Rampart Resources,
Inc. v. Rampart/Wurth Holding, Inc., 2024 WL 195999, No. 23-6895 (E.D. La. Jan.
18, 2024)
The court, grappling
with the Fifth Circuit’s rather inconsistent law on misdirected communications,
denies a preliminary injunction (subject easily guessable by party names).
Rampart Resources
was founded in 1989 in Baton Rouge. It provides land and real estate services
including right-of-way acquisition, servitudes, real estate brokerage,
permitting, land services, and property management across several industries
including utilities, oil and gas, renewable energy, and public works. Most of its
current business involves land use issues but does not involve any property
management, though it previously managed residential properties for ExxonMobil
and multifamily apartment units for the City of Baton Rouge. Its website
states: “Our core services include right-of-way acquisition, surveying,
permitting, project planning, and E&P land rights management.” Its clients
are predominately corporate entities and municipalities. Nonetheless, as part
of its business, Rampart Resources regularly interacts with non-client
individual landowners to assist its clients in acquiring land. It has a
registration for its logo, comprising stylized wording and a graphic of roads.
(Note that the current website seems to have removed “resources” from the logo,
which I expect is a big enough change that a new registration ought to be required.)
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| registered RAMPART RESOURCES mark |
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| today’s website |
Rampart/Wurth
Holding is a Louisiana-based real estate company offering: (1) multifamily
management services for multifamily units; (2) commercial management services;
and (3) single-family and small multifamily management and maintenance services,
handled respectively by (1) Rampart Multifamily Management; (2) Rampart
Commercial Management; and (3) Wurth Real Estate Services. Its principal
clients are owners of commercial and residential real estate, but R/W also
occasionally interacts with the residents and tenants of their clients. Its
services include rent collection, resident/tenant placement and screening,
property maintenance and repairs, property inspections, and eviction services.
Its website states: “Property Management is All We Do.” It adopted the
Rampart/Wurth branding in 2023. This lawsuit followed after a FedEx delivery
driver told Rampart Resources’ president that “another Rampart” had recently
opened in Baton Rouge and that she had mistakenly gone to Rampart/Wurth’s
office instead of Rampart Resources.
Several Rampart Resources employees told the president that they had received seven
telephone calls in September and October 2023 from individuals attempting to
contact Rampart/Wurth. The calls generally follow the same pattern: a call asks
about services that Rampart Resources doesn’t provide; the caller is informed
of their mistake. One caller stated that Jefferson Lakes Apartments had given
her Rampart Resources’ phone number to refund a deposit.
Rampart Resources’
mark was legally protected and arbitrary. The evidence didn’t (at this stage) support
a finding of geographic descriptiveness based on the prominence of Rampart
Street in New Orleans, where Rampart Resources was not based. “Unlike, say, ‘Carondelet,’
‘Tchoupitoulas,’ or a host of other well-known New Orleans streets, ‘Rampart’
has no inherent connection to New Orleans or to any specific geographical
feature.”
Strength of mark:
weighed in plaintiff’s favor, though not heavily so, given the arbitrariness of
the mark balanced against substantial third-party use of “Rampart,” albeit
perhaps only one in real estate. “Plaintiff’s sponsorship of certain events and
promotion of branded items does little on its own to counteract Defendant’s
evidence of widespread usage of the key portion of Plaintiff’s mark.”
Similarity: Defendant
used “a key design with its branding of Rampart Multifamily Management and
Rampart Commercial Management,” along with an unchallenged key design with two
Rs and no other text. The only similarity between the two marks was the term
“Rampart.” That was not substantial given the other elements of the marks. The
total effect of the marks was dissimilar, favoring Rampart/Wurth.
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| not sure this is exactly what is litigated but it’s what I found |
Similarity of
services: Where the respective services “are noncompeting, the [possible] confusion
at issue is one of sponsorship, affiliation, or connection.” “The danger of
affiliation or sponsorship confusion increases when the junior user’s services
are in a market that is one into which the senior user would naturally expand.”
Importantly, “[t]he actual intent of the senior user to expand is not
particularly probative of whether the junior user’s market is one into which
the senior user would naturally expand…Consumer perception is the controlling
factor.”
