United States District Court, D. Minnesota
A. Snyder and Michael H. Frasier, Rubric Legal LLC, 233 Park
Avenue South, Suite 205, Minneapolis, MN 55415, for Safeway
Transit LLC and Aleksey Silenko.
Edward Szymanski, Casey A. Kniser, and Eric H. Chadwick,
Patterson Thuente Christensen Pedersen, PA, 80 South Eighth
Street, Suite 4800, Minneapolis, MN 55402, for Discount Party
Bus, Inc., Party Bus MN LLC, and Adam Fernandez.
REPORT AND RECOMMENDATION
BOWBEER UNITED STATES MAGISTRATE JUDGE.
matter is before the Court on Plaintiffs' Motion for
Partial Summary Judgment [Doc. No. 79]. Specifically,
Plaintiffs move for partial summary judgment against
Defendants on Count III of the Second Amended Complaint
(“SAC”) for trademark infringement under 15
U.S.C. § 1125(A), and on Count VII for restoration of
their rights in the domain name rentmypartybus.com under 15
U.S.C. § 1114(2)(D)(v) [Doc. No. 8]. They also appear to
seek a finding as a matter of law that as a result of the
infringement, Plaintiffs are entitled to the entirety of
Defendants' revenues for the period May 1, 2014-the date
the complaint was filed on September 21, 2015. (Pls.'
Mem. Supp. Mot. Summ. J. at 1-2 [Doc. No. 79].) The motion
was referred to the undersigned for a Report and
Recommendation under 28 U.S.C. § 636 and District of
Minnesota Local Rule 72.1(a) [Doc. No. 89]. For the reasons
set forth below, the Court recommends the motion be denied in
and Defendants are fierce competitors in the business of
providing “party buses” for hire. Plaintiffs'
Second Amended Complaint (“SAC”) accuses
Defendants of attempting to steal Plaintiffs' business by
infringing Plaintiffs' trademarks “Rent My Party
Bus, ” “952 LIMO BUS, ” and “Party
Bus MN, ” and by fraudulently registering them as
Defendants' own. (SAC ¶¶ 1, 59-65, 70-74 [Doc.
No. 8].) Plaintiffs also allege Defendants attempted to steal
the associated web domains. (Id. ¶¶
85-92.) In addition to the counts for trademark infringement
and domain “hijacking” that are the subject of
the instant motion, the SAC alleges causes of action for
fraudulent federal registration of trademarks, cancellation
or assignment of federal registration, cancellation of state
registration for trademarks, fraudulent state registration
for trademarks, and violation of Minnesota Statute §
325D.44 [Doc. No. 8].
2008, Gennady Silenko formed the company Party Bus MN LLC.
Plaintiff Aleksey Silenko was identified in the Articles of
Organization as the company's contact. (Frasier Decl. Ex.
A (2008 Articles of Organization for Party Bus MN LLC) [Doc.
No. 81-1].) In October of that year, the name of the business
was changed to Safeway Transit LLC. (Frasier Decl. Ex. B
(Articles of Organization for Safeway Transit LLC) [Doc. No.
81-1].) Plaintiffs' business has grown over the years,
starting with one bus in 2008 and currently running a fleet
of sixteen buses. (Silenko Decl. ¶ 11 [Doc. No.
2008, Plaintiffs purchased the domains www.RentMyPartyBus.com
and www.PartyBusMN.com. (Frasier Decl. Ex. C (Receipts from
GoDaddy) [Doc. No. 81-1].) Plaintiffs used www.PartyBusMN.com
as a landing page to direct users to www.RentMyPartyBus.com.
(Silenko Decl. ¶ 4.) Plaintiffs also launched Facebook
pages using both marks that year, one at
www.Facebook.com/RentMyPartyBus and the other at
www.Facebook.com/PartyBusMN. (Silenko Decl. ¶ 6.) In
2015, Plaintiffs merged the latter page into the former page,
and Silenko states in his declaration that the Facebook page
currently has 28, 000 followers. (Id.) In addition,
from 2008 to the present, “at least some of Safeway
Transit's buses” have prominently displayed
“Rent My Party Bus” on the side or back of the
(Silenko Decl. ¶ 5.)
