MEMORANDUM
Plаintiff Protect-A-Car Wash Systems, Inc. (“Protect-A-Car”) brings suit against Defendants Car Wash Partners, Inc. (“CWP”), and CWP’s CEO, John L. Lai (“Lai”). Protect-A-Car alleges claims of: (1) trademark infringement under the Lanham Act; (2) unfair competition under the Lanham Act; (3) cybersquatting in violation of the Anti-Cybersquatting Consumer Protection Act; (4) cancellation of CWP’s registration and application under the Lanham Act; and (5) unfair competition under Maryland law. Now pending is Defendants’ motion for summary judgment [ECF No. 48], and Protect-A-Car’s motion for partial summary judgment [ECF No. 49]. The parties have fully briefed the motions, and no oral argument is necessary. See Local Rule 105.6. For the reasons set forth" below, Defendants’ motion is granted, and Protect-A-Car’s motion is denied.
The uncontested facts are as follows. Protect-A-Car Wash Systems, Inc. (“Protect-A-Car” or “Plaintiff’) is a corporation that was organized and incorporated under the laws of the District of Columbia on January 12, 1960. [ECF No. 1, ¶ 4]. Protect-A-Car describes its operations as a business “that has been professionally cleaning cars in the greater Washington area since 1958.” [ECF No. 48, at p. 6]. Proteet-A-Car currently operates six car washes, and all six locations are currently located within 14 miles of Washington, D.C.
Defendant Car Wash Partners, Inc. (“CWP”) is a corporation that was organized and incorporated under the laws of Delaware on January 16, 1996. [ECF No. 1, ¶ 5]. CWP maintains its principal place of business at 222 East Fifth Street, Tucson, Arizona, 85705. Id. CWP is the nation’s largest car wash operator, with 212 car washes and 34 lube centers in 21 states. [ECF No. 48 at p. 4]. Defendant John L. Lai (“Lai”) is a natural person who maintains his residence and domicile in Tuscon, Arizona. [ECF No. 1, ¶ 6]. Lai joined CWP in 2002, and was promoted to CEO in 2013. [ECF No. 48, at p. 5].
[ECF No. 48, at p. 7; ECF No. 49-1, p. 7-8].
Defendant CWP created the website, www.mistercarwash.com in 1996 for use in connection with its business. [ECF No. 48, at p. 5]. In January of 2015, CWP entered the Maryland market for the first time, acquiring two car wash locations (“Maryland Locations”) in Severna Park and Annapolis, Id. The Protect-A-Car car wash closest to either of the two CWP Maryland Locations is over 28 miles away. Id. There are several third-party car washes between these two locations as well.
Protect-A-Car washes over one million cars per year. [ECF No. 48, at p. 10]. Protect-A-Car alleges 22 instances of purported “actual confusion” by customers mixing, up CWP and Protect-A-Car. Id. at 9. Only five instances of purported confusion occurred in Maryland. Id. at 10. Of these five instances, two involved an individual purportedly contacting Protect-A-Car in order to cancel a CWP “Unlimited Wash Club” plan.
On February 24, 2016, plaintiff Protect-Á-Car filed its complaint against CWP and Mr. Lai. [ECF No. 1]. Plaintiff alleges claims of: (1) trademark infringement under Section 32(l)(a) оf the Lanham Act, 15 U.S.C.§ 1114(l)(a); (2) unfair competition and false advertising ünder Section 43(a)(1) of the Lánham Act, 15 U.S.C. § 1125(a)(1); (3) cybersquatting in violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d); (4) cancellation of CWP’s registration and application under Section 37 of the Lanham Act, 15 U.S.C. § 1119; 'and (5) unfair competition under Maryland law. Defendant John Lai filed a motion to dismiss for lack of personal jurisdiction, which was denied by this court on Juñe 16, 2016. [ECF No. 31]. Defendants then filed this instant motion for summary judgment on all counts on February 10, 2017. [ECF No. 48]. Protect-A-Car, in turn, also filed its motion for partial summary judgment on February 10, 2017. [ECF No. 49].
