United States District Court, M.D. Tennessee, Nashville Division
REPORT AND RECOMMENDATION
JULIET GRIFFIN, Magistrate Judge.
TO: Honorable Aleta A. Trauger, District Judge.
By Order entered July 16, 2013 (Docket Entry No. 54), the Court referred this action to the Magistrate Judge for case management, decision on all pretrial, nondispositive motions and report and recommendation on all dispositive motions under 28 U.S.C. § 636(b)(1), and to conduct any necessary proceedings under Rule 72 of the Federal Rules of Civil Procedure.
Presently pending are the Plaintiff's motion to dismiss the Defendant's counter-claims (Docket Entry No. 32), the Defendant's motion for summary judgment (Docket Entry No. 85), and the Plaintiff's motion for summary judgment (Docket Entry No. 90). Also before the Court is the Defendant's motion for a preliminary injunction (Docket Entry No. 46). Set out below is the Court's recommendation for disposition of the motions.
Critter Control, Inc. ("Critter Control"), is a Michigan corporation with its principal place of business in Michigan. It professes to have provided animal removal services since 1983 and to be the largest wildlife removal firm in the United States of America with approximately 116 franchises located in North America, one of which has operated in Nashville, Tennessee, since October 2001, and one of which has operated in Memphis, Tennessee, since July 2008. It alleges that beginning in 1983, it has continuously and extensively used the mark "CRITTER CONTROL" in commerce as a designator of origin or source for its wildlife removal services. The Plaintiff registered this mark, registration no. 1, 503, 278, with the United States Patent and Trademark Office ("USPTO") on September 6, 1988, as a service mark for wild animal and rodent removal services, in Class 37. See Docket Entry No. 1-1. As part of its business, the Plaintiff maintains an internet website at which it advertises the services of its franchisees.
Cary Young ("Young") is a citizen of Tennessee residing in Madison, Tennessee. He owns and operates a wildlife removal and relocating business using the name "Elite Critter Control." The Defendant began this business in 2012 and registered his business name with the Tennessee Department of State as a trademark on May 4, 2012. See Docket Entry No. 1-4. The Defendant also maintains an internet website through which he advertises his business.
At some point in 2012, the Plaintiff learned that the Defendant was using the term Elite Critter Control to advertise and identify his business. The Plaintiff sent to the Defendant several letters in August 2012 informing him that his use of the term Elite Critter Control infringed upon the Plaintiff's rights in its registered service mark and requesting that he cease and desist from further infringing activity. See Docket Entry No. 1-2 and 1-3. On January 11, 2013, the Plaintiff filed this action against the Defendant in the Western District of Michigan asserting a claim for trademark infringement under 15 U.S.C. § 1114(1) of the Lanham Act (the "Lanham Act") and a claim for unfair competition under Michigan common law and seeking damages and various forms of injunctive relief. See Complaint (Docket Entry No. 1). The Defendant, who is proceeding pro se, filed an answer to the complaint generally denying the allegations made by the Plaintiff (Docket Entry No. 17) and also filed counter-claims against the Defendant and Kevin Clark ("Clark"), the President of Critter Control, asserting a claim for declaratory relief and for the cancellation of the Plaintiff's registration of its service mark and a claim for trademark infringement under Tennessee common law. See Docket Entry No. 22. There is no indication that Clark has ever been served with process in the action.
In an Opinion and Order entered July 12, 2013 (Docket Entry No. 51), the Western District of Michigan granted the Defendant's motion asserting that venue in that district was improper and transferred the action to this Court. The action is currently set for a trial by jury on October 28, 2014. See Docket Entry No. 72.
II. THE PARTIES' PENDING MOTIONS
At the time the action was transferred to this Court, several motions remained pending. The July 12, 2013, Order entered in the Eastern District of Michigan did not make clear whether the court viewed the pending motions as either moot or effectively resolved or whether the court intended to reserve them for decision by this Court. Subsequent to transfer of the action, this Court held a conference with the parties on October 9, 2013, during which they agreed that the only motions filed prior to transfer of the action which remained pending were: 1) the Plaintiff's motion to dismiss the Defendant's counter-claims (Docket Entry No. 32); and 2) the Defendant's motion for preliminary injunctive relief (Docket Entry No. 46). See Order entered October 11, 2013 (Docket Entry No. 74). Accordingly, the motions designated as Docket Entry Nos. 18, 30, 39, 40, and 48 are deemed to be withdrawn or abandoned.
By its motion to dismiss, the Plaintiff seeks to dismiss the counter-claims asserted against it for failure to state a claim upon which relief can be granted. The Plaintiff argues that the Defendant's allegations are insufficient to support his claim that the Plaintiff's registration should be cancelled because the mark lacks a secondary meaning or is generic and his claim that the Plaintiff has infringed upon the Defendant's rights to his own mark under Tennessee law. See Plaintiff's Supplemental Memorandum (Docket Entry No. 79).
