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Harp v. Rahme

United States District Court, Third Circuit

November 26, 2013

EVERLINA LAURICE HARP, Plaintiff,
v.
LAURICE EL BAHDRY RAHME, et al., Defendants.

MEMORANDUM

EDUARDO C. ROBRENO, District Judge.

Currently pending in this case is a motion for summary judgment filed by Defendants Laurice El Badry Rahme ("Rahme"), Laurice El Badry Rahme, Ltd. ("Rahme Ltd."), and Saks Fifth Avenue Enterprises ("Saks") (collectively, "Defendants"), and a "Counterclaim, " which the Court construes as a cross motion for summary judgment, filed by Plaintiff Everlina Laurice Harp ("Plaintiff"). The factual record is sparse in this case but the material facts are uncontested. Plaintiff's allegations do not form a basis for any of the legal claims she asserts. Accordingly, the Court will grant Defendants' motion for summary judgment as to all counts and will deny Plaintiff's motion for summary judgment as to all counts.

I. BACKGROUND and PROCEDURAL HISTORY

Since 1994, Plaintiff[1] has been in the business of developing, marketing, distributing, selling, and promoting jewelry-cleaning services, polishing products, perfume products, soaps, and lotions. See Am. Compl. ¶ 10, ECF 36. Plaintiff applied for a trademark to establish her brand identity in April 1994. Id . ¶ 12. The United States Patent and Trademark Office registered her trademark, "Everlina Laurice, " on January 1, 1997. Id.[2] Since this time, Plaintiff has traded under the names "Everlina Laurice, " "Everlina, " and "Laurice." Id . ¶ 13.

On February 12, 2004, Defendant Rahme Ltd. filed a petition to cancel the registration of trademark "Everlina Laurice." See Pl.'s Resp. Mot. Dismiss 11, Aug. 14, 2012, ECF No. 49. Rahme Ltd. also sought to register the mark "Laurice" for perfumes, colognes, and room fragrances but its application was denied. See Defs.' Reply, Ex. A, 1-3, ECF No. 88-2.[3] Rahme Ltd. then withdrew its petition to cancel. See Am. Compl., Ex. C, Def. Rahme's Withdrawal of Petition to Cancel Pl.'s trademark.

In a letter dated April 5, 2012, Plaintiff contacted Saks regarding the sale of perfumes with the "Laurice & Co." mark in Saks's department stores. Id., Exs. B1-B2. Plaintiff stated that Defendant Saks's use of the "LAURICE" mark in connection with the sale of Defendant Rahme Ltd.'s Bond No. 9 perfume line constituted trademark infringement, as such use was likely to cause confusion with Plaintiff's registered "EVERLINA LAURICE" and common law "LAURICE2122" marks. Id., Ex. B1. Saks did not respond to Plaintiff's letter and did not cease sales and marketing of the alleged infringing product. Id . ¶ 16. In an apparent further attempt to protect her original mark, Plaintiff obtained an additional registered trademark for the name "LAURICE" on June 12, 2012. Id., Ex. D.

Plaintiff now brings this action for trademark infringement and related claims against Defendants, seeking both monetary damages and injunctive relief. Plaintiff filed an amended complaint on July 9, 2012 (ECF No. 36), asserting the following seven counts against all Defendants:

(1) Violation of the Lanham Act through Defendants' use of the names "Everlina, " "Laurice, " and "Everlina & Laurice" in connection with the sale of Bond No. 9 perfume;
(2) Violation of the Lanham Act through Defendants' use of the name "Laurice" in connection with a business not affiliated with Plaintiff;
(3) Violation of the Trademark Counterfeiting Statute;
(4) Common Law Unfair Competition;
(5) Violation of the Federal Trademark Dilution Act;
(6) Intentional Interference with Actual and Prospective Business Relations; and
(7) Civil Conspiracy.

