Homevestors of America, Inc. v. Toliver
Civil Action No. 2020-3496
| D.D.C. | Dec 20, 2021Background
- HomeVestors owns and uses the registered, incontestable slogan mark "WE BUY UGLY HOUSES" nationwide for its real-estate franchise business.
- Defendant Troy Toliver operates a competing real-estate investment business and used HomeVestors’ mark on his website and ads (the homepage repeated "We Buy Ugly Houses" many times).
- HomeVestors sent cease-and-desist letters in July 2019 and January 2020; Toliver did not comply.
- HomeVestors filed suit (Lanham Act §§ 32 and 43(a)) in 2020; service was difficult but ultimately effected; Toliver did not answer and the Clerk entered default on April 23, 2021.
- HomeVestors moved for default judgment seeking only a permanent injunction; the court treated well-pleaded allegations as admitted and evaluated entitlement to injunctive relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether default judgment is warranted given defendant's conduct | Toliver failed to appear or defend despite proper service and repeated attempts; entry of default and default judgment appropriate | No responsive pleadings — effectively no defense | Default judgment permitted; Toliver was "essentially/totally unresponsive." |
| Whether HomeVestors proved Lanham Act infringement / false designation of origin | Owns incontestable mark; mark is distinctive/has secondary meaning; Toliver’s use is likely to cause confusion | No defense asserted (default) | Complaint’s well-pleaded facts taken as admitted; elements of §1114 and §1125(a) satisfied. |
| Whether irreparable harm and other eBay factors support a permanent injunction | Trademark confusion dilutes goodwill; monetary damages inadequate; balance of hardships and public interest favor injunction | No response (no opposing facts on harm or hardship) | eBay factors met; irreparable injury presumed in trademark cases; injunction justified. |
| Whether injunction limited to relief pleaded (no damages sought) | Seeks only permanent injunction; equitable relief proper for incontestable trademark owner | No response | Court grants default judgment and will issue permanent injunction as sole remedy. |
Key Cases Cited
- H.F. Livermore Corp. v. Aktiengesellschaft Gebruder Loepfe, 432 F.2d 689 (D.C. Cir. 1970) (default judgment appropriate when a party is essentially unresponsive)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985) (incontestable trademark owner may obtain injunction against infringers)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (four-factor test governs permanent injunctions)
- Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636 (D.C. Cir. 1982) (injunctive relief is the appropriate remedy in many unfair competition/trademark cases)
- Breaking the Chain Found., Inc. v. Capitol Educ. Support, Inc., 589 F. Supp. 2d 25 (D.D.C. 2008) (elements of trademark infringement and secondary-meaning analysis)
- Amoco Prod. Co. v. Village of Gambell, 480 U.S. 531 (1987) (plaintiff must succeed on the merits before receiving permanent equitable relief)