Brothers of the Wheel M.C. Executive Council, Inc. v. Mollohan et al

Filing 59

MEMORANDUM OPINION AND ORDER adopting the 31 Proposed Findings and Recommendation; granting the 5 , 13 , 20 , 26 motions to dismiss as to Counts III, IV, V, and VI; denying the 14 motion for default judgment; granting the 15 motion to deny the motion for default judgment; granting the 17 motion for Summary Judgment; denying as moot defendant Mollohan's 24 motion for entry of injunction; the parties are DIRECTED to proceed as follows and as set forth more fully herein; adopting the Magistrate Judge's recommendation as to an award of both treble damages and attorney's fees. (cc: attys; any unrepresented party) (taq)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF WEST VIRGINIA
CHARLESTON DIVISION

BROTHERS OF THE WHEEL
M.C. EXECUTIVE COUNCIL, INC.,
Plaintiff,
v.

CIVIL ACTION NO. 2:11-cv-00104

GERALD R. MOLLOHAN, et al.
Defendants.

MEMORANDUM OPINION AND ORDER
Pending before the Court are several motions, namely: (1) Defendant Gerald R. Mollohan’s
motions to dismiss the complaint [Dockets 5, 13, 20, 26]; (2) Plaintiff Brothers of the Wheel M.C.
Executive Council, Inc.’s motion for default judgment [Docket 14] and Defendant’s motion to deny
the motion for default judgment [Docket 15]; and (3) Plaintiff’s motion for summary judgment
[Docket 17]. On April 7, 2011, this action was referred to the Honorable Mary E. Stanley, United
States Magistrate Judge, for submission to this Court of proposed findings of fact and
recommendation for disposition (“PF&R”), pursuant to 28 U.S.C. § 636(b)(1)(B). (Docket 8.)
Magistrate Judge Stanley has submitted her PF&R and recommended that the Court grant the
motions to dismiss as to Counts III through VI of the complaint and grant Plaintiff’s motion for
summary judgment on the remaining counts, Counts I and II. (Docket 56 at 16-50.) Magistrate
Judge Stanley also recommended that the Court deny Plaintiff’s motion for default judgment, grant
Defendant’s motion to deny the motion for default judgment, and deny as moot Defendant’s motion

for court injunction.1 (Id. at 33-35, 57.) On January 6, 2012, following a court-approved extension
of time, Defendant filed timely objections to the PF&R. (Docket 54.) Plaintiff responded on January
16, 2012. (Docket 55.) For the reasons that follow, the PF&R is ADOPTED except as to the
recommended finding on treble damages.
I. FACTUAL BACKGROUND & PROCEDURAL HISTORY
Plaintiff Brothers of the Wheel M.C. Executive Council, Inc. (“Plaintiff” or “BOTW”) filed
the complaint in this action on February 15, 2011, alleging that Defendant Gerald R. Mollohan
(“Defendant” or “Defendant Mollohan”), a former member of Plaintiff’s organization, violated
federal and state trademark laws by developing and using in commerce a mark that is confusingly
similar to the collective membership mark Plaintiff uses to identify its motorcycle club. (Docket 1 at
1-3.) Plaintiff also claims that Defendant Mollohan is diluting its allegedly famous mark and
engaging in “cyber-piracy.” (Id. at 1.) The complaint seeks to enjoin Defendant from using the
allegedly infringing mark, as well as compensatory and statutory damages. (Id. at 12-15.) Also
named as defendants alongside Defendant Mollohan are fifty John Doe defendants, which Plaintiff
states are “persons to whom Gerald Mollohan sold to or allowed to use the trademark protected
items belonging to Brothers of the Wheel.” (Id. at 6.)
On March 4, 2011, Defendant Mollohan filed his first motion to dismiss, in which he argues:
(1) that there is no evidence of actual confusion by the public between his mark and Plaintiff’s mark;
and (2) that while “[i]t may be true that there are some similarities in the two marks,” likelihood of
confusion does not exist. (Docket 5 at 2-4.) On April 21, 2011, Magistrate Judge Stanley held a
status conference and ordered Defendant to file an answer to the complaint by May 6, 2011. (Docket

1

The motion for court injunction, Docket 24, seeks an order prohibiting any contact by physical or
2

11.) Instead, Defendant Mollohan filed a second motion to dismiss on May 5, 2011, which is nearly
identical to his first motion. (Docket 13.) On June 2, 2011, Plaintiff filed a motion for default
judgment, Docket 14, which Defendant Mollohan opposed via the “motion to deny plaintiff's motion
for default judgment” that he filed on June 17, 2011, Docket 15. On July 19, 2011, Plaintiff filed its
motion for summary judgment and permanent injunction. (Docket 17.). Magistrate Judge Stanley
ordered Defendant Mollohan to respond to the motion by August 5, 2011. (Docket 18.) Defendant
filed his response on August 5, 2011, Docket 19, and Plaintiff replied on August 10, 2011, Docket
21. Defendant Mollohan filed a sur-reply of sorts on August 18, 2011, which he titled “Defendant’s
Response to Plaintiff’s Motion of August 3, 2011 [sic] Regarding Magistrate Stanley’s ‘Order.’”
(Docket 23.) Defendant Mollohan also filed a third motion to dismiss on August 5, 2011, Docket
20, and a fourth motion to dismiss on September 20, 2011, Docket 26. These two motions to dismiss
are also largely identical in argument to one another. On September 6, 2011, the defendant filed a
“Motion for Court Injunction(s),” wherein he alleges harassment on the part of Plaintiff and its
members and requests that BOTW and its officers and members be forbidden from communicating
with the defendants and from coming within one hundred yards of the defendants. (Docket 24.) On
September 28, 2011, in the face of duplicative and counterproductive filings from both Plaintiff and
Defendant Mollohan, Magistrate Judge Stanley stayed discovery and halted the filing of any
additional motions until further notice. (Docket 29.) With the exception of objections to the PF&R
and Plaintiff’s response thereto, this order remains in effect, and the Court therefore presently
considers only Magistrate Judge Stanley’s PF&R, Defendant Mollohan’s objections to the PF&R,

