JAMES D. WHITTEMORE, District Judge.
Charles E. Cantine, Jason M. Sobel, Joseph Diamante, Michael A. Fernandez, Vivian Luo, Stroock & Stroock & Lavan, LLP, New York, NY, Jeffrey S. Bucholtz, King & Spalding, LLP, Washington, DC, Jonathan B. Sbar, Raul Valles, Jr., Robert L. Rocke, Rocke, McLean & Sbar, PA, Tampa, FL, for Plaintiff.
Leo R. Beus, Beus Gilbert, PLLC, Phoenix, AZ, R. Charles Henn, Jr., William H. Brewster, Kilpatrick Townsend & Stockton, LLP, Atlanta, GA, Dennis L. Wilson, Kilpatrick Townsend & Stockton, LLP, Beverly Hills, CA, William P. Cassidy, Jr., Johnson & Cassidy, P.A., Tampa, FL, for Defendant.
ORDER
JAMES D. WHITTEMORE, District Judge.
BEFORE THE COURT is U–Haul's Renewed Motion for Judgment as a Matter of Law, Or in the Alternative, Motion for New Trial, Or to Alter the Judgment (Dkt. 399), PODS' Motion to Amend the Judgment (Dkt. 400), and PODS' Motion for Attorneys' Fees and Expenses (Dkt. 389). Each motion is opposed (Dkts. 418, 409, 408).
Upon consideration, U–Haul's Motion for Judgment as a Matter of Law, Or in the Alternative, Motion for New Trial, Or to Alter the Judgment (Dkt. 399) is DENIED. PODS' Motion to Amend the Judgment (Dkt. 400) is GRANTED in part and DENIED in part. PODS' Motion for Attorneys' Fees and Expenses (Dkt. 389) is DENIED. U–Haul's request for oral argument (Dkt. 399 p. 25) is
DENIED.
I. Background
After a two-week trial and three days of deliberations in this trademark infringement case, the jury found in favor of
PODS Enterprises, LLC and against U–Haul International, Inc. on all eight counts, counterclaims, and affirmative defenses, and returned a verdict of $60.7 million (Dkt. 337: Verdict). PODS contended, and the jury agreed, that U–Haul's use of the words “pod” and “pods” to market U–Haul's products infringed on and diluted PODS' federally-registered trademarks. The jury expressly found against U–Haul on its affirmative defenses of genericness and descriptive fair use (Dkt. 337: Verdict ¶¶ 13, 14).
U–Haul's Rule 50 motions made during trial were largely denied (Dkts. 321, 323, 329). Ruling was deferred on U–Haul's motion for directed verdict on genericness ab initio (Sept. 19 Trial Tr. at 217). After briefing, that motion was denied and final judgment was entered in accordance with the verdict. (Dkts. 369, 370). U–Haul renews its Rule 50 motions and moves for a new trial on similar grounds. PODS moves to amend the judgment to include a permanent injunction against U–Haul, to dismiss U–Haul's attempt to cancel PODS' trademarks, and for an award of prejudgment and postjudgment interest, enhanced damages, and attorneys' fees.
II. U–Haul's Motion for Judgment as a Matter of Law or New Trial
A. Standard
Under Rule 50, the “proper analysis is squarely and narrowly focused on the sufficiency of evidence,” that is, whether the evidence is “legally sufficient to find for the party on that issue.” Chaney v. City of Orlando, 483 F.3d 1221, 1227 (11th Cir.2007). All reasonable inferences are drawn in favor of the nonmoving party, no credibility determinations may be made, the evidence may not be weighed, and evidence that the jury need not have believed is to be disregarded. Reeves v. Sanderson Plumbing Prods., 530 U.S. 133, 150–151, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000). Such a motion is to be granted “only if the evidence is so overwhelmingly in favor of the moving party that a reasonable jury could not arrive at a contrary verdict.” Middlebrooks v. Hillcrest Foods, Inc., 256 F.3d 1241, 1246 (11th Cir.2001). In sum, review is limited to whether there is sufficient evidence to support the verdict. Chaney, 483 F.3d at 1227. The standard is “heavily weighted in favor of preserving the jury's verdict.” Pensacola Motor Sales Inc. v. E. Shore Toyota, LLC, 684 F.3d 1211, 1226 (11th Cir.2012).
