Choice Hotels International, Inc. v. A Royal Touch Hospitality, LLC (NC) et al

Filing 41

MEMORANDUM OPINION. Signed by Judge Elizabeth K. Dillon on 08/26/2019. (ams)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF VIRGINIA
ROANOKE DIVISION
CHOICE HOTELS INTERNATIONAL, INC.,

)
)
Plaintiff,
)
)
v.
)
)
A ROYAL TOUCH HOSPITALITY, LLC (NC), )
A ROYAL TOUCH HOSPITALITY, LLC (VA), )
UJAS B. PATEL and KETKI PATEL,
)
)
Defendants.
)

Civil Action No.: 7:17-cv-381

MEMORANDUM OPINION
This is an action for trademark infringement filed by Choice Hotels International, Inc.
(Choice Hotels or Choice). Choice Hotels alleges that A Royal Touch Hospitality, LLC (NC) (A
Royal Touch (NC)), Ujas B. Patel, and Ketki Patel (the Franchisee Defendants) continued using
Choice’s trademarks after their franchise agreement with Choice was terminated. Choice also
alleges that A Royal Touch Hospitality, LLC (VA) (A Royal Touch (VA)), a related non-franchisee,
made unauthorized use of Choice’s marks. Choice moves for summary judgment. (Mot. Summ. J.,
Dkt. No. 36.) Defendants are not represented by counsel, and none of the defendants responded to
Choice’s motion for summary judgment.1
For the reasons stated below, the court will grant Choice Hotels’ motion for summary
judgment.

1
On May 4, 2018, the court granted defense counsel’s motion to withdraw, and the corporate defendants were
advised that they cannot appear or participate in this action without attorney representation. (Dkt. No. 32.) Choice
moved for summary judgment on November 30, 2018, and on January 7, 2019, the court issued a Roseboro order to the
pro se defendants, allowing them twenty-one days to file a response to Choice’s motion. (Dkt. No. 38.) The court
further reminded the corporate defendants that they must appear by and through counsel. (Id.) None of the defendants
have filed any documents, communicated with the court, or made any sort of appearance in this matter since defense
counsel moved to withdraw.

I. BACKGROUND
Choice Hotels is the owner of a family of QUALITY® trademarks which it uses in
connection with its lodging franchise business. Included in that family of marks are the following
United States Trademark Registrations: the ‘881 registration; the ‘372 registration; the ‘294
registration; the ‘820 registration; and ‘488 registration; the ‘999 registration; the ‘875 registration;
the ‘054 registration; the ‘436 registration; the ‘437 registration; the ‘888 registration; the ‘885
registration; the ‘789 registration; and the ‘912 registration. (Dkt. Nos. 1-1 to 1-14.)
On or about June 16, 2010, Choice Hotels entered into a Franchise Agreement with A Royal
Touch (NC), Ujas B. Patel, and Ketki Patel, which permitted them to operate a QUALITY INN®
hotel franchise at 429 Main Street, Covington, Virginia 24426 (the Subject Property). Seven days
after execution of the Franchise Agreement, Ketki Patel created a new limited liability company in
Virginia under the same name, A Royal Touch Hospitality, LLC, and identified the Subject
Property as its registered office address. A Royal Touch (VA) was never a party to the Franchise
Agreement or the later-executed Reinstatement Agreement, and thus was not permitted to operate a
QUALITY INN® hotel franchise at the Subject Property.
Ketki Patel, Ujas Patel, and A Royal Touch (NC) defaulted on their material obligations
under the Franchise Agreement, and on December 30, 2013, Choice Hotels terminated the
Franchise Agreement. A Royal Touch (NC) was administratively dissolved in March 2014. Even
so, on or about April 22, 2014, Choice entered into a Reinstatement Agreement with Ujas B. Patel,
Ketki Patel, and (purportedly) A Royal Touch (NC) reinstating the Franchise Agreement. Ketki
Patel executed the Reinstatement Agreement on behalf of A Royal Touch (NC) knowing that the
company had been administratively dissolved. Thereafter, Ketki Patel, Ujas Patel, and A Royal
Touch (VA)––purporting to be A Royal Touch (NC)––defaulted on the payment obligations
imposed by the Reinstatement Agreement. Accordingly, on June 3, 2015, Choice Hotels terminated
2

