AEROTEK, INC. v. JOBOT, LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF NORTH CAROLINA

AEROTEK, INC. and ALLEGIS )

GROUP, INC., )

)

Plaintiffs, )

) 1:22-cv-599

v. )

)

JOBOT, LLC and COREY DALTON, )

)

Defendants. )

MEMORANDUM OPINION AND ORDER

OSTEEN, JR., District Judge

Plaintiffs Aerotek, Inc. and Allegis Group, Inc. bring

three claims for relief against Defendants Jobot, LLC and Corey

Dalton for trademark infringement and unfair competition under

the Lanham Act and unfair and deceptive trade practices under

N.C. Gen. Stat. § 75-1.1. (Doc. 1.) Pending before this court

are cross-motions for summary judgment, (Docs. 62, 66), and

Defendants’ Motion to Withdraw Jury Demand, (Doc. 78). This

court will deny both motions for summary judgment and grant

Defendants’ motion to withdraw jury demand.

I. FACTUAL AND PROCEDURAL BACKGROUND

Aerotek, Inc. is a recruiting and staffing agency with

offices throughout the United States and abroad. (Pls.’ Ex. 2

Aerotek Quick Facts (Doc. 67-2) at 2.) Aerotek, Inc. is a

subsidiary of Allegis Group, Inc. (Pls.’ Ex. 3 Kelly Dep. (Doc.

67-3) at 4.) Corey Dalton worked at Aerotek as a recruiter from

2007 until he left the company in 2021. (See Verified Compl.

(Doc. 1) ¶ 23; Defs.’ Ex. B Dalton Dep. (Doc. 70-2) at 3.) After

Dalton left Aerotek, he was hired at Jobot as a “Principal

Recruiter” in October 2021. (See Verified Compl. (Doc. 1) ¶ 24.)

From October 2021 to July 29, 2022, while Dalton was employed at

Jobot, Dalton’s LinkedIn profile’s “About” Section contained the

following language:

Aerotek® Inc. is a leading provider of technical,

professional and industrial recruiting and staffing

services. We are part of the Allegis Group® Inc., the

second largest staffing company in the United States.

Aerotek is your direct source to find qualified &

skilled employees and locate great career

opportunities with industry leading companies.

Aerotek operates a network of more than 180 non-

franchised offices throughout the United States,

Canada and Puerto Rico. To learn more about Aerotek

and see a complete list of our locations, visit our

website at www.aerotek.com.

Specialties: I specialize in technical staffing

through Aerotek CE®, a division of Aerotek. I place

professionals in many sectors with a focus on . . .

(See Verified Compl. (Doc. 1) ¶ 27; Golledge Decl. (Doc. 64)

¶ 9.) The same text was copied on Dalton’s biography on Jobot’s

website. (See Verified Compl. (Doc. 1) ¶ 28.) Although the

“About” Section on Dalton’s LinkedIn was not updated, his

current occupation was listed as: “Principal Recruiter at

Jobot.” (See id. ¶ 26.)

Plaintiffs own federal service mark registrations for

“AEROTEK” and “ALLEGIS GROUP.” (Verified Compl. (Doc. 1) ¶¶ 13,

20.) Plaintiffs allege the references to Aerotek and Allegis

Group Inc. on Dalton’s LinkedIn page and on Jobot’s website

constitute trademark infringement. (See generally id.)

Defendants took down the references to Aerotek and Allegis Group

Inc. as soon as they received notice of this suit alleging

trademark infringement. (Golledge Decl. (Doc. 64) ¶ 9.)

Plaintiffs filed their Complaint on July 29, 2022. (See

Verified Compl. (Doc. 1).) On February 15, 2024, Plaintiffs and

Defendants filed cross motions for summary judgment. (See Docs.

62, 66.) A trial is set for October 7, 2024. (See Notice of

Hearing (Doc. 59).)

Plaintiffs bring three claims for relief. First, Plaintiffs

bring a claim under Section 32 of the Lanham Act, alleging

trademark infringement pursuant to 15 U.S.C. § 1114. Second,

Plaintiffs bring a claim under Section 43(a) of the Lanham Act,

alleging unfair competition pursuant to 15 U.S.C. § 1125

(a)(1)(A). Last, Plaintiffs bring a claim for unfair and

deceptive trade practices pursuant to N.C. Gen. Stat. § 75-1.1

(“UDTPA”). Plaintiffs move for partial summary judgment as to

their claim for trademark infringement on liability only. (Pls.’

Mot. (Doc. 66) at 1.)

II. ANALYSIS

The Lanham Act protects trademark registrants from “any

reproduction, counterfeit, copy, or colorable imitation of a

registered mark” by allowing the registrant to commence a civil

action against trademark infringers for disgorgement of profits

or other damages. 15 U.S.C. § 1114(1).

To demonstrate trademark infringement, a plaintiff must

show both (1) “that it owns a valid and protectable mark,” and

(2) “that the defendant's use of a ‘reproduction, counterfeit,

copy, or colorable imitation’ of that mark creates a likelihood

of confusion.” CareFirst of Md., Inc. v. First Care, P.C., 434

F.3d 263, 267 (4th Cir. 2006) (citation omitted) (quoting 15

U.S.C. § 1114(1)(a)). Actions under both Section 32 (trademark

infringement) and Section 43(a) (unfair competition) of the

Lanham Act require plaintiffs to show the alleged infringement

is likely to cause confusion. Lone Star Steakhouse & Saloon,

Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995);

see also 15 U.S.C. § 1125(a)(1)(A).1

The parties do not dispute that Plaintiffs own a valid and

protectable mark. (See generally Defs.’ Resp. (Doc. 68).)

Plaintiffs argue they are entitled to summary judgment because

there is no genuine dispute of material facts and the relevant

“likelihood of confusion factors resolve overwhelmingly in

Plaintiffs’ favor.” (Pls.’ Mem. (Doc. 67) at 27.) Defendants

move for summary judgment on the grounds that, even if

Plaintiffs established liability, they would not be entitled to

any of the equitable remedies they seek. (See Defs.’ Mem. (Doc.

63) at 17.) In Defendants’ response to Plaintiffs’ summary

judgment motion, they ask this court to exercise its authority

pursuant to Fed. R. Civ. P. 56(f) and grant summary judgment for

Defendants sua sponte on the likelihood of confusion issue.

(Defs.’ Resp. (Doc. 68) at 16.)2 Additionally, Defendants request

oral argument on their motion for summary judgment. (Defs.’ Mem

(Doc. 63) at 24.)

1 § 1125(a)(1)(A) “describes the cause of action known as

‘false association’” and does not require the plaintiff to have

a trademark as an element of the cause of action. Belmora LLC v.

Bayer Consumer Care AG, 819 F.3d 697, 706 (4th Cir. 2016). In

other words, it provides a vehicle for assertion of a claim for

infringement of an unregistered mark. See Matal v. Tam, 582 U.S.

218, 225 (2017).

2 Defendants did not mention the likelihood of confusion

issue in their own motion for summary judgment.

A. Plaintiffs’ Motion for Summary Judgment

In order to demonstrate trademark infringement under the

Lanham Act, a plaintiff must prove that the defendant used a

valid and protectable mark and that the use of that mark creates

a likelihood of confusion. CareFirst of Md., Inc., 434 F.3d at

267. “Likelihood of confusion exists if ‘the defendant's actual

practice is likely to produce confusion in the minds of

consumers about the origin of the goods or services in

question.’” Id. (quoting KP Permanent Make-Up, Inc. v. Lasting

Impression I, Inc., 543 U.S. 111 (2004)). The likelihood of

consumer confusion is “an inherently factual issue,” but, “as

with any other issue of fact, summary judgment remains

appropriate when no jury reasonably could have ruled in the non-

moving party’s favor.” RXD Media, LLC v. IP Application Dev.

