United States District Court, S.D. Texas, Houston Division
MEMORANDUM OPINION AND ORDER
H. Miller United States District Judge
before the court is a motion for preliminary injunction filed
by plaintiff Michael Jones. Dkt. 22. After considering the
motion, response, reply, record evidence, and applicable law,
the court is of the opinion that the motion should be DENIED
but that this case should be set for trial on an expedited
a trademark infringement and unfair competition case relating
to the term “Medical Exercise Specialist.” Dkt.
5. Plaintiff Michael Jones is the founder of American Academy
of Health, Fitness & Rehabilitation Professionals. Dkt. 22,
Ex. 1. Jones created a program to train and certify fitness
professionals who work with post-rehabilitation patients, and
he uses the term “Medical Exercise Specialist” in
connection with the certification, course, and exam.
Id. He has been using the term since 1994 and claims
that he has spent significant time and money advertising this
American Council on Exercise (“ACE”) is an
organization in the health and fitness industry that
“equips professionals with the tools they need to help
all segments of society experience the innumerable benefits
of leading an active lifestyle.” Dkt. 27. It claims to
have “rigorous certification and continuing education
standards for fitness professionals.” Id.
According to ACE, it is a nonprofit organization that
generated approximately $20 million in revenue in 2015. Dkt.
27 & Ex. 33 at 9.
late 1990s, Jones became an ACE Continuing Education Course
provider, which helped him market the Medical Exercise
Specialist course to ACE-certified personal trainers because
the course was listed in ACE's catalogues and on its
website. Dkt. 22, Ex. 1. However, in the early 2000s, Jones
contends that ACE advised him that he could no longer be a
continuing education provider because the Medical Exercise
Specialist course was a competitor to ACE's Advanced
Clinical Exercise Specialist program. Id.
eventually changed the name of its Advanced Clinical Exercise
Specialist program to the Advanced Health and Fitness
Specialist program. Dkt. 22, Ex. 4. In 2015, ACE again
changed the program name, this time launching the “ACE
Medical Exercise Specialist Certification.” Dkt. 22,
Ex. 5. ACE documents specifically call this a
“name-only change.” Dkt. 22, Ex. 5.
asserts that ACE cannot use the name “Medical Exercise
Specialist” because he (Jones) owns a common-law
trademark to the term. Dkt. 22. He initiated this lawsuit to
stop ACE from infringing on the mark. Id. Jones also
seeks lost profits and other damages for ACE's alleged
infringement. Id. ACE filed an answer in which it
asserts various defenses including that its use of the term
“Medical Exercise Specialist” is “fair
use.” Dkt. 18. In the motion at issue in this order,
Jones seeks a preliminary injunction prohibiting ACE from
using the term “Medical Exercise Specialist.”
Dkt. 22. Jones contends that he faces irreparable harm that
will destroy his business model if ACE continues using the
name. Id. ACE asserts that its use of the name is
fair use, that Jones has no rights to the name, and that an
injunction would inflict hundreds of thousands of dollars of
harm to ACE and run afoul of public policy. Dkt. 34.
decision to grant or deny a motion for preliminary injunction
lies within the sound discretion of the district court.
Miss. Power & Light Co. v. United Gas Pipe Line Co.,
760 F.2d 618, 621 (5th Cir. 1985). “A court should
issue a preliminary injunction if the movant shows ‘(1)
a substantial likelihood of success on the merits, (2) a
substantial threat of irreparable injury if the injunction is
not issued, (3) that the threatened injury if the injunction
is denied outweighs any harm that will result if the
injunction is granted, and (4) that the grant of an
injunction will not disserve the public interest.'”
Paulsson Geophysical Servs., Inc. v. Sigmar, 529
F.3d 303, 309 (5th Cir. 2008) (quoting Speaks v.
