MEMORANDUM OPINION

Thomas H. Kramer, Anthony N. Delcollo, OFFIT KURMAN, P.A., Wilmington, DE.

Attorneys for Plaintiff.

John C. Andrade, Elio Battista, Jr., Kyle F. Dunkle, PARKOWSKI, GUERKE & SWAYZE, P.A., Dover, DE.

Attorneys for Defendant.

May 24, 2023

Before me is Defendant’s motion for summary judgment. (D.I. 40). The parties have fully briefed the motion. (D.I. 41, 64, 65). For the reasons stated below, Defendant’s motion is granted. I. BACKGROUND Plaintiff sells, installs, and repairs doors for commercial and residential use. (D.I. ^[1], 4 6). Plaintiff has been operating in Maryland, New Jersey, and Pennsylvania, using the mark “Diamond State Door,” since 2013. (D.I. ^[1], 7-8; D.I. 64 at 10 (citing D.I. 64-1, Ex. A, 9:10-14, 21:4-9)).

In August 2020, Plaintiff attempted to register the mark “Diamond State Door.” (D.I. 41- 5, Ex. ^[5] at 118 of 178 (Exhibit 1 of Bradford Deposition)). The application was originally rejected because “Diamond State” was determined to be geographically descriptive. (D.I. 41-4, Ex. ^[4] at DSD 000047). In November 2020, Plaintiff submitted an amended application under Lanham Act § 2(f) claiming the mark had acquired distinctiveness. (D.I. 41-4, Ex. ^[4] at DSD 000038). Section 2(f) permits registration of a mark “which has become distinctive of the applicant’s goods in commerce.” 15 U.S.C. § 1052(f). Plaintiff's application was granted. (D.I. 1-1, Ex. A).

Defendant, Diamond State Pole Buildings, has been in business in Delaware since 2008. 41 at 6 (citing D.I. 41-6, Ex. ^[6], § 3)). In 2019, Defendant created “Diamond State Overhead Doors” as a division of its business. (/d., Ex. ^[6], § 7). Since 2019, Diamond State Overhead Doors has been selling overhead doors in Delaware and the Eastern Shore of Maryland. (D.I. 41 at 7 (citing D.I. 41-6, Ex. ^[6], 4 9)).

Plaintiff filed this lawsuit on September 1, 2021. Plaintiff asserts claims of trademark infringement under 15 U.S.C. § 1114(1) (Count I), false designation of origin under 15 U.S.C. § 1125(a) (Count II), violations of the Delaware Deceptive Trade Practices Act, 6 Del. C. §§ 2531 et seq. (Count III), and tortious interference with prospective business advantage (Count IV). (D.I. ^[1] at 7-11).

I. LEGAL STANDARD

“The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” FED. R. Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317, 330 (1986). Material facts are those “that could affect the outcome” of the proceeding. Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir. 2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). “[A] dispute about a material fact is ‘genuine’ if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party.” Jd. The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party’s case. Celotex, 477 U.S. at 323.

The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986); Williams v. Borough of West Chester, 891 F.2d 458, 460-61 (3d Cir. 1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: “(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations . .., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute... .” FED. R. Civ. P. 56(c)(1). The non-moving party’s evidence “must amount to more than a scintilla, but may amount to less (in the evaluation of the court) than a preponderance.” Williams, 891 F.2d at 460-61.

When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party’s favor. Scott y. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007). If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp., 477 U.S. at 322. Il. DISCUSSION The elements of federal trademark infringement and federal unfair competition are (1) the mark is valid and protectable; (2) Plaintiff owns the mark; and (3) Defendant’s use of the mark causes a likelihood of confusion. A & H Sportswear, Inc. v. Victoria's Secret Stores, Inc.,237 F.3d 198, 210 (3d Cir. 2000). Violations of the Delaware Deceptive Trade Practices Act are evaluated under the same standard. Treasury Mgmt. Servs., Inc. v. Wall St. Sys. Delaware, Inc., 2017 WL 1821114, at *5 (D. Del. May 5, 2017) (citing Keurig, Inc. v. Sturm Foods, Inc., 2012 WL 4049799 (D. Del. Sept. 13, 2012)).

