United States District Court, W.D. Virginia, Charlottesville Division
K. MOON SENIOR UNITED STATES DISTRICT JUDGE
Norman K. Moon This matter is before the Court on Plaintiff
CFA Institute's Motion to Dismiss Defendant American
Society of Pension Professionals & Actuaries'
(“ASPPA”) Counterclaim for Cancellation by
Restriction under Section 18 of the Lanham Act, 15 U.S.C.
§ 1068 (“Section 18”). Dkt. 39. Plaintiff
initiated this action against Defendants alleging, inter
alia, trademark infringement and unfair competition
relating to the parties' respective financial advisor
certification programs. Dkt. 1. Defendants brought the
present Counterclaim in its Answer to Plaintiff's
Complaint. Dkt. 35. For the reasons stated herein, the Court
will grant Plaintiff's Motion to Dismiss Defendant's
Facts as Alleged
parties to this dispute are organizations in the business of
certifying, training, and providing a network for financial
advisors. Dkt. 1, ¶ 10; Dkt. 35 at 12. Plaintiff, the
CFA Institute, is a non-stock corporation based in
Charlottesville, Virginia, and caters to financial advisors
generally, rather than industry-specific advisors as the
Defendants do. Id. Plaintiff claims a worldwide
membership of 147, 000. Dkt. 1, ¶ 10. In addition to
services offered to its members, such as networking events
and seminars, it also provides a training and certification
program: the “Chartered Financial Analyst”
program, or the “CFA Program.” Dkt. 1, ¶ 27.
Plaintiff federally trademarked “CFA” on June 6,
1972, for “association services-namely, the promotion
of interest and professional standards in the field of
financial analysts.” Dkt. 1, ¶ 15. The USPTO
deemed this registration incontestable in 1977. Id.
It has since received incontestable trademark registrations
for CFA for “educational services, ” printed
financial publications, and “financial analysis
services” (referred to collectively herein as
“CFA Marks”). Dkt. 1 at 3-8.
Plaintiff's CFA certification, investment professionals
must have at least four years of relevant experience and
complete a self-study course followed by three six-hour
examinations. Dkt. 1, ¶¶ 27-28. Plaintiff claims
the CFA Program is comparable to a post-graduate degree in
“scope and depth.” Id. Those who pass
the examination become a CFA Institute member and may use the
professional designation “Chartered Financial
Analyst” or “CFA.” Dkt. 1, ¶ 29. CFAs
are then bound by the CFA Institute's codes of ethics and
professional conduct, and they must pay annual dues to
Plaintiff to maintain their certification. Id.
Plaintiff claims “investors and financial professionals
recognize the CFA Marks as the definitive standard for
measuring competence and integrity in the fields of portfolio
management and investment analysis.” Dkt. 1, ¶ 28.
named Defendants are three of five subsidiary organizations
under the umbrella of the American Retirement Association
(“ARA”). Dkt. 35 at 12. The ARA trains, educates,
and offers membership services for those providing financial
advice to employers on retirement plans offered to their
employees. Id. The ARA claims a worldwide membership
of 14, 000. Id.
the ARA's subsidiaries named in the Complaint is the
National Association of Plan Advisors (“NAPA”),
which offered a “Plan Financial Consulting” or
“Qualified Plan Financial Consultant”
certification until 2016, when it was replaced by the
“Certified Plan Fiduciary Advisor” or
“CPFA” certification. Dkt. 35 at 6, 12.
Defendants allege that this new certification corresponded
with the U.S. Department of Labor broadening the definition
of a “fiduciary” under the Employee Retirement
Income Security Act of 1974. Dkt. 35 at 12. The CPFA
credential can be earned by candidates who pass a three-hour
multiple-choice test. CPFAs must complete continuing
education to maintain the credential. Dkt. 35 at 5.
to this action's commencement, Defendant ASPPA sought to
register its CPFA mark with the U.S. Patent and Trade Office
(U.S. Application No. 87103390). Dkt. 16 at 1. This mark was
published in the Federal Register on August 15, 2017.
See Notice of Publication, United States Patent and
Trademark Office, Serial No. 87-103, 390 (July 26, 2017).
Plaintiff subsequently filed a Notice of Opposition against
ASPPA with the Trademark Trial and Appeal Board
(“TTAB”), alleging that its CFA Marks were or
would be damaged by the registration of the CPFA Mark. Dkt.
