Windmar PV, Energy, Inc. v. Solar Now Puerto Rico, LLC et al

Filing 19

OPINION AND ORDER: For the reasons set forth in this Opinion and Order, Defendant Solar Now's Motion to Dismiss Complaint at Docket No. 11 is hereby GRANTED. Windmar's federal trademark claims are DISMISSED WITH PREJUDICE, while their Puerto Rico counterparts are DISMISSED WITHOUT PREJUDICE. Judgment shall be entered accordingly. Signed by Judge Raul M. Arias-Marxuach on 3/6/2025. (mrr)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
WINDMAR PV ENERGY, INC.
Plaintiff,
v.

CIVIL NO. 24-1570 (RAM)

SOLAR NOW PUERTO RICO, LLC et
al.
Defendants.

OPINION AND ORDER
RAÚL M. ARIAS-MARXUACH, United States District Judge
Pending before the Court is Defendant Solar Now Puerto Rico,
LLC’s (“Defendant” or “Solar Now”) Motion to Dismiss Complaint
Pursuant to Rule 12(b)(6) (“Motion to Dismiss”). (Docket No. 11).
For the reasons outlined below, the Court hereby GRANTS Defendant
Solar Now’s Motion to Dismiss.
I.

BACKGROUND

Plaintiff Windmar PV, Energy, Inc. (“Plaintiff” or “Windmar”)
and Defendant Solar Now are both Puerto Rico-based companies
dedicated to the sale and installation of solar energy equipment.
(Docket No. 1 ¶¶ 4-5). Plaintiff owns “the exclusive rights to all
WINDMAR and WINDMAR HOME commercial marks, service marks and
commercial images, name designs, branding, and products” and has
filed trademark registrations for these marks with the United
States Patent and Trademark Office (“USPTO”). Id. ¶ 13. As shown

Civil No. 24-1570 (RAM)

2

in the Complaint and its attached exhibits, the registered marks
consist of various elements including: the silhouette of the sun’s
corona; the words “WINDMAR” or “WINDMAR HOME”; a combination of
the colors orange, blue, black, and grey; and a stylized image of
a windmill replacing the “I” in “WINDMAR.” (Docket Nos. 1 ¶ 16; 16; 1-7 and 1-8). The typical logo shows the words “WINDMAR HOME”
written in blue and grey, with the “I” replaced by a blue windmill
logo; the words are placed under and within an orange outline of
a sunburst or corona. (Docket No. 1-12 at 2).
Windmar’s registered marks have been in effect since, “at the
very least,” January 1, 2015. (Docket No. 1 ¶ 15). During this
period, Plaintiff has actively promoted its business by using the
registered marks in “newspapers, magazines, social media, radio,
billboards,

television

shows...both

nationally

and

internationally.” Id. ¶ 18. Plaintiff asserts that it is the
“number one” company in the “solar energy industry in Puerto Rico,”
and has been “internationally recognized” outside of Puerto Rico.
Id. ¶ 19. Furthermore, Windmar asserts that its registered marks
have

“come

to

signify

the

high

quality

of

[its]

goods

and

services,” and hold “incalculable distinction, reputation, and
goodwill belonging exclusively to Plaintiff.” Id. ¶ 23.
Windmar claims trouble arose on or around August 28, 2024,
when Defendant began a marketing campaign that allegedly utilized
Plaintiff’s

registered

marks.

Id.

¶

26.

Plaintiff

points

to

Civil No. 24-1570 (RAM)

3

billboards and a social media post made by Defendant Solar Now,
elements of which allude to Windmar’s registered marks. Id. ¶ 27.
Multiple billboards show a salesman pointing to a form listing
three different options for solar companies: a colored logo of
Defendant Solar Now and two greyscale logos that feature the
profile of a sun and its corona. (Docket No. 1-11). One greyscale
logo is titled “PAQUITO SOLAR” and the other “MOLINITO.” Id.
Plaintiff claims that the word “MOLINITO” (which translates to
“little windmill”), when used in conjunction with the sun-related
imagery, alludes to Windmar’s logo. (Docket Nos. 1 ¶ 28 and 1-11).
On the billboards, Defendant’s logo is next to a “X” mark of
approval while the two greyscale logos are placed further down the
form with the implication that they are inferior options to Solar
Now. (Docket No. 1-11 at 2-11).
Plaintiff also objects to a social media post made by Solar
Now that shows an indecisive man debating which solar energy
company

to

choose

as

the

aforementioned

“PAQUITO

SOLAR”

and

“MOLINITO” logos stand behind him. Id. at 1. The “MOLINITO” logo
is surrounded by a yellow sun and corona. Id. With his hand over
his head, the man looks up at the “Paquito Solar” logo with his
back to the “MOLINITO” logo. Id. In Spanish, the post’s caption
advises prospective customers that with many options on the market,
Solar Now is here to help customers make easy decisions about their
solar power needs. Id.

Civil No. 24-1570 (RAM)

4

To assist the reader, the Court provides the following two
examples of Windmar’s registered mark (to the left) and Solar Now’s
“MOLINITO”

mark

used

in

its

advertisements

(to

the

right).

Additional variations of these marks are used by both parties, but
these two designs are used most often.

Figure 1

Figure 2

(Docket Nos. 1; 1-11 and 1-12).
On September 3, 2024, Plaintiff’s counsel sent Defendant a
letter

stating

that

Solar

Now’s

advertisements

infringe

on

Plaintiff’s registered marks, primarily its main logo. (Docket No.
1-12). Windmar requested that Defendant stop using the allegedly
infringing advertisements and remove all copies of the materials
that include the problematic symbols. Id. at 3-4. On September 12,
2024,

Solar

accusations

Now’s
but

counsel

agreeing

to

responded,

denying

Plaintiff’s

remove

allegedly

infringing

the

material “to avoid controversies, inconveniences, and unnecessary
expenses.” (Docket No. 1-13). Defendant argued that its activities
did not infringe on Windmar’s trademarks but, at most, served to
“distinguish

Solar

Now’s

Products

and

services”

from

those

provided by Windmar and did not violate federal or Puerto Rico
law. Id. at 1.

