Rohn v. Viacom International, Inc.

231 F. Supp. 3d 253, 2017 WL 1081291, 2017 U.S. Dist. LEXIS 113445
CourtDistrict Court, W.D. Michigan
DecidedJanuary 27, 2017
DocketCase No. 1:14-cv-83
StatusPublished

This text of 231 F. Supp. 3d 253 (Rohn v. Viacom International, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Michigan primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Rohn v. Viacom International, Inc., 231 F. Supp. 3d 253, 2017 WL 1081291, 2017 U.S. Dist. LEXIS 113445 (W.D. Mich. 2017).

Opinion

OPINION AND ORDER

JANET T. NEFF, United States District Judge

Pending before the Court are the cross-motions of Plaintiffs Debbie and Dean Rohn and Defendant Viacom International, Inc. for summary judgment on the issue of liability in this trademark case. For the reasons discussed herein, the Court denies Plaintiffs’ Motion for Summary Judgment (Dkt 205) and grants Defendant’s Motion for Summary Judgment (Dkt 197).

I. BACKGROUND

A. Factual Background

1. Plaintiffs’ Trademarks

In 1990, Plaintiffs incorporated Guppie Kids, Inc., a Florida corporation, in connection with their Guppie Kid apparel concept (JSF1 ¶ 1). Guppie Kids, Inc. was administratively dissolved on October 11, 1991 for failing to file an annual report (id).

On February 4, 1992, Plaintiffs obtained design plus words U.S. Trademark Reg. No. 1,674,309 (“the ’309 Mark”) for the following mark:

[258]*258[[Image here]]

(JSF ¶ 2). The ’309 Mark was registered m connection with the following goods: “Baby bunting, bloomers, boxer briefs, boxer shorts, coats, dresses, hats, jackets, leggings, mittens, pants, shirts, shoes, shorts, skirts, slippers, slips, socks, suits, sweatpants, sweatshirts, sweaters, ties, and underwear” (id. ¶ 3). The ’309 Mark was cancelled on August 10, 1998 because Plaintiffs were unable to pursue the manufacture of GUPPIE-branded toys (id. ¶ 4).

On September 11, 2007, Plaintiffs obtained design plus words U.S. Trademark Reg. No. Reg. No. 3,290,738 (“the ’738 Mark”) for the following mark:

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(JSF ¶ 5). The 738 Mark was originally registered in connection with the following goods: “Baby bunting; Bloomers; Boxer briefs; Boxer shorts; Coats; Dresses; Hats; Jackets; Leggings; Mittens; Pants; Shirts; Shoes; Shorts; Skirts; Slippers; Slips; Socks; Suits; Sweat pants; Sweat shirts; Sweaters; Ties; Underwear” (id. ¶ 6). In or around 2009, Plaintiffs deleted shoes and slippers from the ’738 Mark because of a lawsuit settlement (id. ¶ 7).

On November 17, 2009, Plaintiffs obtained word trademark Reg. No. 3,711,588 (“the ’588 Mark”) for GUPPIE for use in connection with “Hats, jackets, boxer briefs and/or boxer shorts, pants, shirts, shorts, t-shirts, ties, sweatshirts, hooded shirts, gloves, and infant’s underwear” (JSF ¶ 8). Plaintiffs had previously filed for the GUPPIE word mark on April 24, 2008 but abandoned that mark for unknown reasons as of July 8, 2009 (id.).

In the early 1990s, Plaintiffs advertised their GUPPIE brand in a children’s magazine (JSF ¶ 9). Plaintiffs entered into a License Agreement dated January 17, 1996 with a company called CHAB, Inc. (“the CHAB Agreement”) (id. ¶ 10). CHAB was owned by Terri Raffaele (id. ¶ 11). Pursuant to the CHAB Agreement, CHAB obtained the exclusive right to use the ’309 Mark in the United States in connection with t-shirts,, shorts, sweatshirts, and sundresses (id. ¶ 12). In exchange, CHAB agreed to pay an escalating minimum annual royalty to Plaintiffs in addition to 5 percent of all GUPPIE sales (id. ¶ 13). The CHAB Agreement had a 10-year term with minimum annual royalties of $1,000 for years 1-3; $5,000 for years 4 and 5; and $10,000 for years 6-10 (id. ¶ 14). Pursuant to the CHAB Agreement, Raffaele intended to attend trade shows and perform various other tasks to grow a brand (id. ¶ 15). CHAB never made [259]*259any sales of GUPPIE products, and, in or about 1998, approximately two years after entering the agreement, Raffaele terminated the license (id. ¶ 16).

