Adams, Nash & Haskell, Inc. v. United States ( 2021 )

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
ADAMS, NASH & HASKELL, INC., :
:
Plaintiff, : Civil Action No.: 20-1916 (RC)
:
v. : Re Document No.: 22
:
UNITED STATES OF AMERICA, :
:
Defendant. :
MEMORANDUM OPINION
GRANTING IN PART AND DENYING IN PART DEFENDANT’S MOTION TO DISMISS
I. INTRODUCTION
In this case, Plaintiff Adams, Nash & Haskell, Inc. (“ANH”), a labor relations strategist
based in Kentucky, brings claims under the Lanham Act for trademark infringement, false
designation of origin, and unfair competition against Defendant United States of America (the
“Government”). ANH is the registered owner of the trademark “VIEWPOINT,” which it uses in
connection with employee opinion surveys. Every year, the Government, through the U.S.
Office of Personnel Management, conducts a survey of federal executive branch employees
called the Federal Employee Viewpoint Survey. ANH argues that the Government’s use of the
word “viewpoint” in its survey violates federal trademark law. Before the Court is the
Government’s motion to dismiss. The Government argues that because it has conducted the
Federal Employee Viewpoint Survey since 2010, and any claims against the Government must
be brought within six years of accrual, ANH’s claims are time barred. The Government also
claims that ANH has failed to state a plausible claim of false designation of origin. For the
reasons set forth below, the Court concludes that dismissal of the claims on statute of limitations
grounds is inappropriate at this early stage. The Court agrees, however, that ANH has failed to
plead a plausible claim of false designation of origin. Accordingly, the Court grants in part and
denies in part the Government’s motion.
II. BACKGROUND
According to the Amended Complaint, ANH is a labor relations strategist based in
Erlanger, Kentucky. Am. Compl. ¶ 7, ECF No. 5. The company “provides employers with,
among other things, guidance regarding employee opinions relating to their employment.” Id.
In connection with this business, ANH offers assessment tools such as employee surveys. Id. ¶
8. ANH owns the trademark “VIEWPOINT,” which it registered in 1994 for use in conducting
employee opinion surveys. Id. ¶ 9–10; see also Am. Compl. Ex. A. ANH alleges that because
of “long and widespread use” of the trademark, including “extensive promotion and advertising,”
the company “has established extensive goodwill, public recognition, and secondary meaning for
the VIEWPOINT mark as an identifier of ANH in the United States.” Id. ¶ 11. Outside of these
general allegations of fact, ANH does not provide any examples of how it uses the mark.
ANH alleges that the government “is using the mark VIEWPOINT for the purpose of
conducting employee opinion surveys.” Id. ¶ 12. And because the government “has no
connection or association with ANH and is not authorized by ANH to use the VIEWPOINT
mark,” id. ¶ 13, the company brings counts against the government under the Lanham Act for
federal trademark infringement, under 15 U.S.C. § 1114, false designation of origin, under 15
U.S.C. § 1125(a), and unfair competition, also under 15 U.S.C. § 1125(a), see id. ¶¶ 14–23. 1
ANH attached to the Amended Complaint an article titled “The Best Places to Work in the
1
The Amended Complaint also includes a count for violations of state law and a count
for dilution. See id. ¶¶ 24–32. In a prior pleading, ANH indicated that the Government has not
waived sovereign immunity with respect to the state law claims and that it has withdrawn the
claim asserting dilution. See ANH’s Opp’n Gov’t Mot. Dismiss at 13, ECF No. 8. As such, the
only operative claims that remain are the federal claims brought pursuant to the Lanham Act.
2
Federal Government 2018 Rankings,” which appears to be authored by Partnership for Public
Service. See Am. Compl. Ex. B. The attached article references the “U.S. Office of Personnel
Management’s Federal Employee Viewpoint Survey.” Id. Outside of the attached exhibit and
allegation that the government “uses the VIEWPOINT mark for the purpose of conducting
employee opinion surveys,” Am. Compl. ¶ 12, the Amended Complaint does not describe or
provide any examples of how the government uses the mark.
