Field of Screams, LLC v. Olney Boys and Girls Community Sports Association, Inc., No. 8:2010cv00327 - Document 79 (D. Md. 2011)
Court Description: MEMORANDUM OPINION. Signed by Chief Judge Deborah K. Chasanow on 3/14/11. (sat, Chambers)
Download PDF
<![CDATA[
Field of Screams, LLC v. Olney Boys and Girls Community Sports Association, Inc. Doc. 79 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND : FIELD OF SCREAMS, LLC : v. : Civil Action No. DKC 10-0327 : OLNEY BOYS AND GIRLS COMMUNITY SPORTS ASSOCIATION : MEMORANDUM OPINION Presently pending in this trademark case is a motion for a preliminary injunction (ECF No. 46) filed by Plaintiff, as well as two related motions in limine (ECF Nos. 60, 65) filed by Plaintiff.1 on The issues are fully briefed and a hearing was held September 2-3, 2010. For the reasons that follow, Plaintiff s motion for a preliminary injunction will be denied and both motions in limine will be denied. I. Background A. Factual Background This is a case about two haunted attractions sharing a common name. One is in Pennsylvania. The other is in Maryland. 1 A motion to dismiss (ECF No. 50) filed by Defendant was also pending. This memorandum opinion addresses only the three motions related to Plaintiff s request for a preliminary injunction; a separate opinion resolves Defendant s motion to dismiss. Dockets.Justia.com Both purportedly involve activities such as haunted hayrides and haunted houses. 1. (ECF No. 44, Am. Compl. ¶ 70). The Pennsylvania Field of Screams Plaintiff Field of Screams, LLC operates a Halloween-themed haunted attraction Field of Screams. 2 based in Mountville, Pennsylvania called The Pennsylvania Field of Screams started in 1993 as a small hayride, run as a side business by brothers Gene and Jim Schopf. It has been called Field of Screams3 since that time, and the brothers have used the same font and design (with splash ) to display the Field of Screams name from the beginning.4 14, 2006 The Schopfs formed Field of Screams, LLC on August by filing a Certificate of Organization (Def. s Ex. 2).5 Pennsylvania Secretary of State. with the Plaintiff remains a family-run business. 2 The Pennsylvania Field of Screams is a member of the Haunted House Association ( HHA ) and the International Association of Haunted Attractions ( IAHA ). (Pl. s Exs. 2, 3). 3 The name was suggested by a third individual. 4 Plaintiff concedes, however, that it does not hold the federal trademark registration for the name Field of Screams. 5 The Schopfs also recently executed a Bill of Sale and LLC Operating Agreement transferring all assets related to the Pennsylvania Field of Screams to the LLC. (ECF No. 72 ¶ 5; ECF No. 72-1, at 4-40). Those documents have effective dates of August 14, 2006. (Id.). 2 The attraction is open to the public from mid-September through the first week in November, though preparations take place throughout the year. the attraction has since From its beginnings as a hayride, grown to incorporate activities spread over a 35-acre farm: haunted house), Frightmare Asylum (a haunted hayride through a cornfield. a variety of the Den of Darkness (a haunted house),6 and a The attraction also hosts an entertainment area with two large stages, a novelty shop, ticket booths, five food trailers, a small game arcade, and four stages.7 smaller Three full-time employees, part-time assistants, and roughly 400 volunteers (who assist in scaring and other activities) staff the operation. The Schopfs have invested substantial sums in developing the attraction. Over the course of its existence, Screams has changed its target market. Plaintiff s Field of The enterprise initially targeted 12- to 18-year-old children for a $5 show. As the attraction target market has has grown more sophisticated, expanded; Gene Schopf however, identified the the attraction s 6 Plaintiff s two haunted houses host skits and shows, wherein actors and automatically-triggered machines would scare participants. The attractions incorporate computer-controlled scares, pyrotechnics, and more. 7 Various performances and competitions take place throughout the entertainment area, such as battles of the bands, rap battles, and other activities. 3 current target market as 12- to 60-year-old patrons for what is now a $25 attraction. Gene Schopf also characterized the venue s target area as the states of Pennsylvania, New Jersey, Maryland, and Delaware, or a two hour radius from Mountville.8 Jim Schopf testified that the Schopfs began targeting the Baltimore and Philadelphia markets in 1999. The Pennsylvania Field of Screams has spent more than $1.1 million advertising in various ways. (Pl. s Ex. 26). Beginning in 1999, the Schopf brothers began preparing press kits that they distributed newspapers. to radio stations, (See Pl. s Ex. 3). television stations, and They continue to prepare a press kit each year and have sent press kits to recipients in Maryland since at least 2001. Plaintiff has advertised on radio stations since 1998, primarily in Pennsylvania. (See, e.g., Pl. s Exs. 27, 31). It has hosted a media day to garner media coverage opening since the billboards and floats. of the attraction. It uses The venue also advertises on haunt- related websites. In addition, Plaintiff maintains its own website for the attraction. (Pl. s Ex. 18). Among other things on the website, 8 Patrick Konopelski, President of the IAHA and expert in the haunted attraction industry, concluded that a commercial haunted attraction like Plaintiff s Field of Screams could attract a core customer base willing to travel 2-3 hours. 