Nationwide Van Lines, Inc. v. Transworld Movers, Inc.

• Court: Court of Appeals for the Eleventh Circuit
• Decided: April 28, 2021
• Docket: 20-13101
• Status: Unpublished

Opinion

USCA11 Case: 20-13101 Date Filed: 04/28/2021 Page: 1 of 9

[DO NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT ________________________

No. 20-13101 Non-Argument Calendar ________________________

D.C. Docket No. 0:18-cv-62833-MGC

NATIONWIDE VAN LINES, INC.,

Plaintiff-Appellant,

versus

TRANSWORLD MOVERS INC., OHAD GUZI, NATIONAL INVESTMENT GROUP, INC.,

Defendants-Appellees.

________________________

Appeal from the United States District Court for the Southern District of Florida ________________________

(April 28, 2021) USCA11 Case: 20-13101 Date Filed: 04/28/2021 Page: 2 of 9

Before WILLIAM PRYOR, Chief Judge, NEWSOM and ANDERSON, Circuit Judges.

PER CURIAM:

Nationwide Van Lines, Inc., appeals the dismissal of its second amended

complaint against Transworld Movers, Inc, its owner, Ohad Guzi, and their

successor-in-interest, National Investment Group, Inc. (collectively “Transworld”).

The district court ruled that the second amended complaint failed to state a

plausible claim for relief. See Fed. R. Civ. P. 12(b)(6). We affirm.

Nationwide Van Lines and Transworld compete to provide moving services

in Florida and, as their names suggest, in interstate commerce. About two years

after Nationwide Van Lines commenced operations, Transworld registered the

domain name “nationwide-movers.com.” Later, it used that website and service

mark to promote its services.

Nationwide Van Lines filed a complaint, which it amended, against

Transworld. Nationwide Van Lines complained of common law mark

infringement, trademark infringement, unfair competition, false designation of

origin, and cybersquatting. Transworld moved to dismiss for failure to state a

claim. See id.

The district court dismissed the second amended complaint based on the

failure of Nationwide Van Lines to plausibly state that it had a protectable interest

in its mark. The district court ruled that the company failed to plead facts that 2 USCA11 Case: 20-13101 Date Filed: 04/28/2021 Page: 3 of 9

established it had ownership rights to its mark. Alternatively, the district court

ruled that Nationwide Van Lines failed to allege sufficient facts to establish, for all

its claims, that its trade name was distinctive, and also for its claim of

cybersquatting, that Transworld acted in bad faith.

We review de novo the dismissal of a complaint for failure to state a claim.

See Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1339

(11th Cir. 2017). A “complaint must contain sufficient factual matter, accepted as

true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556

U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570

(2007)). The complaint “does not need detailed factual allegations,” but it must

contain “more than labels and conclusions, and a formulaic recitation of the

elements of a cause of action will not do.” Twombly, 550 U.S. at 555.

Nationwide Van Lines argues that its “allegations [had only to] provide for

relief on any possible theory,” but that is the wrong pleading standard. The

decisions of our predecessor circuit that Nationwide Van Lines cites allowed a

court to dismiss a complaint for failure to state a claim only when “it appears to a

certainty that the plaintiff cannot possibly be entitled to relief under any set of facts

which could be proved in support of its allegations.” Robertson v. Johnston, 376

F.2d 43, 45 (5th Cir. 1967); see Madison v. Purdy, 410 F.2d 99, 100 (5th Cir.

1969); Int’l Erectors, Inc. v. Wilhoit Steel Erectors & Rental Serv., 400 F.2d 465,

3 USCA11 Case: 20-13101 Date Filed: 04/28/2021 Page: 4 of 9

471 (5th Cir. 1968). But the Supreme Court in Twombly rejected “[t]he ‘no set of

facts’ language” “as an incomplete, negative gloss on an accepted pleading

standard . . . .” 550 U.S. at 562–63. After Twombly, a complaint must contain

“enough facts” to “nudge[] [its] claims across the line from conceivable to

plausible.” Id. at 570.

The district court did not err in determining that Nationwide Van Lines

lacked ownership rights in its mark. The company alleged that it was “the first user

of the subject mark[] nationwide,” but a certified copy of a federal trademark

registration established that another company used a strikingly similar mark

decades earlier. “Rights in a trademark are determined by the date of the mark’s

first use in commerce.” Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419 (2015);

see 15 U.S.C. § 1052(e), (f). Although Nationwide Van Lines alleged that it used

its mark “as early as 2001,” the trademark registration established that a company

named National Van Lines registered its mark in 1952. And, as “[t]he owner of a

registered mark, [National Van Lines] . . . enjoys the unlimited right to use the

mark nationwide, and federal registration affords [it as] the registrant priority over

all future users of confusingly similar marks,” like Nationwide Van Lines. See

Tana v. Dantanna’s, 611 F.3d 767, 780 (11th Cir. 2010). So, in the words of the

district court, “it cannot be case that [Nationwide Van Lines] ever had first use or

priority of the mark.”

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Nationwide Van Lines argues that it was improper for the district court to

consider a trademark registration that Transworld attached to its motion to dismiss.

