United States District Court, E.D. Virginia, Alexandria Division
MEMORANDUM OPINION AND ORDER
BRUCE LEE UNITED STATES DISTRICT JUDGE.
matter is before the Court on the two-day non-jury trial of
Select Auto Imports, Incorporated's ("Select Auto
Imports") claims against Defendants Yates Select Auto
Sales, LLC and Jeffrey Lee Yates (collectively, "Yates
Select Auto Sales") seeking both injunctive relief and
monetary damages for trademark infringement and unfair
competition under §§ 32 and 43(a) of the Federal
Trademark Act (the "Lanham Act"), Virginia Code
§ 59.1-92.12 (the "Virginia Trademark and Service
Mark Act"), Virginia common law, and for trademark
cyberpiracy under Section 43(d) of the Lanham Act.
November 16, 2015, the Court entered a Stipulation dismissing
Defendant Saleiman Azizi and dismissing the claim for
monetary damages (Doc. 31). Plaintiff withdrew its claim for
trademark cyberpiracy (Count III) in its Opposition to Motion
for Summary Judgement (Doc. 54). On January 6, 2016, the
Court entered a Stipulation dismissing with prejudice
Plaintiffs claims for attorney's fees (Doc. 71). The sole
remaining relief sought by Select Auto Imports is a claim for
injunctive relief with respect to claims for federal
trademark infringement in violation of § 32 of the
Lanham Act, 15 U.S.C. § 1114 (Count I), unfair
competition and false designation of origin in violation of
§ 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
(Count II), trademark infringement in violation of the
Virginia Trademark and Service Mark Act, Virginia Code §
59.1-92.12 (Count IV), and unfair competition and trademark
infringement under common law (Count V).
Select Auto Sales does not contest that (1) Select Auto
Imports possesses the SELECT AUTO IMPORTS mark, (2) Yates
Select Auto Sales used its YATES SELECT AUTO SALES mark, (3)
Yates Select Auto Sales's use of its mark occurred
"in commerce, " or (4) Yates Select Auto Sales used
the mark "in connection with the sale, offering for
sale, distribution, or advertising" of goods or
services. Therefore, the only issue before the Court is
whether Select Auto Imports has established that Yates Select
Auto Sales used its mark in a manner likely to confuse
Court finds that all nine factors in the likelihood of
confusion analysis weigh in favor of Plaintiff Select Auto
Imports or are neutral to the analysis. Therefore, the Court
holds that Defendant Yates Select Auto Sales's use of a
confusingly similar mark in connection with similar goods and
services is likely to cause confusion among consumers as to
the source of Yates Select Auto Sales's goods and
services. Thus, the Court holds that Plaintiff Select Auto
Imports is entitled to a permanent injunction, requiring
Yates Select Auto Sales to cease and desist all use of the
YATES SELECT AUTO SALES mark and any other mark confusingly
similar to SELECT AUTO IMPORTS.
STANDARD OF REVIEW
non-jury case, the court must make specific findings of fact
and separately state its conclusions of law. Fed.R.Civ.P.
52(a)(1). The trial judge has the function of finding the
facts, weighing the evidence, and choosing from among
conflicting inferences and conclusions those which he
considers most reasonable. Perm-Texas Corp. v.
Morse, 242 F.2d 243, 247 (7th Cir. 1957) (citation
and internal quotation marks omitted). The trial judge has
the inherent right to disregard testimony of any witness when
satisfied that the witness is not telling the truth, or the
testimony is inherently improbable due to inaccuracy,
uncertainty, interest, or bias. Id. (citation and
internal quotation marks omitted); see Columbus-Am.
Discovery Grp. v. Ail. Mut. Ins. Co., 56 F.3d 556, 567
(4th Cir. 1995) (internal quotation omitted) (stating that
the fact finder is in a better position to make judgments
about the reliability of some forms of evidence, including
evaluation of the credibility of witnesses). It is the duty
of the trial judge sitting without a jury to appraise the
testimony and demeanor of witnesses. See Burgess v.