Defendant argues that it is entitled to summary judgment on each count because Plaintiff's mark is not valid and protectable. (D.I. 41 at 2, 8, 19). Defendant contends that Plaintiff's mark is geographically descriptive and is not protectable because it lacks secondary meaning. (Jd. at 8-9).

Plaintiff contends its mark has secondary meaning. Plaintiff argues that Defendant is not entitled to summary judgment because there are genuine issues of material fact as to whether its mark has secondary meaning.

A. Secondary Meaning

“If the mark has not been federally registered or, if registered, has not achieved incontestability, then validity depends on proof of secondary meaning, unless the unregistered or contestable mark is inherently distinctive.” Com. Nat’l Ins. Servs., Inc. v. Com. Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000) (footnotes and internal quotation marks and citations omitted). Plaintiff has registered its mark, but has not argued that its mark is inherently distinctive or that it has achieved incontestability status. Therefore, “[P]laintiff must establish secondary meaning in [the] mark at the time and place that [D]efendant began use of the mark.” /d.

“Secondary meaning’ is a term of art in trademark law that refers to ‘a mental association in buyers’ minds between the alleged mark and a single source of the product.’” Parks LLC v. Tyson Foods, Inc., 863 F.3d 220, 226 (3d Cir. 2017) (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:5 (4th ed. 2017)). The Third Circuit has identified a non-exclusive list of factors to consider when determining if a mark has secondary meaning:

(1) the extent of sales and advertising leading to buyer association; (2) length of use; (3) exclusivity of use; (4) the fact of copying; (5) customer surveys; (6) customer testimony; (7) the use of the mark in trade journals; (8) the size of the company; (9) the number of sales; (10) the number of customers; and, (11) actual confusion.

Com. Nat'l, 214 F.3d at 438; see Engage Healthcare Commc'ns, L.L.C. v. Intellisphere, L.L.C., 792 F. App'x 178, 185 (3d Cir. 2019). Both parties agree that customer testimony and the use of the mark in trade journals are not relevant in the present case as there is no evidence in record concerning these factors. (D.I. 41 at 17; D.I. 64 at 11). I address the remaining factors.

Plaintiff argues there is at least a disputed material fact as to whether Defendant copied the name from Plaintiffs mark. Mr. Bradford stated in his deposition that Defendant adopted the name shortly after they performed work for him. (D.I. 64-1, Ex. A at 34:16-36:23).

Given the timing of when Defendant began using its mark, relative to its exposure to Plaintiff's mark, and taking all reasonable inferences in Plaintiff's favor, which I am required to do, there is some evidence indicating Defendant may have copied the mark from Plaintiff. At this stage, a reasonable factfinder could determine that this factor weighs in favor of finding secondary meaning.

Because Plaintiff has not conducted a customer survey, I find this factor to be irrelevant.* necessary that a majority of that group do so. It is only necessary that a ‘substantial part’ of the buying class make such an association.”).