ANH originally filed suit in the District of New Jersey. See Compl., ECF No. 1. ANH
amended its original complaint as a matter of right less than a month after first filing suit. See
Am. Compl. Upon consideration of the government’s initial motion to dismiss, the District of
New Jersey transferred this matter to this Court. See Order, ECF No. 15. The government has
now filed a new motion to dismiss, arguing that the statute of limitations for claims against the
government bars ANH’s claims and that, independently, ANH has failed to state a plausible false
designation of origin claim. See Gov’t Mot. Dismiss, ECF No. 22. The government’s motion is
fully briefed and ripe for decision. See ANH’s Opp’n Mot. Dismiss (“ANH’s Opp’n”), ECF No.
24; Gov’t Reply Supp. Mot. Dismiss (“Gov’t Reply”), ECF No. 26.
III. LEGAL STANDARD
The Federal Rules of Civil Procedure require that a complaint contain “a short and plain
statement of the claim” in order to give the defendant fair notice of the claim and the grounds
upon which it rests. Fed. R. Civ. P. 8(a)(2); see also Erickson v. Pardus, 551 U.S. 89, 93 (2007)
(per curiam). A motion to dismiss under Rule 12(b)(6) does not test a plaintiff’s ultimate
likelihood of success on the merits; rather, it tests whether a plaintiff has properly stated a claim.
See Scheuer v. Rhodes, 416 U.S. 232, 236 (1974). The complaint’s factual allegations are to be
taken as true, and the court is to construe them liberally in the plaintiff’s favor. See, e.g., United
3
States v. Philip Morris, Inc., 116 F. Supp. 2d 131, 135 (D.D.C. 2000). Notwithstanding this
liberal construal, the court deciding a Rule 12 motion must parse the complaint for “sufficient
factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007)). This plausibility requirement means that a plaintiff’s factual allegations “must be
enough to raise a right to relief above the speculative level, on the assumption that all the
allegations in the complaint are true (even if doubtful in fact).” Twombly, 550 U.S. at 555–56
(citations omitted). “Threadbare recitals of the elements of a cause of action, supported by mere
conclusory statements,” are insufficient to withstand a motion to dismiss. Iqbal, 556 U.S. at 678.
A court need not accept a plaintiff’s legal conclusions as true, see id., nor must a court presume
the veracity of legal conclusions that are couched as factual allegations, see Twombly, 550 U.S.
at 555.
IV. ANALYSIS
The Government puts forth two primary arguments. First, the Government claims that
ANH’s claims are time barred pursuant to the statute of limitations for claims brought against the
federal government. Second, and independently, the Government asserts that ANH has failed to
plead a plausible claim of false designation of origin. Because the Court concludes that it cannot
dismiss ANH’s claims on statute of limitations grounds at this early stage, it will consider both
arguments.
A. Statute of Limitations
Federal law provides that every “civil action commenced against the United States shall
be barred unless the complaint is filed within six years after the right of action first accrues.” 28
U.S.C. § 2401(a). “Section 2401(a) generally applies to all civil actions whether legal, equitable,
4
or mixed.” Felter v. Kempthorne, 473 F.3d 1255, 1259 (D.C. Cir. 2007) (citation omitted).
Recently, the D.C. Circuit clarified that, in light of the Supreme Court’s decision in United States
v. Kwai Fun Wong, 575 U.S. 402 (2015), the time bar in Section 2401(a) “is nonjurisdictional
and subject to equitable tolling.” Jackson v. Modly, 949 F.3d 763, 778 (D.C. Cir. 2020). 2 The
parties agree that Section 2401(a) applies to the federal claims brought against the government in
this case. See Gov’t Mot. Dismiss at 9–10; ANH’s Opp’n at 9. 3
Although Section 2401(a) sets the statute of limitations bar at six years, it does not define
when a “right of action first accrues.” Courts “determine the time at which [a] federal claim
accrued—the moment at which the limitations period began to run—by consulting federal law.”
