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JFY Properties II LLC v. Gunther Land, LLC

United States District Court, D. Maryland

September 27, 2019

JFY PROPERTIES II LLC Plaintiff,
v.
GUNTHER LAND, LLC, et al. Defendants

          MEMORANDUM OPINION

          Ellen Lipton Hollander, United States District Judge.

         In this trademark infringement case, plaintiff JFY Properties II LLC (“JFY”) has filed an Amended Complaint (ECF 30) against defendants Obrecht Commercial Real Estate, Inc. (“OCRE”); Gunther Headquarters, LLC (“Gunther Headquarters”); Gunther Land, LLC (“Gunther Land”); and D.W. Wells Obrecht (“Mr. Obrecht”).[1] Gunther Land and third-party plaintiff Natty Boh, LLC (“Natty Boh”) filed a Counterclaim and Third-Party Complaint (collectively, the “Counterclaim”) against JFY. ECF 13; ECF 14.[2] The suits concern the parties' names for their respective residential buildings in an area of Baltimore City known as Brewers Hill.[3]

         JFY is the owner and developer of a multi-family apartment building in an area of Baltimore City known as Brewers Hill, a historic district “just east” of the popular Canton neighborhood in southeast Baltimore. ECF 30, ¶ 1. The building, named “The National, ” is located at 3600-3620 Dillon Street, on the footprint of a former warehouse for the National Brewing Company (the “Dillon Street Property”).

         Mr. Obrecht is the sole owner of OCRE, Gunther Headquarters, and Natty Boh, and he is the controlling owner of Gunther Land (collectively, the “Obrechts, ” the “Obrecht Parties, ” or “Obrecht Entities”). Gunther Land is the owner of property located at 3701 O'Donnell Street in Baltimore, under development as a multi-family apartment complex in the Brewers Hill Planned Unit Development (“PUD”). ECF 13, ¶ 3.

         The PUD is a 30-acre site that was once home to both the National Brewing Company and the Gunther Brewing Company. ECF 52-1 at 5.[4] The Obrechts describe the location of the PUD as “the Canton industrial area of South Baltimore, ” ECF 13, ¶ 1, in the area “more commonly known as ‘Brewers Hill.'” ECF 52-1 at 5. Natty Boh is the developer of the PUD. ECF 13, ¶ 4. The Obrechts assert that their proposed apartment building (the “Project”) is marketed as both “THE NATIONAL APARTMENTS” and “THE NATIONAL APARTMENTS AT BREWERS HILL, ” and they seek to name the building “THE NATIONAL APARTMENTS AT BREWERS HILL.” Id. ¶¶ 3, 12.

         Since 2000, Mr. Obrecht and his entities have invested enormous sums of money to develop and revitalize the area comprising the PUD. JFY's Dillon Street Property is located across the street from the PUD. ECF 52-1 at 6, 8; ECF 52-5 at 4.

         JFY's Amended Complaint seeks relief in three counts. Count I is brought pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201, et seq. ECF 30, ¶ 73. JFY seeks a judgment declaring, inter alia, that “JFY is not making trademark use of The National and may continue to use “The National” in connection with the Dillon Street Property. Id. ¶ 80. Count II asserts a claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a). Id. ¶¶ 81-84. In Count III, filed pursuant to 15 U.S.C. §§ 1119 and 1064, plaintiff asks the Court to cancel Gunther Land's registration of “The National Apartments” trademark, id. ¶¶ 85-89, claiming, inter alia, that the registration “was obtained fraudulently . . . and otherwise contrary to the provisions of 15 U.S.C. § 1054.” Id. ¶ 86.

         The Counterclaim asserts a claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a) (Count I), as well as common law claims for trademark infringement (Count II) and unfair competition (Count III). See ECF 13, ¶¶ 29-43. In addition, the counterclaimants seek to enjoin JFY “from using THE NATIONAL or BREWERS HILL marks, or any confusingly similar marks, to promote” the Dillon Street Property. Id. ¶ 43. The Counterclaim asserts, ECF 13, ¶ 12: “THE BREWERS HILL and THE NATIONAL trademarks have become synonymous with the high-quality development, buildings and offerings included in the Brewers Hill PUD.”

