Metropolitan Area Agency on Aging, Inc. v. Trellis Co.

Background

Metropolitan Area Agency on Aging, Inc. is a nonprofit organization that provides social services to seniors and their caregivers in the Minneapolis-St. Paul metropolitan area. Trellis Co. is a nonprofit property developer and manager of affordable housing that also operates in that area and serves various populations, including seniors.

The plaintiff adopted “Trellis” as a trade name during a 2019 rebranding process and developed two Trellis logos. Trellis Co. went through a similar rebranding process in 2018 and 2019, began using the name and a new logo in August 2020, and used the branding on items including its website, employee materials, business cards, badges, and resident communications. The plaintiff filed an intent-to-use trademark application for the wordmark in October 2020 and later amended its first-use date to March 16, 2021. It filed applications for two logos in September 2022.

In June 2023, Trellis Co. filed an opposition proceeding before the Trademark Trial and Appeal Board, asserting priority and likelihood of confusion. After the parties filed partial summary-judgment motions in that proceeding, the plaintiff filed this federal case seeking declarations of priority and non-infringement. The Board later denied those motions and suspended its proceeding until this case was finally resolved.

Trellis Co.’s Motion to Dismiss or Stay

The court denied Trellis Co.’s challenge to subject-matter jurisdiction under Federal Rule of Civil Procedure 12(b)(1). The court found an actual controversy because the parties had disputed for about four years which one could use “Trellis,” both were building brand recognition in the same geographic area, and the dispute concerned use of the mark rather than only its registration. The court also concluded that it had statutory authority to consider the priority and infringement dispute under 15 U.S.C. § 1125(a).

Under Rule 12(b)(6), the court agreed that the complaint did not adequately plead claims based on Minnesota common law or statutes. It therefore granted Trellis Co.’s motion to dismiss to the extent the plaintiff’s claims relied on Minnesota state law. The court dismissed those Minnesota-law theories without prejudice. Counts 1 and 2 otherwise remained in the case based on the plaintiff’s other theories.

The court denied Trellis Co.’s alternative request to stay the case while the Board proceeding was pending. The Board had already suspended its proceeding pending disposition of this case, and the court noted that federal courts rarely stay cases because of pending Board proceedings.

Plaintiff’s Motion for Summary Judgment

The plaintiff sought summary judgment on Count 1, which requested a declaration that Trellis Co. could not establish priority. Trademark priority generally belongs to the party that first uses a mark in commerce. The plaintiff argued that Trellis Co.’s evidence showed only an intent to use the mark, rather than actual use in commerce.

The court found weaknesses in several parts of Trellis Co.’s evidence. Some evidence was undated or dated after the claimed priority date. Branded clothing and business cards, standing alone, did not establish when or how the mark was used in connection with services. Trellis Co. also did not provide corroborating information showing that certain rebranding emails or flyers were actually sent to residents. The court found that the website screenshots were properly authenticated but concluded that the current record did not establish conclusively that the website showed use of the mark in commerce.

Even so, the court held that Trellis Co.’s evidence created a genuine dispute of material fact about the priority date. Because the plaintiff had not met its burden, the court denied summary judgment on Count 1.

The plaintiff also sought summary judgment on Count 2, its request for a declaration of non-infringement. The court explained that a common-law trademark-infringement claim requires a protectable mark, priority of use, and a likelihood that the defendant’s later use will cause confusion. Because priority remained factually disputed, the court denied summary judgment on Count 2 as well.

Disposition

The order granted in part and denied in part Trellis Co.’s motion to dismiss or stay. Specifically, the Rule 12(b)(6) motion was granted to the extent the plaintiff’s claims relied on Minnesota state law, and the plaintiff’s Minnesota-law theories were dismissed without prejudice. The motion was denied on all other grounds. The plaintiff’s motion for summary judgment was denied.