United States District Court, E.D. Michigan, Southern Division
OPINION AND ORDER CONFIRMING ARBITRATORS RULINGS ON
PLAINTIFFS TRADEMARK CLAIMS
BERNARD A. FRIEDMAN, SENIOR UNITED STATES DISTRICT JUDGE
matter is presently before the Court on (1) defendants'
motion for confirmation of the arbitrator's trademark
rulings [docket entry 70]; (2) plaintiffs motion for
confirmation of the arbitrator's trademark rulings
[docket entry 71]; and (3) plaintiffs motion for permanent
injunctive relief [docket entry 72]. Pursuant to E.D. Mich.
7.1(f)(2), the Court shall decide these motions without a
September 11, 2015, opinion and order compelling arbitration
in this matter, the Court stated:
Plaintiff Singh Management Co., LLC, which is controlled by
certain members of the Grewal family, alleges that defendants
(certain other members of the Grewal family and entities they
control and individuals they employ) are infringing its
“Singh” trademark by using the mark in their
company names, in their websites, and in connection with
advertising, promoting, offering and selling various real
estate services. Plaintiff asserts claims for trademark
infringement, unfair competition, and false designation of
origin under federal and state law and under the Michigan
Consumer Protection Act. Plaintiff also alleges that
defendants have violated its copyright in a certain
photograph. For relief plaintiff seeks an injunction,
damages, costs, interest, and attorney fees.
The parties agreed, and Judge Alexander ordered, that
all disputes between the parties (both ”prior
and subsequent" to the date of the order) would be
arbitrated B not only those “relating in any way to the
operation of Singh Companies, " but also “all
other claims or defenses raised by any of the parties."
This definition of the disputes to be arbitrated is
all-encompassing and most certainly does include the new
claims raised in the instant lawsuit over ownership of the
Singh trademark as well as the alleged misuse of the
copyrighted photograph. The use/misuse of the mark and
photograph clearly relates to “the operation of Singh
Companies, " and the use/misuse thereof obviously is the
subject of a claim by a party. These claims, along with those
raised in Grewal, must be arbitrated before Barry
Howard because this is what the parties agreed to do and it
is what the state court ordered.
Singh Mgmt. Co., LLC v. Singh Bldg. Co., Inc., No.
15-CV-11478, 2015 WL 13039634, at *1, *3 (E.D. Mich. Sept.
11, 2015). The Court ordered that “[a]ll claims raised
in this case must be arbitrated before Barry Howard along
with all claims raised in the [Oakland County]
Grewal matter. The Court retains jurisdiction to
entertain post-arbitration motions to enter judgment on the
arbitration award and for injunctive relief."
Id. at *4.
“more than 195 Parties . . . in the United States and
India, " Arbitration and Award p. 1 n.1, proceeded to
arbitrate their long list of claims and counterclaims before
retired Judge Howard. In an exceptionally thoughtful,
painstakingly detailed, 103-page opinion, Judge Howard noted:
After the Arbitrator was appointed by consent of the Parties,
the Parties engaged in significant discovery over an extended
period of time. A multitude of discovery disputes arose and
the Arbitrator issued 24 Orders addressing discovery and the
Arbitration process over a period of a year. The Parties
exchanged hundreds of thousands of pages of discovery and
conducted a number of depositions, including taking
depositions in India. The Arbitration Hearing dates were
adjourned on at least two occasions to permit additional
discovery and to address concerns raised by the Parties
regarding completion of expert opinions and expert discovery.
After the submission of Summary Disposition motions by the
Defendants, which were denied with the limited exception of
the motion raised by Defendant Attorney Clarkson, the
Arbitration Hearing commenced on Monday, August 15, 2016. The
hearing took place over a period of twelve days. The hearing
was bifurcated with the first ten (10) days of the hearing
(from August 15, 2016 through August 29, 2016) being spent
presenting evidence and testimony concerning the Parties'
state law claims set forth in Plaintiffs' Complaint and
Defendants' Counterclaim. The remaining two (2) days of
the hearing (which proceeded on September 19th and
20th) addressed the Defendants' Federal Court
the parties submitted post-arbitration briefs and answered
Judge Howard's requests for clarification of certain
issues, Judge Howard issued his lengthy opinion and award.
For reasons explained in detail at pages 93-101, Judge Howard
found in plaintiff's favor on its trademark claims.
Specifically, he found that plaintiff owns the
“registered stylized Singh Mark, " that defendants
are prohibited from using this mark, that defendants' use
of the Signh name by itself creates confusion in the
marketplace, that defendants' use of the Signh name
“in the name of a business entity provided that the
name is used as the surname given to [defendants] in
conjunction with their full names" would not cause
confusion, and that plaintiff is not entitled to damages but
that “a Permanent Inunction preventing
[defendants'] use of the stylized Singh mark [should] be
entered by the Federal Court in the Trademark Action."
Id. at 97-101. Judge Howard further explained:
The Arbitrator finds that the Frisch factors . . .
lead to the conclusion that consumers would likely be
confused if [defendants] continued to use the name
“Singh" alone in the names of their business
entities which are unrelated to those of the
[plaintiff].12 However, the Arbitrator does find
that as their given surname, the [defendants] may use the
name “Singh" in the name of a business entity
provided that the name is used as the surname given to
[defendants] in conjunction with their full names.
For example, the Arbitrator finds that [defendants] are
precluded from operating a business under the name Singh
Building Company, Inc., but finds that it would not infringe
on [plaintiffs] rights if the name “Darshan Singh
Grewal Building Company, Inc." was used.
12 When referencing the use of the word
“Singh" alone in the business entity name, the
Arbitrator is referring to the use of the word
“Singh" as the only identifying name to describe
the type of service being offered, such as those entities
[defendants] created after their terminations which are
Defendants in the Trademark Action, i.e. Singh Building
Company, Inc., Singh Development Company, Inc.[, ] Singh
Group, LLC, Singh Group II, LLC, Singh Lending LLC d/b/a Team
Singh, Singh Mortgage Group, LLC[, ] Singh Property
Management, LLC and Singh Real Estate, LLC. It is the use of
the name “Singh" ...