United States District Court, D. Maryland
PROTECT-A-CAR WASH SYSTEMS, INC.
CAR WASH PARTNERS, INC., MCW INC., and JOHN L. LAI
Frederick Motz United States District Judge
Protect-A-Car Wash Systems, Inc. ("Protect-A-Car")
brings suit against Defendants Car Wash Partners, Inc.
("CWP"), and CWP's CEO, John L. Lai
("Lai"). Protect-A-Car alleges claims of: (1)
trademark infringement under the Lanham Act; (2) unfair
competition under the Lanham Act; (3) cybersquatting in
violation of the Anti-Cybersquatting Consumer Protection Act;
(4) cancellation of CWP's registration and application
under the Lanham Act; and (5) unfair competition under
Maryland law. Now pending is Defendants' motion for
summary judgment [ECF No. 48');">48], and Protect-A-Car's motion
for partial summary judgment [ECF No. 49]. The parties have
fully briefed the motions, and no oral argument is necessary.
See Local Rule 105.6. For the reasons set forth
below, Defendants' motion is granted, and
Protect-A-Car's motion is denied.
uncontested facts are as follows. Protect-A-Car Wash Systems,
Inc. ("Protect-A- ' Car" or
"Plaintiff') is a corporation that was organized and
incorporated under the laws of the District of Columbia on
January 12, 1960. [ECF No. 1, ¶ 4]. Protect-A-Car
describes its operations as a business "that has been
professionally cleaning cars in the greater Washington area
since 1958." [ECF No. 48');">48, at p. 6]. Protect-A-Car
currently operates six car washes, and all six locations are
currently located within 14 miles of Washington,
D.C.[1" name="FN1" id="FN1">1]
Id. Plaintiff maintains its principal place of
business at 101 North Glebe Road, Arlington, Virginia, 22203.
[ECF No. 1, ¶ 4], Protect-A-Car has been aware of
Defendants since approximately 1995, and Defendants explored
a possible acquisition of Protect-A-Car in 2000. [ECF No. 48');">48,
at p. 8; ECF No. 52');">52, at p.5].
Car Wash Partners, Inc. ("CWP") is a corporation
that was organized and incorporated under the laws of
Delaware on January 16, 1996. [ECF No. 1, ¶ 5]. CWP
maintains its principal place of business at 222 East Fifth
Street, Tucson, Arizona, 85705. Id. CWP is the
nation's largest car wash operator, with 212 car washes
and 34 lube centers in 21 states. [ECF No. 48');">48 at p. 4j.
Defendant John L. Lai ("Lai") is a natural person
who maintains his residence and domicile in Tuscon, Arizona.
[ECF No. 1, ¶ 6]. Lai joined CWP in 2002, and was
promoted to CEO in 2013. [ECF No. 48');">48, at p. 5].
Protect-A-Car owns federal registrations for two marks: (1)
the "MR WASH ft njBMnsB BRUSHLESS CAR
WASH" mark (W "), acquired in 1987 and used
continuously since the late 1960s, and (2) the "MR
WASH" word mark, acquired in 2003. [ECF No. 49-1, at p.
4]. Both marks are used in connection with car wash services.
CWP, in comparison, has used "MISTER CAR WASH" in
commerce for at least forty-six years. Id. at 4.
Regarding federal trademark registration, however, CWP was
denied by the U.S. Patent and Trademark Office
("USPTO") on CWP's first three attempts to
register the "MISTER CAR WASH" design mark
(vmw), the "MISTER CAR
WASH" word mark, and the "MISTER CAR WASH FOR BUSY
PEOPLE" word mark. [ECF No. 49-1, at p. 4], These marks
were denied by the USPTO for being too similar to CWP's
marks. Id. In May 2014, however, CWP was
successful in obtaining a trademark for the "MISTER CAR
WASH" word mark after appealing a USPTO rejection.
Id. at p. 5. The stylized trademarks, as generally
used in business,  appear as follows:
CWP created the website www.mistercarwash.com in 1996 for use
in connection with its business. [ECF No. 48');">48, at p. 5]. In
January of 2015, CWP entered the Maryland market for the
first time, acquiring two car wash locations ("Maryland
Locations") in Severna Park and Annapolis. Id.