electronic means between any member of Plaintiff organization and any defendant, see infra.
3

and Plaintiff’s response to Defendant’s objections (as well as those filings that precede the stay
order).
The PF&R recites facts from the complaint and the various filings by the parties. The
relevant facts relied upon by Magistrate Judge Stanley are largely, if not wholly, unchallenged by
either party in the objections and response. Furthermore, Defendant Mollohan was given several
opportunities to challenge any facts presented by Plaintiff with evidentiary support, such as by
affidavit, but he failed to do so.2 In contrast, Plaintiff submitted two affidavits: one from its national
vice president that, inter alia, verifies the complaint,3 and one from an individual claiming actual

2

Magistrate Judge Stanley specifically advised Defendant Mollohan of the following:
Defendant Mollohan is advised that factual statements in affidavit [sic]
submitted by the plaintiff will be accepted as true unless defendant Mollohan sets
forth facts in his response indicating the existence of a genuine or actual dispute of
material fact for trial. In the response, defendant Mollohan must set out either in his
own affidavit or sworn statement, or the affidavits or sworn statements of other
witnesses, specific facts that show that the plaintiff and defendant Mollohan actually
disagree about one or more important facts present in this case. In the affidavits and
exhibits, defendant Mollohan should address, as clearly as possible, the issues and
facts stated in the Complaint and in the affidavits or other evidence submitted by the
plaintiff.
Defendant Mollohan is also advised that a failure to respond to the motion
may result in entry of summary judgment granting the relief sought in the Complaint.
In preparing his responses, defendant Mollohan should be aware of the fact that a
knowing assertion of a falsehood in order to avoid dismissal could, if proven,
constitute perjury punishable by law.

Docket 18 at 1-2.
3

Plaintiff attached an affidavit from its national vice president, Mr. Ray E. Carey, with its motion
for summary judgment and permanent injunction. In pertinent part, the affidavit states the following:
After being duly sworn, Ray E. Carey states:
1. That he is the National Vice President of Brothers of the Wheel M.C. Executive
Council, Inc.
4

confusion between Plaintiff’s mark and Defendant Mollohan’s mark.4 (Dockets 17-1, 1-5.) Those
facts are summarized from the PF&R as follows.

2. That he has been associated with the Brothers of the Wheel Motorcycle Club since
1977.
3. That Brothers of the Wheel M.C. Executive Council, Inc. owns the trademark,
name and logo “Brothers of the Wheel” and has never and has no intention of
licensing, selling or otherwise permitting Gerald Mollohan, or anyone associated
with him, so defendant Mollohan and anyone associated with him will never be able
to meet the primary reason for the refusal by the United States Patent and Trademark
Office to register defendant’s mark, which is likelihood of confusion.
4. Brothers of the Wheel M.C. Executive Council, Inc. was the first to use and the
first and only entity to trademark the name and logo until Mollohan’s infringement.
5. Defendant Mollohan's illegal and unauthorized infringement of the Brothers of the
Wheel M.C. Executive Council, Inc.’s trademark protected items has cost the
Brothers of the Wheel M.C. Executive Council, Inc. membership dues, community
goodwill and services $25,000 and to date, $9,500 in attorney fees plus court costs
and service of process fees.
6. The Brothers of the Wheel M.C. Executive Council, Inc. will continue to suffer
irreparable harm, especially on the internet, unless defendant Mollohan's
infringement is stopped.
7. [A]ll of the members of the Brothers of the Wheel Motorcycle Club, which is
operated by Brothers of the Wheel M.C. Executive Council, Inc. have worked hard
for over 33 years for the club to have a positive image and to raise funds for charity.
8. The Brothers of the Wheel is neither an outlaw motorcycle club nor an outlaw
motorcycle gang and aggressively seeks to obey the law and uphold its good image.
The term “nomad” has a special meaning among outlaw motorcycle clubs or gangs.
There is a violent outlaw motorcycle club by the name of Nomads in Australia. In the
United States, the term “nomad” is descriptive of a club “enforcer” and has no
allegiance to any particular club chapter.
9. AMA and non-outlaw motorcycle clubs like the Brothers of the Wheel do not have
nomads.
10. All allegations in the Complaint are true and accurate to the best of his
knowledge.
(Docket 17-1.)
4

Exhibit 5 to Plaintiff’s complaint includes email correspondence between Plaintiff’s members and
Mr. Bobby Brown of Aurora, Colorado. Mr. Brown had emailed Plaintiff on January 31, 2011:
I received some information through Linked In that you were accepting members
into your Nomads Chapter. Is this correct and if so where do I need to go from here?
5

Brothers of the Wheel is a motorcycle club that first began in 1977 and has chapters in West
Virginia, Ohio, and Kentucky. According to the complaint, Plaintiff engages in fund-raising for
charities, raising at least $150,000 per year for various charities. (Docket 1 at 2-3.) Plaintiff states
that it has engaged in substantially exclusive and continuous use of the words “Brothers of the
Wheel” and its composite marks for the motorcycle club since 1977, and that it has used its mark
continuously since 1977. (Id.) Plaintiff applied for trademark registration of a word mark “Brothers
of the Wheel” and a corresponding design featuring those words on August 7, 2003. On February
15, 2005, the United States Patent and Trademark Office (“USPTO”) formally issued to Brothers of
the Wheel M.C. Executive Council, Inc. the mark and assigned Registration Number 2926222. (Id.
at 3.) The trademark protects the name “Brothers of the Wheel M.C.” and the logo of the
organization.
The by-laws of Plaintiff BOTW provide that the club retains ownership of the trademarkprotected patch and items but grants a license to members and retirees to use the protected items.

