RE/MAX, LLC v. M.L. Jones & Associates, Ltd et al

Filing 76

ORDER GRANTING IN PART AND DENYING IN PART 59 Motion for Partial Summary Judgment and DENYING 61 Motion for Partial Summary Judgment: The Court GRANTS in part and DENIES in part Remax's motion for partial summary judgment on defendants 9; first two counterclaims 59 . The '048 trademark is an invalid mark under 15 U.S.C. § 1052(b). The court DENIES Remax's motion for partial summary judgment on defendants' third counterclaim and Remax's four claims 61 . Finally, the court orders the parties to participate in a court-hosted mediation with US Magistrate Judge Robert B. Jones, Jr. Signed by Chief Judge James C. Dever III on 12/29/14. Counsel is reminded to read the order in its entirety for critical deadlines and information. (O'Brien, C.)

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTI-1 CAROLINA
WESTERN DIVISION
No. 5:12-CV-768-D

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RFJMAXLLC,
Plain~

v.
M.L. JONES & ASSOCIATES, LTD.,
and MATTHEW L. JONES,
Defendants.

ORDER

On November 26, 2012 , Re/Max (''Remax"), a real estate brokerage firm, sued M .L. Jones

& Associates and Matthew Jones d/b/a FavoriteAgent.com ("defendants'') alleging: (1) trademark
infringement under federal law; (2) unfuir competition under federal law; (3) unfuir and deceptive
trade practices under North Carolina law; and (4) trademark infringement and unfuir competition
under North Carolina law. Compl [D.E. 1]

~~

filed six counterclaims. Countercl [D.E. 22]

23-41. On June 13, 2013, defendants answered and
~

55-71. On August 29, 2013 , the court granted in

part Remax's motion to dismiss defendants' counterclaims and dismissed three counterclaims. See
Order [D.E. 26]. Three counterclaims remain: (1) a request fur declaratory judgment that Remax' s
trademarks are invalid; (2) cancellation of Remax's trademarks; and (3) a request fur declaratory
judgment that defendants did not infringe Remax's trademarks. See id. 3-4, 7.
Remax filed two motions for summary judgment [D.E. 59, 61] and supporting memoranda
[D.E. 60, 62] concerning its claims and defendants' remaining counterclaims. Defendants responded
[D.E. 69, 70], and Remax replied [D.E. 71, 72]. As explained below, the court grants in part and
denies in part Remax's motion for partial summary judgment on defendants' first two counterclaims
and denies Remax's motion for partial summary judgment on defendants' third counterclaim and
Remax' s claims.

I.

Remax is a real estate brokerage finn that provides services through franchisees and affiliated
independent contractors. Three Remax trademarks are central to this case. On June 9, 1992, Remax
registered the first trademark, number 1,691,854 (''the ' 854 trademark''). Walsworth Decl [D.E. 601] 4. The '854 trademark consists ofa dark-over-light-over-dark background with a black-and-white
hot air balloon

See id.

On July 21, 1992, Remax registered the second trademark, number

1, 702,048 (''the '048 trademark''). Walsworth Decl 6. The '048 trademark consists of a red-overwhite-over-blue design. See id. On September 29, 1992, Remax registered the third trademark,
number 1,720,592 ("the '592 trademark''). See [D.E. 1- 1] 3; United States Patent and Trademark
Office, http://tmsearch. uspto.gov /binlshowfield?f=doc&state=4809:20nuq.2.9 (last visited Dec. 29,
2014). The '592 trademark consists of a red-over-white-over-blue design with a red-white-and-blue
hot air balloon See id. The three trademarks are shown below:

The'854 Trademark

The '048 Trademark

The '592 Trademark

Defendants began as a real estate company and then gradually migrated to software licensing

2

for real estate agents. See Walsworth Decl 25, 28-29, 32 (Jones deposition). Jones approved a
FavoriteAgent.com logo that incorporates a red-over-white-over-blue design, as seen below, and
distnbuted it to defendants' independent contractors for use in their real estate practices. Id. 30-32
(Jones deposition).

In late 2012, a Remax agent discovered and photographed a FavoriteAgent.com yard sign and

notified Remax's assistant general counsel

Scoville Decl [D.E. 60-2] 3 .

Remax contacted

defendants and objected to defendants' use of the yard signs with a red-over-white-over-blue design.
Walsworth Decl 36-37 (Jones deposition).

Jones offered to change the sign in exchange for

$50,000. Id. 38 (Jones deposition). After the parties failed to compromise, Remax filed suit.