Civil No. 24-1570 (RAM)

5

On December 10, 2024, Plaintiff filed its Complaint against
Solar Now, ABC Entities, John Doe, and XYZ Insurance Companies,
asserting

that

Defendant’s

advertisements

violated

several

provisions of the federal Lanham Act, 15 U.S.C. § 1051 et seq.,
and Puerto Rico Trademarks Act, P.R. Laws Ann. tit. 10, § 223a et
seq. (Docket No. 1). Plaintiff also alleges that Defendant refused
to remove the offending advertisements and did so only when the
advertising contract expired. (Docket No. 13 at 16). Plaintiff
seeks statutory damages under Puerto Rico law, attorneys’ fees and
costs, pre- and post-judgment interest, and injunctive relief. Id.
¶¶ 94-97.
Defendant filed the Motion to Dismiss on January 24, 2025,
arguing that dismissal under Rule 12(b)(6) is appropriate because
the case is moot and, regardless of mootness, Plaintiff has failed
to allege facts showing that trademark infringement occurred.
(Docket No. 11). Plaintiff filed a Response on February 10, 2025,
rebutting Defendant’s arguments. (Docket No. 13). On February 26,
2025, Defendant filed its Reply to the Response. (Docket No. 18).
II.

LEGAL STANDARD

To determine if a complaint has stated a plausible, nonspeculative claim for relief, a court must determine whether
“all the facts alleged [in the complaint], when viewed in the light
most

favorable

to

the

plaintiffs,

render

the

plaintiff’s

entitlement to relief plausible.” Ocasio-Hernandez v. Fortuno-

Civil No. 24-1570 (RAM)

6

Burset, 640 F.3d 1, 14 (1st Cir. 2011) (emphasis in original).
This requires treating “any non-conclusory factual allegations in
the complaint as true.” Nieto-Vicenty v. Valledor, 984 F.Supp. 2d
17, 20 (D.P.R. 2013); Schatz v. Republican State Leadership Comm.,
669

F.3d

50,

complaint’s

55

(1st

well-pled

Cir.
(i.e.,

2012)

(courts

should

non-conclusory,

take

“the

non-speculative)

facts as true, drawing all reasonable inferences in the pleader’s
favor”). A claim holds the facial plausibility necessary to evade
dismissal at the Rule 12(b)(6) stage when “the plaintiff pleads
factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted)
(while “plausibility” is not the same as “probability,” it requires
more

than

a

“sheer

possibility

that

a

defendant

has

acted

unlawfully.”).
“[A] plaintiff’s obligation to provide the ‘grounds’ of his
‘entitle[ment]

to

relief’

requires

more

than

labels

and

conclusions, and a formulaic recitation of the elements of a cause
of action will not do.” Bell Atl. Corp. et al. v. Twombly et al.,
550 U.S. 544, 555 (2007) (citation omitted). Further, a complaint
will not stand if it offers only “naked assertion[s] devoid of
further factual enhancements.” Ashcroft, 556 U.S. at 678 (internal
quotation marks and citation omitted). Courts may also consider:
“(a)

‘implications

from

documents’

attached

to

or

fairly

Civil No. 24-1570 (RAM)
‘incorporated
‘judicial

into

7

the

notice,’

complaint,’(b)

and

(c)

‘facts’

‘concessions’

susceptible
in

to

plaintiff’s

‘response to the motion to dismiss.’” Schatz, 669 F.3d at 55–56
(quoting Arturet–Vélez v. R.J. Reynolds Tobacco Co., 429 F.3d 10,
13 n.2 (1st Cir. 2005)). A defendant may raise affirmative defenses
on a motion to dismiss under Rule 12(b)(6) if the underlying facts
of the defense “are clear from the face of the complaint as
supplemented by ‘matters fairly incorporated within it and matters
susceptible to judicial notice.’” Monsarrat v. Newman, 28 F.4th
314, 318 (1st Cir. 2022) (citations omitted).
III. APPLICABLE LAW
A. The Lanham Act
The Lanham Act is the “core federal trademark statute” and
defines a trademark as “‘any word, name, symbol, or device, or any
combination

thereof’

that

a

person

uses

‘to

identify

and

distinguish his or her goods...from those manufactured or sold by
others and to indicate the source of the goods.’” Jack Daniel’s
Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 145 (2023) (citing
15 U.S.C. § 1127). A trademark “tells the public who is responsible
for a product” and “enables customers to select ‘the goods and
services that they wish to purchase, as well as those they want to
avoid.’” Id. (citing Matal v. Tam, 582 U.S. 218, 224 (2017)). A
mark must be distinctive to qualify for trademark protection. See

Civil No. 24-1570 (RAM)

8

Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116
(1st Cir. 2006) (holding “generic marks” cannot be distinctive).
The Lanham Act helps assure the holder of a mark that “it
(and

not

an

imitating

competitor)

will

reap

the

financial,

reputation-related rewards associated with a desirable product,”
incentivizing

the

“production

“discourag[ing]

those

who

hope

to

of

quality

goods”

and

sell

inferior

products

by

capitalizing on a consumer's inability quickly to evaluate the
quality of an item offered for sale.” Qualitex Co. v. Jacobson
Prods. Co., Inc., 514 U.S. 159, 164 (1995) (citations omitted). To
obtain certain benefits under the Lanham Act, an owner of a mark
should apply to the USPTO to have the mark placed on a federal
register. See Jack Daniel’s Props., Inc., 599 U.S. at 146.
i. Trademark infringement
Section 32(1) of the Lanham Act creates a cause of action
against any person who, without the consent of the trademark
holder, “use[s] in commerce any reproduction, counterfeit, copy,
or colorable imitation of a registered mark” to advertise “any
goods or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.
§

1114(1)(a).

