submitting
for support a specimen purportedly from DPB’s website that was really from Safeway’s.
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(Ex. P26.) Counsel subsequently filed an application for correction. (See Tr. 3:17-23; Ex.
D11.) Second, counsel filed for the mark “952 Limo Bus,” asserting an intent to use and
later, by amendment, asserting use since at least 2004. (Ex. P27.) The two federal
registrations were also cancelled in May 2016. (Tr. 3:7-16.) Fernandez testified that he
did not register the marks to use them, but merely to stop Safeway from using them. (Tr.
194:18-195:3, 201:15-21.)
23.

In May 2015, DPB hired a company named Internet Local Listings (“ILL”)

to improve its web presence. (Tr. 135:19-137:17, 197:22-200:5; Ex. P32.) ILL used ten
keywords – including “952 Limo Bus” and “Rent My Party Bus” – for search engine
optimization on Google Places. (Ex. P32 at 1-2, 13.) As a result, DPB launched a website
at discountpartybussaintpaulmn.com that displayed the terms “952 Limo Bus” and “Rent
My Party Bus” in multiple locations, including in page URLs, text, and hyperlinks. (Tr.
86:8-91:9; Ex. P29.) DPB also used the terms as hashtags in social media postings on both
Facebook and Twitter. (Tr. 91:10-100:23; Exs. P30-P31.) Because Fernandez signed the
contract with ILL, the Court finds that Fernandez and DPB intended to bolster DPB’s
placement in search results when users searched for the terms at issue, notwithstanding
Fernandez’s testimony that he did not read the contract, did not provide the keywords, and
did not review the keywords. (Tr. 202:18-207:15.)
24.

In August 2015, Fernandez filed complaints with ICANN – the organization

responsible for managing domain names – alleging that he was the rightful owner of
952limobus.com and rentmypartybus.com and requesting that the domains be transferred
to him. (Tr. 77:24-85:24, 151:1-152:15; Exs. P21-P22.)
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V.

PROCEDURAL BACKGROUND
25.

On September 21, 2015, Safeway Transit and Aleksey Silenko brought this

action against DPB and Fernandez, alleging Fraudulent Federal Registration, 15 U.S.C. §
1120 (Count 1); Cancellation or Assignment of Federal Registration, 15 U.S.C. § 1119
(Count 2); Federal Trademark Infringement, 15 U.S.C. § 1125(a) (Count 3); Cancellation
of State Registration, Minn. Stat. § 333.25 (Count 4); Fraudulent State Registration, Minn.
Stat. § 333.27 (Count 5); and Deceptive Trade Practices, Minn. Stat. § 325D.44 (Count 6).
(Am. Compl. ¶¶ 54-82, Sep. 21, 2015, Docket No. 3.) A month later, Safeway added a
claim for Reverse Domain Hijacking, 15 U.S.C. § 1114(2)(D)(v) (Count 7). (2d Am.
Compl. ¶¶ 89-92, Oct. 15, 2015, Docket No. 8.)
26.

DPB and Fernandez filed their Answer on November 5, bringing a single

counterclaim for Deceptive Trade Practices, Minn. Stat. § 325D.44, based on the theory
that Safeway had been systematically passing off its own buses as DPB’s. (Answer, Nov.
5, 2015, Docket No. 9.) Safeway moved to dismiss the counterclaim, arguing that it lacked
particularity and that DPB relied on claims released in the state-court settlement. (Mem.
Supp. Mot. to Dismiss, Dec. 4, 2015, Docket No. 19.) DPB filed an amended counterclaim.
(Am. Answer, Jan. 8, 2016, Docket No. 28.) Safeway filed another motion to dismiss.
(Mem. Supp. 2d Mot. to Dismiss, Feb. 3, 2016, Docket No. 36.) DPB subsequently filed
for voluntary dismissal, and the counterclaim was dismissed without prejudice. (See
Dismissal Order, May 25, 2016, Docket No. 51.)
27.

