ORDER
This сase comes before the Court on Plaintiffs motion for a preliminary injunction [20] and Defendants’ motion to dismiss [21].
I. Factual Background
Plaintiff Express Franchise Services, L.P. operates more than seven hundred franchise locations throughout the United States and Canada, through which it provides a wide range of contract staffing, recruiting, and human-resource services-. In connection with that business, it and its franchisees use certain registered marks, including “EXPRESS,” “EXPRESS EMPLOYMENT PROFESSIONALS,” and an “X” designed to resemble a person (collectively, the “Express Marks”), which are
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Defendants in this case are Impact Outsourcing Solutions, Inc. and eleven limited liability companies named Impact Outsourcing Solutions I-XI (collectively with Impact Outsourcing Solutions, Inc., “IOS”). These companies are alleged to be part of a single staffing, recruiting, and human-resource services business operating in Georgia under the name and ser-vicemark “Impact Outsourcing Solutions.” These IOS entities are all owned by Don King.
King also owns Southern Staffing, Inc. (“SSI”), which is an Express franchisee pursuant to a franchise agreement dated November 1998. SSI operates several Express franchises in Georgia that do business under names consisting of a combination of the Express Marks and a geographic designation, such as “Express Employment Professionals—Griffin” and “Express Employment Professionals— McDonough.” Pursuant to the franchise agreement between Express and SSI, SSI was granted a limited sublicense to use the Express Marks in connection with its franchises. The agreement prohibits SSI and King from using the Express Marks in connection with any other business or service.
IOS is neither an Express franchise nor otherwise affiliated with or endorsed by Express. However, Express alleges in this lawsuit that IOS has made improper use of the Express Marks in a manner that is likely to confuse the consuming public into believing that IOS is affiliated with Express. Express’s complaint points to five specific instances of such alleged misuse of its marks by IOS: (1) IOS’s advertisements on internet job boards; (2) IOS’s advertisement of job opportunities through social media sites associated with SSI’s Express franchises; (3) IOS’s promotion of webinars as being co-sponsored by IOS and SSI’s Express franchises; (4) IOS’s distribution of training materials and seminar documents claiming that IOS and Express have been working together to create a “career pathing program”; and (5) IOS’s promotion of its business at job fair booths alongside SSI’s Express franchises. [1] at ¶¶ 21-25; see also [1-2] (internet job postings); [1-3] (social media postings); [1-4] (webinar ads); [1-5] (training materials and seminar documents); [1-6] (job fair photos).
Based on these allegations of IOS’s improper use of the Express Marks, Express brings claims against IOS for violations of §§ 32 and 43(a) of the Lanham Act, the Georgia Uniform Deceptive Trade Practices Act, and Georgia statutory and common-law protections against unfair competition. These claims are brought only against IOS; neither SSI nor King is a party to this lawsuit, although Express has brought claims against them in a different forum.
Express has moved for a preliminary injunction enjoining IOS from continuing to use the Express Marks or any confusingly similar marks in connection with its
II. IOS’s Motion to Dismiss [21]
A. Legal Standard
Rule 8(a)(2) of the Federal Rules of Civil Procedure requires that a complaint provide “a short and plain statement of thé clаim showing that the pleader is entitled to relief.” Chaparro v. Carnival Corp.,
A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable ■ inference that the defendant is 'liable for the misconduct alleged. The plausibility standard is not akin to a “probability requirement,” but it asks for more than a sheer possibility that' a defendant has acted -unlawfully.
Ashcroft v. Iqbal,
In considering a party’s motion to dismiss under Rule 12(b)(6), the allegations in the complaint must be accepted as true and construed in the light most favorable to the plaintiff. Powell v. Thomas,
B. Lanham Act Claims
1. Elements of Express’s Lanham Act Claims and the “Use in Commerce” Requirement
Express brings claims against IOS for violation of §§ 32 and 43(a) of the Lanham Act, 15 U.S.C. § 1114(1)(a) and 1125(a). “Under [§ 32 of] the Lanham Act, a defendant is liable for infringement if, without consent, he uses ‘in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark’ which is ‘likely to cause confusion, or to cause mistake, or to deceive.’ ” Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., Inc.,
For present purposes, the elements of these two Lanham Act claims are the same. Hoop Culture, Inc. v. GAP Inc.,
The first element is not at issue, as there is no dispute that Express has adequately alleged that it possesses valid marks. The remaining requirements will be addressed below in reference to each instance of alleged use of the Express Marks by IOS. Preliminarily, however, the Court must address an issue relevant to all such alleged uses: whether Express has adequately alleged that IOS used the Express Marks “in commerce.”