Section

32(1)

also

prohibits

the

use

of

reproductions, counterfeits, copies, or imitations of a registered
mark in the “advertising of goods or services...in connection with
which such use is likely to cause confusion, or to cause mistake,

Civil No. 24-1570 (RAM)

9

or to deceive.” 15 U.S.C. § 1114(1)(b). Offenders can be liable in
civil actions, although under § 1114(1)(b), the registered holder
cannot recover profits or damages unless the offense was committed
with the knowledge that “such imitation is intended to be used to
cause confusion, or to cause mistake, or to deceive.” Id.
A trademark infringement suit typically arises when “the
owner of a mark sues someone using a mark that closely resembles
its own,” requiring the court to decide if the defendant’s use is
likely to result in confusion, mistake, or deception. Jack Daniel’s
Props., Inc., 599 U.S. at 147 (citing 15 U.S.C. §§ 1114(1)(A),
1125(a)(1)(A)). Confusion most often stems from “the source of a
product or service.” Moseley v. V Secret Catalog, Inc., 537 U.S.
418, 428 (2003); see also Swarovski Aktiengesellschaft v. Bldg.
No. 19, Inc., 704 F.3d 44, 49 (1st Cir. 2013).
The First Circuit has held that to prevail on a claim for
trademark infringement under the Lanham Act, a plaintiff must show:
(i) it owns the relevant trademark, (ii) the offending party used
the trademark or a similar mark, and (iii) the offending party’s
use of the marks likely confused consumers, causing the harm to
the holder. See Venture Tape Corp. v. McGills Glass Warehouse, 540
F.3d 56, 60 (1st Cir. 2008) (citations omitted); see also Star
Fin. Servs., Inc. v. AASTAR Mortg. Corp., 89 F.3d 5, 9 (1st Cir.
1996); 15 U.S.C. § 1114(1).

Civil No. 24-1570 (RAM)

10

When a trademark infringement claim is brought over alleged
confusion about the source of a good or service, a court looks at
the possibility and extent of consumer confusion. See Swarovski
Aktiengesellschaft, 704 F.3d at 49. There must be a likelihood of
confusion, as shown through the eight-factor test articulated in
Pignons S.A. de Mecanique de Precision v. Polaroid Corp.:
(1) the similarity of the marks; (2) the
similarity of the goods; (3) the relationship
between the parties’ channels of trade; (4)
the
relationship
between
the
parties’
advertising; (5) the classes of prospective
purchasers; (6) evidence of actual confusion;
(7) the defendant’s intent in adopting its
mark; and (8) the strength of the plaintiff’s
mark.
657 F.2d 482, 487-91 (1st Cir. 1981); Borinquen Biscuit Corp., 443
F.3d

at

120

(citing

Astra

Pharm.

Prods.,

Inc.

v.

Beckman

Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir. 1983)). Although
all eight factors should be considered, no single factor carries
“dispositive weight,” and a party does not automatically prevail
because the majority of

Pignons factors weigh in its favor.

Borinquen Biscuit Corp., 443 F.3d at 120 (citations omitted);
Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Crédito
Oriental, 852 F.3d 15, 32 (1st Cir. 2016). Without a showing of a
likelihood of confusion, mistake, or deception, a plaintiff cannot
demonstrate trademark infringement occurred and has no cause of
action. See Swarovski Aktiengesellschaft, 704 F.3d at 50.

Civil No. 24-1570 (RAM)

11

Less common “nominative use” cases involve confusion over the
affiliation or endorsement of a good or service. Id. at 49. The
concern is that a consumer will be confused about a party’s
potential connection to the good or service, even if there is no
question

as

to

Aktiengesellschaft,

its

source.

the

defendant

For

example,

Building

No.

in

Swarovski

19,

Inc.,

a

discount retail store, purchased Swarovski crystal figurines from
a

third

party

and

placed

a

newspaper

advertisement

for

the

figurines that included the word “Swarovski.” 704 F.3d at 46-47.
The plaintiff, Swarovski Aktiengesellschaft (“Swarovski”) argued
the defendant’s advertisements constituted trademark infringement,
in part because a consumer might be confused by the advertisement
and think that Swarovski was affiliated with or endorsed a discount
shop “in a way that might detract from its luxury status.” Id. at
49-50. There were no allegations of confusion over the source of
the goods advertised, but the First Circuit remanded the case
because the district court did not make a sufficient finding of
the likelihood of consumer confusion as to the plaintiff’s possible
affiliation or endorsement of the defendant’s business. Id. at 49.
Although it has not endorsed “any particular approach to the
nominative fair use doctrine,” the First Circuit considered the
use of the following three-factor test to evaluate “the lawfulness
of

a

defendant’s

Aktiengesellschaft:

nominative
(i)

use

“whether

of
the

a

mark”

plaintiff’s

in

Swarovski

product

was

Civil No. 24-1570 (RAM)

12

identifiable without use of the mark”; (ii) “whether the defendant
used more of the mark than necessary”; and (iii) “whether the
defendant accurately portrayed the relationship between itself and
the plaintiff.” Id. at 50-51, 53 (citations omitted). The Third
and Ninth Circuits have adopted this test, although they differ on
whether it is an affirmative defense or replaces the standard
eight-factor test for confusion. See Century 21 Real Estate Corp.
v. Lendingtree, Inc., 425 F.3d 211, 222 (3d Cir. 2005) (adopting
a “two-step approach in nominative use cases” where a plaintiff
first proves a likelihood of confusion and a defendant then shows
the three-factor test above demonstrates fairness); Toyota Motor
Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175-76 (9th Cir.
2010) (adopting this three-factor test to evaluate “likelihood of
confusion in nominative use cases.”).
ii. Unfair competition
Section 43(a) of the Lanham Act provides a broader cause of
action for unfair competition, including the false representations
of

origin

or

affiliation

of

goods,

services,

or

commercial

activities that could mislead consumers. 15 U.S.C. § 1125(a). This
section allows claims for false association, § 1125(a)(1)(A), and
false advertising, § 1125(a)(1)(B). Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 122 (2014).
Defendants can be civilly liable for false association if
they, “in connection with any goods or services,” use in commerce

Civil No. 24-1570 (RAM)

13

“any word, term, name, symbol, or device” that is “likely to cause
confusion” “as to the origin, sponsorship, or approval of his or
her goods, services, or commercial activities by another person”
and the plaintiff believes that they are or are likely to be
damaged by such an act. 15 U.S.C. § 1125(a)(1)(A). These types of
claims “typically involve ‘attempts to appropriate the goodwill
associated with a competitor[,]’ for example, by misappropriating
a trademark or falsely implying an endorsement.”