I really believe strongly in your philosophy and being from Morgantown originally, I
am strongly drawn to your organization[.]
(Docket 1-5 at 5.) Plaintiff responded:
I’m sorry to say you have been misinformed. Although the BOTW MC is taking in
new members, we have no Nomad chapter. There is however a former member using
our name to try to start his own club. We are in the process of taking legal action to
stop him from using our trademarks. I regret you have been put in the middle of this
situation, but the truth is the “BOTW Nomad Chapter” exists mostly in one persons
confused mind and on the internet. If you ever get back closer to the east coast feel
free to come see us.
(Id.) Mr. Brown then replied, “[t]hank you very much for the clarification and I completely
understand . . . . Thanks for information and I am sorry for the sh*t you all must be dealing with over
this.” (Id.)
6

(Docket 1-3 at 8-10.) Defendant Mollohan was formerly a full member of Plaintiff. In accordance
with Plaintiff’s by-laws, Mollohan received permission to use items featuring the club’s trademark
and agreed to follow the by-laws as a condition of his membership. (Docket 1 at 3-4.) Defendant
Mollohan retired from Plaintiff in 2000 and was given permission to use the trademarked protected
items on a limited basis, again in accordance with the by-laws of the club. (Id. at 4.) At some point
following his retirement from Plaintiff, Defendant started his own motorcycle club, which he named
“Brothers of the Wheel Nomads.” (Id.) Plaintiff claims that Defendant Mollohan has been using the
initials “BOTW” and the Brothers of the Wheel mark in derogation of his license to use the
protected items and in violation of federal and state laws protecting trademarks. (Id.)
The following are the respective marks of the parties, with Plaintiff’s mark appearing on the
first and Defendant Mollohan’s marks appearing thereafter: 5

5

Defendant Mollohan’s original application for trademark registration with the United States patent
and Trademark Office (“USPTO”) featured an eagle with a battle axe in one talon and a depiction of
the American flag in the other talon, much as Plaintiff’s trademark features. In an effort to remedy
the USPTO’s examining attorney’s concerns regarding the use of the American flag, Defendant
Mollohan removed the flag and replaced it with a second battle axe in September 2011.
7

Magistrate Judge Stanley described Plaintiff’s mark as follows:
On the left side of the eagle is a battle axe, and an American flag is on the right side.
As used by the plaintiff in its patches, the outer circle containing “Brothers of the
Wheel M.C.” has a white background, and the inner circle has a yellow background;
the border that is in between the two consists of orange-colored chain links. See
Trademark Documents for USPTO Registration No. 2926222, Section 8 and 15 filing
of January 11, 2011, at 3.1
(Docket 31 at 5.) She described Defendant’s (original) mark as follows:
On the left side of the eagle is an American flag, and a battle-axe is on the right side.
The defendant’s logo has a[n] all-yellow background; the border that is in between
the inner and outer circles consists of black-colored chain links. See, e.g., Trademark
Documents for USPTO Serial No.85241480, Drawing filing of February 14, 2011.2
(Id. at 6.)
Defendant Mollohan has been using his mark in conjunction with several social networking
web sites, and indeed, he continues to display his mark and the words “BOTW MC Nomads” on his
personal Facebook account as of the issuance of this memorandum opinion and order. See Facebook
– Chewy Mollohan, http://www.facebook.com/chewybotw?ref=ts (last visited September 28, 2012).6
6

In addition, on September 20, 2012, Defendant Mollohan posted the following to his personal
Facebook page, which indicates his ongoing operation of or involvement in a motorcycle club
organized as “Brothers of the Wheel M.C. Nomads”:
Arizona BOTW M/C Nomads~Incorporated in the States of West Virginia &
Washington ~ Motorcycle Club ~ Arizona Business Office Located in Buckeye just
8

Plaintiff’s motion for summary judgment states that Defendant Mollohan is using its marks on
several additional social networking websites, some of which were verified by Magistrate Judge
Stanley and others of which were captured in print form and attached as exhibits to the complaint.
Plaintiff also alleges in its complaint that Defendant Mollohan is selling merchandise bearing its
trademark or a mark confusingly similar to its mark, and is licensing others to use the trademark.
(Docket 1 at 3-6.) Plaintiff allegedly became aware of Mollohan’s activities in October 2010.
According to Plaintiff, Defendant Mollohan ignored a cease and desist letter that was sent to him,
Docket 1-2 at 13, and instead expanded his use of the mark. Plaintiff additionally states that since it
filed this suit, Defendant Mollohan chartered a corporation which uses the plaintiff’s trademark.
(Docket 15 at 5-8.)
Defendant Mollohan, in addition to representing himself in this Court, has pursued alternate
avenues of vindicating his use of the mark. Defendant applied with the USPTO to trademark the
name “Brothers of the Wheel” (USPTO Serial No. 85509063) and the (evolving) logo featuring
those words and concentric circles with an eagle at its center (USPTO Serial No. 85241480). See
generally

USPTO

Trademark

Electronic

Search

System,

available

at

http://www.uspto.gov/trademarks/index.jsp (in TESS database, select “basic word mark search” and
enter “brothers of the wheel”) (last visited September 28, 2012). Defendant’s attempt to trademark
the logo appearing above was first refused by the USPTO on May 23, 2011. The grounds for the
refusal included the likelihood of confusion with Plaintiff’s trademark, and the logo’s impermissible
use of the American flag. (Docket 31 at 10-11.) Revised applications to trademark the logo and

off I-10 and Watson Road.
Id.
9

requests for reconsideration submitted by the defendant were similarly denied on these grounds by
the USPTO on July 14, 2011, and August 2, 2011. On September 22, 2011, the defendant filed an
updated logo with the USPTO that added a battle axe in place of the American flag; however, this
updated logo contained no changes intended to address the likelihood of confusion issue, despite the
fact that prior USPTO correspondence to Defendant Mollohan contained specific suggested changes
that might allow for approval of Mollohan’s logo application. Most recently, on September 10,
2012, Mollohan’s latest request for reconsideration by USPTO was denied, again due to the
likelihood that his mark would cause confusion with Plaintiff’s mark. Defendant Mollohan appears
to have fared somewhat better in his efforts to trademark the standard character mark “Brothers of
the Wheel.” This trademark was published to the Trademark Official Gazette for potential
opposition on July 3, 2012. Although Plaintiff, by counsel, attempted to oppose the mark’s
registration, it appears that it failed to comply with the appropriate procedural rules for filing a
proper notice of opposition, and consequently, the mark probably will be issued to Defendant
Mollohan.7
The complaint alleges the following specific causes of action.

Count One alleges

infringement of a registered mark, in violation of Section 32(1)(a) of the Lanham Act, 15 U.S.C. §
1114(1)(a). (Docket 1 at 6-7.) Count Two alleges false designation of origin, in violation of Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a). (Id. at 7-9.) Count Three alleges trademark dilution

7

Of course, simple issuance of the registration to Defendant Mollohan does not mean he is immune
from suit for infringing Plaintiff’s identical word mark. Cf. Armstrong Paint & Varnish Works v.
Nu-Enamel Corp., 305 U.S. 315, 322-23 (1938) (trademark registration creates no substantive rights,
but it confers certain procedural advantages on the registrant). Nor does issuance of the mark mean
that Plaintiff is without recourse in front of the USPTO. To the contrary, Plaintiff is fully capable of
challenging Mollohan’s word mark by petitioning the USPTO for cancellation of the mark or
seeking statutory cancellation in federal court. See 15 U.S.C. § 1119.
10

by blurring, in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). (Id. at 9-10.)
Count Four alleges cybersquatting, in violation of Section 43(d) of the Lanham Act, 15 U.S.C. §
1125(d). (Id. at 10-11.) Count Five alleges an unspecified violation of West Virginia trademark
law; it only cites to West Virginia Code Chapter 47, Article 2, and not a specific statutory section.
(Id. at 11.) Count Six requests a common law injunction restraining Defendant Mollohan’s
activities. (Id. at 11-12.) Plaintiff requests various remedies in its complaint, including, inter alia:
(1) actual or various statutory damages for Defendant’s alleged cybersquatting; (2) an Order that
Defendant cancel or transfer the domain name “botw.com”; (3) preliminary and permanent
injunctions under 15 U.S.C. § 1116(a) enjoining the defendants, and anyone acting in concert with
them, from using or imitating its mark; (4) damages under 15 U.S.C. § 1117(a); and (5) an Order
under 15 U.S.C. § 1118 requiring that any items in the possession of the defendants that use or
imitate its mark be delivered to the Court and destroyed. (Id. at 12-15.) Plaintiff BOTW demands
similar relief in its summary judgment briefing, including: (1) demands that Defendant Mollohan
disclose the entity that made the items bearing the BOTW mark and the individuals who became
involved with Defendant’s “Nomads” organization; (2) termination of any entity with the name
Brothers of the Wheel-Nomads; (3) relinquishment to Plaintiff of any monies that Defendant
received from Brothers of the WheelNomads; and (4) a penalty of $1,000 per day for each violation and each day that the defendants fail
to comply with the Court’s judgment. (Docket 17 at 23-24.)
II. DISCUSSION
The Court is not required to review, under a de novo or any other standard, the factual or

11

legal conclusions of the magistrate judge as to those portions of the findings or recommendation to
which no objections are addressed. Thomas v. Arn, 474 U.S. 140, 150 (1985). Failure to file timely
objections constitutes a waiver of de novo review. 28 U.S.C. § 636(b)(1); see also Snyder v.
Ridenour, 889 F.2d 1363, 1366 (4th Cir.1989); United States v. Schronce, 727 F.2d 91, 94 (4th Cir.
1984). In addition, this Court need not conduct a de novo review when a party “makes general and
conclusory objections that do not direct the Court to a specific error in the Magistrate’s proposed
findings and recommendations.” Orpiano v. Johnson, 687 F.2d 44, 47 (4th Cir. 1982).
In the PF&R, Magistrate Judge Stanley recommended to this Court that the motions to
dismiss be granted as to Counts III, IV, V, and VI of the complaint. (Docket 31 at 28-33.)
Specifically, the PF&R recommends granting the motions on the following bases: (1) as to Count III
of the complaint, because the BOTW trademark is not “famous,” as required to sustain a cause of
action for dilution of a mark by blurring in violation of 15 U.S.C. §1125(c); (2) as to Count IV of the
complaint, because Defendant Mollohan has not registered or used a domain name that is
confusingly similar to the BOTW mark, as required to sustain a cause of action for federal
cybersquatting in violation of 15 U.S.C. §1125(d); (3) as to Counts V and VI of the complaint,
because the complaint fails to satisfy the applicable pleading standards set forth in Bell Atlantic
Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). Magistrate
Judge Stanley also recommended denying Plaintiff’s motion for default judgment and granting
Defendant Mollohan’s motion to deny default judgment because at least one motion to dismiss the
complaint remains pending. (Docket 31 at 33-34.) Neither party has objected to the above
recommendations in the PF&R, and the PF&R is therefore ADOPTED in full as to its
recommendations on the motions to dismiss and the motions related to default judgment.
12

