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TEKsystems, Inc. v. TekSavvy Solutions, Inc.

United States District Court, D. Maryland

October 25, 2017

TEKSYSTEMS, INC., Plaintiff,


          Ellen Lipton Hollander, United States District Judge.

         In this trademark infringement case, plaintiff TEKsystems, Inc., a Maryland corporation that offers information technology staffing and services, has sued defendant TekSavvy Solutions, Inc., a Canadian company in the telecommunications and web development industry. ECF 1, ¶¶ 1-2 (Complaint).[1] The dispute stems from the parties' use of “TEKSAVVY” as part of their respective businesses. Notably, plaintiff owns a trademark on TEKSAVVY in connection with a blog it maintains. Id. ¶¶ 7, 10. However, defendant uses TekSavvy as its name in connection with its services, and also maintains a blog with the same name. Id. ¶¶ 16.

         Plaintiff seeks relief in two counts. In Count I, plaintiff seeks a declaratory judgment of the validity of plaintiff's trademark. Id. ¶¶ 19-22. Count II asserts a claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1114. Id. ¶¶ 23-30. The Complaint is supported by two exhibits, consisting of emails from defendant's attorney to plaintiff. ECF 1-1; ECF 1-2.

         Defendant has moved to dismiss under Fed.R.Civ.P. 12(b)(1) and 12(b)(6). ECF 18. The motion is supported by a memorandum of law (ECF 18-1) (collectively, “Motion”). Defendant argues that this Court lacks subject matter jurisdiction to decide the declaratory judgment claim (Count I), because no case or controversy exists. ECF 18-1 at 4. As to plaintiffs trademark infringement claim (Count II), defendant contends that it fails to state a claim because the allegations concerning defendant's use of the trademark in commerce are contradictory, resulting in plaintiffs failure to plead adequately one of the elements of the claim. ECF 18-1 at 8-9.

         Plaintiff opposes the Motion. ECF 19 (“Opposition”). Defendant has replied. ECF 20 (“Reply”).

         No hearing is necessary to resolve the Motion. See Local Rule 105.6. For the reasons that follow, I shall grant the Motion as to Count I and deny it as to Count II.

         I. Factual Background [2]

         Since at least November 2012, plaintiff has maintained a blog that offers “career advice, commentary on industry trends, and tips for using hardware and software.” ECF 1, ¶ 7-8. The blog uses the trademark TEKSAVVY. Id. ¶ 7. Plaintiff owns a registration in the U.S. Patent and Trademark Office (“USPTO”) for the trademark TEKSAVVY, which was issued on August 20, 2013. Id. ¶ 10.

         On December 7, 2016, Ben Tobor, an attorney for defendant, sent an email to plaintiff. Id. ¶ 12; ECF 1-1. Tobor stated that defendant sought to register TEKSAVVY in Trademark Classes 38 and 42, which pertain to telecommunications and technology services (ECF 1-1 at 2), but that the registration had been refused on the basis of plaintiff s registration of TEKSAVVY in Class 41, pertaining to blogs. Id. Tobor claimed in the email that defendant had maintained its own blog, called TekSavvy Blog, since November 2011. Id.

         Further, the email stated that defendant sought a “Consent to Registration” for defendant's trademark applications. Id. Specifically, Tobor wrote: “One option would be to obtain from [plaintiff] a Consent To Registration, with standard and typical terms and conditions. [Defendant's] other option would be to seek to cancel [plaintiffs] registration based upon our client's prior use of its mark TEKSAVVY for blogs in the United States.” Id. at 2-3. Tobor expressed that defendant “would of course prefer to amicably resolve this situation without filing a cancellation proceeding, and trust[s] that would also be [plaintiffs] desire.” Id. at 3.

         In a subsequent email to plaintiff dated December 20, 2016, responding to an interim email not attached to the Complaint, Tobor stated that defendant's “blogging services have been rendered in commerce that may be regulated by the U.S. Congress.” ECF 1-2 at 2. Tobor also wrote: “We submit [defendant] has superior rights to the mark TEKSAVVY for its Class 41 blogging services in the United States, as well as Canada, based upon its prior use . . ., and this use would provide a basis to seek cancellation of [plaintiff's] mark in the U.S.” Id. Tobor added: “Provided we can obtain a Consent to Registration, we believe that we will be readily able to agree to [plaintiff] keeping its registration and continuing to use its mark in the United States, and that this would be part of a side agreement to the Consent to Registration.” Id.

         This suit followed on December 29, 2016.

         II. Standards of Review

         Defendant has moved to dismiss the Complaint under Fed.R.Civ.P. 12(b)(1), for lack of subject matter jurisdiction. In addition, defendant has moved to dismiss under Fed.R.Civ.P. 12(b)(6), for failure to state a claim.

         A. Subject Matter Jurisdiction

         Article III of the Federal Constitution limits judicial power to “actual, ongoing cases or controversies.” Lewis v. Continental Bank Corp.,494 U.S. 472, 477 (1990) (citations omitted). In Arizona Christian Sch. Tuition Org. v. Winn,563 U.S. 125, 133 (2011), the Supreme Court said: “Continued adherence to the case-or-controversy requirement of Article III maintains the public's confidence in an unelected but restrained Federal Judiciary. . . . For the federal courts to decide questions of law arising outside of cases and controversies would be inimical to the Constitution's democratic character.” See Elk Grove Unified Sch. Dist. v. Newdow,542 U.S. 1, 11 (2004) (stating that Article III standing “enforces the Constitution's case-or-controversy requirement”), abrogated in part on other grounds by Lexmark Int'l, Inc. v. Static ControlComponents, Inc., ___ U.S. ___, 134 S.Ct. 1377, 1387-88 (2014); United States v. Hardy,545 F.3d 280, 283 (4th Cir. 2008) (stating that, under Article III of the Constitution, “‘the exercise of judicial power depends upon the existence of a case or ...

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