. IOS would have the Court read the “use in commerce” requirement narrowly in a manner that restricts the application of the Lanham Act. See generally [21-1] at 13-15; [32] at 11-14. But the Eleventh Circuit has instructed that “[t]he term ‘use in commerce’ as used in the Lanham Act denotes Congress’s authority under the Commerce Clause rather than an intent to limit the Lanham Act’s application to profit making activity.” Planetary Motion, Inc. v. Techsplosion, Inc.,
The Court concludes that to the extent Express’s complaint alleges that IOS “used” the Express Marks at all—something that is addressed below with respect to each of Express’s specific allegations— the alleged uses are all uses “in commerce” for this jurisdictional requirement. Therefore, the remainder of the Court’s analysis will focus not on whether Express has alleged a “use in commerce” but rather on whether it has alleged a use in connection with the sale or advertisement of goods or services. Bosley,
2. IOS’s Internet Job Postings
The Court now turns to the first of the five instances of IOS’s alleged, use of the Express Marks. Express avers that IOS has referred to itself in online job
IOS argues that its use of the Express Marks in this manner was merely descriptive and thus lies outside the reach of trademark law. See generally Pebble Beach Co. v. Tour 18 I Ltd.,
Equally unpersuasive is IOS’s contention that the internet job postings do not make use of the Express Marks “in connection with the sale ... or advertising of any goods or services.” 15 U.S.C. § 1114(1)(a); Hoop Culture,
Additionally, Express has adequately alleged that IOS’s use of the contested marks in its internet job postings is likely to cause confusion about the affiliation between IOS and Express and Express’s sponsorship or endorsement of IOS’s services. IOS suggests this is not the
Express provides staffing and recruiting services while Defendants provide human resource services. IOS is not a staffing company. There is nothing in any of the documents attached to Plaintiffs Complaint that states, suggests, or even implies that IOS is a staffing company. IOS is a [professional employer organization (“PEO”) ]. Express is not licensed to operate as a PEO in Georgia. Thus, there is no possibility of consumer confusion as a matter of law because Express and IOS provide different services to their customers.
at 17. Initially, insofar as IOS relies on infоrmation extraneous to Express’s complaint, this argument is not properly raised at the motion-to-dismiss stage. But more importantly, in the very next sentence IOS concedes that it and Express provide “complementary services” to “common customers.” For purposes of the instant motion to dismiss, Express has adequately alleged that IOS’s use of the Express Marks in its internet job postings is likely to cause consumer confusion.
For all these reasons, the Court will deny IOS’s motion to dismiss claims relating to its use of the Express Marks in internet job postings.
B. SSI’s Social Media Postings
Express next complains that IOS used the Express Marks without authorization by using SSI’s social media accounts to “advertise job opportunities with [IOS],” often referring to IOS as a “sister company” of SSI’s Express franchisеs. [1] at ¶22. But the documents attached to Express’s complaint [1-3]—which are deemed a part of the complaint and therefore may be considered at the motion to dismiss, Fed. R. Civ. P. 10(c)—belie any assertion that such use of the Express Marks is attributable to IOS.
The postings at issue were made by SSI to its own Twitter and Facebook accounts. The content of the posts refers only to job openings with IOS and do not incorporate, refer to, or use any of the Express Marks. See [1-3], The Express Marks are visible as the name and image associated with the social media accounts, but SSI’s franchise agreement permits it to use the Express Marks in connection with its Express franchises, which exist for the purpose of providing “contract staffing” and “rеcruiting” services for their clients. [1] at ¶ 10. To the extent the posts at issue could be construed as “use” of the Express Marks at all, such use is in no way attributable to IOS. Any issue Express has with its franchisee’s use of the Express Marks in connection with the franchisee’s social media accounts is best addressed in litigation against the franchisee and its owner Don King. Express has failed to state a claim against IOS under the Lanham Act relating to these social media posts.
4. Training Materials and Seminar Documents
Express alleges that IOS has “distributed training materials and seminar documents that falsely claim that [IOS] has been working with [Express] in order to create a ‘career pathing program.’ ” [1] at ¶24;. see also [1-5]. Documents attached to the complaint do indeed claim that “Express and Impact have bеen working over the past several months to develop ... [a] career pathing program to grow into a full time position with [IOS].” [1-5] at 4. These documents prominently display the Express Marks alongside IOS’s logo and provide contact information for both IOS and Express. Id. They further explain
For the reasons discussed above, the Court concludes that these averments sufficiently allege that IOS used the Express Marks, that such use was both in commerce and in connection with the sale or advertisement of goods or services, and that such use is likely to cause consumer confusion. Again, these documents have the effect of suggesting the existence of a formal relationship between IOS and Express,- and therefore Express plausibly alleges that IOS improperly used the Express Marks in an attempt to capitalize on Express’s reputation and goodwill.