the Reinstatement Agreement. The Franchisee Defendants admit they did not comply with the
terms of the Notice of Termination.
On July 22, 2016, Choice issued a Notice of Service Mark Infringement to the Franchisee
Defendants. The Franchisee Defendants admit the Notice of Service Mark Infringement instructed
them to immediately discontinue all use of the QUALITY® family of marks and to take immediate
action to correct its identity with third-party booking sites like Tripadvisor.com, Expedia.com, and
Booking.com. The Franchisee Defendants admit they did not comply with the Notice of
Infringement.
On or about August 5, 2017, counsel for Choice conducted a site inspection of the Subject
Property. Photographs show the QUALITY® family of marks on display. (Compl. ¶ 81, Dkt. No.
1.) Defendants admit that in addition to signage bearing the QUALITY® family of marks, the hotel
at the Subject Property displays a white BAYMONT INN & SUITES® branded banner. (Answer ¶
82, Dkt. No. 10.) BAYMONT INN & SUITES® is not a Choice Hotels brand. (Id. ¶ 83.)
Defendants further admit in their answer that the online third-party booking site Tripadvisor.com
identifies the Subject Property as a BAYMONT INN & SUITES® but displays photographs of the
hotel bearing both QUALITY® and BAYMONT INN & SUITES® signage. (Id. ¶ 84.) A
photograph shows the hotel located at the Subject Property in obvious disrepair. (Id. ¶ 85.)
A Royal Touch (VA) was never a party to an agreement that would allow it to operate a
QUALITY INN® hotel franchise at the Subject Property. Even so, A Royal Touch (VA) operated
such a franchise from March 2014 until September 2017 while purporting to be A Royal Touch
(NC).
After the Reinstatement Agreement was terminated on June 3, 2015, A Royal Touch (NC),
Ketki Patel, and Ujas B. Patel were not authorized to use any of the marks in the QUALITY®
family of marks at the Subject Property. Notwithstanding, A Royal Touch (VA), purporting to be A
3

Royal Touch (NC), Ketki Patel, and Ujas B. Patel continued to make extensive unauthorized use of
the QUALITY® family of marks at the Subject Property until at least September 2017.
II. DISCUSSION
A. Standard of Review
To obtain summary judgment, the moving party must show that there is no genuine dispute
as to any material fact and that the moving party is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). In considering a motion for summary judgment, the court will not “weigh the
evidence and determine the truth of the matter.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249
(1986). Instead, the court will draw any permissible inference from the underlying facts in the light
most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475
U.S. 574, 587–88 (1986).
As noted above, Choice’s motion is unopposed, but the court does not automatically grant
such a motion.
[I]n considering a motion for summary judgment, the district court
‘must review the motion, even if unopposed, and determine from what
it has before it whether the moving party is entitled to summary
judgment as a matter of law.’ Custer v. Pan Am. Life Ins. Co., 12
F.3d 410, 416 (4th Cir. 1993) (emphasis added). ‘Although the
failure of a party to respond to a summary judgment motion may
leave uncontroverted those facts established by the motion,’ the
district court must still proceed with the facts it has before it and
determine whether the moving party is entitled to judgment as a
matter of law on those uncontroverted facts. Id.
Robinson v. Wix Filtration Corp. LLC, 599 F.3d 403, 409 n.8 (4th Cir. 2010).
B. Federal Trademark Infringement
Federal trademark infringement is governed by Section 32 of the Lanham Act. 15 U.S.C. §
1114. To establish trademark infringement under the Lanham Act, Choice Hotels must prove: (1)
that it owns a valid mark; (2) that the defendant used the mark “in commerce” and without
plaintiff’s authorization; (3) that the defendant used the mark (or an imitation of it) “in connection
4

with the sale, offering for sale, distribution, or advertising” of goods or services; and (4) that the
defendant’s use of the mark is likely to confuse consumers. Rosetta Stone Ltd. v. Google, Inc., 676
F.3d 144, 152 (4th Cir. 2012).
1. Ownership of a valid trademark
Choice’s certificates of registration are attached as exhibits to the complaint. (See Dkt. Nos.
1-1 to 1-14.) When the Patent and Trademark Office issues a certificate of registration, that
registration provides the registrant with prima facie evidence of the validity of the mark and its
registration, the registrant’s ownership, and the registrant’s “exclusive right” to use the mark on or
in connection with the goods and services specified in the certificate of registration. U.S. Search,
LLC v. U.S. Search.com Inc., 300 F.3d 517, 524 (4th Cir. 2002). In fact, these registrations have
achieved “incontestable status” pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065. (See
Dkt. Nos. 1-1 to 1-14.) Incontestable status is “conclusive evidence of the validity of the registered
mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115(b). Choice
has demonstrated that it owns the trademarks at issue.
2. Unauthorized use of the mark in commerce
By failing to respond to Choice’s requests for admission,2 defendants admitted to making
unauthorized use of the QUALITY® family of marks after termination of the Franchise
Agreement/Reinstatement Agreement. (See Dkt. Nos. 37-3, 37-4, 37-5, 37-6.) In their Answer,
defendants admitted that the QUALITY® family of marks “were visible” at the Subject Property
following termination of the Franchise Agreement. (Compl. ¶ 74; Answer ¶ 74.) Choice Hotels
also provided photographic evidence of defendants’ unauthorized use, taken more than two years

