United States District Court, N.D. Georgia, Atlanta Division
OPINION AND ORDER
WILLIAM S. DUFFEY, JR. UNITED STATES DISTRICT JUDGE.
matter is before the Court on Plaintiff CrossFit, Inc.'s
(“CrossFit”) Motion for Default Judgment .
is a Delaware corporation principally engaged in the business
of fitness training and consultancy. (Compl.  ¶ 6).
CrossFit owns several registered United States trademarks and
service marks for the term “CROSSFIT.”
(Id.; U.S. Trademark and Service Mark Registrations,
Ex. AA [15.12]).
Kateric Peter Quinnie (“Quinnie”) is a Georgia
resident. ( ¶ 7). Defendant Donald Jett
(“Jett”) is a Georgia resident, and Defendant
Total Body Recall, LLC (“Total Body Recall”) is a
Georgia limited liability company owned and controlled by
Jett. (Id. ¶¶ 8-10). CrossFit's
Complaint alleges that Quinnie and Jett are business
partners. (Id. ¶¶ 20-22).
April 2015, CrossFit discovered that Defendants began
offering fitness-training services under the name
“KrossFit 24.” (Id. ¶¶ 7, 15).
On April 23, 2015, CrossFit sent a letter to Quinnie,
demanding Defendants to cease and desist their use of the
CROSSFIT® marks and the term “KrossFit” on
their Facebook page (www.facebook.com/krossfit24) (the
“KrossFit24 Facebook page”). (Id. ¶
17; [15.1] at 16; [15.10] at 4). On April 25, 2015, Quinnie
apologized for the error and responded that they would
correct the issue. ( ¶ 17; [15.10] at 4).
on May 1, 2015, CrossFit sent a series of letters to Quinnie.
( ¶¶ 18-19). On May 1, 2015, CrossFit requested
the removal of the terms KrossFit and CrossFit from the
KrossFit24 Facebook page and Total Body Recall's webpage
(www.totalbodyrecall.org) (the “TBR webpage”).
([15.10] at 3). In response to CrossFit's letter, Quinnie
deleted the KrossFit24 Facebook page.([15.1] at 17; [15.10] at 3).
On May 19, 2015, and May 29, 2015, CrossFit sent two letters
to Quinnie demanding, again, the removal of the word
“Krossfit” from the TBR webpage. ( ¶ 18;
[15.10] at 2-3). Quinnie did not respond. ([15.1] at 16). On
June 8, 2015, CrossFit sent another letter to Quinnie,
demanding Jett to remove the term Krossfit from the TBR
webpage. On June 18, 2015, CrossFit's outside counsel,
Gordon & Rees LLP (“Gordon & Rees”), sent
a letter to both Quinnie and Jett, demanding Jett to comply
with CrossFit's demands and to stop their use of
“any confusingly similar terms (including without
limitation, “Krossfit, ” “Kfit, ”
“Xfit, ” “Crossfitness, ” etc.) . . .
.” ( ¶ 19; [15.16] ¶ 3; [15.17] at 2). On
June 21, 2015, Quinnie responded that he stopped using those
terms. ([15.17] at 2).
from June 22, 2015, to July 21, 2015, CrossFit and Defendants
engaged in several discussions concerning Defendants'
business partners and potential business name change.
(Id. ¶¶ 20-23). During these discussions,
Defendants were uncooperative and evasive regarding their
business associates' identities. (Id.).
November 10, 2015, CrossFit discovered that Defendants failed
to remove the “KrossFit24” signage located at
their previous fitness center in Marietta, Georgia. (
¶ 24; [15.1] at 19). When CrossFit called the number
listed on the signage, it discovered that Defendants
continued to conduct their business as “KrossFit 24,
” though at a new location in Kennesaw, Georgia. (
¶ 24; [15.1] at 19).
date, Defendants continue to advertise as “Kross Fit
24” on Groupon, and Defendants' now defunct
business is still listed on the WhitePages and
YellowPages websites as well as on Instagram and on Facebook.
(See [15.1] at 20; Instagram Screenshots, Ex. A
[15.15]; Facebook Page, Ex. B [15.15]; Groupon Offer, Ex. E
[15.18]; Whitepages Listing, Ex. F [15.19]; Yellowpages
Listing, Ex. G [15.20]).
November 20, 2015, CrossFit filed this action against
Defendants, asserting the following federal and state
trademark violations: (1) trademark infringement under 15
U.S.C. § 1114; (2) false designation of origin under 15
U.S.C. § 1125(a); (3) trademark dilution under 15 U.S.C.
§ 1125(c); (4) Georgia statutory trademark dilution
under O.C.G.A. § 10-1-451(b); and (5) violation of
Georgia's Uniform Deceptive Trade Practices Act under O.
