MATTHEW F. LEITMAN, UNITED STATES DISTRICT JUDGE
Brent Seitz, Robert J. Lenihan, David P. Utykanski, Harness, Dickey, Troy, MI, for Plaintiffs/Counter–Defendants.
Michael P. Donnelly, Fraser, Trebilcock, Detroit, MI, Peter D. Gordon, Peter D. Gordon & Associates, Los Angeles, CA, for Defendant/Counter–Plaintiff.
OPINION AND ORDER (1) GRANTING IN PART AND DENYING IN PART KELLY'S MOTION FOR SUMMARY JUDGMENT (ECF # 36), (2) DENYING CREATIVE HARBOR'S MOTION FOR PARTIAL SUMMARY JUDGMENT ON THE ISSUE OF PRIORITY (ECF # 48), AND (3) DIRECTING THE PARTIES TO SUBMIT SUPPLEMENTAL BRIEFING
MATTHEW F. LEITMAN, UNITED STATES DISTRICT JUDGE
This is a trademark dispute. Plaintiffs/Counter–Defendants Kelly Services, Inc. and Kelly Properties, LLC (collectively, “Kelly”) and Defendant/Counter–Plaintiff Creative Harbor, LLC (“Creative Harbor”) each developed a mobile application that provides job searching and job placement tools. Now, Kelly and Creative Harbor dispute which company has priority to the trademark “WorkWire.” Creative Harbor has filed two “intent to use” applications with the United States Patent and Trademark Office (the “Creative ITUs”), and Creative Harbor claims priority based upon those filings. Kelly counters that it has priority because it used the mark in commerce before Creative Harbor filed the Creative ITUs.
In this action, Kelly and Creative Harbor each seek a declaratory judgment as to priority to the “WorkWire” trademark. In addition, Creative Harbor asserts counterclaims against Kelly for unfair competition, trademark dilution, and intentional interference with prospective business.
For the reasons explained below, the Court holds that:
(1) Kelly did not use the mark in commerce before Creative Harbor filed the Creative ITUs, and thus Kelly does not have priority based on that alleged prior use;
(2) Creative Harbor is not entitled to a judgment of priority over Kelly based upon its filing of the Creative ITUs, standing alone. Creative Harbor may ultimately be able to establish its priority to the mark over Kelly if Creative Harbor uses the mark in commerce and completes the registration process, but it does not yet have priority in the mark; and
(3) Kelly is entitled to summary judgment on Creative Harbor's counterclaims.
FACTUAL BACKGROUND
A. The Kelly Workwire App
Kelly provides career development information and job placement tools to employers and prospective employees. (See Declaration of Kelly Senior Marketing Manager Michael Catalano, ECF # 36–3 at ¶ 5.) In early 2013, Kelly began developing an iPad application that would provide users with access to personnel placement services, career information, job searching tools, and a Kelly branch office locator. (See id. at ¶¶ 7, 9.) Kelly intended to distribute the application through the Apple App Store. (See id. at ¶ 9.) Kelly decided to call its application “WorkWire” (the “Kelly WorkWire App”). (See id. at ¶ 10.)
Kelly completed the development of the Kelly WorkWire App on February 4, 2014. (See Declaration of Kelly Information Technology Architect David Kennedy, ECF # 36–4 at ¶ 9.) That same day, Kelly submitted the Kelly WorkWire App to Apple's iTunes Connect, an Internet-based tool that allows a software developer to submit an application for sale in the Apple App Store, pending Apple's approval of the application. (See Catalano Decl. at ¶ 11.)
Approximately one week later, on February 10, 2014, Apple informed Kelly that the Kelly WorkWire App was rejected because of a problem with the application's metadata. (See ECF # 36–3 at 18, Pg. ID 367.) The next day, Kelly re-submitted the Kelly WorkWire App for Apple's review. (See id. )
On February 17, 2014, Apple informed Kelly that the Kelly WorkWire App had been approved and was “ready for sale.” (See id.; see also Catalano Decl. at ¶ 12.) However, Apple's designation of the Kelly WorkWire App as “ready for sale” did not immediately make the Kelly WorkWire App available for the public to download from the Apple App Store. (See Catalano Decl. at ¶ 16.) The Kelly WorkWire App was first released to the public via the Apple App Store on February 19, 2014, sometime after 8:11 p.m. Eastern Standard Time. (See id.; see also ECF # 41 (redacted).) A consumer first downloaded the Kelly WorkWire App from the Apple App Store on February 20, 2014. (See Catalano Decl. at ¶ 16.)
B. The Creative WorkWire App
In September 2013, Christian Jurgensen (“Jurgensen”), an entrepreneur based in Los Angeles, California, independently came up with an idea for a mobile application for use by employers and prospective employees. (See Jurgensen Declaration, ECF # 39 at 50, Pg. ID 520.) Jurgensen decided to call his application “WorkWire” (the “Creative Workwire App”). (See id. )
In early February 2014, Jurgensen formed Creative Harbor as the limited liability company responsible for the Creative WorkWire App. (See ECF # 11 at 24, Pg. ID 121; ECF # 36–6 at 2, Pg. ID 397.) At approximately the same time, Creative Harbor hired an intellectual property attorney to provide advice on trademark protection. (See Jurgensen Decl. at ¶ 6.) On February 16, 2014, the attorney informed Creative Harbor that the trademark
for “WorkWire” was available. (
See id. at ¶ 7.)
Three days later, on February 19, 2014, Creative Harbor filed the Creative ITUs with the United States Patent and Trademark Office (the “USPTO”).
See ECF # # 39–2 and 39–3.) The Creative ITUs were for the mark “WorkWire” (hereinafter the “Mark”). (See id. ) The Creative ITUs were filed at 6:28 p.m. and 7:56 p.m. Eastern Standard Time. (See id. )
Creative Harbor has tried to make the Creative WorkWire App available for download by the public through the Apple App Store. (See Jurgensen Decl. at ¶ 14.) However, Apple will not accept the Creative WorkWire App for posting in the Apple App Store because the “WorkWire” name is already being used by the Kelly WorkWire App. (See id.; see also ECF # 40–2.) Creative Harbor acknowledges that it has not used the Mark in commerce and therefore has not completed registration of the Mark.
C. Timeline of Relevant Facts
The following chart summarizes the relevant facts (as presented above) in chronological order: