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Xtreme Caged Combat v. ECC Fitness

United States District Court, Third Circuit

November 12, 2013




Before this Court are Plaintiff’s Motion for Summary Judgment (Doc. No. 34) and Reply in Support thereof (Doc. No. 38) which were renewed by Order of this Court (Doc. No. 50). The Court also considers Defendants’ Response in Opposition To Plaintiff’s Motion (Doc. Nos. 36 and 37).[1] For the reasons outlined below, the Court hereby GRANTS in part and DENIES in part Plaintiff’s Motion for Summary Judgment.


This case involves trademark infringement and other similar claims between two mixed martial arts (“MMA”) businesses operating in the Bucks County and Philadelphia areas.

On April 29, 2009, Plaintiff Ryan Kerwin registered the fictitious name “Xtreme Caged Combat” (“XCC”) with the Pennsylvania Department of State Corporation Bureau. (Pl. Motion for Summary Judgment at Ex. 1, Doc. No. 34 (“Pl. Ex.”)). He described the nature of his business as “mixed martial arts cagefighting.” Id. He thereafter adopted a mark for XCC that typically consists of the white and grey capital letters “XCC” above the smaller words, also in capital letters, “Xtreme Caged Combat.” (Pl. Ex. 20, 27). The capital letters have a horizontal line cutting through them. Id. The mark is sometimes presented without the acronym, with only the words “Xtreme Caged Combat” appearing against a background of a large “X” of a different font. (Pl. Ex. 41). Plaintiff first used the mark on a flyer promoting an MMA fight on October 3, 2009. (Pl. Reply to Def. Response to Pl. Motion for Summary Judgment at Ex. B, Doc. No. 38 (“Pl. Reply”)). On or after this date, the Xtreme Caged Combat business opened at its current location at 11000 Roosevelt Blvd., Philadelphia, PA. (Complaint at ¶ 3, Doc. No. 1). From 2009-2011, XCC promoted at least three fights at the Sportsplex and National Guard Armory event arenas. (Pl. Ex. 29, 30, 31).[2] At present, XCC continues to promote MMA fights, and uses the XCC/Xtreme Caged Combat mark on its promotional materials. See (Pl. Ex. 23-28, 32-37).

Defendants Steve Rosenblum and Ofa Donaldson met Mr. Kerwin in March 2009, and February 2010, respectively, and became aware of his fight promotion services at those times. (Pl. Ex. 40). Mr. Donaldson was employed at Liberty Boxing, a kickboxing, fitness, and MMA business. (Pl. Ex. 10; Answer at ¶ 14, Doc. No. 18). Plaintiff alleges that Mr. Rosenblum was employed at an MMA business called Liberty MMA. (Complaint at ¶ 14).

At some point during their mutual acquaintance, Mr. Kerwin, Mr. Donaldson, and Mr. Rosenblum entered into negotiations “for the purposes of partnering in the ownership and operation of a mixed martial arts facility named Xtreme Caged Combat located at 50 Hulmeville Road, Penndel, PA 19047.” (Pl. Ex. 41). By early November 2011, these negotiations had failed, and the partnership contract for the gym was never signed. (Pl. Ex. 42). Mr. Rosenblum later wrote on Facebook that “Ryan was supposed to be a partnet [sic] with us. However things did not work out as planed [sic]. We chose ECC Fitness instead of Ryans name. We were suppose [sic] to open two gyms and ryan was going to be a partner in one.” (Pl. Ex. 11).