LLC, 986 F.3d 361, 375 (4th Cir. 2021).

Thus, to resolve Plaintiffs’ motion for summary judgment,

this court must determine whether no reasonable juror could rule

in Defendants’ favor, or put another way, whether no reasonable

juror could find that Defendants’ use of Plaintiffs’ mark on

Defendants’ LinkedIn page and website is not likely to produce

confusion in the minds of consumers about the origin of the

services offered.

The Fourth Circuit has identified nine factors that are

“useful” to determine whether a likelihood of confusion exists:

“(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 [parties];”

“(5) the similarity of advertising used by the

[parties];” “(6) the defendant's intent;” “(7) actual

confusion;” “(8) the quality of the defendant's

product;”3 “and (9) the sophistication of the

consuming public.”

Dewberry Eng’rs Inc. v. Dewberry Grp., Inc., 77 F.4th 265, 281

(4th Cir. 2023), cert granted, 144 S. Ct. 2681 (June 24, 2024)

(citation omitted).4 The factors are non-exclusive, and a court

need not determine that all factors weigh in one party’s favor

in order to grant or deny summary judgment. See id. at 281–82.

Not all factors are of equal importance, nor are they always

relevant in any given case. See id.

Although Plaintiffs argue this issue may be resolved on

summary judgement because the defendants used an identical mark

in connection with providing goods or services similar to those

offered and provided by the plaintiffs, (Pls.’ Mem. (Doc. 67) at

3 The parties agree the quality of the defendant’s product

is not relevant. (See Pls.’ Mem. (Doc. 67) at 25; Defs.’ Resp.

(Doc. 68) at 29.)

4 Although the Supreme Court has accepted Dewberry for

review, the nine factors are current precedent in this circuit,

see Grayson O Co. v. Agadir Int’l LLC, 856 F.3d 307, 314 (4th

Cir. 2017), and binding on this court.

16), the cases they cite in support are factually distinct from

the facts here. Namely, the cases involve bad faith or an

intentional use of a plaintiff’s mark in order to profit off

plaintiff’s name recognition. See, e.g., Nationstar Mortgage,

LLC v. Ahmad, 155 F. Supp. 3d 585, 591 (E.D. Va. 2015) (finding

bad faith).

For example, in Polo Fashions, Inc. v. Craftex, Inc., 816

F.2d 145 (4th Cir. 1987), the defendant was producing

counterfeit goods “in an apparent attempt to capitalize upon the

popularity of, and demand for, another’s product.” Id. at 148.

Similarly, in JFJ Toys, Inc. v. Sears Holdings Corp., 237 F.

Supp. 3d 311 (D. Md. 2017), the defendant sold an identical

product as the plaintiff and gave the product nearly the same

name. See id. at 320. The defendant had actual notice of

infringement and the court found the defendant’s behavior was

“consistent with bad faith.” Id. at 339. Again, in Capitol

Comm’n, Inc. v. Capitol Ministries, No. 5:11-CV-214, 2013 WL

7224934 (E.D.N.C. Dec. 19, 2013), the court found that the

“defendant intentionally used [the] plaintiff’s mark in domain

names to divert plaintiff’s donors to defendant.” Id. at *1.

Here, Plaintiffs did not provide evidence that Dalton or

Jobot intentionally used Plaintiffs’ namesake in order to profit

off their name recognition. In fact, the evidence appears

undisputed Dalton forgot to update his LinkedIn profile, and

Defendants’ software automatically pulled Dalton’s LinkedIn

information onto their website. (See Dalton Dep. (Doc. 65-4) at

5; Golledge Decl. (Doc. 64) ¶¶ 8–10; Text Messages (Doc. 65-8).)

Additionally, Defendants did not become aware of the Aerotek

references on LinkedIn or their website until Plaintiffs filed

this Complaint. (See Golledge Decl. (Doc. 64) ¶ 9; Text Messages

(Doc. 65-8).)

Although intent to infringe is not a required element of

trademark infringement, it is “sometimes a major factor in

infringement cases” because “[i]f there is intent to confuse the

buying public, this is strong evidence establishing likelihood

of confusion.” Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1535

(4th Cir. 1984). Thus, although a defendant’s intent or

willfulness is not a necessary element of a successful trademark

infringement claim, it remains a factor for courts to consider

when deciding a motion for summary judgment.5

5 Plaintiffs’ motion for summary judgment does not argue

that Defendants’ alleged infringement was intentional. (See

Pls.’ Mem. (Doc. 67) at 24 (arguing Plaintiffs need not

establish Defendants’ intent to infringe).) However, in

Plaintiffs’ response to Defendants’ motion for summary judgment,

they argue that there is a genuine issue of material fact as to

Defendants’ intent because they behaved at least recklessly.

(Pls.’ Resp. (Doc. 69) at 15–16.) Regardless, even if Defendants

behavior can be considered “reckless,” this case is still

factually distinct from the cases referenced above because those

cases involve bad faith and/or purposeful or knowing conduct.

Plaintiffs also cite GoSecure Inc. v. Bhandari, 637 F.

Supp. 3d 368 (E.D. Va. 2022), in support of their argument.

GoSecure Inc. is distinct from the above cases because the court

granted summary judgment for the plaintiff even though the

plaintiff did not present evidence of bad faith or intent. Id.

at 377. However, the facts of the case are distinguishable from

the facts here. In GoSecure Inc., the defendant registered the

domain name <gosecure.com> to establish a website to sell

cybersecurity products. Id. at 373. The defendant also used the

domain name to establish a blog and created a twitter account

with the handle @goSecure. Id.

GoSecure, who also provided cybersecurity goods and

services, attempted to buy the domain name from defendant, but

was unsuccessful. Id. at 374. Several years later, the GoSecure

filed a federal trademark application and successfully

registered the mark GOSECURE. Id. The court found defendant

liable for trademark infringement for the use of GoSecure’s mark

on defendant’s website, blog, and twitter account because

[c]onsumers encountering Defendant's website would

likely be confused, at least temporarily, as to

whether they could use it to purchase cybersecurity

goods and services affiliated with Plaintiff, given

the identical mark and the existing content

suggesting the website operated in the same market as

Plaintiff. Such confusion would likely prevent or

frustrate internet users from accessing Plaintiff's

own services given the identical nature of the marks

and website content suggesting similar services.

Id. at 376.

The facts here are distinguishable from GoSecure Inc.

because an individual who navigated to Dalton’s LinkedIn page or

Jobot’s website would not likely be prevented or frustrated from

accessing Plaintiffs’ own websites. Additionally, Defendants did

not operate a website, blog, or Twitter page using Plaintiffs’

mark as a domain name.

Thus, the present case is distinguishable from cases where

courts have granted summary judgment on the issue of likelihood

of confusion because it does not involve intentional or bad

faith infringement, nor would Defendants’ unintentional use of

Plaintiffs’ mark likely prevent internet users from accessing

Plaintiffs’ own recruiting services. Additionally, an

examination of the relevant factors shows that summary judgment,

either in favor of Plaintiffs or Defendants, is not appropriate

because there is a genuine dispute of fact over whether

Defendants’ use of the mark is likely to result in confusion.