But Federal Rule of Evidence 201(b)(2) permits a district court to take judicial

notice of “a fact that is not subject to reasonable dispute because it . . . can be

accurately and readily determined from sources whose accuracy cannot reasonably

be questioned.” Fed. R. Evid. 201(b)(2). Taking judicial notice of a public record

from the registry of the United States Patent and Trademark Office “did not

transform [the] motion to dismiss into a motion for summary judgment.” See

Garfield v. NDC Health Corp., 466 F.3d 1255, 1260 n.2 (11th Cir. 2006)

(affirming judicial notice of records of the Securities and Exchange Commission);

Bryant v. Avado Brands, Inc., 187 F.3d 1271, 1277–78 (11th Cir. 1999) (same);

Oxford Asset Mgmt., Ltd. v. Jaharis, 297 F.3d 1182, 1188 (11th Cir. 2002). The

district court was entitled to take judicial notice of the federal trademark

registration in resolving who owned the mark.

The district court also did not err when it ruled, in the alternative, that

Nationwide Van Lines failed to allege facts that established it had a protectable

interest in its mark. To avoid dismissal of the five claims it made against

Transworld, Nationwide Van Lines had to prove that its mark was distinctive. See

Fla. Int’l Univ. Bd. v. Fla. Nat’l Univ., 830 F.3d 1242, 1255 (11th Cir. 2016)

(trademark infringement); Tartell v. S. Fla. Sinus & Allergy Ctr., Inc., 790 F.3d

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1253, 1257 (11th Cir. 2015) (unfair competition, false designation of origin, and

cybersquatting). “An identifying mark is distinctive and capable of being protected

if it either (1) is inherently distinctive or (2) has acquired distinctiveness through

secondary meaning.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769

(1992). There are four categories of distinctiveness: arbitrary or fanciful, which are

inherently distinctive; suggestive, which also is distinctive; descriptive, which must

attain a secondary meaning to become a protectable mark; and generic, which is

ordinarily incapable of protection. Investacorp, Inc. v. Arabian Inv. Banking Corp.,

931 F.2d 1519, 1522–23 (11th Cir. 1991). Because “Nationwide” describes the

geographic scope of services, see id., the parties agree that the mark is descriptive

and is protected only if it attained a secondary meaning before its use by

Transworld.

Nationwide Van Lines argues that its mark acquired distinctiveness by virtue

of its registration. Although federal registration of a mark creates a presumption

that the mark is distinctive, 15 U.S.C. § 1052(f), that presumption attaches “only as

of the date of registration.” 2 J. McCarthy, Trademarks and Unfair Competition

§ 15:34 (5th ed. Mar. 2021 update). So “[i]f the alleged infringement began before

the mark was registered, then a . . . registration does not create a presumption of

secondary meaning dating back to before the mark was registered.” Id.

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The allegations made by Nationwide Van Lines in its complaint and the

contents of its attachments, which we accept as true, see Fourth Est., 856 F.3d at

1339, fail to create a plausible inference that its service mark acquired

distinctiveness before use by Transworld. Nationwide Van Lines alleged that it

began using its mark “as early as June 27, 2001,” and it attached to its complaint a

certificate of registration that issued on August 14, 2018, for its mark. During that

interim, according to the company, its competitor used an allegedly infringing

mark. Nationwide Van Lines alleged that Transworld began “using the name and

mark NATIONWIDE MOVERS . . . approximately nine (9) years after Plaintiff

commenced use[]” of its mark, or around 2010. But because Nationwide Van Lines

registered its mark about eight years after Transworld used its allegedly infringing

mark, the federal registration did not create a presumption of secondary meaning.

Nationwide Van Lines also alleged no facts that would establish a plausible

inference that its mark acquired a secondary meaning before its use by Transworld.

Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007). “A name

has acquired secondary meaning when the primary significance of the term in the

minds of the consuming public is not the product but the producer.” Id. (internal

quotation marks omitted and alteration adopted). There are four factors to consider

in determining whether a mark has acquired a secondary meaning: the length and

manner of the mark’s use; the nature and extent of advertising and promotion; the

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efforts of the business to create in the public’s mind an association between the

mark and the business; and “the extent to which the public actually identifies the

name” with the business. Investacorp, 931 F.3d at 1525. The last factor is the

“most telling.” Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 (11th Cir. 1984).

Most of the allegations in the complaint that relate to secondary meaning are

conclusory. See Iqbal, 556 U.S. at 680–81. For example, the complaint alleged,

without elaboration, that Nationwide Van Lines “dedicated significant resources to

develop its brand and the NATIONWIDE Mark” and “spent significant sums to

advertise and promote moving services under the NATIONWIDE Mark” and that

its mark “became extremely well-known among consumers throughout the United

States” and “acquired distinctiveness and secondary meaning since prior to the

commencement of any of the Defendants’ use of any of the subject marks.” The

complaint also alleged that Nationwide Van Lines “displays the NATIONWIDE

Mark in advertising and promotional materials for [its] services and on moving

trucks, moving equipment, employee uniforms, boxes, and on other promotional

items, [it] used and transported in interstate commerce,” but it alleged no facts

about the extent of its advertising and promotion or about the extent to which the

public identifies the mark with Nationwide Van Lines.

The district court did not err. The existence of a protectable interest in a

trade name is an element of every claim made against Transworld. Nationwide Van

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Lines was not the first user of nor did it have priority in its mark. And because the

company failed to plausibly state that its mark was distinctive, as required to state a

claim of cybersquatting, we need not address whether it also failed to allege facts

that would permit an inference that Transworld acted in bad faith.

We AFFIRM the dismissal of the second amended complaint of Nationwide

Van Lines.