4 patrons can purchase tickets and obtain directions from a number of locations. Since 1993, Plaintiff has distributed brochures containing information such as directions and event also bear the Field of Screams logo. 2). descriptions, which (See, e.g., Pl. s Ex. These brochures are distributed as far as the Baltimore region, with 40,000 brochures purchased for distribution in that region in 1999, 60,000 brochures in 2002, and 245,000 brochures in 2009. (Pl. s Exs. 21, 23). of of Field Screams Christine Eshelman, an employee responsible for brochure distribution, explained that she now targets areas within a two-hour radius of Lancaster, Pennsylvania. The distribution routes for the brochures have not encompassed, at any time, the District of Columbia or Olney, Maryland. (Pl. s Ex. 22). The brochures contain coupons that at least since 1999 have borne codes reflecting where the coupons were originally distributed (e.g., L for Lancaster, Pennsylvania). These codes allow the Pennsylvania Field of Screams to track where redeemed coupons originated; in 1999, for instance, 172 coupons were redeemed from brochures originally distributed in the Baltimore region (out of 4,745 total brochure coupons redeemed). (Pl. s Ex. 24). In 2002, 176 Baltimore-area 5 coupons were redeemed (out redeemed).9 of 2,969 brochure total brochure (Id.). Plaintiff s business evolved. advertising has apparently paid off than 66,000 and the The attraction had an estimated 2,000 patrons in its first year, but drew 20,000 patrons by 1999. more coupons customers attended. (Pl. s Ex. In 2008, 24). Jim Schopf testified to seeing cars in the Pennsylvania Field of Screams parking lot from Pennsylvania, Maryland, New Jersey, and New York. 16.6% of An analysis of online ticket sales also revealed Plaintiff s customers who purchased tickets online between 2005 and 2009 have zip codes located within a thirtymile radius of Olney, Maryland. (Pl. s Ex. 37 ¶ 11). Plaintiff s Field of Screams has also earned some attention from mainstream and haunt-related media. Among other publications, Plaintiff s (See Pl. s Exs. 6-18). Field of Screams was covered in Haunted Attractions magazine, Fright Times magazine, Haunt World magazine, and Scared Stiff magazine. The Pennsylvania Field of Screams has been featured on the Travel Channel. (Pl. s Ex 18). The Howard Stern Show. The attraction has been mentioned on Various celebrities have also visited, 9 Thus, if one extrapolates from the coupon figures, roughly 6% of Plaintiff s customers came from the Baltimore region in 2002. 6 including Gunnar Hanson of The Texas Chainsaw Massacre, Stacy Kiebler, Booker T, and (this year) Eddie Munster. Hauntworld Magazine also rated the Pennsylvania Field of Screams as a top scream park/haunted hayride, and The Baltimore Sun featured the attraction in articles in 1999, 2000, and 2001. 14-16). (Pl. s Ex. Based on this exposure, Plaintiff s expert10 on the haunted attraction industry concluded that Plaintiff s Field of Screams is nationally recognized. (Defendant s expert disagreed, concluding that Plaintiff s national media exposure only went to those within the industry, not to consumers.) 2. The Maryland Field of Screams Defendant Olney Boys and Girls Community Sports Association is a non-profit organization that provides athletic programs for children. Two full-time employees volunteers staff the organization. and more than 1,000 Started in 1969 with 123 children, the organization grew to 3,000 participants in 2000. After the organization opened a 118-acre park in 2002, it has since grown to 7,000 participants and 10 athletic programs. Defendant s work has earned it the Maryland Nonprofits Seal of Excellence and other awards. 10 The expert, Konopelski, had some prior experience with Plaintiff. Konopelski owns his own haunted attraction that was originally named Field of Screams; he changed the name when the Schopfs asserted that they had used the name first. 