5. Webinars and Job Fair Booths
-Finally, Express alleges that IOS has made improper use of the Express Marks by displaying them alongside- IOS’s marks when promoting webinars and at job fair booths. See [1] at ¶¶ 23, 25; [1-4]; [1-6]. IOS argues that SSI authorized these uses in conjunction with events that SSI'and IOS were co-sponsoring or otherwise jointly participating in. However, the Court cannot make such a finding at the motion-to-dismiss stage, when the well-pled averments in Express’s complaint are entitled to -a presumption of truth and all reasonable inferences are to be drawn in Express’s favor. See generally [1] at ¶ 19 (alleging that the twelve Defendants “are not now, and have never been, ... authorized to use Plaintiffs Express Marks”).
At the motion-to-dismiss stage, the Court declines .to hold that the use of the Express Marks on the referenced webinar materials and at job fair booths is not attributable to IOS as a matter of law. For the same reasons discussed above, the factual content of Express’s complaint adequately states a claim against IOS based on this conduct.
C. State-Law Claims
There is no dispute that Express’s state-law claims 'are analogous to and governed by the same legal stаndards as its Lanham Act claims. See [21-1] at 22. Those state-law claims' will therefore likewise be dismissed only insofar as they are premised on the social media postings referenced in paragraph 22 of and attached as Exhibit C to Express’s complaint.
D. Conclusion
•IOS’s motion to dismiss-will be granted in'part and denied in part for the reasons just discussed. The motion will be granted with respect to any claims—under federal or state law—based on the allegations in paragraph 22 of- and Exhibit C to Express’s complaint regarding SSI’s social media postings. It will be denied in all other respects, as the remainder of Express’s averments adequately state a “claim to relief that is plausible on its face.” Twombly,
III. Express’s Motion for a Preliminary Injunction [20]
Having concluded that Express has stated a claim against IOS, the Court now turns to Express’s request for preliminary injunctive relief.
A. Legal Standard
A district court may grant a preliminary injunction only ⅜ the movant
A preliminary injunction “is a drastic remedy not to be granted unless the movant clearly establishes the burden of persuasion as to all four elements.” Davidoff & CIE, S.A. v. PhD Int’l Corp.,
B. Likelihood of Success on the Merits of Express’s Lanham Act Claims
As noted above, Express can prevail on its Lanham Act claims only by demonstrating that (1) it possesses valid marks; (2) IOS has used those marks “in commerce in connection with the sale or advertising of goods” or services; and (3) IOS used the marks in a manner likely to confuse consumers. Hoop Culture,
1. Use by IOS of the Marks
The Court concluded above that Express adequately alleged that IOS made use of its marks, but that is a distinct inquiry from whether Express is likely to prove that assertion. See generally Iqbal,
The Court has already considerеd and rejected most of the arguments advanced by IOS relating to its alleged “use” of the Express Marks. However, for purposes of IOS’s motion to dismiss, Express’s averment that IOS lacked authorization to use the marks was entitled to a presumption of truth. For purposes of Express’s motion for a preliminary injunction, by contrast, the Court can consider the extraneous evidence submitted by IOS—principally in the form of the declarations of Don King [24-1 & 42]—on this issue. And in fact, for the limited purpose of resolving the motion for a preliminary injunction, Express “does not contest the existence of the im
Even where a defendant possesses a license to use the marks of a licensor, such license “is generally terminable at the will of the licensor.” Conagra, Inc. v. Singleton,
Even accepting IOS’s argument that it was, for some period of time, authorized to use the Express Marks, such authorization expired no later than November 2015 and does not provide it with a defense against any subsequent uses of the mark. The Court is thus unpersuaded by IOS’s argument that Express is unlikely to be able to show that IOS made “use” of the Express Marks. The sole remaining issue is whether such use is likely to cause confusion among consumers.
2. Likelihood of Confusion
Courts in this circuit look to the following non-exclusive list of factors when determining whether a defendant’s use of disputed marks is likely to cause consumer confusion:
(1) the strength of the plaintiffs mark; (2) the similarity between the plaintiffs mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the similarity of the sales methods, i.e., retail outlets or customers; (5) the similarity of advertising methods; (6) the defendant’s intent, e.g., does the defendant hope to gain competitive advantage by associating his product with plaintiffs established mark; and (7) the most persuasive factor on likely confusion is proof of actual confusion.
