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Kelly Services, Inc. v. Creative Harbor, LLC

United States District Court, E.D. Michigan, Southern Division

October 16, 2015

KELLY SERVICES, INC. et al., Plaintiffs/Counter-Defendants,
v.
CREATIVE HARBOR, LLC, Defendant/Counter-Plaintiff

          For Kelly Services, Inc., Kelly Properties, LLC, Plaintiffs: Brent Seitz, Harness, Dickey, Troy, MI; Robert J. Lenihan, David P. Utykanski, Harness, Dickey, (Troy), Troy, MI.

         For Creative Harbor, LLC, Defendant, Counter Claimant: Michael P. Donnelly, Fraser, Trebilcock, Detroit, MI; Peter D. Gordon, Peter D. Gordon & Associates, Los Angeles, CA.

         For Kelly Properties, LLC, Kelly Services, Inc., Counter Defendants: Brent Seitz, Harness, Dickey, Troy, MI; David P. Utykanski, Harness, Dickey, (Troy), Troy, MI.

         OPINION AND ORDER GRANTING PARTIAL SUMMARY JUDGMENT IN FAVOR OF PLAINTIFFS/COUNTER-DEFENDANTS ON COUNT IV OF DEFENDANT/COUNTER-PLAINTIFF'S COUNTERCLAIM

         Hon. MATTHEW F. LEITMAN, UNITED STATES DISTRICT JUDGE.

         This is a trademark dispute over the mark " WorkWire" (the " Mark" ). Defendant/Counter-Plaintiff Creative Harbor, LLC (" Creative Harbor" ) alleges that it has priority in the Mark based upon, among other things, two Intent to Use applications that it filed with the United States Patent and Trademark Office (the " USPTO" ) on February 19, 2014 (collectively, the " Creative ITUs" ). Plaintiffs/Counter-Defendants Kelly Services, Inc. and Kelly Properties, LLC (collectively, " Kelly" ) allege that Kelly has priority in the Mark because it used the Mark in commerce before Creative Harbor filed the Creative ITUs.

         In a prior Opinion and Order addressing the parties' cross-motions for summary judgment, the Court ruled that Kelly did not use the Mark in commerce before Creative Harbor filed the Creative ITUs and that Kelly thus does not have priority based on that alleged prior use. ( See Opinion and Order, ECF #62 at 2, Pg. ID 1631.) In that same Opinion and Order, the Court left open the issue of whether, as Kelly argues, Creative Harbor cannot establish priority based upon the Creative ITUs because Creative Harbor lacked a bona fide intent to use the Mark with respect to each of the goods and services identified in those ITUs. ( See id. at 17-18, Pg. ID 1646-1647.)

         The Court has now reviewed the parties' supplemental briefs on this issue, and it holds that (1) Creative Harbor had a bona fide intent to use the Mark on some, but not all, of the goods and services identified in the Creative ITUs and (2) the Creative ITUs are invalid and ineffective because Creative Harbor has not deleted from the ITUs each of the goods and services on which it lacks a bona fide intent to use the Mark. Accordingly, Kelly is entitled to summary judgment on Count IV of Creative Harbor's counterclaim to the extent that count alleges that Creative Harbor has priority in the Mark based upon its filing of the Creative ITUs.

         I.

         The facts and procedural history of this action are set forth in detail in the Court's prior Opinion and Order ( See id. at 2-9, Pg. ID 1631-1638.). The Court includes in this Opinion and Order only the additional facts and procedural history germane to the issues addressed herein.

         A.

         The first of the Creative ITUs, filed under International Class 35,[1] is Application Number 86198230 (the " Services ITU" ). In the Services ITU, Creative Harbor affirmed that it " ha[d] a bona fide intent to use" the Mark in connection with the following lengthy list of services:

Advertising and directory services, namely, promoting the services of others by providing a web page featuring links to the websites of others; Advertising services, namely, promoting and marketing the goods and services of others through all public communication means; Business services, namely, providing an online network for contractors to receive leads and bidding opportunities by means of an online marketplace for the purpose of developing business in the independent contractor, employment, and human resources industry; Business services, namely, registering, screening and verifying the credentials of third-party vendors, suppliers and contractors on behalf of others; Business support services, namely, business consulting to freelancers, start-ups, existing businesses and nonprofit organizations; Employee relations information services; Employment hiring, recruiting, placement, staffing and career networking services; Employment services in the nature of talent casting in the fields of music, video, and films; Employment staffing consultation services; On-line auction services featuring part-time, full-time, and contract and other recruitment opportunities; Online auction services for part-time, full-time, and contract and other recruitment opportunities; Online professional networking services; Professional credentialing verification services in the field of healthcare, law, home contractor services, namely, verifying the skills and knowledge of licensed professionals on behalf of others; Professional staffing and recruiting services; Promoting the goods and services of others by providing hypertext links to the web sites of others; Providing a searchable website featuring the goods and services of other vendors; Providing a web site featuring the ratings, reviews and recommendations on employers and employees and places of employment for use by employees, employers, business owners, and consumers; Providing an employer with candidates or potential employees to fill temporary, contract and permanent positions; Providing an on-line searchable database featuring classified ad listings and employment opportunities; Providing an on-line searchable database featuring employment opportunities; Providing an online searchable database featuring employment opportunities and content about employment; Providing career information; Providing employment information; Providing on-line employment information in the field of recruitment, careers, job resources, job listings, and resumes; Providing on-line employment placement services, namely, matching resumes and potential employers via a global computer network; Providing on-line interactive employment counseling and recruitment services; Providing online databases featuring information relating to employers and employees and places of employment; Temporary personnel services

(Services ITU, ECF #1-13 at 2-3, Pg. ID 34-35) (emphasis in original.)

         The second of the Creative ITUs, filed under International Class 9,[2] is Application Number 8619309 (the " Goods ITU" ). In the Goods ITU, Creative Harbor affirmed that it " ha[d] a bona fide intent to use" the Mark on the following list of goods:

Computer application software for mobile phones, namely, software for for [sic] employment, staffing and recruitment of employees and contractors; Computer application software for for [sic] employment, staffing and recruitment, namely, software for for [sic] finding employment, staffing, recruitment, and contractor opportunities; Computer game software for use on mobile and cellular phones; Computer hardware and computer software programs for the integration of text, audio, graphics, still images and moving pictures into an interactive delivery for multimedia applications; Computer hardware and peripheral devices and computer software for data communication and translating and transmitting data sold therewith; Computer software that provides realtime, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer software that provides web-based access to applications and services through a web operating system or portal interface; Downloadable mobile applications for for [sic] finding part-time, full-time and contract work and employment opportunities

(Goods ITU, ECF #1-14 at 2, Pg. ID 42) (emphasis in original.)

         B.

         In its previously-filed motion for partial summary judgment, Creative Harbor argued that it had priority in the Mark based upon its filing of the Creative ITUs. ( See Creative Harbor's Motion, ECF #48 at 14-18, Pg. ID 785-89.) Kelly countered that the Creative ITUs were invalid and ineffective because Creative Harbor lacked a bona fide intent to use the Mark on all of the goods and services identified in those ITUs at the time Creative Harbor filed them. ( See Kelly's Response Brief, ECF #55 at 8, Pg. ID 1320.) At the same time the Court was considering the parties' arguments with respect to the validity of the Creative ITUs, the parties were contesting the same issue in front of the Trademark Trial and Appeal Board (the " TTAB" ).

         After reviewing Creative Harbor's arguments and Kelly's response, the Court was uncertain as to whether it should rule on the validity of the Creative ITUs or whether it should defer such a ruling to the TTAB. Accordingly, the Court " direct[ed] the parties to file supplemental briefs addressing whether this Court should (1) decide the validity of the Creative ITUs or (2) leave that issue to the TTAB...." ( See Opinion and Order, ECF #62 at 19, Pg. ID 1648.)

         Thereafter, counsel for both parties " conferred and determined that the Court should decide the validity of the Creative ITUs." (Stipulated Order, ECF #64 at 1, Pg. ID 1651.) The parties entered into a stipulation to that effect, and, pursuant to that stipulation, the Court entered an Order providing that it would decide the issue. ( See id. at 2, Pg. ID 1652.)

         The parties have now filed supplemental briefs addressing Kelly's arguments that the Court should void the Creative ITUs because Creative Harbor lacked a bona fide intent to use the Mark on all of the identified goods and services. ( See ECF ## 65 & 66.) Creative Harbor suggests that the Court approach the issue as if Kelly has moved for partial summary judgment on Count IV of its counterclaim. ( See ECF #65 at 2, Pg. ID 1661.) The Court ...


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