Express Franchise Services, L.P. v. Impact Outsourcing Solutions, Inc.

244 F. Supp. 3d 1368, 2017 WL 1064206, 2017 U.S. Dist. LEXIS 39174
CourtDistrict Court, N.D. Georgia
DecidedMarch 20, 2017
DocketCIVIL ACTION FILE NUMBER 3:16-cv-147-TCB
StatusPublished
Cited by14 cases

This text of 244 F. Supp. 3d 1368 (Express Franchise Services, L.P. v. Impact Outsourcing Solutions, Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. Georgia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Express Franchise Services, L.P. v. Impact Outsourcing Solutions, Inc., 244 F. Supp. 3d 1368, 2017 WL 1064206, 2017 U.S. Dist. LEXIS 39174 (N.D. Ga. 2017).

Opinion

ORDER

Timothy C. Batten, Sr. United States District Judge

This case comes before the Court on Plaintiffs motion for a preliminary injunction [20] and Defendants’ motion to dismiss [21].

I. Factual Background1

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 [1373]*1373depicted below.2

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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 [1374]*1374business or services. Three days after Express filed its motion, IOS moved for dismissal of Express’s complaint for failure to state a claim upon which relief can be granted. Both motions are fully briefed and ripe for resolution. Section II of this Order will analyze IOS’s motion to dismiss, which must be decided based on the well-pled factual averments in Express’s complaint, In Section III, the Court will address whether Express has satisfied the requirements under Federal Rule of Civil Procedure 65 for obtaining a preliminary injunction with respect to any claims that are not subject to dismissal.

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 claim showing that the pleader is entitled to relief.” Chaparro v. Carnival Corp., 693 F.3d 1333, 1337 (11th Cir. 2012). A claim is subject to dismissal pursuant to Rule 12(b)(6) if it does not plead “enough facts to.state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 547, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). The Supreme Court has explained this standard as follows:

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, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (internal citation omitted). This pleading standard does not require “detailed factual allegations,” but it does demand “more than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Chaparro, 693 F.3d at 1337. Thus, a claim will survive a motion to dismiss only if the factual allegations in the pleading are “enough to raise a right to relief above the speculative level.” Twombly, 550 U.S. at 555, 127 S.Ct. 1955.

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, 643 F.3d 1300, 1302 (11th Cir. 2011). But the Court need not accept as true “labels and conclusions,” “formulaic recitation[s] of the elements of a cause of action,” nor legal conclusions couched , as factual allegations. Iqbal, 129 S.Ct. at 1949-50; Chaparro, 693 F.3d at 1337. Thus, evaluation of a motion to dismiss requires two steps: (1) eliminate any allegations in the pleading that are merely legal conclusions, and (2) where there are well-pleaded factual allegations, “assume their veracity' and ... determine whether they plausibly give rise to an entitlement to relief.” Id. at 1950.

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).

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Bluebook (online)
244 F. Supp. 3d 1368, 2017 WL 1064206, 2017 U.S. Dist. LEXIS 39174, Counsel Stack Legal Research, https://law.counselstack.com/opinion/express-franchise-services-lp-v-impact-outsourcing-solutions-inc-gand-2017.