Accordingly, the motions to dismiss [Dockets 5, 13, 20, 26] are hereby GRANTED as to Counts III
through VI; the motion for default judgment [Docket 14] is DENIED; and the motion to deny the
motion for default judgment [Docket 15] is GRANTED.
Defendant Mollohan’s objections are largely predicated on his apparent misunderstanding of
the limited license he was granted to use items bearing Plaintiff’s trademark by operation of
Plaintiff’s by-laws and by virtue of his former membership in the club. Still other of his objections
relate to matters irrelevant to the Magistrate Judge’s recommendations, and indeed to this case at
all.8 In all, Defendant Mollohan submitted eighty-two pages of objections, and many of those
objections related to factual matters that have no bearing on the disposition of this case. Only those
objections directed to dispositive portions of the PF&R and which set forth coherent opposition will
be addressed below.
Defendant Mollohan objects that all references to his “Nomads” organization have been
removed from the internet, and therefore much of the recommended relief has been mooted. (Docket
54 at 3.) However, as remarked on above, this statement is incorrect, at least presently. Defendant
Mollohan’s personal Facebook page features multiple references to the “Brothers of the Wheel

8

For example, the first objection to the PF&R is that Defendant Mollohan is actively working with
the USPTO to remedy any deficiencies in his trademark application and obtain rights in his mark,
although Defendant claims that the PF&R “allude[s] that Defendant has not responded to the
[USPTO] Office Action.” (Docket 54 at 2-3.) However, the PF&R’s analysis and recommendation
on Counts I and II did not rely on any finding related to Defendant’s reaction to the USPTO’s
repeated denials of his trademark application, and this objection is therefore irrelevant.
Other objections include unsubstantiated allegations that Plaintiffs do not engage in charitable
activities as they claim, that Plaintiffs are actively “smearing” Defendant Mollohan on their club
website, and that the Brown affidavit, see supra note 4, was motivated by the affiant’s feelings of
rejection after Defendant Mollohan refused to accept him as a member of the “BOTW Nomads”
club. (Docket 54 at 19-20, 31-33.)
13

Nomads” club, including a rendition of the logo at issue in the present litigation. The objection is
therefore OVERRULED, and Defendant Mollohan is advised that any further misinformation to the
Court, if found to be made intentionally, may lead to penalties more serious than a civil judgment for
monetary damages.
Defendant Mollohan’s next objection is worth reproducing verbatim:
3. Further, the Defendant makes reference to the very relevant remarks of Magistrate
Judge Stanley in the last paragraph on page #2 of her “Finding” which states: “The
By-Laws of the Plaintiff provide that the club retains ownership of the trademarkprotected patch (which is a collective membership mark) and items and licenses or
gives permission to members are retirees to use the protected items.[”] Magistrate
Judge Stanley then refers to the Plaintiff’s club By-Laws. It is the opinion of the
Defendant that this statement made by Magistrate Judge Stanley confirms that
Defendant Mollohan is a retiree of the Plaintiff’s organization (Brothers of the Wheel
Motorcycle Club) and thus received the permission of the Plaintiff upon his
retirement in 2000 to use the Plaintiff’s collective membership mark “for life” as
stated in the Plaintiff’s By-Laws.
(Docket 54 at 3-4.) This objection reveals that Defendant Mollohan misapprehends the nature of the
license he has been granted by Plaintiff’s by-laws. The by-laws, although not a model of clarity,
tend to demonstrate that Plaintiff intended that its trademark and all items bearing on that trademark
remain the sole property of the club.9 The Court cannot locate, nor can Defendant Mollohan
produce, a provision of the by-laws that grants him a license to reproduce Plaintiff’s trademark or a
mark similar to it. In fact, the by-laws discourage reproducing Plaintiff’s trademark: “Anyone found
guilty of duplicating the Club colors will face possible termination of membership.” (Docket 54-5 at

9
For example, both the 2000 and 2012 by-laws provide: “Anyone who has relinquished
membership will return his/her colors at that time along with any properties owed to the Club and
shall forfeit any properties that he has given to the Club.” (Docket 1-3 at 8 and 29.) Also, the bylaws state: “Any retired member who decides to join another club and chooses to wear that club’s
colors shall put away his retired Brothers of the Wheel patch permanently. No member will be
allowed to serve two (2) clubs or fly two (2) different patches simultaneously.” (Id. at 9, 30.)

14

12.) Contrary to Defendant Mollohan’s objection, the Court FINDS that Magistrate Judge Stanley’s
interpretation of the by-laws is correct: Plaintiff retains ownership of its mark and all items bearing
the mark, and the club permits members and those retirees in good standing to retain possession of
certain items bearing the mark, subject to myriad conditions. Nothing in the by-laws alters the
application of federal trademark laws to this case.10 The objection is OVERRULED.
Next, Defendant Mollohan objects that there exist other motorcycle clubs bearing the name
“Brothers of the Wheel,” and he specifically cites one club in Indiana. (Docket 54 at 10-11.) To the
extent Mollohan is arguing that Plaintiff should not have been issued its trademark, he fails to set
forth any information that would permit the Court to make such a determination (such as the date of
first use in commerce and the geographic scope of the Indiana club’s use). Instead, it appears that
Mollohan is attempting to establish that the term “Brothers of the Wheel” is a generic term for
motorcycle clubs across the globe. Again, however, Defendant fails to present anything more than