Safeway moved for summary judgment on its claims for federal trademark

infringement and reverse domain hijacking (Counts 3 and 7). (See Mot. for Partial Summ.
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J., Nov. 14, 2016, Docket No. 79.) The Magistrate Judge held a hearing, (Minute Entry,
Feb. 13, 2017, Docket No. 91), and issued a Report and Recommendation (“R&R”) that
Safeway’s motion be denied because a material dispute of fact remained as to whether
Safeway had established secondary meaning in the terms, (R&R, July 31, 2017, Docket
No. 93). Over Safeway’s objections, the Court adopted the R&R and denied Safeway’s
motion for summary judgment. (Mem. Op. & Order, Sept. 28, 2017, Docket No. 97.)
28.

Soon thereafter, the parties reached partial settlement, (Minute Entry, Nov.

3, 2017, Docket No. 100), and jointly requested a bench trial on the remaining issues.
(Letter to District Judge, Nov. 27, 2017, Docket No. 101.) The agreement was for Safeway
to dismiss its claims related to registration of the trademarks and domain names in
exchange for DPB withdrawing the registrations. (Stipulation, June 6, 2018, Docket No.
125.) Safeway’s remaining claims for federal trademark infringement (Count 3) and state
deceptive trade practices (Count 6) were tried to the Court on May 14, 2018. (Minute
Entry, May 14, 2018, Docket No. 114.)
CONCLUSIONS OF LAW
Safeway alleges that DPB infringed two unregistered descriptive trademarks –
“Rent My Party Bus” and “952 Limo Bus”5 – in violation of the Lanham Act, 15 U.S.C.
§ 1125(a), and the Minnesota Deceptive Trade Practices Act, Minn. Stat. § 333.25D.44,

Although the Complaint also alleges infringement of Safeway’s rights in the mark “Party
Bus MN,” Safeway did not advance this claim at trial.
5

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and requests a permanent injunction, disgorgement of profits, and attorney fees. The Court
will find that DPB did infringe the marks but will grant only an injunction as relief.
I.

TRADEMARK INFRINGEMENT
“A claim of trademark infringement under the Lanham Act requires ownership of a

valid trademark and a likelihood of confusion between the registered mark and the alleged
infringing use by the defendant.” Plasti Dip Int’l Inc. v. Rust-Oleum Brands Co., No. 141831, 2014 WL 7183789, at *2 (D. Minn. Dec. 16, 2014) (citing 15 U.S.C. § 1125(a)). In
the context of trademark infringement, Safeway’s state-law claim is coextensive with its
federal claim. DaimlerChrysler AG v. Bloom, 315 F.3d 932, 935-36 & n.3 (8th Cir. 2003)
(collecting cases).
A.

Validity

To enforce a claim for infringement, a party claiming ownership of an unregistered
descriptive mark6 must show that the mark acquired secondary meaning before the alleged
infringement occurred. Co-Rect Prods., Inc. v. Marvy! Advertising Photography, Inc., 780
F.2d 1324, 1330 (8th Cir. 1985). “Secondary meaning is an association formed in the minds
of the consumers between the mark and the source or origin of the product.” Id. The party
claiming ownership “must show that by long and exclusive use in the sale of the user’s
goods, the mark has become so associated in the public mind with such goods that the mark
serves to identify the source of the goods and to distinguish them from those of others.”

6

The parties agree that the marks at issue are descriptive.

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Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 870 (8th Cir. 1994). The user “need not
show that consumers know their name,” but does need to show “that consumers associate
the [mark] with a single source,” even if the source is anonymous. Stuart Hall Co. v.
Ampad Corp., 51 F.3d 780, 789 (8th Cir. 1995).
1.