Conagra, Inc. v. Singleton,
a. Strength of the Express Marks
The first factor a court should look to is the strength, or distinctiveness, of the plaintiffs mark. Safeway Stores, Inc. v. Safeway Discount Drugs, Inc.,
Generic marks are the weakest and not entitled to protection—they refer to a class of which an individual service is a member (e.g., “liquor store” used in connection with the sale of liquor). Descriptive marks describe a characteristic orquality of an article or service (e.g., “vision center” denoting a place where glasses are sold). Suggestive terms suggest characteristics of the goods and services and require an effort of the imagination by the consumer in order to be understood as descriptive. For instance, “penguin” would be suggestive of refrigerators. An arbitrary mark is a word or phrase that bears no relationship to the product (e.g., “Sun Bank” is arbitrary when applied to banking services). Arbitrary marks are the strongest of the four categories.
Frehling Enters., Inc. v. Int’l Select Grp., Inc.,
“Also important in gauging the strength of a mark is the degree to which third parties make use of the mark.” Frehling Enters.,
Express argues that its marks are strong because they are covered by multiple incontestable registrations, they are conceptually suggestive and thus inherently distinctive indicators of the services provided under them, and they have been consistently used in commerce for an extended period of time in connection with Express’s business. IOS does not dispute that the Express Marks “are relatively strong.” [24] at 16. The Court agrees that the Express Marks, when viewed as a whole, are entitled to enhanced protection as at least suggestive marks.
b. Similarity Between the Parties’ Marks
“[T]he closer the marks are, the more likely reasonable consumers will mistake the source of the product that each mark represents.” Frehling Enters.,
c. Similarity Between the Parties’ Services
The third factor relevant to the likelihood-of-confusion analysis “requires a determination as to whether the products are the kind that the public attributes to a single source, not whether or not the purchasing public can readily distinguish between the products of the respective parties.” Frehling Enters.,
Here, as IOS explains in some detail, the services provided by the parties are not identical. IOS is an “employee leasing company” and a PEO that provides human resource services to its clients, while Express is a temporary staffing firm that provides predominantly staffing and recruiting services to its clients. Express is not licensed to operate as a PEO in Georgia, and IOS is not a staffing agency. However, as even IOS. concedes, the parties provide “complementary” services to “common customers.” [21-1] at 17; [24] at 22 (IOS describing the parties’ services as “unique (but complementary)”). In sum, the parties provide similar—albeit not identical—services to the same clients, and the Court is convinced that consumers could easily “get the sense that a single producer is likely to” render both sets of services. ITT Corp.,
d. Similarity of the Parties’ Sales Methods
“This factor takes into consideration where, how, and to whom the parties’ products are sold. Direct competition between the parties is not required for this factor to weigh in favor of a likelihood of confusion, though evidence that the products are sold in the same stores is certainly strong.” Frehling Enters.,
IOS concedes that there is “some overlap” between the parties’ customers, but it argues that such overlap “is mitigated by the fact the two companies provide different services to those common customers.” [24] at 22. As just discussed, the Court disagrees. The parties’ services are substantially similar, and they are provided to substantially similar if not identical sets of consumers. The Court therefore finds that the fourth factor weighs in favor of finding a likelihood of confusion.
. e. Similarity of the Parties’ Advertising Methods and Media ,
In comparing the similarity of the parties’ advertising methods and media, “[ijdentity of periodicals is not required; the standard is whether there is likely to be significant enough overlap in the readership of the publications in which the parties advertise that a possibility of confusion could result.” Frehling Enters.,
The parties have not provided much evidence regarding their respective advertising methods and media, although it is clear that there is significant overlap at least with respect to promotional materials and sponsorships, which IOS сontends are not “advertisements” for services. This factor therefore weighs in favor
f.IOS’s Intent
“If it can be shown that a defendant adopted a plaintiffs mark with the intention of deriving a benefit from the plaintiffs business reputation, this fact alone may be enough to justify the inference that there is confusing similarity.” Frehling Enters.,
The evidence before the Court does not convince the Court that IOS could be said to have acted in bad faith prior to November 2015, though neither does the evidence preclude such a finding. However, IOS represented to Express on November 30, 2015 that its use of the Express Marks had ceased, when in reality it continued to use the marks until at least August 2016. From this one can infer a continuing intent by IOS to “deriv[e] a benefit from [Express’s] business reputation.” Frehling Enters.,
g.Proof of Actual Confusion
“It is undisputed that evidence of actual confusion is the best evidence of a likelihood of confusion. However, such evidence is not a prerequisite, and thus it is up to the individual courts to assess this factor in light of the particular facts of each case.” Frehling Enters.,
h.Summary of Likelihood of Confusion
Of the seven factors just discussed, all but one weigh in favor of finding a likelihood of confusion, and none mitigates against such a finding. The Court therefore concludes that Express is likely to prevail on the likelihood-of-confusion prong of its claims.
