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The Hogs and Heroes Foundation Inc. v. Heroes, Inc.

United States District Court, D. Maryland

August 18, 2016

THE HOGS AND HEROES FOUNDATION INC., Plaintiff,
v.
HEROES, INC., Defendant.

          MEMORANDUM OPINION

          Date Paula Xinis United States District Judge.

         Plaintiff, The Hogs and Heroes Foundation Inc. (“Plaintiff HHF” or “Plaintiff”), brings this declaratory judgment action against Heroes, Inc. (“Defendant Heroes” or “Defendant”) seeking a finding of non-infringement and a judgment declaring that Plaintiff’s marks will not lead to consumer confusion. Currently pending before the Court is Defendants’ Motion to Dismiss for lack of subject matter jurisdiction. ECF No. 19. The Court held a telephonic conference to discuss the pending motion on April 14, 2016. See Local Rule 105.6 (D. Md. 2016). This Court also held a motions hearing on August 10, 2016. ECF No. 27. The Court has reviewed the entire record, as well as the pleadings and exhibits, with respect to the instant motion. This matter, having been fully briefed and argued by both parties, is now ripe for review. For the reasons set forth below, the Court will GRANT Defendants’ Motion.

         I. Background

         The following facts are taken from the Plaintiff’s Complaint and supplemented by Defendant’s Motion to Dismiss and the declarations and exhibits from both parties. Defendant Heroes Inc. is a charitable organization incorporated and located in the District of Columbia. Defendant Heroes supports the spouses and children of law enforcement officers and firefighters killed in the line of duty in the Washington, D.C. metropolitan area. ECF No. 1 at 2. Plaintiff, The Hogs and Heroes Foundation Inc., is a charitable organization incorporated and located in Maryland. Plaintiff HHF is organized as a “national membership foundation comprised of a community of motorcycle riders, ” supporting service members and veterans of the United States military and public safety workers including law enforcement, firefighters and emergency medical personal. ECF No. 1 at 2.

         On or about June 17, 2014, Plaintiff HHF filed applications with the United States Patent and Trademark Office (“USPTO”) to register Plaintiff’s service marks, currently pending as Application Nos. 86/311, 438 and 86/311, 439. It is undisputed that Plaintiff has used this mark continuously for the past eight years without controversy prior to seeking registration. ECF No. 1 at 8; ECF No. 19 at 14. Also undisputed is that Defendant Heroes knew of HHF because HHF had donated money to Heroes’ past charitable events. ECF No. 1 at 3; ECF No. 19 at 5.

         In April 2015, the USPTO published Plaintiff’s Marks in the official Gazette pursuant to Section 12 of the Lanham Act. On October 21, 2015, Defendant filed with the USPTO its Notice of Opposition before the Trademark Trial and Appeal Board (“TTAB”), alleging that because the Defendant’s registered marks identify the Defendant as the source of its services and have acquired distinctiveness in the field of charitable fundraising over the last fifty years, the services of Plaintiff HHF proposed in the application are too similar to the Defendant’s as to cause marketplace confusion. ECF No. 20-1 at 7-8. The Opposition is currently pending before the TTAB.

         The parties also engaged in settlement talks in the interim. On July 16, 2015, Defendant, through counsel, shared with Plaintiff that it believed Defendant’s marks would likely cause confusion as to the source of, or affiliation between, the parties’ respective services. Defendants further communicated how the parties could possibly “avoid an overlap between . . . marks . . . and avoid the cost of an opposition proceeding.” ECF No. 21-4 at 1. Defendant proposed that Plaintiff either amend the services identified in its trademark application or forgo using its marks in certain geographic areas where Plaintiff presently uses its marks. ECF No. 21-4 at 1.

         Plaintiff also sought confirmation from Defendant that “Heroes not only objects to the registration of HHF’s marks . . . but that it also objects to HHF’s use of such marks.” ECF No. 21-6 at 2. Defendant’s counsel thus proposed granting Plaintiff a license to use its marks in exchange for withdrawing its application. ECF No. 20 at 2. Plaintiff HHF asked in turn whether Defendant Heroes would agree not to sue in the future. ECF No. 20 at 2. In response to this broad request, Defendant’s counsel “stated that Heroes could not provide this assurance.” ECF No. 20 at 2. At the end of the call, the parties agreed to a 90-day suspension of the TTAB opposition proceeding to allow for further settlement negotiations. ECF No. 20 at 3. TTAB proceedings were continued twice through joint request to facilitate such talks. ECF No. 21-6 at 2; ECF No. 20 at 2.

         After a few short months of negotiations marked by a handful of phone calls and emails, Defendant’s attorney emailed Plaintiff’s attorney to follow up regarding the licensure proposal. ECF No. 20-4 at 2. Plaintiff’s counsel had not yet discussed licensure with her client. ECF No. 20-5 at 2. Immediately thereafter, Plaintiff ended negotiations and instead sought confirmation that Defendant’s counsel would accept service of the instant Complaint on Defendant Heroes’ behalf. ECF No. 20 at 3.

         Plaintiff in this declaratory judgment action asks this Court to find that its mark does not infringe on Defendant’s service marks and declare that Plaintiff’s “are not likely to cause consumers to be confused, mistaken or deceived that Plaintiff’s services are those of Defendant’s or are sponsored, endorsed or approved by Defendant, or that there is some affiliation or connection between Plaintiff and Defendant.” ECF No. 1 at 8-9. Defendant Heroes, argues inter alia that this Court is without subject matter jurisdiction to hear this case. ECF No. 19. For the following reasons, the Court agrees with the Defendants.

         II. Standard of Review

         Plaintiff bears the burden of proving the existence of subject matter jurisdiction. See Evans v. B.F. Perkins, Co., 166 F.3d 642, 647 (4th Cir. 1999). At the motion to dismiss stage, “the district court is to regard the pleadings’ allegations as mere evidence on the issue, and may consider evidence outside the pleadings without converting the proceeding to one for summary judgment.” Richmond, Fredericksburg & Potomac R.R. Co. v. United States, 945 F.2d 765, 768 (4th Cir. 1991); see also Evans, 166 F.3d at 647. A court should grant a Rule 12(b)(1) motion “if the material jurisdictional facts are not in dispute and the moving party is entitled to prevail as a matter of law.” Evans, 166 F.3d at 647. When the jurisdictional facts are intertwined with questions of law, however, it may be appropriate to resolve the entire factual dispute at a later proceeding on the merits. See United States v. North Carolina, 180 F.3d 574, 580-81 (4th Cir. 1999); Adams v. Bain, 697 F.2d 1213, 1219 (4th Cir. 1982); Bryant v. Clevelands, Inc., 193 F.R.D. 486, 488 (E.D. Va. 2000).

         III. Discussion

         1. Subject ...


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