United States District Court, D. Colorado
OPINION AND ORDER ON MOTION FOR SUMMARY
S. Krieger Senior United States District Judge.
MATTER comes before the Court on the Defendants’ Motion
for Summary Judgment (# 109), the Plaintiffs’ Response
(# 116), and the Defendants’ Reply (# 118). For the
reasons that follow, the Motion is granted, in part.
Court exercises jurisdiction under 28 U.S.C. § 1331.
case involves a trademark dispute between a national pizza
chain and local pizza restaurants, both using the name Marco.
The Plaintiffs (collectively “Marco’s”)
operate a national network of franchised pizza restaurants
under the brand name Marco’s Pizza. Marco’s holds
six federally registered trademarks that it uses in
conjunction with its business, but only two are primarily at
issue for purposes of the instant Motion:
• A word mark consisting of the word MARCO’S,
first used on July 31, 1978, and registered on December 4,
• A design mark consisting of the words MARCO’S
PIZZA in a stylized font with a cartoon of a slice of pizza
used in place of the apostrophe, first used on December 31,
1985, and registered on November 19, 2013 (the “design
many years after its founding in the early 1980s,
Marco’s operated primarily in Ohio and Michigan. By
2007, it had added operations in Indiana, Arizona, Nevada,
North Carolina, and Wisconsin, and in September 2007, it
announced plans to expand to Georgia and Florida. The
business did not arrive in Colorado until February 2008, when
it entered into a franchise agreement with Rodman Schley,
providing Mr. Schley rights to establish Marco’s
franchises anywhere in Colorado. It does not appear from the
record that Mr. Schley began actually operating franchises
until approximately 2009.
Defendants are restaurants owned and operated by Defendants
Mark and Kristy Latorraca-Dym (the Dyms). They created
Defendant Marco’s Coal Fired Pizza Inc.
(“MCF”) in June 2008, opening a restaurant under
the name Marco’s Coal-Fired Pizza at a location in the
Ballpark neighborhood of Denver. At that time, MCF used a
roughly triangular design mark that consisted of three
stacked rows of text (“Marco’s / Coal-Fired /
Pizzeria”) above a drawing of a puff of smoke. On
December 18, 2008, Marco’s sent a letter to MCF,
advising MCF of Marco’s trademark registration of the
MARCO’S PIZZA mark and requesting that MCF
“provide us with copies or other evidence of your First
use of the name ‘Marco’s’ so that we might
determine if you are legally entitled to some use of the
same”. (# 109-8 at 2.) MCF responded,
acknowledging “your client’s ownership of the
registered trademark MARCO’S PIZZA, ” but noted
that, because the mark incorporated a name, it was not likely
to be considered distinctive and lead to a likelihood of
confusion with MCF’s use of the MARCO’S
COAL-FIRED PIZZA mark. (# 109-9 at 1.) It also noted that
Marco’s had yet to open any locations in Colorado, and
thus, due to its prior use, MCF “would be deemed the
senior user of the mark in Colorado, particularly in
Denver.” (# 109-9 at 2.) Marco’s chose not to
take any further action at the time.
about 2010, MCF opened a second location in the Denver Tech
Center operated by Defendant Marco’s Vallagio LLC. (The
Court understands that, notwithstanding its name, the Tech
Center location continued to use the same MARCO’S
COAL-FIRED PIZZA mark as the Ballpark location.) In 2015, MCF
opened two additional locations, Defendants Marco’s
Coal Fired Pizza Casper LLC in Casper, Wyoming, and
Marco’s Coal Fired Pizza Golden LLC, in Golden,
Colorado. However, these two locations opened under
the name Racca’s Pizzeria Napoletana instead. Also in
2015, MCF rebranded the existing Ballpark and Tech Center
locations to use the Racca’s name, ceasing to use the
MARCO’S COAL-FIRED PIZZA mark entirely. There is some
dispute in the record as to why MCF undertook the name
change, and there is at least some evidence that customer
confusion between MCF and Marco’s locations was a
contributing factor. By mid-July 2017, the Dyms concluded
that the rebranding of the Ballpark and Tech Center locations
as Racca’s was a mistake, and they resumed use of the
MARCO’S COAL-FIRED PIZZA mark at those locations.