Plaintiff counters that it has “assembled more than a scintilla of evidence to support actual confusion” by citing to instances were individuals were confused between Plaintiff and Defendant. Plaintiff points to seven instances where individuals confused Plaintiff with Defendant (D.I. 64 at 12-13): (1) an affidavit from Edward Schinner, a potential customer who mistook Defendant’s listing on Google for Plaintiff (D.I. 64-3, Ex. C); (2) an affidavit from Frank Welsh, owner of Customer Theater Design Security, who has a business relationship with Mr. Bradford, has known Plaintiff for four years, and confused Defendant’s listing on Google for Plaintiff (D.I. 64-4, Ex. D); (3) an affidavit from Randy Perkins, owner of Expert Overhead Doors, who has a business relationship with Mr. Bradford, has known Plaintiff for 15 years, and mistook Defendant’s advertisement on Facebook for Plaintiff's (D.I. 64-5, Ex. E); (4) deposition testimony of Tom Wersinger, a customer of Defendant who later contacted Plaintiff thinking Plaintiff was Defendant (D.I. 64-9, Ex. I); (5) an email from Andy Trout, a representative from Plaintiff's supplier, who mistook Defendant’s listing on Google for Plaintiff (D.I. 64-8, Ex. H); (6) Mr. Bradford’s deposition testimony about an unnamed individual who scheduled and canceled an appointment with Plaintiff (DI. 64-1, Ex. A at 40:9-42:3); and (7) Mr. Bradford’s deposition testimony about a customer named Polella who was Defendant’s customer and later mistook Plaintiff for Defendant (D.I. 64-1, Ex. A at 50:15-24).

a. Admissibility of Bradford Deposition I find that not all of Mr. Bradford’s testimony is admissible. Mr. Bradford is the founder and principal of Diamond State Door. Mr. Bradford testified that on July 27, 2020, an individual called Plaintiff believing they had “previously engaged with Plaintiff's company.” (D.I. 64 at 3).® Mr. Bradford testified that the individual had never called the company before. (D.I. 64-1, Ex. A at 41:17-21). Mr. Bradford testified that the individual scheduled an appointment and then later canceled it. U/d., Ex. A at 40:9-42:3).

I find this instance of confusion with the unnamed individual has no probative value to secondary meaning. Nothing about Mr. Bradford’s testimony is indicative of confusion, let alone confusion that is relevant to secondary meaning. Mr. Bradford did not interact with the individual; his office manager did. (D.I. 64-1, Ex. A at 41:9-18). Therefore, I do not believe he can testify as to the substance of the conversation with the individual. Even if he could, there would be hearsay issues. Mr. Bradford’s testimony is only admissible to the extent that an appointment was made and then canceled, which would likely be based on personal knowledge. Without more, I don’t think it is a reasonable inference that the individual canceled the appointment because he was confused about the company name.

Mr. Bradford additionally testified that an individual named Polella called Plaintiff under the mistaken belief that Plaintiff installed his garage doors. Mr. Bradford visited the site and saw Defendant’s name on the installed doors. (D.I. 64-1, Ex. A at 49:2-11). Mr. Bradford testified that Polella told him that Polella originally intended to engage with Bradford’s company. (D.I. 64-1, Ex. A at 50:16-24).

With respect to Polella, Mr. Bradford’s testimony indicates that Polella confused Plaintiff s and Defendant’s marks. Polella’s confusion is probative of secondary mzaning. Mr. Bradford’s

® In his deposition, Mr. Bradford also testified about confusion regarding Mr. Schinner, Mr. Welsh, Mr. Trout, and Mr. Perkins. Because Plaintiff has supplied affidavits and other exhibits to support those instances of confusion, it is not necessary to rely on Mr. Bradford’s deposition testimony for these other incidents.

statement regarding Polella’s original intent to hire Plaintiff is inadmissible hearsay as it is an out of court statement offered for the truth of the matter asserted. See Fed. R. Evid. 802. (DI. 64-1, Ex. A at 50:16-24).

b. Analyzing the Evidence The evidence of actual confusion that is indicative of secondary meaning amounts to the affidavits from Mr. Schinner, Mr. Welsh, Mr. Wersinger, Mr. Perkins, Mr. Trout’s email expressing confusion, and Mr. Bradford’s testimony regarding Polella.

I do not think a reasonable factfinder could determine that this factor weighs in favor of secondary meaning based on this evidence. The probative values of experiences like Mr. Trout and Mr. Perkins are limited as these are individuals in the industry, who have a business relationship with Plaintiff, rather than members of the consuming public. See Ford Motor Co. v. Summit Motor Prod., Inc., 930 F.2d 277, 296 (3d Cir. 1991) (“There is no indication of what average consumers, rather than industry insiders, think. Hence, we are reluctant to give any of the above testimony determinative weight.”); see also Engage Healthcare Commc'ns, L.L.C. v. Intellisphere, L.L.C., 792 F. App'x 178, 185 (3d Cir. 2019) (‘T]he consumers’ interpretation of, and sentiment toward, the alleged marks are paramount in determining whether such marks have achieved secondary meaning.”).’