The Protect-A-Car car wash closest to either of the two CWP
Maryland Locations is over 28 miles away. Id. There
are several third-party car washes between these two
locations as well. Furthermore, there are other car wash
companies, both nationally and within the Washington D.C.
metro area, with "MR." and "Wash" as part
of their names. Id. at 7. The vast majority of
car wash customers do not frequent car washes that are beyond
three miles from their homes, and the statistics diminish
even more dramatically after 10 miles. [ECF No. 48');">48-18 ¶
16]. Despite this, Protect-A-Car has provided some evidence
to suggest it has brand awareness and customers outside of
this 10-mile radius. For example, there are registered
members of Protect-A-Car's "Car Wash
Club"-which was discontinued in 2004-that have zip codes
in Anne Arundel County. [ECF No. 52');">52, at p. 7], Furthermore,
there are online reviews of Protect-A-Car's services by
individuals who identify their locations as being more than
10 miles from a Protect-A-Car car wash. Id.
washes over one million cars per year. [ECF No. 48');">48, at p.
10]. Protect-A-Car alleges 22 instances of purported
"actual confusion" by customers mixing up CWP and
Protect-A-Car. Id. at 9. Only five instances of
purported confusion occurred in Maryland. Id. at 10.
Of these five instances, two involved an individual
purportedly contacting Protect-A-Car in order to cancel a CWP
"Unlimited Wash Club" plan. Id. One instance is
an email sent by Protect-A-Car's controller to himself,
memorializing a conversation he had with a mistaken
individual who believed she was working with Protect-A-Car.
Id. Another instance occurred when a CWP customer
was mistakenly given a Protect-A-Car location phone number
when she called a CWP location to dispute her plan.
Id. The final instance of Maryland
"confusion" involves an email sent to Steven
Harris, owner of Protect-A-Car, from a family friend, Barbara
Morrison. Id. It was revealed at deposition
that Barbara Morrison's email was sent after Steven
Harris requested her to send it in order to "demonstrate
that people are confused" [ECF No. 52');">52, at p. 11-12], Steven
Harris never mentioned anything to Barbara Harris about this
lawsuit. Id. Lastly, Protect-A-Car alleges two
additional instances of contusion involving third party
suppliers or vendors sending invoices to Protect-A-Car that
were apparently meant to go to CWP, or vice versa.
February 24, 2016, plaintiff Protect-A-Car filed its
complaint against CWP and Mr. Lai. [ECF No. 1]. Plaintiff
alleges claims of: (1) trademark infringement under Section
32(1)(a) of the Lanham Act, 15 U.S.C.§ 11 l4(1)(a); (2)
unfair competition and false advertising under Section
43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1); (3)
cybersquatting in violation of the Anti-Cybersquatting
Consumer Protection Act, 15 U.S.C. § 1125(d); (4)
cancellation of CWP's registration and application under
Section 37 of the Lanham Act, 15 U.S.C. § 1119; and (5)
unfair competition under Maryland law. Defendant John Lai
filed a motion to dismiss for lack of personal jurisdiction,
which was denied by this court on June 16, 2016. [ECF No.
31]. Defendants then filed this instant motion for summary
judgment on all counts on February 10, 2017. [ECF No. 48');">48].
Protect-A-Car, in turn, also filed its motion for partial
summary judgment on February 10, 2017. [ECF No. 49].
56(a) of the Federal Rules of Civil Procedure provides the
"court shall grant summary judgment 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."
Fed.R.Civ.P. 56(a). The Supreme Court has clarified this does
not mean that any factual dispute will defeat the motion.
"By its very terms, this standard provides that the mere
existence of some alleged factual dispute between
the parties will not defeat an otherwise properly supported
motion for summary judgment; the requirement is that there be
no genuine issue of material fact."
Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
247-48');">48 (1986) (emphasis in original). A genuine issue of
material fact exists where, "the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party." Id. at 247. The party seeking summary
judgment bears the initial burden of demonstrating the
absence of a genuine dispute of material fact. See
Celotex Corp. v. Catrett, 17');">477 U.S. 317, 323(1986).
party opposing a properly supported motion for summary
judgment 'may not rest upon the mere allegations or
denials of [his] pleadings, ' but rather must 'set
forth specific facts showing that there is a genuine issue
for trial.'" Bouchat v. Baltimore Ravens
Football Club, Inc., 14');">346 F.3d 514, 52');">522 (4th Cir. 2003)
(alteration in original) (quoting Fed.R.Civ.P. 56(e))..