Shortly thereafter, Marco’s commenced this lawsuit.
Amended Complaint (# 88) asserts eight claims: (1) trademark
infringement under the Lanham Act (15 U.S.C. § 1114)
against each of the entity defendants; (2) contributory
infringement against the Dyms; (3) unfair competition under
the Lanham Act (15 U.S.C. § 1125) against the entity
defendants; (4) contributory unfair competition against the
Dyms; (5) trademark dilution (15 U.S.C. § 1125) against
all Defendants; (6) unfair competition under Colorado law
against all Defendants; and (7) deceptive business practices
(C.R.S. § 6-1-105) against all Defendants; and (8) a
claim for an accounting against all Defendants.
response, the Defendants assert three counterclaims: (1) a
claim pursuant to 15 U.S.C. § 1064(3), seeking to cancel
Marco’s registration of the MARCO’S word mark as
having been fraudulently obtained, due to Marco’s
principals falsely attesting in their 2012 and 2013
registration applications that they were aware of no other
entity having the right to use the MARCO’S mark in
commerce despite being aware of MCF’s use of a
MARCO’S mark since 2008; (2) a claim pursuant to 15
U.S.C. § 1064(3) to cancel Marco’s registration of
the MARCO’S word mark was being merely descriptive and
lacking in any secondary meaning associating it with
Marco’s; and (3) a claim by the entity Defendants for a
declaration that their use of the MARCO’S COAL-FIRED
PIZZA mark does not infringe any of Marco’s marks.
Defendants now move for summary judgment on certain claims
and counterclaims (# 109). Specifically, they argue that: (1)
the Golden, Casper, Colfax, and Racca’s Defendants are
entitled to summary judgment on all claims asserted against
them insofar as Marco’s cannot demonstrate that any of
these Defendants used any of the Marco’s
marks; (2) they are entitled to summary judgment on their
counterclaim seeking cancellation of the MARCO’S word
mark due to fraud; (3) they are entitled to judgment on their
counterclaim contending that the MARCO’S word mark is
not inherently distinctive and lacked secondary meaning in
the market as of 2008; (4) all Defendants are entitled to
judgment in their favor on their affirmative defenses of
laches or acquiescence, given that Marco’s made no
efforts to enforce its marks between 2008 and 2017; (5)
Marco’s cannot establish its claim for trademark
dilution because it cannot show that MCF began using any of
Marco’s marks after they had become famous; and (6)
Marco’s cannot establish its claim for an accounting
because it cannot show that the Dyms acted in bad faith when
selecting the MARCO’S COAL-FIRED PIZZA mark.
of the Federal Rules of Civil Procedure facilitates the entry
of a judgment only if no trial is necessary. See White v.
York Int’l Corp., 45 F.3d 357, 360 (10th Cir.
1995). Summary adjudication is authorized when there is no
genuine dispute as to any material fact and a party is
entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a).
Substantive law governs what facts are material and what
issues must be determined. It also specifies the elements
that must be proved for a given claim or defense, sets the
standard of proof, and identifies the party with the burden
of proof. See Anderson v. Liberty Lobby Inc., 477
U.S. 242, 248 (1986); Kaiser-Francis Oil Co. v.
Producer's Gas Co., 870 F.2d 563, 565 (10th Cir.
1989). A factual dispute is “genuine” and summary
judgment is precluded if the evidence presented in support of
and opposition to the motion is so contradictory that, if
presented at trial, a judgment could enter for either party.
See Anderson, 477 U.S. at 248. When considering a
summary judgment motion, a court views all evidence in the
light most favorable to the non-moving party, thereby
favoring the right to a trial. See Garrett v. Hewlett
Packard Co., 305 F.3d 1210, 1213 (10th Cir. 2002).
movant has the burden of proof on a claim or defense, the
movant must establish every element of its claim or defense
by sufficient, competent evidence. See Fed.R.Civ.P.