STANDARD
Rule 56(a) of the Federal Rules of Civil Procedure provides the “court shall grant summary judgment if the movant shows that there is no genuine' dispute as to any material fact and the movant is entitled to judgment as a, matter of law.” Fed. R. Civ. P. 56(a). The Supreme Court has clarified this does not mean that any factual dispute will defeat the motion. “By its very terms, this standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby, Inc.,
“A party opposing a properly supported motion for summary judgment ‘may not rest upon the mere allegations or denials of [his] pleadings,’ but rather must ‘set forth specific facts showing that there is a genuine issue for trial.’ ” Bouchat v. Baltimore Ravens Football Club, Inc.,
ANALYSIS
Plaintiff Protect-A-Car alleges claims of: (1) trademark infringement under Section 32(l)(a) of the Lanham Act,- 15
I. Trademark Infringement and Unfair Competition
“In order to prevail on claims of trademark infringement and unfair competition under the Lanham Act,” plaintiff Protect-A-Car must show the court that ‘it ha[d] a valid, protectable trademark” and that defendant CWP’s “use of a color-able imitation of the trademark is likely to cause confusion among consumers.” Synergistic Int’l, LLC v. Korman,
Fourth Circuit case law, which applies here,
(1) the strength or distinctiveness of the plaintiffs mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant’s intent;-(7) actual confusion; (8) the quality of the defendant’s product; and (9) the sophistication of the consuming public.
George,
Á. Strength of Protect-A-Car’s mark
“Generally, the stronger the mark, the greater the likelihood that con
Regarding the first consideration, “[a] mark’s conceptual strength is determined in part by its placement into one of four categories of distinctiveness: (1) generic; (2) descriptive; (3) suggestive; or (4) - arbitrary or fanciful.” George, 575 F.3d at 393-94. Defendants argue that Protect-A-Car’s “MR WASH” and “Mr. Wash Car Wash” in connection with car wash services are “undoubtedly descriptive.” [ECF no. 48, at p. 14]. Plaintiff Protect-A-Car contends that the marks are “suggestive” in nature. [ECF No. 49-1, at p. 33]. The importance of whether the marks are ultimately considered “descriptive” or “suggestive” is important; “descriptive” marks are considered to be weak and are not accorded protection without proof of second meaning, whereas “suggestive marks” are considered to be strong and “presumptively valid.” See Pizzeria Uno,
Suggestive marks “do not describe a product’s features but merely suggest ] them.” George, 575 F.3d at 393 (citing Retail Servs.,
The court first notes. that the words “wash” and “car wash” are purely generic, and are therefore not entitled to any trademark protection. See George, 575 F.3d at 394. (“[A] generic mark is never entitled t.o trademark protection.”). Next, the court acknowledges the difficulty of categorizing the word “Mr.” or “Mister” as “descriptive” or “suggestive.” On the one hand, defendants have .offered evidence that there are numerous car washes, both across the country and within Plaintiff Protect-A-Gar’s territory, that use “MR” in connection with car wash services. For exаmple, Steve Harris, owner of Plaintiff Protect-A-Car, admitted at deposition that he was aware of at least several other car washes—located closer in proximity than Defendant CWP’s locations—that use “Mr.” in their names,' including: (1) Mr. Gee’s Car Wash in Washington, D.C.; (2) Mr. Clean Car Wash in Waldorf, Maryland; and (3) Mr. Kleen Car Wash in Alexandria, Virginia.
The strength of mark analysis, however, does not end here. Regarding the second consideration, commercial strength, the court looks to the marketplace and asks “if in-fact a’substantial number of present or prospective customers understand the designation when used in connection with a business to refer to a particular person or business enterprise.” CareFirst,
(1) the plaintiffs advertising expenditures; (2) consumer studies linking the mark to a source; (3) the plaintiffs record of sales success; (4) unsolicited media coverage of the plaintiffs business; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the plaintiffs use of the mark.