         Now pending are the parties' post-discovery cross-motions for summary judgment. JFY moves for summary judgment on all three counts of the Counterclaim and on Count III of the Amended Complaint, in which plaintiff seeks to cancel Gunther Land's registration. ECF 46. The motion is supported by a memorandum of law (ECF 46-2) (collectively, the “JFY Motion”) and numerous exhibits. ECF 47-1 - ECF 47-55.

         The Obrecht Entities oppose the JFY Motion and have filed a cross-motion for summary judgment (ECF 52), supported by a memorandum (ECF 52-1) (collectively, the “Obrecht Motion”) and many exhibits. ECF 52-3 - ECF 52-28. They seek summary judgment on each of plaintiff's claims and on all three counts lodged in the Counterclaim. See ECF 52-1 at 7 n.2. Moreover, they seek an injunction “to enjoin JFY . . . from using the NATIONAL mark, or any other confusingly similar mark, in any way, to advertise or promote the residential complex located” at the Dillon Street Property. Id. at 30.

         JFY filed a combined opposition to the Obrecht Motion and a reply in support of the JFY Motion (ECF 61), supported by additional exhibits. ECF 61-1 - ECF 61-16; ECF 62. The Obrecht Parties replied (ECF 69) and submitted additional exhibits. ECF 69-1 - ECF 69-16; ECF 70-1.[5]

         No hearing is necessary to resolve these motions. See Local Rule 105.6. For the reasons that follow, I shall deny the motions.

         I. Factual Background[6]

         A. The Dillon Street Property

         David Penner is the managing member of JFY, a Maryland limited liability company formed in 2010. ECF 47-1 (Penner Affidavit), ¶ 2. On May 28, 2010, JFY acquired the Dillon Street Property through a public auction. ECF 47-1, Exhibit A-1 (Deed dated May 28, 2010). As noted, the property is located at 3600-3620 Dillon Street in the Brewers Hill area of Baltimore. Id.; see also ECF 14 at 2.[7]

         Prior to JFY's ownership of the Dillon Street Property, the property was owned by Dillon Vat, LLC (“Dillon Vat”), which began to develop it. ECF 47-2 (Bond Affidavit), ¶ 3.[8] Dillon Vat, a Maryland limited liability company, was formed in 2005 but “no longer exists.” Id. ¶ 2. John Vontran and Carroll L. Bond, III, also known as “Roy Bond, ” each owned a 50% interest in Dillon Vat. Id. ¶¶ 2, 6.

         According to Mr. Bond, the Dillon Street Property is located on the site of the former “National Vat storage warehouse, ” which was used by the National Brewing Company for approximately 60 years “to store its beer.” Id. ¶ 4. Mr. Bond asserts that the property was known historically as “the National Vat Building or the National Brewery Warehouse, or some variation of that.” Id. Similarly, Mr. Vontran claims that the warehouse was called the “National Vat Building, ” ECF 47-2, ¶ 6, or the “old vat building.” ECF 52-26 (Vontran Deposition) at 5, 7.

         David Knipp, an OCRE employee, denied knowledge that the site once housed a warehouse belonging to the National Brewing Company. ECF 47-4 at 5, Tr. 23. But, he acknowledged that the property was “an integral part of the brewing company, as was everything on . . . Dillon Street.” Id. And, Mr. Obrecht conceded that the property was called “a warehouse, a beer storage warehouse, ” although he claimed it was called “The Vat Building.” ECF 47-5 at 3.

         In the mid-to-late 2000s, Dillon Vat began construction of a “36-unit condominium building at 3610 Dillon Street, as well as four townhomes on the adjacent parcel . . . .” ECF 47-2, ¶ 6. According to Mr. Vontran, the construction used “the footprint and part of the original skeleton of the National Vat Building.” Id. Dillon Vat planned to call the development “the Dillon Street Vat Apartments” because “the property was located on Dillon Street and it was the [site of the] old vat building.” ECF 52-26 at 5. However, the “condominium project was never completed” and the “Dillon Street Property was eventually foreclosed and sold at auction” to JFY. ECF 47-2, ¶ 8.

         In December 2005, Mr. Penner learned of the Dillon Street Property and its connection to the National Brewing Company when Mr. Bond gave Mr. Penner a tour of the building and explained the property's history to him. ECF 47-1, ¶ 4. During the tour, Mr. Bond referred to the property as “The National Vat Building.” Id. ¶ 5.