Farrell Lines, Inc., 335 F.2d 885, 889 (4th Cir. 1964).
satisfy the demands of Rule 52(a), a trial court must do more
than announce statements of ultimate fact. United States
ex rel. Belcon, Inc. v. Sherman Constr. Co., 800 F.2d
1321, 1324 (4th Cir. 1986) (citation omitted). The court must
support its rulings by spelling out the subordinate facts on
which it relies. Id.
language of Rule 52 has been construed,
not to require a court to make findings on all facts
presented or to make detailed evidentiary findings; if the
findings are sufficient to support the ultimate conclusion of
the court they are sufficient. Nor is it necessary that the
trial court make findings asserting the negative of each
issue of fact raised. It is sufficient if the special
affirmative facts found by the court, construed as a whole,
negative each rejected contention. The ultimate test as to
the adequacy of the findings will always be whether they are
sufficiently comprehensive and pertinent to the issues to
provide a basis for decision and whether they are supported
by the evidence.
Darter v. Greenville Cmty. Hotel Corp., 301 F.2d 70,
75 (4th Cir. 1962). This rule does not require that the trial
court set out findings on the myriad of factual questions
that arise in a case. Golf City, Inc. v. Wilson Sporting
Goods, 555 F.2d 426, 433 (5th Cir. 1977). The
sufficiency of the trial court's findings depends upon
the particular facts of each individual case, and no general
rule can govern. Darter, 301 F.2d at 75.
FINDINGS OF FACT
following are findings of fact made by the Court after having
had an opportunity to observe the witnesses, consider the
evidence, and weigh the demeanor and credibility of the
Select Auto Imports is a Virginia corporation, located at
5630 S. Van Dorn Street, Alexandria, Virginia 22310.
Plaintiff operates a used car dealership on this property
(Doc. 88 at ¶1).
Yates Select Auto Sales LLC is a limited liability company
organized under the laws of Virginia, located at 3030 Duke
Street, Alexandria, Virginia 22314 (Doc. 88 at ¶ 6).
Defendants Yates Select Auto Sales and Mr. Yates operate a
used car dealership on the 3030 Duke Street property, less
than four miles away from Select Auto Imports's
dealership. Defendant Jeffrey Lee Yates is the organizer of
Yates Select Auto Sales, LLC (Doc. 88 at ¶ 7).
Select Auto Imports and its Valuable SELECT AUTO IMPORTS Mark
Auto Imports has substantially and continuously used the mark
SELECT AUTO IMPORTS in connection with its used car
dealership located at 5630 S. Van Dorn Street since at least
1987 (PL's Ex. 1, 6). Before Select Auto Imports adopted
the SELECT AUTO IMPORTS mark, it asked an attorney to
investigate whether there were any active used car
dealerships in the Washington, D.C. metropolitan area using
the term "Select" in their names (Trial Tr., 32,
Feb. 22, 2016, a.m. session). The investigation uncovered no
such businesses. Id.
Auto Imports owns the valid active federal trademark
Registration No. 2, 567, 206 on the Principal Register for
the mark SELECT AUTO IMPORTS covering an "automobile
dealership" (registered on May 7, 2002), depicted in the
Pl.'s Ex. at 1. Registration No. 2, 567, 206 includes a
disclaimer for the phrase "Auto Imports."
Id. Registration No. 2, 567, 206 became
incontestable on March 19, 2013 (Doc. 11-B).
its inception, Select Auto Imports has promoted its used car
dealership under the SELECT AUTO IMPORTS mark, including more
recently on its website at www.selectautoimports.com
(Doc. 88 at ¶ 5). The logo in the homepage banner on
Select Auto Imports's website is a variation of the above
logo and appears as follows:
Select Auto Imports sells approximately fifty cars per month
(Trial Tr., 78, Feb. 23, 2016).
Yates Select Auto Sales and its YATES SELECT AUTO SALES Mark
around October 2014, Defendant Jeffrey Lee Yates acquired the
used car dealership at 3030 Duke Street, Alexandria, Virginia
22314, known at the time as Alexandria Motors, as well as
Alexandria Motors's inventory (Doc. 88 at ¶ 9). Mr.