II.
Remax' s fuur claims and defendants' three remaining cmmterclaims fit within two general
categories.

Defendants' first two cotn1terclaims concern the validity of Remax's trademarks.

Remax's four claims and defendants' third cotn1terclaim concern the potential infringement of
Remax' s trademarks by defendants.
A.
In defendants' first cotn1terclaim they seek a declaratory judgment that the '048 trademark

and the '854 trademark are "incapable of :fi.mctioning as a trademark" because they allegedly
resemble the national flag of the Netherlands.

Cotn1tercl

3

~~

55-59.

In

defendants' second

comterclaim they ask the cotnt to cancel the '048 trademark and '854 trademark pmsuant to 15
U.S.C. § 1119. Comtercl

mf 60-61.

Both counterclaims rely on an alleged violation of 15 U.S.C.

§ 1052(b), which prolnbits the registration of a trademark that "consists of or comprises the flag .
. . of any fureign nation, or any simulation thereof" A cotnt may cancel a registration of a trademark
that was registered in violation of section 1052(b) . See 15 U.S.C. §§ 1064(3), 1119. A registered
trademark is prestnned valid, 15 U.S.C. § 1057(b), and a party seeking cancellation must rebut this
presumption by a preponderance ofthe evidence.

See,~

Retail Servs. Inc. v. Freebies Publ'g, 364

F.3d 535, 542 (4th Cir. 2004); Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 , 1529 n.4 (4th Cir.
1984).
In determining whether a trademark simulates a flag, a court considers the trademark and the
flag in a comparison "of first impression . . . without a careful analysis and side-by-side
comparison." Inre Advance Indus. Sec., Inc. , 194 U.S.P.Q. 344, 1977 WL 22511 , at *2 (T.T.A.B.
1977); see In re PeterS. Herrick, P.A., 91 U.S.P.Q.2d, 2009 WL 1741898, at *5 (T.T.A.B. 2009);
Knorr-Nahrmittel Aktiengesellschaft v. Havland lnt'l Inc., 206 U.S.P.Q . 827, 1980 WL 30123, at
*7 (T.T.A.B. 1980); In re Waltham Watch Co. , 179 U.S.P.Q. 59, 1973 WL 19968, at *2 (T.T.A.B.
1973). The simulation inquiry fucuses on whether the average pmchaser or person would associate
the trademark with the flag. See Knorr-NahmitteL 1980 WL 30123, at *6 (stating that the relevant
fuctor is "the commercial reaction that [the trademark] imports to viewers''); In re Advance Indus.
Sec., 1977 WL 22511 , at * 2 (finding a seal was registrable because it was unlikely that ''the average
pmchaser upon seeing applicant's overall mark would associate the eagle and shield design in the
context with which it is used with the Coat of Arms ofthe United States') ; In re Waltham, 1973 WL
19968, at *2 (finding that the applicant' s use of"common elements of flag designs such as horizontal
or vertical lines, crosses or stars" did not constitute a simulation of any nation's flag because the
trademark was "readily distinguishable from any of the flags of the nations alluded to by the
examiner'). A cotnt also must consider the "fullibility of memory" when determining whether the

4

average person could, without a careful analysis, associate the trademark with a nation's flag. In re
Advance Indus. Sec., 1977 WL22511, at *2.
As for the '854 trademark, it bears no resemblance to the Netherlands's flag other than its
use of three horizontal bands. The '854 trademark is black-and-white and includes a hot air balloon
rrnage.

See U.S. Dep't Of Commerce, Patent and Trademark Office, Trademark Manual of

Examining Procedure (''TMEP") § 1204.01(b) (October 2014) (noting that a mark is registrable if
it "appears in a color di:ffurent from that normally used in the national flag'' or "is substantially
obscured by ... designs'); TMEP §1204.01(a) (noting that "a black-and-white drawing showing
three horizontal rectangles would not be refused" as a fureign flag).

