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John C Flood v Flood Dist Ct

John C Flood v Flood Dist Ct

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Published by: propertyintangible on Jun 25, 2011
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UNITED STATES DISTRICT
COURT
FOR
THE
DISTRICT
OF
COLUMBIA
JOHN
C.
FLOOD
OF
VIRGINIA, INC.,
et
)
at.,
)
)
Plaintiff/Counter-Defendants, )
)
v.
) Civil Case
No.
06-1311
(RJL)
)
JOHN
C. FLOOD, INC.,
et at.,
)
)
Defendants/Counter-Plaintiffs. )

MEMORANDUM OPINION

2010) [#60 and 65]This case involves two sister companies in the plumbing business that are, in effect,fighting over their "inheritance." They both claim exclusive rights to two
trademarks-
JOHN
C.
FLOOD and its abbreviated form FLOOD. The plaintiff John
C.
Flood
of
Virginia, Inc. ("Virginia Flood") brought this suit against the defendants John
C.
Flood,Inc., which does business as John
C.
Flood
of
DC, Inc., as well as other individuals andcorporate entities (collectively, "1996 Flood").
1
Virginia Flood alleges four causes
of
action: (1) trademark infringement in violation
of
15
U.S.C.
§
1114(1) (Count
1),
(2) unfaircompetition in violation
of
15
U.S.c.
§ 1125(a) (Count 2), (3) common law service markinfringement and unfair competition (Count 3), and (4) declaration
of
Virginia Flood'spriority over all defendants and its right to register the trademarks (Count 4). (CompI.
[#
1]
at 9-11; Am. CompI. [#28] at 13-18). 1996 Flood responded by bringing a number
of
I
The additional defendants include
lC.
Flood, Inc., J.C. Flood Company, John
C.
Flood
of
DC, JCF Inc., John Doe Companies 1 and 2, Mark Crooks, Mel Davis, RobertSmiley, and Joanna Smiley. (Am. CompI. [#28] at 2-3).
Case 1:06-cv-01311-RJL Document 86 Filed 03/31/10 Page 1 of 16
 
counterclaims against Virginia Flood and other parties (collectively, "Virginia Flood,,).2The counterclaims include:
(1)
false designation
of
origin, source, or sponsorship inviolation
of
15
U.S.C. § 1125(a) (Count 1); (2) cancellation
of
Virginia
Flood's
registration
of
the disputed trademarks (Count 2-4); (3) declaration
of
1996
Flood's
priority overVirginia Flood (Count 5); and (4) common law service mark infringement and unfaircompetition (Count 6). (Countercl. [#9] at 25-33).
Now
before the Court is Virginia
Flood's
Motion for Summary Judgment [#60] and 1996
Flood's
Renewed Motion for PartialSummary Judgment [#65]. Unlike Virginia Flood, which has moved for
judgment
on allclaims and counterclaims, 1996 Flood moves only for
judgment on
Virginia
Flood's
claimsand for declaratory
judgment
as to its counterclaim for priority over Virginia Flood. 1996Flood leaves its remaining counterclaims for future disposition. Having considered thepleadings and the record in this case, I have concluded that Virginia Flood, as the licensee
of
the FLOOD marks, is estopped from now claiming ownership
of
those marks. Accordingly,for the reasons set forth below, Virginia
Flood's
Motion for Summary Judgment is DENIEDand 1996
Flood's
Motion for Partial Summary Judgment is GRANTED.
BACKGROUND
In 1984, defendants Mark Crooks and Mel Davis incorporated in Maryland abusiness by the name
of
John
C.
Flood, Inc. ("1984 Flood"). (Countercl. [#9],-r 11). Thisbusiness provided plumbing, heating, and air conditioning services to customers inMaryland, the District
of
Columbia, and Virginia.
(ld.,-r,-r
11-12; Davis Dep. [#63-6] at 81).
2
The other parties include John C. Flood, Inc. (a Virginia corporation), John C. FloodContractors, Inc., Clinton Haislip, and James
L.
Seltzer, Jr. (Countercl. [#9] at
1).
2
Case 1:06-cv-01311-RJL Document 86 Filed 03/31/10 Page 2 of 16
 
1984 Flood traded under the service marks
JOHN
C.
FLOOD
and FLOOD (or variationsthereof). (Davis Decl. [#37-2]

3-5, 10-11).Four years later, to further expand their operations in Virginia, Crooks and Davisincorporated another business under the name John C. Flood
of
Virginia, Inc. ("VirginiaFlood").
(Id.
6). Crooks and Davis invited Clinton Haislip and James Seltzer, who thenwere employees
of
1984 Flood, (Seltzer Decl. [#63-11]
5), to
join
Virginia Flood as non-controlling shareholders. (Davis Decl. [#37 -2]

7). Haislip and Seltzer initially owned
49%
of
the stock, while Crooks and Davis owned
51
%, (Davis Dep. [#63-6] at 83), buteventually, Crooks and Davis gave Haislip and Seltzer an additional 1
%
share in thecompany, making Crooks and Davis equal owners with Haislip and Seltzer,
(id.
at 83-84,94). Because Haislip and Seltzer lacked the technical expertise to run the business
by
themselves at the outset, Crooks and Davis regularly helped with the technical aspects
of
thebusiness, maintained the books and records, and appointed a manager to oversee day-to-dayoperations.
(Id.
at 58-60).There is no dispute that Virginia Flood had
permission-that
is, a
license-to
use themarks
JOHN
C.
FLOOD
and
FLOOD
without the modifier
"of
Virginia." The partiesdisagree, however, about the nature and scope
of
that license. In his declaration, Seltzertestified that Crooks and Davis made a verbal agreement to allow Virginia Flood to use themarks on, among other things, its service trucks, contracts, invoices, and telephone bookadvertisements. (Seltzer Decl. [#63-11]

6). In exchange, Virginia Flood paid Crooks andDavis a weekly sum.
(Id.).
Davis testified, however, that Virginia Flood was allowed to usethe marks JOHN C. FLOOD or FLOOD only until it replaced the service trucks that already3
Case 1:06-cv-01311-RJL Document 86 Filed 03/31/10 Page 3 of 16

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