ACT, Inc. v. Worldwide Interactive Network

Filing 160

MEMORANDUM AND OPINION. The Court GRANTS IN PART and DENIES IN PARTWINs motion for partial summary judgment (Doc. 80). Signed by District Judge Travis R McDonough on 8/14/2019. (BDG)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TENNESSEE
AT KNOXVILLE
ACT, INC.,
Plaintiff & Counter-Defendant,
v.
WORLDWIDE INTERACTIVE
NETWORK,
Defendant & Counter-Claimant.

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Case No. 3:18-cv-186
Judge Travis R. McDonough
Magistrate Judge H. Bruce Guyton

MEMORANDUM OPINION

Before the Court is Defendant and Counter-Claimant Worldwide Interactive Network’s
(“WIN”) motion for partial summary judgment (Doc. 80). For the reasons stated hereafter,
WIN’s motion will be GRANTED IN PART and DENIED IN PART.1
I.

BACKGROUND2
At the heart of this trademark- and copyright-infringement dispute is a product known as

“WorkKeys.” ACT developed WorkKeys, a series of workforce-development assessments that
measure workplace skills affecting an individual’s job performance. (Doc. 121, at 4.)
WorkKeys assessments are the “cornerstone” of ACT’s “Workforce Solutions for Career

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Also before the Court are Plaintiff and Counter-Defendant ACT, Inc.’s (“ACT”) motion to
strike pages in excess of ten from WIN’s reply brief (Doc. 97) and WIN’s motion for leave to
file excess pages in its reply brief (Doc. 98). Given the complexity of this case and the number
of arguments raised by ACT in its response, the Court GRANTS WIN’s motion for leave to file
excess pages in its reply brief (Doc. 98) and DENIES ACT’s motion to strike excess pages (Doc.
97). See United States v. Life Care Centers of Am., Inc., No. 1:08-CV-251, 2014 WL 11429265,
at *6 (E.D. Tenn. Mar. 26, 2014).
The following factual background does not encompass all facts in this case and includes only
those relevant to the Lanham Act claims on which WIN has moved for summary judgment.

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Readiness” program. (Id. at 6.) Completion of WorkKeys is also the basis for the National
Career Readiness Certificate® (“NCRC”), “the nation’s most recognized work readiness
credential that is recommended by thousands of employers.” (Id. at 5.) ACT has been offering
the NCRC since 2006. (Doc. 83, at 867.) The NCRC is awarded at four levels, “BRONZE,”
“SILVER,” “GOLD,” or “PLATINUM,” depending on an individual’s performance on the
WorkKeys assessments (id. at 887, 889), and an individual’s certificate will reflect this level of
achievement (id. at 4–19). Specifically, “BRONZE” requires minimum scores of 3 or above,
“SILVER” requires minimum scores of 4 or above, “GOLD” requires minimum scores of 5 or
above, and “PLATINUM” requires minimum scores of 6 or above. (Id. at 884, 886.)
All four of these levels together, “BRONZE SILVER GOLD PLATINUM” or
“PLATINUM GOLD SILVER BRONZE” can be found on many of ACT’s advertisements and
marketing materials, employer guides, and technical documentation. (See e.g., Doc. 83-1, at 84
(“Recipients are awarded certificates of Platinum, Gold, Silver, or Bronze levels, depending on
their skill levels in Applied Mathematics, Reading for Information, and Locating Information.”);
id. at 88–89 (“describing that the ACT NCRC is “[a]warded at four levels—Platinum, Gold,
Silver, and Bronze”); Doc. 83, at 906 (article explaining that,“[f]or any participating county,
ACT’s Work Ready Communities website displays a list of employers in an area who recognize
the [NCRC], as well as the number of individuals who have achieved one of four levels of
NCRC certification, based on test results: bronze, silver, gold or platinum”).
WIN developed the “Career Readiness System,” a product similar to ACT’s WorkKeys
system, which also uses career-readiness assessments to assess an individual’s job skills. And,
like WorkKeys, a credential earned by completion of these assessments is also awarded at four
levels of achievement, “Bronze,” “Silver,” “Gold,” and “Platinum.” (Id. at 20–27.)

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In 2017, the State of South Carolina issued a Request for Proposal (“RFP”) for a “Career
Ready Test.” (Doc. 83, at 28.) Both ACT and WIN submitted written proposals in response to
the RFP, but the contract was ultimately awarded to WIN. (Id.; see also Doc. 101-1, at 22.)
After WIN was awarded the contract but prior to filing this lawsuit, ACT filed six United
States Federal Trademark Applications (the “Trademark Applications”) for the words
“PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” and the phrases “PLATINUM GOLD
SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM.” (See generally Doc. 83, at
135–828.) In each of these Trademark Applications, ACT identified the services connected with
the use of the alleged marks as: “Providing an assessment-based credential which measures and
certifies the essential work skills needed for success in jobs across multiple industries and
occupations; advisory and consultancy services relating to workforce development programs.”
(Doc. 83, at 261, 308, 585, 684, 754, 821.) Between September 5 and September 7, 2018, the
United States Patent and Trademark Office (“USPTO”) issued nonfinal Office Actions, in which
it rejected all six of ACT’s federal trademark applications. (Doc. 83, at 243–47
(“PLATINUM”), 433–40 (“GOLD”), 569–73 (“SILVER”), 669–73 (“BRONZE”), 739–42
(“PLATINUM GOLD SILVER BRONZE”), 807–10 (“BRONZE SILVER GOLD
PLATINUM”).) Specifically, as relevant here, the USPTO included the following as bases for
its rejection: (1) “the applied-for mark is a slogan or term that does not function as a trademark
or service mark to indicate the source of applicant’s services and to identify and distinguish them
from others”; and (2) “[t]he record is unclear as to whether applicant is seeking registration of a
certification mark or a trademark/service mark.” (Id. at 244–46, 437–39, 570–72, 670–72, 740–
41, 808–09.)
With respect to “PLATINUM,” the USPTO’s Office Action explained that:

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Registration is refused because the applied-for mark is a slogan or term that does
not function as a trademark or service mark to indicate the source of applicant’s
services and to identify and distinguish them from others. Trademark Act
Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127. In this case, the appliedfor mark is a commonplace term, message, or expression widely used by a variety
of sources that merely conveys an ordinary, familiar, well-recognized concept or
sentiment. See In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61
(TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and
automobile parts because the mark would be perceived merely as an
“everyday, commonplace safety admonition”); In re Remington Prods., Inc., 3
USPQ2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN USA not
registrable for electric shavers because the mark would be perceived merely as a
common message encouraging the purchase of domestic-made products); TMEP
§1202.04(b).
Terms and expressions that merely convey an informational message are not
registrable. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB
2010). Determining whether the term or expression functions as a trademark or
service mark depends on how it would be perceived by the relevant public. In re
Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d
1861, 1862 (TTAB 2006); TMEP §1202.04. “The more commonly a [term or
expression] is used, the less likely that the public will use it to identify only one
source and the less likely that it will be recognized by purchasers as a trademark
[or service mark].” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)
(quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).
[T]his term or expression is commonly used to refer to a specific level of
membership, success, quality or rating and conveys that a person or entity has
received such a rating.
(Doc. 83, at 244.) The nonfinal Office Actions rejecting ACT’s trademark applications for
“GOLD,” “SILVER,” and “BRONZE” contain almost identical language. (Id. at 437, 570, 670.)
With respect to “BRONZE SILVER GOLD PLATINUM,” the USPTO’s nonfinal Office Action
explains that:
Registration is refused because the applied-for mark, as used on the specimen of
record, does not function as a service mark to identify and distinguish applicant’s
services from those of others and to indicate the source of applicant’s services.
Determining whether a designation functions as a mark depends on the
commercial impression it makes on the relevant public and whether
purchasers would be likely to regard it as a source-indicator for the services.

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The specimen of record, along with any other relevant evidence of record, is
reviewed to determine whether an applied-for mark is being used as a service
mark.
In this instance, the applied-for mark, as shown on the specimen, does not
function as a service mark because the wording “BRONZE SILVER GOLD
PLATINUM” is being used to describe the four different levels an individual can
be awarded through applicant’s National Career Readiness Certificate program.
This is underlined by the manner in which the mark is being presented, namely,
“Bronze, Silver, Gold and Platinum”, which doesn’t lend itself to be viewed as a
whole mark, but rather individual words, and by the fact that the specimen states
that participants can earn these four different NCRC certificates. This use
conveys to consumers that these credential levels are part of the ACT National
Career Readiness Certificate program, and not the actual source of the credential
program.
Further, the second page of the specimen shows each of the words separated into
different sections listing out the requirements needed to obtain each ACT
National Career Readiness Certificate at each of those levels. This specimen in
particular highlights the use of the wording Bronze, Silver, Gold and Platinum to
indicate a level of achievement, membership or status that is widely used across
industries to indicate the exact same thing.
(Doc. 83, at 808 (internal citations omitted); see also id. at 743 (almost identical language
pertaining to “PLATINUM GOLD SILVER BRONZE”).)
After the initial rejections, ACT submitted its responses to the USPTO’s nonfinal
Office Actions. As part of its response, ACT requested that its Trademark Applications
for “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” be amended to seek
registration of the terms as “certification marks,” rather than “service marks.” (Doc. 83,
at 148–150, 297–99, 491–93, 606–08.)
On May 14, 2019, the USPTO issued further nonfinal Office Actions in which it
rejected “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” as certification marks:
Applicant’s response does not show that others are authorized to use the appliedfor mark and provide the applied-for services as the argument and exhibits
provided both indicate that applicant utilizes and issues the applied-for mark.
Specifically, applicant states that to earn an ACT NCRC credential at one of the
four levels, consumers must successfully complete three ACT Work Keys

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assessments. Based on applicant’s Exhibit B evidence, it appears as though
applicant is providing the educational training related to this credential as it is the
one conducting the courses needed to pass the required assessments and
ultimately the party that conveys the credential to the consumer. See Pages 15-19
of applicant’s response. It does not appear from this evidence or the rest of the
exhibit that the mark is being used by other persons on their own services, with
authorization from applicant.
....
Lastly, a certification mark specimen must show how an authorized party other
than the owner uses the mark in commerce to certify “regional or other origin,
material, mode of manufacture, quality, accuracy, or other characteristics of that
person’s goods or services; or that members of a union or other organization
performed the work or labor on the goods or services.” 37 C.F.R. §2.56(bX5);
TMEP §1306.02(aXi)(B).
In the present case, the specimen consists of a certificate issued by applicant. The
specimen does not show proper certification mark use because it highlights the
fact that applicant is using the applied-for mark on a certificate that it provides to
consumers. There is nothing showing that the mark [is] used by others on their
own services.
In this case, applicant is performing the services in connection with which the
mark is used and thus is not a certification mark. See TMEP §1306.01(a).
(Doc. 88-6, at 59 (“BRONZE”); see also Doc. 88-10, at 6 (“PLATINUM”); Doc. 88-11, at 13
(“GOLD”); Doc. 88-13, at 1 (“SILVER”).) The USPTO also issued further nonfinal Office
Actions with respect to “BRONZE SILVER GOLD PLATINUM,” and “PLATINUM GOLD
SILVER BRONZE,” reiterating its conclusion that the applied-for marks, “as used on the
specimen of record,” do not indicate the source of ACT’s services or identify and distinguish
them from others:
The applied-for mark, as shown on the specimen, does not function as a
trademark because the mark simply appears as various levels or performance
designators rather than the source of the applied-for services. The term
“PLATINUM GOLD SILVER BRONZE” does not appear to indicate the source
of the services as each work is placed separately from each other and is placed in
a “level of proficiency” category that invites consumers to view them as
achievement designators rather than source designators. ACT, WORKKEYS,
NCRC, or ACT WORKKEYS NCRC appear to be the source designators here as

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the specimen states that “the ACT NCRC is awarded at four levels”. Thus,
consumers view ACT NCRC as the source and “PLATINUM GOLD SILVER
BRONZE” as merely the levels of achievement.
(Doc. 88-8, at 5–6 (““PLATINUM GOLD SILVER BRONZE”); see also Doc. 88-9, at
9–10 (“BRONZE SILVER GOLD PLATINUM”).
In Counts III through V of its amended complaint,3 ACT asserts claims against
WIN under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), for: (1) unfair
competition by infringement; (2) use of false designation; and (3) false advertising.4
(Doc. 121, at 39–47.) WIN filed a motion for partial summary judgment only as to these
claims (Doc. 80), and this motion is now ripe for the Court’s review.
II.

STANDARD OF REVIEW
Summary judgment is proper when “the movant shows that there is no genuine dispute as

to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a). The Court views the evidence in the light most favorable to the nonmoving party and
makes all reasonable inferences in favor of the nonmoving party. Matsushita Elec. Indus. Co.,
Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Nat’l Satellite Sports, Inc. v. Eliadis Inc.,
253 F.3d 900, 907 (6th Cir. 2001).