2009, Silenko purchased business cards for Safeway Transit
“using the names Rent My Party Bus and Party Bus
MN.” (Silenko Decl. ¶ 7.) He has continuously used
those business cards since then. (Silenko Decl. ¶ 7.)
The next year, he “created Twitter handles for Rent My
Party Bus and Party Bus MN, ” and has used both Twitter
accounts consistently since, although his declaration does
not indicate how frequently he uses those accounts or how
many followers they have. (Silenko Decl. ¶ 8.)
2011, Safeway Transit acquired the phone number (952)
546-6287 (952 LIMO BUS). Silenko purchased the domain
www.952LimoBus.com, built that website, and purchased
business cards with that name. (Silenko Decl. ¶ 9.) Safeway
Transit “began placing decals with the names 952 LIMO
BUS and Party Bus MN on the outside and interior of some of
the buses” in 2011 or early 2012, and continues to do
so today. (Silenko Decl. ¶ 10.) Safeway Transit expanded
its marketing of all three marks in 2013 by purchasing
advertising on the radio, in print publications like City
Pages, All Over Media, and Lavender, and online at sites such
as The Knot, Wedding Wire, Limos.com, White Sparks, and Yext.
(Silenko Decl. ¶ 11.)
declaration does not provide any detail, however, as to how
much money has been spent on that advertising, how frequently
it appeared in which media, how many individuals were exposed
to the advertising, or to what extent any particular mark was
featured in the advertising. Moreover, Plaintiffs did not
submit any examples or specimens of their own advertising or
promotional materials depicting any of the asserted marks.
in the record indicates that Plaintiffs have at any time
attempted to register Rent My Party Bus, 952 LIMO BUS, or
Party Bus MN as trademarks with the State of Minnesota or
with the United States Patent and Trademark Office (USPTO).
Discount Party Bus
Fernandez is the sole owner and officer of Discount Party
Bus, Inc., and Party Bus MN LLC. (Frasier Decl. Ex. E at 86:7
(Fernandez Dep.) [Doc. No. 81-1].) He states he first started
his party bus rental service in 2000 or 2001 under the name
Discount Party Bus, which he operated initially as a sole
proprietorship. He later converted it to an LLC and then to a
corporation. (Frasier Decl. Ex. D ¶¶ 3-4 (2014
Fernandez Aff.) [Doc. No. 81-1].) Fernandez testified in
his deposition as the Rule 30(b)(6) representative for all
Defendants in this case that he began using the name
“Party Bus MN LLC” in connection with his
business in 2000 (Frasier Decl. Ex. E at 53:22-25 (Fernandez
Dep.)), and that today, Discount Party Bus and Party Bus MN
LLC are separate active entities but operate as one company.
(Id. at 10:1-12:9.)
sworn answers to interrogatories, Defendants state they have
continuously used Party Bus MN in print and Internet
advertising from 2000 or 2002 to the present; that they used
Rent My Party Bus in print advertising from 2004 to 2008 or
2009; and that they used 952 LIMO BUS (and, it appears, 612
LIMO BUS, 763 LIMO BUS, and 651 LIMO BUS as well) in print
and Internet advertising and in business cards, letters, and
emails from 2006 to 2008 or 2009. (Frasier Decl. Ex. G
(Defendants' Responses to Plaintiffs' Interrogatories
Nos. 1, 2, 4, 5, and 6) [Doc. No. 81-1].) Fernandez's
testimony, while often vague and confusing, was, for the most
part, consistent with the interrogatory responses as to the
claimed dates of use in advertising. (Frasier Decl. Ex. E at
53:16-25, 57:6-16 (Fernandez Dep.) (used Party Bus MN as a
business name from 2000-through the date of deposition, but
stopped using Party Bus MN to advertise his business after
Plaintiffs began using the website with the same domain
name); id. at 60:10-22 (used Rent My Party Bus from
2004 through 2008 or 2009); id. at 61:2-25, 62:1-3
(used 952 LIMO BUS from at least 2004 through 2008 or 2009).)
