Kight v. Crunchy Tobacco, Inc.

CourtDistrict Court, District of Columbia
DecidedMarch 25, 2025
DocketCivil Action No. 2021-3189
StatusPublished

This text of Kight v. Crunchy Tobacco, Inc. (Kight v. Crunchy Tobacco, Inc.) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Kight v. Crunchy Tobacco, Inc., (D.D.C. 2025).

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

NATHAN M. KIGHT, et al.,

Plaintiffs,

v. No. 21-cv-3189 (CKK) (MAU) CRUNCHY TOBACCO, INC.,

Defendant.

REPORT AND RECOMMENDATION

Plaintiffs Nathan M. Kight and Funnels, LLC (together, “Plaintiffs”) bring this suit for

trademark infringement against Defendant Crunchy Tobacco, Inc. (“Defendant”). Before the

Court is Plaintiffs’ Motion for Summary Judgment (“Motion”). ECF No. 68. 1 The District Court

referred Plaintiffs’ Motion to this Court for a Report and Recommendation. ECF No. 73. Because

Plaintiffs have failed to meet their burden to show that there are no genuine issues of material fact

and that they are entitled to judgment as a matter of law, this Court recommends that Plaintiffs’

Motion be DENIED.

FACTUAL BACKGROUND

Plaintiffs Nathan M. Kight and Funnels, LLC sell whole-leaf tobacco products called

“Original Funnels” and “Funnels Blackout.” ECF No. 1 ¶¶ 11–12. 2 Kight is the owner of Funnels

LLC, a Maryland limited liability company. Pls.’ Statement of Undisputed Material Facts

1 Relevant docket entries are: (1) Plaintiffs’ Motion for Summary Judgment (ECF No. 68 and attachments); (2) Defendant’s Opposition (ECF No. 72 and attachments); and (3) Plaintiffs’ Reply (ECF No. 74 and attachments). Citations are to the page numbers in the ECF headers. 2 Both Parties fail to include certain foundational facts in their briefs and Local Rule 7(h) statements. To provide background and context, the Court has relied on portions of the record the Parties do not cite. 1 Including Evid. in Supp. of Pls.’ Mot. for Summ. J. Pursuant to Local Civil Rule 7(h), ECF No.

68-1 at 1. Plaintiffs sell their products to consumers through independent distributors throughout

the District of Columbia, Maryland, and Virginia. ECF No. 1 ¶ 14. Plaintiffs presently own a

trademark registered with the U.S. Patent and Trademark Office (“USPTO”) for the word mark

“FUNNELS.” ECF Nos. 68-1 ¶ 14; 59 at 5. 3

Defendant is a Virginia corporation that sells tobacco products in the District of Columbia.

ECF Nos. 1 ¶ 5; 59 at 3. Defendant sells its products under marks including

“CRUNCHYFUNNEL,” “CRUNCHY FUNNEL” and “DARK CRUNCHY FUNNEL.” ECF

Nos. 68 at 9; 59 ¶ 7. Defendant filed its applications for these marks in December 2020 and

February 2021. Crunchy Tobacco’s Objs. & Resps. to Pl.’s Statement of Undisputed Material

Facts 10–11, ECF No. 72-6. The USPTO granted the trademarks in March 2022 and September

2023, respectively. Id. The Parties dispute when Defendant began selling its products under these

marks. See id. at 10.

This dispute is about Plaintiffs’ word mark “FUNNELS.” In July 2011, Kight filed a

trademark application for the word mark “FUNNELS,” identifying the following goods: “Chewing

tobacco; Hand-rolling tobacco; Hookah tobacco; Molasses tobacco; Roll your own tobacco;

Rolling tobacco; Smoking tobacco; Tobacco.” ECF No. 68-1 ¶ 3. Funnels, LLC joined Kight’s

trademark application in November 2011. Id. ¶ 4. In May 2012, the USPTO issued to Plaintiffs a

registration for the “FUNNELS” word mark. See id.; ECF No. 59 ¶ 48. In October 2018, however,

Plaintiffs’ registration number was administratively cancelled because Plaintiffs failed to file an

acceptable declaration required for trademark registration maintenance. ECF Nos. 68-1 ¶ 7; 68-3

3 Defendant filed its Second Amended Answer and Counterclaim twice, at ECF Nos. 59 and 60. Because these documents are identical, the Court cites only to ECF No. 59. 2 at 2. In January 2019, Kight filed another trademark application for “FUNNELS.” ECF No. 68-

1 ¶ 8. In December 2019, after an initial delay and amendment to the application, the USPTO

issued Plaintiffs a registration for the “FUNNELS” word mark under Registration Number

5947822. Id. ¶¶ 12–14; ECF No. 64-3 (USPTO Certificate of Registration for “FUNNELS”).

PROCEDURAL HISTORY

On December 6, 2021, Plaintiffs filed this Complaint, asserting claims for: (1) trademark

infringement in violation of 15 U.S.C. § 1114(1); (2) false designation of origin and unfair

competition in violation of 15 U.S.C. § 1125(A); (3) trademark dilution in violation of 15 U.S.C.

§ 1225(C); and (4) common law trademark infringement and unfair competition. ECF No. 1 at 8–

14.

On February 9, 2022, Defendant filed its Answer, denying all claims. ECF No. 8. The

Parties began discovery in May 2022. ECF No. 14. On October 18, 2022, Defendant filed an

Amended Answer and Counterclaim. ECF No. 25. After a contentious discovery period,

Defendant filed a Second Amended Answer and Counterclaim against Plaintiffs, which is

Defendant’s operative pleading. ECF No. 59. Defendant asserted claims for: (1) federal trademark

infringement under the Lanham Act; (2) federal false advertising and unfair competition under the

Lanham Act; (3) “state and DC law false advertising and unfair competition”; and (4) federal

copyright infringement. Id. at 25–30.

The District Court held a post-discovery status conference on April 15, 2024, during which

both Parties stated their intention to file motions for summary judgment. Minute Order (Apr. 15,

2024). Plaintiffs also stated that they would file a motion to remand the case to the USPTO. Id.

Despite this, Plaintiffs did not file a motion for remand, and Defendant did not file a cross-motion

3 for summary judgment. The only dispositive motion before this Court is Plaintiffs’ Motion for

Summary Judgment. ECF No. 68.

STANDARD OF REVIEW

The Court should 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). A fact is “material” if it “might affect the outcome of the suit under the governing

law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute is “genuine” if there

is enough evidence for a reasonable jury to return a verdict for the nonmovant. Id. Importantly, a

“party asserting that a fact cannot be or is genuinely disputed must support the assertion by citing

to particular parts of materials in the record,” including depositions, documents, affidavits, or other

materials. Fed. R. Civ. P. 56(c)(1)(A). The movant “always bears the initial responsibility of

informing the district court of the basis for its motion, and identifying those portions of’” the record

“which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v.

Catrett, 477 U.S. 317, 323 (1986). Summary judgment should only be granted “where the

evidence is such that it would require a directed verdict for the moving party.” Liberty Lobby, 477

U.S. at 251 (internal quotation marks and citation omitted).

ANALYSIS

Although both Parties in this case are represented by counsel, neither Party makes a

coherent presentation in support or defense of Plaintiffs’ Motion. The briefs are so woefully

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