1. Strength of Plaintiffs’ Mark

The strength or distinctiveness of a plaintiff’s mark is an

important factor in considering whether there is a likelihood of

confusion. See Synergistic Int’l, LLC v. Korman, 470 F.3d 162,

171 (4th Cir. 2006). Generally, the stronger the mark, the

greater the likelihood that consumers will be confused by

competing uses of the mark. See id. “The strength of a mark is

the degree to which a consumer in the relevant population, upon

encountering the mark, would associate the mark with a unique

source. ‘The “strength” of the trademark is evaluated in terms

of its conceptual strength and commercial strength.’” CareFirst

of Md., Inc., 434 F.3d at 269 (citation omitted).

A mark’s conceptual or “inherent” strength focuses on the

linguistic “peculiarity” of the mark, “considered in relation to

the product, service, or collective organization to which the

mark attaches.” Id. Here, the terms “AEROTEK” and “ALLEGIS

GROUP” are conceptually strong because they are “arbitrary or

fanciful” terms. See Grayson O Co. v. Agadir Int’l LLC, 856 F.3d

307, 315 (4th Cir. 2017) (“Arbitrary or fanciful marks typically

involve made-up words or words that are unrelated to the

product, like, ‘Exxon®’ gasoline or ‘Apple®’ computers.”)

Defendants dispute the marks’ commercial strength, but not their

conceptual strength. (See Defs.’ Resp. (Doc. 68) at 28–29.)

“The commercial-strength inquiry, by contrast, looks at the

marketplace and asks ‘if in fact a substantial number of present

or prospective customers understand the designation when used in

connection with a business to refer to a particular person or

business enterprise.’” CareFirst of Md., Inc., 434 F.3d at 269

(quoting Perini Corp. v. Perini Const., Inc., 915 F.2d 121, 125

(4th Cir. 1990)). Courts consider six factors when evaluating a

mark’s commercial strength: “(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.” Grayson O Co., 856 F.3d at 316.

Plaintiffs did not identify any unsolicited media coverage

of the product or attempts to plagiarize the mark. (See Kelly

Dep. (Doc. 67-3) at 22 (Plaintiffs’ representative testifying he

was not aware of other instances where Aerotek or Allegis Group

wrote demand letters to enforce their trademarks).) Plaintiffs’

corporate representative testified in his deposition that

Plaintiffs spent “substantial sums” in “establishing and

maintaining the Aerotek marks,” through advertising and

promoting, but did not provide an approximate dollar amount of

expenditures. (Id. at 24–26.) The representative pointed to

various ways Aerotek marketed its brand, such as attending job

fairs, presenting at conferences, TV marketing, and social media

marketing. (Id. at 29–33.) Plaintiffs also point to the brand’s

general long-standing success in the staffing industry as an

indicator of its commercial strength. (See Aerotek Quick Facts

(Doc. 67-2) at 2; Pls.’ Answers to Interrogatories (Doc. 67-4)

at 3–5.)

Plaintiffs argue that this court should find Plaintiffs’

marks commercially strong as a matter of law, citing Dewberry

Engineers Inc., 77 F.4th at 283, in support. (Pls.’ Reply (Doc.

76) at 4–5.) In Dewberry Engineers Inc., the Fourth Circuit

upheld the district court’s determination that the plaintiff’s

mark, “Dewberry,” was strong when “Dewberry” was arbitrary and

the plaintiffs offered branding studies that indicated that

“consumers in the real estate industry refer to Dewberry

Engineers simply as ‘Dewberry’ and associate the mark with

knowledge, quality and strong client service.” Id. at 283

(cleaned up). The Fourth Circuit rejected the defendant’s

argument that a factfinder could reject such studies because the

argument was based on mere speculation. Id. Here, however,

Plaintiffs do not offer any type of consumer studies linking the

Aerotek name to its services.

In Variety Stores, Inc. v. Walmart Inc., 852 F. App’x 711

(4th Cir. 2021), the Fourth Circuit found, on appeal of a jury

verdict, that there was sufficient evidence for a reasonable

juror to find commercial strength when the plaintiff: (1)

“showed continuous use of its mark since 1993,”; (2) “spent over

$40 million in ‘advertising expenses that . . . were

attributable to merchandise and services for [the mark over a

period of 19 years];” (3) “sold over $64 million worth of

products with [the mark over a period of 13 years]”; (4)

received one phone call over 20 years ago about licensing or

selling the rights for the mark; and (5) presented evidence that

they had sent two cease and desist letters in the past to

suppliers using names that included the plaintiff’s mark. Id. at

719.

Here, although the procedural posture is different,

Plaintiffs’ have presented significantly less evidence than in

Variety Stores, Inc. Additionally, although Plaintiffs have

stated that they spend a “substantial sum” on advertising, they

do not offer an approximate number or context to evaluate this

claim, thus this court cannot say that the purported

expenditures on advertising weigh in favor of commercial

strength. See Grayson O Co., 856 F.3d at 316 (finding commercial

strength weak on appeal of motion for summary judgment, when

plaintiff’s “sales and advertising expenditures were ‘minimal’

when compared to the ‘multi-billion dollar hair care

industry’”); Low Tide Brewing, LLC, v. Tideland Mgmt. LLC, No.

2:21-cv-0775, 2021 WL 1381123, at *7 (D.S.C. Apr. 12, 2021)

(finding, on motion for preliminary injunction, commercial

strength weak when plaintiff averred that it had spent $75,000

on paid advertising, earned $6 million in revenue since 2016,

and won various awards related to its brewing).

“[V]ague statements” that a plaintiff has “continuously—and

successfully—promoted its products under the [plaintiff’s]

mark,” and has seen an “increase in ‘sales, revenue, and number

of offices’ over several years,” is not sufficient to show

commercial strength. See Glob. Bioprotect LLC v. Viaclean

Techs., LLC, No. 1:20cv553, 2021 WL 848710, at *4 (M.D.N.C. Mar.

5, 2021) (finding plaintiff failed to show commercial strength

on a motion for preliminary injunction).

This court cannot say as a matter of law that the strength

factor weighs in favor of one party over the other at this

stage. It is undisputed that Plaintiffs’ marks are conceptually

strong. On the other hand, Plaintiffs’ evidence of their

commercial strength does not amount to much more than “vague

statements.” Thus, this factor is neutral at this stage. At

best, it tips slightly in favor of Defendants because of the

minimal evidence presented on the commercial strength issue.

2. Similarity of the Two Marks to Consumers

To determine whether two marks are similar, courts “examine

the allegedly infringing use in the context in which it is seen

by the ordinary consumer.” CareFirst of Md., Inc., 434 F.3d at

271.

Defendants do not make any arguments regarding this

particular factor, but rather argue as a whole that there is no

likelihood of confusion. (See generally Defs.’ Resp. (Doc. 68).)

Here, there is no dispute that the marks appearing on Dalton’s

LinkedIn page and on Jobot’s website were identical to the

“AREOTEK” and “ALLEGIS GROUP” marks. Thus, this factor weighs in

favor of Plaintiffs.

3. Similarity of the Services the Marks Identify

With regard to the similarity of the services, the services

in question “need not be identical or in direct competition with

each other. Because confusion may arise even where products are

merely ‘related,’ the court is to consider ‘whether the public

is likely to attribute the products and services to a single

source.’” Dewberry Eng’rs Inc. v. Dewberry Grp., Inc., 77 F.4th

265, 284 (4th Cir. 2023), cert granted, 2024 WL 3089540 (June

24, 2024) (citations omitted).