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Although WIN initially moved for summary judgment on Counts II through IV (see Doc. 80),
ACT has since filed an amended complaint, and the claims on which WIN seeks summary
judgment are now Counts III through V (see Doc. 121). During a telephone conference with the
Court, the parties agreed that ACT’s amendment did not change the substance of the Lanham Act
claims and WIN’s motion for summary judgment remains ripe for review.
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Count V of ACT’s complaint alleges “false advertising” under the Lanham Act based on
WIN’s use of the alleged trademarks “PLATINUM GOLD SILVER BRONZE,” “BRONZE
SILVER GOLD PLATINUM,” “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE,” as well
as statements by WIN concerning alignment of WIN’s and ACT’s respective products. (Doc.
121, at 43–47.) However, WIN only seeks summary judgment with respect to ACT’s false
advertising claim premised on WIN’s alleged use of “PLATINUM GOLD SILVER BRONZE,”
“BRONZE SILVER GOLD PLATINUM,” “PLATINUM,” “GOLD,” “SILVER,” and
“BRONZE.” (Doc. 81, at 1 n.1.)
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The moving party bears the burden of demonstrating that there is no genuine dispute as to
any material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Leary v. Daeschner, 349
F.3d 888, 897 (6th Cir. 2003). The moving party may meet this burden either by affirmatively
producing evidence establishing that there is no genuine issue of material fact or by pointing out
the absence of support in the record for the nonmoving party’s case. Celotex, 477 U.S. at 325.
Once the movant has discharged this burden, the nonmoving party can no longer rest upon the
allegations in the pleadings; rather, it must point to specific facts supported by evidence in the
record demonstrating that there is a genuine issue for trial. Chao v. Hall Holding Co., Inc., 285
F.3d 415, 424 (6th Cir. 2002).
At summary judgment, the Court may not weigh the evidence; its role is limited to
determining whether the record contains sufficient evidence from which a jury could reasonably
find for the non-movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248–49 (1986). A mere
scintilla of evidence is not enough; the Court must determine whether a fair-minded jury could
return a verdict in favor of the non-movant based on the record. Id. at 251–52; Lansing Dairy,
Inc. v. Espy, 39 F.3d 1339, 1347 (6th Cir. 1994). If not, the Court must grant summary
judgment. Celotex, 477 U.S. at 323.
III.

ANALYSIS
A.

Timing of WIN’s Motion for Partial Summary Judgment

As a threshold matter, ACT argues that summary judgment is improper at this stage
because, at the time of WIN’s filing, there were eleven weeks remaining until the close of
discovery and “ACT has been producing documents on a rolling basis.” (Doc. 88, at 11–13.)
ACT also asserts that WIN has taken no depositions in this case. (Id. at 13.) In response, WIN
contends that ACT has not complied with the requirements of Rule 56(d) of the Federal Rules of

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Civil Procedure, including the filing of a sworn affidavit or declaration setting forth the
“specified reasons” why it cannot adequately defend a motion for summary judgment. (Doc. 90,
at 3–5.) WIN also argues that ACT’s current position is, in large part, due to its own failure to
cooperate with discovery. (Id. at 3, 5.)
A litigant complaining that summary judgment is premature due to inadequate discovery
“must, at a minimum, be able to show that [it] could obtain information through discovery that
would disclose material facts.” Phillips v. Anderson Cty. Bd. of Educ., 259 F. App’x 842, 846
(6th Cir. 2008) (citing Sierra Club v. Slater, 120 F.3d 623, 638 (6th Cir. 1997)). “In other words,
a plaintiff opposing a motion for summary judgment cannot simply argue that it needs more
discovery—instead, the plaintiff must file a Rule [56(d)] affidavit or a motion that indicates to
the district court ‘what material facts it hopes to uncover’ by the additional discovery requested.”
Short v. Oaks Corr. Facility, 129 F. App’x 278, 281 (6th Cir. 2005). In Short, the plaintiff filed
a response to the motions for summary judgment, but did not file a Rule 56(d) affidavit; rather
she “simply requested that she be given the opportunity for adequate discovery in the case, but
did not request any specific discovery and did not in any way state what material facts she hoped
to uncover as a result of additional discovery.” Id. at 282. As a result, the Sixth Circuit
determined the district court did not abuse its discretion in ruling on the motions for summary
judgment. Id. Likewise, in this case, ACT has neither filed a Rule 56(d) motion nor specified
what facts it seeks to uncover from further discovery. Accordingly, the Court finds no basis to
defer ruling on WIN’s motion for partial summary judgment.5

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Although the Sixth Circuit “has suggested that failure to file a motion or Rule 56[(d)] affidavit
will be excused where the opposing party nonetheless explains its need for discovery,” Short,
129 F. App’x at 282 n.2, ACT has not satisfied this minimum threshold.

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B.

Federal Trademark Infringement

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), creates a “federal cause of action
for infringement of marks and trade dress that have not obtained federal registration.”
T. Marzetti Co. v. Roskam Baking Co., 680 F.3d 629, 633 (6th Cir. 2012) (citing Tumblebus v.
Cranmer, 399 F.3d 754, 760–61 (6th Cir. 2005)). Specifically, Section 43(a) provides that:
(1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false designation of origin, false or
misleading description of fact, or false or misleading representation of fact,
which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person,
or as to the origin, sponsorship, or approval of his or her goods, services,
or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is
likely to be damaged by such act.
15 U.S.C. § 1125. “When evaluating a Lanham Act claim for infringement of an unregistered
mark, courts must determine whether the mark is protectable, and if so, whether there is a
likelihood of confusion as a result of the would-be infringer’s use of the mark.” T. Marzetti Co.,
680 F.3d at 633 (citation omitted). Thus, the threshold inquiry for any infringement claim under
this section is whether the mark in question is protectable. Id. (“Obviously, if the mark is not
protectable, our inquiry ends there.”); see also Donchez v. Coors Brewing Co., 392 F.3d 1211,
1215–16 (10th Cir. 2004); Rockland Exposition, Inc. v. All. of Auto. Serv. Providers of New
Jersey, 894 F. Supp. 2d 288, 304 (S.D.N.Y. 2012), as amended (Sept. 19, 2012). It is the