Furthermore, no evidence

suggests that consmners would, as a first impression, associate the ' 854 trademark with the
Netherlands's flag. Thus, the court rejects defendants' argument that the '854 trademark simulates
the Netherlands's flag and therefure violates 15 U.S.C. § 1052(b).
As for the '048 trademark, the simulation analysis does not apply because the '048 trademark
is not a simulation See In re Certa ProPainters, Ltd., 2008 WL 5009753 (T.T.A.B. Nov. 14, 2008)
(tmpublished) (noting that the simulation analysis applies when the ''mark does not include the
entirety ofthe actual ... flag'); cf In re PeterS. Herrick, 2009 WL 1741898, at *4-5 (applying the
simulation analysis to an alleged simulation involving a flag); Knorr-N ahmittel 1980 WL 30 123 ,
at *6-7 (same); In re Advance Indus. Sec., 1977 WL 22511, at *2 (same); Inre Waltham, 1973 WL
19968, at *2 (same). Rather, as shown below, the '048 trademark consists of the Netherlands's flag.
See Inre PeterS. Herrick, 2009 WL 1741898, at *5 (quotinglnre Advance Indus. Sec., 1977 WL
22511, at * 1, for the proposition that a simulation "gives the appearance or effect or has the
characteristics of the original item'). 1 As a depiction of the Netherlands's flag, the '048 trademark
is ''barred from registration under [section 1052(b)]." Natural Footwear Ltd. v. Hart Schaffner &

1

Although the trademark carries a presumption of validity, defendants' burden to overcome
this presumption is one of production, not persuasion See Retail Servs. Inc., 364 F.3d at 542. They
have met this burden of production by citing the Netherlands' s flag.
5

Marx & Roots, Inc., 577 F . Supp. 128, 131 (D.N.J. 1983). Thus, Remax' s evidence of lack of
association between the '048 trademark and the Netherlands's flag by consmners, which itself sutlers
from at least one serious flaw, is insufficient to save the '048 trademark from a clear statutory bar
to any trademark that "consists of or comprises the flag ... of any foreign nation ',z As one treatise
explains:
Section 2(b )'s absolute bar is apparently fuunded upon the thinking that these kinds
of governmental insignia, such as a national flag or sea~ should not be registered as
symbols of origin fur connnercial goods and services. That is, these kinds of
governmental insignia ought to be kept solely to signify the government and not be
sullied or debased by use as symbols ofbusiness and trade.

J. Thomas McCarthy, McCarthy on Trademarks and Unfuir Competition § 19:78 (4th ed. 2014)
(emphasis added).

The '048 Trademark

The Netherlands's Flag

See The Netherlands, Flags of the World, http ://www.crwflags.cornlfutw/flags/nl.html (last visited
Dec. 29, 2014) (referenced in TMEP § 1204.05). Accordingly, pursuant to 15 U.S.C. § 1119, the
court orders the cancellation of the '048 trademark because it was improperly registered in violation

2

Remax's expert witness, Dr. Peterson, conducted a national survey in which he asked
participants whether the '048 trademark reminded them of anything else. See Peterson Decl [D.E.
60-4] 2. Although the survey results indicated that no statistically significant number of participants
associated the '048 trademark with the Netherlands's flag, id. 3-4, the survey suffers from at least
one significant flaw in that the participants were shown the '048 design on a yard sign and not on
a plain background. Thus, the context of the survey may have biased the results against an
association with the Netherlands 's flag. See [D.E. 60-5] 20-21. Additionally, the survey mils to
account fur the participants' ability or inability to identify any flags of any European countries.
6

of15 U.S.C. § 1052(b).
In sum, the comt grants in part and denies in part Remax' s rrntion for partial stnnmary
judgment on defendants' first two counterclairm. The '854 trademark is not a simulation of the
Netherlands's flag and is valid .

The '048 trademark consists of the Netherlands's flag and is

canceled pursuant to 15 U.S.C. § 1119.

B.
In defendants' third counterclaim they seek a declaratory judgment that defendants' use of

its red-over-white-over-blue yard sign does not infringe Remax's trademarks. Countercl

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62-63 .

In Remax's four claims, Remax asserts that defendants have (1) infringed its trademarks; (2) engaged

in unfuir competition in violation of 15 U.S.C . § 1125(a); (3) violated the North Carolina Unfuir &
Deceptive Trade Practices Act ('VDTPA'); and (4) violated the North Carolina comrrnn law of
trademark infringement and unfuir competition Compl

~

23-41.