George,
With regard to the first factor, Protect-A-Car has provided evidence that it spends approximately $250,000 per year on advertising. This seemingly cuts in favor of Protect-A-Car. However, in GareFirst, the Fourth Circuit found that CareFirst’s logo was not commercially strong, despite “the $50 million it ha[d] spent on advertising in the mid-Atlantic region over the last decade,” because- “CareFirst’s registered mark—‘CareFirst’—always appeared] in public coupled with ‘Blue Cross Blue Shield.’ ” CareFirst,
The second factor, however, is more telling. No consumer studies were performed linking Protect-A-Car. with CWP, and “[t]he absence of such [studies] is telling, as such • evidence is ‘generally thought to be the most direct and persuasive way of establishing secondary meaning.’ ” George, 575 F.3d at 396 (quoting U.S. Search, LLC v. U.S. Search.com Inc.,
Ultimately, the court finds that, under the summary judgment standard, the conceptual strength inquiry weighs in Defendants’ favor, and the commercial strength factor slightly favors Defendаnts'as well. Accordingly, the strength of mark factor, overall, weighs in Defendants’ favor.
B. Similarity of the marks
Similarity of the parties’ marks focuses on the “dominant portion” of each to determine “whether there exists a similarity in sight, sound, and meaning” that would “result in confusion.” George & Co.,
Here, Protect-A-Car’s marks and CWP’s marks, as presented, do not look alike. Although the marks contain similar language, they do not contain the same words. The marks do not use similar colors or fonts. See, e.g., Petro Stopping Centers, L.P. v. James River Petroleum, Inc.,
C. Similarity of the services and facilities
The third and fourth factors, in this context, are related. Regarding the third factor, “the goods in question need not be identical or in direct competition with each other.” George,
D. Similarity of advertising used by the markholders
“In comparing advertising, we look at a variety of factors: the media used, the geographic areas in which advertising occurs, the appearance of the advertisements, and the content of the advertisements." CareFirst,
E.Defendant’s intent
The defendant’s intent can sometimes be a “major factor”; “[i]f there is intent to confuse the buying public, this is strong evidence'establishing likelihood of confusion, since one intending to profit from another’s reputation generally attempts to make his signs, advertisements, etc., to resemble the other’s so as deliberately to induce confusion.” Pizzeria Uno,
Protect-A-Car argues that CWP intended to create confusion because: (1) CWP was denied trademark status initially by the USPTO, and (2) CWP negotiated with Protect-A-Car in 2000 for it consent to CWP’s registration of the MISTER CAR WASH mark. These arguments do not establish a genuine issue of material fact regarding the intent issue. Rather, the facts show that CWP’s MISTER CAR
F, Actual confusion
“The seventh and most important factor is actual confusion.”. George,
“Actual confusion can be demonstrated by .both anecdotal and survey evidence,” Id. at 393. As an initial matter, the court notes that Protect-A-Car has not presented any “survey evidence” of actual confusion., CWP suggests the lask of such evidence should “weight ] against a- finding of actual confusion,” [ECF No. 48, p. 27]. The court will not, however, draw a negative inference against Protect-A-Car from the lack of such evidence;, as Protect-A-Car clarifies, survey evidence is not “needed, required or introduced in the majority of cases.” [ECF No. 52, p, 30 (citing MCCARTHY at § 32:195) ]; see also Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc.,
In the absence of survey evidence, Protect-A-Car must introduce evidence of actual confusion by anecdotal evidence. Here, Protect-A-Car has offered evidence of 22 instances of “actual confusion.” Of these 22 instances, 18 involved an individual contacting Protect-A-Car—via phone or online—to cancel an “Unlimited Wash Club” plan. In these instances,- Protect-A-Car later detеrmined that the customer was not a Protect-A-Car customer, but rather a CWP customer. This “confusion” stems from the fact that CWP owns a federal trademark registration for UNLIMITED WASH CLUB, and has used that term since 2004. Protect-A-Car, in comparison,
Furthermore, of the 22 total instances of reported confusion, only five instances occurred in Maryland. This is relevant because Protect-A-Car’s complaint 'seeks to hold CWP liable for trademark infringement “based on CWP’s use of the Infringí ing Marks in Maryland, not elsewhere.” [ECF No. 30, p. 10]. Of these five Maryland instances, two are instances of consumers mistakenly contacting Protect-A-Car to cancel an “Unlimited Wash Club,” as discussed supra. One instance is ¿n email sent by Protect-A-Car’s controller to himself, memorializing a conversation he with a mistaken individual who believed she was working with Protect-A-Car. [ECF No. 48, p. 22-23]. Another instance occurred when a CWP customer was mistakenly given a Protect-A-Car phone number when she called a CWP location to dispute her plan. Id. at 23. The court agrees with Protect-A-Car that these instances are not hearsay and that they are relevant to the analysis. [See ECF No. 25-26 (citing MCCARTHY at § 23:15) ].