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plaintiff’s burden to demonstrate that an unregistered term is protectable under Section 43(a).
E.g.. Donchez, 392 F.3d at 1216.
“Not every single word, phrase, design or picture that appears on a label, webpage or in
an advertisement qualifies as a protectable mark . . . .” 3 McCarthy on Trademarks and Unfair
Competition § 3:4 (5th ed. 2019). “[T]he general principles qualifying a mark for registration
under . . . the Lanham Act are for the most part applicable in determining whether an
unregistered mark is entitled to protection under § 43(a).” Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 768 (1992). A designation that is used to identify and distinguish the source of
services can be federally registered as a “service mark.” 3 McCarthy on Trademarks and Unfair
Competition § 4:7 (5th ed. 2019). In other words, such a designation is protectable. Likewise, a
designation that is used to certify “regional or other origin, material, mode of manufacture,
quality, accuracy, or other characteristics of such person’s goods or services or that the work or
labor on the goods or services was performed by members of a union or other organization” can
be federally registered or is protectable as a certification mark. Id. § 4.8.
As a threshold issue, WIN relies heavily on the logic in the USPTO’s Office Actions
rejecting ACT’s federal trademark applications. (Doc. 81, at 17–19.) But “a trademark
examining attorney’s opinion is not entitled to a procedural presumption or a reasonable
inference drawn in its favor in circumstances when the USPTO fails to consider the same
evidence that is subsequently placed in front of the district court.” Progressive Distrib. Servs.,
Inc. v. United Parcel Serv., Inc., 856 F.3d 416, 426 (6th Cir. 2017) (citation omitted). The same
is true when the examiner’s decision is a preliminary one that does “not even bind the examiner,
let alone speak with the full weight of the Trademark Trial and Appeal Board.” Id. at 427.

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Here, the USPTO Office Actions at issue are all nonfinal. (Doc. 83, at 246, 436, 572,
672, 742, 810; Doc. 88-6, at 59; Doc. 88-8, at 3; Doc. 88-9, at 7; Doc. 88-10, at 5; Doc. 88-11, at
12, Doc. 88-12, at 19); see also United States Patent and Trademark Office, Responding to office
actions, https://www.uspto.gov/trademarks-maintaining-trademark-registration/respondingoffice-actions (June 7, 2019) (describing that an applicant has six months to respond to a
nonfinal office action). Additionally, ACT has submitted extensive evidence to this Court that
was not before the USPTO when it issued its Office Actions. (Doc. 83, at 867–918; Doc. 83-1,
at 1–283; Doc. 83-2, at 1–223; Doc. 83-3, at 1–229; Doc. 88-1, at 10–105; Doc. 88-2, at 1–88;
Doc. 88-3, at 1–33; Doc. 88-4, at 1–56; Doc. 88-5, at 1–56; Doc. 88-6, at 1–59; Doc. 88-7, at 1–
18; Doc. 88-8, at 1–22; Doc. 88-9, at 1–21; Doc. 88-10, at 1–15; Doc. 88-11, at 1–15; Doc. 8812, at 1–19; Doc. 88-13, at 1–13; Doc. 88-14, at 1–200; Doc. 88-15, at 1–75.) Accordingly,
although the Court may look to the USPTO Office Actions “to inform its conclusions on
trademark analysis,” Progressive, 856 F.3d at 427, it will not assign them any weight in
analyzing the instant motion for summary judgment.6 Accord A & H Sportswear, Inc. v.
Victoria’s Secret Stores, Inc., 237 F.3d 198, 221 (3d Cir. 2000) (“[A]lthough an initial PTO

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ACT also argues—in response to WIN’s reliance on the USPTO Office Actions—that, even if
the USPTO ultimately denies its trademark applications, it may still have valid trademarks if it
can demonstrate “prior continuous use of its mark.” (Doc. 88, at 13–14.) However, this priority
argument is inapposite; it presupposes that both WIN and ACT are using the alleged marks as
trademarks, but whether ACT uses “PLATINUM,” “GOLD,” “SILVER,” “BRONZE,”
“PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM” as
trademarks is precisely the issue WIN raises in its motion for partial summary judgment. Cf.
LFP IP, LLC v. Hustler Cincinnati, Inc., 810 F.3d 424, 429 (6th Cir. 2016) (affirming district
court’s finding that plaintiff’s mark was valid despite USPTO’s denial because he “presented
evidence that he used the mark in connection with a wide range of [products]”); see also Rock &
Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753–54 (6th Cir. 1998)
(plaintiff alleging infringement of a service mark “must show that it has actually used the
designation at issue as a trademark”).
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determination by an examining attorney may be considered, it need not be given weight when the
PTO attorney did not review all the evidence available to the District Court.”).
WIN argues that it is entitled to summary judgment on ACT’s trademark-infringement
claim because the terms “PLATINUM,” “GOLD,” “SILVER,” “BRONZE,” and the phrases
“PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM,” are
not used by ACT as trademarks, either as service marks or certification marks. WIN asserts that
ACT cannot establish that these words and phrases are protectable. (Doc. 81, at 1–2, 14–21.)
Thus, the Court’s analysis of WIN’s motion for summary judgment on ACT’s infringement
claim necessarily begins with the question of whether ACT has a valid, protectable trademark,
whether defined as a service mark or a certification mark.
i.

Whether ACT Used “PLATINUM GOLD SILVER BRONZE” and
“BRONZE SILVER GOLD PLATINUM” as Service Marks

WIN argues that ACT does not use the words “BRONZE,” “SILVER,” “GOLD,” or
“PLATINUM” or the phrases “PLATINUM GOLD SILVER BRONZE” and “BRONZE
SILVER GOLD PLATINUM” as service marks. Although ACT maintains that it uses
“PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM” as
service marks, it does not attempt to argue that any one of “BRONZE,” “SILVER,” “GOLD,” or
“PLATINUM” is a service mark. Instead, as discussed more fully below, ACT argues only that
“BRONZE,” “SILVER,” “GOLD,” and “PLATINUM” individually qualify as certification
marks. (Doc. 88, at 15–25.) Accordingly, ACT has abandoned any argument that “BRONZE,”
“SILVER,” “GOLD,” or “PLATINUM” is a service mark. See Emerson v. Novartis Pharm.
Corp., 446 F. App’x 733, 736 (6th Cir. 2011) (“A district court is not required to ‘search the
entire record to establish that it is bereft of a genuine issue of material fact.’”); United States v.

