United States District Court, D. Massachusetts
MEMORANDUM & ORDER
Talwani United States District Judge.
American Consumer Credit Counseling, Inc.'s Motion
for Preliminary Injunction [#6] asks the court to enjoin
Defendant American Consumer Credit, LLC's use of the
marks: “American Consumer Credit”;
“American”; “ACC”; and any other
marks confusingly similar to Plaintiff's “American
Consumer Credit Counseling” and “ACCC”
marks. Although this is a close case, for the reasons that
follow, Plaintiff's Motion for Preliminary
Injunction [#6] is DENIED.
a Massachusetts non-profit incorporated in 1992, provides
confidential counseling regarding credit, debt, housing,
bankruptcy, student loans, and financial education. Pl.'s
Mem. Supp. Prelim. Inj. (“Pl.'s Mem. Supp.”)
9 [#7]. Plaintiff “has clients in every state, is
authorized to do business in all 50 states, and is
specifically licensed to provide debt management services in
every state that requires such a license.” Id.
at 9-10. Plaintiff has helped over 560, 000 people in its
twenty year history, including 55, 000 in 2015 alone. Decl.
Steven Trumble Supp. Pl.'s Mot. Prelim. Inj.
(“Trumble Decl.”) ¶ 5 [#7-1]. Plaintiff owns
Federal Registration Nos. 3, 253, 648 for “American
Consumer Credit Counseling, ” and 2, 366, 063 for
“ACCC.” Compl. ¶ 22 [#1]. Both registrations
are for “credit and debt inquiry and consultation
services, debt and credit counseling; debt repayment planning
and scheduling; debt consolidation services; educational
services, namely conducting seminars, workshops, and
individual instruction in the field of credit, debt, and
money management.” Id. Since 1992, Plaintiff
has provided services in connection with these marks.
is a Florida limited liability corporation formed by Dana
Micallef in 2013. Decl. Dana Micallef Supp. Def.'s
Opp'n Pl.'s Mot. Prelim. Inj. (“Micallef
Decl.”) ¶ 13 [#22]. Nine years prior to forming
Defendant, Micallef began operating a business in Florida
under the fictitious name American Consumer Credit.
Id. ¶ 3. Micallef provided counseling and
advice to consumers regarding timeshare obligations and
“to consumers struggling with debt or facing problems
with their credit, ” and referred customers to credit
counseling agencies in exchange for a referral fee. Suppl.
Decl. Dana Micallef Supp. Def.'s Opp'n Pl.'s Mot.
Prelim. Inj. (“Suppl. Micallef Decl.”) ¶ 2
in 2007, Micallef adopted a second fictitious name - A Debt
Consolidation Company - for providing “advice and
counseling with respect to financial matters.”
Id. ¶ 5. In 2009, Micallef started operating
under a third fictitious name, AAA Debt Consolidation, and
temporarily stopped operating his business under the name
“American Consumer Credit” when that fictitious
name expired. Id. ¶¶ 4-5.
2011 and 2012, Micallef operated under all three fictitious
names, despite the 2009 expiration of the fictitious name
registration for “American Consumer Credit.”
Id. ¶¶ 5, 8. In 2012, Micallef also
founded two non-profit corporations focused on assisting
individuals with their timeshare obligations. Id.
¶ 9-10. Those companies were registered as Florida
Resale Recovery, Inc., and American Consumer Services, Inc.
Id. American Consumer Services, Inc., launched a
website in August 2012 with the domain name
“consumeraide.org.” Id. ¶ 11. The
website featured the name “American Consumer
Credit” and stated that “American Consumer
Services” was a “subsidiary” of
“American Consumer Credit.” Id. In early
2013, Micallef stopped operating these non-profit companies.
Id. ¶ 12. The consumeraide.org website was
maintained through August 1, 2016, when the registration
expired and the website was taken down. Id.
after learning that the domain name
“www.americanconsumercredit.com” was unavailable,
Micallef selected, and on January 7, 2013, registered, the
name “aconsumercredit.com.” Def.'s Opp'n
Mot. Prelim. Inj. (“Def.'s Opp'n”) 8
[#20]; Micallef Decl. ¶ 12 [#22]. Micallef formed
Defendant two weeks later. Micallef Decl. ¶ 13.
Defendant uses the aconsumercredit.com domain and offers
advice to families and individuals seeking to cancel their
timeshare obligations. Def.'s Opp'n 5 [#20].
Defendant evaluates its clients' timeshare obligations,
and determines the course of action for cancelling
undesirable timeshare contracts. Id. at 7. Ancillary
to the timeshare cancellation business, Defendant also offers
information about protecting credit scores, avoiding
bankruptcy, and managing debt. Id.