I think the probative value of Mr. Schinner’s declaration is limited. Mr. Schinner states that he sought out Plaintiff because Mr. Bradford’s uncle recommended Plaintiff in 2020. Mr. Schinner does not state that he was previously familiar with Plaintiff or its mark prior to 2020. While Mr.

note that the declarations from Mr. Bradford, Mr. Welsh, and Mr. Perkins, are from “friendly” sources who have business relationships with, or are affiliated with, Plaintiff. The Third Circuit has recognized that “declarations from friendly sources are potentially ‘self-serving and of little probative value.’” Parks, 863 F.3d at 236 (quoting 8/5 Tonawanda St. Corp. v. Fay's Drug Co., 842 F.2d 643, 648 (2d Cir. 1988)).

Schinner confused Defendant’s listing on Google for Plaintiff, it seems his confusion stemmed from the similarity of the marks, not from Plaintiff's mark having attained secondary meaning. See Parks, 863 F.3d at 234 (“Consumers may find an association even if both marks were previously unknown to them.”’).

Defendant argues the deposition testimony of Mr. Wersinger, is not probative of secondary meaning because Mr. Wersinger confused Plaintiff with “Diamond State Pole Buildings,” not “Diamond State Overhead Doors.” (D.I. 65 at 8 (citing D.I. 64-9, Ex. I at 15:5-7)). Typically, evidence of actual confusion pertains to confusion between the plaintiff's mark and the accused infringing mark. See, e.g., Parks, 863 F.3d at 236 (discussing evidence of actual confusion between the accused mark and the plaintiff's mark); 2 McCarthy on Trademarks and Unfair Competition § 15:30 (stating that “evidence of actual confusion caused by the accused designation” is among the “types of evidence most often used to prove” secondary meaning has been achieved). Taking all reasonable inferences in Plaintiffs favor, I think Mr. Wersinger’s confusion is probative as to whether Plaintiff's mark has secondary meaning. The key inquiry with respect to whether a mark has attained secondary meaning is whether there is “a mental association in buyers' minds between the alleged mark and a single source of the product.” Parks, 863 F.3d at 226 (quoting 2 McCarthy on Trademarks and Unfair Competition § 15:5). While Mr. Wersinger confused “Diamond State Pole Buildings,” which is not at issue in this case, for Plaintiff's mark, taking all reasonable inferences in Plaintiffs favor, I think one could infer that Mr. Wersinger had created an association with Plaintiff's mark from the fact that he confused a simile name for Plaintiff's mark. See 2 McCarthy on Trademarks and Unfair Competition § 15:11 (“If buyers are confused between two sources, then this also means that they must have recognized plaintiff's designation as a trademark and associated it only with plaintiff.”).

Plaintiff has produced evidence of actual confusion, but the fact there is some evidence of actual confusion does not mean this factor necessarily weighs in favor of secondary meaning, let alone creates a genuine issue of a material fact. See Parks, 863 F.3d at 236 (“If anything, the paucity of proof of actual confusion suggests that the PARKS mark lacks secondary meaning.”); Flynn v. Health Advoc., Inc., 169 F. App'x 99, 102 (3d Cir. 2006) (finding a call log that recorded instances when people mistakenly called plaintiff when they intended to call the defendant as the only evidence of actual confusion “did not rise to the level of establishing secondary meaning”). That Plaintiff has produced a handful of instances of confusion does not support a finding of secondary confusion. See 2 McCarthy on Trademarks and Unfair Competition §§ 15:41 (“The testimony of only one or a few consumers is usually insufficient to support a finding of secondary meaning.”), 15:45 (“For example, the C.C.P.A. (predecessor of the Federal Circuit) emphasized that secondary meaning requires proof that more than a ‘relatively small number of people’ associate the designation with the applicant for registration. Other courts have stressed that if the evidence shows that only a few people attach a secondary meaning to the designation, that is not adequate.” (footnotes and citations omitted)).