Kruse, 445 F.3d 396, 399-400 (5th Cir. 2006) (internal
quotations omitted)). “A preliminary injunction is an
‘extraordinary remedy' and should only be granted
if the plaintiffs have ‘clearly carried the burden of
persuasion on all four requirements.'” Planned
Parenthood of Hous. and Se. Tex. v. Sanchez, 403 F.3d
324, 329 (5th Cir. 2005) (quoting Karaha Bodas Co.,
L.L.C. v. Perusahaan Pertambangan Minyak Dan Gas Bumi
Negara, 335 F.3d 357, 363 (5th Cir. 2003) (internal
Federal Rule of Civil Procedure 65(a)(1), as interpreted by
the Fifth Circuit, the parties must “have ‘a fair
opportunity and meaningful hearing to present their differing
versions of . . . facts [that are in dispute] before a
preliminary injunction may be granted.'”
Anderson v. Jackson, 556 F.3d 351, 360 (5th Cir.
2009) (citing Fed.R.Civ.P. 65(a)(1) and quoting Kaepa,
Inc. v. Achilles Corp., 76 F.3d 624, 628 (5th Cir.
1996)). “If the party requesting the injunction cannot
show that factual disputes exist regarding the required
elements, and cannot introduce evidence sufficient to justify
granting the motion, a hearing on the requested injunctive
relief is unnecessary.” Id. A district court
thus may deny a motion for preliminary injunction without
holding a hearing if it does not “rely on any disputed
facts in determining whether the injunction should
issue.” Id. at 361 (noting that there was
“extensive briefing” on the motion and that the
district court also held a teleconference). Here, the court
finds a hearing is unnecessary because even if it construes
all disputed facts in Jones's favor, the court must deny
his motion for a preliminary injunction.
court will consider all of the preliminary injunction factors
Substantial Likelihood of Success on the Merits
argues that he meets the heavy burden of showing there is a
substantial likelihood of success on the merits because he
owns a common-law trademark in the name “Medical
Exercise Specialist” and ACE has infringed on that
trademark by using the exact same name in the exact same
industry. Dkt. 22. ACE argues that there is not a substantial
likelihood of success because ACE will prevail on its
affirmative defense that its use of the term “Medical
Exercise Specialist” is fair use. Dkt. 34. Moreover,
ACE asserts that even if the court looked beyond this
defense, Jones has no valid rights to the term. Id.
ACE contends that the mark is generic and unprotectable.
Id. Jones counters that he has evidence proving
distinctiveness. Dkt. 35. The court will first discuss the
likelihood of success of the fair use defense, and then
determine the likelihood of success of Jones's claim that
ACE is infringing on its mark.
Fair Use Defense
out the statutory fair use defense, ACE must show that it
made use of the term “Medical Exercise
Specialist” “(1) other than as a mark, (2) in a
descriptive sense, and (3) in good faith.” EMI
Catalogue P'ship v. Hill, Holliday, Connors, Cosmopulos
Inc., 228 F.3d 56, 64 (2d Cir. 2000); see Soweco,
Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir.
1980) (noting that the “fair-use” defense
described in 15 U.S.C. § 1115(b)(4) “is available
only when the allegedly infringing term is used not as a
trademark but ‘fairly and in good faith only to
describe to users the goods and services of [a] party, or
their geographic origin.'” (quoting 15 U.S.C.
§ 1115(b)(4)). The defendant does not have an
“independent burden to negate the likelihood of any
confusion in raising the affirmative defense that a term is
used descriptively, not as a mark, fairly, and in good
faith.” KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 543 U.S. 111, 124, 125 S.Ct. 542
(2004). At the preliminary injunction stage, “the
copyright owner must demonstrate (after establishing
copyright ownership and the taking of original
elements), where a prima facie fair use defense is
presented, that the fair use factors are insufficient to
support such a defense.” Suntrust Bank v. Houghton
Mifflin Co., 268 F.3d 1257, 1275 n.31 (11th Cir. 2001).
court denied ACE's motion for summary judgment on its
fair use defense on October 18, 2016, finding questions of
material fact. Dkt. 58. The court notes that a
“preliminary injunction may issue . . . despite the
existence of a plausible defense, as long as the movant
demonstrates a substantial likelihood of success.”