The final instance of Maryland “confusion” involves an email sent to Steven Harris, owner of Protect-A-Car, from a family friend, Barbara Morrison. CWP argues this email should be disregarded because it was directed by Steven Harris. Indeed, Protеct-A-Car’s brief admits that even if the email was not sent in bad faith for litigation purposes, it was sent after Steven Harris requested Barbara Morrison to send it in order to “demonstrate that people are confused” [ECF No. 52, at p. 11-12]. Protect-A-Car counters that the lawsuit was not filed for a year after this email, so it likely was not sent for litigation purposes. The court makes no determination on whether this email was sent in bad faith or not, and it also makes no credibility determinations; instead, the court merely notes that Barbara Morrison was able to determine that CWP was not Protect-A-Car, which weighs in CWP’s favor. [ECF No. 48, p. 23 (“Needless to say, I was really disappointed to learn that it was not your business”) ].
CWP’s first argument is that a majority of Protect-A-Car’s 22 instances of “actual confusion” are largely irrеlevant to the analysis, “[T]rademark infringement protects only against mistaken purchasing decisions and not against confusion generally.” Radiance Found., Inc. v. N.A.A.C.P.,
Protect-A-Car washes over a million cars per year, and CWP is the nation’s largest operator of car washes. Given the “large volume of contacts or transactions which could give rise to confusion,” the limited instances of actual confusion sug
Ultimately, the cоurt finds that Protecfc-A-Car’s proffered evidence of actual confusion is, at best, de minimis. “At worst, [Protect-A-Car’s] failure to uncover more than a few instances of actual confusion creates a ‘presumption against likelihood of confusion in the future.’ ” Petro, 130 F.3d at 95 (citing Amstar Corp. v. Domino’s Pizza, Inc.,
G.Quality of services
The eighth factor, quality of services, is not particularly relevant here. It is “most appropriate in situations involving the production of cheap copies or knockoffs of a competitor’s trademark-protected goods.” Sara Lee Corp. v. Kayser-Roth Corp.,
H.Sophistication on the consuming public
The ninth and final factor is buyer sophistication. “Barring an unusual case, buyer sophistication will only be a key factor when the relevant market is not the public at-large.” Sara Lee Corp. v. Kayser-Roth Corp.,
* * *
The court has considered the above nine factors under the summary judgment standard. In doing do, the court finds that a majority of the factors weigh in Defendants’ favor. This includes factors that the court accords more weight to, such as “strength of mark” and “evidence of actual confusion.” See Sterling Acceptance Corp. v. Tommark, Inc.,
Count III alleges a violation of the ACPA. “The ACPA was enacted in 1999 in response to concerns over the proliferation of cybersquatting—the Internet version of a land grab.” Virtual Works, Inc. v. Volkswagen of Am., Inc.,
Under the ACPA, a person is liable to the owner of a protected mark for cybers-quatting if that pеrson:
(i) has a bad faith intent to profit from that mark ...; and
(ii) registers, traffics in, or uses a domain name that:
(I) in the case of a mark that is distinctive ..., is identical or confusingly similar to that mark;
(II) in the case of a famous mark ..., is identical or confusingly similar to or dilutive of that mark.