Between September and December 2011, [3] Mr. Rosenblum and Mr. Donaldson adopted the trade names “ECC Fitness” and “Extreme Cage Combat” for use in their own mixed martial arts gym facility. (Pl. Ex. 68). Defendants refer to their business as “ECC or ECC Fitness.” (Answer at ¶ 26). The facility is located at 8801 Torresdale Ave. in Philadelphia, PA, approximately 5-7 miles from XCC’s facility. (Complaint at ¶6; Pl. Ex. 55).[4] ECC Fitness offers “fitness classes, group instruction, personal training, self defense classes, plyometrics, medicine ball workouts, kettle bell workouts, stationary bikes, cardio equipment and kids’ camps for individuals who are seeking to reach their fitness goals.” (Def. Response to Pl. Motion for Summary Judgment at Ex. A (“Def. Ex.”)). The business’s self-described goal is “to provide a fitness center for those striving for a healthier lifestyle.” Id. Mr. Kerwin maintains that Defendants’ entry into the fitness market was precipitated by the failed negotiations between the parties. (Pl. Motion at 18-19; Pl. Reply at 8). In addition, though Defendants aver that “ECC Fitness does not have any fighters, ” (Pl. Ex. 68), ECC Fitness has sponsored boxing matches (Pl. Ex. 45, 46, 67), promoted those matches on the internet, id., are affiliated with at least two boxers (Pl. Ex. 8, 9, 44, 89), employ an MMA fighter (Pl. Ex. 66), and have advertised their sale of “MMA tickets” to an event called “Locked in the Cage.” (Pl. Ex. 9; see also Pl. Ex. 65).

The mark that Defendants adopted for ECC Fitness typically contains an image of a fist holding an octagonal sign stating “Boxing and MMA” beneath the words “ECC Fitness.” (Pl. Ex. 12, 65). The mark has jagged, lightning-like lines emanating from the words. Id. The word “Fitness” is the largest word in the mark, and the letters are usually black and set off by a white outline. Id. There is a horizontal line cutting through the capital letters of the mark. Id. At times, however, Defendants’ mark is presented without the word “Fitness” or the octagonal sign. (Pl. Ex. 3, 45, 65). Moreover, Defendants have referred to themselves simply as “ECC” on Facebook. (Pl. Ex. 46). After adopting their mark, Mr. Donaldson and Mr. Rosenblum began to advertise ECC Fitness through pamphlet mailings, Facebook and other internet postings, T-shirts, and advertisements on grocery carts. See, e.g., (Pl. Ex. 4, 45, 46, 8, 9). These advertisements targeted individuals in the same geographic area in which XCC conducts most of its advertising, (Pl. Motion at 15-16; Def. Response In Opposition to Pl. Motion for Summary Judgment at 13 (“Def. Response”)).

Mr. Kerwin avers that he warned Mr. Rosenblum and Mr. Donaldson multiple times to refrain from promoting their business under the name Extreme Cage Combat, but that these warnings were ignored. (Complaint at ¶20).

On June 4, 2012, Mr. Kerwin opened Xtreme Caged Combat’s general fitness and gym facilities. (Pl. Motion for Summary Judgment at 19-20 (“Pl. Motion”)). At present, XCC is a gym that offers training in the disciplines of MMA, boxing, jiujitsu, muay thai, and wrestling, as well as general fitness facilities. (Pl. Motion at 7). Less than 10% of XCC’s members compete in any discipline of combat sports, while the remaining 90% of its members use XCC only as a place to learn self-defense and stay in shape. Id. Mr. Kerwin currently advertises XCC’s fight promotion and training facilities through the use of flyers, and Facebook and other internet postings, all bearing the XCC/Xtreme Caged Combat mark. See, e.g., (Pl. Ex. 5, 20-22).

In 2012 and 2013, Plaintiff received multiple pieces of communication from individuals or businesses who had mistakenly contacted him when they meant to contact the Defendants. One MMA fighter stated he had defeated an XCC fighter in a recent fight, when in fact he had defeated an ECC Fitness fighter.[5] (Pl. Motion at 15). Two current or former clients of ECC Fitness contacted Plaintiff because they believed their credit cards had been overcharged by XCC, when in fact they had been charged by ECC Fitness. (Pl. Motion at 15; Pl. Ex. 50, 51). Two vendors with whom Plaintiff conducts business, Tents and Events and Primal Nutrition, also contacted Plaintiff about transactions with ECC Fitness, not XCC. (Pl. Motion at 15; Pl. Ex. 47, 48, 49).

Mr. Kerwin brought his claim alleging trademark infringement, pro se, in July 2012. Defendants thereafter brought counterclaims for trademark infringement, false designation/false description, unfair competition, and defamation. At the time that they filed their Response in Opposition To Plaintiff’s Motion, Defendants were represented by counsel. They now proceed pro se as well.


