United States District Court, D. Columbia.
For CFA Institute, Plaintiff: Ann Katherine Ford, John McClung Nading, Jerald R. Hess, DLA PIPER LLP (U.S.), Washington, DC USA.
Antoine Andre, Defendant, Pro se, Washington, DC USA.
BERYL A. HOWELL, United States District Judge.
The plaintiff, CFA Institute, filed this trademark infringement suit against the defendant, Antoine Andre, alleging that the defendant is improperly using the plaintiff's marks in violation of the Lanham Act, 15 U.S.C. § 1051 et seq., as well as Federal and District of Columbia unfair competition law. See Compl. ¶ ¶ 3, ECF No. 1. Pending before the Court is the motion of the defendant, who is proceeding pro se, to dismiss the plaintiff's Complaint " for lack of jurisdiction, improper venue, insufficient service of process, or failure to state a claim." Def.'s Mot. Dismiss (" Def.'s Mot." ) at 1, ECF No. 7. For the reasons set forth below, the defendant's motion is denied.
The plaintiff is " an internationally renowned global, not-for-profit association of investment professionals." Compl. ¶ 8. Among the plaintiff's enterprises is a certification service, under which the plaintiff " certifies the financial analysis services of others." Id. ¶ 11. The plaintiff " owns twelve United States trademark registrations . . . with a date of first use at least as early as 1962." Id. ¶ 10. Among those marks are " CFA," " Chartered Financial Analyst," " CFA Institute," and variations on those marks. See id. ¶ 11.
The mark " CFA Chartered Financial Analyst" was registered with the United States Patent and Trademark Office on December 17, 2002 and was deemed incontestable on September 3, 2008 for " financial analysis services." Compl. ¶ 17; id. Ex. E. (United States Trademark Registration No. 2661114) at 1, ECF No. 1-5. The mark " CFA" is registered for " association services, namely, the promotion of interest and professional standards in the field of financial analysts," as well as for " educational services" and for " printed publications in the field of financial analysis and in support of the interests of financial analysts," and is also incontestable. See Compl. ¶ ¶ 13-15; id. Exs. A--C (United States Trademark Registration Nos. 935504; 2493899; 2495459). Since these marks are " incontestable," the plaintiff has the right to " exclusive use of the" plaintiff's marks " throughout the United States in connection with" financial analysis services.
See Compl. ¶ 27; see also 15 U.S.C. § 1115(b).
The plaintiff's members " are awarded the right to use the CFA Certification Mark" and " the professional designation 'Chartered Financial Analyst,' or 'CFA'" after, inter alia, amassing a set amount of professional experience and passing " a series of three rigorous, six-hour examinations." Compl. ¶ ¶ 30-31. The plaintiff asserts that its marks " hold great value for [the plaintiff's] charterholders," and that its marks are recognized " as the definitive standard for measuring competence and integrity in the fields of portfolio management and investment analysis," id. ¶ ¶ 35, 37.
The plaintiff alleges that the defendant, who is not certified by the plaintiff, " adopted and began using marks that are identical to or substantially indistinguishable from" three of the plaintiff's marks: CFA, CFA Institute, and Chartered Financial Analyst. Compl. ¶ ¶ 39-40. Specifically, the plaintiff alleges that the defendant " deliberately and willfully holds himself out as 'Tony Andre, CFA' . . . to suggest falsely that he has been certified by CFA Institute, is a CFA charterholder, and is entitled to use" the plaintiff's marks. Id. ¶ 45. The plaintiff further alleges that (1) the defendant's " [s]ervices are in direct competition with" the plaintiff's services, id.¶ 41; (2) the defendant's use of the plaintiff's marks " is identical to and confusingly similar to" the plaintiff's marks " in appearance, sound, meaning, and commercial impression," id.¶ 42; and (3) the defendant's use of the plaintiff's marks " trades off the goodwill of" the plaintiff's marks, id. ¶ 43. The plaintiff asserts that " [c]onsumers are likely to believe mistakenly that Defendant successfully completed the rigorous CFA Program and adheres to the CFA Institute Code of Ethics and Standards of Professional Conduct," which, the plaintiff contends, " is likely to harm consumers." Id. ¶ 49. The plaintiff asserts that it has requested the defendant cease using its marks, but such requests have been rebuffed. See id. ¶ 47.
The defendant responded to the complaint by filing his one page " Motion to Dismiss Under Rule 12(b) for Lack of Jurisdiction, Improper Venue, Insufficient Service of Process, or Failure to State a Claim." Def.'s Mot. at 1. The plaintiff filed a timely opposition, see Pl.'s. Opp'n Def.'s Mot. (" Pl.'s ...