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Giannone v. Giannone

United States District Court, E.D. Pennsylvania

December 20, 2019

JOSEPH GIANNONE, SENIOR and JOSEPH GIANNONE, INC., t/a JOSEPH GIANNONE PLUMBING & HEATING, Plaintiffs,
v.
JOSEPH GIANNONE, JUNIOR and JOSEPH GIANNONE HEATING & AIR CONDITIONING, INC., t/a JOSEPH GIANNONE PLUMBING • HEATING • AIR CONDITIONING, Defendants.

          MEMORANDUM

          GERALD AUSTIN MCHUGH UNITED STATES DISTRICT JUDGE

         A lamentable father-son conflict over a family plumbing business provides the backdrop for this Lanham Act case. The father, Joseph Giannone, Senior, seeks summary judgment on his Lanham Act trademark infringement and unfair competition claims against his son, Joseph Giannone, Junior, as well as on Junior's counterclaims. In order to prevail in his Lanham Act claims, Senior must be able to show that the marks that form the basis of his suit are valid and protectable. Although Senior has registered the marks at issue with the United States Patent and Trademark Office (USPTO), which ordinarily entitles them to a presumption of validity, Junior has timely contested their validity such that Senior must make an additional showing that the marks have developed secondary meaning in the minds of consumers. Because Senior has failed to meet his burden of demonstrating secondary meaning, his Motion for Summary Judgment must be denied.

         I. Factual and Procedural Background

         Senior has owned and operated a plumbing and heating business in Philadelphia under the name Joseph Giannone Plumbing & Heating since 1983, though he first registered the name JOSEPH GIANNONE (the ‘809 Registration) and the JOSEPH GIANNONE PLUMBING & HEATING (the ‘749 Registration) marks with the USPTO in 2015, and a stylized JOSEPH GIANNONE PLUMBING & HEATING mark with the pipe and wrench logo (the ‘571 Registration) in 2017. MSJ at 2-3, ECF 69. The mark and logo consist of an image of a pipe and wrench and the name of the business in a blue and yellow color scheme-two versions follow:

         (Image Omitted)

         Junior worked as Senior's employee for a period of time. But, in 2008, Junior founded his own business-Joseph Giannone Heating & Air Conditioning-which he operated out of Senior's Philadelphia business office. At that time, Junior's business was confined to HVAC work-heating, ventilation, and air conditioning repair-that did not compete with Senior's business, particularly Senior's plumbing business. Also during this time, Senior's and Junior's businesses shared not only office space but also telephone lines, shop space, repair trucks, and even employees. Both businesses used Senior's marks, and all went well enough for a period of time.[1] But, in 2013, after some conflicts with Senior, Junior moved his business out of Senior's office space in Philadelphia to Folcroft, PA; expanded into plumbing services that competed with Senior's business; and advertised his business using this logo:

         (Image Omitted)

         Despite the fact that Junior's business now maintained a physical presence outside the City of Philadelphia, Junior advertised heavily within the same Philadelphia zip codes served by Senior's plumbing business using the Joseph Giannone Plumbing • Heating • Air Conditioning logo. Junior even went as far as to place his logo on the side of a building half a mile from Senior's business.

         This litigation followed, with Senior and his business Joseph Giannone Plumbing & Heating as co-plaintiffs suing Junior and his business Joseph Giannone Plumbing • Heating • Air Conditioning under the Lanham Act and Pennsylvania common law. Junior counterclaimed, asserting breach of contract, tortious interference with current and prospective business relations, Pennsylvania common law trademark infringement, and various Lanham Act claims including unfair competition, false designation of origin, and false advertising. Extensive and prolonged discovery has followed and Senior now seeks summary judgment on his Lanham Act trademark infringement, unfair competition, and false advertising claims, as well as his supplemental Pennsylvania state law trademark infringement claim. He seeks injunctive relief, compensatory damages, an accounting and disgorgement of profits, treble statutory damages, and attorney's fees.

         II. Standard of Review

         This case is governed by the well-established standard for summary judgment set forth in Fed.R.Civ.P. 56, as elaborated in Celotex Corp. v. Catrett, 477 U.S. 317 (1986). In cases that turn on credibility determinations, summary judgment is inappropriate. Coolspring Stone Supply, Inc. v. Am. States Life Ins. Co., 10 F.3d 144 (3d Cir. 1993).

         III. Discussion

         A. Senior is not entitled to summary judgment on his Lanham Act trademark infringement and unfair competition claims, related state law claims, nor on his Lanham Act false advertising claim

          The Lanham Act protects against “the use of trademarks which are likely to cause confusion, mistake, or deception of any kind.” Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 711 (3d Cir. 2004) (cleaned up).[2] Plaintiffs' principal claims under the Lanham Act- federal trademark infringement, 15 U.S.C. § 1114, and federal unfair competition, 15 U.S.C. § 1125(a)(1)(A)-are measured “by identical standards.” A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir. 2000). “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.” Id. at 210-11. The plaintiff bears the burden of proof. Id. at 210.

         Notwithstanding the marks' registration with the USPTO, Senior has failed to show that they are legally protectable as Junior has contested their validity in a timely fashion. Senior correctly asserts that “[a] certificate of registration of a mark upon the principal register . . . shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the owner's ownership of the mark, and of the owner's exclusive right to use the registered mark in commerce or in connection with the goods or services specified in the certificate.” 15 U.S.C. § 1057(b); B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142-43 (2015). If, however, a federally registered mark is contested within five years of its registration, Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 n.4 (3d Cir. 2000), 15 U.S.C. §§ 1058, 1065, then “validity depends on proof of secondary meaning, unless the unregistered or contestable mark is inherently distinctive.” Ford Motor Co. v. Summit Motor Prods., 930 F.2d 277, 291 (3d Cir. 1991). The earliest registration of one of Senior's marks was in 2015, and Junior has contested the ...


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