By his motion for summary judgment, the Defendant presents arguments in support of his counter-claim seeking to cancel the Plaintiff's registration for its mark. Also included in his motion are arguments against the merits of the Plaintiff's underlying Lanham Act claim. In a supporting memorandum filed several months after his motion was filed, the Defendant expounds upon his arguments against the merits of the Plaintiff's Lanham Act claim, addresses his own state law counter-claim for infringement by the Plaintiff, and sets forth arguments directed at the Defendant's requests for sanctions against the Plaintiff. See Defendant's Supporting Memorandum (Docket Entry No. 102). Although the Defendant fails to support his motion with a statement of undisputed material facts, as required by Local Rule of Court 56.01(b), and although his original motion contained no supporting materials or identification of matters already in the record that support his motion, he does attach to his supporting memorandum several hundred pages of documents and copies of other materials. Id.
In its motion for summary judgment, the Plaintiff argues that it is entitled to summary judgment as a matter of law on both its Lanham Act claim and unfair competition claim under Michigan common law, as well as on the two counter-claims brought by the Defendant. The Plaintiff contends that its requests for injunctive relief should be granted and that a hearing be set on the issue of damages under 15 U.S.C. § 1117. In support of its motion, the Plaintiff submits its Statement of Undisputed Material Facts (Docket Entry No. 92), the Declaration of Sean Carruth (Docket Entry No. 93), excerpts from the Defendant's deposition (Docket Entry No. 94-3), and other documents (Docket Entry Nos. 94-1, 94-2, 94-4, and 94-5).
In his motion for preliminary injunctive relief, the Defendant seeks an order enjoining the Plaintiff from taking actions that "threaten, defame, or cause irreversing (sic) effects to the Defendants business while this case is currently in litigation" and requiring the Plaintiff to take steps to "reverse" an internal complaint lodged by the Plaintiff with Facebook against the Defendant concerning the Defendant's Facebook page. See Docket Entry No. 46.
Also pending before the Court are several other non-dispositive motions that have been addressed by the Court in contemporaneously entered orders.
III. STANDARD OF REVIEW
A motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is reviewed under the standard that the Court must accept as true all of the allegations contained in the complaint or the counter-complaint, resolve all doubts in the non-moving party's favor, and construe the allegations of a pro se party liberally. See Kottmyer v. Maas, 436 F.3d 684 (6th Cir. 2006); Boswell v. Mayer, 169 F.3d 384, 387 (6th Cir. 1999); Morgan v. Church's Fried Chicken, 829 F.2d 10, 11-12 (6th Cir. 1987). However, although the complaint need not contain detailed factual allegations, the non-moving party must provide the grounds for entitlement to relief and this "requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (abrogating Conley v. Gibson, 355 U.S. 41, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)). See also Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009).
A motion for summary judgment is reviewed under the standard that 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." Rule 56(a) of the Federal Rules of Civil Procedure. See also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A "genuine issue of material fact" is a fact which, if proven at trial, could lead a reasonable jury to return a verdict for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In considering whether summary judgment is appropriate, the Court must "look beyond the pleadings and assess the proof to determine whether there is a genuine need for trial." Sowards v. Loudon Cnty., 203 F.3d 426, 431 (6th Cir.), cert. denied, 531 U.S. 875, 121 S.Ct. 179, 148 L.Ed.2d 123 (2000). In reviewing a motion for summary judgment, the Court must view the evidence and all inferences drawn from underlying facts "in the light most favorable to the party opposing the motion." See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., Ltd., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Gribcheck v. Runyon, 245 F.3d 547, 550 (6th Cir.), cert. denied, 534 U.S. 896, 122 S.Ct. 217, 151 L.Ed.2d 155 (2001).
The moving party has the burden of showing the absence of genuine factual disputes from which a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 249-50. However, "[t]he moving party need not support its motion with evidence disproving the non-moving party's claim, but need only show that there is an absence of evidence to support the non-moving party's case.'" Hayes v. Equitable Energy Res. Co., 266 F.3d 560, 566 (6th Cir. 2001) (quoting Celotex Corp., 477 U.S. at 325).
"Once the moving party has presented evidence sufficient to support a motion for summary judgment, the nonmoving party is not entitled to trial merely on the basis of allegations; significant probative evidence must be presented to support the complaint." Goins v. Clorox Co., 926 F.2d 559, 561 (6th Cir. 1991). The party opposing the motion for summary judgment may not rely solely on the pleadings but must present evidence supporting the claims asserted by the party. Banks v. Wolfe Cnty. Bd. of Educ., 330 F.3d 888, 892 (6th Cir. 2003). Moreover, conclusory allegations, speculation, and unsubstantiated assertions are not evidence, and are not sufficient to defeat a well-supported motion for summary judgment. See Lujan v. National Wildlife Fed'n, 497 U.S. 871, 888, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990). In other words, to defeat summary judgment, the party opposing the motion must present affirmative evidence to support his or her position; a mere "scintilla of evidence" is insufficient. Bell v. Ohio State Univ., 351 F.3d 240, 247 (6th Cir. 2003) (quoting Anderson, 477 U.S. at 252).
Although there are three separate dispositive motions pending before the Court, the issues raised by the parties are interwoven through each of the motions and respective responses and are addressed by the Court as a whole instead of through analysis of the individual motions standing alone. After a full review of the record and even with a recognition that the Defendant is entitled to some measure of leniency in the construction and review of his filings and arguments because of his pro se status, the Court finds that neither the law nor the facts support the Defendant's opposition to the two claims brought against him or support the counter-claims asserted against the ...