United States District Court, E.D. Michigan, Southern Division
ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY
JUDGMENT AND DENYING PLAINTIFF'S MOTION FOR SUMMARY
Victoria A. Roberts United States District Judge.
Detroit Coffee Company brings suit against Defendants for
federal and New York state law violations arising from an
alleged trademark infringement.
dispute is over Defendants' use of its “Detroit
Bold, ” “Detroit Bold Coffee Co., ” and
“Detroit Bold Coffee Company DB” marks in
connection with their coffee products and related
merchandise. Plaintiff argues the use of those marks
infringes on its senior “Detroit Coffee” and
“Detroit Coffee Company” marks, also used in
connection with coffee and merchandise.
is a New York based company. It began doing business as
Detroit Coffee Company in 2003. It registered a trademark for
“Detroit Coffee” for coffee and clothing
merchandise in 2013 with the principal register of the United
States Patent and Trademark Office (“USPTO”).
Plaintiff was active with its coffee sales and promotion,
amassing $22, 339 in nationwide marketing expenses and
roughly $26, 000 in sales with its marks. However, Plaintiff
engaged in no active marketing in the past three years;
instead relying on promotion via its website,
www.detroitcoffee.com, and “word-of-mouth.”
only business in Michigan consists of selling coffee to a
Detroit café that closed in 2005, an undisclosed
number of online sales in Michigan, and donating coffee to
Michigan events sometime before or during 2011. Overall,
Plaintiff's sales nationwide consist of approximately
$900 in each of the past four years.
began using the mark Detroit Bold to sell coffee in 2009, and
registered “Detroit Bold, ” “Detroit Bold
Coffee Co., ” and “Detroit Bold Coffee Company
DB” between 2014 and 2016 in the USPTO supplemental
register. They sell coffee and other merchandise using the
Detroit Bold mark via Amazon, the website
www.detroitboldcoffee.com, and several retail stores like
Meijer and Plum Market. Defendants market Detroit Bold via
their website, a third-party marketing agency called Karma
Jack, social media, the Detroit Eastern Market,
advertisements in local Detroit papers, and events in the
2016, Plaintiff filed proceedings against Defendants with the
USPTO. Defendants say this was the first time they learned of
Plaintiff's marks. Later that same year, Plaintiffs filed
suit in the Southern District of New York for several
trademark related claims. These were transferred to the
Eastern District of Michigan. The claims before the Court
I. Federal trademark infringement in Violation of 15 U.S.C.
II. Unfair competition in violation of 15 U.S.C. § 1125;
III. Trademark dilution in violation of 15 U.S.C. §
IV. Cybersquatting under federal law 15 U.S.C. §
V. State law trademark infringement under N.Y. GEN. BUS. Law
VI. Unfair business practices under state law N.Y. GEN. BUS.
Law § 349;
VII. Injury to business practices and unfair competition
under N.Y. GEN. BUS. Law § 360-L;
VIII. Common Law trademark infringement and unfair
and Plaintiff filed motions for summary judgment on all of
Plaintiff's claims. Defendants' motion for summary
judgment is granted; Plaintiff's is denied.
also filed counter claims for:
I. Cancellation of Plaintiff's trademark due to
II. Cancellation of Plaintiff's trademark for being
III. Cancellation of Plaintiff's trademark for being
IV. Cancellation of Plaintiff's trademark due to fraud;
V. Violations of Michigan's Consumer Protection Act,
VI. Common law trademark infringement; and
VII. Declaratory judgment of noninfringement.
claims are not raised in these motions and will proceed.
Standard of Review
motion for summary judgment can be granted under Fed.R.Civ.P.
56 when the pleadings, depositions, answers to
interrogatories, and admissions on file show there is no
genuine issue of material fact such that the moving party is
entitled to judgment as a matter of law. Gen. Motors
Corp. v. Lanard Toys, Inc., 468 F.3d 405, 412 (6th Cir.
2006). There must be no evidence that would allow a
reasonable jury to find for the non- moving party.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
242-43 (1986). Generally, the burden is on the moving party
to demonstrate no material fact exists, but that burden may
be discharged provided there is an absence of evidence
supporting the nonmoving party's case. Bennett v.