2

Choice Hotels propounded Requests for Admission to the defendants, and none of the defendants responded.
See Cook v. McQuate, No. 7:15-cv-456, 2017 WL 6944791, at *2 (W.D. Va. Dec. 4, 2017) (“Unanswered requests for
admission can serve as the basis for summary judgment.”)

5

after termination of the Franchise Agreement/Reinstatement Agreement. (Compl. ¶ 81.) Choice
has demonstrated unauthorized use in commerce.
3. In connection with sale of goods/services
By failing to respond to Choice’s requests for admission, defendants admitted to making
unauthorized use of the QUALITY® family of marks in connection with the provision of hotel
services at the Subject Property after termination of the Franchise Agreement/Reinstatement
Agreement. (Dkt. Nos. 37-3, 37-4, 37-5, 37-6.) Defendants admitted in their answer that the
QUALITY® family of marks “were visible” at the Subject Property following termination of the
Franchise Agreement. (Compl. ¶ 74; Answer ¶ 74.) Defendants also admitted to using
Tripadvisor.com, an online third-party hotel booking site, which shows the QUALITY® family of
marks in use in connection with the provision of hotel services at the Subject Property. (Compl. ¶
84; Answer ¶ 84.) Choice has demonstrated unauthorized use in connection with the provision of
goods/services.
4. Likelihood of confusion
In determining the likelihood of confusion, courts in the Fourth Circuit apply the Pizzeria
Uno/Sara Lee multi-factor test, which evaluates:
(1) the strength or distinctiveness of the mark;
(2) the similarity of the two marks;
(3) the similarity of the goods/services the marks identify;
(4) the similarity of the facilities the two parties use in their business;
(5) the similarity of advertising used by the two parties;
(6) the defendant’s intent;
(7) actual confusion
(8) the quality of the defendant’s product; and
(9) the sophistication of the consuming public.
La Michoacana Nat., LLC v. Maestre, No. 3:17-cv-00727-RJC-DCK, 2018 WL 2465478, at *2
(W.D.N.C. June 1, 2018) (citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984)
(setting forth factors one through seven); Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 463–
6

64 (4th Cir. 1996) (identifying factors eight and nine)). These factors “are not always weighed
equally, and not all factors are relevant in every case.” Rosetta Stone, 676 F.3d at 154. They “are
only a guide––a catalog of various considerations that may be relevant in determining the ultimate
statutory question of likelihood of confusion.” Anheuser-Busch, Inc. v. L&L Wings, Inc., 962 F.2d
316, 320 (4th Cir. 1992).
As an initial matter, the court notes that the traditional likelihood of confusion analysis may
be unnecessary because defendants are holdover franchisees. See U.S. Structures, Inc. v. J.P.
Structures, Inc., 130 F.3d 1185, 1190 (6th Cir. 1997) (“[P]roof of continued, unauthorized use of an
original trademark by one whose license to use the trademark has been terminated is sufficient to
establish ‘likelihood of confusion.’”); Burger King Corp. v. Mason, 710 F.2d 1480, 1492 (11th Cir.
1983) (“Common sense compels the conclusion that a strong risk of consumer confusion arises
when a terminated franchisee continues to use the former franchisor’s trademark.”). With a
holdover franchisee,
[t]here is a high risk of consumer confusion when a terminated
franchisee continues to use the former franchisor’s trademarks.
Consumers will associate the trademark user with the registrant and
assume that they are affiliated. Any shortcomings of the franchise
would therefore be attributed to the franchisor . . . . Because of this
risk, many courts have held that continued trademark use by one
whose trademark license has been canceled satisfies the likelihood of
confusion test and constitutes trademark infringement.
Am. Dairy Queen Corp. v. YS & J Enters., Inc., No. 5:14-cv-151-BR, 2014 WL 1327017, at *2–3
(E.D.N.C. Apr. 2, 2014). The court recognizes that A Royal Touch (VA) is not a former franchisee
like the other three defendants (the Franchisee Defendants), and therefore may not technically be
considered a holdover franchisee. The same principles, it seems, should apply to A Royal Touch
(VA) because it was making unauthorized use of Choice’s marks together with the Franchisee
Defendants as a holdover from when the use was authorized. In any event, and in the interest of
thoroughness, the court will analyze the traditional likelihood-of-confusion factors.
7