dispute Defendants' claim that Defendants began using any
of the marks as actual trademarks, or even as business names,
before Plaintiffs began to do so, but point out that, in any
event, Fernandez testified he stopped using Rent My Party Bus
and 952 LIMO BUS to advertise party bus services in 2008 or
2009. (Frasier Decl. Ex. E at 60:10-22, 61:2-25, 62:1-3
(Fernandez Dep.).) Fernandez further testified that he
stopped using 952 LIMO BUS in his advertising because he saw
that Plaintiffs had begun to use it. (Id. at
65:4-11.) He testified he stopped using Party Bus MN in
advertising when Plaintiffs launched a website with the same
name, but has continuously used Party Bus MN as a business
name from 2002 to the present. However, he did not actually
form a limited liability corporation named Party Bus MN LLC
until May 1, 2014. (Frasier Decl. Ex. F (2014 Articles of
Organization for Party Bus MN LLC); Frasier Decl. Ex. E at
15:17-17:3 (Fernandez Dep.); see also Kniser Decl.
Ex. E at 4 (Certificate of Business Organization) [Doc. No.
86-5]; Frasier Decl. Ex. E at 54:20-55:3 (Fernandez Dep.);
Frasier Decl. Ex. F (2014 Articles of Organization for Party
Bus MN LLC).)
also point to several documents they contend evidence their
use of these marks prior to Plaintiffs' use:
• Two documents bearing October 2004 dates, one a letter
addressed to the attention of Adam Fernandez at “Party
Bus MN LLC” from an entity offering to provide drug and
alcohol testing services, and the other a contract for those
services signed by Fernandez “For Party Bus MN
LLC.” (Kniser Decl. Ex. B [Doc. No.
• An advertisement displaying “Rent My Party
Bus” with Fernandez's telephone number, identified
by Fernandez at his deposition as a print advertisement or
flyer created in “late 2000 sometime, . . . '08,
'09, '10, in that area.” (Kniser Decl. Ex. C
(Fernandez Dep. Ex. 19) [Doc. No. 86-3]; Kniser Decl. Ex. F
at 164-68 (Fernandez Dep.) (referring to Ex. 19).)
Decl. Ex. W at 187 [Doc. No. 81-1].)
• Fernandez testified this advertisement ran in print
publications, and was handed out in large numbers to bars and
restaurants where they were hung up “in like a bathroom
stall.” (Id.) Fernandez further testified that
although he did not create new advertisements using that mark
after that time, he still sees the old flyers posted in
bathroom stalls. (Id. at 166:16-21; 167:1-15.)
• An advertisement prominently displaying “952
limo bus” along with Fernandez's telephone number,
with three “Online Listing Insertion Orders” for
twincitiesfun.com dated October 4, 2004, November 7, 2004,
and January 3, 2007. (Kniser Decl. Ex. H [Doc. No.
Discount Party Bus's 2014 Lawsuit Against Safeway
case was not the first trademark dispute between the parties.
In a 2014 lawsuit filed in Hennepin County District Court,
Discount Party Bus alleged that Silenko and Safeway Transit
were infringing the former's rights in the Discount Party
Bus mark. (Frasier Decl. Ex. D (2014 Fernandez Aff.).)
Specifically, Fernandez and Discount Party Bus alleged that
Silenko and Safeway Transit acquired the domain name
discountpartybus.com, and that at various times during the
period 2009-2011, they redirected visitors from
discountpartybus.com, initially to Safeway Transit's own
website rentmypartybus.com and, in early 2014, to Safeway
Transit's website 952limobus.com. (Id. at
¶¶ 9, 15, 18; Frasier Decl. Ex. H (Leighton Aff.
Exs. A-C (Letters to Silenko and Safeway Transit)) [Doc. No.
Hennepin County lawsuit was settled in April 2014 when
Silenko and Safeway Transit agreed to transfer
discountpartybus.com and related domains to Discount Party
Bus. (Snyder Decl. Ex. 2 (Settlement Agreement) [Doc. No.