7 Shortly after opening its new park in 2002, Defendant decided to develop a haunted attraction to generate revenue to support operations. In celebration of the organization s new Field of Dreams (i.e., the park) (Def. s Ex. 6), Defendant dubbed its haunted attraction the Field of Screams. Defendant was not aware of the Pennsylvania Field of Screams when the name was chosen. Defendant s Field of Screams started with a featured event: a haunted walk through the forest, wherein costumed volunteers spooked visitors. In 2006, Defendant expanded, adding a haunted hayride, a corn maze, and a two-story haunted house. also began animatronics, employing makeup, professionals and to performances. do Defendant pyrotechnics, Defendant substantial sums in improving the attraction. invested The attraction is open during the month of October, but preparations take place year-round.11 The event now generates about 14.5% of Defendant s total budget each year. Like Plaintiff, Defendant has an extensive marketing plan. Defendant markets on-site with signs and banners at its facility to its target audience: middle school 11 and high school age Defendant s Executive Director Elizabeth Deal conceded that Plaintiff s and Defendant s attractions offer a similar experience. 8 facilities that use the park. It uses other advertising throughout Montgomery County and pays for advertising in the Washington Post, the Rockville Gazette, and the Olney Gazette. Defendant distributes one-page flyers at high school football games in Montgomery County and Howard County, as well as football games at George Mason University and the University of Maryland. Defendant also does quite a bit advertising on two radio stations in Washington, D.C. established a website in 2006.12 of radio Defendant All of these advertisements prominently say that the attraction is in Olney, Maryland. Defendant does not sell tickets to its Field of Screams online; instead, patrons may buy tickets in only one of two ways. Members of the Association advance tickets through sponsors. may purchase discounted The rest of the public must buy tickets at the gate. Defendant collects certain information from patrons at its Field of Screams. In addition to signing a waiver warning patrons of potential dangers in the attraction, customers are asked to provide their zip code, their name, their address, and explain where they heard about the attraction. 12 (Def. s Ex. 7). The front page of Defendant s Field of Screams website does not identify any association with the Olney Boys and Girls Community Sports Association, but it does identify the location of the attraction as Olney. (Pl. s Ex. 20). 9 Using a sample of these waiver forms, Deal determined where customers to the Maryland Field of Screams were coming from. In 2007, virtually nobody came to the Maryland Field of Screams from Pennsylvania. (Def. s Ex. 8). The same was true in 2008 and 2009, with only ten patrons coming from Pennsylvania in those years. from (Def. s Exs. 9, 10). Montgomery, Howard, and Instead, most patrons come Prince George s Counties. Defendant s attraction is estimated to draw a few patrons from areas such as Frederick County, Anne Arundel County, and points in Virginia and the District of Columbia, in addition to some customers from the Baltimore area (425 in 2008 and 260 in 2009). (Id.). Professor Thomas Maronick concluded that Defendant occupies an entirely different market than Plaintiff. concluded geographic that the areas: two attractions Defendant s Professor Maronick draw attraction from different draws from a geographic area south of Interstate 70 in Maryland (with a focus on middle and high school students), while Plaintiff draws from the York-Lancaster, Pennsylvania area (with a focus on middle school through adult consumers). there was a huge area Professor Maronick suggested between Defendant s market and Plaintiff s market that would render it highly improbable that a customer in Lancaster would attend the event in Olney. 10 He observed that younger patrons would not be able to travel very far, while older patrons would be unwilling to drive two or more hours to attend an attraction for 45 minutes the amount of time he estimated patrons spent at haunted attractions. In change addition, the name Deal of explained its event that would be forcing Defendant to devastating. She estimated that at least $50,000 would be wasted if Defendant were forced to adopt a new mark. 3. Other Fields of Screams13 In addition to the two Fields of Screams attractions in this case, Defendant has introduced evidence of several other Fields of Screams. The Chairman of Defendant s Board of Directors, Daniel Dionosio, said he was aware of 26 haunted events called Field of Screams. 14 Dionosio explained that there were pages and pages and pages of references to the name in a Google search; a customer from Maryland confirmed that there were a lot of Field of Screams on a Google search, while Defendant s expert likewise agreed that there were 440,000 13 Plaintiff has moved to exclude references to other entities or registrations using the name Field of Screams. As will be explained below, such references are relevant and useful evidence in a case such as the present one. 14 Plaintiff s expert was aware of two other attractions with the name. 11 Google hits from the name. Neither Plaintiff nor Defendant holds mark a federally registered under the name Field Screams, although another party in Kentucky does.15 of Field of Screams is also the name of a manual for setting up a haunted attraction. 