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Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried
in briefs.”).
The Lanham Act defines a service mark as a mark used “to identify and distinguish the
services of one person, including a unique service, from the services of others and to indicate the
source of the services, even if that source is unknown.” 15 U.S.C. § 1127 (emphasis added).
“A ‘service mark’ is identical to a trademark in all respects except that it is intended to indicate
the origin of services, rather than goods.” Caliber Auto. Liquidators, Inc. v. Premier Chrysler,
Jeep, Dodge, LLC, 605 F.3d 931, 934 (11th Cir. 2010) (citation omitted). For example,
“TENNESSEE WALKING HORSE BREEDERS’ AND EXHIBITORS’ ASSOCIATION” is
used as a service mark in connection with specific services including maintenance of the
TWHBEA Registry, sporting events, and competitions for the Tennessee Walking Horse. See
Tennessee Walking Horse Breeders’ & Exhibitors’ Ass’n v. National Walking Horse Ass’n, 528
F. Supp. 2d 772, 775 (M.D. Tenn. 2007); see also Lebewohl v. Heart Attack Grill LLC, 890 F.
Supp. 2d 278, 290 (S.D.N.Y. 2012) (describing that the “Instant Heart Attack Sandwich”
possesses dimensions of a service mark because “[t]he sandwich is, at once, a product that can be
readily identified as a . . . part of the services offered by the Deli, a service establishment, to
patrons”).
To claim a valid service mark, or to have a protectable mark, it is not enough for ACT “to
be a provider of services; [ACT] also must have used the mark to identify the named services . .
. .” In re Advert. & Mktg. Dev., Inc., 821 F.2d 614, 620 (Fed. Cir. 1987) (emphasis added)
(holding that advertising firm had used THE NOW GENERATION as a mark for its promotional
services based on letterhead naming itself as the “creators, producers and suppliers of THE
NOW GENERATION sales promotion services” as well as “postcard and magazine advertising

14

specimens to the same effect”); see, e.g., St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson,
573 F.3d 1186, 1207 (11th Cir. 2009) (holding that plaintiff produced sufficient evidence for a
jury to find that its use of “LaserSpecialist.com” was a service mark where it used the mark on
its website “to identify St. Luke’s as a source of oculoplastic surgery”). In other words, a
plaintiff alleging infringement of a service mark “must show that it has actually used the
designation at issue as a trademark [or service mark].” Rock & Roll Hall of Fame & Museum,
Inc. v. Gentile Prods., 134 F.3d 749, 753–54 (6th Cir. 1998) (emphasis in original); accord Am.
Express Co. v. Goetz, 515 F.3d 156, 159 (2d Cir. 2008) (describing that “a mark that does not
perform the role of identifying a source is not a trademark”).
Specifically, WIN argues that ACT’s alleged marks “merely indicate levels of
achievement and are not source indicative.” (Doc. 81, at 18.) In response, ACT argues that it
has used the phrases “PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD
PLATINUM” since at least 2009 to “denote the source of its national career readiness
certification program.” (Doc. 88, at 24.) ACT also points to multiple sources it contends show it
uses “PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM”
as service marks, including advertisements and marketing materials, employer guides, technical
documentation, and evidence from third parties showing that these phrases create “the
commercial impression of a source-indicator to the relevant public.” (Id.)
“Unlike trademarks, service marks usually cannot be ‘affixed’ or displayed in close
connection with the services, so advertisements and solicitations are often used as evidence of
use.” Am. Express, 515 F.3d at 161; see also In Re Moody’s Inv’rs Serv. Inc., 13 U.S.P.Q.2d
2043 (T.T.A.B. 1989) (“Whether a designation sought to be registered has been used as a mark
for the goods or services recited in an application must be determined by examining the

15

specimens of record in the application.”). For example, in Advertising & Marketing, the Federal
Circuit held that the Trademark and Trial Appeal Board erred in refusing to allow the plaintiff to
register his alleged service mark and determined that the plaintiff had in fact used THE NOW
GENERATION as a mark for its promotional services after reviewing the plaintiff’s submitted
evidence:
[The plaintiff] submitted a letterhead specimen naming itself as the “creators,
producers and suppliers of THE NOW GENERATION sales promotion services
and specialized advertising campaigns for automobile dealers, financial
institutions and retailers.” This letterhead was actually used in correspondence
with financial institutions and automobile dealers regarding [the plaintiff’s]
promotional services. It is difficult to imagine how [the plaintiff] could have
made a clearer use of the mark to identify its promotional services. However, if
any doubt remained, on remand [the plaintiff] submitted postcard and magazine
advertising specimens to the same effect, as well as affidavits from purchasers of
[its] services stating that they considered THE NOW GENERATION to identify
[the plaintiff’s] promotional services.
821 F.2d at 621. Similarly, in Rockland Exposition, the district court denied summary judgment,
finding that the plaintiff had provided at least some evidence to show it used “Northeast” in
connection with its service of organizing and promoting automotive trade shows because the
show promotional materials identified the plaintiff as the show’s producer and displayed its
“Northeast” slogan to consumers. 894 F. Supp. 2d at 304.
Thus, determining whether ACT utilizes “PLATINUM GOLD SILVER BRONZE” and
“BRONZE SILVER GOLD PLATINUM” as service marks requires a review of the
specimens—the advertisements, employer guides, technical documentation, and evidence from
third parties—that ACT relies on. WIN does not specifically address any of ACT’s
supplemental evidence in its reply. (See generally Doc. 90.) Instead, WIN reverts to its
argument that the USPTO has so far rejected ACT’s Trademark Applications and argues
generally that ACT fails “to identify any evidence” that it uses ‘PLATINUM GOLD SILVER

16

BRONZE’ and ‘BRONZE SILVER GOLD PLATINUM’ in any way other than as ‘levels of
achievement on its [NCRC].’” (Doc. 90, at 2, 6.)
After conducting an independent review of the evidence pointed to by ACT, the Court is
unconvinced that ACT uses “PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER
GOLD PLATINUM” as service marks. Specifically, it does not appear that ACT uses
“PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM” to
identify or designate the source of its stated service of “[p]roviding an assessment-based
credential which measures and certifies the essential work skills needed for success in jobs
across multiple industries and occupations.” (Doc. 83, at 261, 308, 585, 684, 754, 821.) Rather,
like the specimens previously submitted to the USPTO in its Trademark Applications, the
supplemental specimens before the Court all appear to use “PLATINUM GOLD SILVER
BRONZE” and “BRONZE SILVER GOLD PLATINUM” as levels of achievement rather than
as marks used “to identify and distinguish the services of [ACT] . . . from the services of others
and to indicate the source of the services . . . .” 15 U.S.C. § 1127 (emphasis added).
For example, one of ACT’s marketing materials—under a bolded “National Career
Readiness Certificate” heading—describes that “[r]ecipients are awarded certificates of
Platinum, Gold, Silver, or Bronze levels, depending on their skill levels in Applied
Mathematics, Reading for Information, and Locating Information.” (Doc. 83-1, at 84.)
Similarly, another of ACT’s marketing materials describes that the ACT NCRC is “[a]warded at
four levels—Platinum, Gold, Silver, and Bronze” and goes on to describe the “score” recipients
must achieve in order to reach that level. (Id. at 88–89.)
Yet another example, an employer guide cited by ACT, discusses Bronze, Silver, Gold,
and Platinum only with reference to the levels at which individuals can earn NCRC certificates.