To establish trademark infringement under federal law, Remax must prove that (1) it owns
a valid mark; (2) defendants used the mark in commerce and without Remax's authorization; (3)
defendants used the mark, or an imitation of it, in connection with the sale of goods and services;
and (4) defendants' use of the mark is likely to confuse customers. Rosetta Stone Ltd. v. Go ogle,
Inc., 676 F.3d 144, 152 (4th Cir. 2012) (quotation omitted); see 15 U.S.C. § 1114(1)(a); George &
Co. LLC v. Imagination Entrn't Ltd., 575 F.3d 383, 393 (4th Cir. 2009); Louis Vuitton Malletier
S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 259 (4th Cir. 2007); People for Ethical Treatment
of Animals v. Dougbney, 263 F .3d 359, 364 (4th Cir. 2001). 'The North Carolina comrrnn law of
unfuir competition in the context of trademarks . . . is similar to the federal law of trademark
infringement." Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987); see,

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Charcoal Steak House of Charlotte, Inc. v. Staley, 263 N .C. 199, 201-03 , 139 S.E.2d 185, 187- 88
(1964); D-E-W Foods Com. v. Tuesday's ofWihnington, Inc., 29 N.C. App. 519, 523, 225 S.E.2d
122, 124 (1976).

Thus, the comt analyzes counts one and four in Remax's complaint and

7

defendants' third cotmterclaim together.
The defendants do not contest the second and third elements of infringement.
Mem Opp 'n Mot. Partial Summ J. Cotmt ill [D.E. 69] 3--4.

See Def ' s

Thus, the dispute ttrrns on the

likelihood of consmner confusion between the two valid Remax trademarks and defendants '
FavoriteAgent.com logo. See Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 127 (4th Cir. 1990)
('The ultimate question, for purposes of determining liability in trademark infringement actions, is
whether there exists a likelihood that an appreciable number of ordinarily prudent purchasers will
be misled, or simply confused, as to the source of the goods in question." (quotation omitted)). Nine
factors are relevant to the "likelihood of confusion'' inquiry:
(1) the strength or distinctiveness of the plaintiffs mark as actually used in the
marketplace; (2) the similarity of the two marks to consmners; (3) the similarity of
the goods or services that the marks identifY; (4) the similarity of the facilities used
by the markho lders; ( 5) the similarity of advertising used by the markholders; (6) the
defendant's intent; (7) actual confusion; (8) the quality of the defendant's product; and
(9) the sophistication of the consuming public.
Rosetta Stone, 676 F.3d at 153 . The court does not have to consider every factor or weigh them
equally in "determining the ultimate statutory question of likelihood of confusion."

Id. at 154.

Likewise, a plaintiff need not show that every factor supports its position on the likelihood of
confusion issue. Synergistic Int'l LLC v. Korman, 470 F.3d 162, 171 (4th Cir. 2006).
The first factor, the strength of distinctiveness of the plaintiffs trademark, is especially
significant to the likelihood of confusion analysis.
categories, in increasing order of strength:

Id. A trademark is classified into one of fuur

(1) generic; (2) descriptive; (3) suggestive; and (4)

arbitrary and fanciful. Perini, 915 F.2d at 124. The Remax trademarks are arbitrary and fanciful
because the hot air balloon and the tri-color bands have no common relationship to real estate broker
services. See id.; Abercrombie & Fitch Co. v. Htmting World, Inc. , 537 F.2d 4, 11 n . 12 (2d Cir .
1976); Re/Max Int'l, Inc. v. Trendsetter Realty, LLC , 655 F. Supp. 2d 679, 699 (S.D. Tex. 2009).
Thus, this factor favors Remax.
As fur the second factor, the similarity of the two marks, the court looks to the "dominant
8

portions of the parties' marks." George & Co., 575 F.3d at 396. ''In other words, [the cowt]
fucus[es] on whether there exists a similarity in sight, sotmd, and meaning which would result in
confusion" Id. Both Remax and FavoriteAgent.com use a similar red-over-white-over-blue design,
although the bands are of different heights.

The Remax bands are equally spaced, whereas

defendants' logo has a larger white space with smaller red and blue bands. The Remax signs use a
balloon on the left portion of the mark, whereas the defendants' logo uses an outline of a house in
the middle of the white portion Although this :fuctor slightly :fuvors Remax, a reasonable jury might
not consider the signs sufficiently similar to result in confusion
As for the third :fuctor, the similarity of goods or services that the marks identifY, Jones
claim; that the FavoriteAgent.com logo is used to market software to real estate professionals. See
Def ' s Mem Opp'n Mot. Partial Summ J. Cotmt III at 4-5. Nonetheless, Jones concedes that there
have been some instances where ''the same design has been used in connection with the sale of real
estate brokerage services." Id. at 5. Even assuming that Jones correctly asserts that defendants'
business is aimed at real estate professionals, defendants have used the mark in connection with
offers of real estate services. See George & Co., 575 F.3d at 397 (noting that ''the goods in question
need not be identical or in direct competition with each other").