4. (Pl. s Ex. 5). Alleged Confusion Plaintiff Screams mark alleges has led that to Defendant s instances of use of the confusion. Field Once, of for instance, an actor at the Maryland Field of Screams mistakenly called Plaintiff s Field of Screams when he attempted to call in sick. Gene Schopf also reported that there were ticket mix- ups, wherein patrons purchased tickets from the wrong venue. For example, a mother from Olney, Maryland mistakenly emailed the Pennsylvania birthday party. Field of Screams (Pl. s Ex. 1). and attempted to book a Susan Jackson-Lee testified that she purchased tickets from Plaintiff s Field of Screams website thinking they were for Defendant s Field of Screams, as she thought it was the parent company. Sandra Schopf reported that she received several phone calls at the Pennsylvania Field of Screams meant for the Maryland Field of Screams. 15 Witnesses Even if not otherwise admissible, courts are free to take judicial notice of federal trademark registrations. In re Chippendales USA, Inc., 622 F.3d 1346, 1356 (Fed.Cir. 2010). 12 for Defendant stated that they were not aware of any patrons who mistakenly attended the Maryland attraction rather than the Pennsylvania attraction. These instances of confusion led Plaintiff to send a cease and desist letter to Defendant on January 29, 2007. 38). two (Pl. s Ex. That letter reflects that Plaintiff was aware of at least instances of confusion as of 2007. (Id.). Dionosio testified that Defendant responded to the letter with a request for more information, but did not receive any response from Plaintiff. When Defendant s Plaintiff s counsel stating counsel that sent it another considered letter the to matter dropped, Defendant received a response that the matter was not dropped. Defendant continued using the Field of Screams name. It did not hear anything else from Plaintiff until the filing of this lawsuit. B. Procedural Background Plaintiff originally filed a verified complaint on October 15, 2009, in the United States District Court for the Eastern District of Pennsylvania. six counts, infringement including and (ECF No. 1). federal dilution, unjust and That complaint alleged Maryland enrichment, competition under Maryland and Pennsylvania law. 62). trademark and unfair (Id. ¶¶ 22- Each of these claims stemmed from Defendant s allegedly 13 improper use of Plaintiff s senior mark. The complaint sought a judgment in the amount of profits gained by Defendant through its use of Plaintiff s trademark and an injunction barring Defendant from further using of the Field of Screams mark. (Id. ¶ 63). Plaintiff also sought a preliminary injunction. (ECF No. 3). Defendant filed a motion to dismiss just over a month later. (ECF No. 19), which the court granted in part on January 12, 2010. to this court. (ECF No. 29). The case was then transferred (ECF No. 31). Plaintiff filed an amended complaint alleging the same six counts on March 15, 2010 (ECF No. 44),16 along with an amended motion for a preliminary injunction (ECF No. 46). Defendant moved to dismiss the amended complaint on March 29, 2010. No. 50). (ECF After a requested delay from counsel, the court held a motions hearing on both Plaintiff s motion for a preliminary injunction and Defendant s motion to dismiss on September 2-3, 2010. Importantly, both parties agreed at that hearing that any preliminary injunction would only apply to the 2011 Halloween 16 Plaintiff filed another amended complaint on March 29, 2010. (ECF No. 49). That complaint appears to be identical to the one filed on March 15, which was apparently refiled simply to include a redlined version. 14 season not the 2010 season.17 parties then followed. II. Post-hearing briefing from both (ECF Nos. 71 & 76). Analysis A. Standard of Review Plaintiff has moved for a preliminary injunction pursuant to Federal Rule of Civil Procedure 65 and the Lanham Act. No. 46). (ECF A preliminary injunction is an extraordinary remedy. Real Truth About Obama, Inc. v. Fed. Election Comm n, 575 F.3d 342, 345 (4th Cir. 2009), vacated on other grounds by 130 S.Ct. 2371 (2010) and reissued in part, 607 F.3d 355 (4th Cir. 2010). To obtain a preliminary injunction, a plaintiff must establish four elements: [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction 17 is in the public This concession could be read as an acknowledgment that Defendant would suffer substantial harm from the entry of a preliminary injunction as to the then-current season. The cost of a name change in any season, however, could be substantial, and Deal s comments that a name change could lead to a loss of customers is supported by logic as well. Plaintiff attempts to dismiss these harms as self-inflicted (ECF No. 47, at 17), but the Fourth Circuit has specifically cautioned that it is error for a district court to conclude that any harm that would be suffered by a defendant was self-inflicted and thus entitled to lesser weight in the balancing-of-the-harms portion of the preliminary injunction calculus. Scotts Co. v. United Indus. Corp., 315 F.3d 264, 285 (4th Cir. 2002). 