17

(Doc. 83, at 889.) And a research study cited by ACT includes the “Platinum,” “Gold,” “Silver,”
“Bronze,” levels in a bar graph demonstrating the “Percent of NCRC Qualifiers by NCRC
Level.” (Doc. 83-2, at 9.) ACT also highlights three pieces of evidence from third parties, but
each of these specimens displays or discusses the alleged marks only in the context of an
achievement level. For example, an article notes that “[f]or any participating county, ACT’s
Work Ready Communities website displays a list of employers in an area who recognize the
credential, as well as the number of individuals who have achieved one of four levels of NCRC
certification, based on test results: bronze, silver, gold or platinum.” (Doc. 83, at 906; see also
Doc. 83-1, at 81; Doc. 83-3, at 173.) Based on the similarity between the supplemental
specimens before the Court and the specimens submitted to USPTO, the Court agrees with and
adopts the USPTO’s reasoning that the applied-for marks do not function as service marks
because the wording “BRONZE SILVER GOLD PLATINUM” and “PLATINUM GOLD
SILVER BRONZE”:
is being used to describe the four different levels an individual can be awarded
through applicant’s National Career Readiness Certificate program. This is
underlined by the manner in which the mark is being presented, namely, “Bronze,
Silver, Gold and Platinum”, which doesn’t lend itself to be viewed as a whole
mark, but rather individual words, and by the fact that the specimen states that
participants can earn these four different NCRC certificates. This use conveys to
consumers that these credential levels are part of the ACT National Career
Readiness Certificate program, and not the actual source of the credential
program.
(Doc. 83, at 808 (internal citations omitted); see also id. at 743 (almost identical language
pertaining to “PLATINUM GOLD SILVER BRONZE”).) Moreover, in many, if not all, of the
specimens submitted by ACT, the terms “PLATINUM GOLD SILVER BRONZE” and
“BRONZE SILVER GOLD PLATINUM” are not set off from the text or are not a main focal
point. This factor further weighs against its use as a service mark. See Rockland Exposition, 894

18

F. Supp. 2d at 307; see also In Re Post Properties, Inc., 227 U.S.P.Q. (BNA) ¶ 334 (T.T.A.B.
Aug. 30, 1985) (“We find this use of “QUALITY SHOWS” to be used in the manner of a service
mark. The mark is set off distinctively from the text of the ad copy in an extremely large
typeface. It is not an ordinary informational statement.”). The Court finds “PLATINUM GOLD
SILVER BRONZE,” and “BRONZE SILVER GOLD PLATINUM” are not service marks. It
will therefore GRANT WIN’s motion for partial summary judgment on ACT’s claim that WIN
infringed “PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD
PLATINUM.”
ii.

Whether “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” Are
Certification Marks

The Lanham Act defines a certification mark as a mark used “by a person other than its
owner” or “which its owner has a bona fide intention to permit a person other than the owner to
use in commerce” to “certify regional or other origin, material, mode of manufacture, quality,
accuracy, or other characteristics of such person’s goods or services or that the work or labor on
the goods or services was performed by members of a union or other organization.” 15 U.S.C. §
1127 (emphasis added). “A certification mark is a special creature created for a purpose very
different from that of an ordinary trademark or service mark. It is a mark owned by one person
and used by others in connection with their goods or services to certify quality, regional or other
origin.”7 3 McCarthy on Trademarks and Unfair Competition § 19:91 (5th ed. 2019); see also
Restatement (Third) of Unfair Competition § 11 (1995) (“Certification marks indicate that a

7

There are three primary types of certification marks: (1) “[t]he ‘Underwriters Laboratories’type certification of quality of goods or services”; (2) “[t]he “Roquefort Cheese”-type of
certification of regional origin”; and (3) “[t]he ‘Union Label’-type certification that goods were
made or services performed by union labor.” 3 McCarthy on Trademarks and Unfair
Competition § 19:91 (5th ed. 2019).
19

person other than the producer or seller of the goods or services certifies that the product meets
the criteria established for authorized use of the certification mark.”). For example, “BBB” is
registrable as a certification mark used to indicate to investors that securities meet the standards
established by Standard and Poor’s. See In re Standard and Poor’s Corp., 19 U.S.P.Q.2d 1684
(T.T.A.B. 1991).
Certification marks are “generally entitled to the same kind of protection from
infringement as are other types of marks.” Id. § 19:92.50; see also Int’l Info. Sys. Sec.
Certification Consortium, Inc. v. Sec. Univ., LLC, 823 F.3d 153, 159–60 (2d Cir. 2016) (“In spite
of the differences between certification marks and other types of marks, the Lanham Act
provides that certification marks are generally entitled to the same protection from infringement
as are trademarks.”). The most common examples of infringement of certification marks are
“the use of the mark in a resume of a professional who is in fact not certified by the organization
that is the owner of the mark; and the use of the mark on goods that have not in fact been
certified.” Id. at 163 (citation omitted).
WIN argues that it is entitled to summary judgment on ACT’s claim for infringement
based on WIN’s use of “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” because ACT
uses these terms only as indications of levels of achievement.8 WIN relies on § 1306 of the
USPTO’s Trademark Manual of Examining Procedure (“TMEP”), which describes that, like the
requirement for trademark and service marks, a mark cannot be registered if:

8

WIN also appears to argue in its motion that ACT did not adequately plead ownership of
“PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” as certification marks in its complaint.
However, in its reply, WIN focuses only on the merits of whether “PLATINUM,” “GOLD,”
“SILVER,” and “BRONZE” are certification marks. Nevertheless, the Court finds that ACT did
adequately allege ownership of “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” as
certification marks.
20

the specimen fails to show the applied-for mark functioning as a certification
mark . . . . For example, registration should be refused on this basis where the
specimen shows use only as an educational or other degree or title awarded to
individuals, and not use as a certification mark. Titles and degrees indicate
qualifications or attainments of a person; they do not pertain to or certify services
that have been performed by the person. See TMEP §1306.04(d)(ii).
TMEP § 1306.04 (emphasis added). However, § 13.04(d)(ii) also describes that:
Occasionally, it is not clear whether a term is being used to certify that work or
labor relating to the goods or services was performed by someone meeting certain
standards or by members of a union or other organization to indicate membership,
or whether the term is merely being used as a title or a degree of the performer to
indicate professional qualifications. Matter that might appear to be simply a title
or a degree may function as a certification mark if used in the proper
manner. See In re Council on Certification of Nurse Anesthetists, 85 USPQ2d
1403 (TTAB 2007) (CRNA functions as certification mark used to certify that
anesthesia services are being performed by a person who meets certain standards
and tests of competency); In re Software Publishers Ass’n, 69 USPQ2d 2009
(TTAB 2003) (CERTIFIED SOFTWARE MANAGER used on certificate merely
indicates that holder of the certificate has been awarded a title or degree, and is
not likely to be perceived as certification mark); In re Nat’l Ass’n of Purchasing
Mgmt., 228 USPQ 768 (TTAB 1986) (C.P.M. used merely as title or degree, not
as certification mark); In re Nat’l Ass’n of Legal Secretaries (Int’l), 221 USPQ 50
(TTAB 1983) (PROFESSIONAL LEGAL SECRETARY not used on the
specimen in such a way as to indicate certification significance); In re Nat’l Inst.
for Auto. Serv. Excellence, supra (design mark not used simply as a degree or
title, but to certify that the performer of the services had met certain standards); In
re Inst. of Certified Prof’l Bus. Consultants, 216 USPQ 338 (TTAB 1982) (CPBC
not used as a certification mark for business consulting services, but only as a title
or degree); In re Prof’l Photographers of Ohio, Inc., 149 USPQ 857 (TTAB
1966) (CERTIFIED PROFESSIONAL PHOTOGRAPHER used only as the title
of a person, not as a certification mark); cf. In re Univ. of Miss., 1 USPQ2d 1909
(TTAB 1987) (use of university seal on diplomas did not represent use as a
certification mark).
TMEP § 13.04(d)(ii) (emphasis added).9 “[T]he TMEP is instructive, but ‘is not established
law.’” In re Sones, 590 F.3d 1282, 1288 (Fed. Cir. 2009) (quotation omitted). Nevertheless, the

9

Also, although not raised by WIN in its initial motion, the USPTO denied ACT’s Trademark
Application in its nonfinal Office Action noting that:
[A] certification mark specimen must show how an authorized party other than
the owner uses the mark in commerce to certify “regional or other origin,
material, mode of manufacture, quality, accuracy, or other characteristics of that
21

TMEP represents the USPTO’s established policies, and Courts regularly follow its guidance.
See In re Pennington Seed, Inc., 466 F.3d 1053, 1059 (Fed. Cir. 2006) (deciding to follow the
TMEP’s guidance and describing that, although “the TMEP is not established law,” it does
represent the USPTO’s “established policy . . . that is entitled to [the court’s] respect”).
In response to WIN, ACT argues that “PLATINUM,” “GOLD,” “SILVER,” and
“BRONZE” are certification marks because they are used by job seekers “to certify (with ACT’s
authorization) that such job seekers’ services meet certain employment and/or educational
qualifications set by ACT.” (Doc. 88, at 16.) ACT cites In re Council on Certification of Nurse
Anesthetists, 85 U.S.P.Q.2d 1403, 2007 WL 894418 (T.T.A.B. 2007), in support, arguing that it
has proffered evidence similar to that which the TTAB found sufficient to establish “CRNA” as
a certification mark in that case. In Nurse Anesthetists, the TTAB considered a certificate issued
to certified registered nurse anesthetists that indicates the holder has satisfied requirements for
certification and is entitled to recognition as a CRNA, as well as brochures and certificates
CRNAs display at their businesses which describe that CRNAs are “advanced practice nurses
with specialized graduate-level education in anesthesiology.” Id. at *8. Based on this evidence,

person’s goods or services; or that members of a union or other organization
performed the work or labor on the goods or services.” 37 C.F.R. §2.56(bX5);
TMEP §1306.02(aXi)(B).
In the present case, the specimen consists of a certificate issued by applicant. The
specimen does not show proper certification mark use because it highlights the
fact that applicant is using the applied-for mark on a certificate that it provides
to consumers. There is nothing showing that the mark used by others on their
own services.
(Doc. 88-6, at 59 (emphasis added).)

22

the TTAB reversed the USPTO’s refusal on the grounds that CRNA does not function as a
certification mark:10
We find that the sample certificate, brochure and above literature indicate that the
CRNA designation serves as a certification mark. The CRNA designation, when
used by a nurse anesthetist certified by applicant, serves to certify a characteristic
of anesthesia services performed by him/her, namely that the services are being
performed by a person who meets certain standards and tests of competency set
by applicant, an indication that the nurse anesthesia services being performed are
of the highest quality. Applicant has stated that the certificate and brochure, in
particular, are displayed by certified registered nurse anesthetists at their places of
business. The certificate and brochure, along with applicant’s literature
concerning its standards and competency tests, serve to demonstrate that the
CRNA designation would be perceived as a certification mark by the ultimate
recipients of the services, namely surgical patients, and doctors and hospital
administrators.
Id. at *10.
“[A] certification mark for services must be used in a manner analogous to that of a
service mark, namely in the sale or advertising of the services rendered.” In Re Software
Publishers Assoc., 69 U.S.P.Q.2d 2009 (T.T.A.B. 2003). “The crucial question in these types of
cases is whether the mark is used in such a manner that it would be perceived by the relevant
purchasing public as a certification mark or rather if the use reflects that it would be perceived
as merely a title or degree held by the bearer thereof.” Id. (emphasis added). This question
“must be determined on the basis of the manner and context in which the designation is used, as
revealed by the specimens and other literature of record, and the significance which the
designation is likely to have to members of the relevant public because of the manner in which it
is used.” Id. Accordingly, just as in deciding the service-mark issue, the Court must examine
the evidence proffered by ACT to determine whether “PLATINUM,” “GOLD,” “SILVER,” and
“BRONZE” are functioning as certification marks. Although much of the evidence submitted by