In Dewberry Engineers Inc., the Fourth Circuit affirmed the

district court’s finding of trademark infringement on summary

judgment. Id. at 288. The court below found that the services

offered by the parties were sufficiently similar when the

plaintiff’s mark was “registered for identifying real estate

development and development related services,” and the defendant

“also engage[d] in real estate development and development

related services.” Dewberry Eng’rs, Inc. v. Dewberry Grp., Inc.,

No. 1:20-cv-00610, 2021 WL 5217016, at *8 (E.D. Va. Aug. 11,

2021). The district court concluded that because the parties

“services are overlapping,” the factor weighed in favor of

likelihood of confusion. Id. On appeal, the defendant argued

that the plaintiff also offered “architectural and engineering

services on a wholly different level of the broad real estate

market than [defendant’s] real estate development business.”

Dewberry Eng’rs, Inc., 77 F.4th at 284. The Fourth Circuit

rejected this argument, finding that there was “plenty of

evidence demonstrating both parties’ use of their ‘Dewberry’

marks in related ways to generate real estate development

business.” Id.

In contrast, in Petro Stopping Centers, L.P. v. James River

Petroleum, Inc., 130 F.3d 88 (4th Cir. 1997), the Fourth Circuit

upheld the district court’s judgment for defendant after a bench

trial where it found no likelihood of confusion. Id. at 95. The

plaintiff was the operator of a full-service automobile and

truck travel center, which offered, among other things:

“maintenance, weighing scales, truck washes, restaurants, retail

stores, fax and ATM machines, showers, laundry, quiet rooms,

game rooms, television rooms, movie theaters, and even barber

shops.” Id. at 95. The defendant operated “unmanned, self-

service filling stations.” Id. at 91. The Fourth Circuit stated:

“Besides the sale of fuel, the two parties’ services and

facilities differ[ed] in virtually every respect.” Id. at 95.

Defendants argue that the services offered here “are not

identical,” because Defendants focus on “permanent placement of

candidates” while Plaintiffs “focus on temporary staffing.”

(Defs.’ Resp. (Doc. 68) at 27.) Defendants also argue that “the

industry on which Dalton focused his final years at Aerotek (the

construction trades) is distinct from his industry focuses at

Jobot (the accounting and architectural industries). There was

thus no overlap between Dalton’s potential clients at Jobot and

at Aerotek.” (Id. at 27–28.)

The facts in this case are more analogous to Dewberry

Engineers Inc. than Petro Stopping Centers. Here, it is not

disputed that both parties are involved in the staffing and

recruiting industry. Jobot’s CEO testified that it provides

recruiting and staffing services to its clients. (Golledge Dep.

(Doc. 67-10) at 6, 15.) Aerotek also provides recruiting and

staffing services. (See Aerotek Quick Facts (Doc. 67-2) at 2.)

Defendants attempt to distinguish Jobot’s recruiting

services by arguing that “Jobot focuses on direct, permanent

placement of candidates.” (See Defs.’ Resp. (Doc. 68) at 6.)

Dalton testified during his deposition that at Aerotek he

focused on “blue collar,” “contractor, project-based,” and

temporary staffing, which was different than the type of

staffing he did at Jobot. (Dalton Dep. (Doc. 70-2) at 6.) Dalton

also testified that he did “direct” and “permanent” placements

at Jobot, while he did “very different” types of placements at

Aerotek. (Dalton Dep. (Doc. 77-1) at 8.)

Dalton additionally testified that at Aerotek he provided

services in the “construction trades, professional office,

manufacturing, [and] engineering” fields, while at Jobot he

provided services in the “[a]ccounting, architectural, some

engineering, [and] construction management”6 fields. (Dalton Dep.

(Doc. 67-11) at 8.) Defendant has identified some differences in

the type of recruiting and staffing services they offer, but the

parties still operate in the same general field of “staffing and

recruiting.” Although this characterization of the industry is

broad, so is the “real estate development” industry, as

described in Dewberry Engineers Inc.

Here, the services offered, although not identical, are

similar. However, viewing the facts in the light most favorable

to Defendants, there may be a genuine dispute of fact on this

issue as the extent of the similarity between the two services

6 Dalton clarified that construction management involves

project managers and schedulers and is not a construction trade.

(Dalton Dep. (Doc. 67-11) at 8.)

offered. Thus, this factor is not appropriate for resolution on

summary judgment.

4. Similarity of the Facilities Used by the Parties

The parties dispute whether this factor is relevant in this

factual context. “When considering the similarity of facilities,

courts are trying to determine if confusion is likely based on

‘how and to whom the respective goods of the parties are sold,’

and the key question is whether ‘both products [are] sold in the

same “channels of trade.”’” Rosetta Stone Ltd. v. Google, Inc.,

676 F.3d 144, 155 (4th Cir. 2012) (quoting 4 J. Thomas

McCarthy, McCarthy on Trademarks and Unfair Competition §

24:51).

The “similarity of facilities” factor generally focuses on

the physical channels and facilities parties use to sell their

goods or services through. See, e.g., CareFirst of Md., Inc.,

434 F.3d at 273 (analyzing appearance and placement of physical

offices); George Sink, P.A. Inj. Lawyers v. George Sink II L.

Firm LLC, 407 F. Supp. 3d 539, 556–57 (D.S.C. 2019) (finding a

similarity of facilities where two law offices practiced the

same type of law in the same city).

In Dewberry Engineers, Inc., the district court found that

the “similarity of facilities” factor did not aid in the

likelihood-of-confusion analysis when both parties were service

providers. 2021 WL 5217016, at *8. The Fourth Circuit agreed

that the similarity of the facilities factor was not applicable

to the facts. Dewberry Engineers Inc., 77 F.4th at 296 n.3

(Quattlebaum, J., concurring in part and dissenting in part).

The facilities factor is likely not relevant here.7 However,

even if this court did analyze it, it would not weigh in favor

of Plaintiffs because Plaintiffs’ cited evidence does not

support their argument. Plaintiffs state that “[a]ll party-

entities provide their services to the same class of clientele

on interactive internet websites[,] . . . social media accounts

(LinkedIn, X, Facebook, and Instagram), and job boards such as

Indeed, Glassdoor, and LinkedIn to recruit candidates and

client.” (Pls.’ Mem. (Doc. 67) at 23.) The cited portions of

Aerotek’s CEO’s deposition does not support this contention, and

neither does Aerotek’s Answers to Defendant’s Interrogatory No.

4. (See Kelly Dep. (Doc. 67-3) at 18–19; Aerotek Answers (Doc.

70-7) at 6 (“Most of Aerotek’s applications come through

Aerotek.com or other job listing websites.”))

7 This court agrees with Plaintiffs that Passport Health,

LLC v. Avance Health System, Inc., 823 F. App’x 141 (4th Cir.

2020) is factually distinct from the case here. That case

involved the defendant’s use of the plaintiff’s mark as an

“AdWord,” which “is a search term that, when entered into a

search engine, generates an advertisement for the purchaser

alongside the search results.” Id. at 143.

5. Similarity in Advertising

When comparing advertising, courts “look at a variety of

factors: the media used, the geographic areas in which

advertising occurs, the appearance of the advertisements, and

the content of the advertisements.” CareFirst of Md., Inc., 434

F.3d at 273.

Defendants do not dispute that both parties advertise their

services through similar media, such as through social media and

staffing industry events. (See, e.g., Golledge Dep. (Doc. 67-10)

at 16, 24.)8 However, Plaintiffs do not present evidence or make

arguments regarding the geographic areas in which advertising

occurs, the appearance of the advertisement, or the content of

the advertisement. (See Pls.’ Mem. (Doc. 67) at 23.) Thus, this

factor only weighs slightly in favor of Plaintiffs.