After termination of the CHAJB Agreement, Plaintiffs took over management of brand marketing and ran the business from their home (JSF ¶ 17). Plaintiffs met with two or three marketing companies in the 2000s to explore further marketing their Guppie Kid products (id. ¶ 18). Specifically, in 2006, Plaintiffs met with representatives from marketing agencies Knorr Marketing and Greenlight Marketing (id.). Plaintiffs did not reach an agreement with these companies and did not retain any documents from Knorr Marketing’s pitch other than a non-disclosure agreement (id. ¶ 19). In 2006 or 2007, Plaintiffs met with a volunteer business counselor from SCORE Association, a small business mentorship program, to generate marketing ideas and a business plan (id. ¶ 20). Plaintiffs did not keep a copy of the business plan that the volunteer SCORE counselor developed (id. If 21). Plaintiffs never retained or paid a marketing company to market or promote the GUPPIE marks (id. ¶ 22).

Each piece of Guppie Kid clothing came with a card with a pledge reflecting the “yuppie guppie” concept: “we pledge to work very hard to do our best because some day we would like to be a success. But most important to be a Guppie, we pledge to be kind, loving, and help others. That would make us truly happy” (JSF ¶ 23). Plaintiffs also developed “licenses” to be given away with the purchase of GUP-PIE-branded clothing, which were “little cards” intended to be “another thing for the kids to be reminded to work hard and to be kind” (id. ¶ 24). Plaintiffs also gave away bookmarks and magnets with each purchase to remind kids and parents of the brand, as well as a behavior chart that can be accessed on the Guppie Kid website (id. ¶ 25). Plaintiffs also worked with Debbie Rohn’s sister-in-law to develop a Guppie theme song, a copy of which would be given to purchasers of GUPPIE-branded clothes (id. ¶ 26). When a few child suicides occurred in Cadillac, Michigan, Plaintiffs used the Guppie Kid brand to promote an anti-bullying message (id. ¶ 27).

From approximately 2005 to the present, Plaintiffs expended approximately $50,000 in connection with the ’309 Mark, the ’738 Mark, and the ’588 Mark (collectively, “the GUPPIE Marks”), including expenses for computer equipment, travel expenses and product purchases from their manufacturer (JSF ¶ 28). Dean Rohn estimates that Plaintiffs spent an additional $50,000 in connection with the GUPPIE Marks in the period from 1990 to 2005 (id. ¶ 29). Of the approximately $100,000 spent by Plaintiffs in connection with the GUP-PIE Marks between 1990 and 2015, approximately $25,000 were legal fees (id. ¶ 30).

Plaintiffs’ GUPPIE apparel has been available for sale on Plaintiffs’ website— www.guppiekids.com — since 2005 (JSF ¶ 31). Plaintiffs do not have documentation demonstrating any sales of Guppie Kid products outside of Michigan through their website prior to 2012 (id. ¶ 32). Plaintiffs made three sales from the www. guppiekids.com website in 2012 and two sales in 2013 (id. ¶ 33). Plaintiffs have no documentation to establish any website sales since 2014 and are unaware of any such sales (id.). Dean Rohn estimates that from 1990 to 2005, Plaintiffs sold between $5,000 and $10,000 of GUPPIE branded product (id. ¶ 34). Plaintiffs’ Guppie Kid brand has produced $2,000 in income from 2005 to 2015 (id. ¶ 35). Plaintiffs have produced all existing documentation regarding sales of Guppie Kid clothing (id. ¶ 36). Documentation of Guppie Kid sales prior to 2005 does not exist because Plaintiffs’ [260]*260computer containing those records crashed, and there is no way to recreate the lost records (id. ¶ 37).

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Bluebook (online)
231 F. Supp. 3d 253, 2017 WL 1081291, 2017 U.S. Dist. LEXIS 113445, Counsel Stack Legal Research, https://law.counselstack.com/opinion/rohn-v-viacom-international-inc-miwd-2017.