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Excel Roofing, Inc. v. Excel Roofing and Construction, Inc.

United States District Court, D. Colorado

March 28, 2014

EXCEL ROOFING, INC., a Colorado Corporation, Plaintiff,
v.
EXCEL ROOFING AND CONSTRUCTION, INC., a Colorado corporation, Defendant.

ORDER

WILEY Y. DANIEL, Senior District Judge.

THIS MATTER is before the Court on Excel Roofing, Inc.'s Motion For Default Judgment And Permanent Injunction [ECF No. 18] and Motion For Ruling On Plaintiff's Motion For Default Judgment And Permanent Injunction [ECF No. 19]. For the reasons stated below, the motions [ECF Nos. 18 & 19] are GRANTED.

BACKGROUND

On January 25, 2013, plaintiff, Excel Roofing, Inc. ("Excel Roofing"), filed this suit against defendant, Excel Roofing and Construction, Inc. ("Excel RC"), alleging the following claims arising from Excel RC's alleged unlawful use of Excel Roofing's registered trademark: (1) trademark infringement under the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a); (2) false designation of origin, passing off and false advertising under the Lanham Act, 15 U.S.C. § 1125(a); (3) dilution of a famous mark under the Lanham Act, 15 U.S.C. § 1125(c); (4) unfair competition under Colorado state law; and, (5) deceptive trade practices under the Colorado Consumer Protection Act, COLORADO REVISED STATUTES § 6-1-101, et seq. Excel Roofing also requests that I permanently enjoin Excel RC from any use of the "EXCEL ROOFING" registered trademark.

Excel Roofing is "engaged in the business of residential roof installation and repair along the Colorado and Wyoming market..." ECF No. 1, p. 2, ¶ 6. Excel Roofing uses the EXCEL ROOFING registered trademark to aggressively market its services to the Colorado and Wyoming market. Due to such marketing, Excel Roofing "has developed substantial goodwill" and consumers "associate the Trademark with a single source of high quality" roofing and repair. Id. at p. 3, ¶ 7.

Excel RC also performs roof installation and repair. Excel RC's customers inadvertently alerted Excel Roofing that Excel RC was and is using the EXCEL ROOFING trademark. Certain Excel RC customers called Excel Roofing with general questions about service and warranties. At some point during the conversations, it became clear that the callers actually purchased services from Excel RC, not Excel Roofing. Excel Roofing alleges that there were over 20 such phone call conversations. One caller informed Excel Roofing that she had in her hand a business card that bore the EXCEL ROOFING trademark. Another caller stated that he intended to contract with Excel Roofing rather than Excel RC for his roof work. Excel Roofing also alleges that Excel RC's website is "substantially similar in nature and appearance" to its own website. ECF No. 1, p. 4, ¶ 11.

Most notably, in July 2012, a vehicle bearing the EXCEL ROOFING trademark was involved in a hit and run accident. The victim reported the accident to "The Referral List, " which is a consumer advocate program to which Excel Roofing has been a member for 15 years. Upon investigation, the vehicle bearing the EXCEL ROOFING trademark was neither owned nor operated by Excel Roofing. Excel Roofing states that this is a prime example of how Excel RC's illegal use of the EXCEL ROOFING trademark damages the reputation and goodwill associated with Excel Roofing.

In response to the above mentioned incidents, Excel Roofing filed this suit against Excel RC on January 25, 2013. On April 29, 2013, the Clerk of Court entered an Entry Of Default [ECF No. 16] as to Excel RC because it had neither answered the Complaint [ECF No. 1] pursuant to the time limitations under the FEDERAL RULES of CIVIL PROCEDURE nor made an appearance in this action. On June 13, 2013, Excel Roofing filed a Motion For Default Judgment And Permanent Injunction [ECF No. 18]. On December 6, 2013, Excel Roofing filed a Motion For Ruling On Plaintiff's Motion For Default Judgment And Permanent Injunction [ECF No. 19]. As of Friday, March 28, 2014, Excel RC has neither answered the Complaint [ECF No. 1] nor responded to any of Excel Roofing's motions [ECF Nos. 18 & 19].

ANALYSIS

A. Findings of Fact and Conclusions of Law

Upon review of the case file, I find that:

1. On March 20, 2013, Magistrate Judge Shaffer issued an Order [ECF No. 9] that allowed Excel RC to be served by substituted service via mail. The Order [ECF No. 9] provides that service shall be deemed completed for all purposes on the date of delivery.
2. On March 30, 2013, delivery was completed and Excel RC was served with copies of the: (1) Order [ECF No. 9] granting Excel Roofing's Motion for Substitute Service [ECF No. 7]; (2) Summons; (3) Civil Cover Sheet; (4) Complaint [ECF No. 1] with exhibits; (5) Report on the Filing or Determination of an Action regarding a Patent or Trademark; (6) Instructions Regarding Notice of Availability of a United States Magistrate Judge to Exercise Jurisdiction Pursuant to 28 U.S.C. 636(c), FED. R. CIV. P. Rule 73, and D.C.COLO.LCivR 72.2; (7) Order of Reference to Magistrate Judge; (8) Order Setting Rule 16(b) Scheduling Conference ...

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