C.G.A. §§ 10-1-370 to 10-1-375. (See
December 13, 2015, CrossFit served the Complaint on Jett and
Total Body Recall. (, ). On January 7, 2016, CrossFit
served the Complaint on Quinnie. (). Defendants failed to
respond, and no counsel appeared on their behalf.
February 24, 2016, CrossFit filed a Request for Entry of
Default  based on Defendants' failure to respond to
the Complaint. On February 26, 2016, the Clerk entered
default against Defendants.
13, 2016, CrossFit moved for default judgment. ().
CrossFit is seeking to recover the following relief:
Defendants' profits, treble damages, permanent
injunction, and attorneys' fees and costs. (Id.
55(b) of the Federal Rules of Civil Procedure provides that
default judgment may be entered against defaulting defendants
(1) By the Clerk. If the plaintiff's claim is
for a sum certain or a sum that can be made certain by
computation, the clerk-on the plaintiff's request, with
an affidavit showing the amount due-must enter judgment for
that amount and costs against a defendant who has been
defaulted for not appearing and who is neither a minor nor an
(2) By the Court. In all other cases, the party must
apply to the court for a default judgment. . . . If the party
against whom a default judgment is sought has appeared
personally or by a representative, that party or its
representative must be served with written notice of the
application at least 7 days before the hearing. The court may
conduct hearings or make referrals . . . when, to enter or
effectuate judgment, it needs to:
(A) conduct an accounting;
(B) determine the amount of damages;
(C) establish the truth of any allegation by evidence; or
(D) investigate any other matter.
Civ. P. 55(b).
is a strong policy of determining cases on their merits . . .
. [Courts] therefore view defaults with disfavor.”
In re Worldwide Web Sys., Inc., 328 F.3d 1291, 1295
(11th Cir. 2003). “The entry of a default judgment is
committed to the discretion of the district court.”
Hamm v. DeKalb Cnty., 774 F.2d 1567, 1576 (11th Cir.
1985), cert. denied, 475 U.S. 1096 (1986) (citing
10A Charles Alan Wright, et al., Federal Practice &
Procedure § 2685 (1983)).
considering a motion for default judgment, a court must
investigate the legal sufficiency of the allegations and
ensure that the complaint states a plausible claim for
relief. Cotton v. Mass. Mut. Life Ins. Co., 402 F.3d
1267, 1278 (11th Cir. 2005); Bruce v. Wal-Mart Stores,
Inc., 699 F.Supp. 905, 906 (N.D.Ga. 1988). If “the
plaintiff has alleged sufficient facts to state a plausible
claim for relief, ” a motion for default judgment is
warranted. Surtain v. Hamlin Terrace Found., 789
F.3d 1239, 1246 (11th Cir. 2015). “Conceptually, then,
a motion for default judgment is like a reverse motion to
dismiss for failure to state a claim.” Id. at
1245. “[W]hile a defaulted defendant is deemed to
‘admit the plaintiff's well-pleaded allegations
of fact, ' he ‘is not held to admit facts that are
not well-pleaded or to admit conclusions of law.'”
Cotton, 402 F.3d at 1278 (quoting Nishimatsu
Constr. Co. v. Houston Nat'l Bank, 515 F.2d 1200,
1206 (5th Cir. 1975)).
the Lanham Act, a defendant is liable for trademark
infringement if he, without consent, uses “in commerce
any reproduction, counterfeit, copy, or colorable imitation
of a registered mark” that “is likely to cause
confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1114(1). In order to prevail on a federal
trademark infringement claim under § 1114, “the
registrant must show that (1) its mark was used in commerce
by the defendant without the registrant's consent and (2)
the unauthorized use was likely to cause confusion, or to
cause mistake or to deceive.” Optimum Techs., Inc.
v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1241
(11th Cir. 2007); see also Caliber Automotive
Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC,
605 F.3d 931, 934 (11th Cir. 2010).
Complaint alleges that CrossFit owns a registered U.S.
service mark comprised of the word “CROSSFIT, ”
as registered in U.S. Service Mark Registration No. 3, 007,
458 issued on October 18, 2005, for use in fitness training
and services. ( ¶ 12). The CROSSFIT® mark,
CrossFit asserts, has been “in continuous use in
commerce since at least the dates of first use identified in
their registrations to the present day.”
(Id.). Once a mark has been registered for five
years with the U.S. Patent and Trademark Office and
“become ‘incontestable, ' its validity is
presumed . . . . [I]ts validity cannot [then] be challenged
on the grounds that it is merely descriptive.”
Dieter v. B & H Indus., 880 F.2d 322, 328 (11th
Cir. 1989); Frehling Enters. v. Int'l Select Grp.,
Inc., 192 F.3d 1330, 1336 (11th Cir. 1999) (citing
Wilhelm Pudenz, GmbH v. Littlefuse, Inc., 177 F.3d
1204, 1208 (11th Cir. 1999)). CrossFit only permits
“persons who have completed CrossFit's certificate
process and entered into valid affiliate license
agreements” to use the CROSSFIT® mark. ( ¶
14). Neither Jett nor Quinnie is ever authorized or licensed
to use the CROSSFIT® mark. (Id. ¶ 25).
