United States District Court, D. Maryland
Paula Xinis United States District Judge.
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.
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.
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.
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.
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.
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.
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.
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
Standard of Review
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).