Taking all reasonable inferences in Plaintiff's favor, a reasonable factfinder could not determine that this factor weighs in favor of finding secondary meaning.

the eleven factors a plaintiff can satisfy.” Engage Healthcare, 792 F. Appx. at 185. “[T]he consumers’ interpretation of, and sentiment toward, the alleged marks are paramount in determining whether such marks have achieved secondary meaning.” Jd. Plaintiff has failed to provide evidence to raise a genuine issue of fact that consumers would interpret its mark as having secondary meaning.

The only evidence Plaintiff has provided to support a finding of secondary meaning is that it has used the mark exclusively since 2013, which is a relatively short period of time, a timeline indicating that Defendant may have copied the mark, and a handful of instances of actual confusion. As discussed above, however, these factors do not weigh heavily in favor of finding secondary meaning. Considering that Plaintiff has not conducted extensive advertising, nor provided evidence to demonstrate that its size, the number of customers it has, or its sales are large enough to support the inference that many people associate its mark with itself, Plaintiff's evidence is not sufficient to create a genuine issue of fact that its “mark is interpreted by the consuming public to be not only an identification of the product or services, but also a representation of the origin of those products or services.” Com. Nat'l, 214 F.3d at 438. “To find secondary meaning, jurors would have to make an impermissible leap of faith.” Parks, 863 F.3d at 236 (internal quotation marks and citation omitted).

For these reasons, Plaintiff's mark of “Diamond State Door” is not a valid or protectable mark because it is a geographically descriptive mark that lacks secondary meaning. Because the mark is not valid and protectable, Defendant is entitled to summary judgment on the claims of federal trademark infringement, federal unfair competition, and violation of Delaware Deceptive Trade Practices Act.

B. Tortious Interference with Prospective Economic Advantage

I find that Defendant is entitled to summary judgment on Plaintiff's claim for tortious interference with prospective economic advantage. The elements of tortious interference are “(1) the existence of a valid business relationship or expectancy; (2) knowledge of the relationship or expectancy on the part of the interferer; (3) intentional interference which induces or causes a breach or termination of the relationship or expectancy; and (4) resulting damages to the party whose relationship or expectancy has been disrupted.” Truinject Corp. v. Galderma, S.A., 2020 WL 5095448, at *6 (D. Del. Aug. 28, 2020) (quoting Enzo Life Scis., Inc. v. Digene Corp., 295 F. Supp. 2d 424, 429 (D. Del. 2003)), report and recommendation adopted, 2020 WL 6817088 (D. Del. Nov. 20, 2020). Under Delaware law, the conduct underlying a claim for tortious interference with prospective economic advantage must be wrongful. See KT4 Partners LLC v. Palantir Techs., Inc., 2018 WL 4033767, at *6 (Del. Super. Ct. Aug. 22, 2018) (“{A] plaintiff must also allege that the conduct was ‘wrongful’ to support a claim for tortious interference with prospective economic advantage ....”).

Plaintiff's tortious interference claim is based on “Defendant’s use of the trade name ‘Diamond State Overhead Doors.’” (D.I. 1, § 63). Because I have determined Plaintiff's mark to not be protectable, Defendant’s use of the mark is not wrongful.

Furthermore, in its Answering Brief, Plaintiff only argued that its mark had acquired secondary meaning. Plaintiff did not raise any arguments as to why Defendant is not entitled to summary judgment on Count IV if I determined its mark to be invalid and unprotectable. IV. CONCLUSION For the reasons stated above, Defendant’s motion for summary judgment is granted. An appropriate order will issue.