United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER
D. NOCE, UNITED STATES MAGISTRATE JUDGE
action is before the court on the motion of plaintiff Lawn
Managers, Inc., for partial summary judgment. (Doc. 53).
Plaintiff moves for summary judgment on defendant Progressive
Lawn Managers, Inc.'s defenses of collateral estoppel,
consent, release, waiver, and unclean hands, as well as its
counterclaim alleging abandonment of trademark. The court has
subject matter jurisdiction pursuant to 28 U.S.C.
§§ 1331 and 1343. The court heard oral argument on
June 27, 2017. For the reasons discussed below, the court
grants the motion in part and denies the motion in part.
Legal standard for summary judgment
judgment is proper “if there is no dispute of material
fact and reasonable fact finders could not find in favor of
the nonmoving party.” Shrable v. Eaton Corp.,
695 F.3d 768, 770 (8th Cir. 2012); see also Fed. R.
Civ. P. 56(a). The party moving for summary judgment must
demonstrate the absence of a genuine issue of material fact
and that it is entitled to judgment as a matter of law.
Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986).
A fact is “material” if it could affect the
ultimate disposition of the case, and a factual dispute is
“genuine” if there is substantial evidence to
support a reasonable jury verdict in favor of the nonmoving
party. Rademacher v. HBE Corp., 645 F.3d 1005, 1010
(8th Cir. 2011). The court must view the evidence in the
light most favorable to the nonmoving party and accord it the
benefit of all reasonable inferences. Scott v.
Harris, 550 U.S. 372, 379-80 (2007). The burden shifts
to the non-moving party to demonstrate that disputes of fact
do exist only after the movant has made its showing.
otherwise noted, the parties do not dispute the following
facts. Randy Zweifel is the principal owner of Lawn Managers.
(Docs. 53, Ex. 1 at ¶ 1; 57 at ¶ 1).
Smith is the principal owner of defendant Progressive Lawn
Managers. (Docs. 53, Ex. 1 at ¶ 2; 57 at ¶ 2).
Prior to their divorce in May 2012, Linda and Randy each
owned 50 percent of Lawn Managers and the marks at issue in
this case. (Docs. 53, Ex. 1 at ¶ 1; 57 at ¶ 3, 19;
61, Ex. 1 at ¶ 19). The marital settlement agreement
between Randy and Linda was incorporated into their divorce
decree and provided that:
Development of New Business Linda will establish a
new lawn care company using the name Progressive Lawn
Managers, Inc. doing business as Lawn Managers. The parties
agree that Linda may use the name Lawn Managers for a period
of time no longer than two years from the date of dissolution
of marriage. At the end of two years from the date of
dissolution of marriage, or sooner if Linda wishes, Linda
will use the name Progressive Lawn Managers, Inc. and will
discontinue using the name Lawn Managers.
Enforcement and Construction of Terms The terms of
this Agreement are expressly intended to be construed as
contractual, with reference so RSMo. Section 452.325, as
amended, and therefore nonmodifiable, except as may otherwise
be expressly noted; however, the parties also expressly
intend for this Agreement to be construed as decretal for the
purposes of enforcement. The parties agree that failure of
either party to insist upon strict performance of one or more
of the terms and provisions of this Agreement shall not be
construed as a waiver or relinquishment in the future of any
such term and provision all of which shall continue in full
force and effect. Further, no waiver of any default shall be
deemed a waiver of a subsequent default. The validity and
construction of this Agreement shall be determined in
accordance with the laws of the State of Missouri.
Review and Modification of This Agreement No
modification or waiver of any of the terms of this Agreement
shall be valid unless it is in writing and signed by both
parties and where necessary, approved by a court of competent
jurisdiction as required by law.
Binding Effect This Agreement shall be binding on
the heirs, representatives, and assigns of the parties except
as to the specific paragraphs that contain provisions for
termination of obligations on the death of either or both
(Docs. 53, Ex. 1 at ¶ 5 and 57 at ¶ 5; Doc. 30 at
to this marital settlement agreement, Linda relinquished her
share of Lawn Managers in exchange for certain consideration
described in the court orders. (Doc. 57 at ¶ 4). The
agreement divested Linda of her rights to the Lawn Managers
marks, awarded Linda use of the name “Progressive Lawn
Managers, ” and imposed rules on the conduct of
business by both Linda and Randy. (Docs. 57 at ¶ 20; 61,
Ex. 1 at ¶ 20). They each agreed not to solicit business
in the zip codes awarded to the other. (Docs. 57 at ¶
22; 61, Ex. 1 at ¶ 22). Linda started Progressive Lawn
Managers in 2012. (Doc. 53, Ex. 1 at ¶ 4).
their divorce, Linda and Randy filed cross motions for
contempt for unrelated violations of the marital settlement
agreement. (Docs. 53, Ex. 6 at ¶ 1; 57 at ¶ 6). The
parties reached a settlement agreement on these motions in
July 2014, which included the extension of Linda's
permission to use the name “Lawn Managers” until
December 31, 2014. (Docs. 53, Ex. 1 at ¶¶ 7-8; 57
at ¶¶ 7-8). This settlement agreement was
incorporated into a judgment on July 25, 2014. (Doc. 57 at
¶¶ 7-8). Defendant argues but plaintiff denies that
Randy violated and continues to violate the zip code
restrictions and is advertising using one of
Progressive's phone numbers. (Docs. 25 at ¶ 11; 57
at ¶¶ 23-25; and 61, Ex. 1 at ¶¶ 23-25;).
alleges that defendant's logo continued to use the phrase
“Lawn Managers” after December 31, 2014, in that
the logo contains “Lawn Managers” in large type
and the word “Progressive” in small type in an
image to the left. (Doc. 1 at 18, Ex. 3). In November 2015,
plaintiff's counsel sent a letter to defendant requesting
that it change its logo, signage, and business practices.
(Docs. 53, Ex. 1 at ¶ 13; 57 at ¶ 13).
Defendant's counsel responded in December 2015 explaining
defendant would not change its logo, signage, or business
practices. (Docs. 53, Ex. 1 at ¶ 14; 57 at ¶ 14).
February 4, 2016, plaintiff filed the instant suit against
defendant, alleging defendant's continued use of the
names “Progressive Lawn Managers” and “Lawn
Managers” infringed its trademark rights. (Docs. 53,
Ex. 1 at ¶ 15; 57 at ¶ 15). In its amended answer
to plaintiff's complaint, defendant alleges:
15. As a result of its allowing others to use the claimed
LAWN MANAGERS marks without exercising control of the
services or goods associated with the registered marks, LMI
has nakedly licensed its marks and thereby abandoned the LAWN
MANAGERS marks within the meaning of 15 U.S.C. § 1127.
(Docs. 53, Ex. 18 at ¶ 1; 57 at ¶ 18).
asserts that “[i]n 2011, defendant's principal was
aware of and participated in the discussions with trademark
counsel.” (Doc. 53, Ex. 1 at ¶ 17) (citing Doc.
53, Ex. 4). Defendant denies this statement, and the court
notes that the cited testimony refers only to an accidental
phone call from plaintiff's counsel to Ms. Smith and the
general statement with no elaboration from Ms. ...