Yates chose to begin the name of his new business with the
word "Yates" because "Yates" is a family
house mark that has been used since 1962 in connection with
numerous automotive and other companies in the Alexandria
area (Trial Tr., 77, Feb. 22, 2016, p.m. session). The Yates
name and family house mark is currently or has been used
previously by Mr. Yates or by Mr. Yates' family members
in connection with at least the following businesses: Yates
Automotive, Yates Car Care, Yates Car Wash & Detail
Center, Yates Kingstowne Car Wash & Convenience, Yates
Express Lube, Yates Auto Parts, Yates Old Town Auto Body,
Yates Automotive Service Garage, Yates Corner, Yates Dry
Cleaning & Laundry Services, Yates Pizza Palace, and
Yates Real Estate (Doc. 88 at ¶12).
October 2014, neither Mr. Yates nor anyone else in the Yates
family was in the business of selling cars (Trial Tr., 43-44,
Feb. 22, 2016, p.m. session). On October 10, 2014, Mr. Yates
registered the name Yates Select Auto Sales, LLC with the
Commonwealth of Virginia State Corporation Commission (Doc.
88 at ¶ 11). Mr. Yates has not sought registration of
the YATES SELECT AUTO SALES mark with the United States
Patent and Trademark Office ("USPTO") (Trial Tr.,
56, Feb. 22, 2016, p.m. session).
Yates testified that he chose to use the word
"Select" because it would indicate to customers
that the automobiles being sold were "selected" by
Yates trained staff, and since Yates is a known professional
in the automotive industry, customers would see quality
associated with the selected vehicles (Trial Tr., 68-69, Feb.
22, 2016, p.m. session). Mr. Yates testified that he did not
choose the name Yates Select Auto Sales in an effort to copy
or imitate the Select Auto Imports name. Id. at 70.
Mr. Yates had knowledge of Select Auto Imports, and his
personal impression of Select Auto Imports was favorable
based on his experience of purchasing a vehicle from Select
Auto Imports many years ago. Id. at 70-71.
January 2014, Maria Kyriacou of Commercial Art, L.L.C.
drafted a series of logo concepts for potential use by Yates
Select Auto Sales at the direction of Mr. Yates, and Mr.
Yates requested that Ms. Kyriacou create a logo similar to
various other Yates family logos (Def s Ex. 3(b)-(j)). The
logos are in fact very similar to other logos used in Yates
family businesses (Def s Ex. 5).
Kyriacou drafted similar logos for potential use in
connection with some of Mr. Yates' other businesses,
including Yates Select Real Estate, Yates Car Wash Detail
Center, Yates Business Enterprises, and Yates Automotive and
Detail Center (Def s Ex. 3(a), (k)). Yates Select Auto Sales
uses the same or similar logos on hats, shirts, stationary,
and on the web (Def s Ex. 4). "Yates Select" is the
dominant element of Yates Select Auto Sales (Doc. 15 at Â¶
February 3, 2015, before Yates Select Auto Sales began using
the YATES SELECT AUTO SALES mark in commerce, Dunner Law
PLLC, acting on behalf of Select Auto Imports, sent Yates
Select Auto Sales a cease and desist letter advising that its
YATES SELECT AUTO SALES mark infringes the SELECT AUTO
IMPORTS mark (Trial Tr., 10-11, Feb. 22, 2016, p.m. session).
Yates Select Auto Sales failed to heed Select Auto
Imports's warning and began using the YATES SELECT AUTO
SALES mark in connection with the sale of used automobiles
similar to those sold by Select Auto Imports in late February
2015. Id. at 74.
February 26, 2015, Mr. Azizi, who by this time had become the
general manager of Yates Select Auto Sales, registered the
domain name address www.yatesselectautosales.com
(Doc. 88 at ¶ 16). That same day, Mr. Azizi asked
AutoRevo, the website administrator, to move Yates Select
Auto Sales's website to this new domain address and to
change the name of the business on the website from
"Alexandria Motors" to "Yates Select Auto
Sales" with the simple instruction to make the new name
"fit nicely" in the banner. Id. at ¶
17; Def s Ex. 6.
to the name change from Alexandria Motors to Yates Select
Auto Sales, the homepage banner on the Alexandria Motors
website appeared as follows:
at ¶ 18. After this change in name, from around or on
March 2, 2015 until October 27, 2105, the logo on the
www.yatesselectautosales.com website appeared as
at ¶ 19. Mr. Yates had not seen this banner before his
deposition in October, 2015 (Trial Tr., 73, Feb. 22, 2016,
p.m. session). When he saw the banner, he did not like it and
instructed that the banner be removed. Id. The new
banner was created by Auto Revo, the website host, with the
instruction to remove the "A" from the old banner,
and "make it fit nicely" (Def s Ex. 6). Yates
Select Auto Sales has now withdrawn this homepage banner.