15 interest. Council, Id. at 364 (quoting Winter v. Natural Res. Def. Inc., 129 S.Ct. 365, requirements must be satisfied. entitled to a preliminary 374 Id.18 (2008)). All four Plaintiff suggests it is injunction because Defendant is Plaintiff s likelihood of infringing and diluting its mark.19 B. Likelihood of Success The court must first consider success on its infringement claim. injunction, Plaintiff bears the To obtain a preliminary heavy burden clear showing that the claim will succeed. Obama, 575 F.3d at 349. of making a Real Truth About As explained in the prior decision on Defendant s motion to dismiss, to prevail under Section 43(a) of the Lanham Act, a plaintiff must first and most fundamentally prove that it has a valid and protectable mark. U.S. Search, LLC v. U.S. Search.com Inc., 300 F.3d 517, 523 (4th Cir. 2002) 18 Defendant cites several cases applying the balanceof-hardship standard, which formerly applied in the Fourth Circuit. See generally Blackwelder Furniture Co. of Statesville The Fourth v. Seilig Mfg. Co., 550 F.2d 189 (4th Cir. 1977). Circuit has more recently repudiated that standard, as it stands in fatal tension with the Supreme Court s 2008 decision in Winter. Real Truth About Obama, 575 F.3d at 347 ( Because of its differences with the Winter test, the Blackwelder balanceof-hardship test may no longer be applied in granting or denying preliminary injunctions in the Fourth Circuit. ). 19 The court has dismissed Plaintiff s Lanham Act dilution claim. Therefore, this decision will discuss only the trademark infringement claim. 16 (quoting MicroStrategy, Inc. v. Motorola, Inc., 245 F.3d 335, 341 (4th Cir. 2001)). The plaintiff must then show that the defendant s use of an identical or similar mark is likely to cause confusion among consumers. Id. (citing Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 124 (4th Cir. 1990)). A review of the evidence reveals that Plaintiff has not, at this preliminary stage in the litigation, made a clear showing that it is likely to succeed on the merits at trial, even though we do not decide the merits nor intend to foreclose any outcome on the merits. Real Truth About Obama, 575 F.3d at 349. Plaintiff must first establish that it owns a valid and protectable mark. protection is The court has already explained how trademark established in its decision on the motion to dismiss, but a few basic principles are worth repeating here. As the extends court to noted a distinctiveness. before, proposed [w]hether mark is trademark tied to protection the mark s Retail Servs., Inc. v. Freebies Publ g, 364 F.3d 535, 538 (4th Cir. 2004); Int l Bancorp v. LLC Societe des Bains de Mer et du Cercle des Destrangers a Monaco, 329 F.3d 359, 363 (4th Cir. 2003) (same). Courts measure distinctiveness along a spectrum that encompasses four broad categories: (1) generic marks, (2) descriptive marks, (3) suggestive marks, and (4) arbitrary or fanciful marks. 17 See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984); see also George & Co., LLC v. Imagination Entm t Ltd., 575 F.3d 383, 393-94 (4th Cir. 2009). Generic words, which are the common name of a product or the genus of which the particular product is a species, can never be valid marks under any circumstances. OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 340 (4th Cir. 2009) (quotations and citations omitted). arbitrary or fanciful At the other end of the spectrum are marks, which are considered inherently distinctive and receive the greatest protection. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). Fanciful marks . . . typically involve made-up words created for the sole purpose of serving as a trademark. Arbitrary marks . . . typically involve common words that have no connection with the actual product, as they do not suggest or describe any quality, ingredient, or characteristic, viewed as arbitrarily assigned. so the mark can be George & Co., 575 F.3d at 394 (citations and quotations omitted). Somewhere between arbitrary/fanciful marks and generic ones lie two marks. additional Descriptive characteristic, size, Retail 364 Servs., categories: marks or F.3d suggestive merely and descriptive describe a intended purpose of the product. at (quotations and citations 539 18 function, use, omitted). In contrast, [a] mark is suggestive if it connotes, without describing, some quality, ingredient, or characteristic of the product. Retail Servs., 364 F.3d at 539 (quotations, citations, and brackets omitted; emphasis added). Suggestive marks are treated as inherently distinctive, while descriptive ones are not. are OBX-Stock, 558 F.3d at 394. protected which is become only if shorthand they for sufficiently association have saying acquired that distinctive to a Descriptive marks secondary meaning, descriptive establish mark a has mental in buyers minds between the alleged mark and a single source of the product. Retail Servs., 364 F.3d at 539. The name Field of Screams would appear to be suggestive. Although the name may evoke a sense of what the business relates