a. Distinctiveness of the senior mark
As noted above, Choice’s trademarks are incontestable, and “an incontestable registered
trademark enjoys a conclusive presumption of distinctiveness.” Savin Corp. v. Savin Group, 391
F.3d 439, 457 (2d Cir. 2004) (citing Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189,
204–05 (1985)). The court is not legally precluded from finding that an incontestable registered
trademark is weak, see Petro Stopping Ctrs., L.P. v. James River Petroleum, Inc., 130 F.3d 88, 92
(4th Cir. 1997), but because defendants failed to oppose Choice’s motion, there is no evidence to
rebut the presumption of distinctiveness. See Progressive Dist. Servs., Inc. v. United Parcel Serv.,
Inc., 856 F.3d 416, 429 (6th Cir. 2017) (“Undoubtedly, Progressive’s claim of incontestability is
entitled to a presumption of strength. However, a party may rebut the presumption of strength and
show that a mark is not distinctive.”). Therefore, the distinctiveness factor weighs in favor of a
finding of likelihood of confusion.
b. Similarity (factors 2–5)
The Fourth Circuit refers to factors two through five as the “similarity” factors. See Sara
Lee, 81 F.3d at 465 (stating that the “similarity factors” are “the similarity of the two marks, of the
goods [and services] the marks identify, of the facilities employed to transact the parties’ business,
and of the advertising used by the parties.”). Defendants used the same marks––the QUALITY®
family of marks––in connection with the same goods and services, at the same property that
previously operated as a franchisee of Choice Hotels until the Franchise Agreement/Reinstatement
Agreement was terminated. The similarity factors favor a finding of likelihood of confusion.
c. Defendants’ intent in adopting the same or similar mark
A Royal Touch (VA) used Choice’s marks despite never being a party to a franchise
agreement. This is clear evidence of intent to adopt Choice’s marks. The other three defendants
(the Franchisee Defendants) continued using Choice’s marks after the Franchise
8

Agreement/Reinstatement Agreement was terminated. This is also clear evidence of intent to adopt
the marks. The intent factor therefore favors a finding defendants’ use of Choice’s marks was likely
to confuse consumers.
d. Actual confusion
Choice argues that defendants’ simultaneous use of the QUALITY® family of marks and a
BAYMONT INN & SUITES® branded banner would result in actual consumer confusion. The
court does not consider this to be evidence of actual consumer confusion. See, e.g., George & Co.
LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 398 (4th Cir. 2009) (“Actual confusion can be
demonstrated by both anecdotal and survey evidence.”). Such evidence likely is not necessary,
however, because of defendants’ actions as a holdover franchisee. See, e.g., Hospitality Int’l, Inc. v.
Mahtani, Civil Action No. 2:97CV87, 1998 WL 35296447, at *20 (M.D.N.C. Aug. 3, 1998) (“In
effect, courts have recognized that a holdover franchisee’s unauthorized use of the franchisor’s
mark can have no result other than to cause actual confusion.”). Also, “it is well established that no
actual confusion is required to prove a case of trademark infringement.” Louis Vitton Malletier S.A.
v. Haute Diggity Dog, LLC, 507 F.3d 252, 563 (4th Cir. 2007). Therefore, the absence of any
specific evidence of actual confusion does not preclude a finding of likelihood of confusion,
particularly where, as here, defendants illegally used Choice’s marks as a holdover franchisee.
e. Quality of defendants’ product
Defendants’ continued unauthorized use of the QUALITY® family of marks has deprived
Choice Hotels of the ability to exercise quality control over its brand. (See Compl. ¶ 85 (“[T]he
hotel located at the Subject Property is in a state of obvious disrepair/construction. A true and
correct photograph of the damaged carport taken by the undersigned on August 5, 2017, appears
below . . . .”); Answer ¶ 85.) This factor therefore favors a likelihood-of-confusion finding.

