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Buzz Seating, Inc. v. Encore Seating, Inc.

United States District Court, S.D. Ohio, Western Division

June 15, 2017

Buzz Seating, Inc., Plaintiff,
v.
Encore Seating, Inc., Defendant.

          ORDER GRANTING DEFENDANT'S MOTION TO DISMISS, GRANTING IN PART AND HOLDING IN ABEYANCE IN PART PLAINTIFF'S MOTION TO DISMISS COUNTERCLAIMS, AND GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION TO STRIKE AFFIRMATIVE DEFENSES

          SUSAN J. DLOTT JUDGE

         This matter is before the Court on Defendant's Motion to Dismiss Claim One of the Complaint (Doc. 7), Plaintiff's Motion to Dismiss Counterclaims (Doc. 12), and Plaintiff's Motion to Strike Affirmative Defenses (Doc. 13). Plaintiff Buzz Seating, Inc. (“Buzz Seating”) is suing Defendant Encore Seating, Inc. (“Encore”) for trademark infringement and related claims. (Doc. 1.) Encore has filed an Answer and Counterclaim against Buzz Seating seeking a declaratory judgment for non-infringement or priority of registration. (Doc. 8.) Encore now moves to dismiss the registered trademark infringement claim filed by Buzz Seating. Buzz Seating moves to strike two affirmative defenses and the counterclaims filed by Encore.

         I. BACKGROUND

         A. Facts Alleged

         The well-pleaded allegations of the Complaint and the Counterclaim are taken as true for purposes of the dismissal motions pending against each party.

         Buzz Seating manufactures, advertises, markets, distributes, and sells a number of models and lines of chairs, including office chairs. One of Buzz Seating's chair lines bears the trademark FLITE. Buzz Seating first sold the FLITE chairs in commerce in January 2004. Encore also manufactures, advertises, markets, distributes, and sells office chairs. It has sold an executive chair bearing the FLITE mark since December 2011. Buzz Seating and Encore advertise in the same publications, attend the same trade shows, and hire the same dealers and sales representatives.

         B. Administrative Proceedings

         The parties have disputed the right to use the mark FLITE before the Trademark Trial and Appeal Board (“TTAB”). On November 15, 2011, Encore applied to register the trademark FLITE for “Office furniture, including chairs” in Class 20 and was assigned Application Serial No. 85473489.[1] On February 26, 2013, Buzz Seating filed Application Serial No. 85860663 to register the trademark FLITE for a side chair in Class 20. On May 29, 2013, Buzz Seating filed a Notice of Opposition to Encore's Application, Opposition No. 91210838, on the grounds that a likelihood of confusion existed due to Buzz's prior use of the FLITE mark. The TTAB suspended Buzz Seating's Application while it adjudicated Buzz Seating's Opposition to Encore's Application.

         The parties engaged in discovery and participated in a hearing before the TTAB on the Opposition. On August 23, 2016, the TTAB issued its decision sustaining Buzz Seating's Opposition to Encore's Application. (Doc. 1-1 at PageID 26-40.) The TTAB's decision will be discussed in more depth in the Analysis below as necessary, but its conclusion was as follows:

In view of the marks being identical, and the goods and channels of trade being legally identical, we find that Applicant's use of FLITE for “Office furniture, including chairs” is likely to cause confusion with Opposer's previously used and not abandoned mark FLITE for stacking or side chairs.

(Id. at PageID 40.)

         Encore did not appeal or seek reconsideration of the TTAB decision. Rather, on November 22, 2016, Encore filed a concurrent use application, Application Serial No. 87245914, to register the mark FLITE in Class 20 for “executive office furniture, namely, adjustable height executive chairs which rotate and tilt and have armrests, for desks and conference room tables sold through executive furniture dealers, interior designers, and architects.” (Id. at PageID 56.) Application Serial No. 87245914 calls for Encore to use the mark FLITE only in twenty-four specific states and would allow for concurrent use of the mark FLITE by Buzz Seating in Ohio for side chairs. (Id. at PageID 57.) Subsequently, on December 1, 2016, Encore filed a Notice of Abandonment with the U.S. Patent and Trademark Office (“USPTO”) for its first application, Application Serial No. 85473489. (Doc. 14-1 at PageID 175.)

         Turning back to Buzz Seating's efforts to register the mark FLITE, on February 15, 2017, the USPTO issued a Notice of Publication concerning Buzz Seating's Application Serial No. 85860663. (Doc. 14-1 at PageID 172.) Buzz Seating asserts in a brief that on April 6, 2017 Encore filed an Opposition to its Application Serial No. 85860663. (Doc. 14 at PageID 167.) However, it has not provided a citation to the record or a Government publication supporting that assertion.

         C. Judicial Proceedings

         1. Buzz Seating's Complaint

         Buzz Seating filed the instant suit against Encore on December 7, 2016 for damages and injunctive relief. Buzz Seating asserts the following causes of action in the Complaint:

Claim One: 15 U.S.C. § 1114-Trademark Infringement;
Claim Two: 15 U.S.C. § 1125-False Designation of Origin, False Description and Representation of Buzz Seating's FLITE Mark;
Claim Three: Ohio Revised Code § 4165.01, et seq.-Ohio Deceptive Trade Practices Act;
Claim Four: Unfair Competition;
Claim Five: Accounting; and Claim Six: Declaratory Judgment.

(Doc. 1 at PageID 15-22.)

         2. Encore's Answer and Counterclaim

         On March 7, 2017, Encore filed its Answer and Counterclaim. Encore asserts twelve affirmative defenses in the Answer including the following three relevant to the pending motions:

Ninth Affirmative Defense
Buzz Seating's claims are barred because Buzz Seating has not used the name “Flite” in regions of the United States, and Encore has senior rights in the mark in those regions.
* * * *
Eleventh Affirmative Defense
Buzz Seating's claims are barred because Buzz Seating has abandoned its rights in the alleged “FLITE” mark.
Twelfth Affirmative Defense
Buzz Seating's claims are barred because Buzz Seating's use of the name “Flite” has been de minimis in regions of the United States.

(Doc. 8 at PageID 120-21.)[2]

         Additionally, Encore asserts two alternative counterclaims. In the first counterclaim, Encore asks the Court to declare that its FLITE executive chairs do not infringe upon Buzz Seating's FLITE stacking chairs. In the second counterclaim, if the Court does not find non infringement, Encore seeks the Court to direct the USPTO to reject Buzz Seating's Serial Application No. 85860663 and to find that it has senior rights in the mark FLITE in all states in which Buzz Seating did not have bona fide sales prior to Encore filing its Application Serial No. 85473489. (Id. at PageID 122-24.)

         3. ...


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