10

Defendant Mollohan’s mistaken reading of the by-laws is evident in other objections to the
PF&R. For example, Defendant Mollohan argues that Plaintiff prints its mark in many places and
permits its members to get tattoos of the mark, allegedly evidencing Plaintiff’s intent to permit
unfettered use of the mark by its members or retirees. This argument has no foundation in the
record, and it misses the basic policy underlying trademark law: to protect the public’s association of
a particular good or service with a specific mark symbolizing the originator of the good or service.
Plaintiff is not harmed by its mark appearing on a wide swath of clothing and apparel, provided the
mark continues to conjure Plaintiff’s club in the minds of the public. Instead, it harms Plaintiff for
another individual, in this case Defendant Mollohan, to pass off his goods or services as those of
Plaintiff’s, which may occur if Mollohan uses a mark that is confusingly similar to Plaintiff’s in
promoting his “Nomads” club.
A parallel example may help illustrate the point. One is permitted to wear a t-shirt bearing the word
“Nike” and the unique Nike “swoosh,” but he may not form a company called “Nike footwear” or
use a mark confusingly similar to the swoosh. The former use does nothing to impair the public’s
association of the Nike brand with its product; the latter us does. In this case, the use of Plaintiff’s
mark as an indicator of Plaintiff’s club does nothing to harm Plaintiff, although the by-laws may
purport to restrict some such uses (for example, who can wear what apparel and when). However,
Defendant Mollohan’s use of a mark similar to Plaintiff’s to signify his unaffiliated motorcycle club
15

bare allegations that other clubs exist and a screen shot of an unidentifiable webpage bearing the
words “Brothers of the Wheel MC of Anderson Under Construction,” two photos of men that appear
to be bikers, and no other substantive information. (Docket 54-4 at 2.) Without more, the Court is
unable to discern whether other clubs going by the name “Brothers of the Wheel” exist in the United
States. Further, as Plaintiff is the owner of a registered trademark for the words “Brothers of the
Wheel MC,” it is presumed to be the rightful owner of the word mark and therefore entitled to
exclusive use of the mark. See 15 U.S.C. § 1115(a). The alleged existence of other motorcycle
clubs going by the same name as Plaintiff does nothing to diminish Plaintiff’s right to relief in this
case.
In the alternative, Defendant Mollohan may be suggesting that Plaintiff’s remedy for possible
infringement is limited to the territory in which it operates. In this case, it appears that Plaintiff
operates in Kentucky, Ohio, and West Virginia, and accordingly, although its federal trademark
registration entitles Plaintiff to nationwide priority of use, the injunctive remedy of which Plaintiff
may avail itself is indeed limited to the geographic area in which it operates. In support of this rule,
the Fourth Circuit has stated as follows:
Under the Lanham Act, the senior owner of a federal registration has superior
priority over all junior users, but a court will enjoin the junior user only if the
registrant is likely to enter, or has entered, the junior user’s trade territory. As a
leading commentator has explained, “the registrant has a nationwide right, but the
injunctive remedy does not ripen until the registrant shows a likelihood of entry into
the disputed territory . . . . [The junior user’s] use of the mark can continue only so
long as the federal registrant remains outside the market area.” 2 J. Thomas
McCarthy, McCarthy on Trademarks § 26.14[1] (3d ed. 1992) (emphasis in original)
(citing Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959)).
This Court applied this rule in Armand’s Subway, Inc. v. Doctor’s Associates, Inc.,
604 F.2d 849, 849–50 (4th Cir. 1979), in which the court reasoned:

may confuse members of the public on the source of any services the parties render.
16

After the Lanham Act, nationwide protection was extended to
registered marks, regardless of the area in which the registrant
actually used the mark, because under 15 U.S.C. 1072 registration
constituted constructive notice to competing users. Dawn Donut Co.,
267 F.2d at 362. However, as held in that case, the protection is only
potential in areas where the registrant in fact does not do business. A
competing user could use the mark there until the registrant extended
its business to the area. Thereupon the registrant would be entitled to
exclusive use of the mark and to injunctive relief against its
continued use by prior users in that area. Id. at 360, 365.
From this reasoning, the court concluded that “in no case would [the party alleging
infringement] be entitled to injunctive relief except in the area actually penetrated by
[that party].” Id. at 851.
Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264, 268-69 (4th Cir. 2003).
Accordingly, the mandatory injunction Plaintiff seeks will be limited to the geographic territory
which it has actually penetrated—which appears to be limited to the states of West Virginia, Ohio,
and Kentucky.
Defendant Mollohan next argues that no colors are mentioned in Plaintiff’s trademark
registration, and the PF&R therefore erroneously considered the similarity of the colors used in
Plaintiff’s logo to those used in Defendant Mollohan’s logo in assessing the merits of Counts I and
II. (Docket 54 at 15.) After reviewing Plaintiff’s trademark registration, the Court must agree with
Defendant Mollohan that the PF&R erroneously considers coloration in Plaintiff’s mark when it
analyzes the similarity of the two marks. However, the error is inconsequential for two reasons.
First, Plaintiff’s trademark registration may not include and lay claim to colors, but the mark may
very well feature the coloration Magistrate Judge Stanley considered. For purposes of Count II,
which does not require trademark registration at all, the Court is fully able to consider the mark as
Plaintiff uses it, not simply as it is registered. Second, even as to Count I, in considering the
similarity of the marks without regard to color, the outcome is much the same. Both marks feature
17

concentric circles separated by motorcycle chains; both marks contain an eagle, wings spread, at
their center; the eagle in both marks clutches an American flag in one talon and a battle axe in the
other talon; and both marks feature the words “Brothers of the Wheel” in their outermost circle, with
the words appearing at the same locations. In light of these shared features, which account for the
bulk of the marks,11 the Court has no trouble concluding that the marks are substantially similar to
one another and remain likely to confuse the public, as Magistrate Judge Stanley concluded in the
PF&R.