Indeed, the party opposing summary judgment must "do
more than simply show that there is some metaphysical doubt
as to the material facts." Matsushita Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986);
see also In re Apex Express Corp., 190 F.3d 624');">190 F.3d 624, 633
(4th Cir. 1999). The court must "view the evidence in
the light most favorable to .. . the nonmovant, and draw all
reasonable inferences in her favor without weighing the
evidence or assessing the witnesses' credibility, "
Dennis v. Columbia Colleton Med Ctr., Inc., 290 F.3d
639, 645 (4th Cir. 2002), but the court also must abide by
the "affirmative obligation of the trial judge to
prevent factually unsupported claims and defenses from
proceeding to trial." Bouchat, 346 F.3d at 52');">526
(internal quotations omitted) (quoting Drewitt v.
Pratt, 999 F.2d 774, 778-79 (4th Cir. 1993), and citing
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24
Protect-A-Car alleges claims of: (1) trademark infringement
under Section 32(1)(a) of the Lanham Act, 15 U.S.C.§
1114(1)(a); (2) unfair competition and false advertising
under Section 43(a)(1) of the Lanham Act, 15 U.S.C. §
1125(a)(1); (3) cybersquatting in violation of the
Anti-Cybersquatting Consumer Protection Act
("ACPA"), 15 U.S.C. § 1125(d); (4)
cancellation of CWP's registration and application under
Section 37 of the Lanham Act, 15 U.S.C. § 1119; and (5)
unfair competition under Maryland law. I analyze these claims
Infringement and Unfair Competition
order to prevail on claims of trademark infringement and
unfair competition under the Lanham Act, " plaintiff
Protect-A-Car must show the court that 'it ha[d] a valid,
protectable trademark" and that defendant CWP's
"use of a colorable imitation of the trademark is likely
to cause confusion among consumers."
Synergistic Int'l, LLC v. Korman, 162');">470 F.3d 162,
170 (4th Cir. 2006) (citing Lone Star Steakhouse &
Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930
(4th Cir. 1995)) (emphasis added). "A likelihood of
confusion exists if'the defendant's actual practice
is likely to produce confusion in the minds of consumers
about the origin of the goods or services in
question.'" George & Co. LLC v. Imagination
Entm't Ltd., 575 F.3d 383, 393 (4th Cir. 2009)
(quoting CareFirst of Maryland, Inc. v. First Care,
P.C., 434 F.3d 263, 267 (4th Cir. 2006)). In assessing
whether such confusion exists, "we look to how the two
parties actually use their marks in the marketplace to
determine whether the defendant's use is likely to cause
confusion." Id. (citing CareFirst, 434
F.3d at 267).
Circuit case law, which applies here,  instructs the
court to examine nine factors when analyzing "likelihood
(1) the strength or distinctiveness of the plaintiffs mark as
actually used in the marketplace; (2) the similarity of the
two marks to consumers; (3) the similarity of the goods or
services that the marks identify; (4) the similarity of the
facilities used by the markholders; (5) the similarity of
advertising used by the markholders; (6) the defendant's
intent; (7) actual confusion: (8) the quality of the
defendant's product; and (9) the sophistication of the
George, 575 F.3d at 393; see also Pizzeria Uno
Corp. v. Temple, 141 F.2d 152');">522, 152');">527 (4th Cir.1984)
(setting forth factors one through seven); see also Sara
Lee Corp. v. Kayser Roth Corp., 1 F.3d 455');">81 F.3d 455, 463-64 (4th
Cir. 1996) (identifying factors eight and nine). Evidence of
actual confusion, however, is "often paramount" in
the likelihood of confusion analysis. George, 575
F.3d at 393 (citing Lyons P'ship, L.P. v. Morris
Costumes, Inc., 243 F.3d 789, 804 (4th Cir. 2001)). I
analyze these factors in turn.
Strength of Protect-A-Car's mark
the stronger the mark, the greater the likelihood that
consumers will be confused by competing uses of the
mark." George, 575 F.3d at 393. Two
a mark's conceptual strength, meaning the
relationship between the mark and the goods or services it is
used for, and (2) its commercial strength, meaning
the degree to which the mark is known by the consuming
public." Coryn Grp. II, LLC v. O.C. Seacrets,
Inc., 868 F.Supp.2d 468, 48');">485 (D. Md. 2012) (citing
George & Co., 575 F.3d at 393-95) (emphasis
the first consideration, "[a] mark's conceptual
strength is determined in part by its placement into one of
four categories of distinctiveness: (1) generic; (2)
descriptive; (3) suggestive; or (4) arbitrary or
fanciful.'1 George, 575 F.3d at 393-94.
Defendants argue that Protect-A-Car's "MR WASH"
and "Mr. Wash Car Wash" in connection with car wash
services are "undoubtedly descriptive." [ECF no.