A Rule 59 motion for new trial based on evidentiary grounds is to be granted only if the verdict “is against the clear weight of the evidence or will result in a miscarriage of justice.” Hewitt v. B.F. Goodrich Co., 732 F.2d 1554, 1556 (11th Cir.1984) (quotation omitted). “Because it is critical that a judge does not merely substitute his judgment for that of the jury, new trials should not be granted on evidentiary grounds unless, at a minimum, the verdict is against the great-not merely the greater-weight of the evidence.” Lipphardt v. Durango Steakhouse of Brandon, Inc., 267 F.3d 1183, 1186 (11th Cir.2001) (quotation omitted); Redd v. City of Phenix City, Ala., 934 F.2d 1211, 1215 (11th Cir.1991) (“When there is some support for a jury's verdict, it is irrelevant what we or the district judge would have concluded.”).
Applying these standards, I find that the evidence introduced at trial was sufficient
to support the jury's verdict, the verdict is not against the great weight of the evidence, and the verdict did not result in a miscarriage of justice. And to the extent U–Haul takes issue with the jury's factual findings, the Supreme Court has recently reaffirmed the significance of a jury's determinations.
Hana Financial, Inc. v. Hana Bank, ––– U.S. ––––,
135 S.Ct. 907, 911,
190 L.Ed.2d 800 (2015) (“[W]hen the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.”).
B. Liability
1. Trademark Infringement
U–Haul challenges the sufficiency of the evidence supporting the jury's finding that U–Haul's use of PODS' trademarks was likely to cause confusion. Likelihood of confusion is evaluated using a seven-factor test: (1) the type and strength of the trademark allegedly infringed, (2) similarity of the parties' marks, (3) similarity of the parties' goods, (4) similarity of the parties' sales channels, distribution, and customers, (5) similarity of advertising media, (6) defendant's intent, and (7) actual confusion. Frehling Enterprises, Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir.1999). The most important of these factors are the type and strength of the trademark and actual confusion. Lone Star Steakhouse v. Longhorn Steaks, 122 F.3d 1379, 1382 (11th Cir.1997).
Applying this test “entails more than the mechanistic summation of the number of factors on each side; it involves an evaluation of the overall balance” and a consideration of “the unique facts of each case.” Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 649 (11th Cir.2007) (quotation and citation omitted). And additional factors may be considered. Tana v. Dantanna's, 611 F.3d 767, 780 (11th Cir.2010). Because the test for likelihood of confusion is fact intensive, the question is usually reserved for the jury. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir.1983).
Here, the jury necessarily found a likelihood of confusion because it returned a verdict against U–Haul for trademark infringement. Id. at 973 (“The jury necessarily found that there was a likelihood of confusion between the two marks because it returned a verdict against Clarke for trademark infringement.”). That factual finding must be upheld if based on substantial evidence, that is, “evidence of such quality and weight that reasonable and fair-minded men in the exercise of impartial judgment might reach different conclusions.” Id., quoting Boeing Co. v. Shipman, 411 F.2d 365, 374 (5th Cir.1969).
Moreover, if a plaintiff shows, as PODS did, that the defendant adopted its mark to benefit from plaintiff's reputation, “this fact alone” may be sufficient to justify the inference that there is confusing similarity. Frehling, 192 F.3d at 1340. As will be discussed, a reasonable jury could certainly have found this to have been the case, based on the evidence describing U–Haul's calculated decision to use “pod” and “pods” on its website.