2
ANH argues that the Government waived its statute of limitations defense because it did
not raise it in its initial motion to dismiss. See ANH’s Opp’n at 17. It is not clear whether the
Government is correct that because both the D.C. Circuit and the Third Circuit (where this case
was originally filed) viewed Section 2401(a) as creating a jurisdictional condition at the time the
Government filed its first motion to dismiss, the defense could not be waived. See Gov’t Reply
at 3–4. The Government filed its first motion to dismiss on April 28, 2019. See ECF No. 7. The
D.C. Circuit did not rule that Section 2401(a) did not create a jurisdictional condition until
February of 2020. See Jackson v. Modly, 949 F.3d 763, 776 (D.C. Cir. 2020). Given the timing
of the changing precedent, the Government suggests that “there was no non-jurisdictional statute
of limitations defense to waive at the time of the Government’s original Motion to Dismiss.”
Gov’t Reply at 4; see also ANH’s Notice Supp. Auth., ECF No. 27; Gov’t Reply Notice of Supp.
Auth., ECF No. 28. In any event, although the Government may be prohibited from raising the
statute of limitations defense in its second pre-answer motion, see Fed. R. Civ. P. 12(g)(2) (“[A]
party that makes a motion under this rule must not make another motion under this rule raising a
defense or objection that was available to the party but omitted from its earlier motion.”), the
Government has not permanently waived it, see Fed. R. Civ. P. 12(h)(2) (stating that “failure to
state a claim upon which relief can be granted” may be raised “in any pleading allowed or
ordered under Rule 7(a)”). Because the Court concludes that it cannot dismiss ANH’s claims
based on the statute of limitations defense at this stage, it need not further address whether the
changing precedent renders the defense unavailable in the Government’s second pre-answer
motion.
3
Although Section 2401(a) applies in this case because the Government is a party, to
determine whether a Lanham Act claim was filed in a timely manner in normal circumstances,
“courts apply the equitable doctrine of laches because the Lanham Act does not contain a statute
of limitations.” Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V., 69
F. Supp. 3d 175, 213 (D.D.C. 2014) (quoting Gaudreau v. Am. Promotional Events, Inc., 511 F.
Supp. 2d 152, 158 (D.D.C. 2007)).
5
Connors v. Hallmark & Son Coal Co., 935 F.2d 336, 341 (D.C. Cir. 1991). In Connors, the D.C.
Circuit explained that “the discovery rule is the general accrual rule in federal courts” applicable
to federal questions “in the absence of contrary directive from Congress.” Id. at 342; see also
Jack’s Canoes & Kayaks, LLC v. Nat’l Park Serv., 933 F. Supp. 2d 58, 75 (D.D.C. 2013) (“[I]t is
well-established in the D.C. Circuit that the ‘discovery rule is the general accrual rule in federal
courts’” (quoting Connors, 935 F.2d at 342)); Flynn v. Pulaski Const. Co., Inc., No. 02-cv-
02336, 2006 WL 47304, at *10 (D.D.C. Jan. 6, 2006) (stating “the accrual period is determined
as a matter of federal common law” and that “the accrual period begins to run based on the injury
discovery rule”). Under the discovery rule, “the statute of limitations does not begin to run ‘until
the plaintiff discovers, or with reasonable due diligence should have discovered, the injury that is
the basis of the action.’” Jordan v. Dist. of Columbia, 161 F. Supp. 3d 45, 62 (D.D.C. 2016)
(quoting Connors, 935 F.2d at 341)). Although the Government argues that the discovery rule is
inapplicable to this case, see Gov’t Reply at 10–12, it points to no directive from Congress or
other contrary authority suggesting that the rule—which applies generally in federal courts—is
inapplicable here. 4 Accordingly, the Court finds the discovery rule applies in this case.