37].) But although there is no dispute that Fernandez knew at
the time that Safeway Transit and Silenko were using Rent My
Party Bus, Party Bus MN, and 952 LIMO BUS in their
advertising, the settlement, and the cease-and-desist letters
from counsel for Discount Party Bus that preceded the
lawsuit, did not challenge Plaintiffs' use of those
marks. On the contrary, the cease-and-desist letters focused
only on Discount Party Bus's rights in the Discount Party
Bus mark, and acknowledged without apparent concern that
Safeway Transit was using the domains www.RentMyPartyBus.com,
www.PartyBusMN.com, and www.952limobus.com. (Frasier Decl.
Ex. H (Leighton Aff. Exs. A-C (Letters to Silenko and Safeway
Defendants' Post-Lawsuit Actions Regarding the Disputed
Assumed Names and Trademark Registrations
after settling the 2014 lawsuit, Fernandez filed documents
establishing Party Bus MN LLC with the Minnesota Secretary of
State. The same day, Party Bus MN LLC identified
“952 Limo Bus” and “Rent My Party
Bus” as “assumed names” for the business.
(Frasier Decl. Exs. I, J [Doc. No. 81-1].) On November 11,
2014, Party Bus MN LLC applied for and was granted two
trademark registrations in Minnesota. One was for the word
mark 952 LIMO BUS, along with a logo comprising that mark.
The application, which was signed by Fernandez, states that
the business first used the mark in commerce on June 20,
2006. (Frasier Decl. Ex. K [Doc. No. 81-1].) Fernandez
admitted in his deposition, however, that the 952 LIMO BUS
logo he sought to register was one he had never used.
(Frasier Decl. Ex. E at 74:6-77:21 (Fernandez
second Minnesota trademark registration was for Party Bus MN.
Fernandez claimed in that application that the business had
first used that mark on October 10, 2002. (Frasier Decl. Ex.
L [Doc. No. 81-1].)
November 25, 2014, counsel on behalf of Party Bus MN LLC
filed an application with the USPTO to obtain federal
registration of the mark “RENT MY PARTY BUS.”
(Frasier Decl. Ex. M [Doc. No. 81-1].) The application
claimed the business had used the mark in commerce “at
least as early as” December 31, 2002, and that it had
“become distinctive of the goods/services through the
applicant's substantially exclusive and continuous use in
commerce . . . for at least the five years immediately before
the date [of the application].” The application also
included a specimen purportedly taken from Defendants'
website. (Id.) The registration issued on July 28,
2015. (Frasier Decl. Ex. U (ICANN Decision) [Doc. No. 81-1].)
However, in their Complaint in this action, Plaintiffs
alleged that the specimen was in fact a screenshot of the
Safeway Transit website. (Complaint at ¶ 34 [Doc. No.
1].) A month later, on October 21, 2015, Defendants'
trademark counsel filed an Application for Correction of
Registrant's Mistake in Registration, stating that the
specimen was submitted in error and did not actually relate
to Defendants' business. A new specimen was submitted,
consisting of the flyer that became Exhibit 19 to
Fernandez's deposition. (Frasier Decl. Ex. W [Doc. No.
81-1]; Kniser Decl. Ex. C (discussed above at p. 8).)
December 30, 2014, counsel for Party Bus MN LLC filed another
application with the USPTO, this one to register the mark
“952 LIMO BUS.” (Frasier Decl. Ex. N [Doc. No.
81-1].) The original application asserted only an
“Intent to Use, ” but a subsequent
“Amendment to Allege Use” filed on March 18,
2015, stated that the mark had first been used in commerce by
the applicant “as least as early as” December 31,
2004, and “is now in use in such commerce.”
(Frasier Decl. Ex. O [Doc. No. 81-1].) The subsequent filing
included an undated specimen that appears to be identical to
the flyer produced by Defendants in this case with the 2004
and 2007 “Online Listing Insertion Orders” for
twincitiesfun.com, discussed above at page 10. (Kniser Decl.