         After JFY acquired the Dillon Street Property in May 2010 (ECF 47-1, Ex. A-1), JFY “evaluated the property and decided to make the townhomes fee simple and to develop a 61-unit apartment building instead of proceeding further with the planned condominiums.” ECF 46-2 at 5; see ECF 47-1, ¶ 9. Rezoning was necessary. Id. In 2011, JFY began demolition of the property, and in 2012 it conducted “some site work including soil testing.” ECF 47-1, ¶ 10. In May 2015, JFY and the City entered into a “Traffic Mitigation Agreement For The National.” ECF 47-21. Pursuant to its terms, JFY paid over $9, 000 for certain “transportation improvements” in the “vicinity” of the development. Id. at 2. Construction of the building commenced in October 2015, following issuance of the building permit. Id.

         Plaintiff marketed the Dillon Street Property as “The National.” ECF 47-1, ¶ 12. In May 2017, the first tenant moved into The National. Id. ¶ 20; see Appendix. And, as of September 2018, the building was “approximately 90% tenant-occupied.” ECF 47-1, ¶ 12.

         JFY has submitted several exhibits that reflect reference to the Dillon Street Property as “The National” as early as 2005. ECF 47-2, ¶¶ 10, 11. These include a “Design Collective Plumbing Data Sheet” for the period November 14, 2005 through May 12, 2006, which refers to the property as “The National” (ECF 47-2, Exhibit B-1); a “Verified Complaint for Breach of Contract, ” filed on May 7, 2007, in the Circuit Court for Baltimore City, in a suit between Design Collective, Inc. and Dillon Vat (Case No. 24-C-07-003243), identifying the Dillon Street Property as “The National Brewing Company” (ECF 47-2, Exhibit B-2, ¶ 4); and an “Appraisal of Real Property, ” with an effective date of June 11, 2011, referring to the Dillon Street Property as “The National Condominium & Brewers Row Townhomes.” ECF 47-2, Exhibit B-3.

         In addition, the exhibits to ECF 47-1 include a professional services proposal sent by Design Collective, Inc. to Dillon Vat LLC on August 14, 2005. JFY Bates Stamp 000087-000102. It references “The Vat Building (National Brewing Company Warehouse)” at 3620 Dillon Street. Id. at JFY Bates Stamp 000087. In addition, the exhibits include a letter from Design Collective, Inc. dated October 30, 2006, referencing the “Project Name” as “The National.” See JFY Bates Stamp 000086.

         B. The Brewers Hill Planned Unit Development

         Pursuant to Baltimore City Ordinance 00-128, the Baltimore City Council approved the designation of various properties as the Brewers Hill Planned Unit Development.[9] The PUD was signed into law by the Mayor on December 20, 2000. See ECF 13, ¶ 9; ECF 52-1 at 5.[10] See also Baltimore City Zoning Code, Art. 32, § 13-101 et seq. The PUD consists of about 30 acres, and is located in southeast Baltimore in an area called Brewers Hill, which was previously home to both the National Brewing Company and the Gunther Brewing Company.

         According to the Obrechts, the breweries vacated the area in the 1970's. ECF 69 at 10. Mr. Obrecht explained that “Brewers Hill refers to the whole complex, ” and is the “umbrella term for the whole development.” ECF 52-3 (Mr. Obrecht Deposition) at 8.[11] Since 2000, the Obrechts have invested about $350 million in the development of the PUD, including the development of more than 15 million square feet of office, retail, and residential spaces. ECF 13, ¶ 17. According to the Obrecht Parties, Mr. Obrecht has “led the effort to transform this former industrial area into an award-winning community.” ECF 52-1 at 5. The PUD is now “home to a wide array of retail businesses and restaurants, commercial and mixed use space and luxurious residential apartments.” Id. The PUD has received numerous awards, ECF 13, ¶ 16, and the Obrechts claim it has had a “significant positive economic impact on the City . . . .” Id. ¶ 17.

         The Obrecht Parties have marketed the PUD as “a combination of the old National brewery and Gunther brewery.” ECF 52-3 at 7-8. They have “promoted a ‘brewery' theme in every facet of the development's marketing campaign.” ECF 52-1 at 5-6. They have endeavored “to restore and maintain historic” signage and “to pay tribute to the breweries . . . .” ECF 52-1 at 6; see, e.g., ECF 52-3 at 6-7.