The D.C. Circuit has stated that “courts should hesitate to dismiss a complaint on statute
of limitations grounds based solely on the face of the complaint.” Firestone v. Firestone, 76
F.3d 1205, 1209 (D.C. Cir. 1996). “[B]ecause statute of limitations issues often depend on
contested questions of fact, dismissal is appropriate only if the complaint on its face is
conclusively time-barred.” Id. (citing Richards v. Mileski, 662 F.2d 65, 73 (D.C. Cir. 1981)). “A
4
In Connors, the D.C. Circuit explained that the “time of injury rule,” which the
Government argues should apply here, “can be considered analytically as but a particular
instance of the discovery rule: if the injury is such that is should reasonably be discovered at the
time it occurs, then the plaintiff should be charged with discovery of the injury . . . at that time.”
Connors, 935 F.2d at 342.
6
court may dismiss a claim on statute of limitations grounds only if ‘no reasonable person could
disagree on the date’ on which the cause of action accrued.” Smith v. Brown & Williamson
Tobacco Corp., 3 F. Supp. 2d 1473, 1475 (D.D.C. 1998) (quoting Kuwait Airways Corp. v. Am.
Sec. Bank, N.A., 890 F.2d 456, 463 n.11 (D.C. Cir. 1989)).
The Government argues that all the claims brought by ANH are conclusively time-barred
by Section 2401(a). See Gov’t Mot. Dismiss at 10–13. To support its argument, the Government
asks that the Court take judicial notice of public uses of the term “Federal Employee Viewpoint
Survey” since it began referring to its annual government-wide survey as such in 2010. See id. at
5–7. The Government attached eighty-one exhibits to its motion. The exhibits include the
published results of its government-wide employee survey, see Gov’t Mot. Dismiss Exs. 1–14,
ECF Nos. 2–15; news articles referencing the Federal Employee Viewpoint Survey, see Gov’t
Mot. Dismiss Exs. 15–42, ECF Nos. 16–43; scholarly works and academic commentary about
the survey, see Gov’t Mot. Dismiss Exs. 43–57, ECF Nos. 44–58; trade association reporting, see
Gov’t Mot. Dismiss Exs. 59–62, ECF Nos. 60–63; and references to the survey in the Federal
Register, see Gov’t Mot. Dismiss Exs. 63–81, ECF Nos. 64–82. Based on the facts plead and the
facts requested to be noticed, the Government argues that the “Office of Personnel Management
has used the name ‘Federal Employee Viewpoint Survey’ since 2010 in a manner that was
conspicuous, public, widespread, and government-wide.” Gov’t Mot. Dismiss at 10. For this
reason, the Government contends that ANH’s claims accrued not later than 2010 and that ANH’s
complaint, filed on January 31, 2019, was untimely under Section 2401(a). Id. The Government
argues that the widespread and conspicuous public use of the term constitutes inquiry notice
sufficient to trigger accrual of ANH’s claims. See Gov’t Reply at 9.
7
ANH counters that the facts alleged in the Amended Complaint and those requested to be
noticed do not show that it “reasonably should have known that it had suffered injury due to [the
Government’s] wrongful conduct.” ANH’s Opp’n at 11. ANH points out that for dismissal to be
appropriate, the Government “would have to demonstrate ANH reasonably should have known
of [the Government’s] conduct before January 13, 2013, six years prior to the filing of the
Complaint.” Id. Because the information attached to the Government’s motion contains only
limited evidence predating January 13, 2013, ANH contends that much of the Government’s
submission is irrelevant to the question before the Court. See id. at 12. Moreover, ANH argues
that the evidence that does predate January 13, 2013 does not establish that it reasonably should
have known about the Government’s alleged wrongful conduct. See id. at 13.
