Green Builders LLC v. USA Green Builders Corporation

• Court: District Court, W.D. Washington
• Decided: October 8, 2025
• Docket: 2:24-cv-01469
• Status: Unknown

Opinion

1 2 3 4

5 6 7 UNITED STATES DISTRICT COURT 8 WESTERN DISTRICT OF WASHINGTON AT SEATTLE 9 10 GREEN BUILDERS LLC, CASE NO. 2:24-cv-01469-LK 11 Plaintiff, ORDER DISMISSING 12 v. COMPLAINT 13 USA GREEN BUILDERS CORPORATION, 14 Defendant. 15 16 This matter comes before the Court on Plaintiff Green Builders LLC’s motion for default 17 judgment. Dkt. No. 13. For the reasons laid out below, the Court denies the motion and dismisses 18 this case without prejudice and with leave to amend. 19 I. BACKGROUND 20 On September 14, 2024, Plaintiff Green Builders LLC filed a complaint against USA Green 21 Builders Corporation for false designation of origin and unfair competition under 15 U.S.C. § 22 1125(a); service mark infringement under Washington state law, trademark dilution under 23 Washington state law; infringement of service mark and unfair competition under common law; 24 1 violation of the Washington State Consumer Protection Act, Wash. Rev. Code § 19.77.160; and 2 unjust enrichment. Dkt. No. 1 at 4–9. On October 24, 2024, Plaintiff requested entry of default 3 against Defendant, who had not yet appeared. Dkt. No. 7. The Court denied that request without 4 prejudice on October 30, 2024 for failure to show proper service under Federal Rule of Civil

5 Procedure 4. Dkt. No. 9. Plaintiff filed a new Affidavit of Service on November 27, 2024, Dkt. 6 No. 10, followed by another request for entry of default on December 18, 2024, Dkt. No. 11. The 7 Clerk of Court entered default as to Defendant USA Green Builders Corporation on December 19, 8 2024. Dkt. No. 12. On March 31, 2025, Plaintiff filed a motion for default judgment. Dkt. No. 13. 9 Plaintiff asks the Court to permanently enjoin Defendant “from using the word ‘GREEN’ in any 10 use, advertising, sale, promotion, of marketing of building construction, repair and remodeling 11 services,” and to award Plaintiff its attorney fees. Id. at 12. 12 II. DISCUSSION 13 A. Legal Standard 14 Motions for default judgment are governed by Rule 55 of the Federal Rules of Civil

15 Procedure. That Rule authorizes the Court to enter default judgment against a party that fails to 16 appear or otherwise defend in an action. The Court has discretion to grant or deny a motion for 17 default judgment. Hawaii Carpenters’ Tr. Funds v. Stone, 794 F.2d 508, 511–12 (9th Cir. 1986). 18 Default judgments are ordinarily disfavored, and cases should be decided on their merits if 19 reasonably possible. Eitel v. McCool, 782 F.2d 1470, 1472 (9th Cir. 1986). Courts may consider 20 the following factors (the “Eitel factors”) in deciding whether to grant a motion for default 21 judgment: 22 (1) the possibility of prejudice to the plaintiff, (2) the merits of plaintiff’s substantive claim, (3) the sufficiency of the complaint, (4) the sum of money at 23 stake in the action[,] (5) the possibility of a dispute concerning material facts[,] (6) whether the default was due to excusable neglect, and (7) the strong policy 24 underlying the Federal Rules of Civil Procedure favoring decisions on the merits. 1 Id. at 1471–72. If a plaintiff “has not adequately alleged that he has ‘a claim or right to relief’ . . . 2 he is not entitled to a default judgment, and dismissal for failure to state a claim is proper.” Moore 3 v. United Kingdom, 384 F.3d 1079, 1090 (9th Cir. 2004). 4 B. Plaintiff has Failed to State a Claim Under the Lanham Act