         Over the course of many years, the Obrecht Parties regularly met with community associations to promote “the history of the breweries and how [they] were maintaining the historical integrity of the buildings . . . .” ECF 52-3 at 12-13. To this end, projects “would be labeled as National Brewery or National East or Natty Boh Tower through [their] signage, through [their] marketing brochures, through everything [the Obrechts] produced . . . .” ECF 52-3 at 13. An OCRE promotional brochure of an unspecified date described Brewers Hill as “a historic renovation and adaptive reuse of two landmark breweries, the Gunther Brewery and the former National Brewery, where ‘Natty Boh' was first brewed.” ECF 52-7 at 3.

         The PUD includes the following properties owned by the Obrechts, or related entities, [12]and “[a]ll were historic redevelopments, ” ECF 47-6 (Mr. Obrecht deposition) at 10: (1) the NATTY BOH TOWER, located at 3600 O'Donnell Street, which is a commercial office building; (2) the GUNTHER HEADQUARTERS, located at 3601 O'Donnell Street, which is occupied by Cigna Healthcare and others; (3) the NATIONAL EAST building, located at 3700 O'Donnell Street, with business tenants; (4) the GUNTHER BOTTLE, located at 3600 Boston Street, a retail shopping center with commercial office space; (5) the GUNTHER APARTMENTS, located at 1211 South Conkling Street, with 162 apartment units and a restaurant; (6) the PORTER BREWERS HILL, located at 3700 Toone Street, with 440 apartments[13]; and (7) the DOMAIN BREWERS HILL, located at 1200 South Conkling Street, with 182 apartments. ECF 47-6 (Mr. Obrecht deposition), at 6-12; see also ECF 13, ¶ 11.

         The National Brewery properties are on the north side of O'Donnell Street, and the Gunther Brewery properties are on the south side of O'Donnell Street. ECF 52-3 at 3. The properties on the north side of O'Donnell Street include the Natty Boh Tower and the National East or “Natty East” building. See Appendix. As indicated, the Dillon Street Property, named The National, is not located within the boundaries of the PUD. ECF 52-5 (Penner Deposition) at 4. But, it sits directly across the street from the Natty Boh Tower and the National East building. Id.

         In addition to the buildings described above, the PUD includes an undeveloped parcel owned by Gunther Land, located at 3701 O'Donnell Street. Id. Gunther Land plans to develop the lot into a 300 unit apartment building, using “the marks at issue in this case - THE NATIONAL and BREWERS HILL - in connection with a planned apartment complex to be located within the Brewers Hill PUD at 3701 O'Donnell Street . . . .” ECF 52-1 at 6; see ECF 13, ¶ 3. Notably, “Natty Boh licensed to Gunther Land the rights to use the Brewers Hill and The National trademarks to promote the development, leasing and management of an apartment Project within the Brewers Hill PUD.” ECF 42-6 at 13. And, the Obrechts intend to name the Project THE NATIONAL APARTMENTS AT BREWERS HILL, and to market it as THE NATIONAL APARTMENTS and THE NATIONAL APARTMENTS AT BREWERS HILL. ECF 13, ¶¶ 3, 12; see ECF 52-11 at 2, 6 (images stating “coming soon” and “The National Apartments”); see also Id. at 6 (www.thenationalapartments.com).

         Of relevance here, the Obrechts formed “National East, LLC” in December 2001. ECF 52-6. It owns the National East building. ECF 52-3 at 4. The National East building was named for “the old bottling building for National brewery.” Id. And, the Natty Boh Tower uses “the familiar name for National Bohemian which was the beer brewed by National brewery.” ECF 52-3 at 4; see also ECF 52-16 (Marketing Sample).

         Notably, the name “The National” does not appear on the exterior of the National East building. ECF 47-26 (Mr. Obrecht Deposition) at 3 (“Q. Do the words The National appear anywhere on the National East building? A. On the actual building, no.”). Rather, a “prominent AOL logo” appears on the outside of the building. ECF 47-1, ¶ 21. According to Mr. Penner, because of that signage, the National East Building is commonly referred to as the “AOL building.” Id.