to, the name does not actually describe a particular characteristic, function, or purpose of the product (i.e., a haunted attraction) bearing the mark. Thus, the name alone might lead one to label the mark as suggestive (and therefore inherently distinctive). If the mark was merely descriptive, Plaintiff would need to prove secondary meaning, which it has failed to do. secondary meaning entails vigorous evidentiary Perini, 915 F.2d at 125 (quotations Circuit has provided six factors 19 to requirements. omitted). consider Proof of in The Fourth determining whether a mark has secondary meaning: (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark s use. Id. at 125. None of these factors is determinative and not all six need to be favorable to Plaintiff. B&J Enters., Ltd. v. Giordano, 329 F.App x. 411, 417 (4th Cir. 2009) (citing Perini, 915 F.2d at 125). Plaintiff must show secondary meaning (1) in the defendant s trade area and (2) prior to the time when the defendant entered the market. Perini, 915 F.2d at 125-26. Here, Plaintiff has not established that it will likely be successful in proving that its mark possesses secondary meaning in Defendant s trade area in 2002.20 The evidence produced at the hearing reflects that Defendant s trade area is primarily Montgomery County, with a substantial focus on the region around Olney itself. Defendant s attendance surveys reflect that Defendant draws the substantial portions of its customers from that region and Defendant focuses its advertising efforts there. Any remaining efforts were primarily focused on points south, 20 Plaintiff mistakenly looks to its own trade area, stating that [t]he public within Plaintiff s geographic and marketing area associate the trademark with Plaintiff s haunted attraction and entertainment venue. (ECF No. 47, at 12-13). 20 near Washington, D.C. and Prince George s County.21 This southern Maryland market is also entirely consistent with the 45-minute drive time market size posited by Professor Maronick for haunted attractions of Defendant s type.22 Therefore, given that Plaintiff Defendant s attraction started in 2002, would have to establish at trial that its mark had secondary meaning in the southern Maryland market before 2002. It Although is unlikely Plaintiff that has Plaintiff provided some will be able evidence of to do so. advertising expenditures,23 it has not provided any evidence that, as of 2002, the spending was directed at the southern Maryland market or that such spending was effective there. B&J Enters., 329 21 A much smaller number of customers were also drawn from points north, such as some parts of Howard County and the Baltimore area. 22 The court may, of course, take judicial notice of geographic realties. [G]eography has long been peculiarly susceptible to judicial notice. United States v. Bello, 194 st F.3d 18, 23 (1 Cir. 1999) (citations and brackets omitted); see also, e.g., United States v. Stewart, No. 3:07cr51, 2007 WL 2437514, at *1 n.2 (E.D.Va. Aug. 22, 2007) (taking judicial notice of facts gleaned from internet mapping tools ); Jarman v. United States, 219 F.Supp. 108, 112 (D.Md. 1963) (taking judicial notice of area encompassed by 75-mile radius from city). 23 Much of the advertising data provided is after 2002. Data relevant to secondary meaning coming after the appearance of the purportedly junior user is irrelevant. Commerce Nat l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 439 (3d Cir. 2000). 21 F.App x at 419 ( Absent a showing that such expenditures were effective in causing associate the mark established. the with relevant itself, (quotations group of secondary omitted)); consumers meaning accord 2 cannot J. to be Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 15:51 (4th ed. 2010) ( [T]he mere expenditure of money is not, in itself, determinative of the actual result in buyers minds. From experience, we know that some forms of advertising are like water off the consumer's back, and have no effect. ). Indeed, one of Plaintiff s primary forms of advertising brochures were not distributed anywhere near Defendant s market during the relevant period. (Pl. s Ex. 22). Plaintiff s attraction patrons 2002 in from received the And the record suggests that only closest Plaintiff did market, Baltimore. a negligible region to number Defendant of where (See Pl. s Ex. 24 (listing only 176 coupons received from the Baltimore region)). Admittedly, the Pennsylvania Field of Screams has enjoyed some sporadic Howard Stern Plaintiff s national Show and attraction Baltimore Sun. media the was attention Travel via mentions Channel. occasionally featured on The Similarly, in The Nevertheless, these intermittent appearances on the national and Maryland media scene are simply not enough to 22 establish a secondary meaning in the relevant Maryland market.24 Moreover, the Travel Channel s feature regarding Halloween- related travel destinations does not demonstrate that potential haunt patrons in southern Maryland would think that the Maryland Field of Screams in