5 Plaintiff asserts federal law claims of false designation of origin and unfair competition 6 under Section 43(a) of the Trademark Act of 1946 (the Lanham Act), 60 Stat. 441, as amended, 7 15 U.S.C. § 1125(a). Dkt. No. 1 at 4–5. Plaintiff’s Lanham Act claims are based on purported 8 ownership of the unregistered text-only trademark GREEN BUILDERS LLC. Dkt. No. 1 at 2–5 9 (referencing Washington State Trademark Registration but no federal registration and seeking 10 relief under 15 U.S.C. § 1125(a), which protects unregistered marks).1 “Registration is not a 11 prerequisite for protection under § 43(a), . . . but courts look to the general principles qualifying a 12 mark for registration under § 2 when determining whether an unregistered mark is protectable 13 under § 43(a).” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 n.7 14 (9th Cir. 1998)). “[W]hether the words used . . . are entitled to protection” is “[t]he threshold issue

15 in any action for trademark infringement.” Transgo, Inc. v. Ajac Transmission Parts Corp., 768 16 F.2d 1001, 1014 (9th Cir. 1985). 17 Generic terms—those that “refer[] to the genus of which the particular product is a 18 species”—are not protected under federal law, and descriptive terms may only obtain protection 19 “by acquiring a secondary meaning in the minds of the consuming public.” Id. at 1014–15. 20 Similarly, family names are classified as descriptive and, therefore, are unregistrable and 21 1 Although Plaintiff registered the mark GREEN BUILDERS LLC for “Construction & Repair” with the State of 22 Washington, id. at 15, the mark is still “unregistered” under federal law. See Matal v. Tam, 582 U.S. 218, 226 (2017) (noting that an “unregistered trademark” can be enforced under the state’s registration system “if it has been registered 23 in a State”); Cascade Fin. Corp. v. Issaquah Cmty. Bank, No. C07–1106Z, 2007 WL 2871981, at *11 (W.D. Wash. Sept. 27, 2007) (“Plaintiffs have provided no legal authority that a state registration of a trademark confers a presumption of validity under the Lanham Act. The Court will not presume that [Plaintiffs] owns a valid mark based 24 upon the state registration.”). 1 unprotectable without secondary meaning. Lanham Act § 2(e), 15 U.S.C. § 1052(e); Avery 2 Dennison Corp. v. Sumpton, 189 F.3d 868, 877 (9th Cir. 1999). “Secondary meaning can be 3 established in many ways, including (but not limited to) direct consumer testimony; survey 4 evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising;

5 amount of sales and number of customers; established place in the market; and proof of intentional 6 copying by the defendant.” Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 7 1143, 1151 (9th Cir. 1999). “To show secondary meaning, a plaintiff must demonstrate a mental 8 recognition in buyers’ and potential buyers’ minds that products connected with the mark are 9 associated with the same source.” Art Attacks Ink, LLC v. MGA Ent. Inc., 581 F.3d 1138, 1145 10 (9th Cir. 2009) (citation modified). 11 Nothing in the complaint suggests that GREEN BUILDERS LLC as a mark for 12 “construction and repair” services, Dkt. No. 1 at 15, is anything other than generic or descriptive, 13 and Plaintiff has not submitted any allegations or evidence that GREEN BUILDERS LLC has a 14 secondary meaning to consumers. The most that Plaintiff offers is the conclusory argument in its

15 motion (that is not made in its complaint) that “the mark GREEN BUILDERS LLC in connection 16 with providing building construction, repair and remodeling services is distinctive and strong 17 because the word ‘green’ does not classify, describe or suggest these services in any way.” Dkt. 18 No. 13 at 7. But notably, the United States Patent and Trademark Office (“USPTO”) has opined 19 that “GREEN BUILDERS” for “custom construction of homes” was “merely descriptive” of an 20 applicant’s goods and/or services “because the applicant’s construction services are provided by 21 those who build, and are done in a manner that tends to preserve environmental quality, such as 22 being recyclable, biodegradable, or nonpolluting.” In re Trademark Application for BPC Green 23 Builders, No. 69CE303FD4, at 5 (T.T.A.B. Aug. 29, 2025), available at

