244 F. Supp. 3d 1368
N.D. Ga.2017Background
- Express Franchise Services operates 700+ franchises and owns incontestable service-mark registrations for the EXPRESS marks (word and design).
- Don King owns franchisee Southern Staffing, Inc. (SSI) — an Express franchisee — and also owns Impact Outsourcing Solutions, Inc. and related IOS entities, which are not Express franchisees.
- Express alleges IOS used Express’s marks without authorization in multiple contexts: internet job postings, SSI social-media postings, webinar/promotional materials, training/seminar documents claiming a joint “career pathing” program, and job-fair booths.
- Express sued IOS under 15 U.S.C. §§ 1114 and 1125(a) (Lanham Act) plus state-law counterparts, sought a preliminary injunction, and IOS moved to dismiss for failure to state a claim.
- The Court dismissed claims based solely on SSI’s social-media posts (attributable to SSI, not IOS), denied dismissal as to other alleged uses, and granted Express a preliminary injunction enjoining IOS from further confusing uses of the Express Marks.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Express pleaded actionable "use in commerce" and use "in connection with" services under the Lanham Act | Express: IOS used the marks in commerce (job ads, materials, events) connected to IOS’s services/hiring and thus meets jurisdictional and substantive predicates | IOS: "Use in commerce" should be read narrowly; some uses were descriptive or not connected to sale/advertising of services | Court: "Use in commerce" construed broadly as jurisdictional; Express sufficiently alleged use "in connection with" services for most challenged instances (deny dismissal) |
| Whether IOS’s internet job postings and training/webinar/job-fair materials create likelihood of consumer confusion | Express: postings and materials represented affiliation/endorsement and confused common customers | IOS: provides different (PEO/HR) services; some uses were descriptive or authorized via implied sublicense; use may be attributable to SSI not IOS | Court: marks are strong, identical use, services are complementary with overlapping customers; these factors favor likely confusion; denial of dismissal on these claims |
| Whether claims based on SSI’s social-media posts state a claim against IOS | Express: SSI posts advertised IOS jobs and called IOS a "sister company," showing IOS’s misuse | IOS: posts were made by SSI on SSI accounts; Express’s complaint exhibits show no use by IOS | Court: Dismissed Lanham Act and related state-law claims to the extent they rely on the social-media posts attributable solely to SSI |
| Whether preliminary injunction is warranted (likelihood of success, irreparable harm, balance/public interest) | Express: likely to prevail on infringement; injury to goodwill and loss of control justify immediate relief; public interest favors preventing confusion | IOS: disputes continued unauthorized use and intent; argues some uses were authorized or inadvertent | Court: Granted preliminary injunction — Express likely to succeed on merits, irreparable harm shown, equities and public interest favor relief |
Key Cases Cited
- Chaparro v. Carnival Corp., 693 F.3d 1333 (11th Cir. 2012) (Rule 8 pleading standard)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility standard for complaints)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading legal conclusions vs. facts)
- Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir. 2001) (interpretation of "use in commerce")
- Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005) ("use in commerce" as jurisdictional predicate)
- Conagra, Inc. v. Singleton, 743 F.2d 1508 (11th Cir. 1984) (licenses generally terminable by licensor)
- Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330 (11th Cir. 1999) (factors for mark strength and third‑party use)
- McDonald’s Corp. v. Robertson, 147 F.3d 1301 (11th Cir. 1998) (trademark actions and preliminary injunction considerations)