Mayson-Dixon Strategic Consulting, LLC v. Mason-Dixon Polling & Strategic Consulting, Inc.

324 F. Supp. 3d 569
CourtDistrict Court, D. Maryland
DecidedAugust 28, 2018
DocketCivil No. JKB-18-875
StatusPublished
Cited by4 cases

This text of 324 F. Supp. 3d 569 (Mayson-Dixon Strategic Consulting, LLC v. Mason-Dixon Polling & Strategic Consulting, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Maryland primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mayson-Dixon Strategic Consulting, LLC v. Mason-Dixon Polling & Strategic Consulting, Inc., 324 F. Supp. 3d 569 (D. Md. 2018).

Opinion

James K. Bredar, Chief Judge

Plaintiff/counter-defendant Mayson-Dixon Strategic Consulting, LLC ("Mayson") brings this lawsuit against defendant/counter-claimant Mason-Dixon Polling & Strategic Consulting, Inc. ("Mason-Dixon") for alleged trademark infringement and unfair competition. Mason-Dixon counter-claims for alleged trademark infringement, unfair competition, and cyberpiracy. Now pending is Mason-Dixon's motion for a preliminary injunction (ECF No. 12). A hearing was held on August 28, 2018. For the reasons below, Mason-Dixon's motion is granted.

BACKGROUND

This dispute concerns plaintiff Mayson's and defendant Mason-Dixon's confusingly similar putative service marks. Mayson, a political consulting limited liability company based in Maryland, uses "Mayson-Dixon Strategic Consulting, LLC" as its trade name and "MAYSON-DIXON" as its putative service mark. ECF No. 5, ¶ 1. Mayson was founded in 2015. Id. at ¶ 6. Mason-Dixon, a political polling and consulting company headquartered in Florida, uses "Mason-Dixon Polling & Strategic Consulting, Inc." as its trade name and owns the service mark "MASON-DIXON." ECF No. 12-2, Coker Decl. ¶ 3. Mason-Dixon was incorporated in 1985 in Maryland, and its most recent registration of the "MASON-DIXON" Mark was obtained in 2018. Id. at ¶¶ 2, 31. While the parties agree that their service marks are confusingly similar, they disagree as to which party has superior rights to use the mark. ECF No. 5, ¶ 52; ECF No. 12-1, p. 9.

I. History of Mason-Dixon Polling & Strategic Consulting, Inc. ("Mason-Dixon")

Mason-Dixon was incorporated in Maryland in 1985, ECF No. 12-2, Coker Decl. ¶ 3. The corporation has undergone a number of legal name changes, but has remained in continuous operation and has *573been owned and controlled by James Bradford Coker III ("Coker") since its incorporation. Id. Mason-Dixon offers public policy and political polling research and consulting services. Id. at ¶¶ 4-5. The polling services have been offered under the MASON-DIXON Mark since 1983, and the consulting services have been offered under the Mark since 1992. Id.

In 1992, Mason-Dixon's name changed from "Mason-Dixon Opinion Research, Inc." to "Political/Media Research, Inc." ("PMR"). Id. at ¶ 11. The company's registered trade name was "Mason-Dixon Political/Media Research," and it continued using the MASON-DIXON Mark. Id.

In 1993, Coker formed a spin-off company named "Mason-Dixon Campaign Polling & Strategy, LLC" to take over the political polling and consulting aspects of the original company. Id. at ¶ 12. During the time period in which the new company operated, PMR focused its operations on media polling. The new company was permitted to use the MASON-DIXON Mark. Id. It operated from 1993 through 1998, providing "polling, direct mail, television production, advertising buys, grassroots organizing, campaign management, and campaign consulting" under the MASON-DIXON Mark. Id. at ¶ 14. During Mason-Dixon Campaign Polling & Strategy, LLC's entire existence, Coker was its majority shareholder and controlling owner. ECF No. 18-1, Coker Decl. (Reply) ¶ 2. The company ceased operations in 1998 and formally dissolved in 2000. Id. at ¶¶ 2, 7.