(Trial Tr., 73, Feb. 22, 2016, p.m. session).
after the name on the website had been changed, the
dealership located at 3030 Duke Street changed its signage
from Alexandria Motors to Yates Select Auto Sales (Doc. 88 at
¶ 19). Over the following weeks, Select Auto
Imports's lawyers had telephone conversations with Mr.
Azizi on March 4, 11, and 16, 2015 and with Mr. Yates on
March 16, 2015 (Trial Tr., 12, Feb. 22, 2016, p.m. session).
On March 20, 2105, Select Auto Imports's lawyers sent a
second letter to Mr. Yates and Mr. Azizi, but did not receive
any response (PL's Ex. 21). On May 28, 2015, Select Auto
Imports filed the complaint in the instant lawsuit against
Yates Select Auto Sales, alleging trademark infringement and
unfair competition, among other claims (Doc.1).
Select Auto Sales advertises primarily online and by word of
mouth, does not advertise via print media, on the radio, or
on the television, and does not have physical signs and
advertisements in places other than at its car lot (Trial
Tr., 103, Feb. 22, 2016, p.m. session). Yates Select Auto
Sales sells approximately nine cars per month. Id.
at 112; PL's Ex. 41.
Likelihood of Confusion Factors
Court's findings of fact with respect to the nine factors
used in this Circuit to assess likelihood of confusion,
George & Co., LLC v. Imagination Entm 't
Ltd., 575 F.3d 383, 393 (4th Cir. 2009), are as follows:
Strength of the SELECT AUTO IMPORTS Mark
USPTO registered the SELECT AUTO IMPORTS mark in 2002 without
requiring proof of secondary meaning (PL's Ex. 1). The
UPSTO has registered four other trademarks which include
"select" in the name (PL's Ex. 99-102). Select
Auto Imports has been operating for nearly three decades,
during which time it has pursued other used car dealerships
that have sought to use the term "Select" in the
Washington, D.C. metropolitan area (Trial Tr., 73, Feb. 22,
2016, a.m. session).
Auto Imports has spent more than $6 million on advertising
from 2005-2014, including advertising through print, radio,
TV, online, and other means such as the scoreboard at the
Verizon Center in Washington, D.C. (PL's Ex. 62,
66, 70). Select Auto Imports has generated over $150
million in revenues in the past five years (Trial Tr., 46,
Feb. 22, 2016, a.m. session).
the date of trial, Select Auto Imports's Registration No.
2, 567, 206 was the only active federal trademark
registration for a mark containing the terms
"Select" and "Auto" with a connection to
the sale of used cars (Trial Tr., 19-20, Feb. 22, 2016, p.m.
session). Among the currently active businesses in Virginia,
which promote their products via the internet, are
"Virginia Select Auto, " physically located in
Amherst, Virginia and operating in Charlottesville, Richmond,
and Roanoke with the knowledge and consent of Select Auto
Imports (Def s Ex. 13(i), 15). The Court notes that these
businesses are not located within Plaintiffs geographic
market. According to Select Auto Imports, Select Auto Imports
and Yates Select Auto Sales are the only car dealerships
operating in the Washington, D.C. metropolitan area whose
names contain both the terms "Select" and
Similarity of the Marks
Auto Imports uses the SELECT AUTO IMPORTS mark as its primary
trademark. Yates Select Auto Sales uses the YATES SELECT AUTO
SALES mark as its primary trademark (Doc. 88 at ¶¶
Auto Imports sometimes refers to itself as "Select"
or "Select Auto" in advertisements, and Select Auto
Imports regularly emphasizes the word "Select" in
advertisements, including in the following slogan: "Be
Selective...Select Quality, Select Value, Select Auto
Imports" (PL's Ex. 71-73, 75). Consumers predictably
refer to the business as both "Select" and
"Select Auto" -not "Imports" (Trial Tr.,
73, Feb. 22, 2016, p.m. ...