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CrossFit, Inc. v. Mustapha

United States District Court, D. Massachusetts

February 11, 2016

CROSSFIT, INC., Plaintiff,
v.
DONNY MUSTAPHA, individually and d/b/a CROSSTRAIN SPORTS CLUB, f/k/a CHELMSFORD SPORTS CLUB, Defendant.

MEMORANDUM AND ORDER ON PLAINTIFF’S MOTION FOR ENTRY OF JUDGMENT

F. DENNIS SAYLOR, IV UNITED STATES DISTRICT JUDGE.

This is an action for trademark infringement. Plaintiff CrossFit, Inc., is a Delaware corporation principally engaged in the business of fitness training. Defendant Donny Mustapha, who is proceeding pro se, runs the CrossTrain Sports Club in North Chelmsford, Massachusetts.[1]CrossFit has brought suit against Mustapha, contending that he infringed on its registered “CrossFit” trademark. The complaint asserts four claims: (1) trademark infringement under the Lanham Act; (2) false designation of origin under the Lanham Act; (3) trademark dilution under the Lanham Act; and (4) violation of Mass. Gen. Laws ch. 93A.

In September 2013, the Court entered a preliminary injunction enjoining Mustapha from using the CrossFit mark and any substantially similar variation.[2] In July and August 2014, both parties moved for summary judgment. CrossFit moved for summary judgment on its trademark infringement claim and contended that Mustapha’s use of the marks “CrossFit, ” “CrossBox, ” “CrossKick, ” and “CrossTrain” infringed on its trademark as a matter of law. It also moved for summary judgment on its Chapter 93A claim and requested statutory damages and attorneys’ fees. Mustapha moved for summary judgment solely on the ground that CrossFit’s claims were barred by the doctrine of unclean hands. In February 2015, Mustapha filed a trademark application for “CrossBox” with the Trademark Trial and Appeal Board (“TTAB”). CrossFit filed an opposition to that application in July 2015, and the TTAB suspended the proceeding pending the outcome of this litigation.

The Court denied Mustapha’s motion for summary judgment and granted CrossFit’s motion for summary judgment as to its infringement claim for Mustapha’s use of the “CrossFit” mark. The Court, however, denied CrossFit’s motion as to its infringement claims for the “CrossBox”, “CrossKick”, and “CrossTrain” marks (the “new marks”), concluding that CrossFit had not established a likelihood of confusion as a matter of law. The Court granted summary judgment for CrossFit on its Chapter 93A claim, but concluded that a trial was necessary to determine whether Mustapha acted willfully for damages purposes.

CrossFit has moved for an entry of judgment because it wishes to proceed before the TTAB in order to oppose Mustapha’s application for the “CrossBox” mark. Specifically, CrossFit requests that the Court (1) enter judgment on its trademark infringement claim for the “CrossFit” mark (Count One) and its Chapter 93A claim (Count Four), (2) convert the existing preliminary injunction into a permanent injunction, and (3) award it statutory damages pursuant to 15 U.S.C. § 1117(c) in the amount of $200, 000. CrossFit has stipulated to dismissing its claims for trademark infringement as to the new marks, its claim for treble damages for a willful violation of Chapter 93A, and its claims for Lanham Act false designation (Count Two) and trademark dilution (Count Three). CrossFit has made those dismissals, however, “contingent upon the entry of a permanent injunction . . . and an award of statutory damages.” (Pl. Mem. 12). Mustapha has opposed CrossFit’s motion and has made an oral motion for reconsideration of the Court’s summary judgment order. Essentially, Mustapha contends that “CrossFit” is a generic mark not subject to protection under the Lanham Act.

For the following reasons, Mustapha’s motion for reconsideration will be denied, and CrossFit’s motion for an entry of judgment will be granted in part and denied in part. The Court will award CrossFit statutory damages in the amount of $10, 000.

I. Background

The relevant facts are set forth in the Court’s November 16, 2015 summary judgment memorandum and order. The following background is provided only for summary purposes.

CrossFit, Inc., is a sports fitness training company. It owns sixteen federally registered trademarks and service marks for the word mark “CrossFit, ” including trademarks for fitness training, fitness equipment, nutritional supplements, computer software related to tracking exercises, entertainment services, clothing, and footwear. The trademark for the “CrossFit” trade name and service mark used in connection with fitness training services, Registration No. 3, 007, 458, was issued on October 18, 2005.

The CrossTrain Sports Club is a fitness facility in Chelmsford that is owned by Donny Mustapha. In May 2012, Mustapha contacted CrossFit to determine the process for becoming an affiliate. At some point between June and October 2012, Mustapha’s club began offering “CrossFit” classes, although it was not in fact affiliated with CrossFit. During that period, Mustapha also applied for affiliation with CrossFit. After discovering Mustapha was using the “CrossFit” mark in 2012, CrossFit demanded that he remove all references to “CrossFit” on the club’s website and promotional materials. In January 2013, CrossFit discovered that Mustapha was still using the “CrossFit” mark. CrossFit demanded that Mustapha immediately cease any use of the name. Mustapha responded by promising to remove all references to “CrossFit” from the club’s website and advertising materials.

In June 2013, CrossFit discovered that Mustapha had begun to use the term “CrossFit” again. CrossFit then filed this action on June 21, 2013. The complaint asserts claims for (1) trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114(1), (2) false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1), (3) trademark dilution in violation of the Lanham Act, 15 U.S.C. § 1125(c), and (4) unfair and deceptive trade practices in violation of Mass. Gen. Laws ch. 93A.

On August 29, 2013, CrossFit moved for a preliminary injunction to prevent Mustapha from using the “CrossFit” mark. On September 30, 2013, the Court issued a preliminary injunction against Mustapha’s use of the “CrossFit” mark, including any substantially similar variation, in connection with his fitness-training services.

After the preliminary injunction, Mustapha changed the name of the club from the “Chelmsford Sports Club” to the “CrossTrain Sports Club.” He also began promoting fitness training classes that he refers to as “CrossBox, ” “CrossKick, ” and “CrossTrain.” He also started using the slogan, “Fitness isn’t a sport it’s a lifestyle”-- a takeoff on the CrossFit slogan, “Fitness as a Sport.”

On February 25, 2014, CrossFit filed a motion to modify the preliminary injunction, seeking, among other things, to prevent Mustapha from using the terms “CrossBox”, “Cross Kick”, “CrossTrain”, and “Fitness isn’t a sport it’s a lifestyle”, and to prevent him from using the term “Fitness” when adjacent to the word “Cross” or any word containing the prefix “Cross.” Mustapha voluntarily stopped using the slogan “Fitness isn’t a sport it’s a lifestyle” after the motion was filed.

The Court referred the motion to the Magistrate Judge for a report and recommendation. After multiple intervening proceedings, on August 4, 2014, the Magistrate Judge recommended that the motion be granted in part and denied in part. After further proceedings, the Court adopted the report and recommendation on December 4, 2014. The preliminary injunction was modified to provide that Mustapha was required to delete any remaining references to, and was enjoined from using, the phrase “Fitness isn’t a sport it’s a lifestyle.” He was also required to replace all references to “Fitness” (capitalized) with “fitness” (lower case) when adjacent to “Cross, ” and was enjoined from using the word “Fitness” (capitalized) when adjacent to ...


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