Id. at 267-68 (quoting 15 U.S.C. § 1125(d)(1)(A)). Regarding the “bad faith” determination, the statute provides nine factors to consider,
Accordingly, in order to have a valid claim, Protect>-A-Car must proffer evidence that CWP: (1) “had a bad faith
III. Cancellation of CWP's registra-' tion and application under Section 37 of the Lanham Act, 15 U.S.C. § 1119.
Count IV alleges a claim for cancellation of CWP’s registration and application under Section 37 of the Lanham Act, 15 U.S.C. § 1119. “The plain language of Section 37 states that cancellation is available in ‘any action involving a registered mark.’ ” Airs Aromatics, LLC v. Opinion Victoria’s Secret Stores Brand Mgmt., Inc.,
CONCLUSION
For the aforementioned reasons, Defendants CWP and Lai are entitled to sumr mary judgment on all of Plaintiff Protect-A-Car’s claims. CWP’s motion [ECF No. 48] is granted, and Protect-A~Car’s motion [ECF No, 49] is denied. A separate, order follows.
Notes
. Protect-A-Car clarifies in its briefing that it previously owned and operated car wash facilities more than 14 miles from Washington, D.C., including locations in Catonsville, Maryland, and Woodbridge, Virginia. [ECF No. 52, at p. 6]. The court finds these facts irrelevant; these locations are not currently in operation, and these locations are roughly 30 and 60 miles, respectively, from the nearest CWP locations.
. CWP suggests there are 12 car washes between these two locations, [ECF No. 48, at p. 6]. Protect-A-Car contests this. [ECF No. 52, at p. 6], Regardless of the exact number, it is
. Protect-A-Car objects to CWP’s extensive evidence supporting the existence of these other car washes on evidentiary grounds; these arguments have little merit. The evidence includes, among other things, admissions by Protect-A-Car’s officers at deposition admitting to the existence of these car washes.
. In fact, of the total 22 instances, 18 involved someone purportedly’ contacting Protect-A-Car in order to cancel a CWP "Unlimited Wash Club” plan. [ECF No. 48, at p. 10].
. The email reads;
Dear Steve;
I was so excited to read in The Capital-the Annapolis Newspaper-that you were opening up a car wash in Annapolis! Since my family and I have been taking our cars- to you for so many years for the best car wash in the DC Metro area, I was really glad we could do business in my neck of the woods.
Needless to say, I was really disappointed to learn that if was not your business, Mr. Carwash, but a business that practically stole your good name by calling themselves Mister Carwash. I assumed all along it was you, and truth be told, I wish you were opening up in Annapolis. I miss the wonderful service I always received at Mr. Carwash.
I’m bummed that someone else is using your name, fpr sure. We will stay in touch, and if I’m ever in your neck of the woods, I will"get my car washed at your place! Take care, Barbara Morrison. [ECF No. 49-l,at-p. 15],
.It should be noted, however, that Barbara Morrison initially reached out to Mr. Harris by text message. [ECF No. 52, at p; 11-12], The email, however, was sent at Mr. Harris’s request, Id.
. Protect-A-Car incorrectly argues that the Federal Circuit's case law should apply to its trademark infringement claim, urging the court to apply a standard set forth in In re E.I. DuPont De Nemours & Co.,
. Plaintiffs contend that defendants "misrepresented what Steve Harris” said during his deposition. However, this, court has reviewed Steve Harris’s deposition testimony and finds no "misrepresentation,” Steve Harris was directly аsked whether he was aware of these locations, and he answered in.the affirmative. [ECF No 48-9 184:23-187:25, Harris Dep.].
. Protect-A-Car argues that CWP "literally ... fabricated testimony to support this asser
. “The test for trademark infringement and unfair competition under state law is the same аs the test under the Lanham Act.” Sterling Acceptance Corp. v. Tommark, Inc.,
. (B)(i) In determining whether a person has a bad faith intent ... a court may consider factors such as, but not limited to:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person's intent to divert consumers from the mark owner’s online location to a site ... that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark ...;
(VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used ... the domain name in the bona fide offering of any goods or services ...;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name ...;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others ...; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous....
Virtual Works, Inc. v. Volkswagen of Am., Inc.,