Between July and November of 2012 Defendants moved to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), or, in the alternative, for a more definite statement. See Def. Saks's Mot. Dismiss, ECF No. 40; Def. Rahme's Mot. Dismiss, ECF No. 69. Plaintiff filed several responses to these motions. See Pl.'s Resp. Mot. Dismiss, Aug. 14, 2012; Pl.'s Resp. Mot. Dismiss, Nov. 15, 2012, ECF No. 71. A hearing was held on December 3, 2012 to consider the Defendants' pending motions. At the hearing the Court determined that the case turns in large part on whether Plaintiff actually alleges facts constituting trademark infringement and if so what products that infringement attaches to. The Court therefore concluded that a fuller factual record was warranted. See Hr'g Tr., 25:12-25:15, Dec. 3, 2012, ECF No. 81. Defendants' motions to dismiss were denied and the Court issued a new scheduling timeline, directing Defendants to file any motion for summary judgment within 30 days.

Pursuant to the Court's order, Defendants filed a motion for summary judgment on January 2, 2013 alleging that the material facts related to this case are not in dispute and that as a matter of law each of Plaintiff's claims fail. Central to this motion is Defendants' contention that "Laurice & Co." has only been used as a business or trade name and never as a trademark. See Defs.' Mot. Summ. J., ECF No. 83.

Also on January 2, 2013, Defendant Rahme submitted to the Court a declaration with numerous attached exhibits representing her use of "Laurice & Co." as a trade name in conjunction with the sales of her line of over 60 perfumes. See Decl. Laurice El Badry Rahme, ECF No. 84. Rahme's attachments include a certificate of incorporation of "Laurice El Badry Rahme Ltd., " issued in 1989, and a certificate of assumed name of "Laurice & Co., " dated May 30, 1995. See Decl. Laurice El Badry Rahme, Exs. B and C, ECF No. 84-1. The attachments also illustrate "Laurice & Co." stickers that the parties referred to at the December 3, 2012 hearing. It appears that either a sticker or printed label located on the bottom or back of each of Defendants' products features: in large cursive type, "Bond No. 9, " and underneath, in smaller print, "NEW YORK, " the name of the specific perfume, such as "PARK AVENUE, " or "CHINATOWN, " and finally, "LAURICE & CO. LTD, New York, NY, 10012." See generally Decl. of Laurice El Badry Rahme, Exs. F - YY (images of Defs.' product labels), ECF No. 84-2 - 84-7.

Plaintiff's response, [4] filed on January 30, 2013, reiterates the conclusory statements that Defendants' use of "Laurice & Co." amounts to trademark infringement and unfair competition, that Defendants' ownership of the domain name "www.lauriceco.com" diverts Plaintiff's customers, [5] and that the United States Patent and Trademark Office's denial of Defendant Rahme Ltd.'s application to trademark "Laurice & Co." because of likely confusion with Plaintiff's "Everlina & Laurice" mark provides evidence of likelihood of confusion. See Pl.'s Resp. Mot. Summ. J., Jan. 30, 2013, ECF No. 86.

Plaintiff also filed a short document on January 30, 2013, labeled "Counterclaim" which the Court construes as a cross motion for summary judgment. See Pl.'s Counterclaim, ECF No. 87. This submission largely duplicates Plaintiff's assertions in her response to Defendants' Rule 56 motion. Specifically, Plaintiff again argues that "Laurice" is an "extremely strong mark on the Trademark registry, " that Defendants' ownership of the "www.lauriceco.com" domain name infringes with Plaintiff's trademark rights, that a comparison the parties' marks shows a likelihood for confusion, and that Defendants are intentionally and maliciously trying to harm Plaintiff. Id.

Defendants filed a memorandum in reply to Plaintiff's response and a counterclaim to Defendants' Rule 56 motion (ECF Nos. 86, 87) arguing that Plaintiff's submissions are "improper in form and substance and should be given no consideration." Defs.' Reply, 3, ECF No. 88. Defendants argue that Plaintiff does not refute any of Defendants' statements of fact. Id. at 2. Furthermore, Defendants argue that because Plaintiff's submissions fail to address any of Defendants' assertions of fact, these facts should be considered undisputed. Id. at 3 (citing Fed. R. Civ. Pro. 56(e); Fabral, Inc. v. B & B Roofing Co., Inc. , 773 F.Supp.2d 539, 542-43 n. 4 (E.D. Pa. 2011)). Additionally, Defendants characterize Plaintiff's submissions in opposition as merely "repeat[ing] her prior bare assertions and conclusory allegations." Defs.' Reply 3, 4. In their reply Defendants also include exhibits that document the 2004 application by Defendants of a trademark for the "Laurice & Co." mark. See generally Defs.' Reply, Exs. A - D, ECF Nos. 88-2-88-5.