         Mr. Obrecht explained that Natty East and the Natty Boh Tower both “have signage on them using the word National.” ECF 52-3 at 4. He said, id.: “We have murals. We have signage. We have a whole host of marketing that surrounds National brewery and the use of The National, and really marketing the old brewery as a cool destination by taking advantage of the history of The National.” Further, the lobbies in both buildings contain brewery artifacts, such as signs and memorabilia relating to the National brewery. See ECF 52-13 at 3; Appendix.

         As part of this “overall brand strategy” and “theme, ” the Obrecht Parties licensed the “‘Mr. Boh' logo, the iconic logo for National Bohemian beer once brewed at the site . . . .” ECF 52-1 at 6. A neon “Mr. Boh” is now situated “atop the Natty Boh Tower within the PUD . . . .” Id. They also made use of the names of beers produced by the breweries, such as “Colt, ” “Stag, ” and “Duck.” Id.[14]

         In particular, pursuant to a License Agreement of May 9, 2003 (“Boh Man License”), Natty Boh, LLC acquired a 20-year license from Pabst Brewing Company (“Pabst”) to use the Mr. Boh logo, a familiar if not famous symbol of National Bohemian beer, well known in Maryland. ECF 52-4 at 12-22. And, pursuant to the Addendum to the License Agreement of September 19, 2003 (“Natty Boh License”), Natty Boh, LLC also acquired the rights to use the phrase “Natty Boh.” ECF 52-4 at 1-11. As Mr. Obrecht explained, the “huge Mr. Boh head” is “associate[d] with the National beers, Natty Boh, National Premium” and “was the logo for National Brewery.” ECF 52-3 at 9.

         Consistent with the branding effort of the Obrecht parties, in 2005 the Obrecht Parties renovated a bridge bearing the words “The NATIONAL BREWING Co., ” which stretches across Dillon Street. ECF 52-3 at 5, 7. According to Mr. Obrecht, the bridge is “highly visible” on Dillon Street, id. at 5, and is located in close proximity to the National East building as well as the Dillon Street Property. See ECF 52-11 at 5 (Bridge Image); ECF 52-9 (Bridge Image from Dillon Street Property); see also Appendix.

         With respect to the Natty Boh Tower, Frederick Gillis Green, former counsel for Gunther Land, stated that the building's lobby displays “references to The National and/or National Brewing Company” with “signs and memorabilia.” ECF 52-10 (Green Deposition) at 4, Tr. 26. Moreover, as indicated, the Natty Boh Tower features a neon “Mr. Boh” logo on top of the building, which is a ten-story structure. And, a sign, “NATTY BOH TOWER, ” is displayed above the entrance to the building. ECF 52-8 at 7, 9-11 (Natty Boh Tower Marketing Sample); ECF 52-12 (Natty Boh Tower Image).

         However, neither the Boh Man License nor the Natty Boh License provides the Obrechts with the right to exclusive use of the Boh Man image or to the words “Natty Boh.” Indeed, the Boh Man License expressly disclaims such a right. ECF 52-4 at 21. It states, in pertinent part, id.:

THE LICENSE HEREIN GRANTED ENTITLES LICENSEE TO USE THE “SMILING BO [sic] MAN” IN THE ABOVE LABEL AS CONTAINED IN THE MARKED SQUARE AND NO OTHER ITEM, WORD, OR MARK ON SAID LABEL.

         The “LABEL” prominently features “NATIONAL BOHEMIAN BEER” in large capital letters. See id. Moreover, the Obrecht's use of the words “Boh Man” is limited to one building. ECF 52-4 at 2-3.

         Nevertheless, according to Chris Molloy, Pabst's National Bohemian Brand Manager, Pabst is “aware” that the Obrecht Parties “have displayed memorabilia incorporating the ‘National Bohemian' mark” to “market and promote” the PUD. ECF 70-1 (Affidavit of Chris Molloy), ¶¶ 5-6. Pabst “does not object” to the “use of marks incorporating the term ‘National' and does not claim any trademark or service mark rights as a result of such use.” Id. ¶ 5.

         However, it is undisputed that other commercial entities in Baltimore also make use of the iconic Boh Man. For example, a prominent local jewelry store, Smyth, uses the Boh Man in its advertising. See ECF 61 at 11. And, the image also appears in signage at a popular restaurant in Canton, called Nacho Mama's. Id. But, in contrast to the Obrechts, both the jewelry store and the restaurant utilize the Boh Man figure along with their own trade names. See Appendix.