The Court agrees that evidence of the Government’s use of the term “Federal Employee
Viewpoint Survey” that postdates January 13, 2013 is not relevant to the statute of limitations
inquiry. For this reason, although it is appropriate to take judicial notice of the Government’s
evidence for the limited purpose of demonstrating public use of the term from 2010 to present,
Jacobsen v. Oliver, 201 F. Supp. 2d 93, 110 (D.D.C. 2002) (taking judicial notice of matters of
public record when determining inquiry notice), the Court will only take judicial notice of the
relevant exhibits purporting to show public use of the term “VIEWPOINT” that predate January
13, 2013. Accordingly, the Court takes judicial notice of the uses of the term “Federal Employee
Viewpoint Survey” as shown in Exhibits 5–8, 15–20, and 62. See ECF Nos. 22-6–22-9, 22-16–
22-21, and 22-63; see also Washington Post v. Robinson, 935 F.2d 282, 291 (D.C. Cir. 1991)
(“[A] court may take judicial notice of the existence of newspaper articles in the Washington,
D.C., area that publicized [certain facts].”).
8
The Court will briefly summarize the exhibits of which it takes judicial notice. Exhibits
5–8 are the results of the Federal Employee Viewpoint Survey from 2010 to 2013. See ECF
Nos. 6–9. The reports on the results do not include a publication date or describe where a
member of the public could access the information. 5 Exhibits 15–20 are articles that reference
the government survey. See ECF Nos. 16–21. The articles have various publication dates before
January 13, 2013 and appeared in the following sources: Government Executive: Web Edition
Articles (USA); The Washington Examiner; The Free Lance-Star of Fredericksburg, Virginia;
The Grand Rapids Press; 6 The Picayune Item; and The Baltimore Sun. See id. Exhibit 62 is an
article that appears to have been published on the website for the Society for Human Resource
Management in June 2012. See ECF No. 63.
The Court cannot say, based on the facts alleged in the Amended Complaint and those
judicially noticed, that “no reasonable person could disagree” that ANH’s claims accrued before
January 13, 2013. Smith, 3 F. Supp. 2d at 1475 (quoting Kuwait Airways, 890 F.2d at 463 n.11).
“Whether a plaintiff can be charged with inquiry notice is governed by an objective standard,
i.e., what a reasonable person would have done in plaintiff’s circumstances.” Sandza v. Barclays
Bank PLC, 151 F. Supp. 3d 94, 112 (D.D.C. 2015). Although the materials suggest that the
Government publicly used the term “Federal Employee Viewpoint Survey,” the judicially
5
In reply, the Government cites the National Defense Authorization Act for Fiscal Year
2004, Pub. L. 108-136 (Nov. 24, 2003) (§ 1128(c)), which states that results of agency
employment surveys “shall be made available to the public and posted on the website of the
agency involved.” Outside of this citation, the Government has not provided any evidence that
the results of the Federal Employee Viewpoint Survey for 2010–2013 were in fact made
available in accordance with the law.
6
Although Exhibit 18 references an article published in The Grand Rapids Press, the
article appears to be taken from The Washington Post. See Gov’t Mot. Dismiss Ex. 18.
9
recognized and alleged facts 7 do not plainly show that a reasonable person in ANH’s
circumstances would or should have known about its potential claims against the Government.
The Court reaches this conclusion for several reasons. First, the Government has not
established that the survey results from 2010 to 2013 were published in a public manner such
that this Court should charge ANH with constructive knowledge. Although the published results
of the survey may have been available to the public, the Court cannot determine whether a
reasonable person in ANH’s position would have, or should have, had access to these materials.
Second, the articles submitted that were published during the relevant time period appeared in
smaller, regional publications outside of Kentucky. Although one of the articles may have
appeared in the Washington Post, the record before the Court does not make plain that a person
in ANH’s position would have seen this coverage. Third, the Court cannot, without more
information, charge ANH with constructive knowledge of the article that apparently appeared on
the website for Society for Human Resource Management. Overall, it is simply not clear based
on the materials currently in the record that a reasonable person in ANH’s position would have
known about the Government’s use of the name Viewpoint in the context of its annual survey of
employees prior to January 13, 2013. 8 Based on the current record, the Court cannot pinpoint a
precise date of accrual. Perhaps the Court’s conclusion would differ if the Government had
offered more evidence of widespread, public use of the term dating from the relevant time
7
The Court does not consider the affidavit submitted by ANH alongside its opposition
brief. See ANH’s Opp’n Ex. A, ECF No. 24-1. In any event, whether ANH had actual
knowledge does not implicate whether it had inquiry notice of the potential claim, which is based
on an objective standard. See Sandza, 151 F. Supp. 3d at 112.