Thus, this :fuctor slightly :fuvors

Remax.
As fur the fourth :fuctor, similarity of :facilities, Remax uses corrnnercial office buildings to
offer real estate services. See Scoville Decl 16 ; De£ 's Mem. Opp'n Mot. Partial Summ J. Count
III at 5. Although defendants now fucus on online services, they have had and perhaps continue to
operate a corrnnercial office from which real estate agents worked.

See Walsworth Decl 28-29

(Jones deposition). Thus, this :fuctor slightly :fuvors Remax.
As for the fifth factor, the similarity of advertising, both parties advertise online. Id. 47 ;
Scoville Decl 2; Scoville Decl Part II [D.E. 60-3] 16-18. Jones claims, however, that defendants '
advertising is "business to business" and is directed to real estate professionals, whereas Remax

9

advertises directly to constnners. Def 's Mem Opp'n Mot. Partial Sm J. Cmmt III at 5; Scoville
Decl Part II 16-18; cf Pizzeria Uno Corp. , 747 F.2d at 1535 (considering whether constnners in the
same geographic area could hear or see advertisements for the two parties on the same medium) ;
Lone Star Steakhouse, 43 F .3d at 937 (finding similarity where ''both parties advertise in newspapers
and offur coupons in the [same geographic] area, which constnners can redeem fur discounts on
meals"). A genuine issue of material fact exists on this factor.
As fur the sixth factor, defendants' intent to infringe,

"[~f

there is intent to confuse the

buying public, this is strong evidence establishing likelihood of confusion[.]" Pizzeria Uno Corp. ,
747 F.2d at 1535. Even a good-faith belief that the use of the mark will not lead to confusion is no
defense if there is actual or likely confusion Id. In support of this factor, Remax uses circular logic,
claiming that intent to infringe is shown by defendants' infringement, when infringement is the
subject of this action Pl ' s Mem Supp. Sm J. Count III [D.E. 62] 15 . Remax also cites Jones' s
request for $50,000 to stop using the logo as evidence of intent to infringe. See Walsworth Decl
37- 38 (Jones deposition).

Jones's request, however, does not necessarily indicate an intent to

infringe. A reasonable jury also could conclude that Jones's request concerned defendants' cost of
changing logos and not an attempt to "pass off their services as being associated with or approved
by [Remax.]" Pl's Mem Supp. Sm J. Count III at 15-16. Furtherrmre, Jones claims that he
provided the FavoriteAgent.com design to employees and consumers but did not provide actual
signs.

Walsworth Decl 39.

Here, a genuine issue of material fact exits concerning whether

defendants intended to infringe Remax' s trademarks.
'The seventh and most important factor is actual confusion" George & Co., 575 F.3d at
398; see Lone Star Steakhouse, 43 F.3d at 937 (''Most importantly, [plaintiff] produced undisputed
evidence demonstrating actual confusion among constnners."); Lyons P ' ship L.P. v. Morris
Costtnnes, Inc. , 243 F.3d 789, 804 (4th Cir. 2001) ("[W]e have indicated that the seventh
factor-actual confusion-is often paramount."). Remax concedes that it has no evidence on this

10

factor, but claims that such evidence is not necessary. See Pl's Mem Supp. Surrnn J. Count III 16

n3.

However, Remax's faih.rre to produce any evidence of actual confusion weighs against its

infringement claim
As for the eighth factor, the quality of defendants' product, neither party presented evidence
on this factor. This factor, however, does not appear to apply in this case. See Sara Lee Com. v.
Kayser-Roth Com., 81 F.3d 455, 467 (4th Cir. 1996) (stating that this factor ''is most appropriate in
situations involving the production of cheap copies or knocko:ffi; of a competitor's trademarkprotected goods').
As fur the ninth factor, the sophistication of the consumers, this factor may not apply in this
case. ''If the typical consumer in the relevant market is sophisticated in the use of-or possesses an
expertise regarding-a particular product, such sophistication or expertise may be pertinent in
determining the likelihood of confusion"

Id.; Perini Com., 915 F.2d at 127-28.