10

Ultimately, registration of CRNA was refused on alternative grounds. Id. at *15–*16.
23

ACT illustrates that ACT—the owner—is using “PLATINUM,” “GOLD,” “SILVER,” and
“BRONZE,” there are several pieces of evidence that create at least a genuine issue of material
fact as to whether “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE” are used by an
authorized party other than ACT—the job seekers—to certify that their workplace skills are of a
certain quality.
ACT submitted an example of the certificate that individuals receive after earning the
NCRC at different levels which reads: “ACT certifies that Jane P. Sample has earned the ACT
National Career Readiness CertificateTM at the Silver level,” (Doc. 83-3, at 225), as well as
evidence that at least some of these individuals have used their certificates to obtain jobs. (See
Doc. 88-3, at 2 (“More than 14,000 Georgians found work using their certificates during the oneyear period of January 1 to December 31, 2010”).) ACT also points to a review of its WorkKeys
program by two external experts, commissioned by ACT, that describes that “ACT has combined
three of the WorkKeys assessments — Reading for Information, Applied Mathematics, and
Locating Information — to develop a portable credential that prospective employees can use to
show employers that they have attained a certain level of core employability skills.” (Doc. 8814, at 140.) Although not strong, this evidence raises a question of fact as to whether the
relevant purchasing public—prospective employers—would perceive “PLATINUM,” “GOLD,”
“SILVER,” and “BRONZE” as certification marks or merely as a title or degree held by the
certificate holder. Accordingly, the Court will DENY WIN’s motion for summary judgment on
this claim.
C.

False Designation of Origin

Claims for false designation of origin are resolved under the same standard as claims for
infringement. Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F. Supp. 2d 671, 688

24

n.17 (W.D. Ky. 2010), aff’d, 679 F.3d 410 (6th Cir. 2012); see also Children’s Legal Servs.
PLLC v. Kresch, 545 F. Supp. 2d 653, 660 (E.D. Mich. 2008), aff’d sub nom. Children’s Legal
Servs., P.L.L.C. v. Saiontz, Kirk & Miles, P.A., No. 08-1677, 2009 WL 1868809 (6th Cir. June
18, 2009). Thus, validity or protectability of a trademark is a threshold issue in resolving claims
for false designation of origin. T. Marzetti Co., 680 F.3d at 633. Because the Court determined
that “PLATINUM GOLD SILVER BRONZE,” and “BRONZE SILVER GOLD PLATINUM”
are not service marks, it will GRANT WIN’s motion for partial summary judgment on ACT’s
false-designation-of-origin claim with respect to “PLATINUM GOLD SILVER BRONZE,” and
“BRONZE SILVER GOLD PLATINUM.” Conversely, it will DENY WIN’s motion for partial
summary judgment on ACT’s false designation of origin claim with respect to “PLATINUM,”
“GOLD,” “SILVER,” and “BRONZE” because there remains a genuine dispute of material fact
as to the protectability of “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE.”11
D.

False Advertising

False-advertising claims under the Lanham Act require a plaintiff to establish that:
(1) “the defendant has made false or misleading statements of fact concerning his own product or
another’s”; (2) “the statement actually deceives or tends to deceive a substantial portion of the
intended audience”; (3) “the statement is material in that it will likely influence a deceived
consumers’ purchasing decisions”; (4) “the advertisements were introduced into interstate
commerce”; and (5) “there is some causal link between the challenged statements and harm to
the plaintiff.” Balance Dynamics Corp. v. Schmitt Indus., Inc., 204 F.3d 683, 689 (6th Cir. 2000)

11

WIN did not argue that summary judgment was proper on this claim on any basis other than
that there is no protectable trademark. (See generally Doc. 81.)
25

(quoting Am. Council of Certified Podiatric Physicians & Surgeons v. Am. Bd. of Podiatric
Surgery, Inc., 185 F.3d 606, 613 (6th Cir. 1999)).
In its amended complaint, ACT alleges that “Defendants’ use of “PLATINUM GOLD
SILVER BRONZE” and “BRONZE GOLD SILVER PLATINUM” as well as “BRONZE,”
“SILVER,” “GOLD” and “PLATINUM,” in commercial advertising or promotion “is a
misrepresentation of the nature, characteristics, qualities or geographic origin of its goods,
services or commercial activities, in violation of 15 U.S.C. § 1125(a)(1)(B).” (Doc. 121, at 43–
44.) Thus, WIN’s “false or misleading statement of fact” alleged by ACT is that of a “false
designation of origin” stemming from an alleged violation of 15 U.S.C. § 1125(a)(1).
Accordingly, ACT’s success on this claim requires that it establish an underlying claim for false
designation of origin. In other words, ACT must establish ownership of a valid trademark. T.
Marzetti Co., 680 F.3d at 633.
As described above, because the Court determined that “PLATINUM GOLD SILVER
BRONZE” and “BRONZE SILVER GOLD PLATINUM” are not service marks, it granted
WIN’s motion for partial summary judgment on ACT’s false designation of origin claim with
respect to “PLATINUM GOLD SILVER BRONZE” and “BRONZE SILVER GOLD
PLATINUM.” Therefore, it will also GRANT WIN’s motion for partial summary judgment on
ACT’s false-advertising claim with respect to “PLATINUM GOLD SILVER BRONZE,” and
“BRONZE, SILVER, GOLD, PLATINUM.” However, the Court will DENY WIN’s motion for
partial summary judgment on ACT’s false designation of origin claim with respect to
“PLATINUM,” “GOLD,” “SILVER,” and “BRONZE because there remains a genuine dispute
of material fact as to the protectability of “PLATINUM,” “GOLD,” “SILVER,” and
“BRONZE.”

26

IV.

CONCLUSION
For the reasons set forth above, the Court GRANTS IN PART and DENIES IN PART

WIN’s motion for partial summary judgment (Doc. 80). ACT’s claims for infringement, false
designation of origin, and false advertising premised on WIN’s use of “PLATINUM GOLD
SILVER BRONZE” and “BRONZE SILVER GOLD PLATINUM” are hereby DISMISSED
WITH PREJUDICE. ACT’s claims for infringement, false designation of origin, and false
advertising premised on WIN’s use of “PLATINUM,” “GOLD,” “SILVER,” and “BRONZE”
will proceed to trial.
SO ORDERED.
/s/ Travis R. McDonough
TRAVIS R. MCDONOUGH
UNITED STATES DISTRICT JUDGE

27