9

f. Sophistication of the consuming public
“Barring an unusual case, buyer sophistication will only be a key factor when the relevant
public is not the public at-large.” Sara Lee, 81 F.3d at 467. The hotel services at the Subject
Property were marketed to the general public. Tired travelers on interstate highways, for example,
would not be able to discern that defendants were not operating a legitimate QUALITY® franchise.
Neither would consumers booking a room online. This factor weighs in favor of likelihood of
confusion.
Based on the foregoing, Choice has established that defendants’ unauthorized use of the
QUALITY® family of marks was likely to confuse consumers.
***
In its motion for summary judgment, Choice provided evidence in support of each element
of its trademark infringement claim. Based on these uncontroverted facts, Choice is entitled to
judgment as a matter of law.
C. Federal Unfair Competition
Choice also asserts a claim against defendants for unfair competition under Section 43(a) of
the Lanham Act. 15 U.S.C. § 1125(a)(1). “Federal trademark infringement, 15 U.S.C. §
1114(1)(a), and a false designation of origin claim, known more broadly as federal unfair
competition, 15 U.S.C. § 1125(a)(1)(A), are measured by identical standards.” Louis Vuitton
Malletier & Oakley, Inc. v. Veit, 211 F. Supp. 2d 567, 580 (E.D. Penn. 2002) (citing A&H
Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000)); Microsoft
Corp. v. Computer Serv. & Repair, Inc., 312 F. Supp. 2d 779, 785 (E.D.N.C. 2004) (“The same
undisputed facts that establish defendant Barskile’s violation of § 1114 of the Lanham Act also
establish that Barskile has violated § 1125(a) of the Lanham Act by falsely designating the origin of
the software that was distributed.”). Therefore, based on the uncontroverted facts supplied in
10

support of its trademark infringement claim, Choice is also entitled to judgment on its federal unfair
competition claim.
D. Common Law Trademark Infringement
“The test for trademark infringement and unfair competition is essentially the same as that
for common law unfair competition under Virginia law.” Lone Star Steakhouse & Saloon, Inc. v.
Alpha of Virginia, Inc., 43 F.3d 922, 930 n.10 (4th Cir. 1995). Based on the above analysis, Choice
is entitled to judgment as a matter of law on this claim.
E. Requested Relief
Choice seeks the following relief on its claims: (1) a permanent injunction prohibiting
defendants from further use of the QUALITY® family of marks; (2) $2,426,936.96 in infringer
profits; (3) $206,289.44 in actual damages, trebled to $618,868.32; and (4) $575.00 in costs.
1. Permanent Injunction
A plaintiff seeking a permanent injunction must demonstrate that (1) it has suffered an
irreparable injury; (2) remedies available at law are inadequate; (3) the balance of the hardships
favors the party seeking the injunction; and (4) the public interest would not be disserved by the
injunction. PBM Prods., LLC v. Mead Johnson & Co., 639 F.3d 111, 126 (4th Cir. 2011) (citing
eBay, Inc. v. MercExchange, 547 U.S. 388, 391 (2006)).
As discussed above, Choice has proven that defendants’ unauthorized use of the
QUALITY® family of marks resulted in likely confusion among consumers in the hotel and motel
services marketplace. “The Fourth Circuit has held that, in the context of a Lanham Act trademark
infringement action, ‘[a] finding of irreparable injury [to the plaintiff] ordinarily follows when a
likelihood of confusion or possible risk to reputation appears.’” Wonder Works v. Cranium, Inc.,
455 F. Supp. 2d 453, 457 (D.S.C. 2006) (quoting Lone Star Steakhouse, 43 F.3d at 938); see also
Scotts Co. v. United Indus. Corp., 315 F.3d 264, 273 (4th Cir. 2002) (“In Lanham Act cases
11