Am. Bd. of

Internal Med. v. Salas Rushford, 114 F.4th 42, 64 (1st Cir. 2024)
(citations omitted). The First Circuit “usually consider[s]” the
Pignons factors “to gauge the likelihood of consumer confusion”
under § 1125(a)(1)(A), which “mostly relate to the possibility of
consumers mistaking one party's good, service, or trademark with
that of another.” Id. at 64, 64 n.25 (citing I.P. Lund Trading ApS
v. Kohler Co., 163 F.3d 27, 43 (1st Cir. 1998)).
Defendants
misrepresent
geographic

may

be

“the

origin

liable

nature,
of

his

or

for

false

if

they

characteristics,

qualities,

or

her

person’s

or

advertising

another

goods,

services, or commercial activities” in commercial advertising or
promotion. 15 U.S.C. § 1125(a)(1)(B). A successful claim for false
advertising

must

show:

(i)

the

defendant

“made

a

false

or

misleading description of fact or representation of fact in a
commercial advertisement about his own or another's product”; (ii)
the misrepresentation is material such that it is “likely to

Civil No. 24-1570 (RAM)
influence”

a

14

consumer’s

misrepresentation

“actually

purchasing
deceives

or

decision;

(iii)

the

has

tendency

to

the

deceive a substantial segment of its audience”; (iv) “the defendant
placed the false or misleading statement in interstate commerce”;
and (v) “the plaintiff has been or is likely to be injured as a
result of the misrepresentation, either by direct diversion of
sales or by a lessening of goodwill associated with its products.”
Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d
302, 310-11 (1st Cir. 2002); see also Pegasystems, Inc. v. Appian
Corp., 424 F.Supp. 3d 214, 221-22 (D.Mass. 2019).
The “false” statement may be literally or implicitly false;
if literally false, the plaintiff does not need to establish
evidence of consumer deception. See Cashmere & Camel Hair Mfrs.
Inst., 284 F.3d at 311.S False advertising does not encompass
“exaggerated advertising, blustering and boasting upon which no
reasonable

buyer

would

rely,”

but

may

include

“specific

and

measurable claims of product superiority” that “may be literally
false under the Lanham Act.” Ferring Pharm. Inc. v. Braintree
Lab’ys., Inc., 38 F.Supp. 3d 169, 177 (D.Mass. 2014) (quoting
Clorox Co. P.R. v. Proctor & Gamble Com. Co., 228 F.3d 24, 38-39
(1st Cir. 2000)).
iii. Trademark dilution
Section 43(a) establishes a cause of action for the dilution
of trademarks that are considered “famous” under the Lanham Act,

Civil No. 24-1570 (RAM)

15

regardless of whether the marks have been registered. 15 U.S.C. §
1125(c); see Matal, 582 U.S. at 225. A mark is famous if “it is
widely recognized by the general consuming public of the United
States as a designation of source of the goods or services of the
mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). Courts may consider “all
relevant factors” to determine if a mark should be designated as
famous, including: (i) the “duration, extent, and geographic reach
of advertising and publicity of the mark”; (ii) “[t]he amount,
volume, and geographic extent of sales of goods or services offered
under the mark”; (iii) “[t]he extent of actual recognition of the
mark”; and (iv) whether the mark has been registered. 15 U.S.C. §
1125(c)(2)(A)(i)-(iv).
The holder of the famous registered mark can seek injunctive
relief if, after the mark is famous, another person starts using
the mark or trade name “in commerce” in a manner “that is likely
to cause dilution by blurring or dilution by tarnishment of the
famous mark.” 15 U.S.C. § 1125(c)(1). Proof of the “likelihood of
confusion” is not required. See Lyons v. Gillette, 882 F.Supp. 2d
217, 228 (D.Mass. 2012). “Dilution by blurring” involves the
“association arising from the similarity between a mark or trade
name and a famous mark that impairs the distinctiveness of the
famous mark.” 15 U.S.C. § 1125(c)(2)(B). To determine if “dilution
by blurring” has occurred, courts may consider “all relevant
factors,” including:

Civil No. 24-1570 (RAM)

16

(i) The degree of similarity between the mark
or trade name and the famous mark; (ii) the
degree of inherent or acquired distinctiveness
of the famous mark; (iii) the extent to which
the owner of the famous mark is engaging in
substantially exclusive use of the mark; (iv)
the degree of recognition of the famous mark;
(v) whether the user of the mark or trade name
intended to create an association with the
famous mark; (vi) any actual association
between the mark or trade name and the famous
mark.
15 U.S.C. § 1125(c)(2)(B)(i)-(vi). “Dilution by tarnishment” is
the association between a famous mark and another mark or trade
name “that harms the reputation of the famous mark.” 15 U.S.C. §
1125(c)(2)(C).
Section 43(a) includes various exclusions for fair use. “Any
fair use of a famous mark by another person other than as a
designation of source for the person’s own goods or services” is
excluded, such as: (i) comparative advertising or promotions that
let “customers compare goods or services,” and (ii) “identifying
and parodying, criticizing, or commenting upon the famous mark
owner or the goods or services of the famous mark owner.” 15 U.S.C.
§ 1125(c)(3)(A)(i)-(ii); Jack Daniel’s Props., Inc., 599 U.S. at
148 (noting that the exclusion does not apply “if the defendant
uses the similar mark” to designate the source of his own goods).
Comparative

advertising

that

allows

consumers

to

compare

“potentially competitive” services between parties is permissible
under

§

1125(c)(3)(A)(i).

Allied

Interstate

LLC

v.

Kimmel

&

Civil No. 24-1570 (RAM)
Silverman

P.C.,

2013

17
WL

4245987,

at

*4

(S.D.N.Y.