Defendant Mollohan next raises an objection that was addressed and dispatched in the

PF&R—that Plaintiff’s mark is invalid due to its depiction of an American flag. (Docket 54 at 1516.) Defendant’s objection relies on 15 U.S.C. § 1052(b), which provides:
No trademark by which the goods of the applicant may be distinguished from the
goods of others shall be refused registration on the principal register because of its
nature unless it . . . [c]onsists of or comprises the flag or coat of arms or other
insignia of the United States or of any State or municipality, ... or any simulation
thereof.
As Magistrate Judge Stanley aptly explained, however, the inclusion of a portion of the American
flag does not always disqualify a trademark from registration. The USPTO’s trademark examination
manual contains the following guideline:
Marks containing elements of flags in a stylized or incomplete form are not refused
under [15 U.S.C. § 1052(b)]. The mere presence of some significant elements of
flags, such as stars and stripes (U.S. flag) or a maple leaf (Canadian flag), does not
necessarily warrant a refusal. If the flag design fits one of the following scenarios,
the examining attorney should not refuse registration under [§ 1052(b)]:
• The flag design is used to form a letter, number, or design.
• The flag is substantially obscured by words or designs.
• The design is not in a shape normally seen in flags.
11

From the Court’s review, it appears that the only distinctions between the marks are that
Defendant Mollohan changed the typeface of the words “Brothers of the Wheel,” switched the
locations of the flag and the axe, and removed the scales located above the eagle’s head in Plaintiff’s
mark. These alterations are extremely minimal.
18

• The flag design appears in a color different from that normally used in the national
flag.
• A significant feature is missing or changed.
U.S. Dept. of Commerce, Patent and Trademark Office, Trademark Manual of Examining Procedure
§ 1204.01(b) (8th ed. October 2011). Based on her analysis of the above standard and Plaintiff’s
mark, Magistrate Judge Stanley concluded that the last scenario applies:
The American flag contained in the plaintiff’s registered mark has significant
features that are missing or changed: it has a square shape, there are no stars, and
there are less than thirteen stripes. Due to this compliance with [the manual], the flag
does not violate Section 1052(b).
(Docket 31 at 21-22.) Magistrate Judge Stanley also concluded that the USPTO’s determination that
Plaintiff’s mark is eligible for registration is entitled to some degree of deference. (Id. at 22.)
Defendant Mollohan raises no objection to rebut the Magistrate Judge’s analysis of the validity of
Plaintiff’s mark in light of the guidance supplied by the USPTO’s manual. Instead, Mollohan
regurgitates the very basic argument that if his mark was rejected for including a rendition of the
American flag, so should Plaintiff’s mark be invalidated.12 The Court is in agreement with the
Magistrate Judge on this issue, and the objection is therefore OVERRULED. Straightforward
application of the manual to Plaintiff’s mark in this case yields the result reached by the Magistrate
Judge.

12

Defendant Mollohan also argues that the USPTO is undertaking an investigation of Plaintiff’s
mark regarding the American flag. He states that “a final decision is coming,” and that there is “a
very strong likelihood” that Plaintiff’s mark will be cancelled, thus mooting this case. First, there is
nothing to substantiate Defendant’s claim that Plaintiff’s mark is under review and will be cancelled.
According to USPTO’s records as of the date of this opinion and order, no review has been
initiated. Furthermore, as Magistrate Judge Stanley makes clear, Count II does not depend on a
mark’s registration with the USPTO, so this objection is wholly irrelevant as to Count II. (Docket
21 at 28.)
19

Defendant Mollohan next objects that Plaintiff’s mark has not gained secondary meaning in
the relevant market, and therefore, it cannot state a claim for infringement (Count I) or false
designation of origin (Count II). (Docket 54 at 39-43.) This objection overlooks the conclusion in
the PF&R that Plaintiff’s mark is suggestive rather than merely descriptive. In the realm of federal
trademark law, suggestive, arbitrary, or fanciful marks are treated as inherently distinctive and are
therefore afforded protection. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69
(1992). Generic marks, or marks that merely identify the “genus” of which a product is a particular
“species,” are entitled to no protection. See id. Descriptive marks, or those marks that simply
describe a feature or features of a mark, are not inherently distinctive, but they may be entitled to
protection if the mark holder can demonstrate “secondary meaning,” or that the public associates its
descriptive mark with its product. Id.
Taking the objection in the manner most beneficial to Defendant Mollohan, he appears to
argue that the PF&R was incorrect to conclude that Plaintiff’s mark was suggestive and instead
urges the Court to find that Plaintiff’s mark is a descriptive mark that has acquired no secondary
meaning. The Fourth Circuit summarized the definitions of “suggestive mark” and “descriptive
mark” as follows:
Suggestive marks, which are also inherently distinctive, do not describe a
product’s features but merely suggests them. Retail Servs., Inc. v. Freebies Pub’g,
364 F.3d 535, 538 (4th Cir. 2004). In other words, the exercise of some imagination
is required to associate a suggestive mark with the product. Id. Examples of
suggestive marks are “Coppertone®, Orange Crush®, and Playboy®.” Sara Lee
Corp. v. Kaiser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).
Descriptive marks define a particular characteristic of the product in a way
that does not require any exercise of the imagination. Retail Servs., 364 F.3d at 538.
Examples of descriptive marks include “After Tan post-tanning lotion” and “5
Minute glue.” Sara Lee, 81 F.3d at 464.
20

George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 394 (4th Cir. 2009). The Court
concludes, as did the Magistrate Judge, that the word mark “Brothers of the Wheel” is a suggestive
mark for a motorcycle club because it requires “some imagination . . . to associate [the mark] with
the product.” See Retail Servs., 364 F.3d at 538. As such, the mark is inherently distinctive by law
and no secondary meaning need be established in order for Plaintiff to prevail. The objection is
OVERRULED.
Defendant Mollohan also raises two objections13 related to the relief sought by Plaintiff.
First, Mollohan states that he never registered the domain name “botw.com,” and he is therefore
unable to relinquish it, as sought by Plaintiffs. The Court confirmed that the domain name
“botw.com” belongs to a company doing business as “Bank of the West,” which appears unaffiliated
with Defendant’s “Nomads” club. Further, the cybersquatting claim has been dismissed, so no relief
sought by Plaintiffs that relies on that claim (which forfeiture of the “botw.com” domain name does)
may be awarded. Second, Defendant Mollohan states that he has derived no financial benefit from
his use of the mark, and therefore, no actual damages should be awarded. In the PF&R, Magistrate
Judge Stanley recommends awarding Plaintiff actual damages, but she also states: “Rather than
propose a specific amount, the undersigned recommends that the parties be required to submit more
detailed statements of profits, losses, and costs to the presiding District Judge before a damages
award is calculated.” (Docket 31 at 56.) Because there is a discrepancy between the amount
claimed by Plaintiffs in the affidavit of its national vice-president, see supra note 3, and Defendant
Mollohan in his objections, the Court will ADOPT Magistrate Judge Stanley’s recommendation on