6. Sophistication of the Consuming Public

Plaintiffs argue this factor is not relevant because the

parties offer their recruiting services “to the general public.”

(Pls.’ Mem. (Doc. 67) at 25.) Defendants argue that this factor

is relevant because the parties offer their services to

8 This factor relates to the party advertising their own

recruiting services. Some of the evidence Plaintiffs cite

appears to be related to how Jobot recruits individuals

internally, for a job as a recruiter at Jobot, (see Pls.’ Mem.

(Doc. 67) at 23 (citing Golledge Dep. (Doc. 67-10) at 5,

discussing how Dalton applied for the recruiter position at

Jobot)), which does not seem to be relevant under this factor.

sophisticated consumers and “[a] sophisticated company paying

thousands of dollars to recruit a new hire would not be confused

by the obvious inadvertent references to Plaintiffs in the

‘About’ section of Dalton’s LinkedIn profile or Jobot biography

page.” (Defs.’ Resp. (Doc. 68) at 24.)

The sophistication of the consumer “will only be relevant

‘when the relevant market is not the public at-large.’” George &

Co. LLC v. Imagination Ent. Ltd., 575 F.3d 383, 400 (4th Cir.

2009). “In cases where services are contracted by

(presumptively) sophisticated clients, an inquiry into

sophistication is warranted.” Dewberry Eng’rs, Inc., 2021 WL

5217016, at *10; see also Sara Lee Corp. v. Kayser-Roth Corp.,

81 F.3d 455, 467 (4th Cir. 1996) (“If the typical consumer in

the relevant market is sophisticated in the use of — or

possesses an expertise regarding — a particular product, such

sophistication or expertise may be pertinent in determining the

likelihood of confusion.”) “[I]n a market with extremely

sophisticated buyers, the likelihood of consumer confusion

cannot be presumed on the basis of the similarity in trade name

alone, particularly without the benefit of trial.” Perini Corp.

v. Perini Constr., Inc., 915 F.2d 121, 128 (4th Cir. 1990).

This court agrees that the relevant consumer base is not

the public at large. A consumer base is the public at large when

the parties are producing a common good, for example. Cf. Sara

Lee Corp., 81 F.3d at 467 (declining to consider sophistication

of the consumer where parties sold pantyhose); George & Co. LLC,

575 F.3d at 400 (declining to consider sophistication of the

consumer where parties sold dice games).

Defendants cite evidence that Jobot’s clients pay them

“thousands of dollars” to recruit new hires for them. (Defs.’

Resp. (Doc. 68) at 24 (citing sealed Exhibit showing client

invoices and amounts paid).) Defendants have produced some

evidence that the relevant consumers here are sophisticated

clients, thus this factor weighs against a likelihood of

confusion and in favor of Defendants. However, Defendants have

not “demonstrated as a matter of law that whatever

sophistication the consumers had necessarily leads to the

inference that it made them more or less likely to be confused.”

See Intercollegiate Women's Lacrosse Coaches Ass'n v. Corrigan

Sports Enters., Inc., 694 F. Supp. 3d 625, 678 (M.D.N.C. 2023).

7. Actual Confusion

Although evidence of actual confusion is not required to

prove trademark infringement, it “is the most important factor

in determining” whether there was a likelihood of confusion. See

RXD Media, LLC v. IP Application Dev. LLC, 986 F.3d 361, 373

(4th Cir. 2021); see also CareFirst of Md., Inc., 434 F.3d at

269 (“[T]he absence of any evidence of actual confusion over a

substantial period of time . . . creates a strong inference that

there is no likelihood of confusion.”) A plaintiff may present

evidence of actual confusion “through either anecdotal or survey

evidence.” RXD Media, LLC, 986 F.3d at 373.

Plaintiffs do not present any evidence of actual confusion

but argue that the factor is “irrelevant” given the weight of

other factors in Plaintiffs’ favor. (Pls.’ Mem. (Doc. 67) at

24.) Although some of the factors weigh in Plaintiffs’ favor,

the evidence is not so one-sided in Plaintiffs’ favor that the

most important factor of actual confusion is irrelevant.

Plaintiffs’ cited cases do not support their argument that

they are entitled to summary judgment despite lacking evidence

of actual confusion. In Variety Stores, Inc. v. Walmart Inc.,

852 F. App’x 711 (4th Cir. 2021), the Fourth Circuit found there

was sufficient evidence to support the jury’s finding that the

defendant infringed the plaintiff’s mark, despite the plaintiff

not presenting its own evidence of actual confusion at trial.

Id. at 720–21. The court merely re-affirmed the notion that the

absence of actual confusion does not necessarily preclude a

party from proving a likelihood of confusion. Id. at 721.

Additionally, the court found there was sufficient evidence for

a reasonable juror to find commercial strength, similarity of

the marks, and bad faith by the defendant. Id. at 719–20. This

case is in a significantly different procedural posture, and

this court does not find that Plaintiffs presented evidence of

significant commercial strength, or any evidence of bad faith.

However, because actual confusion is not a required element

of a trademark infringement claim, this court is not required to

grant summary judgment sua sponte in favor of Defendants.

Plaintiffs have at least presented some evidence of the strength

of their marks, similarity of the marks used by Defendants, and

similarity of the services the parties offer. When viewing the

facts in light most favorable to Plaintiffs, this court cannot

say that no reasonable juror would not likely be confused.

In sum, summary judgment for Plaintiffs is not appropriate

because Plaintiffs have fallen short of their burden to show a

likelihood of confusion. Thus, this court will deny Plaintiffs’

motion for partial summary judgment. Additionally, for the

reasons stated above, this court will deny Defendants’ request

for summary judgment sua sponte.

B. Defendants’ Motion for Summary Judgment

Defendants argue they are entitled to summary judgment

because Plaintiffs have not produced evidence that they are

entitled to any of the relief they seek. (Defs.’ Mem. (Doc. 63)

at 17.) Plaintiffs respond that they have produced evidence of

Defendants’ profits, a genuine issue of material fact exists as

to whether this court should issue a permanent injunction and as

to Plaintiffs’ entitlement to attorneys’ fees, and,

alternatively, Plaintiffs may be entitled to nominal damages.

(Pls.’ Response (Doc. 69) at 12, 18, 22, 24.)

“In a successful trademark infringement action, the Lanham

Act entitles a plaintiff ‘to recover (1) [the] defendant’s

profits, (2) any damages sustained by the plaintiff, and (3) the

costs of the action.’” Dewberry Eng’rs Inc., 77 F.4th at 289

(quoting 15 U.S.C. § 1117(a)).

1. Actual Damages

In their response, Plaintiffs do not argue they are

entitled to any actual damages. (See generally Pls.’ Resp. (Doc.

69).) Although Defendants did not explicitly argue that

Plaintiffs are not entitled to any actual damages, they do state

that it is “undisputed that Plaintiffs seek solely equitable

remedies,” (Defs.’ Mem. (Doc. 63) at 17), and Plaintiffs do not

dispute this.

Additionally, Defendants state in a footnote: “Recovery

under N.C. Gen. Stat. § 75-1.1 is likewise limited to situations

where a plaintiff can prove actual injury as a direct and

proximate result of the alleged violation.” (Defs.’ Mem. (Doc.