2013).

An

excludable parody must “conjure up” enough of the underlying object
or concept as to make it recognizable, as well as enough of a
contrast “so that [the parody’s] message of ridicule or pointed
humor becomes clear.” Jack Daniel’s Props., Inc., 599 U.S. 161. A
successful parody can be considered when “assessing the likelihood
of confusion” and “is not often likely to create confusion”. Id.
B. The Puerto Rico Trademarks Act
The Puerto Rico Trademarks Act, codified at P.R. Laws Ann.
tit. 10, § 223a et seq., mirrors the Lanham Act in scope and
content. Section 223w creates a cause of action for trademark
infringement

involving

the

reproduction,

forgery,

copying,

imitation, use, or attempted use of any mark if such activity “is
likely to cause confusion or deceive as to the origin of the goods
or services or as to sponsorship or association.” P.R. Laws Ann.
tit. 10, § 223w. The Act also creates a cause of action against a
person who, “as to goods or services, uses in commerce any word,
term, name, symbol, slogan, trade dress, medium, logo, design,
color, sound, scent, shape, object or a combination thereof; or
any

false

origin

designation;

or

any

false

or

misleading”

description or representation of a fact that:
(1) Is likely to cause confusion or mislead or
deceive as to the affiliation, connection, or
association of such person with another person, or
as to the origin, source, sponsorship, or approval

Civil No. 24-1570 (RAM)

18

of
his/her
goods,
services,
activities by another person, or

or

commercial

(2) in commercial advertising or in promotion,
misrepresents
the
nature,
characteristics,
qualities, or geographic origin of his/her or
another person's goods, services, or commercial
activities, shall be held liable in civil action
by any person who was injured as a consequence of
such acts.
P.R. Laws Ann. tit. 10, § 223x. Finally, § 223y guards against the
dilution of famous marks, defined

as those that are “widely

recognized

in

by

the

general

consumer

Puerto

Rico,

or

in

a

geographic area of Puerto Rico,” as a source of goods or services
of the mark’s holder. P.R. Laws Ann. tit. 10, § 223y(b). As with
the Lanham Act, the Puerto Rico Trademarks Act contains various
exclusions for the use of a famous mark without the owner’s
consent, including comparative advertising and parody. P.R. Laws
Ann. tit. 10, § 223y(c).

Windmar’s

claims

IV.

DISCUSSION

revolve

around

the

alleged

use

of

its

trademarks in Solar Now’s advertisements. (Docket No. 1). The
Complaint alleges the advertisements are likely to result in
consumer confusion by creating the impression that Defendant’s
goods and services “originate from, are associated or affiliated
with, or otherwise authorized by” Windmar. Id. ¶ 45. Plaintiff
brought claims for trademark infringement under Section 32(1) of
the Lanham Act, 15 U.S.C. § 1114(1); unfair competition under

Civil No. 24-1570 (RAM)

19

Section 43(a), 15 U.S.C. § 1125(a); and trademark dilution under
Section 43(a), 15 U.S.C. § 1125(c). Id. ¶¶ 55, 68, 76.
A. The Complaint is Not Moot
As a threshold matter, the Court turns to Defendant’s argument
that the instant case is moot because Solar Now has removed all
contested advertisements from circulation. (Docket No. 11 at 13).
“It is well settled that a defendant's voluntary cessation of a
challenged practice does not deprive a federal court of its power
to determine the legality of the practice.” Friends of the Earth,
Inc. v. Laidlaw Env’t Servs., 528 U.S. 167, 189 (2000) (citations
and internal quotation marks omitted). To hold otherwise would be
to allow Defendant to continue to run the allegedly infringing
advertisements indefinitely without a court reviewing the issue,
provided the offending materials were taken down before a lawsuit
could begin. Although a case can be mooted by a defendant’s
voluntary conduct “if subsequent events made it absolutely clear
that the allegedly wrongful behavior could not reasonably be
expected to recur,” there is no indication that is the situation
here. Id. (citation omitted).
Furthermore, the Complaint alleges that Solar Now was still
using the allegedly infringing material at the time of filing,
contradicting Defendant’s claims of mootness. (Docket No. 1 ¶¶ 4244). Although the materials may have been removed now, Plaintiff
asserts this is only because the contractual term of advertising

Civil No. 24-1570 (RAM)

20

for the billboards has expired, not because Defendant Solar Now is
seeking to correct its behavior. (Docket No. 13 at 16). Treating
“any non-conclusory factual allegations in the complaint as true,”
the

Court

assumes

Defendant

Solar

Now’s

allegedly

wrongful

behavior could continue in the future and proceeds to the merits
of the Complaint. Nieto-Vicenty, 984 F.Supp. 2d at 20.
B. Windmar’s Federal Trademark
Survive Rule 12(b)(6)

Infringement

Claim

Does

Not

Plaintiff alleges that Solar Now’s advertisements constituted
trademark infringement because they were likely to confuse the
public about the nature of the parties’ relationship. (Docket No.
1

¶¶

55-56).

As

alleged

in

the

Complaint,

Windmar

owns

the

registered marks at issue and that Defendant ran the offending
advertisements without permission. (Docket Nos. 1 and 1-12); see
Venture Tape Corp., 540 F.3d at 60. Plaintiff alleges that Solar
Now’s use of the marks confused consumers and harmed Windmar’s
business and professional reputation, bringing claims of trademark
infringement

as

to

the

“origin,

source,

sponsorship,

[and]

affiliation” of Solar Now’s goods and services. (Docket No. 1 ¶¶
55-60); see Venture Tape Corp., 540 F.3d at 60.
Although the Court must draw all reasonable inferences in
Plaintiff’s favor, Windmar has not shown that its federal claims
are entitled to relief because it has not plausibly alleged a
likelihood of consumer confusion under the Pignons test. See

Civil No. 24-1570 (RAM)