Abandonment

As an initial matter, the Court must determine whether DPB is the senior user of the
marks. See Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907, 909 (2015) (“Rights in a
trademark are determined by the date of the mark’s first use in commerce.”). DPB used
the marks first and continued to use them at least intermittently until 2009. As such,
Safeway could not have begun to establish secondary meaning in the marks until 2009.
But the limited evidence of DPB’s use of the “952 Limo Bus” and “Rent My Party Bus”
terms on fliers falls short of what is required to show that DPB established its own
secondary meaning in the terms, particularly because they were not used as source
identifiers but merely as slogans in a broader advertising campaign.
Moreover, under the Lanham Act, a registered mark is deemed abandoned “[w]hen
its use has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127.
“Intent not to resume may be inferred from circumstances.” Id.; see Hiland Potato Chip
Co. v. Culbro Snack Foods, Inc., 720 F.2d 981, 983-84 (8th Cir. 1983). It is easy to draw
such an inference here: Fernandez testified that DPB ceased use of the three terms in 2009
because Safeway began to use them and that he had no intent to resume use even when he
registered them as marks in 2014. Therefore, the Court finds that DPB was not the senior

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user of the marks during the alleged infringement period because it abandoned any rights
it may have had in the three terms as marks no later than 2009.
2.

Secondary Meaning

To determine whether a mark has acquired secondary meaning, courts examine
evidence including “consumer surveys, deliberate copying of the mark, advertising
featuring the [mark] at issue, expenditure on such advertising, and anecdotal evidence
showing consumer identification of the [mark] with its source.” Stuart Hall, 51 F.3d at
789. Additionally, “[l]ength and exclusivity of continuous use is a factor bearing on
secondary meaning.” Id. at 789-90. Because five years of “substantially exclusive and
continuous use” is prima facie evidence of secondary meaning for registration under the
Lanham Act, 15 U.S.C. § 1052(f), such use is likewise “a strong factor in favor of
secondary meaning” underlying an infringement determination. Stuart Hall, 51 F.3d at
789 (applying Two Pesos Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)).
DPB makes much of the fact that there is no direct evidence of secondary meaning,
such as expert or consumer testimony or consumer surveys, in the record. But the absence
of direct evidence is not determinative. “[I]n the absence of direct proof, the court must
draw reasonable inferences from the evidence of money spent in advertising to establish
that the mark is from a particular source, of the type of advertising used, of long-term usage
of the mark, and of sales volume.” Heartland Bank v. Heartland Home Fin., Inc., 335 F.3d
810, 820 (8th Cir. 2003) (noting that there is often no direct proof).

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Safeway began its continuous use of “Rent My Party Bus” in 2008 and of “952
Limo Bus” in 2011. Because of DPB’s abandonment, Safeway’s use of the terms was
substantially exclusive from those years through the period of alleged infringement. This
continuous and substantially exclusive use – six to seven years for “Rent My Party Bus”
and three to four years for “952 Limo Bus” – cuts strongly in Safeway’s favor.
Moreover, Safeway submitted significant evidence of its use of the terms in
advertising. Safeway distributed thousands of printed fliers from 2009 onward and spent
thousands of dollars on advertising with Google, Facebook, third-party wedding websites,
and print media from 2011 onward. To show secondary meaning, “advertising must cause
the public to equate the mark with the source of the product,” and “[m]ore is needed to
establish the necessary consumer association than merely the self-serving testimony of the
plaintiff.” Co-Rect, 780 F.2d at 1332-33. But here – unlike in Co-Rect – the terms at issue
were not used merely as advertising slogans, but as business names. Safeway put the terms
on its buses and used them in its domain names. These factors, combined with Safeway’s
advertising expenditures, Silenko’s uncontroverted testimony about growing consumer
engagement on Facebook and Twitter, and the exponential growth of Safeway’s bus fleet,
are sufficient to draw the inference that consumers associated the marks with Safeway.
Less convincingly, Safeway argues that DPB intentionally copied the terms. This
factor ordinarily cuts strongly in favor of the party claiming ownership of a mark, but the
impact is blunted here by evidence that Safeway took the terms from DPB in the first
instance.