Olney was Pennsylvania Field of Screams. in some way related to the Cf. Brennan s, Inc. v. Brennan s Rest., LLC, 360 F.3d 125, 132 (2d Cir. 2004) ( [V]irtually all the articles and reviews discuss Brennan s New Orleans in the context of the City of New Orleans or a trip to New Orleans. This evidence in no way demonstrates that potential diners in New York City who find the word Brennan s on a restaurant awning will have any reason to think the restaurant is connected with Brennan s New Orleans, or even will have heard of Brennan s New Orleans. ). As for Plaintiff s advertising in industry publications and other participation in the haunt industry, such specialized customers advertising in any southern Maryland. is general not directed sense, toward particularly prospective customers in U.S. Conference on Catholic Bishops v. Media Research Ctr., 432 F.Supp.2d 616, 624 (E.D.Va. 2006) (finding 24 Also, much of the press coverage apparently occurred because the Schopfs began distributing press kits in 1999. It is questionable then whether that coverage could be termed unsolicited. 23 attendance at industry conventions and publication in trade journals did not support finding of secondary meaning).25 Plaintiff has not produced a consumer survey. of such evidence is telling. Although a survey is not The absence George & Co., 575 F.3d at 396. required, [s]urvey evidence is generally thought to be the most direct and persuasive way of establishing secondary meaning. U.S. Search, 300 F.3d at 526 n.13 (citing Zatarins, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983). attempts to plagiarize the mark.26 There is also no evidence of Similarly, although Plaintiff enjoyed strong sales in the past,27 it has not brought forth 25 There is also no suggestion that Plaintiff s website was directed toward the southern Maryland market in 2002 and no information was provided about the origins of the website s users in 2002. 26 Moreover, [e]vidence of misdirected telephone calls to [Plaintiff] that were intended for [Defendant] does not constitute evidence of secondary meaning. If anything, it shows only that the public associates the name [ Field of Screams ] with [Defendant], rather than [Plaintiff]. U.S. Search, 300 F.3d at 526 n.11. 27 Notably, Plaintiff submitted gross sales figures. The Fourth Circuit has distinguished between the usefulness of (1) simple gross figures and (2) a comparison between those gross revenues and the relevant market s total sales volume. See B&J Enters., 329 F.App x at 420. The latter is more useful because it allows the court to assess market penetration. See 2 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 15:49 (4th ed. 2010) ( Raw sales figures need to be put into context to have any meaning. That is, if a company says that its sales of goods or services under the mark are $x, that 24 evidence showing that Defendant s area. the success stemmed from consumers in The website zip code analysis does not apply to the relevant period (i.e., pre-2002) and anecdotal evidence of license plates in a parking lot does not accurately reflect where customers are coming from. As for continuous use, there has been substantial dispute over whether Plaintiff has continuously used the mark. For instance, Defendant contends that Plaintiff had no rights to the name Field of Screams prior to Plaintiff s legal formation in 2006. (ECF No. 76, at 7). Plaintiff produced evidence after the hearing that the Schopf brothers transferred the Field of Screams mark to Plaintiff via a Bill of Sale. 18). (ECF No. 71, at In light of that evidence, it is at least reasonable to believe that a jury would find that the use of the mark was continuous. See Nat l Bd. for Certification in Occupational Therapy, Inc. v. Am. Occupational Therapy Ass n, 24 F.Supp.2d 494, 500 (D.Md. 1998) ( A sale of a business and of its good will carries with it the sale of the trade-mark used in connection with the business, although not expressly mentioned in the instrument of sale. (quotations omitted)); cf. Chien number cannot be said to be impressive or persuasive evidence of secondary meaning without knowing how $x compares with the norms of that industry. ). 25 Ming Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458, 1460 (Fed.Cir. 1988) ( [T]itle incorporation. ). of continuous market. to the trademark passed upon Even so, Plaintiff has not provided evidence and exclusive use of the mark in Defendant s Moreover, even if the court considered Plaintiff s use of the mark since 1993, length of time alone is insufficient to establish secondary meaning. U.S. Search, 300 F.3d at 526 n.12; see also 815 Tonawanda Street Corp. v. Fay s Drug Co., 842 F.2d 643, 648 (2d Cir. 1988), cited by B&J Enters., 329 F.App x 411 (concluding mark had no secondary meaning even where there was long and exclusive use of mark). In sum, the record does not disclose that a substantial number of Maryland present market or would Plaintiff s attraction. prospective customers associate Field in of the relevant Screams George & Co., 575 F.3d at 396. with A mark that is not inherently distinctive and lacks secondary meaning, is not protectable. Thus, Plaintiff s case at this stage purported suggestive nature of its mark. depends on the Even if Plaintiff has shown that its mark is inherently distinctive, however, it still needs to show likelihood establish a trademark violation. 