Rampart/Wurth
pointed out that Rampart Resources didn’t even bother to register its mark for “property
management.” There was only a “minor overlap” in services. Property management
constituted “only a small and infrequent portion of Plaintiff’s business.” Still,
an expansion into the property management market was plausible, especially
since Rampart Resources had done it in the past. “Moreover, the diverse array
of services offered by the Plaintiff increases the likelihood of confusion
among the consuming public.” This somewhat weighed in favor of finding
confusion.
Similarity between
parties’ consumers/clients: There was minimal overlap. “Plaintiff’s clientele
includes municipal and corporate entities, particularly those in the utilities,
oil and gas, renewable energy, and public works sectors. Meanwhile, Defendant’s
customers are real estate developers and owners of commercial and multifamily
property.” It was plausible, nonetheless, that there was some overlap.
Advertising
campaigns: Rampart Resources alleged that it promotes its services primarily
through its website, its “sponsorship of prominent charity and other events,”
through branded marketing items such as shirts, cups, jackets, banners, signage
at its offices, fliers, and folders, and, on occasion, print advertising. Both
parties are findable online, and “both parties indicated that word-of-mouth
advertising among their respective customer bases is perhaps their strongest
form of advertising.” This factor wasn’t particularly probative, even though
reliance on word-of-mouth might “diminish the importance of the dissimilarity
between the trademarks.” Without much evidence, this factor was neutral.
Intent: There was no
evidence of bad faith, making this factor neutral. Failing to stop use after
receiving a C&D doesn’t mean bad faith.
Actual confusion: “[T]the
Fifth Circuit requires more substantial evidence of confusion where the
confusion does not result in swayed purchases,” and this should be weighed
against the parties’ total sales volume. “[I]solated instances of confusion
about the affiliation of two companies that do not result in redirected
business are not enough to sustain a finding of actual confusion.”
The evidence here
was entirely anecdotal. The FedEx driver wasn’t a customer/potential customer
of either party and was only “briefly confused” about the names. “Proof of
actual confusion requires more. For the seven phone calls, since they weren’t
about overlapping services, Rampart Resources’ employees quickly identified the
mistake. Maybe they were even calling about Rampart Apartments; there was
limited evidence that they conflated the defendant with the plaintiff.
Even assuming they
were all trying to reach Rampart/Wurth, this wasn’t particularly weighty, given
the lack of evidence that actual customers were confused or swayed into doing
business with Rampart/Wurth. Rampart/Wurth averred that it hadn’t received any
mistaken inquiries or questions about association. Thus, the examples showed only
a “fleeting mix-up of names” by persons who weren’t direct customers of either
party. Also, when weighed against the volume of business conducted by the
parties, the weight of seven phone calls was lessened. “[B]oth parties operate
in several states, provide complex services to sophisticated clients, and
interact with a wide swath of the public. Moreover, the Defendant claims to
manage over 10,000 multifamily units and over eighteen million square feet of
commercial real estate space.”
After all that, the
court still weighed this factor slightly in Rampart Resources’ favor.
Consumer care: High,
given the expense and sophistication of the relevant transactions. Rampart
Resources argued that it “routinely works with property owners who are
laypersons.” But none of these allegedly “unsophisticated” persons were actual
clients or customers; rather they are persons whom Rampart Resources interacts
with “in order for [its] clients to successfully acquire land.” This factor
would become moot if this argument were accepted, given that “nearly every
company, no matter how sophisticated their customers are, necessarily interacts
in some capacity with unsophisticated members of the public.” The factor was
the care exercised by potential purchasers, not the care exercised by anyone who
interacts with the plaintiff. (This argument would be bolstered if the court
were to talk about the reason we care about potential purchasers
and not random people—the potential for harm.) Plus, even if landowners are
unsophisticated, there was no evidence that they had been confused, even
fleetingly.
Ultimately, the
plaintiff showed only a “mere possibility” of confusion, not a “probability.” “The
Court finds it is unlikely that the parties’ sophisticated clientele would
confuse Plaintiff’s mark with that of the Defendant, especially given the
limited similarity of the marks.”
from Blogger http://tushnet.blogspot.com/2024/01/mistaken-calls-from-nonpurchasers-have.html
Rebecca Tushnet 