63) at 19 n.3.) Plaintiffs respond by arguing that “North

Carolina recognizes the remedy of disgorgement just as the

Lanham Act does,” but do not argue that they can show actual

injury or damages caused by the violation. (See Pls.’ Resp.

(Doc. 69) at 18.)

Although courts “have held that a violation of the Lanham

Act necessarily encompasses a violation of North Carolina’s

UDTPA,” a plaintiff bringing a claim under UDTPA must still show

that “(1) defendants committed an unfair or deceptive act or

practice, (2) in or affecting commerce and (3) plaintiff was

injured as a result.” Design Res., Inc. v. Leather Indus. of

Am., No. 1:10CV157, 2014 WL 4159991, at *13 (M.D.N.C. Aug. 19,

2014) (quoting Phelps-Dickson Builders, L.L.C. v. Amerimann

Partners, 172 N.C. App. 427, 439, 617 S.E.2d 664, 671 (2005)).9

Here, it is not clear that a non-willful infringement would

constitute an unfair or deceptive act under the UDTPA, nor is it

clear that Plaintiffs have shown they were injured or suffered

actual damages as a result of the alleged infringement. However,

the parties’ discussion of the UDTPA claim is limited to the two

9 Even if the remedy for a violation of N.C. Gen. Stat. 75-

1.1 would be disgorgement of profits, as Plaintiffs argue, (see

Pls.’ Resp. (Doc. 69) at 18 (citing GE Betz, Inc. v. Conrad, 231

N.C. App. 214, 238, 752 S.E.2d 634, 652 (2013)), that does not

negate that fact that in order to show a violation in the first

place, Plaintiffs must demonstrate the unfair or deceptive act

“proximately caus[ed] actual injury to [the plaintiff].” GE

Betz, Inc., 231 N.C. App. at 236, 752 S.E.2d at 650.

sentences stated above, and this issue was not fully briefed.

Although Plaintiffs alleged in their Complaint that they

suffered harm to their goodwill, reputation, and loss of

revenues and profits, (see Verified Compl. (Doc. 1) at 13–14),

it seems Plaintiffs have not offered any evidence of this.

However, unlike a UDTPA claim, a claim for trademark

infringement under the Lanham Act does not require proof of

actual damage or injury. 4 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 30:57 (5th ed. 2024).

Defendants’ arguments that they are entitled to summary judgment

because Plaintiffs cannot show they are entitled to any

equitable remedies are premature and cannot be decided before

the issue of liability is reached.

2. Disgorgement of Profits

In assessing profits the plaintiff shall be required

to prove defendant’s sales only; defendant must prove

all elements of cost or deduction claimed. . . . If

the court shall find that the amount of the recovery

based on profits is either inadequate or excessive

the court may in its discretion enter judgment for

such sum as the court shall find to be just, according

to the circumstances of the case. Such sum . . . shall

constitute compensation and not a penalty. The court

in exceptional cases may award reasonable attorney

fees to the prevailing party.

15 U.S.C. § 1117(a).

The Fourth Circuit has “outlined six equitable factors for

district courts to consider in connection with the disgorgement-

of-profits remedy for infringement under 15 U.S.C. § 1117(a).”

Dewberry Eng’rs Inc., 77 F.4th at 289. Those factors are:

(1) whether the defendant had the intent to confuse

or deceive, (2) whether sales have been diverted, (3)

the adequacy of other remedies, (4) any unreasonable

delay by the plaintiff in asserting his rights, (5)

the public interest in making the misconduct

unprofitable, and (6) whether it is a case of palming

off.

Id. (quoting Synergistic Int’l., LLC v. Korman, 470 F.3d 162,

175 (4th Cir. 2006)). Defendants do not argue that Plaintiffs

are not entitled to disgorgement of profits based on these

factors, but argue that this court “need not reach that issue

because profits are simply unavailable in this case; there are

no profits attributable to the alleged infringement to

disgorge.” (Defs.’ Mem. (Doc. 63) at 18 n.2.)

A trademark infringement plaintiff “is not entitled to

profits demonstrably not attributable to the unlawful use of his

mark.” Dewberry Eng’rs Inc., 77 F.4th at 292 (quoting Mishawaka

Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 206,

(1942)). However, the defendant has the burden to demonstrate

its profits are not so attributable. See Id. In Dewberry

Engineers Inc., the Fourth Circuit held the district court did

not abuse its discretion in finding profit disgorgement

appropriate when the plaintiff’s expert opined that the

defendant’s expert “did nothing to clearly demonstrate that

there was no connection between the infringing materials and its

revenues,” and the district court’s factual finding that there

was a connection was “not clearly erroneous.” Id.

Defendants argue that this court should grant summary

judgment because Plaintiffs have not demonstrated attribution.

(Defs.’ Mem. (Doc. 63) at 19.) However, as Dewberry Engineers

Inc. explains, the burden is clearly on the defendant to show

profits were not attributable to the alleged infringement. See

Dewberry Eng’rs Inc., 77 F.4th at 292; see also Ga.-Pac.

Consumer Prods. LP v. von Drehle Corp., 781 F.3d 710, 721 (4th

Cir. 2015) (Under the Lanham Act, a plaintiff may recover

profits “based only on proof of the defendant’s sales, subject

to a specific adjustment when necessary to compensate for an

inadequate or an excessive award of profits.”) Defendants raise

many convincing arguments that any profits are in fact not

attributable to the alleged infringing conduct, including in

their reply, (see Defs.’ Reply (Doc. 73) at 7–11), however, as

explained below, this issue is not appropriate to resolve at

summary judgment given there is a genuine dispute of material

fact over liability.

Summary judgment for Defendants based on the argument that

Plaintiffs cannot show they are entitled to any relief is not

appropriate because the issue of liability has not been resolved

yet. Defendants’ cited cases dealing with this issue were

decided after the defendant was found liable for trademark

infringement, either at the summary judgment stage or after

trial. See, e.g., Dewberry Engineers Inc., 77 F.4th at 289

(affirming grant of summary judgment); Quick Techs. v. Sage Grp.

PLC, 313 F.3d 338, 350 (5th Cir. 2002) (affirming jury verdict);

Ill. Tool Works, Inc. v. Rust-Oleum Corp., 955 F.3d 512, 515–16

(5th Cir. 2020) (holding insufficient evidence that defendant’s

profits were attributable to the alleged infringement to warrant

disgorgement of profits after a jury verdict in plaintiff’s

favor); Globefill Inc. v. Elements Spirits, Inc., 756 F. App’x

764, 765 (9th Cir. 2019) (affirming district court following a

jury verdict finding defendant liable); Lincoln Diagnostics,

Inc. v. Panatrex, Inc., No. 07-CV-2077, 2009 WL 3010840, at *1

(C.D. Ill. Sept. 16, 2009) (declining to award disgorgement of

profits following a bench trial).

Defendants also cite a case where a district court

explicitly declined to rule at summary judgment that the

plaintiff is not entitled to relief before the issue of

liability was resolved. See, e.g., True Homes LLC v. Clayton

Homes, Inc., No. 3:18-CV-00345, 2020 WL 6528861, at *9 (W.D.N.C.

Nov. 5, 2020) (“Defendants ask the Court to rule at summary

judgment that [the plaintiff] is not entitled to monetary

damages in any amount. The Court declines that invitation and

will wait to address the amount of damages or profits to which

Plaintiff is entitled (without directing that issue to the jury)

after all the evidence has been presented and the jury has

determined if trademark infringement has been established.”) In

dmarcian, Inc. v. DMARC Advisor BV, No. 1:21-cv-00067, 2024 WL

1916715 (W.D.N.C. May 1, 2024), the court rejected a similar

attempt by the defendant. Id. at *20 (“The Defendant also moves

for summary judgment based on the Plaintiff's purported failure

to ‘disclose cognizable evidence of damages.’ The Court declines

to address the sufficiency of the Plaintiff's evidence regarding

damages in the context of summary judgment. Such issues are more

appropriately addressed in a motion in limine or at trial.”)