If Remax is

claiming infringement solely on the yard signs that defendants used, the record does not reflect that
home

purchasers

FavoriteAgent.com

are

sophisticated enough to

tell the

diffurence

between Remax and

See George & Co., 57 5 F. 3d at 400 (stating that "this factor will only be

relevant when the relevant market is not the public-at-large" (quotation omitted)). To the extent that
Remax claim; infringement from defendants' use of its FavoriteAgent.com logo to advertise its
software services to real estate professionals, sophistication likely would apply because such
professionals would not be confused by the allegedly similar Remax and FavoriteAgent.com signs.
See Sara Lee Com., 81 F.3d at 467 ("The relative sophistication of the market may trump the
presence or absence of any other factor."). Thus, a genuine issue of material fact exists concerning

this factor.
In sum, considering all the factors together, a genuine issue of material fact exists concerning

whether defendants' use of the FavoriteAgent.com logo would likely confuse consumers. Thus, the
court denies summary judgment to Remax on counts one and four and on defendants' third

11

cmmterclaim.
Remax's second claim is for unfair competition llll.der section 43(a) of the Lanham Act. See
15 U.S.C. § 1125(a)(1). The elements ofunfair competition under section 43(a) are the same as the
elements for trademark infringement. See Synergistic Int'l LLC, 470 F.3d at 170; People for Ethical
Treatment of Animals, 263 F.3d at 364; Lone Star Steakhouse, 43 F.3d at 930. Thus, the court
denies Remax's motion for summary judgment on this claim.
In its third claim, Remax seeks reliefllllder the North Carolina's Unfuir and Deceptive Trade
Practices Act (''UDTPA''). In order to prove a claim llll.der the UDTPA, N.C. Gen. Stat. §§ 751.1-75-43, a plaintiffmust prove "(1) defendants committed an unfair or deceptive act or practice;
(2) in or affecting commerce; and (3) that plaintiffwas

~ured

thereby." Griffith v. Glen Wood Co.,

184 N.C. App. 206, 217, 646 S.E.2d 550, 558 (2007) (quotation omitted); Bumpers v. Bank ofN.
Va., 147 S.E.2d 220, 226--29 (N.C. 2013); Walker v. Fleetwood Homes ofN.C., Inc., 362 N.C. 63 ,
71-72, 653 S.E.2d 393 , 399 (2007); Dahon v. Camp, 353 N.C. 647,656, 548 S.E.2d 704 , 711
(2001); RD & J Props. v. l..auralea-Dilton Enters., LLC, 165 N.C. App. 737, 748, 600 S.E.2d 492,
500 (2004). Under the UDTPA, a plaintiff must prove that defendants' conduct was immoral,
unethical, oppressive, unscrupulous, or substantially injurious to consumers. See,

~

Gilbane Bldg.

Co. v. Fed. Reserve Bank, 80 F.3d 895, 902 (4th Cir. 1996); Branch Banking & Trust Co. v.
ThornpsoQ, 107 N.C. App. 53, 61, 418 S.E.2d 694, 700 (1992). Whether an act or practice is unfair
or deceptive under the UDTPA is a question oflaw for the court.

See,~

Tucker v. Blvd. at Piper

Glen, LLC, 150 N.C. App. 150, 153, 564 S.E.2d 248, 250 (2002); Norman Owen Trucking, Inc. v.
Morkosk~

131 N .C. App. 168, 177, 506 S.E.2d 267, 273 (1998).

Trademark infringement can be a deceptive and unfair act. See Lyons P'ship, L.P., 243 F.3d
at 804-05; Shell Trademark Mgmt. BY & Motiva Enters., LLC v. Ray Thomas Petroleum Co., 642
F. Supp. 2d 493, 505 (W.D.N .C. 2009); Microsoft Corp. v. Computer Serv. & Repair, Inc., 312 F.
Supp. 2d 779, 785-86 (E.D.N.C. 2004).

Genuine issues of material filet exist.

12

Thus, summary

judgment is inappropriate on this claim

ill.
In stnn, the court GRANTS in part and DENIES in part Remax's rootion for partial smrnnary
judgment on defendants' first two coilllterclam [D.E. 59]. The '048 trademark is an invalid mark
illlder 15 U.S .C. § 1052(b). In accordance with 15 U.S.C. § 1119 and upon entry offinaljudgment,
the clerk shall send this order to the Director of the Patent and Trademark Office, who shall enter
the appropriate notation on the records of that office concerning the '048 trademark.

The court

DENIES Remax's rootion for partial smrnnary judgment on defendants' third coilllterclairn and
Remax's four clam [D.E. 61]. Finally, the court orders the parties to participate in a court-hosted
mediation with Magistrate Judge Robert B. Jones, Jr.
SO ORDERED. This

.2.1 day ofDecember 2014.

13