8
The Government argues that the Amended Complaint itself plainly establishes that
ANH’s claims are time-barred because Exhibit B acknowledges that the Federal Employee
Viewpoint Survey has been in use since 2010. Gov’t Mot. Dismiss at 12–13. This, however,
does not change the application of the discovery rule or inquiry notice analysis because it is a
publication about the 2018 survey results. See Am. Compl. Ex. B.
10
period. But because accrual is a question of fact and the submitted materials fail to show that no
reasonable person could disagree about the date of accrual, the Court will not dismiss ANH’s
claims on statute of limitation grounds. 9 See Sandza, 151 F. Supp. 3d at 116.
B. False Designation of Origin Claim
To prove a claim of false designation of origin under 15 U.S.C. § 1125(a), a plaintiff
must prove “that the defendant (1) used a designation or false designation of origin, (2) in
interstate commerce, (3) in connection with goods or services, (4) the designation is likely to
cause confusion, and (5) plaintiff already has been or is likely to be damaged.” Guantanamera
Cigar Co. v. Corporacion Habanos, S.A., 672 F. Supp. 2d 106, 109 (D.D.C. 2009) (citations
omitted). The Government argues that ANH failed to plead a plausible false designation of
origin claim because it did not allege that the Government uses its mark in commerce and
because it did not sufficiently plead a likelihood of confusion. See Gov’t Mot. Dismiss at 14–17.
The Court agrees. First, nowhere does ANH allege that the Government used the mark in
commerce. The term “use in commerce” means “the bona fide use of a mark in the ordinary
course of trade.” 15 U.S.C. § 1127. A mark is deemed to be in use in commerce
(1) On goods when—(A) it is placed in any manner on the goods or their containers
or the displays associated therewith or on the tags or labels affixed thereto, or if the
nature of the goods makes such placement impracticable, then on documents
associated with the goods or their sale, and (B) the goods are sold or transported in
commerce, and (2) on services when it is used or displayed in the sale or advertising
of services and the services are rendered in commerce, or the services are rendered
in more than one State or in the United States and a foreign country and the person
rendering the services is engaged in commerce in connection with the services.
9
Because the Court has determined that it would be inappropriate to dismiss ANH’s
claim on statute of limitations grounds pursuant to the discovery rule, it does not separately
analyze whether the continuous tort doctrine would also allow ANH’s claims to survive.
11
Id. All that is alleged in the Amended Complaint about the Government’s use of the mark is that
it “is using the mark VIEWPOINT for the purpose of conducting employee opinion surveys,”
Am. Compl. ¶ 12, that the use complained of occurs in various locations in New Jersey, id. ¶ 6,
and that the use is likely connected with many different government agencies, Am. Compl. Ex.
B. The Amended Complaint does not speak of any alleged infringing use on goods, in
advertisements, or in connection with any services rendered. It does not mention any
commercial use whatsoever.
ANH’s arguments in opposition are unconvincing. ANH argues that because the
Amended Complaint mentions use of the mark by many different government agencies, “[the
Government] uses the VIEWPOINT mark in commerce.” ANH’s Opp’n at 19. According to
ANH, the Government “places the VIEWPOINT mark on its goods and services, i.e., the Federal
Employee Viewpoint Survey, and [the Government] distributes the Federal Employee Viewpoint
Survey throughout the United States.” Id. ANH suggests that “it is a reasonable inference that
these thousands of [alleged] uses over the course of many years . . . constitutes commercial use.”