24 https://tsdr.uspto.gov/documentviewer?caseId=sn99114551&docId=NFIN20250829200619. 1 This is in line with analogous findings from various adjudicatory bodies. See, e.g., Union Nat. 2 Bank of Texas, Laredo, Tex. v. Union Nat. Bank of Texas, Austin, Tex., 909 F.2d 839, 845 (5th Cir. 3 1990) (“[I]n many cases, a descriptive term will be an adjective such as ‘speedy,’ ‘friendly,’ 4 ‘green,’ ‘menthol,’ or ‘reliable.’”); Great W. Air, LLC v. Cirrus Design Corp., 649 F. Supp. 3d

5 965, 977 (D. Nev. 2023) (“Descriptive marks—like ‘speedy,’ ‘friendly,’ or ‘green’—are not 6 entitled to trademark protection unless they have acquired secondary meaning.”), aff'd, No. 23- 7 15157, 2024 WL 5134351 (9th Cir. Dec. 17, 2024); In Re Home Builders Ass’n of Metro. Denver, 8 No. 75759314, 2004 WL 1942041, at *3 (T.T.A.B. Aug. 4, 2004) (“‘BUILT GREEN’ for 9 applicant’s magazines and newsletters simply describes the fact that . . . the companies on 10 applicant’s business directory have ‘built green’ homes and that its building construction services 11 involve building green homes”; accordingly, “applicant’s mark is merely descriptive for the goods 12 and services in the application”). 13 Moreover, through the Washington Secretary of State Business Entity Search, the Court 14 has identified at least ten businesses (other than the parties in this case) that include (or included)

15 “green builder” in the name. Washington State Corporations and Charities Filing System, Search 16 Results for Green Builders, https://ccfs.sos.wa.gov/#/AdvancedSearch (Eco-Green Builders, Inc., 17 Emerald City Green Builders, Inc., Green Home Builders, LLC, Grit City Green Builders LLC, 18 Northwest Green Builders LLC, Pacific Green Builders, Inc, Puget Sound Green Builders, LLC, 19 The Green Builder, NW., Inc., United Green Builders, LLC, Washington Green Builders LLC).2 20 “[T]hat the marketplace is replete with products using a particular trademarked word indicates not 21 only the difficulty in avoiding its use” but also either “the likelihood that consumers will not be 22 confused by its use,” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1144 (9th Cir. 2002), or 23

2 Reyn's Pasta Bella, LLC v. Visa USA, Inc., 442 F.3d 741, 746 n.6 (9th Cir. 2006) (a court “may take judicial notice 24 of court filings and other matters of public record”). 1 alternatively, that a business using the word has simply “assumed the risk of some consumer 2 confusion,” Skydiving Sch., Inc. v. GoJump Am., LLC, No. 24-1822, 2025 WL 502491, at *2 (9th 3 Cir. Feb. 14, 2025) (observing that “[t]he degree of consumer confusion alleged” by the plaintiff 4 was “an appropriate degree of confusion in light of the descriptive purity of” its chosen mark).

5 If Plaintiff is not using “green” with reference to the type of construction and repair it does, 6 it appears that the mark instead relates to the surname of one of Plaintiff’s owners. See 7 https://www.greenbuildersllc.com/about (stating, “Hi, We Are The Greens” and noting that the 8 business was founded by Dan Green and Carl Luedke) (last visited Oct. 8, 2025). Again, surnames 9 used as marks are not protectable without secondary meaning. Lanham Act § 2(e), 15 U.S.C. § 10 1052(e); Avery, 189 F.3d at 877. 11 Because Plaintiff has not adequately alleged that its mark is protectable under federal law, 12 it is “not entitled to a default judgment, and dismissal for failure to state a claim is proper.” Moore, 13 384 F.3d at 1090; see also Douglas v. Wal-Mart Stores, Inc., 208 F. App'x 943, 946 (Fed. Cir. 14 2006) (“with respect to unfair competition and trademark infringement, [a plaintiff] must establish,