Defendants have not cited, nor has this court been able to

identify, any case where a district court granted summary

judgment for a defendant solely because the plaintiff failed to

establish that they are entitled to a disgorgement of profits,

without reaching the issue of liability first. Moreover, this

court must consider the equitable factors identified in

Synergistic before deciding whether to grant disgorgement of

profits or not. See Dewberry Eng’rs Inc., 77 F.4th at 289.

Defendants did not argue this issue. For the reasons above, this

court will deny Defendants’ motion for summary judgment on the

issue of profit disgorgement.

3. Permanent Injunction

“The Lanham Act vests courts with the ‘power to grant

injunctions, according to the principles of equity and upon such

terms as the court may deem reasonable, to prevent’ trademark

infringement.” Dewberry Eng’rs Inc., 77 F.4th at 288 (quoting 15

U.S.C. § 1116(a)).

A plaintiff seeking a permanent injunction must

demonstrate: “(1) that it has suffered an irreparable injury;

(2) that remedies available at law, such as monetary damages,

are inadequate to compensate for that injury; (3) that,

considering the balance of hardships between the plaintiff and

defendant, a remedy in equity is warranted; and (4) that the

public interest would not be disserved by a permanent

injunction.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,

391 (2006).

Defendants argue that Plaintiffs are not entitled to a

permanent injunction because “[t]here can be no reasonable

expectation that Defendants will resume the infringement alleged

in this case.” (Defs.’ Mem. (Doc. 63) at 22.) However, as stated

above, deciding the issue of whether Plaintiffs are entitled to

a permanent injunction is not appropriate before liability has

been resolved. Defendants cite cases dealing with this issue

after a finding of trademark infringement. See Lyons P’ship L.P.

v. Morris Costumes, Inc., 243 F.3d 789, 806 (4th Cir. 2001)

(reversing district court’s ruling denying defendant an

injunction following bench trial); Gucci Am., Inc. v. Daffy’s,

Inc., 354 F.3d 228, 243 (3rd Cir. 2003) (affirming district

court’s denial of request for permanent injunction after

district court found defendant had infringed plaintiff’s

trademark on summary judgment); Chi. Mercantile Exch. Inc. v.

Ice Clear US, Inc., No. 18 C 1376, 2021 WL 3630091, at *31 (N.D.

Ill. Aug. 17, 2021) (denying request for permanent injunction

following a finding of trademark infringement).

In tagTrends, Inc. v. Nordstrom, Inc., No. SACV 13-00563,

2014 WL 12561604 (C.D. Cal. Sept. 30, 2014), the court granted

summary judgment in favor of the defendant because it found the

plaintiff’s request for a permanent injunction was moot when the

defendant removed the allegedly infringing conduct as soon as it

become aware of it and the defendant expressed that it did not

have any intention to re-engage in the conduct in the future.

Id. at *3–4. However, the court went on to hold that, even

though the defendant was entitled to summary judgment because it

could not show it was entitled to any relief, the defendant was

also entitled to summary judgment because the plaintiff could

not show the defendant’s actions constituted trademark

infringement under the Lanham Act. Id. at *6. Thus, the facts

here are distinct because Defendants have not shown that they

are entitled to summary judgment on the issue of liability as

well as on the issue of relief.

This court has not resolved the issue of whether Defendants

have in fact violated the Lanham Act and committed trademark

infringement, thus, this court will not grant summary judgment

for defendants based solely on the issue of whether Plaintiffs

would be entitled to a permanent injunction or not.

4. Attorneys’ Fees

Under the Lanham Act, a court may, in its discretion, award

attorney’s fees to the prevailing party in “exceptional cases.”

15 U.S.C. § 1117(a).

[A] district court may find a case “exceptional” and

therefore award attorneys fees to the prevailing

party under § 1117(a) when it determines, in light of

the totality of the circumstances, that (1) there is

an unusual discrepancy in the merits of the positions

taken by the parties, based on the non-prevailing

party's position as either frivolous or objectively

unreasonable; (2) the non-prevailing party has

litigated the case in an unreasonable manner; or (3)

there is otherwise the need in particular

circumstances to advance considerations of

compensation and deterrence.

Ga.-Pac. Consumer Prods. LP, 781 F.3d at 721 (internal quotation

marks and citations omitted).

Plaintiffs argue they are entitled to attorneys’ fees

because “[t]his is an open-and-shut trademark infringement

case,” and Defendants “take objectively unreasonable positions.”

(Pls.’ Resp. (Doc. 69) at 22.) While it is highly unlikely that

Plaintiffs would be able to show that they would be entitled to

attorneys’ fees if they prevailed, this issue is likewise not

ripe for decision prior to determining liability. Plaintiffs

have not identified any case where this issue was resolved prior

to the issue of liability.

5. Nominal Damages and Costs

Plaintiffs argue that even if they are not entitled to

other relief, they would at least be entitled to nominal damages

and costs if they prevail. (Pls.’ Resp. (Doc. 69) at 24–25.)

Defendants argue nominal damages are not available even if

Plaintiffs prevailed.10 (Defs.’ Reply (Doc. 73) at 12–13.)

In Lumber Liquidators, Inc. v. Stone Mountain Carpet Mills,

Inc., No. 3:08CV573, 2009 WL 10689508 (E.D. Va. Aug. 3, 2009),

10 Defendants do not appear to dispute that costs would be

available to Plaintiffs if they prevailed: “Plaintiffs also

argue that their claim to costs of suit survives Defendants’

motion. If the Court agrees, and if any of Plaintiffs’ claims

survive summary judgment on liability, Defendants respectfully

request that the Court (1) rule that Plaintiffs are as a matter

of law not entitled to disgorgement, injunctive relief,

attorneys’ fees, or nominal damages; and (2) hold a bench trial

on liability, with costs of suit being the only available

remedy.” (Defs.’ Reply (Doc. 73) at 13 n.8.)

the district court granted the defendant’s motion for judgment

as a matter of law on the issue of the plaintiff’s damages after

the plaintiff presented its case in chief to a jury during

trial. Id. at *1–2. The court found that, even assuming the

plaintiff could prove a violation of the Lanham Act, the

plaintiff did not present any evidence of actual damages, or

evidence of defendant’s sales, thus a reasonable jury could not

award the plaintiff actual damages or the defendant’s profits as

compensation for the alleged infringement. Id. at *2. The court

noted that the plaintiff’s “failure to demonstrate that it

suffered actual damages [did] not, however, preclude an award of

injunctive relief,” if the plaintiff went on to demonstrate

infringement. Id.

The plaintiff then filed a motion for reconsideration,

arguing it could be entitled to nominal damages if it was to

succeed on its infringement claim under the Lanham Act. See

Lumber Liquidators, Inc. v. Stone Mountain Carpet Mills, Inc.,

No. 3:08CV573, 2009 WL 2876881, at *1 (E.D. Va. Sept. 2, 2009).

The district court denied the motion, reasoning that Fourth

Circuit precedent required a plaintiff to show actual damages in

order to recover damages under the Lanham Act, and thus nominal

damages were not available. Id. (citing Xoom, Inc. v. Imageline,

Inc., 323 F.3d 279, 286, abrogated on other grounds by Reed

Elsevier, Inc. v. Muchnick, 599 U.S. 154 (2010)).