13

Defendant Mollohan also states that he is financially and emotionally unable to cope with a
money judgment against him. This objection, to the extent it may be classified as such, is not
relevant to the Court’s analysis of Plaintiff’s right to relief.
21

the award of actual damages. Within thirty days, the parties are to submit to the Court a full and
detailed accounting of the amounts of profits, losses, and costs attributable to Defendant Mollohan’s
use of the mark. In lieu of the accounting, and in recognition of Plaintiff’s apparent abandonment of
actual money damages in its response to Mollohan’s objections, Plaintiff may submit a notice that it
no longer seeks money damages.14
Finally, Defendant Mollohan makes several objections that are relevant only to claims on
which his motions to dismiss were granted. For example, he argues that Plaintiff’s mark is not a
“famous” mark, and therefore a cause of action for dilution by blurring cannot be maintained.
Magistrate Judge Stanley made exactly this finding in her PF&R. Defendant Mollohan also argues
that Plaintiffs cannot demonstrate bad faith, as required to state a claim for cybersquatting (Count
IV). Again, Magistrate Judge Stanley recommended dismissing the relevant count of Plaintiff’s
complaint, though for other reasons, and the objection is therefore irrelevant.
III. CONCLUSION
Pursuant to the foregoing discussion: (1) the PF&R [Docket 31] is ADOPTED; (2) the
motions to dismiss [Dockets 5, 13, 20, 26] are GRANTED as to Counts III, IV, V, and VI; (3) the
motion for default judgment [Docket 14] is DENIED; (4) the motion to deny the motion for default
judgment [Docket 15] is GRANTED: and (5) the motion for summary judgment [Docket 17] is

14

This suggestion is based on a representation from Plaintiff’s attorney to the Court, albeit in an
improper setting. Plaintiff’s attorney made several attempts to communicate ex parte with the Court
and Court staff in chambers. This contact is highly inappropriate, especially given the pro se status
of Defendant Mollohan. The Court and chambers staff are unable to provide legal assistance to
parties or their counsel, and a practicing attorney should know better than to solicit such advice from
the Court. To be clear, in issuing this opinion, the Court has relied solely on the record as it appears
in the electronic case filing system, and no consideration was given to any matter not appearing in
the record.
22

GRANTED. Defendant Mollohan’s motion for entry of injunction [Docket 24] is DENIED AS
MOOT.
Furthermore, the Court FINDS, as did the Magistrate Judge, that all four of the requirements
for the issuance of an injunction15 are present in this case:
First, the plaintiff has satisfied the irreparable injury requirement. There is evidence
of actual confusion, as stated earlier; it has suffered monetary losses, as testified to in
the affidavit of Mr. Carey and not denied by the defendant; and its mark and
association have become associated with the ne’er-do-well community of motorcycle
nomads. There is also an inadequate remedy at law, as it is evident that the defendant
has no intention of ceasing his infringing behavior. The balance of hardships also
falls on the plaintiff’s side. It is the senior user of the mark, and has spent decades
building up its name and reputation; any losses suffered by the defendant are his own
fault, especially after he admittedly used the plaintiff’s mark as his inspiration. The
public would also not be disserved by the issuance of an injunction against the
defendant.
(Docket 31 at 52-53.) Further, it is apparent to the Court that Defendant Mollohan was
aware of Plaintiff’s logo and word mark, and his subsequent use of each was therefore in bad
faith.
The parties are DIRECTED to proceed as follows:




15

Defendant Mollohan is ORDERED to cease use of the protected logo featuring
concentric circles with an eagle clutching battle axes at its center to identify a
motorcycle club organized or operating in Ohio, West Virginia, or Kentucky.
Defendant Mollohan is further ORDERED to cease using the word mark “Brothers
of the Wheel” or the acronym “BOTW” to identify the motorcycle club he
incorporated in West Virginia and apparently operates in a number of states, to the
extent the mark is used in Plaintiff’s area of operation—that is, Kentucky, West
Virginia, and Ohio.

Those requirements are: (1) that the party seeking the injunction 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)).
23



Defendant Mollohan is ORDERED to dissolve any business entity organized in
West Virginia, Kentucky, or Ohio bearing the name “Brothers of the Wheel.”



Defendant Mollohan is ORDERED to submit to the Court within thirty days of the
entry of this order a report detailing his compliance with its requirements. Failure to
submit a report may lead to the imposition of sanctions, including monetary fines or
imprisonment.



The parties are ORDERED to submit to the Court within thirty days of the entry of
this order a report setting forth in detail any profits Defendant received from the
infringement, any damages sustained by Plaintiff as a result of the infringement, and
the costs of the action, including attorney’s fees.



The Magistrate Judge recommended an award of both treble damages and attorney’s
fees, and the Court ADOPTS that recommendation. However, no amount of
damages will be ordered until the accounting of profits, losses, and costs and fees is
received and evaluated.

IT IS SO ORDERED.
The Court DIRECTS the Clerk to send a copy of this Order to counsel of record and any
unrepresented party.
ENTER:

24

November 14, 2012