         In addition to the National East building and the Natty Boh Tower, the Obrecht Parties have used the word “National” in the conception of a third property within the PUD. ECF 52-3 at 17. In 2008, the Obrecht Parties, as part of a joint venture, began the development of a 440-unit apartment building, located at 3700 Toone Street, which they initially planned to name “The National Apartments.” Id. According to Mr. Obrecht, “all of the drawings, all of the signage, the entity names that owned [the project] were initially contemplated as being the National . . . .” Id. at 18. For example, a “Development Opportunity” packet was created for “The National: Brewers Hill, ” dated June 30, 2011, which outlined the plans for the project. ECF 52-20 [SEALED]. And, on July 7, 2011, the co-venturer named and registered the project as “The National Properties Limited Partnership.” ECF 52-17 (National Properties Registration).

         Ultimately, the parties decided to call that structure “Hanover Brewers Hill, ” and it was later renamed “Porter Brewers Hill.” ECF 52-3 at 17-18. As a result, the Obrecht Parties decided to use “The National Apartments” for the Project, to be located at 3701 O'Donnell Street. Id. at 18.

         C. The Registration of “The National Apartments”

         On February 1, 2011, Mr. Obrecht purchased numerous website domains, including thenationalapartments.com, thenationalapartments.net, nationalbrewershill.com, and nationalbrewershill.net. ECF 52-22 (Purchased Domains) at 2-18. In a “Bill of Sale” of June 29, 2017 (ECF 52-22 at 19), Mr. Obrecht assigned the rights to use such domain names to Gunther Land, with the intent of marketing the planned apartments as “The National Apartments” or “The National Apartments at Brewers Hill.”

         On November 18, 2015, while JFY's construction was underway for its building, and approximately 15 years after creation of the PUD, Gunther Land filed two intent-to-use trademark registration applications (“ITU Applications”) with the United States Patent and Trademark Office (“USPTO”). ECF 47-9 at 2-9. The ITU Applications sought to register two marks: “The National Apartments” and “The National Apartments at Brewers Hill.” Id. The ITU Applications included the following description of services, id. at 5:

International Class 036: Apartment and office rental; Apartment house management; Leasing of apartments; Management of apartments; Real estate listing services for housing rentals and apartment rentals; Real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings; Real estate services, namely, rental of short-term furnished apartments; Rental of apartments; Rental of apartments and offices; Rental of apartments in apartment community; renting of apartments.

         On the same date, November 18, 2015, Gunther Land filed a trademark registration application with the Maryland Department of Assessments and Taxation (“MDAT”) for State protection of the following marks: “The National Apartments, ” “Brewers Hills Apartments, ” and “The National Apartments at Brewers Hill.” ECF 52-24. The State approved the registrations on November 25, 2015. Id.

         The USPTO issued a Notice of Allowance (“NOA”) on July 5, 2016, approving the ITU Applications (“ITU Registrations”). ECF 47-9 at 8. The NOA provided, inter alia, that Gunther Land had “six (6) MONTHS from the NOA issue date” either to file a Statement of Use (“SOU”), if Gunther Land “is using the mark in commerce, ” or an “Extension Request, ” if it “is not yet using the mark in commerce.” Id.

         Thereafter, on January 5, 2017, Gunther Land filed SOUs, requesting the registration of “The National Apartments” and “The National Apartments at Brewers Hill” on the USPTO's principal register. ECF 47-9 at 10-22. With respect to “The National Apartments” mark, the SOU listed November 18, 2015, as the “First Use in Commerce Date” and the “First Use Anywhere Date.” Id. at 11. Gunther Land also submitted a receipt for an advertisement of the apartment building, a receipt from MDAT, and a copy of a webpage rendering of the apartment building, captioned “THE NATIONAL APARTMENTS: website coming soon.” Id. at 21.

