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Public Impact, LLC v. Boston Consulting Group, Inc.

United States District Court, D. Massachusetts

March 11, 2016

PUBLIC IMPACT, LLC, Plaintiff,
v.
BOSTON CONSULTING GROUP, INC.,

MEMORANDUM AND ORDER ON PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

F. DENNIS SAYLOR IV UNITED STATES DISTRICT JUDGE.

This is an action for trademark infringement of the mark “PUBLIC IMPACT.” Plaintiff Public Impact, LLC is an education policy and management consulting firm based in North Carolina. Plaintiff is the owner of the federally registered trademark PUBLIC IMPACT. Defendant Boston Consulting Group, Inc., is a global management consulting firm based in Massachusetts. The Centre for Public Impact (“CPI”) is a Swiss not-for-profit foundation created by BCG in June 2014. Public Impact has moved for a preliminary injunction against BCG’s use of the PUBLIC IMPACT mark in connection with CPI.

For the reasons described below, plaintiff’s motion will be granted in part and denied in part.

I. Factual Background

A. Public Impact

Public Impact, LLC is an education policy and management consulting firm based in Carrboro, North Carolina. (Hassel Decl. ¶¶ 3, 7). According to Public Impact, its employees are researchers, policy experts, and consultants who work to improve learning outcomes for K-12 students in the United States. (Hassel Decl. ¶¶ 12, 13). Public Impact’s clients include private foundations, government agencies, school districts, charter systems, nonprofit organizations, and education leaders nationwide. (Hassel Decl. ¶¶ 7, 14-15).

Public Impact is the owner of a federally registered mark, PUBLIC IMPACT, U.S. Reg. No. 2805013 (the “mark”), which it uses in connection with its consulting services in the field of education. (Hassel Decl. ¶ 8, Ex. A). Public Impact registered the PUBLIC IMPACT mark in 2004. In 2009, the United States Patent and Trademark Office issued a notice confirming that the mark is incontestable. (Hassel Decl. ¶ 10, Ex. C).

Although it is a small company, Public Impact contends that it is well-known in the education field. Co-founder Bryan Hassel has served on the President’s Commission on Excellence in Special Education. (Hassel Decl. ¶ 20). In addition, the Department of Education chose Public Impact to lead its initiative assisting states winning “Race to the Top” grants for school turnaround efforts and to author a report on the national vision for the future of charter schools. (Hassel Decl. ¶¶ 21, 24). Public Impact has also received unsolicited press coverage at least 39 times in the last four years. (Hassel Decl. ¶ 25, Ex. F).

Public Impact contends that it has used the PUBLIC IMPACT mark in performing all of those projects. It also contends that it has sought to enhance the public profile of its mark through a “thought leadership” strategy, which is a business development model built around consultants who “create informative websites, host persuasive seminars, book speaking engagements and get published as a columnist and eventually as author of a book.” Henry Devries, How Consultants Can Market Like a Thought Leader, Forbes, available at http://www.forbes.com/sites/henrydevries/2013/10/25/how-consultants-can-market-like-a- thought-leader/. In carrying out its strategy, Public Impact has sponsored conferences and published reports and its representatives have spoken at public forums.

Public Impact also uses the mark on three websites (PublicImpact.com, OpportunityCulture.org, and SchoolTurnarounds.org) and in marketing its services on social media websites such as Facebook (facebook.com/publicimpact) and Twitter (twitter.com/publicimpact). (Hassel Decl. ¶¶ 28, 29, Ex. G). Finally, Public Impact contends that it has used the mark in connection with hundreds of thousands of dollars spent marketing its services. (Hassel Decl. ¶ 16).

B. Boston Consulting Group

Boston Consulting Group, Inc., is a global management-consulting firm based in Boston, Massachusetts, with 82 offices in 46 countries. (Pitman Decl. ¶¶ 3-4). BCG works with clients from the private, public, and not-for-profit sectors. (Pitman Decl. ¶ 4).

