Friday, July 11, 2014

Red Hot Trailers vs. Real Hot Trailers

Right Trailers, Inc. holds U.S. Trademark Registration No. 4,327,039 for the mark "RED HOT TRAILERS."  Southern Wholesale Trailers and RVs put up a wooden sign outside their business that read "Red Hot Trailers."  In response to a cease and desist from Right Trailers, Southern Wholesale changed the sign to read "Real Hot Trailers."  The font for both signs was a cursive-like font.  Right Trailers sent another cease and desist stating that the "new" name looked the same and was still likely to yield consumer confusion.  Southern Wholesale refused to change the sign.  Pictures of before (Red Hot Trailers) and after (Real Hot Trailers) are below:

Right Trailers sued Southern Wholesale and its owner, William Hobson for trademark infringement and unfair competition.  Defendants moved to dismiss.  As to Mr. Hobson, Defendants argued that there had been no allegations that he was personally liable for the allegations of the complaint.  The Court agreed, but gave the plaintiff a helping hand:
In Bentley Motors Ltd. Corp. v. McEntegart, No. 8:12–cv– 1582–T–33TBM, 2012 WL 4458397 at *3 (M.D.Fla. Sept.26, 2012), this Court noted that Bentley alleged in the complaint that the defendant, Fraray, individually was a “moving, conscious, and active force behind the infringing acts at issue, and actively participates in and approves the acts.” Therefore, the Court found that there was no basis to dismiss Fraray as a defendant. See also BabbitElec., Inc. v. Dynascan Corp., 38 F.3d 1161, 1184 (11th Cir.1994) (“a corporate officer who directs, controls, ratifies, participates in, or is the moving force behind the infringing activity, is personally liable for such infringement ...”).
 In the instant case, Right Trailers alleges no facts in its complaint that Hobson is the “moving force” behind the allegedly infringing activity. The only allegation against Hobson in the complaint states, “Upon information and belie[f], the Defendant, WILLIAM R. HOBSON, is an individual residing at all relevant times within the jurisdiction of this Court at 6710 Poley Creek Drive West in Lakeland, Polk County, Florida 33811.” (Doc. # 1 at ¶ 7). At the hearing, counsel for Right Trailers conceded that the complaint does not contain adequate allegations against Hobson. Therefore, the grants the Motion to Dismiss to the extent that the Court dismisses all claims asserted against William R. Hobson. However, the Court grants Right Trailers leave to amend the complaint on or before July 15, 2014, if it so chooses.

The Court next turned to Defendants' argument that Plaintiff hadn't pleaded a viable claim for trademark infringement.  Defendants' argument relied on two theories.  First, because Right Trailer's trademark registration was not yet incontestable, it did not serve as a basis to establish that "RED HOT TRAILERS" was a protectable trademark.  [Editor's note: What??]  Second, Plaintiff had not established a probability of confusion because Defendants used the word "Real" instead of "Red".  [Editor's note: Have you seen Coming To America?]  The Court quickly dispensed with these arguments.

As to the first argument, the trademark registration serves as prima facie evidence of the validity of the mark.  The defendants can challenge that, but it's enough to survive a motion to dismiss.  As to the second argument, the Court relied on the pictures above and stated:

Upon due consideration, the Court determines that the allegations in the complaint and the depictions of Southern Wholesale's signage are sufficient to plead the possibility of confusion, mistake, or deception. Right Trailers' trademark infringement claim is accordingly not subject to dismissal on this basis.
Motion to dismiss granted in part (with leave to amend); otherwise denied.
Right Trailers, Inc. v. Hobson, Case No. 8:14-CV-1004 (M.D. Fla. July 2, 2014) (J. Covington)

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