         Initially, the USPTO rejected both SOUs in a Non-Final Office Action dated February 17, 2017. ECF 47-9 at 23-25. As to “The National Apartments” mark, the USPTO Examining Attorney explained, id. at 24:

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the services specified in the statement of use. . . . Specifically, specimens appear to be an order and receipt for placing an advertisement, a receipt from the Maryland Department of Assessments and Taxation and a copy of a webpage. The order and payment for the advertisement, as well as the receipt from the Maryland Department of Assessments and Taxation do not advertise that the applicant is providing rental or management of apartments. Additionally, the printout of the applicant's webpage does not convey to consumers and potential consumers that the applicant is providing rental or leasing of apartments.
An application based on Trademark Act Section 1(a) must include a specimen, showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the statement of use. 15 U.S.C. §1051(a)(1); . . . .
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. . . . Specimens comprising advertising and promotional materials must show a direct association between the mark and the services.

         Gunther Land did not pursue its attempts to register “The National Apartments at Brewers Hill, ” and its ITU Registration for that mark was abandoned. ECF 47-10 at 4-5; see also ECF 30, ¶ 6. However, Gunther Land disputed the USPTO's rejection of its SOU with respect to “The National Apartments” mark. ECF 47-10 at 4-8.

         On August 16, 2017, counsel for Gunther Land filed a “Response to Office Action.” Counsel stated, in pertinent part, id. at 4-5:

In light of the following comments, Applicant respectfully submits that the previously submitted specimens properly show use of the Mark in commerce, and thus respectfully requests the Examining Attorney's reconsideration of such specimens and the refusal to register.
First, Applicant notes that the one-page document titled “The National Apartments, ” which is a screen print from the Applicant's webpage that includes a photograph of an apartment building immediately under the prominent display of the mark . . . is clear evidence of use of the mark in commerce to promote the services described in the Statement of Use. . . . As stated in 37 C.F.R. §2.56(b)(2), “[a] service mark specimen must show the mark as actually used in the sale or advertising of the services.” The specimen described above prominently displays the mark being used to promote an apartment building. Any consumer viewing such webpage would recognize that the website page promotes apartments available for rent, and thus at least “rental of apartments, ” “rental of apartments in an apartment community, ” and “renting of apartments” all as set forth in the description of services. . . . Here, the referenced specimen provides an image of an apartment building, thus identifying to any ordinary, reasonable consumer at least rental and leasing of apartments as the services being offered, and distinguishing them from the services of others through prominent display of the Mark on the page. Such display of the Mark and of the apartment building on a webpage create a direct association between the Mark and the services described above, and use the Mark in such a way as to identify and distinguish the serves and their source, and is thus a sufficient specimen of use of the Mark. . . .

         Thereafter, on October 17, 2017, the USPTO reversed its decision and accepted Gunther Land's SOU, permitting registration of “The National Apartments” (Registration Number 5, 312, 038) on the Principal Register. ECF 47-9 at 28 (the “Registration”).

         D. OCRE's Cease-and-Desist Demand

         David Knipp, an OCRE employee, recalled that sometime in 2009, he saw a sign posted outside of JFY's Dillon Street Property, marketing the building as “The National.” ECF 47-31 (Knipp Deposition) at 3, p. 18. But, at that time, the Obrecht Parties did not contact JFY to object to its use of “The National.” Id.

         In April 2016, Knipp wrote to Penner about JFY's use of “The National, ” as OCRE planned to use “The National Apartments” for the Project. In an email to Penner of April 6, 2016 (ECF 69-16), Knipp stated:

It's nice to see progress across the street, David, and I already have crane envy. I'm concerned, though, that we both seem to be using the same name for our projects - The National Apartments. We plan to break ground within a year on another 375 units on the parcel to the east of Hanover Brewers Hill for which we have already registered the web domain and trademarked the name. Is there any chance you'd consider a different name?

         Penner and Knipp met in the summer of 2016 to discuss the projects. ECF 47-1, ¶ 11. JFY did not object to OCRE's use of the name. Id. ¶ 12. But, as Penner put it, “it didn't make sense” for JFY to change the name of the Dillon Street Property because it “had been permitted” to use “‘The National' for the past ten years[.]” Id.