Ex. H [Doc. No. 86-8].) The application was granted and the
trademark registered on June 2, 2015. (Frasier Decl. Ex. T
(ICANN Decision) [Doc. No. 81-1].)
on July 2, 2015, Party Bus MN LLC, again through counsel,
filed an application with the USPTO to register the mark
“PARTYBUSMN.” (Frasier Decl. Ex. P [Doc. No.
81-1].) The application stated the applicant had used the
mark in commerce “at least as early as” July 1,
2015, and included a specimen of use that appears to be an
undated screenshot of a portion of a page from the Discount
Party Bus website which prominently display at the bottom the
banner “partybusmn, com.” Nothing in the
application indicates when that screenshot was created or
during what period of time that banner was included on
Defendants' website. The record before the Court does not
indicate whether the mark was eventually registered.
Answer to the SAC initially asserted counterclaims against
Plaintiffs seeking, inter alia, an order declaring
their registrations for the three disputed marks to be valid
and enforceable, that the Defendants were the senior users of
those marks, and that Defendants were entitled to the domain
names rentmypartybus.com and 952limobus.com. (Amended Answer
[Doc. No. 28].) Defendants subsequently dismissed their
counterclaims without prejudice [Doc. No. 47].
assert in their memorandum that Defendants subsequently
cancelled the state and federal trademark registrations.
(Pls.' Mem. Supp. Mot. Summ. J. at 19, 20.) Although
Plaintiffs did not cite any support for that assertion,
Defendants' responsive memorandum did not dispute it.
Defendants' Allegedly Infringing Use of the Disputed
Marks in Internet Advertising
addition to Defendants' efforts to secure both Minnesota
and federal registrations of the disputed marks, Defendants
also made use of 952 LIMO BUS and Rent My Party Bus in their
Internet presence and advertising after they settled the 2014
lawsuit with Plaintiffs. As the sole owner and officer of
Discount Party Bus and Party Bus MN LLC, Fernandez testified
he has always been in charge of the advertising decisions of
his companies. (Frasier Decl. Ex. E at 86:7-12 (Fernandez
Dep.).) To assist in his advertising efforts, he hired a
freelancer named “Edward, ” whose last name he
could not recall, to set up social media and to build the
business's website. (Id. at 91:12-14.) Fernandez
delegated to Edward the authority to purchase advertising
spots and perform work without getting feedback in advance.
(Frasier Decl. Ex. BB at 198:4- 199:12 (Fernandez Dep.) [Doc.
No. 81-1].) Edward in turn hired a California company named
Internet Local Listings to build the website. (Frasier Decl.
Ex. E at 109:6-110-6 (Fernandez Dep.).) The contract with
Internet Local Listings, which Fernandez signed, specified
that the website was to utilize ten “keywords,
” among which were “Rent My Party
Bus” and “952 Limo Bus.” (Frasier Decl. Ex.
X at 14 [Doc. No. 81-1].) The contract called for the website
to be launched in 2014, but the record before the Court does
not clearly indicate when it was actually launched.
with the requirements of the contract, Defendants' new
website, at www.discountpartybussaintpaulmn.com, used the
term “952 Limo Bus” in connection with the
advertising of Defendants' buses and services. (Frasier
Decl. Ex. Y (Screenshots of
www.discountpartybussaintpaulmn.com) [Doc. No. 81-1].) For
example, one page, headed “Party Busses, ” stated
“hiring a 952 Limo Bus in St. Paul is the best
solution, ” “Small 952 Limo Bus in Saint Paul
would be ideal for professional and business needs, ”
and “952 Limo Bus in Saint Paul are not just one
(Id. at 23, 24.)
website also had a page with the words “Rent My Party
Bus” displayed in large font:
(Id. at 28.)
same terms found their way into Defendants' social media
posts. For example, on September 21, 2015, Discount Party Bus
posted the following to its Facebook page:
Decl. Ex. Z at 32 [Doc. No. 81-2].) Several days later, ...