15 inter alia, that he owns a legally protectable mark”; a merely descriptive mark “cannot possibly 16 enjoy legal protection without secondary meaning”). 17 C. The Court Declines to Exercise Supplemental Jurisdiction Over Plaintiff’s State Law Claims 18 This leaves the Plaintiff’s claims for service mark infringement under Washington state 19 law, trademark dilution under Washington state law; infringement of service mark and unfair 20 competition under common law; violation of the Washington State Consumer Protection Act, 21 Wash. Rev. Code § 19.77.160, and unjust enrichment. Dkt. No. 1 at 5–9. Although the Court has 22 supplemental jurisdiction over these claims, its “decision whether to exercise that jurisdiction after 23 dismissing every claim over which it had original jurisdiction is purely discretionary.” Carlsbad 24 1 Tech., Inc. v. HIF Bio, Inc., 556 U.S. 635, 639 (2009); 28 U.S.C. § 1367(c)(3). In declining 2 jurisdiction under section 1367(c)(3), the Court “must first identify the dismissal that triggers the 3 exercise of discretion”—here, dismissal of Plaintiff’s Lanham Act claims—“and then explain how 4 declining jurisdiction serves the objectives of economy, convenience and fairness to the parties,

5 and comity.” Trs. of Const. Indus. & Laborers Health & Welfare Tr. v. Desert Valley Landscape 6 & Maint., Inc., 333 F.3d 923, 925 (9th Cir. 2003). 7 Plaintiff’s pendent claims involve “[n]eedless decisions of state law” that the Court will 8 avoid “both as a matter of comity and to promote justice between the parties, by procuring for 9 them a surer-footed reading of applicable law” in state court. United Mine Workers v. Gibbs, 383 10 U.S. 715, 726 (1966); see also Desert Valley, 333 F.3d at 926 (Section 1367(c)(3) enables a district 11 court “to avoid determining an issue of state law when the federal claim, on which its jurisdiction 12 rests, proves to be unfounded”). As the Supreme Court has observed, “in the usual case in which 13 federal-law claims are eliminated before trial, the balance of the factors to be considered under the 14 pendent jurisdiction doctrine—judicial economy, convenience, fairness, and comity—will point

15 toward declining to exercise jurisdiction over the remaining state-law claims.” Carnegie-Mellon 16 Univ. v. Cohill, 484 U.S. 343, 350 n.7 (1988); accord Acri v. Varian Assocs., Inc., 114 F.3d 999, 17 1001 (9th. Cir. 1997). That is the case here. See, e.g., City of Colton v. Am. Promotional Events, 18 Inc.-W., 614 F.3d 998, 1008 (9th Cir. 2010) (district court did not abuse its discretion by declining 19 to exercise supplemental jurisdiction over pendent state claims); Bryant v. Adventist Health 20 Sys./W., 289 F.3d 1162, 1169 (9th Cir. 2002) (same); Serafin v. Realmark Holdings, LLC, No. 23- 21 CV-03275-PCP, 2025 WL 2491001, at *4 (N.D. Cal. Aug. 28, 2025). 22 III. CONCLUSION 23 For the reasons set forth above, the Court DENIES Plaintiff’s motion for default judgment

24 and DISMISSES its complaint without prejudice. While it does not appear clear at this time that 1 Plaintiff can establish secondary meaning, and “[f]utility alone can justify the denial of . . . leave 2 to amend,” Nunes v. Ashcroft, 375 F.3d 805, 808 (9th Cir. 2004), denial of leave to amend on this 3 ground is “rare,” and courts generally defer consideration of the merits of a proposed amended 4 pleading until after the amended pleading is filed, Clarke v. Upton, 703 F. Supp. 2d 1037, 1043

5 (E.D. Cal. 2010). Accordingly, the Court grants Plaintiff leave to amend. Should Plaintiff wish to 6 amend its complaint, it may do so within 21 days of the date of this Order. If Plaintiff amends the 7 complaint, it may not move for default judgment on the amended complaint unless and until 8 Defendant fails to respond to a properly served amended complaint, and Plaintiff thereafter 9 complies with the procedure required under the applicable rules. Fed. R. Civ. P. 55(a)–(b); LCR 10 55(a)–(b). Of course, Plaintiff is also free to file its complaint in state court. 11 Dated this 8th day of October, 2025. 12 A 13 Lauren King United States District Judge 14 15 16 17 18 19 20 21 22 23