involving trademark infringement, a presumption of irreparable injury is generally applied once the
plaintiff has demonstrated a likelihood of confusion, the key element in an infringement case.”).
For similar reasons, money damages are typically considered an inadequate remedy for trademark
infringement. “Monetary damages in trademark infringement suits are typically inadequate because
while they may compensate plaintiffs for damages they have already incurred, monetary damages
do not prevent future infringement from occurring.” RXD Media, LLC v. IP Application Dev’t,
Case No. 1:18-cv-486, 2019 WL 2569543, at *1 (E.D. Va. June 21, 2019). The risk of continuing
injury is particularly acute given defendants’ refusal to participate in this lawsuit to its conclusion.
See Overstock.com, Inc. v. Visocky, Civil Action No. 1:17-cv-1331 (LMB/TCB), 2018 WL
5075511, at *10 (E.D. Va. Aug. 23, 2018); see also Philip Morris USA, Inc. v. Castworld Products,
Inc., 219 F.R.D. 494, 502 (C.D. Cal. 2003) (“Defendant, though well aware of serious claims
brought against it, has chosen to ignore this lawsuit. Failure to grant the injunction would
needlessly expose the Plaintiff to the risk of continuing irreparable harm.”).
Balancing the hardships, Choice has a significant interest in maintaining the integrity of its
intellectual property, and the absence of a permanent injunction would subject Choice to the risk of
having its marks used in commerce by an uncontrollable entity. Defendants, by contrast, would be
required not to use Choice’s trademarks. The balance clearly favors Choice.
Finally, the public interest is served by protecting the integrity of Choice’s marks and
preventing potential consumer confusion in the marketplace. See BMW of N. Am., LLC v. FPI MB
Entm’t, LLC, C/A No. 4:10-82-TLW-SVH, 2010 WL 4365838, at *3 (D.S.C. Sept. 13, 2010)
(“Preventing confusion is in the public interest.”).
For these reasons, the court will enter a permanent injunction preventing defendants from
using the QUALITY® family of marks.

12

2. Damages
Under the Lanham Act, damages for trademark infringement may include (1) the
defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. 15
U.S.C. § 1117(a). “The court shall assess such profits and damages or cause the same to be
assessed under its direction” and ensure that any relief awarded “shall constitute compensation and
not a penalty.” Id. “Awarding damages makes ‘violations of the Lanham Act unprofitable to the
infringing party.’” Coryn Grp. II, LLC v. O.C. Seacrets, Inc., 868 F. Supp. 2d 468, 490 (D. Md.
2012) (quoting Vanwyk Textile Sys., B.V. v. Zimmer Mach. Am., Inc., 994 F. Supp. 350, 380
(W.D.N.C. 1997)).
The Fourth Circuit has identified six nonexclusive factors that should be considered when
awarding damages or a defendant’s profits:
(1) whether the defendant had the intent to confuse or deceive, (2)
whether sales have been diverted, (3) the adequacy of other remedies,
(4) any unreasonable delay by the plaintiff in asserting his rights, (5)
the public interest in making the misconduct unprofitable, and (6)
whether it is a case of palming off.
Synergistic Int’l, LLC v. Korman, 470 F.3d 162, 175 (4th Cir. 2006). Choice’s motion addresses
how the court should calculate the amount of damages requested in this case, but Choice does not
address the Synergistic factors, which the court must consider in conjunction with a damages award.
See id. at 174 (remanding to the district court because the court “did not specify the equitable
factors it had utilized in making” its damages award). Given the large amount of damages
requested in this case, the court is not inclined to address these factors without more input from
Choice. The court will therefore request supplemental briefing from Choice on damages.
3. Attorney fees
The Lanham Act provides that the “court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). A district court may find a case
13

“exceptional” under § 1117(a) when it determines, in light of the totality of the circumstances, that
(1) there is an unusual discrepancy in the merits of the positions taken by the parties, based on the
non-prevailing party’s position as either frivolous or objectively unreasonable; (2) the nonprevailing party has litigated the case in an unreasonable manner; or (3) there is otherwise the need
in particular circumstances to advance considerations of compensation and deterrence. Verisign,
Inc. v. ZYZ.COM LLC, 891 F.3d 481, 483–84 (4th Cir. 2018) (citing Georgia-Pacific Consumer
Prods. LP v. von Drehle Corp., 781 F.3d 710, 721 (4th Cir. 2015)).
The court cannot conceive of any plausible argument that defendants did not make
unauthorized use of Choice’s marks. Defendants admitted Choice’s material allegations in their
answer to Choice’s complaint and during discovery. Moreover, defendants have litigated this case
in an unreasonable manner by not responding to Choice’s motion for summary judgment and
effectively abandoning their defense in this case. Therefore, the court finds that this is an
exceptional case justifying an award of attorney fees. Choice may submit an appropriate lodestar
petition together with its supplemental brief on damages.
III. CONCLUSION
For the foregoing reasons, Choice’s motion for summary judgment will be granted. The
court will enter an appropriate order.
Entered: August 26, 2019.

/s/ Elizabeth K. Dillon
Elizabeth K. Dillon
United States District Judge

14