Upon considering a motion for summary judgment, the Court shall grant the motion “if 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). In making this determination, “inferences to be drawn from the underlying facts . . . must be viewed in the light most favorable to the party opposing the motion.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)(alteration in original)(internal quotation marks omitted). “There is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986). The party opposing summary judgment “may not rest upon the mere allegations or denials of the . . . pleading; its response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial.” Saldana v. Kmart Corp., 260 F.3d 228, 232 (3d Cir. 2001)(alteration in original)(internal quotation marks omitted). If the Court does not grant or deny a summary judgment motion in full, “it may enter an order stating any material fact . . . that is not genuinely in dispute and treating the fact as established in the case.” Fed.R.Civ.P. 56(g).


To establish trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114, a plaintiff must prove that (1) the mark is valid and legally protectable, (2) the plaintiff owns the mark, and (3) the defendant’s use of the mark is likely to create confusion concerning the origin of goods or services. E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 191 (3d Cir. 2008). Whether or not a mark is valid and legally protectable depends on its category. The categories are as follows:

[1] arbitrary (or fanciful) terms, which bear no logical or suggestive relation to the actual characteristics of the goods; [2] suggestive terms, which suggest rather than describe the characteristics of the goods;[3] descriptive terms, which describe a characteristic or ingredient of the article to which it refers; and [4] generic terms, which function as the common descriptive name of a product class.

Id. (citing A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir. 1986)). Arbitrary and suggestive terms are automatically protected under the Lanham Act; descriptive terms are protected if they have “acquired a secondary meaning associating the term with the claimant”; and generic terms are accorded no protection. Id. Because Xtreme Caged Combat’s trademark is not registered with the U.S. Patent and Trademark Office (“USPTO”), it bears the burden of proving the existence of a protectable mark. XCC contends that “Extreme Caged Combat” is suggestive, or, in the alternative, descriptive. Whether “Extreme Caged Combat” is suggestive, descriptive, or generic, is a question of fact. Id. at 192 (internal citations omitted).


In its review of the pleadings, arguments, and admissible evidence presented by the parties, the Court has concluded that there exists a genuine dispute of material fact as to whether the mark is suggestive, descriptive, or generic, and, if descriptive, whether it has acquired a secondary meaning. Summary judgment is thus denied on whether the Xtreme Caged Combat mark is valid and legally protectable.

1. Is “Xtreme Caged Combat” Suggestive?

Under the Lanham Act, suggestive terms are automatically valid and legally protectable. A suggestive mark “suggests rather than describes the product or source of the goods by conveying indirect or vague information about the product or service.” Zurco, Inc. v. Sloan Valve Co., 785 F.Supp.2d 476, 490 (W.D. Pa. 2011)(internal quotations omitted). The difference between suggestive and descriptive marks is often “distinguished ‘on an intuitive basis rather than as the result of a logical analysis susceptible of articulation.’” Id. (quoting Dranoff-Perlstein Associates v. Sklar, 967 F.2d 852, 854-55 (3d Cir. 1992)). The commercial impression of a mark must be evaluated in its entirety. In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174, 1177 (Fed. Cir. 2004). If various portions of a mark are individually merely descriptive, the combination of the individual parts must also be considered to see whether the whole “conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.” Id. at 1175 (internal citations omitted).

Third Circuit courts apply the “imagination test” in determining whether a term is suggestive. Zurco, Inc., 785 F.Supp. at 490 (classic examples of suggestive marks include “Coppertone” for suntan oil and “Sheer Elegance” for pantyhose, while descriptive marks include “Vision Center” for optical services and “Investacorp” for an investment company). Under the test, if information about the product or service given by the designation is indirect or vague and requires imagination and thought to get information about the product or service, then the term is being used in a suggestive, not descriptive, manner. 2 McCarthy on Trademarks and Unfair Competition § 11:19 (4th Ed.).

XCC argues that “Xtreme Caged Combat” is suggestive and not merely descriptive. XCC offers, in the form of an affidavit signed by XCC owner Ryan Kerwin, that “Xtreme Caged Combat” is not merely a direct description of the services that his business offers: indeed, a large majority of XCC members utilize XCC’s general “mixed martial arts type services” (Pl. Reply at 11) not because they intend on competing in mixed martial arts fights. Instead, they are “interested in self defense and getting in shape ‘only.’” (Pl. Motion at 7). Of the members that do compete or aspire to do so, some intend to compete in a single non-caged discipline such as ...

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