Id. at 20. But ANH fails to confront the statutory definition of “use in commerce” or explain
how the Amended Complaint sufficiently alleges “use in commerce” in accordance with that
definition. Plainly, the Amended Complaint does not describe any alleged sale of goods or
services associated with the mark. See 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400,
409 (2d Cir. 2005) (“[The Lanham Act] is concerned with the use of trademarks in connection
with the sale of goods or services in a manner likely to lead to consumer confusion as to the
source of such good or services.”); Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 679
(9th Cir. 2005) (“Limiting the Lanham Act to cases where a defendant is trying to profit from a
plaintiff’s trademark is consistent with the Supreme Court’s view that ‘[a trademark’s] function
12
is simply to designate the goods as the product of a particular trader and to protect his good will
against the sale of another’s product as his.’” (quoting United Drug Co. v. Theodore Rectanus
Co., 248 U.S. 90, 97 (1918)); see also J. Thomas McCarthy, 4 McCarthy on Trademarks and
Unfair Competition § 23:5 (5th ed.) (“In-house, private use where the trademark is not seen
publicly is not sufficient to constitute infringement.”). 10 For this reason, ANH has failed to plead
an essential element of its claim of false designation of origin.
Second, ANH has not plausibly alleged a likelihood of confusion. To establish a
likelihood of confusion between two marks, a plaintiff “must show that ‘an appreciable number
of ordinary prudent consumers are likely to be misled, or simply confused, as to the source of the
goods in question.” Int’l Council of Shopping Centers v. Reconcre, LLC, No. 20-cv-2551, 2021
WL 148387, at *3 (D.D.C. Jan, 14, 2021) (quoting Malarkey-Taylor Assocs., Inc. v. Cellular
Telecomms. Indus. Ass’n, 929 F. Supp. 473, 476–77 (D.D.C. 1996)). Courts in this district
consider the eight Poloroid factors in assessing likelihood of confusion: (i) the strength of the
plaintiff’s mark; (ii) the degree of similarity between the two marks; (iii) the proximity of the
parties’ products; (iv) the likelihood that the prior user will bridge the gap between its market
and the second user’s market; (v) evidence of actual confusion; (vi) the defendant’s intent; (vii)
the quality of the defendant’s product; and (viii) the sophistication of customers in the relevant
market. Malarkey-Taylor Assocs., 929 F. Supp. at 477 (citing Polaroid Corp. v. Polarad Elecs.
Corp., 287 F.2d 492, 495 (2d Cir. 1961)). Considering these factors and accepting as true all the
10
The Fourth Circuit has found that a non-profit’s use of a trademark in an article, even
where the non-profit’s website provided opportunities to donate, could not support an
infringement action because “[t]he article in contention was not an advertisement” and
“[n]owhere in the piece did it offer the reader anything for sale” or “mention [the non-profit’s]
services.” Radiance Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 332 (4th Cir. 2015).
13
factual allegations in the Amended Complaint, ANH has not plausibly alleged a likelihood of
confusion.
Again, as noted above, the factual allegations describing ANH’s and the Government’s
use of the mark are sparse. 11 ANH’s sole description of its use of the mark is that it “uses its
VIEWPOINT trademark in connection with employee opinion surveys, and has done so for
many years.” Am. Compl. ¶ 10. ANH explains in general terms that “ANH has established
extensive goodwill, public recognition, and secondary meaning for the VIEWPOINT mark as an
identifier of ANH in the United States.” Id. ¶ 11. As for the Government’s alleged use of the
mark, the Amended Complaint simply states that the Government “is using the mark
VIEWPOINT for the purpose of conducting employee opinion surveys, as demonstrated through
representative examples attached as Exhibit B.” Id. ¶ 12. Exhibit B is what appears to be a
third-party publication ranking the “Best Places to Work in the Federal Government” that
mentions the “U.S. Office of Personnel Management’s Federal Employee Viewpoint Survey.”