BCG maintains an “Education” group focused on “tackling the key drivers of improvement in education.” (DeAntonio Decl. Ex. E). The group “covers all major educational topics and works with every type of educational organization.” (DeAntonio Decl. Ex. E). BCG’s Education group clients include school districts, charter systems, and government agencies. (DeAntonio Decl. Ex. F).

C. The Centre for Public Impact: A BCG Foundation

The Centre for Public Impact is a Swiss not-for-profit foundation created by BCG in June 2014. Its stated mission is to improve the efficiency and effectiveness of governments’ delivery of public services to their citizens. In addition to the field of education, CPI’s work addresses government provision of other public services, such as electricity, healthcare, transportation, housing, and waste and water-supply management. (Pitman Decl. ¶¶ 5, 9-10).

BCG owns several trademark registrations for the mark THE CENTRE FOR PUBLIC IMPACT: A BCG FOUNDATION (the “CPI mark”), including registrations in the United Kingdom, Australia, and Switzerland. (Pitman Decl. ¶ 7). It has another application for the mark pending in Canada. (Id.). BCG has not sought trademark registration for the CPI mark in the United States. CPI uses its mark for “organizing, arranging, and conducting seminars, tutorials, lectures, exhibitions, and conferences including concerning issues in the fields of governance, bureaucratic administration, general welfare, and societal advancement.” (Id.).

CPI maintains a website (centreforpublicimpact.org) on which it advertises CPI events. It also advertises through word of mouth and news coverage. (Pitman Decl. ¶¶ 8, 9). CPI also maintains a Twitter account under the username “@4PublicImpact, ” and uses the hashtag “#publicimpact.” (Hassel Decl. Ex. V). CPI uses Twitter to promote articles and events, and has posted tweets on education policy. (Hassel Decl. Ex. Q, V).

II. Procedural History

On June 9, 2015, Public Impact filed a motion for injunctive relief in federal court in North Carolina. Public Impact, LLC v. Boston Consulting Group, Inc., Case No. 1:15-cv-464 (M.D. N.C. 2015). On August 4, 2015, that case was dismissed for lack of personal jurisdiction and Public Impact’s motion for injunctive relief was denied as moot. On September 15, 2015, Public Impact refiled its lawsuit and motion in this Court.

III. Analysis

To obtain a preliminary injunction in a trademark case, a party must show (1) a substantial likelihood of success on the merits, (2) a significant risk of irreparable harm, (3) that the balance of equities is in its favor, and (4) that the granting of the injunction will not adversely affect the public interest. See TEC Eng’g Corp. v. Budget Molders Supply, Inc., 82 F.3d 542, 544 (1st Cir. 1996).

A. Likelihood of Success on the Merits

A plaintiff seeking to establish claims for infringement and unfair competition under the Lanham Act must show “both that its mark merits protection and that the allegedly infringing use is likely to result in consumer confusion.” Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006). Under Massachusetts law, “[t]he gravamen” of an infringement claim “is the same as under the Lanham Act: likelihood of confusion.” Jenzabar, Inc. v. Long Bow Group, Inc., 82 Mass.App.Ct. 648, 654 n.11 (2012).

Plaintiff advances both an ordinary confusion claim and a “reverse confusion” claim. An ordinary confusion claim is one in which an established senior user asserts that a smaller junior user is diverting the senior user’s customers and free-riding on the senior user’s pre-existing reputation and goodwill. Reverse confusion occurs when a large or well-established junior user enters a new market and threatens to overwhelm a smaller senior user. See generally Attrezzi, LLC v. Maytag Corp., 436 F.3d 32 (1st Cir. 2006). In a reverse confusion case, injury can result either because (1) current or prospective customers of the senior user associate the senior user’s services with services offered by the junior user, or (2) because the junior user’s use of the mark “saturates and the market and overwhelms the senior user” such that “the senior user loses the value of the trademark, its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets.” Id. at 39 (quoting Ameritech, Inc. v. AM Info. Techs. Corp., 811 F.2d 960, 964 (6th Cir. 1987)).