21

Schatz, 669 F.3d at 55; Ocasio-Hernandez, 640 F.3d at 14; Star
Fin. Servs., Inc., 89 F.3d at 120 (listing eight factors to show
the likelihood of confusion).
First, Windmar’s registered marks do not closely resemble the
logos used in Solar Now’s advertisements. The “WINDMAR HOME” logo
uses the words “WINDMAR HOME” written in deep blue, black, and
grey, with the distinct image of a windmill replacing the “I” in
“WINDMAR HOME.” (Docket No. 1 at 5). This phrase is placed on a
white

background

and

below

an

orange

sun

corona

that

uses

alternating short and long spiking sun rays. Id. The “WINDMAR
SOLAR” marks omit the windmill icon and are either: (i) all-black
on a white background or (ii) on a blue background with the orange
corona icon and the word “SOLAR” in orange while “WINDMAR” is in
white. Id. Finally, the “SOLAR ACADEMY BY WINDMAR” mark is on a
white background and partially overset by the orange corona icon
and a blue graduation cap; “SOLAR ACADEMY” is in orange font while
“BY WINDMAR” is in grey and blue.1 Id. Defendant’s “MOLINITO” logo
is different: there is no windmill icon; its colors include bright
blue, yellow, and white; the only word on the logo is “MOLINITO”
which is written in white font and set underneath a yellow corona
icon of identical sun rays on a bright blue background. (Docket
No. 1 at 8). The color schemes and words are different, and

The Court notes that Plaintiff has not submitted evidence of registration for
the “WINDMAR SOLAR” or “SOLAR ACADEMY BY WINDMAR” trademarks. (Docket No. 16).
1

Civil No. 24-1570 (RAM)

22

Defendant’s mark omits the windmill, a key feature of Windmar’s
primary mark. Although both designs include a corona, they are in
different colors and patterns. A reasonable consumer would be hardpressed to see one mark and immediately think of the other, and
the Court finds it implausible that the marks could be confused
with each other. While the “MOLINITO” mark may be understood to
parody or allude to Plaintiff, as discussed below, the facts
alleged in the Complaint do not support a finding that the marks
used by Defendant could be understood to be the same as Windmar’s
registered marks. This factor leans in favor of Defendant.
Second, both marks indisputably relate to similar goods as
they are used to advertise goods and services in the solar energy
industry. (Docket No. 1 ¶¶ 5-6). This factor favors Plaintiff.
Third,

the

parties

advertising

due

to

the

operate

in

similarity

“overlapping
of

their

channels”

of

services,

as

acknowledged by both parties. (Docket Nos. 1 ¶¶ 5-6 and 11 at 6).
This factor favors Plaintiff.
Fourth, the Complaint alleges that Defendant has used the
same type of advertising as Plaintiff (billboards and social media)
and placed its billboards in proximity to at least one of Windmar’s
billboards.

(Docket

No.

13

at

10).

It

is

plausible

that

a

relationship exists between the parties’ advertising. This factor
favors Plaintiff.

Civil No. 24-1570 (RAM)

23

Fifth, Windmar and Solar Now are engaged in the same line of
business and thus “market to the same [class of] prospective
purchasers.” Id. This factor favors Plaintiff.
Sixth, Plaintiff presents no facts plausibly alleging that
actual confusion has occurred, only conclusory allegations to this
effect. (Docket Nos. 1 and 13). This factor favors Defendant.
Seventh, although Defendant avers its intention in adopting
the controversial mark was to differentiate itself from Windmar
for advertising purposes, Plaintiff asserts that Defendant acted
in “bad faith” to willfully cause confusion about the affiliation
between the parties. (Docket Nos. 1 ¶¶ 55-60; 11 at 6 and 13 at
11). This factor favors Plaintiff.
Eighth, Windmar’s trademark is strong as it is the “market
leader in Puerto Rico, regarding solar energy, as recognized by
the Guiness [sic] World Book of Records,” advertises and does
business extensively in Florida and Puerto Rico, and has registered
its “WINDMAR HOME” trademark with the Puerto Rico government and
the USPTO. (Docket Nos. 1; 1-6 and 13 at 11-12). This is true even
if, as discussed below, the mark is not famous. This factor favors
Plaintiff.
If “a plaintiff fails to plausibly allege a likelihood of
confusion, the district court should dismiss the complaint under”
Rule 12(b)(6). Jack Daniel’s Props., Inc., 599 U.S. at 157 n.2
(citation omitted). Viewing the facts alleged in the Complaint,

Civil No. 24-1570 (RAM)

24

its exhibits, and supporting documents in the light most favorable
to Plaintiff, Windmar has not plausibly alleged a likelihood of
confusion for its trademark infringement claim to survive Rule
12(b)(6). Id.; see Ocasio-Hernandez, 640 F.3d at 14. A reasonable
consumer viewing Defendant’s advertisements would not be confused
about its relationship to Windmar, the source of the parties’ goods
or services, or any affiliation or endorsement made of or by either
Plaintiff or Defendant. Of the eight Pignons factors, six favor
Plaintiff and two favor Defendant. Star Fin. Servs., Inc., 89 F.3d
at 120. However, four of the factors favoring Plaintiff Windmar the second, third, fourth, and fifth factors - could be true for
any two companies competing in the same market and geographic area,
and do not weigh as heavily in the Court’s analysis.
While no single Pignons factor carries “dispositive weight,”
the dissimilarity of the parties’ marks and lack of specific
allegations of confusion show that Plaintiff has not alleged facts
to plausibly show a likelihood of confusion. Borinquen Biscuit
Corp., 443 F.3d at 1120; see also Oriental Fin. Group, Inc., 832
F.3d at 36 (naming the “similarity of marks” as the “pivotal
factor” in determining the likelihood of consumer confusion). It
is unclear what, if any, confusion could arise from Defendant’s
advertisements. (Docket No. 1-11). Plaintiff relies on its own
“naked

assertions”

that

the

marks

are

similar

and

consumer

confusion has or will occur. Ashcroft, 556 U.S. at 678. Plaintiff’s

Civil No. 24-1570 (RAM)