Dall. Cowboys Cheerleaders, Inc. v. Scoreboard Posters,
Inc., 600 F.2d 1184, 1188 (5th Cir. 1979). However,
“the district court must at least make clear that it
has considered plausible defenses which are fully
briefed and argued by [the] defendants.” Allied
Mktg. Grp., Inc. v. CDL Mktg., Inc., 878 F.2d 806, 815
(5th Cir. 1989). “While a preliminary injunction may be
appropriate even in the face of potentially significant
defenses, it is frequently desirable in such cases to
expedite the trial on the merits.” Id. (citing
11 Charles Alan Wright & Arthur R. Miller, Federal
Practice & Procedure § 2950, at 484 (1973 & Supp.
1988)). Here, while the defense is plausible, the court
finds, for the same reasons it denied the motion for summary
judgment on the defense, that the defense does not
necessarily preclude the issuance of a preliminary
injunction, particularly if the court expedites the trial
prevail on a claim of trademark infringement under the Lanham
Act, Jones must show: (1) he possesses a legally protectable
mark; and (2) ACE's use of his trademark creates a
likelihood of confusion as to source, affiliation, or
sponsorship. Elvis Presley Enter., Inc. v. Capece,
141 F.3d 188, 193 (5th Cir. 1998). A mark is protectable if
it is “distinctive, either inherently or by achieving
secondary meaning in the mind of the public.” Am.
Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d at
329. “Marks are often classified in categories of
generally increasing distinctiveness; . . . they may be (1)
generic; (2) descriptive; (3) suggestive; (4) arbitrary; or
(5) fanciful.” Two Pesos v. Taco Cabana, Inc.,
505 U.S. 763, 768, 112 S.Ct. 2753 (1992). “A mark need
not be registered in order to obtain protection because
‘[o]wnership of trademarks is established by use, not
by registration.'” Bd. of Supervisors for La.
State Univ. Agric. & Mech. Coll. v. Smack Apparel Co.,
550 F.3d 465, 475 (5th Cir. 2008) (quoting Union
Nat'l Bank of Tex., Laredo v. Union Nat'l Bank of
Tex., Austin, 909 F.2d 839, 842 (5th Cir. 1990)).
“The protectability of unregistered marks is governed
by the same principles that qualify a mark for registration
under the Lanham Act. Id.
Is the Mark Inherently Distinctive?
the mark is not registered, Jones has the burden of showing
it is distinctive. See Am. Rice, 518 F.3d at 329
(the plaintiff bears the burden of showing the mark is
protectable). Jones argues that the term “Medical
Exercise Specialist” is inherently distinctive because
it suggests, but does not describe, his course and
certification. Dkt. 22. Marks that are suggestive, arbitrary,
or fanciful are considered “inherently
distinctive” “because their intrinsic nature
serves to identify a particular source of a product.”
Two Pesos, 505 U.S. at 768.
Indicia [of a mark's descriptiveness] include: (1) the
mark's dictionary definition corresponds with its meaning
and context; (2) upon hearing the mark, one need not use
“imagination, thought and perception to reach a
conclusion as to the nature of goods”; (3)
“competitors would be likely to need the terms used in
the trademark in describing their products”; and (4)
others would have used the term in marketing a similar
service or product.
Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d
221, 232 (5th Cir. 2009) (quoting Zatarains,
Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786,
792 (5th Cir. 1983)). Jones claims that no competitor has
used his mark for over twenty years, that the mark is not in
the dictionary and thus has no ordinary significance to the
public, that imagination is required to determine what a
Medical Exercise Specialist does, and that there is no
evidence of widespread use by others in the industry. Dkt.
22. He also cites evidence in the form of affidavits from
individuals who work in the industry that indicates that
these individuals perceive the term as being unique to
Jones's program, at least until ACE started using the
term in 2015. Id. (citing exhibits).
argues that the mark is generic and thus not protectable.
Dkt. 34. ACE contends that “Medical Exercise
Specialist” is a “common descriptive (generic)
title for specialists in medical exercise.”
Id. ACE points to deposition testimony in which
Jones indicates that the terms “medical exercise”
and “exercise specialist, ” when used separately,
are generic terms. Id. (citing Dkt. 27, Ex. A-19).
ACE argues that “medical exercise” and
“exercise specialist” are common terms of general
use and knowledge in the fitness ...