As the Third Circuit has noted, the doctrine of “reverse confusion” should be applied with some care. See A & H Sportswear, Inc. v. Victoria’s Secret Stores, 237 F.3d 198, 228 (3d Cir. 2000). The court there observed that “the chief danger inherent in recognizing reverse confusion claims is that innovative junior users, who have invested heavily in promoting a particular mark, will suddenly find their use of the mark blocked by plaintiffs who have not invested in, or promoted, their own marks. Further, an overly-vigorous use of the doctrine of reverse confusion could potentially inhibit larger companies with established marks from expanding their product lines . . . .” Id. (citation omitted). Furthermore, “selection of a mark with a [relatively common name] naturally entails a risk of some uncertainty and the law will not assure absolute protection.” Id. at 227. The doctrine, nonetheless, protects important interests that are relevant here. Id. (“[W]ithout the existence of such a claim, smaller business owners might not have any incentive to invest in their marks at all, for fear the mark could be usurped at will by a larger competitor.”).

1. The Protectability of Public Impact’s Trademark

In 2009, the USPTO issued a notice confirming that the mark PUBLIC IMPACT was incontestable. (Hassel Decl. Ex. C). Ordinarily, incontestability is “conclusive evidence of the validity of the registered mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115(b); see also Keds Corp. v. Renee Int’l Trading Corp., 888 F.2d 215, 220 (1st Cir. 1989) (holder of an incontestable mark “may rely on incontestability to enjoin infringement”).

Incontestable marks, however, are subject to the defense that the mark is generic. See 15 U.S.C. § 1115(b); Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 195 (1985) (“An incontestable mark that becomes generic may be canceled at any time” under 15 U.S.C. § 1064).[1] “A generic term is one that does not distinguish the goods of one producer from the goods of others. Instead, it is one that either by definition or through common use has come to be understood as referring to the genus of which the particular product is a species.” Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 373-74 (1st Cir. 1980) (internal quotations omitted).

Registration of a mark establishes a rebuttable presumption that the term is not generic. 15 U.S.C. § 1115(a); Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 705 (1st Cir. 2007). In order to overcome the presumption, the alleged infringer must demonstrate the mark’s genericness by a preponderance of the evidence. Colt, 486 F.3d at 705. The determination of whether a mark is generic relies on a two-part inquiry. First, the genus of the goods or services at issue must be identified. Second, the court must determine whether the mark at issue is understood by the relevant public to refer primarily to that genus of goods or services. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986).

Plaintiff contends that it uses the PUBLIC IMPACT mark for its education-related research and consulting services. BCG appears to agree in substance, noting at oral argument that plaintiff registered and uses the mark “in connection with public policy consulting.” (Tr. 26:14). Thus, for the purposes of this analysis, the Court assumes that the relevant genus of services is “consulting services.”

As evidence of the public’s understanding of the mark, BCG has provided a list of 27 third-party uses of the words “public impact.” That list, however, falls well short of meeting BCG’s burden to show that the relevant public understands the term to refer primarily to consulting services. To start, two of the BCG’s examples are organizations located outside of the United States.[2] Furthermore, many of the organizations cited by BCG use only the words “Public” or “Impact, ” and do not use the entire phrase or mark PUBLIC IMPACT, thus providing only weak evidence that the mark is generic. See Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 18 (1st Cir. 2008) (citing Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1150 (9th Cir. 1999) (finding that the analysis of whether the mark is generic should be conducted by looking at an entire mark rather than dissecting it into its smaller parts)).[3]

Third, it appears that many of the example usages of the phrase “public impact” do not use it to refer “consulting services, ” which is the relevant genus for the inquiry. For example, BCG points to the University of Oregon’s Public Impact Graduate Fellowship program, which provides a fellowship award to graduate students “whose research ...


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