25

factual allegations for its trademark infringement claim amount to
a “sheer possibility” that Solar Now acted unlawfully by infringing
on its trademark, which is insufficient to evade dismissal under
Rule 12(b)(6). Id.
Although not adopted by the First Circuit, Defendant urges
the Court to invoke the nominative use test raised in Swarovski
Aktiengesellschaft. 704 F.3d at 50-51; (Docket Nos. 11 and 18). In
Swarovski Aktiengesellschaft, the First Circuit emphasized the
district court had erred by granting the plaintiff a preliminary
injunction without determining whether the defendant’s activity
was likely to cause confusion, treating the nominative use test as
an affirmative defense rather than to weigh the likelihood of
confusion. 704 F.3d at 52-53. The First Circuit explicitly declined
to endorse a particular approach to the nominative fair use
doctrine. Id. at 53. For this reason, the Court declines to apply
the nominative use test discussed in Swarovski Aktiengesellschaft.
Applying the Pignons facts to the likelihood of confusion here,
the Court reiterates that Plaintiff has not alleged facts to
plausibly show a likelihood of consumer confusion as to the source,
affiliation, or existence of any other commercial relationship
between Windmar and Solar Now that extends beyond their role as
business competitors. (Docket Nos. 1 and 13).

Civil No. 24-1570 (RAM)

26

C. Windmar’s Federal Unfair Competition Claim Does Not Survive
Rule 12(b)(6)
Plaintiff does not specify which segments of Section 43(a) of
the Lanham Act apply to its unfair competition claim. (Docket Nos.
1 and 13). Given the similarities between § 1114(1)(a) and §
1125(a)(1)(A), the Court proceeds under the understanding that
Plaintiff Windmar intended to bring a false association claim under
the Lanham Act. As this analysis requires a showing of a likelihood
of consumer confusion under the Pignons factors, the Court applies
its analysis above to Plaintiff’s false association claim. Am. Bd.
of Internal Med., 114 F.4th at 64 n.25. For this reason, the Court
concludes that Windmar has not plausibly shown a likelihood of
consumer confusion that would save its Section 43(a) claim from
dismissal under a theory of false association.
The Court also finds that Plaintiff’s filings do not develop
a claim of false advertising. The factors of a false advertising
claim are not fleshed out, and any allusions to this claim are
vague enough that the Court interprets them as references to
Windmar’s other claims instead. See Cashmere & Camel Hair Mfrs.
Inst.,

284

F.3d

at

310-11

(listing

the

elements

of

a

false

advertising claim). To the extent Plaintiff intended to bring a
false advertising claim, it is waived as underdeveloped. See United
States v. Zannino, 895 F.2d 1, 17 (1st Cir. 1990) (“issues adverted

Civil No. 24-1570 (RAM)

27

to in a perfunctory manner, unaccompanied by some effort at
developed argumentation, are deemed waived.”).
D. Windmar’s Federal Trademark Dilution Claim Does Not Survive
Rule 12(b)(6)
i. Windmar’s registered marks are not “famous” under the
Lanham Act
Plaintiff’s trademark dilution claim cannot survive dismissal
under Rule 12(b)(6) because its registered marks are not “famous”
within the meaning of § 1125(c). The plain text of the Lanham Act
defines a “famous mark” as one that “is widely recognized by the
general consuming public of the United States as a designation of
source of the goods or services of the mark’s owner.” 15 U.S.C. §
1125(c)(2)(A). Windmar’s website states that it has “more than 20
years of experience energizing homes and businesses in Puerto Rico
and more recently in Florida.” (Docket No. 1-7 at 1). It further
submits that it has made national and international promotional
efforts, registered its trademarks under an “international class,”
and been recognized for installing over forty thousand solar
batteries in unspecified locations. (Docket Nos. 1 ¶¶ 18-19; 1-6
and 13 at 14). However, as represented by Plaintiff, the geographic
extent of its advertising, publicity of its registered marks, and
sales or services offered under its registered marks are focused
on a single United States territory and one state. (Docket Nos. 1
and 1-7); 15 U.S.C. § 1125(c)(2)(A)(i)-(iii).

Civil No. 24-1570 (RAM)

28

While Plaintiff is highly active within Puerto Rico and
Florida, it does not satisfy the demanding statutory requirements
for a mark to be “famous.” See Cortes v. Sony Corp. of Am., 108
F.Supp. 3d 18, 27-28 (D.P.R. 2015) (citing to the Lanham Act for
the proposition that a famous mark should be “widely recognized by
the general consuming public of the United States as a designation
of source of goods or services of the mark’s owner”); I.P. Lund
Trading ApS v. Kohler Co., 163 F.3d 27, 47 (1st Cir. 1998) (same
when finding a faucet design was not sufficiently famous despite
being “featured and advertised in national magazines and displayed
in museums”); Lyons, 882 F.Supp. 2d at 228 (a mark was not famous
even though it “might be renowned in the veterinary community”).
Plaintiff offers no further facts beyond bare allegations that it
is known to the “general consuming public of the United States,”
falling short of the Lanham Act’s requirements for a “famous mark.”
(Docket Nos. 1 ¶¶ 18-19; 1-6 and 13 at 12-13); 15 U.S.C. §
1125(c)(2)(A). Windmar cannot plausibly allege its trademarks are
“famous” under the Lanham Act by simply stating that its company
is “nationally” and “internationally active.” See Ashcroft, 556
U.S.

at

678

(“naked

assertions”

without

“further

factual

enhancements” do not satisfy Rule 12(b)(6)).2

Plaintiff misapprehends both the requirements of the “famous marks” doctrine
and what the terms “national” and “international” mean in United States
trademark law and in this Court. See 15 U.S.C. § 1127 (“The United States
includes and embraces all territory which is under its jurisdiction and
control,” including the Commonwealth of Puerto Rico.).
2

Civil No. 24-1570 (RAM)

29

ii. Windmar’s registered marks satisfy the Lanham
comparative advertising and parody exclusions
Even

if

Plaintiff’s

trademarks

were

“famous

Act’s

marks,”

the

underlying factual allegations in its trademark dilution claim
still fail because Defendant Solar Now engaged in protected “fair
use” of Windmar’s marks. 15 U.S.C. § 1125(c)(3)(A).
First, when viewed in the light most favorable to Plaintiff,
the purpose of billboards and social media posts at issue is clear
to a reasonable consumer: humorous comparative advertising showing
Solar