56(c)(1)(A). Once the moving party has met its burden, to
avoid summary judgment the responding party must present
sufficient, competent, contradictory evidence to establish a
genuine factual dispute. See Bacchus Indus. Inc. v. Arvin
Indus. Inc., 939 F.2d 887, 891 (10th Cir. 1991);
Perry v. Woodward, 199 F.3d 1126, 1131 (10th Cir.
1999). If there is a genuine dispute as to a material fact, a
trial is required. If there is no genuine dispute as to any
material fact, no trial is required. The court then applies
the law to the undisputed facts and enters judgment.
moving party does not have the burden of proof at trial, it
must point to an absence of sufficient evidence to establish
the claim or defense that the non-movant is obligated to
prove. If the respondent comes forward with sufficient
competent evidence to establish a prima facie claim or
defense, a trial is required. If the respondent fails to
produce sufficient competent evidence to establish its claim
or defense, then the movant is entitled to judgment as a
matter of law. See Celotex Corp. v. Catrett, 477
U.S. 317, 322-23 (1986).
case presents multiple claims against multiple defendants
based on multiple trademarks. Practically, each claim is
comprised of six sub-claims, one for each trademark. It is
helpful to group the Defendants’ arguments in their
Motion for Summary Judgment according to the claims to which
• As to all claims on all six marks, the
Golden, Casper, Colfax, and RPN Defendants claim that they
are entitled to judgment because the Plaintiffs cannot
establish that they have ever used the marks.
• As to the claims for trademark infringement and unfair
competition based only on the MARCO’S word and design
marks, all the Defendants assert fraudulent registration and
seek cancellation of the MARCO’S word mark.
• As to the claims for trademark infringement and unfair
competition based only on the MARCO’S word and design
marks, all the Defendants assert invalidity (no secondary
meaning) and seek judgment for cancellation of the
MARCO’S word mark.
• As to all claims based on all six marks, all
the Defendants argue that they are entitled to judgment on
the affirmative defenses of laches and acquiescence.
• As to the dilution claim based on all six
marks, all the Defendants assert a defense that the
Marco’s marks are not famous. . As to the claim for
accounting, all the Defendants contend Marco’s cannot
show they acted in bad faith.
Claims Against the Casper, Golden, Colfax, and RPN
argues that Marco’s cannot establish any of its claims
against the Golden, Casper, Colfax, and RPN Defendants
because it cannot show that any of these Defendants made any
use of Marco’s marks. Indeed, the Defendants have come
forward with evidence, in the form of Mr. Dym’s
affidavit, that Defendant Colfax was formed speculatively and
has never actually conducted any business of any kind beyond
acquiring a parcel of real property, and that Defendant RPN
was formed for unknown reasons but has never conducted
business operations of any kind. (# 109-2 ¶ 19.) As to
the two remaining entities, Golden and Casper, Mr.
Dym’s affidavit establishes that these businesses have
always operated under the Racca’s name and have never
used any variation of any Marco’s mark. (# 109-2 ¶
Marco’s Response does not address the fact that the
Colfax and RPN Defendants have never had any operations at
all. Rather, Marco’s simply lumps all four Defendants
together and argues that: (1) those businesses routinely used
“Powered by Marco’s Coal Fired Pizza” in
their advertising; (2) that three of the four Defendants have
the phrase “Marco’s Coal Fired Pizza” in
their name; and (3) that the Dyms act as the agents of each
of the four Defendants such that the Dyms’ use of
Marco’s marks in other businesses somehow operate to
bind the four Defendants here. The Court summarily rejects
the second and third arguments, as Marco’s cites no
authority for the proposition that a business’
selection of a particular legal name that is otherwise never
used in advertising or otherwise displayed to consumers can
constitute trademark infringement or any other violations
asserted herein. See, e.g., Kelly-Brown v. Winfrey,717 F.3d 295, 306 (2d Cir. 2013) (essential to all Lanham Act
claims is the use of a mark “in commerce, ” which
inquires “whether the ...