DPB’s abandonment made it possible for Safeway to establish secondary

meaning in the terms, but the Court cannot countenance an argument that DPB’s attempt
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to reclaim the terms is proof that Safeway actually did so. Compare Comment, Lost,
Mislaid, and Abandoned Property, 8 Fordham L. Rev. 222 (1939) (tracing the Roman legal
roots of the “finder’s keepers” doctrine), with Leo Rosten, The Joys of Yiddish 81 (1968)
(defining chutzpah as “that quality enshrined in a man who, having killed his mother and
father, throws himself on the mercy of the court because he is an orphan”).
The Court declined to grant summary judgment for Safeway because the existence
of secondary meaning is a question ill-suited for summary judgment, see First Bank v. First
Bank Sys., Inc., 84 F.3d 1040, 1046 (8th Cir 1996), and because Safeway provided few
specifics to support its argument that consumers identified the marks with Safeway. The
Court now finds that Safeway provided enough additional evidence at trial to prove by a
preponderance of the evidence that the “Rent My Party Bus” and “952 Limo Bus” marks
acquired secondary meaning as a source identifier for Safeway’s party bus services before
the alleged infringement period.
B.

Infringement

To show infringement, Safeway must prove that DPB (1) used the marks in
commerce (2) in a way likely to cause confusion. 15 U.S.C. § 1125(a).
1.

Use in Commerce

In May 2015, DPB (through its contract with Internet Local Listings) launched a
website at discountpartybussaintpaulmn.com that displayed the terms “952 Limo Bus” and
“Rent My Party Bus.” DPB also used the terms in related social media postings on
Facebook and Twitter. DPB half-heartedly contends that these uses were minor because

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they were not on DPB’s main website, but the extent of the use is irrelevant to whether the
use was in commerce. Moreover, the website and social media postings were the product
of DPB’s contract with ILL for marketing DPB’s website using the marks. The Court finds
that DPB used the marks in commerce.
2.

Likelihood of Confusion

In determining whether a likelihood of confusion exists, the court must consider the
following factors: (1) the strength of the trademark owner’s mark; (2) the similarity
between the trademark owner’s mark and the alleged infringing mark; (3) the degree to
which the allegedly infringing services competes with the trademark owner’s services; (4)
the alleged infringer’s intent to confuse the public; (5) the degree of care reasonably
expected of potential customers; and (6) evidence of actual confusion.” Cmty. of Christ
Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s Church, 634 F.3d
1005, 1009 (8th Cir. 2011) (citing SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.
1980)). “[N]o one factor controls, and because the inquiry is inherently case-specific,
different factors may be entitled to more weight in different cases.” Id. (quoting Kemp v.
Bumble Bee Seafoods, Inc., 398 F.3d 1049, 1053 (8th Cir. 2005)).
As an initial matter, Safeway maintains its contention that DPB conceded that a
likelihood of confusion exists through its admission that “concurrent use of the mark[s]
by” both parties “is likely to cause confusion or mistake as to the origin, sponsorship, or
approval of the parties’ services.” (Ex. P33 at 1.) But as both the Magistrate Judge and
the Court endeavored to explain at summary judgment, this admission must be understood

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in the context of DPB’s legal position that it and not Safeway was the senior user of the
terms at issue and that consumers associated the terms with DPB’s services rather than
Safeway’s. (R&R at 28-29; Mem. Op. & Order at 7-8.) The fact that the Court now rejects
DPB’s position on ownership of the marks does not strip away the context of its previous
admission. As such, the Court proceeds with the usual analysis.
The first five SquirtCo factors favor Safeway. First, although the marks are merely
descriptive, the evidence supporting the Court’s finding of secondary meaning also serves
to prove that the marks are moderately strong within the Twin Cities. Second, the marks
are identical. Third, the companies are direct competitors in the Twin Cities. Fourth, even
though DPB used the terms first, the fact that Fernandez knew that Safeway’s use of the
terms was continuous and substantially exclusive suggests that he intended to confuse the
public. Fifth, reasonable consumers cannot be expected to exercise a high degree of care
in selecting party bus services over the internet. Only the sixth factor favors DPB: there
is no evidence of actual confusion, and DPB’s limited use of the marks nearby the term
“Discount Party Bus” suggests that customer confusion, while likely, was nonetheless
probably minimal. Nonetheless, considering all six SquirtCo factors, the Court finds that
that DPB’s use was likely to cause confusion.
C.