         In a letter of January 20, 2017, titled “Improper Use of Obrecht Commercial Real Estate Inc. Mark, ” counsel for OCRE sent a cease-and-desist demand to JFY. ECF 47-12 at 2-4. Counsel stated, in relevant part, id. (emphasis in original):

As you know, OCRE engages in the development, management and leasing of multifamily apartment projects, focusing its efforts in the Brewers Hill neighborhood of Baltimore City, MD. It has used the service mark “The National Apartments” and “The National Apartments at Brewers Hill”, and variations thereof (collectively, the “Marks”) for nearly a decade to promote these services. . . .
The Marks are synonymous with the high quality products and services provided by OCRE in the Brewers Hill development, and are considered by OCRE to be a critical intellectual property asset. The Marks are protected by a broad array of strong federal and state common and statutory laws. These rights provide OCRE with the exclusive right to use the Marks in connection with the management, leasing and rental of multifamily apartments and to prevent uses that are likely to cause confusion in the marketplace.
It is our understanding that [JFY] has been using the Marks to promote its multifamily apartment building currently under construction at the intersection of Dean and Dillon Streets in Baltimore City, MD, which is directly across the street from OCRE's Brewers Hill development. In this regard, OCRE is aware that JFY has used the name “The National” on the apartments.com website as well as on the Urban Design Group website, among other places. JFY's improper use of the Marks is likely to create the false impression that it is associated with OCRE and the Brewers Hill Development allowing it to trade on OCRE's goodwill and stellar business reputation. By using “The National”, JFY is intentionally creating confusion in the marketplace and illegally piggybacking on OCRE's protected Marks and brand that OCRE has carefully cultivated for over 15 years.
JFY's unauthorized use of OCRE's intellectual property is likely to cause confusion in the marketplace and thus constitutes a violation of various provisions of the federal Trademark Act of 1946, as amended (15 U.S.C. § 1051 et seq.) (the “Lanham Act”), as well as a misappropriation actionable under applicable federal and state trade regulation laws prohibiting unfair and deceptive trade and advertising practices. Consequently, pursuant to the sanctions available to an aggrieved party pursuant to those laws, JFY's unauthorized use of OCRE's intellectual property could result in a civil action to recover money damages, the projects generated by JFY's improper use, and the costs incurred with prosecuting any such matter. . . .
IN LIGHT OF THE FOREGOING, BE ADVISED THAT THIS LETTER SERVES AS A FORMAL AND IMMEDIATE DEMAND TO CEASE AND DESIST USE OF ANY MARKETING MATERIAL OR OTHER COMMUNICATION OR ACTIVITY, IN ANY MEDIUM WHATSOEVER, INCLUDINGPARTICIPATINGINTHE APARTMENTS.COMPROGRAM, WHICHCONTAINSOCRE'S INTELLECTUAL PROPERTY, INCLUDING THE MARKS. YOU ARE HEREBY INSTRUCTED TO CERTIFY TO U.S. IN WRITING WITHIN SEVEN (7) DAYS OF THE DATE OF THIS LETTER THAT SUCH ACTIVITIES HAVE CEASED AND THAT YOU WILL NOT ENGAGE IN ANY SUCH ACTIVITIES AT ANY TIME WHATSOEVER IN THE FUTURE.
Although OCRE wishes to resolve this matter in an amicable fashion, please be advised that OCRE has developed, enhanced and marketed the Marks at great expense and will use all of its resources to protect its rights and interests in its intellectual property assets, including initiating litigation. . . .

         In a letter dated February 27, 2017 (ECF 47-13), counsel for JFY responded that OCRE was not the owner of the ITU Registrations and other claimed intellectual property assets, as represented by OCRE. Counsel stated, in pertinent part, id. at 2-3:

My client takes third party intellectual property rights seriously and respects them, and hopes that others respects its intellectual property rights. We have performed preliminary research into this matter and for the reasons stated herein, we have found that my client is not using any word, slogan or image, such as “The National” in a trademark manner nor does it intend to in the future. My client also does not associate it with any goods or services that are being used in commerce. Indeed, it is only a name that will be on a building and is merely a geographical description that describes where the building is located, which is at the old National Brewery Warehouse. . . .
Your client does not appear to own, and appears to lack exclusive use of, the marks referenced in your Letter, which is necessary for it to assert trademark rights against my client. Your Letter states that OCRE owns and uses certain marks related to “The National Apartments” and “The National Apartments at Brewers Hill, ” including URLs, federally registered trademarks and common law marks. We looked in the various registrars and registrations that your Letter cites and found that an individual owns the URLs referenced in your Letter and another entity owns the federally registered marks. Indeed, we found that OCRE does not own any of the registrations nor is my client aware of any use by OCRE of such marks so we can only assume the veracity of the comments in your Letter concerning ...

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