48');">48, at p. 14]. Plaintiff Protect-A-Car contends that the
marks are "suggestive" in nature. [ECF No. 49-1, at
p. 33]. The importance of whether the marks are ultimately
considered "descriptive" or "suggestive"
is important; "descriptive" marks are considered to
be weak and are not accorded protection without proof of
second meaning, whereas "suggestive marks" are
considered to be strong and "presumptively valid."
See Pizzeria £/«o, 747 F.2d at 152');">527.
marks "do not describe a product's features but
merely suggest them." George, 575 F.3d at 393
(citing Retail Servs., 364 F.3d at 538). "In
other words, the exercise of some imagination is required to
associate a suggestive mark with the product. Id.
(citing Retail Servs., 364 F.3d at 538).
"Examples of suggestive marks are "Coppertone®,
Orange Crush®, and Playboy®." Id.
citing (Sara Lee, 81 F.3d at 464). In contrast,
descriptive marks "define a particular characteristic of
the product in a way that does not require any exercise of
the imagination." Retail Servs., 364 F.3d at
538. "Examples of descriptive marks include 'After
Tan post-tanning lotion' and '5 Minute
glue.'" George, 575 F.3d at 394 (citing
Sara Lee, 81 F.3d at 464). Ultimately, however,
"[distinguishing between a suggestive mark and
descriptive mark can be difficult." IdaX 394.
Furthermore, this court notes that "the distinction to
be given the two terms is frequently 'made on an
intuitive basis rather than as a result of a logical analysis
susceptible of articulation.'" Pizzeria
Uno, 747 F.2d at 152');">528.
court first notes that the words "wash" and
"car wash" are purely generic, and are therefore
not entitled to any trademark protection. See
George, 575 F.3d at 394. ("[A] generic mark is
never entitled to trademark protection."). Next, the
court acknowledges the difficulty of categorizing the word
"Mr." or "Mister" as
"descriptive" or "suggestive." On the one
hand, defendants have offered evidence that there are
numerous car washes, both across the country and within
Plaintiff Protect-A-Car's territory, that use
"MR" in connection with car wash services. For
example, Steve Harris, owner of Plaintiff Protect-A-Car,
admitted at deposition that he was aware of at least several
other car washes-located closer in proximity than Defendant
CWP's locations-that use "Mr." in their names,
including: (1) Mr. Gee's Car Wash in Washington, D.C.;
(2) Mr. Clean Car Wash in Waldorf, Maryland; and (3) Mr.
Kleen Car Wash in Alexandria, Virginia.[10" name="FN10" id="FN10">10] [ECF No 48');">48-9
184:23-187:25, Harris Dep.]. Indeed, "'the frequency
of prior use of [a mark's text] in other marks,
particularly in the same field of merchandise or service,
' illustrates the mark's lack of conceptual
strength." CareFirst, 434 F.3d at 270 (quoting
Pizzeria Uno, 747 F.2d at 1530-31). On the other
hand, "Mr." arguably requires "some degree of
imagination" in order to "associate ... the mark
with" cleaning services. George, 575 F.3d at
393 (citing Retail Servs., 364 F.3d at 538).
Ultimately, the court finds even if the mark is somewhat
"suggestive, " it is not "in fact distinctive
or strong in the mark in which [Plaintiff Protect-A-Car is]
dealing." See Bridges in Organizations, Inc. v.
Bureau of Nat'l Affairs, /hg.No. CIV.
B-91-23, 1991 WL 220807, at *8 (D. Md. June 24, 1991)
(finding that plaintiffs mark, "even if suggestive, is
not in fact distinctive or strong in the market in which they
are dealing, " because "the words 'Bridge,
' 'Bridging, ' and 'Bridges' are used
throughout the cultural diversity field to indicate the
development of connections between people and cultures, which
is exactly how plaintiffs adopted the word for their
business."). Accordingly, conceptual strength weights in
strength of mark analysis, however, does not end here.
Regarding the second consideration, commercial strength, the
court looks to the marketplace and asks "if in fact a
substantial number of present or prospective customers
understand the designation when used in connection with a
business to refer to a particular person or business
enterprise." CareFirst, 434 F.3d at 269. The
Fourth Circuit set forth six factors to consider:
(1) the plaintiffs advertising expenditures; (2) consumer
studies linking the mark to a source; (3) the plaintiffs
record of sales success; (4) unsolicited media coverage of
the plaintiffs business; (5) attempts to plagiarize the mark;
and (6) ...