16, Ex. 2. ASPPA then filed a counterclaim-nearly identical
to the counterclaim presently at issue-to restrict the
registration of the CFA Marks to reflect that Plaintiff does
not direct its goods and services specifically to
professionals in the field of retirement financial planning
at the employer level. See ASPPA Answer &
Countercl., CFA Inst. v. Am. Soc'y of Pension
Prof'ls & Actuaries, Opp'n No. 91239462
(T.T.A.B. 2018), Filing No. 5. ASPPA also alleged as an
affirmative defense that there was no likelihood of
confusion, because the two marks catered to distinct segments
of financial planning. Id.
the TTAB proceedings progressed, Plaintiff filed an action in
this Court, bringing the following claims: Federal Trademark
Infringement pursuant to 15 U.S.C. § 1114; Federal
Unfair Competition, False Designation of Origin, and False
and Misleading Representations pursuant to 15 U.S.C. §
1125(a); Trademark Infringement and Unfair Competition under
Va. Code §§ 59.1-92.12, 59.1-92.13; Trademark
Infringement and Unfair Competition under Virginia Common
Law; and Accounting under 15 U.S.C. § 1117. Dkt. 1.
Shortly after, Plaintiff moved the TTAB to stay its
proceedings pending this Court's disposition of the
matter, which the TTAB granted. TTAB Order of Apr. 26, 2019,
Opp'n No. 91239462, Filing No. 21. ASPPA filed a similar
motion to stay this action, which U.S. Magistrate Judge Joel
C. Hoppe denied. Dkt. 31.
action, Plaintiff claims that Defendants' CPFA mark
violates its CFA Marks in numerous ways. Plaintiff alleges
that “[c]onsumers are likely to believe mistakenly that
Defendants are affiliated or connected with, or otherwise
authorized or sponsored by CFA Institute.” Dkt. 1,
¶ 49. In addition, Plaintiff alleges that the CPFA mark
is “nearly identical to and confusingly similar to CFA
Institute's CFA Marks in appearance, sound, meaning, and
commercial impression.” Dkt. 1, ¶ 50. Finally,
Plaintiff alleges that both the CFA Marks and Defendants'
CPFA mark are “used in connection with goods and
services used by professionals in the field of retirement
financial planning.” Dkt. 1, ¶ 51.
their Answer to Plaintiff's Complaint, Defendants do not
deny that they use the CPFA mark, that they publish this mark
on their website and marketing materials, and that it is
geared toward financial advisors targeting employer-level
retirement planning. Dkt. 35, ¶¶ 8-10. However,
Defendants allege that there is no likelihood of confusion
because the markets Plaintiff and Defendants target are
entirely distinct. Id. Specifically, Defendants
claim that while Plaintiff advises on individual-level
retirement planning, among other financial advising,
Defendants advise on the employer level. Id. To this
end, Defendants assert an Affirmative Defense that even if
the Court finds that a likelihood of confusion exists, any
such risk of confusion may be avoided by amending
Defendants' CPFA mark to restrict it, pursuant to 15
U.S.C. § 1068, to services exclusively related to
“retirement plan advisors who provide fiduciary advice
to employers at the plan level.” Dkt. 35, ¶ 105.
also bring a Counterclaim for Cancellation by Restriction
pursuant to Section 18 of the Lanham Act to restrict
Plaintiff's CFA Marks. Dkt. 35, ¶ 12; 15 U.S.C.
§ 1068. Specifically, Defendants seek to alter the
trademark registrations of Plaintiff's CFA Marks to
specifically exclude “fiduciary advice to employers at
the plan level regarding retirement [planning].” This
restriction would coincide with the restriction to
Defendants' own CPFA mark suggested in their Affirmative
now moves to dismiss Defendants' Counterclaim, alleging
that Section 18 applies exclusively in TTAB proceedings. Dkt.
39. Even if such a claim does apply in federal court,
Plaintiff argues, Defendants fail to plead allegations
sufficient to withstand a motion to dismiss under Fed R. Civ.
P. 12(b)(6). Id. The Court agrees with Plaintiff
that Defendants' allegations are legally insufficient,
regardless of whether a claim under Section 18 is cognizable
in federal court.