March 2014, Defendant purchased its first paid advertisement
on Google. Suppl. Micallef Decl. ¶ 14 [#45]. In 2014 and
2015, Defendant added additional advertising campaigns.
Id. In March 2016, Defendant retained Fill in the
Blank to improve Defendant's search engine optimization
strategy. Id. ¶ 15; Decl. Cory Hubbell Supp.
Def.'s Opp'n Mot. Prelim. Inj. (“Hubbell
Decl.”) ¶¶ 2, 4 [#44]. Since March 2016,
Defendant has paid Fill in the Blank $65, 000 in fees, and
has paid Google $1, 855, 620.11 in advertising fees. Suppl.
Micallef Decl. ¶ 15 [#45]. Defendant is currently
spending approximately $250, 000 per month for advertising on
preliminary injunction is an “extraordinary and drastic
remedy . . . .” Munaf v. Geren, 553 U.S. 674,
689 (2008). A party seeking a preliminary injunction must
show “(1) a likelihood of success on the merits, (2) a
likelihood of irreparable harm absent interim relief, (3) a
balance of equities in the plaintiff's favor, and (4)
service of the public interest.” Arborjet, Inc. v.
Rainbow Treecare Sci. Advancements, Inc., 794 F.3d 168,
171 (1st Cir. 2015); Winter v. Nat. Res. Def. Council,
Inc., 555 U.S. 7, 20 (2008). The likelihood of success
on the merits and irreparable harm weigh heavily in the
analysis and these factors are assessed in relation to one
another. See W Holding Co., Inc. v. AIG Ins. Co.,
748 F.3d 377, 383 (1st Cir. 2014); Voice of the Arab
World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 32
(1st Cir. 2011); Braintree Labs., Inc. v. Citigroup Glob.
Mkts. Inc., 622 F.3d 36, 42-43 (1st Cir. 2010).
“[W]hen the likelihood of success on the merits is
great, a movant can show somewhat less in the way of
irreparable harm and still garner preliminary injunctive
relief.” E.E.O.C. v. Astra U.S.A. Inc., 94
F.3d 738, 743 (1st Cir. 1996). The burden of proof on all
factors is on the movant. Esso Std. Oil Co. (Puerto Rico)
v. Monroig-Zayas, 445 F.3d 13, 18 (1st Cir. 2006).
Likelihood of Success on the Merits
succeed on a claim of trademark infringement, Plaintiff must
demonstrate that it owns a protectable mark and that
Defendant's use of that mark will likely cause consumer
confusion. 15 U.S.C. § 1125; Borinquen Biscuit Corp.
v. M.W. Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006)
(“Before a party can succeed in an infringement action,
it must demonstrate that its mark merits protection and that
the allegedly infringing use is likely to result in consumer
confusion.”). Here, Plaintiff is able to show a slight
likelihood of success on the merits.
Eligibility for Trademark Protection
can demonstrate that its marks “American Consumer
Credit Counseling” and “ACCC” are
registered. “Registration is ‘prima facia
evidence of the validity of the registered mark.'”
Borinquen Biscuit Corp., 443 F.3d at 117. (quoting
15 U.S.C. § 1115(a)).
argues that Plaintiff's mark as a whole is
generic and therefore not entitled to protection.
Generic terms “serve primarily to describe the products
rather than identify their sources . . . .” Boston
Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 14
(1st Cir. 2008). Generic marks explain “what are
you?” rather than answering the question “where
do you come from?” Id. at 14.
registration of the marks creates a rebuttable presumption
that the mark is not generic. Colt Defense LLC v.
Bushmaster Firearms, Inc., 486 F.3d 701, 705 (1st Cir.
2007). This presumption may be overcome, however, where
“an alleged infringer demonstrates genericness by a
preponderance of the evidence.” Id.; see
also Park ‘N Fly, Inc. v. Dollar Park and Fly,
Inc., 469 U.S. 189, 194 (1985) (“[A] registered
mark may be canceled at any time on the grounds that it has
evaluating a mark's generic-ness, the court must
determine “the primary significance of the phrase to
the relevant public, ” 15 U.S.C. § 1064(3);
Colt Defense LLC, 486 F.3d at 709, considering
evidence such as “(1) consumer surveys; (2) the use of
the term in media publications; (3) use of the term by
competitors in the industry; (4) purchaser testimony
concerning the term; and (5) the plaintiff's use of the
term, ” Boston Duck Tours, LP, 531 F.3d at 18.
“The preferred form of proof includes direct evidence
(such as consumer surveys) suggesting that the average
purchaser actually regards the mark as ...