Public Impact, LLC v. Boston Consulting Group, Inc.

169 F. Supp. 3d 278, 2016 U.S. Dist. LEXIS 31552, 2016 WL 1048884
CourtDistrict Court, D. Massachusetts
DecidedMarch 11, 2016
DocketCivil No. 15-13361-FDS
StatusPublished
Cited by12 cases

This text of 169 F. Supp. 3d 278 (Public Impact, LLC v. Boston Consulting Group, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Massachusetts primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Public Impact, LLC v. Boston Consulting Group, Inc., 169 F. Supp. 3d 278, 2016 U.S. Dist. LEXIS 31552, 2016 WL 1048884 (D. Mass. 2016).

Opinion

MEMORANDUM AND ORDER ON PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

SAYLOR, United States District Judge

This is an action for trademark infringe^ ment of the mark “PUBLIC IMPACT.” Plaintiff Public Impact, LLC is an education policy and management consulting firm based in North Carolina. Plaintiff is the owner of the federally registered trademark PUBLIC IMPACT. Defendant Boston Consulting Group, Inc., is a global management consulting firm based in Massachusetts. The Centre for Public Impact (“CPI”) is a Swiss not-for-profit foundation created by BCG in June 2014. Public Impact has moved for a preliminary injunction against BCG’s use of the PUBLIC IMPACT mark in connection with CPI.

For the reasons described below, plaintiffs motion will be granted in part and denied in part.

I. Factual Background

A. Public Impact

Public Impact, LLC is an education policy and management consulting firm based in Carrboro, North Carolina. (Hassel Decl. ¶¶ 3, 7). According to Public Impact, its [284]*284employees are researchers, policy experts, and consultants who work to improve learning outcomes for K-12 students in the United States. (Hassel Decl. ¶¶ 12,13). Public Impact’s clients include private foundations, government agencies, school districts, charter systems, nonprofit organizations, and education leaders nationwide. (Hassel Decl. ¶¶ 7, 14-15).

Public Impact is the owner of a federally registered mark, PUBLIC IMPACT, U.S. Reg. No. 2805013 (the “mark”), which it uses in connection with its consulting services in the field of education. (Hassel Decl. ¶ 8, Ex. A). Public Impact registered the PUBLIC IMPACT mark in 2004. In 2009, the United States Patent and Trademark Office issued a notice confirming that the mark is incontestable. (Hassel Decl. ¶ 10, Ex. C).

Although it is a small company, Public Impact contends that it is well-known in the education field. Co-founder Bryan Has-sel has served on the President’s Commission on Excellence in Special Education. (Hassel Decl. ¶ 20). In addition, the Department of Education chose Public Impact to lead its initiative assisting states winning “Race to the Top” grants for school turnaround efforts and to author a report on the national vision for the future of charter schools. (Hassel Decl. ¶¶ 21, 24). Public Impact has also received unsolicited press coverage at least 39 times in the last four years. (Hassel Decl. ¶ 25, Ex. F).

Public Impact contends that it has used the PUBLIC IMPACT mark in performing all of those projects. It also contends that it has sought to enhance the public profile of its mark through a “thought leadership” strategy, which is a business development model built around consultants who “create informative websites, host persuasive seminars, book speaking engagements and get published as a columnist and eventually as author of a book.” Henry Devries, How Consultants Can Market Like a Thought Leader, Forbes, available at http://www.forbes.com/ sites/henrydevries/2013/10/25/how-consultants-can-market-like-a-thought-leader/. In carrying out its strategy, Public Impact has sponsored conferences and published reports and its representatives have spoken at public forums.

Public Impact also uses the mark on three websites (Publiclmpact.com, Oppor-tunityCulture.org, and SchoolTurna-rounds.org) and in marketing its services on social media websites such as Facebook (facebook.com/publicimpact) and Twitter (twitter.com/publicimpact). (Hassel Decl. ¶¶28, 29, Ex. G). Finally, Public Impact contends that it has used the mark in connection with hundreds of thousands of dollars spent marketing its services. (Hassel Decl. ¶ 16).

B. Boston Consulting Group

Boston Consulting Group, Inc., is a global management-consulting firm based in Boston, Massachusetts, with 82 offices in 46 countries. (Pitman Decl. ¶¶ 3-4). BCG works with clients from the private, public, and not-for-profit sectors. (Pitman Decl. ¶ 4).

BCG maintains an “Education” group focused on “tackling the key drivers of improvement in education.” (DeAntonio Decl. Ex. E). The group “covers all major educational topics and works with every type of educational organization.” (DeAntonio Decl. Ex. E). BCG’s Education group clients include school districts, charter systems, and government agencies. (DeAntonio Decl. Ex. F).

C. The Centre for Public Impact: A BCG Foundation

The Centre for Public Impact is a Swiss not-for-profit foundation created by BCG [285]*285in June 2014. Its stated mission is to improve the efficiency and effectiveness of governments’ delivery of public services to their citizens. In addition to the field of education, CPI’s work addresses government provision of other public services, such as electricity, healthcare, transportation, housing, and waste and water-supply management. (Pitman Decl. ¶¶ 5, 9-10).

BCG owns several trademark registrations for the mark THE CENTRE FOR PUBLIC IMPACT: A BCG FOUNDATION (the “CPI mark”), including registrations in the United Kingdom, Australia, and Switzerland. (Pitman Decl. ¶ 7). It has another application for the mark pending in Canada. (Id.). BCG has not sought trademark registration for the CPI mark in the United States. CPI uses its mark for “organizing, arranging, and conducting seminars, tutorials, lectures, exhibitions, and conferences including concerning issues in the fields of governance, bureaucratic administration, general welfare, and societal advancement.” (Id.).

CPI maintains a website (centreforpubli-cimpact.org) on which it advertises CPI events. It also advertises through word of mouth and news coverage. (Pitman Decl. ¶¶ 8,9). CPI also maintains a Twitter account under the username “@4Public Impact,” and uses the hashtag “#publieim-pact.” (Hassel Decl. Ex. V). CPI uses Twitter to promote articles and events, and has posted tweets on education policy. (Hassel Decl. Ex. Q, V).

II. Procedural History

On June 9, 2015, Public Impact filed a motion for injunctive relief in federal court in North Carolina. Public Impact, LLC v. Boston Consulting Group, Inc., 117 F.Supp.3d 732 (M.D.N.C.2015). On August 4, 2015, that case was dismissed for lack of personal jurisdiction and Public Impact’s motion for injunctive relief was denied as moot. On September 15, 2015, Public Impact refiled its lawsuit and motion in this Court.

III. Analysis

To obtain a preliminary injunction in a trademark case, a party must show (1) a substantial likelihood of success on the merits, (2) a significant risk of irreparable harm, (3) that the balance of equities is in its favor, and (4) that the granting of the injunction will not adversely affect the public interest. See TEC Eng’g Corp. v. Budget Molders Supply, Inc., 82 F.3d 542, 544 (1st Cir.1996).

A. Likelihood of Success on the Merits

A plaintiff seeking to establish claims for infringement and unfair competition under the Lanham Act must show “both that its mark merits protection and that the allegedly infringing use is likely to result in consumer confusion.” Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112

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169 F. Supp. 3d 278, 2016 U.S. Dist. LEXIS 31552, 2016 WL 1048884, Counsel Stack Legal Research, https://law.counselstack.com/opinion/public-impact-llc-v-boston-consulting-group-inc-mad-2016.