II. LEGAL STANDARD

A. Summary Judgment Standard

Summary judgment is appropriate "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). "A motion for summary judgment will not be defeated by the mere existence' of some disputed facts, but will be denied when there is a genuine issue of material fact." Am. Eagle Outfitters v. Lyle & Scott Ltd. , 584 F.3d 575, 581 (3d Cir. 2009) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247-48 (1986)). A fact is "material" if proof of its existence or nonexistence might affect the outcome of the litigation, and a dispute is "genuine" if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson , 477 U.S. at 248.

The Court will view the facts in the light most favorable to the nonmoving party. "After making all reasonable inferences in the nonmoving party's favor, there is a genuine issue of material fact if a reasonable jury could find for the nonmoving party." Pignataro v. Port Auth. of N.Y. & N.J. , 593 F.3d 265, 268 (3d Cir. 2010). While the moving party bears the initial burden of showing the absence of a genuine issue of material fact, meeting this obligation shifts the burden to the nonmoving party who must "set forth specific facts showing that there is a genuine issue for trial." Anderson , 477 U.S. at 250.

Although the moving party bears the burden of demonstrating the absence of a genuine issue of material fact, in a case such as this, where the nonmoving party is the plaintiff and bears the burden of proof at trial, the nonmoving party must present affirmative evidence sufficient to establish the existence of each element of his case. Id. at 306 (citing Celotex Corp. v. Catrett , 477 U.S. 317, 323 (1986)). Where a plaintiff fails to point to "sufficient cognizable evidence to create a material issue of fact such that a reasonable jury could find in its favor, '" then summary judgment may be awarded to a moving defendant. See Perez v. New Jersey Transit Corp. , 341 Fed.App'x 757, 760 (3d Cir. 2009) (not precedential) (citing McCabe v. Ernst & Young, LLP , 494 F.3d 418, 424 (3d Cir. 2007)); see also Zilich v. Lucht , 981 F.2d 694, 696 (3d Cir. 1992) (stating that, to avoid an unfavorable summary judgment, a pro se plaintiff bears the burden of producing evidence "such that a reasonable jury could return a verdict [in his favor]") (citations omitted). The nonmoving party may survive a motion for summary judgment by presenting direct or circumstantial evidence and that evidence "need not be as great as a preponderance, " though it must be "more than a scintilla." McCabe , 494 F.3d at 424 (citing Hugh v. Butler County Family YMCA , 418 F.3d 265, 267 (3d Cir. 2005)).

B. Scope of "Uncontested" Facts

In their legal memorandum and reply in support of motion for summary judgment, Defendants ask the Court to regard the material facts set forth in their motion as uncontested in spite of Plaintiff's response and "counterclaim." See Defs.' Reply. In support of this request, Defendants cite a "generally accepted proposition that all facts not specifically denied by the nonmoving party are deemed admitted." Defs.' Reply, 3, ECF No. 88. Because Plaintiff's responses "are improper in form and substance, " Defendants argue, those submissions should be given no consideration. Id.

Defendants correctly note that though courts are to view facts and inferences in the light most favorable to the nonmoving party, a nonmoving plaintiff cannot rely on unsupported assertions, speculation, or conclusory allegations to avoid the entry of summary judgment. Rather, a plaintiff "must go beyond pleadings and provide some evidence that would show that there exists a genuine issue for trial." Jones v. United Parcel Serv. , 214 F.3d 402, 407 (3d Cir. 2000); see also Celotex , 477 U.S. at 324 ("[N]onmoving party [must] go beyond the pleadings and... designate specific facts showing that there is a genuine issue for trial.'" (citing Fed. R. Civ. Pro. 56(e)); Kirleis v. Dickie, McCamey & Chilcote, P.C. , 560 F.3d 156, 161 (3d Cir. 2009) ("Conclusory, self-serving [statements] are insufficient to withstand a motion for summary judgment. Instead, the [party] must set forth specific facts that reveal a genuine issue of material fact." (citations omitted)).