C. Irreparable Injury
The Court’s focus now shifts to the second factor relevant to the issuance of a preliminary injunction, irreparable harm. In. the Eleventh Circuit, “a sufficiently strong showing of likelihood of confusion caused by trademark infringement may by itself constitute a showing of a substantial threat of irreparable harm.” McDonald’s Corp. v. Robertson,
Irreparable harm has previously been found to exist based on a substantial threat of customer confusion and the resulting harm to the plaintiffs reputation and goodwill. See, e.g., FerrellGas Partners, L.P. v. Barrow,
The Court also concludes that any delay by Express in enforcing its rights to the Express Marks does not defeat a finding of irreparable injury under the facts of this case. See generally Ga. Television Co. v. TV News Clips of Atlanta, Inc.,
Thus, Express has carried its burden of demonstrating that it will suffer irreparable harm in the absence of an injunction.
D. Remaining Preliminary Injunction Factors
Finally, the Court readily concludes that the final two factors—balancing of equities and the public interest— likewise support granting Express’s motion. IOS stands to lose nothing if it is enjoined from further use of the Express Marks, and as is often the case in cases involving Lanham Act violations, the public interest weighs in favor of enforcing Express’s intellectual property rights and preventing consumer confusion. See, e.g., Foxworthy,
E. Preliminary Injunction
Express has satisfied the four prerequisites to the issuance of a preliminary injunction. Accordingly, each Defendant is hereby preliminarily enjoined from:
(1) using any of the Express Marks—in word or design form—in connection with
(2) using any other trademark, service-mark, name, logo, or source designаtion of any kind that is a copy, reproduction, col-orable imitation, or simulation of or otherwise confusingly similar to the Express Marks in connection with Defendants’ business or services in a manner that suggests the existence of any affiliation, endorsement, sponsorship, or other relationship between Express and Defendants; and
(3) using any other trademark, service-mark, name, logo, or source designation of any kind that is likely to cause confusion, mistake, deception, or public misunderstanding that Defendants’ business(es) and services are the business(es) or services of Express or otherwise affiliated with or endorsed or sponsored by Express.
IV. Conclusion
For the foregoing reasons, Defendants’ motion to dismiss [21] is granted in part and denied in part: it is granted as to any claims relating to the social media postings referenced in paragraph 22 of and Exhibit C to the complaint, but it is denied in all other respects. Plaintiffs motion for a preliminary injunction [20] is granted as set forth in Section III(E) above.
IT IS SO ORDERED this 20th day of March, 2017.
Notes
, The Court’s factual recitation is derived from the allegations in the complaint, which for purposes of Defendants' motion to dismiss are entitled to a presumption of truth. When analyzing Plaintiff’s motion for a preliminary injunction, any relevant facts extraneous to the complaint will be addressed where appropriate.
. Express is the owner of at least thirteen U.S. servicemark registrations for the Express Marks, all of which have become incontestable pursuant to 15 U.S.C. § 1065.
. Becausе the Court concluded that Express failed to state a claim against IOS based on the social media postings, the Court has not considered that conduct with respect to Express’s motion for a preliminary injunction.
. The Court notes that this is not a case where the defendant produced counterfeit goods under the plaintiffs protected mark. IOS's use of the Express Marks, in many instances at least, was simply in a manner that suggested the existence of a relationship between the two parties. Thus, the fact that .each party provides some unique services does not defeat a finding that the relevant consuming public could be led to believe that the two companies were nevertheless affiliated, thereby allоwing IOS to capitalize or attempt to capitalize on Express’s reputation, goodwill, and business associated with the Express Marks.
. The phrase "in connection with Defendants’ business or services” encompasses, without limitation, Defendants' online job postings, promotional or training materials, client communications, sponsorship materials, and presence at job fairs or other events.
. As discussed above, the Court has rejected IOS’s arguments that its prior uses of the Express Marks fell outside the scope of the trademark laws. However, nothing in this Order would prevent Defendants from actually making such use of the Express Marks. The qualifying language about the manner of Defendants’ use of the Express Marks is intended to draw that distinction.