Personal Liability

“A corporate officer is personally liable for the corporation’s trademark
infringement if the officer participates in that infringement.” Microsoft Corp. v. Ion Techs.
Corp., No. 01-1769, 2003 WL 21356084, at *5 (D. Minn. May 30, 2003). Fernandez is

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and has always been the sole owner, manager, and employee of DPB, and he signed the
contract with ILL that led to the infringing content. Thus, the Court finds that he is
personally liable for DPB’s infringement.
II.

REMEDY
“[A]n injunction is the preferred Lanham Act remedy.” Minn. Pet Breeders, Inc. v.

Schell & Kampeter, Inc., 41 F.3d 1242, 1247 (8th Cir. 1994); see generally McCarthy on
Trademarks § 30:1. Under the Lanham Act, plaintiffs are also entitled, “subject to the
principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the
plaintiff, and (3) the costs of the action.” 15 U.S.C. § 1117(a). Finally, “[t]he court in
exceptional cases may award reasonable attorney fees to the prevailing party.” Id.
A.

Injunction

Safeway seeks a permanent injunction barring DPB from using the two marks at
issue. To obtain a permanent injunction, a plaintiff must show: “(1) its actual success on
the merits; (2) that it faces irreparable harm; (3) that the harm to it outweighs any possible
harm to others; and (4) that an injunction serves the public interest.” Cmty. of Christ
Copyright Corp., 634 F.3d at 1012. First, Safeway succeeded on the merits. Second,
Safeway has shown irreparable harm because, in trademark law, “injury is presumed once
a likelihood of confusion has been established.” Id. Third, because DPB never used the
terms as its brand identity, abandoned them in 2009, and had no intent to resume use in
commerce even when it registered the terms as marks in 2014, an injunction would not

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harm DPB. Finally, the public has an interest in enforcement of valid trademarks. As such,
the Court will grant Safeway’s request for a permanent injunction.
B.

Damages

Safeway also seeks an accounting of DPB’s profits from the period of infringement.
“[B]ecause the [Lanham] Act is grounded in equity and bars punitive remedies, ‘an
accounting will be denied in a trademark infringement action where an injunction will
satisfy the equities of the case.’” Minn. Pet Breeders, 41 F.3d at 1247 (8th Cir. 1994)
(quoting Sweetarts v. Sunline, Inc., 436 F.2d 705, 711-12 (8th Cir. 1971)).
In cases of deliberate infringement, “an accounting of profits may be based upon 1)
unjust enrichment, 2) damages, or 3) deterrence of a willful infringer.” Id. (quoting Banff,
Ltd. v. Colberts, Inc., 996 F.2d 33, 35 (2d Cir. 1993)). Although proof of actual confusion
is not always required, see Masters v. UHS of Del., Inc., 631 F.3d 464, 474 (8th Cir. 2011),
the Court’s finding here – that confusion, while likely, was nonetheless probably minimal
– strongly suggests there was no unjust enrichment or damages, and Safeway advances no
evidence or argument to the contrary. Thus, the only justification for an accounting is
deterrence of a willful infringer.
Setting aside the question whether DPB’s infringement was willful,7 there is no
evidence suggesting that an injunction prohibiting use of the marks is insufficient to satisfy

7

The Eighth Circuit has acknowledged a circuit split over whether willful infringement is
a prerequisite for monetary relief given a 1999 amendment to the Lanham Act, assuming without
deciding that it is. Masters, 631 F.3d at 471 n.2 (8th Cir. 2011). Because the Court will find that
DPB does not need to be deterred, it also avoids reaching that issue.