26 of confusion in order to In that regard, a cold analysis of the words composing the mark does not resolve the likelihood of confusion issue: To determine if a likelihood of confusion exists, we look to (1) the strength or distinctiveness of the plaintiff s mark as actually used in the marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of the goods or services that the marks identify; (4) the similarity of the facilities used by the markholders; (5) the similarity of advertising used by the markholders; (6) the defendant s intent; and (7) actual confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984). Not all of these factors are of equal importance, nor are they always relevant in any given case. Anheuser-Busch, 962 F.2d at 320. However, evidence of actual confusion is often paramount in the likelihood-of-confusion analysis, Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 804 (4th Cir.2001). CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 267-68 (4th Cir. 2006). The fact that a mark is suggestive does not is establish that it conceptually strong when there is significant third-party use of the mark, particularly in the same field. CareFirst, 434 F.3d at 269-70. Plaintiff actually moved to exclude evidence of third-party use of the Field of Screams name as irrelevant. (ECF Nos. 50, 60). The United States Court of Appeals for the Fourth Circuit, however, as stressed the significance of third-party use in this context. In CareFirst, for example, the court determined that a mark was not conceptually strong where the defendant produced extensive 27 evidence of print-outs third-party from plaintiff. businesses including in the dozens same of web industry page as the CareFirst, 434 F.3d at 270 (citing U.S. Search, 300 F.3d at 525). party use, use, Here, there was evidence of significant third- including 26 other haunted trademark registration by another party. attractions and a If the [Field of Screams] mark were truly a distinctive term, it is unlikely that so many other businesses in the [haunt] industry would independently think of using the same mark or similar variants of it. Nor, Id.28 despite Plaintiff s efforts, has confusion to the extent necessary to succeed. it shown actual The evidence of anyone contacting one rather than the other site arises from use of the internet, where the users apparently were not careful in noticing the geographic location of the advertised entity. A patron who wanted to attend Defendant s Olney Field of Screams 28 Given the above conclusions, Plaintiff s motions to exclude (ECF No.s 60, 65) will be denied. Defendant did not, however, properly authenticate and admit an item marked as Defendant s Exhibit 12. Therefore, the court chooses not rely on the contents of that exhibit. Defendant also objects to the consideration of several other items subjected as declarations attached to Plaintiff s post-hearing memorandum. Having reviewed the proffered exhibits and the objections thereto, the court will admit the declarations and the related exhibits, even though that evidence does not affect the court s ultimate conclusion. 28 did not realize that she had accessed Plaintiff s website, and an actor from Defendant s location attempted to call in sick using Plaintiff s contact information. Neither type of evidence shows that people are confused into thinking the two locations are the same; only that they were confused about what location they were contacting. There was no evidence that anyone ended up at Defendant s Olney location thinking it was Plaintiff s. Given the findings of lack of conceptual strength and actual confusion, the fact that some of the other factors may be satisfied, such as the similarity of the marks or the general services provided, would not demonstrate likelihood of success. Plaintiff has not shown that it is likely to be successful on its claim for trademark violation. C. Other Preliminary Injunction Requirements Because Plaintiff has failed to establish the first of the four preliminary injunction requirements, there is no need to discuss the remaining requirements. The court s decision not to chart its analysis on the remaining factors in full does not indicate that Plaintiff satisfied them. To the contrary, the court notes substantial problems for Plaintiff on each of the remaining factors, but no purpose would be served in addressing each in further detail. 29 III. Conclusion For the foregoing reasons, Plaintiff s motion for a preliminary injunction will be denied and both motions in limine will be denied. A separate order will follow. /s/ DEBORAH K. CHASANOW United States District Judge 30
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