After Mason-Dixon Campaign Polling & Strategy, LLC ceased operations, PMR continued to provide services to Maryland political campaigns using the MASON-DIXON Mark. Id. at ¶ 7. Its clients included Martin O'Malley's 1999 Baltimore Mayor campaign, Obie Patterson's 2006 Maryland House of Delegates campaign, and Marc Elrich's 2014 Montgomery County Council campaign. Id. PMR undisputedly used the MASON-DIXON Mark in connection with its polling services. It also used the Mark in connection with its consulting services. ECF No. 12-2, Coker Decl. ¶ 21. For example, the Mark was used in 2014 in connection with a public policy consulting project for the Chesapeake Bay Foundation and in 2017 in connection with developing press releases regarding the Maryland governor's race. Id. at ¶ 23.

In March 2018, PMR changed its name to its current name, "Mason-Dixon Polling & Strategic Consulting, Inc." ECF No. 5, ¶ 42. Mason-Dixon continues to use the MASON-DIXON Mark in connection with polling and consulting.

II. History of MASON-DIXON Mark

The MASON-DIXON Mark has been used continuously by Mason-Dixon since 1983 in connection with its polling and consulting work. Since 1992, the Mark has been publicized nationally in connection with Mason-Dixon's polling and consulting services. ECF No. 12-2, Coker Decl. ¶ 10. Mason-Dixon first filed to register the Mark on June 20, 2002. ECF No. 12-12. The registration was obtained on August 5, 2005 and remained effective through February 5, 2016. Id. The registration included Mason-Dixon's statement that the Mark had been used in connection with "conducting public opinion poll surveys for political purposes" and "political consultation services." Id. The U.S. Patent and Trademark Office (the "PTO") cancelled the registration effective February 5, 2016 because Mason-Dixon neglected to file its Application for Renewal and Declaration of Use. Despite the cancellation, Mason-Dixon continued to use the MASON-DIXON Mark.

On July 12, 2017, Mason-Dixon again applied to register the MASON-DIXON Mark. ECF No. 12-11. The registration was obtained on February 6, 2018 in connection with the services of "conducting *574public opinion polls for political purposes and political consultancy." Id. The registration contains Mason-Dixon's statement that the Mark has been used in connection with these services in interstate commerce since at least June 1, 1984. Id. This registration remains effective through the date of this Memorandum.

III. History of Mayson-Dixon Strategic Consulting, LLC ("Mayson")

Mayson was founded by Maryland residents Jayson Williams and Matthew Newcomer in September 2015.1 ECF No. 5, ¶ 7. It operates in the field of "strategic political consulting, including advertising and direct mail, business development, nonprofit development, marketing and communications, fundraising, and public affairs," and its operations exclusively take place in Maryland. Id. at ¶ 6. Mayson claims it owns common law rights in the mark "MAYSON-DIXON" for political consultancy services, alleging it was the first in time to use this mark in commerce to advertise these services. Id. at ¶ 59. According to Mayson, Mason-Dixon has not provided political consultancy services in at least 20 years. Mayson claims that Mason-Dixon "intentionally positioned itself for the instant conflict" by changing its corporate name and re-registering the MASON-DIXON Mark. ECF No. 15-1, p. 16. Mayson raises two central arguments to support its claim of superior rights to the mark: (1) Mason-Dixon's registration of the MASON-DIXON Mark is void because Mason-Dixon made fraudulent misstatements on its application, and (2) Mason-Dixon abandoned use of the MASON-DIXON Mark for political consulting. ECF No. 5; ECF No. 15-1.

IV. Procedural History

Mason-Dixon learned of Mayson's operations in June 2017. ECF No. 12-2, Coker Decl. ¶ 33.

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324 F. Supp. 3d 569, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mayson-dixon-strategic-consulting-llc-v-mason-dixon-polling-strategic-mdd-2018.