Am. Compl. Ex. B. In a footnote, the third-party article again mentions the “Federal Employee
Viewpoint Survey.” Id. Beyond these allegations, the Amended Complaint offers no other facts
describing ANH’s or the Government’s use of the mark—nothing describing ANH’s or the
Government’s advertising, branding, or other marketing efforts— by which the Court could
assess whether a likelihood of confusion is plausible. Even accepting as true that ANH has
established “extensive goodwill public recognition, and secondary meaning for the VIEWPOINT
mark,” Am. Compl. ¶ 10, and that both ANH and the Government use the mark in connection
with employee surveys, the Court is left guessing as to whether the actual uses of the mark would
11
The Court need not consider the legal conclusions or “threadbare recitals” of the cause
of action, see Iqbal, 556 U.S. at 678, such as the statement that the Government’s “use is likely
to cause confusion, mistake, and/or deception.” Am. Compl. ¶ 16.
14
cause confusion. The one representative example offered in the Amended Complaint—which,
again, is a third-party publication, not a Government publication—identifies the Government’s
survey as the “U.S. Office of Personnel Management’s Federal Employee Viewpoint Survey.”
Am. Compl. Ex. B. Given that the source of the survey is clearly indicated, the Court does not
find it plausible that “ordinary prudent consumers are likely to be misled, or simply confused, as
to the source of the goods in question.” Int’l Council of Shopping, 2021 WL 148387, at *3
(quoting Malarkey-Taylor Assocs, 929 F. Supp. at 476–77). The Amended Complaint falls short
of plausibly establishing a likelihood of confusion, a necessary element for ANH’s false
designation of origin cause of action. 12
Because ANH failed to allege sufficient facts as to these two essential elements of its
false designation of origin claim, the Court grants the Government’s motion to dismiss with
respect to Count II. 13
12
The Court notes that likelihood of confusion can sometimes be considered an essential
element for ANH’s other causes of action as well. See Am. Society for Testing Materials, et al.
v. Public.Resource.Org, Inc., 896 F.3d 437, 456 (D.C. Cir. 2018) (explaining that the inquiry for
trademark infringement claim involving registered mark “boils down to two questions: (1) does
[the plaintiff] own a valid mark entitled to protection and (2) is [the defendant’s] use of it . . .
likely to cause confusion” (quotations omitted)); Int’l Council of Shopping, 2021 WL 148387, at
*2 (noting elements for trademark infringement as including “a substantial likelihood of
confusion between the plaintiff’s mark and the alleged infringer’s mark” (quoting AARP v. Sycle,
991 F. Supp. 2d 224, 229 (D.D.C. 2013)); Guantanamera Cigar, 672 F. Supp. 2d at 109 (noting
elements of unfair competition, including showing that a “designation is likely to cause
confusion”). The Government, however, did not argue that ANH’s trademark infringement and
unfair competition claims should be dismissed for failure to state a claim.
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ANH asked in opposition for the opportunity to amend its complaint. ANH’s Opp’n at
22–23. Although leave to amend is “freely give[n] [] when justice so requires,” Fed. R. Civ. P.
15(a)(2), the Court notes that the law of this circuit requires “filing a motion for leave to amend
[the] complaint and attaching a proposed amended complaint,” Rollins v. Wackenhut Servs., 703
F.3d 122, 130 (D.C. Cir. 2012) (citing Belizan v. Hershon, 434 F.3d 579, 582 (D.C. Cir. 2006));
see also D.D.C. Civ. R. 15.1. Because ANH only requested leave to amend in its opposition
brief and did not use the appropriate vehicle for amendment in accordance with the local rules,
the Court will not grant leave to amend at this time.
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V. CONCLUSION
For the foregoing reasons, the Government’s motion to dismiss (ECF No. 22) is
GRANTED IN PART AND DENIED IN PART. An order consistent with this Memorandum
Opinion is separately and contemporaneously issued.
Dated: April 9, 2021 RUDOLPH CONTRERAS
United States District Judge
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