Accordingly, the Court concludes that any purported use of
the CROSSFIT® mark is without consent.
question is then whether Defendants' unauthorized use of
the CROSSFIT® mark or their use of KrossFit was likely to
cause confusion, or to cause mistake or to deceive. Seven
factors apply in our Circuit to determine whether customer
confusion is likely to occur under the Lanham Act. The
factors include (1) the type of mark; (2) the similarity of
mark; (3) the similarity of the products the marks represent;
(4) the similarity of the parties' retail outlets and
customers; (5) the similarity of advertising media; (6) the
defendant's intent; and (7) any actual confusion. Of the
seven factors, the type of mark and the evidence of actual
confusion are the most important. Caliber, 605 F.3d
at 935 (citing Frehling, 192 F.3d at 1335);
Freedom Sav. & Loan Ass'n v. Way, 757 F.2d
1176, 1186 (11th Cir. 1985); Atlanta Allergy & Asthma
Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC,
685 F.Supp.2d 1360, 1377 (N.D.Ga. 2010). “[N]o single
factor is dispositive, but greater weight is given to the
type of mark and evidence of actual confusion.”
Dieter, 880 F.2d at 326.
Type of mark
are four recognized types of mark, ranging from weakest to
strongest: generic, descriptive, suggestive and arbitrary.
The stronger the mark, the greater the scope of protection
accorded it.” Caliber, 605 F.3d at 938
(quoting Aronowitz v. Health-Chem Corp., 513 F.3d
1229, 1240 (11th Cir. 2008)). “An arbitrary or fanciful
mark bears no logical relationship to the product or service
it is used to represent, [e.g., Kodak]. A suggestive mark
refers to some characteristic of the goods, but requires a
leap of the imagination to get from the mark to the product,
[e.g., Penguin Refrigerators]. A descriptive mark identifies
a characteristic or quality of the service or product, [e.g.,
Vision Center].” Id. at 939 (alteration in
original) (quoting Welding Servs. v. Forman, 509
F.3d 1351, 1357-58 (11th Cir. 2007)). A generic name
“is the term by which the product or service itself is
commonly known” and “depicts the product or
service as a whole, rather than any particular feature,
quality, or characteristic of the whole.”
Welding, 509 F.3d at 1358 (internal citations and
quotation marks omitted). Whether a name is generic depends
on the use of the term, not the term itself. “A word
may be generic of some things and not of others:
‘ivory' is generic of elephant tusks but arbitrary
as applied to soap.” Id. at 1358 (quoting
Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183
(5th Cir. 1980)). The “generic use of a word may not be
registered as a trademark.” Id. (citing
Park ´N Fly, Inc. v. Dollar Park & Fly,
Inc., 469 U.S. 189, 194, 105 S.Ct. 658 (1985)).
Court finds that the CROSSFIT® mark is a suggestive
mark. The mark CROSSFIT® is a combination of
the terms, “cross” and “fit, ” which
are both commonly associated with exercise and fitness. The
term “cross” has been used in sports and fitness
as in cross-training to refer to combining different sports
or types of exercises in order to improve a person's
fitness and performance. The combination of the terms into a
single unique word places the mark in the
“suggestive” category, requiring a leap of the
imagination to get from the mark to the product. See
CrossFit, Inc. v. 2XR Fit Sys., LLC, No. CIV. 2:13-1108
KM, 2014 WL 972158, at *5 (D.N.J. 2014) (placing the
CROSSFIT® mark in the suggestive category). The
CROSSFIT® mark is not an arbitrary term such as KODAK.
Similarity of mark
of mark is determined by “the overall impression
created by the marks, including a comparison of the
appearance, sound and meaning of the marks, as well as the
manner in which they are displayed.” Caliber,
605 F.3d at 939 (quoting E. Remy Martin & Co. v.
Shaw-Ross Int'l Imps., Inc., 756 F.2d 1525, 1531
(11th Cir. 1985)). CrossFit argues, and the Court agrees,
that its CROSSFIT® mark and Defendants' KrossFit mark
have strong visual similarity, and the two marks sound
identical. ([15.1] at 30); see also CrossFit, Inc. v. 2XR
Fit Sys., LLC, 2014 WL 972158, at *4 (finding
“Cross Fitness” and “Xross Fitness”
are extremely similar to
Similarity of the products
question whether there is a similarity of products requires
the “determination as to whether the products are the
kind that the public attributes to a single source, not
whether or not the purchasing public can readily distinguish
between the products of the respective parties.”
Caliber, 605 F.3d at 939-40 (quoting
Frehling, 192 F.3d at 1338). In our Circuit, the
test is “not whether the goods could be distinguished,
as they could be by any [consumer], but whether the goods are