In BSN Medical, Inc. v. Parker Medical Associates LLC, No.

3:09cv15, 2011 WL 5509030 (W.D.N.C. Nov. 17, 2011), the court

declined to award summary judgment based on the argument that

the party failed to offer sufficient proof of damages because

either party could prove nominal damages. Id. at *11. However,

the plaintiff in that case brought multiple claims along with

its Lanham Act claims, including a breach of contract claim and

common law unfair competition or trade practices claim, where

nominal damages were more clearly available. Id. The BSN

Medical, Inc. court did not consider whether nominal damages are

available solely under the Lanham Act.

In Selee Corp. v. McDanel Advanced Ceramic Technologies,

LLC, No. 1:15-cv-00129, 2017 WL 3122565, at *5 (W.D.N.C. July

21, 2017), the court, on a motion for attorney’s fees, noted the

jury’s verdict: “The jury found that the Defendant's

infringement, although willful, resulted in no adverse effect

whatsoever to the Plaintiff, as shown by its nominal damage

award of one dollar.” Id. at *5. It does not appear that the

defendant in that case argued that nominal damages were not

available for trademark infringement under the Lanham Act.

The cases Plaintiffs cite in support either do not directly

address the issue or hold that nominal damages are available for

at least some other common law claims. Regardless, because this

issue is not ripe, nor is it dispositive of Defendants’ motion

for summary judgment, this court will defer deciding this issue

until after liability has been resolved.

In conclusion, this court will deny Defendants’ motion for

summary judgment. Although Defendants raise strong arguments

against awarding any type of relief, these issues cannot be

resolved at summary judgment before the issue of liability has

been resolved.

C. Defendants’ Motion to Withdraw Jury Demand

Defendants request that this court permit them to withdraw

their jury demand over Plaintiffs’ objection. (Defs.’ Opp. Mot.

to Withdraw Jury Demand (Doc. 78).) Plaintiffs oppose this

request. (Pls.’ Resp. (Doc. 80).) Plaintiffs argue that they

“pleaded actual damages in their Complaint and have never

conceded that they did not suffer actual damages as a result of

Defendants’ infringement.” (Id. at 3.) Alternatively, Plaintiffs

request that this court should first rule on the parties’ cross-

motions for summary judgment “to determine the nature and scope

of the trial,” before determining whether Plaintiffs have a

right to a jury trial. (Id. at 4.)

Plaintiffs did not request a jury trial in their Complaint.

(See generally Verified Compl. (Doc. 1).) Defendants requested

“a trial by jury on all issues so triable” in their answers.

(See Answers (Docs. 14, 15).) Defendants now seek to withdraw

their jury demand because Plaintiffs “admit that they only seek”

equitable remedies. (See Defs.’ Mem. (Doc. 79) at 2.)

“A proper demand [for a jury trial] may be withdrawn only

if the parties consent.” Fed. R. Civ. P. 38(d). When either

party has demanded a jury trial, a jury trial on all issues so

demanded is required unless “the court, on motion or on its own,

finds that on some or all of those issues there is no federal

right to a jury trial.” Fed. R. Civ. P. 39(a)(2). “Regarding

withdrawal of a jury demand, consent of the other parties is

required under Rule 38(d) only where jury trial is a matter of

right.” Martin v. Bimbo Foods Bakeries Distrib., Inc., No. 5:14-

CV-17, 2016 WL 6459609, at *1 (E.D.N.C. Oct. 31, 2016) (citing

Kramer v. Bank of Am. Secs., LLC, 355 F.3d 961, 968 (7th Cir.

2004)).

“[A]lmost all courts have held that there is no right to

trial by jury if the only monetary remedy the trademark owner

seeks is an accounting of the alleged infringer's profits.” 5 J.

Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §

32:124 (5th ed. 2024). In Monster Daddy, LLC v. Monster Cable

Products, Inc., No. 6:10-1170, 2013 WL 3337828 (D.S.C. July 2,

2013), the district court held that a plaintiff was not entitled

to a jury trial when the plaintiff admittedly only sought

recovery of the defendant’s profits under the Lanham Act and

attorney’s fees. Id. at *17. Similarly, in Ciphertrust, Inc.

v. Trusecure Corp., No. 1:04-cv-1232, 2005 U.S. Dist. LEXIS

46322 (E.D. Va. Nov. 28, 2005), the district court held that a

plaintiff was not entitled to a jury trial when the plaintiff

conceded it could not prove actual damages on its trademark

infringement claim, and the only damages available were

equitable in nature. Id. at *69–70.

As explained above, although Defendants did not explicitly

argue at summary judgment that Plaintiffs are not entitled to

any actual damages, Defendants did state that it is “undisputed

that Plaintiffs seek solely equitable remedies,” (Defs.’ Mem.

(Doc. 63) at 17), and Plaintiffs did not dispute that point.

Here, it does not seem that Plaintiffs are arguing that they

suffered actual damages as a result of the alleged infringement.

Rather, Plaintiffs argue that recovery of a defendant’s profits

may be considered legal in nature when the profits “are a mere

proxy for actual damages.” (Pls.’ Resp. (Doc. 80) at 3).)

In some trademark infringement cases, a “plaintiff’s

damages may be measured by the profits lost by plaintiff because

of defendant’s infringement.” 4 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 30:79 (5th ed. 2024). Under

this theory, a plaintiff has the burden to prove causation

between its lost sales and the defendant’s infringement. Id. In

some cases where parties are in direct competition, the profits

made by a defendant can be used as a rough estimate of a

plaintiff’s lost sales. Id. “The theory is that every sale made

by the infringer was a sale that would have been made by

plaintiff.” Id.

Putting aside the fact that Plaintiffs have not identified

any case in this circuit implementing this theory of damages,

Plaintiffs clearly state that they are seeking Defendants’

profits under a theory of disgorgement, not as a proxy for loss

of Plaintiffs’ own sales. (See Pls.’ Resp. (Doc. 80) at 3

(“Plaintiffs seek disgorgement of Defendants’ profits . . .

.”).) The very case that Plaintiffs cite in support makes clear

the distinction between seeking a defendant’s profits under a

disgorgement theory versus seeking a defendant’s profits as a

measure of the plaintiff’s own damages. See F21 OpCo, L v.

Airwair Int’l Ltd., No. 2:22-cv-01684, 2023 WL 2626368, at *2

(C.D. Cal. Feb. 17, 2023).

Plaintiffs have made clear through their briefing that they

are only seeking a disgorgement of Defendants’ profits, a

permanent injunction, and potential attorneys’ fees. These are

all equitable remedies and thus no right to a jury trial

attaches. For these reasons, this court will grant Defendants’

Motion to Withdraw Jury Demand.

III. CONCLUSION

For the foregoing reasons, this court will deny both

parties’ motions for summary judgment and grant Defendants’

motion to withdraw jury demand.

IT IS THEREFORE ORDERED that Defendants’ Motion for Summary

Judgment on Plaintiffs’ Requested Relief, (Doc. 62), is DENIED.

IT IS FURTHER ORDERED that Plaintiffs’ Motion for Partial

Summary Judgment, (Doc. 66), is DENIED.

IT IS FURTER ORDERED that Defendants’ Opposed Motion to

Withdraw Jury Demand, (Doc. 78), is GRANTED.

This the 30th day of September, 2024.

WeMlinwe OBlee

United States District Tyce

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