2 F. Supp. 3d 758
D. Md.2014Background
- Plaintiff Potomac Conference Corp. of Seventh-day Adventists owns Takoma Academy and its marks, including Takoma Academy and TA, and uses them in education services since 1904.
- Takoma Academy Alumni Association (TAAA), an unincorporated alumni group, organized in the 1970s to solicit funds and manage alumni data; funds and invoices allegedly flowed through Takoma Academy’s accounts.
- Mr. Pittman, a Takoma Academy alumnus, became TAAA’s president in 2011 and later filed Articles of Incorporation to form Takoma Academy Alumni Association, Inc. (TAAA, Inc.) in 2012 without Plaintiff’s authorization.
- In May 2012 Plaintiff filed a USPTO trademark application for Takoma Academy; USPTO registered the mark on February 5, 2013.
- On June 7, 2012 Takoma Academy disassociated from TAAA, Inc.; January 17, 2013 Takoma Academy sent a Cease and Desist demanding return of databases and property; Defendants allegedly continued using the marks.
- Plaintiff filed suit April 16, 2013 asserting (1) trademark infringement and unfair competition under the Lanham Act, (2) vicarious infringement, (3) common law unfair competition, and (4) conversion; Plaintiff seeks injunction and related relief.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Subject-matter jurisdiction for Counts I–II | Counts I–II arise under the Lanham Act; sufficient federal question. | Lack of subject-matter jurisdiction; improper to reach state-law issues. | Counts I–II arise under federal law; jurisdiction exists; supplemental over state claims; standing to be addressed later. |
| Rule 12(b)(6) sufficiency of trademark claim | Plaintiff pleads use of Takoma Academy/TA and likelihood of confusion. | Conclusory pleadings insufficient to state a claim. | Plaintiff pleads plausible infringement/unfair competition; sufficient at this stage. |
| Vicarious liability for Pittman (Count II) | Pittman controlled and used marks through TAAA, Inc.; evident overlap. | Need for direct infringement by TAAA, Inc.; insufficient for vicarious liability. | Sufficient facts to survive dismissal; Pittman’s control over TAAA, Inc. supports vicarious liability. |
| Conversion by wrongful detention (Count IV) | Defendants retain and use alumni data after disassociation and cease/desist; wrongful detention. | Need for more showing of wrongful intent/benefit. | Plausible conversion claim; continued use and withholding of Alumni Information supports claim. |
Key Cases Cited
- People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir.2001) (likelihood of confusion; standard for Lanham Act claims)
- Caterpillar Inc. v. Williams, 482 U.S. 386 (1987) (well-pleaded complaint rule; federal question must be in complaint )
- Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir.2012) (vicarious liability framework in trademark context; joint control)