City of Eastpointe, 410 F.3d 810, 817 (6th Cir. 2005).
When reviewing a motion for summary judgment, evidence is
viewed in a light most favorable to the non-moving party.
parties agree that the analysis of Count I, trademark
infringement in violation of 15 U.S.C. § 1125, is
dispositive for almost all of Plaintiff's claims,
including Counts I, II, VII. As later discussed, it is also
dispositive of Counts V, VI, and VIII.
under 15 U.S.C. § 1125 are analyzed in a two-step
process. Innovation Ventures, LLC v. N.V.E., Inc.,
694 F.3d 723, 728 (6th Cir. 2012). First, the Court
determines whether the mark is protectable under the statute.
Id. Second, the Court decides if the allegedly
infringing mark is likely to cause confusion among relevant
says it has a valid and protectable mark, which Defendants
dispute in one of their counter claims but do not directly
address in their motion for summary judgment. The parties
hotly contest whether Defendants' mark is likely to cause
Protectable Nature of “Detroit Coffee”
asserts that the “Detroit Coffee” mark is
protectable because it was registered with the USPTO's
principal register. Defendants argue in Count II of their
counter claims and in some portions of their motion for
summary judgment that the mark is merely geographically
descriptive and thus not distinctive or protectable.
is only protected if it is “distinctive” as a
matter of law. Leelanau Wine Cellars, Ltd. v. Black &
Red, Inc., 502 F.3d 504, 513 (6th Cir. 2007). There are
three levels of distinctiveness used to classify marks.
Id. The first and least distinctive is the generic
mark, which is merely the commonly used name of the goods and
is never afforded protection. Id. The second, called
descriptive marks, are marks that directly impart information
such as the goods' geographic origin, function or use,
intended class of users, desirable characteristics, or
effects on the end user. Burke-Parsons-Bowlby Corp. v.
Appalachian Log Homes, Inc., 871 F.2d 590, 594 (6th Cir.
1989). Descriptive marks may sometimes be protected.
Id. The third, called inherently distinctive marks,
are marks that are “arbitrary, ” “fanciful,
” or “suggestive” and are always protected.
Leelanau, 502 F.3d at Descriptive marks - between
generic and inherently distinctive - are only afforded
protection if they have developed a secondary meaning among
consumers; for example, when the public associates the goods
as originating from the mark holder, rather than being merely
described as originating from a place. Id.
that contains a geographical term can be either merely
descriptive or inherently distinctive, depending on whether
the geographic term is “minor, obscure, remote or
unconnected with the goods.” See Burke, 871
F.2d at 594. Terms that bear no relationship to the goods or
are otherwise not manufactured in the geographic area
identified in the mark are inherently distinctive, rather
than merely descriptive. Id.
Coffee is inherently distinctive. Detroit is a metropolitan
city and not a producer of coffee. Therefore, the geographic
term “Detroit” is unconnected to the term
“Coffee, ” resulting in an inherently distinctive
mark that is protectable.
the mark is merely descriptive, its registration with the
USPTO's primary register creates a rebuttable presumption
that the mark has developed a secondary meaning.
Leelanau, 502 F.3d at 511. Defendants do not attempt
to rebut that presumption, so the mark is protectable either
mark is protectable under 15 U.S.C. § 1125.
Likelihood of Confusion
parties dispute whether any of the “Detroit Bold”
and “Detroit Coffee” marks are confusing to
consumers. The second inquiry is whether a defendant's
use of its mark is likely to cause confusion among consumers
over which party the goods originate from. Daddy's
Junky Music Stores, Inc. v. Big Daddy's Family Music
Ctr., 109 F.3d 275, 280 (6th Cir. 1997). Confusion is
the touchstone of liability for violations of 15 U.S.C.
§ 1125, and is determined by eight factors:
1. Strength of the senior mark;
2. Relatedness of the goods or services;
3. Similarity of the marks;
4. Evidence of actual ...