Consequently, the Court will not recognize disputes of material fact based solely on conclusory statements that are not substantiated by specific allegations of fact or evidence on the record. Plaintiff's pro se status does not eliminate her obligation to allege specific facts, substantiated by evidence on the record. See Benckini v. Hawk , 654 F.Supp.2d 310, 316 n. 1 (E.D. Pa. 2009) (While they are held to "less stringent standards, " pro se litigants are nevertheless "not permitted to totally ignore all rules and standards." (quotations omitted)). However, to deny any consideration to Plaintiff's submissions due to deficiencies in formatting would conflict with the policy of construing liberally the submissions of pro se parties. Therefore, the Court finds that inadequacies in the form of Plaintiff's responses to the pending motion for summary judgment will not preclude the Court from considering these submissions, as well as the record as a whole.

III. DISCUSSION

A. Defendants' Motion for Summary Judgment

Defendants argue that no disputes of material fact exist in the instant case and that Defendants are entitled to summary judgment on each of Plaintiffs' claims as a matter of law.

The Court considers Plaintiff's trademark infringement and unfair competition claims (Counts 1-2, 4) together, as all three turn on a common question of "likelihood of confusion." The Court will then consider individually each of Plaintiff's remaining claims.

1. Infringement of, or Unfair Competition with, Plaintiff's trademarks "Everlina & Laurice" or "Laurice" (Counts 1-2, 4)

Plaintiff asserts that Defendants' use of the "Laurice & Co." mark infringes upon Plaintiff's registered trademarks, "Everlina & Laurice" (Count 1) and "Laurice" (Count 2), in violation of the Lanham Act, and further that Defendants' use of the infringing mark constitutes unfair competition in violation of Pennsylvania law (Count 4). Amend. Compl. ¶¶ 23-24, 29, 39.

The Lanham Act ("Act"), 15 U.S.C. §§ 1051, is the controlling federal statute for trademark infringement and unfair competition claims. "The Lanham Act was intended to make actionable the deceptive and misleading use of marks' and to protect persons engaged in... commerce against unfair competition.'" Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 767-68 (1992) (quoting 15 U.S.C. § 1127). To prove either form of Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion. See A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc. , 237 Fed. 3d 198, 210 (3d Cir. 2000). The requirements of a Pennsylvania unfair competition claim mirror those of a Lanham Act claim, but without the additional federal requirement of interstate commerce. See R.J. Ants., Inc. v. Marinelli Enterprises, LLC , 771 F.Supp.2d 475, 489 (E.D. Pa. 2011).

The Court finds that there is no dispute that Plaintiff owns valid and legally protected trademarks for "Everlina & Laurice" and "Laurice, " fulfilling the first two prongs of the infringement and unfair competition tests. See Pl.'s Amend. Compl., Ex. A, Registration of Pl.'s "Everlina Laurice" trademark, ECF No. 36; id., Ex. D, Registration of Pl.'s "Laurice" trademark. Therefore, the Court must proceed to examine whether Plaintiff has pointed to sufficient evidence of record of a likelihood of confusion of the parties' products from which a reasonable jury could find for Plaintiff on the infringement and unfair competition analysis.[6]

"To prove likelihood of confusion, plaintiffs must show that consumers viewing the mark would probably assume the product or service it represents is associated with the source of a different product or service identified by a similar mark.'" Checkpoint Sys., Inc. v. Check Point Software Techs., Inc. , 269 F.3d 270, 280 (3d Cir. 2001) (quoting Scott Paper Co. v. Scott's Liquid Gold, Inc. , 589 F.2d 1225, 1229 (3d Cir. 1978)). The Third Circuit has recognized a non-exhaustive list of ten factors, sometimes referred to as the "Lapp factors, " after the foundational case Interpace ...


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