Now

should

be

chosen

over

its

(fictional

or

real)

competitors. (Docket No. 1-11). The mocked-up marks, including the
“MOLINITO” mark, are compared with each other in the advertisements
with the clear intention of encouraging consumers to hire Solar
Now. The billboards all show the “Solar Now” name and logo at the
top of a form with a large “X” marking it as the best option. Id.
Meanwhile, the other two marks are placed in smaller font, without
colors,

further

down

on

the

form,

and

without

any

signs

of

approval. Id. at 2-12. The text to the left of the marks encourages
views to choose the “#1” company, Solar Now. Id. Nowhere on the
billboards is Defendant presented as an affiliate of Windmar. The
social media post in question also clearly states that “Solar Now”
is here to help prospective customers who may be conflicted as to
which solar energy company to work with. Id. at 1. Defendant is
not trying to affiliate itself with its competitors, but to

Civil No. 24-1570 (RAM)

30

humorously show it is better than them. Any allusions to Plaintiff
via the “MOLINITO” mark portray Solar Now as a viable – and
preferable – alternative choice for consumers when looking at solar
energy service providers. To put it simply: the Court does not
find it plausible that Defendant’s activities extended beyond
permissible “advertising or promotion that permits consumers to
compare” its services to that of its competitors. 15 U.S.C. §
1125(c)(3)(A)(i).
Second,

Defendant’s

challenged

the

Act’s

protected

by

billboards

and

Lanham

social

media

advertisements

parody

post

make

exclusion
Windmar

a

are

also

because

the

subject

of

ridicule. 15 U.S.C. § 1125(c)(3)(A)(ii); (Docket No. 1-11). The
use

of

a

sun’s

corona

and

the

word

“MOLINITO,”

or

“little

windmill,” conjures up the windmill imagery that Plaintiff uses in
its registered marks. Jack Daniel’s Props., Inc., 599 U.S. 161;
(Docket No. 1-11). The juxtaposition of the “MOLINITO” mark against
Solar Now’s mark on the billboards humorously shows Defendant Solar
Now to be a better company than “MOLINITO,” and impliedly, Windmar.
Jack Daniel’s Props., Inc., 599 U.S. 161; (Docket No. 1-11).
“MOLINITO”

is

not

a

particularly

flattering

phrase,

mocking

Plaintiff’s logo and reputation by referencing it as a tiny
windmill. Jack Daniel’s Props., Inc., 599 U.S. at 161 (parody is
less likely to create confusion as, while “[s]elf-deprecation is
one thing,” “self-mockery [is] far less ordinary.”). The Court

Civil No. 24-1570 (RAM)

31

does not find it plausible that a reasonable consumer could look
at the Solar Now’s social media post or billboards and infer that
Plaintiff is a source or affiliate of Defendant. Cf id. (no parody
protection when the defendant’s use of the plaintiff’s mark is
source-designating). It is abundantly clear that Plaintiff is the
subject of Solar Now’s joke. (Docket No. 1-11).
iii. Additional arguments
Finally, the Court turns to Defendant Solar Now’s argument
that 15 U.S.C. § 1115(b)(4) “explicitly permits descriptive use of
a mark in good faith and comparative advertising.” (Docket No. 11
at 3). Section 1115(b)(4) acts as a defense for activity that would
otherwise be infringing under § 1114 if the “use of the name, term
or device charged to be an infringement” is the non-trademark use
of a party’s individual name in his own business or the name of an
individual in privity with such a party. 15 U.S.C. § 1115(b)(4).
The exception also applies if the term or device is “descriptive
of and used fairly and in good faith only to describe the goods or
services of such party, or their geographic origin.” Id. Section
1115(b)(4) is not relevant here because the allegedly infringing
advertisements do not contain an individual’s name, nor are they
used “only” to describe the goods and services or geographic origin
of Solar Now. Id.; (Docket No. 11).
After

treating

the

Complaint’s

“non-conclusory

factual

allegations” as true and viewing the facts “in the light most

Civil No. 24-1570 (RAM)

32

favorable” to Plaintiff, the Court concludes that the Complaint
lacks a plausible claim for relief to avoid dismissal under Rule
12(b)(6). (Docket No. 1); Ocasio-Hernandez, 640 F.3d at 14.
E. The Court Does Not Retain
Puerto Rico Law Claim

Jurisdiction

Over

Plaintiff’s

None of Plaintiff’s federal law claims survive dismissal
under Rule 12(b)(6). Considering First Circuit case law, the Court
declines to exercise supplemental jurisdiction over the remaining
Puerto Rico law claim. See, e.g., Suárez v. Alivia Specialty
Pharm., LLC, 2024 WL 4337329, at *1 (D.P.R. 2024) (when “federal
claims are dismissed at an early stage of the proceedings, a
District Court is well within its discretion to decline to exercise
supplemental

jurisdiction

over

pending

state-law

claims.”);

Borrás-Borrero v. Corporación del Fondo del Seguro del Estado, 958
F.3d 26, 36-37 (1st Cir. 2020); S. Commons Condo. Ass’n v. Charlie
Arment Trucking, Inc., 775 F.3d 82, 92 (1st Cir. 2014).
V.

CONCLUSION

For the foregoing reasons, Defendant Solar Now’s Motion to
Dismiss Complaint Pursuant to Rule 12(b)(6) at Docket No. 11 is
hereby GRANTED. Windmar’s federal trademark claims are hereby
DISMISSED WITH PREJUDICE, while their Puerto Rico counterparts are
DISMISSED

WITHOUT

accordingly.

PREJUDICE.

Judgment

shall

be

entered

Civil No. 24-1570 (RAM)

33

IT IS SO ORDERED.
In San Juan, Puerto Rico, this 6th day of March 2025.
s/Raúl M. Arias-Marxuach_________
UNITED STATES DISTRICT JUDGE