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the equities. To the contrary, the record – including Fernandez’s testimony that his goal in
registering the marks was to thwart Safeway from using them – suggests that Fernandez
either genuinely thought the marks were his or simply sought to get even for Safeway’s
use of the DPB-related domains. Although the Court obviously cannot and does not
condone such retaliation, it nonetheless concludes that an injunction is sufficient to deter
DPB from future infringement of Safeway’s marks.8
C.

Attorney Fees

Finally, Safeway seeks an attorney fee award. “The court in exceptional cases may
award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). Courts often
apply the standard set out by the Supreme Court for the Patent Act, which contains the
same provision. “[A]n ‘exceptional’ case is simply one that stands out from others with
respect to the substantive strength of a party’s litigating position (considering both the
governing law and the facts of the case) or the unreasonable manner in which the case was
litigated.” Mountain Mktg. Grp., LLC v. Heimerl & Lammers, LLC, No. 14-846, 2016 WL
2901735, at *3 (D. Minn. May 18, 2016) (alteration in original) (quoting Octane Fitness,
LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014)); cf. Cmty. of Christ,
634 F.3d at 1013 (discussing the Eighth Circuit’s pre-Octane Fitness standard). Factors
include “frivolousness, motivation, objective unreasonableness (both in the factual and

Moreover, even if an accounting was justified here, Safeway’s request for disgorgement
of all DPB’s profits from the period of infringement is overbroad given the statute’s command that
damages “shall constitute compensation and not a penalty.” 15 U.S.C. § 1117(a).
8

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legal components of the case) and the need in particular circumstances to advance
considerations of compensation and deterrence.” Octane Fitness, 134 S. Ct. at 1756 n.6
(quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)).
On one hand, the Court cannot condone DPB’s vigilante attempt to wrest control of
the marks from Safeway.

On the other, the Court cannot conclude that Fernandez

deliberately acted unlawfully given the Court’s factual finding that DPB used the terms
first. Fernandez testified that it was his understanding that he was entitled to resume use
of the marks. Even if that conclusion was not the result of sound legal advice, the Court
finds it a plausible explanation of the infringement.

Moreover, the totality of the

circumstances surrounding this case shows that Safeway is not an innocent actor. Because
this inquiry is equitable by nature, Safeway’s own bad acts may not pass without comment.
For all these reasons, the Court declines to find this case exceptional and will deny
Safeway’s request for an award of attorney fees.
ORDER
Based on the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1.

Defendants’ oral motion for judgment on partial findings pursuant to Federal

Rule of Civil Procedure 52(c) is DENIED.
2.

Judgment shall be entered in favor of Plaintiffs and against Defendants on

Plaintiffs’ remaining claims (Counts 3 and 6).

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3.

Plaintiffs’ request for a permanent injunction is GRANTED. Defendants

Discount Party Bus, Inc., Party Bus MN LLC, and Adam Fernandez, and all other persons
who are in active concert or participation with Defendants Discount Party Bus, Inc., Party
Bus MN LLC, and Adam Fernandez are hereby PERMANENTLY ENJOINED from
using or contributing to the use of the “Rent My Party Bus” and “952 Limo Bus”
trademarks or related domain names, keywords, or hashtags in connection with the
advertisement, marketing, or sale of transportation services.
4.

Plaintiffs’ request for an accounting of profits is DENIED.

5.

Plaintiffs’ request for attorney fees is DENIED.

LET JUDGMENT BE ENTERED ACCORDINGLY.

DATED: August 13, 2018
at Minneapolis, Minnesota.

_______s/John R. Tunheim_______
JOHN R. TUNHEIM
Chief Judge
United States District Court

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