In sum, PODS introduced sufficient evidence supporting the jury's finding that U–Haul's use of “pod” and “pods” was likely to cause confusion. The jury's verdict in this regard was not against the great weight of the evidence. As to the type and strength of mark, PODS introduced evidence that it possessed two incontestable federal trademark registrations, favoring a finding of a strong mark. (PX 1, PX 2). See Dieter v. B & H Indus. of Sw. Florida, Inc., 880 F.2d 322, 329 (11th Cir.1989) (“[I]ncontestable status is a
factor to be taken into consideration in likelihood of confusion analysis. Because [plaintiff's] mark is incontestable, then it is presumed to be at least descriptive with secondary meaning, and therefore a relatively strong mark.”);
Accord
Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 938 (11th Cir.2010). Although U–Haul introduced evidence that third parties generically used “pod” and “pods” in support of its argument of a weak mark, the jury was entitled to reject or give little weight to this evidence and give more weight to the incontestable status of PODS' marks.
With respect to the similarity of the parties' marks, sufficient evidence was introduced to support the jury's finding that this factor weighed in favor of a likelihood of confusion. U–Haul raises a series of arguments that the parties' marks were different, including that U–Haul did not use “pod” and “pods” as a trademark, that PODS used the marks in capital letters whereas U–Haul used the lowercase, and that the parties' websites and mobile apps presented different commercial impressions. The overall impression of the marks, however, was a question of fact for the jury, and all of these arguments were made to the jury and implicitly rejected by virtue of the verdict.
The jury could reasonably have found that the linguistic similarities between “U–Box pod” and “PODS containers” and U–Haul's widespread use of the words “pod” and “pods” on its website outweighed the dissimilarities between the parties' marks, including color and font. (Compare DX 420 with DX 421; Sept. 12 Tr. at 66:21–24 (testimony of Chris Silver Smith that U–Haul used the words “pod” and “pods” nearly 600,000 times on its website)). Despite U–Haul's arguments to the contrary, evidence was introduced suggesting that U–Haul intended to use “pods” as a brand. (See PX 59 (internal U–Haul email in which U–Haul employee writes, “we should ... use the PODS brand [for internet searches]”)).
Likewise, evidence was introduced that the parties' products, particularly U–Haul's U–Box and the smaller PODS-branded containers, had significant similarities. The jury heard testimony about the similarity of various models of the containers (Sept. 9 Tr. at 121:2–15 (Pete Warhurst testimony); Sept. 9 Tr. at 235:5–236:16 (George Spowart testimony)), watched videos of the containers (DXDEM 42), and observed demonstrative, miniature models of the U–Box and PODS–branded containers (see Sept. 8 Tr. at 187–88). Based on this evidence, the jury could reasonably have found that the similarity of the parties' goods, at the very least, supported a finding of likelihood of confusion. The evidence of actual confusion, discussed below, also supports a finding that the second and third factor favored a likelihood of confusion.
PODS also introduced evidence supporting a finding that the fourth and fifth factors favored a likelihood of confusion. For example, the parties, through their respective PODS-branded containers and the U–Box, directly competed with each other. (Sept. 9 Tr. at 225, 235, 253 (testimony of George Spowart); Sept. 17 Tr. at 80:15–19 (testimony of Joe Shoen); Sept. 17 Tr. at 194 (testimony of Phil Johnson). And both parties offered products for sale online, where U–Haul's use of “pod” and “pods” was so prevalent. (Sept. 9 Tr. at 253, Spowart)). Indeed, the importance of search engine optimization and internet advertising to sales of the competing products was a significant feature of the trial.
The sixth factor, a defendant's subjective intent, likewise favors the jury's finding of likelihood of confusion. If a defendant is shown to have adopted a mark to derive a benefit from the plaintiff's reputation,
that may alone “justify the inference that there is confusing similarity.”
John H. Harland Co., 711 F.2d at 977 (citing
Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 506 (5th Cir.1980) and
Sun Banks of Florida, Inc. v. Sun Fed. Sav. & Loan Ass'n, 651 F.2d 311, 318 (5th Cir.1981));
Frehling,
192 F.3d at 1340.
PODS introduced evidence from which the jury could reasonably have inferred that U–Haul used “pod” and “pods” to benefit from the PODS brand. For example, PODS introduced evidence that a U–Haul employee suggested using the PODS brand for internet searches (PX 59), that Stuart Shoen, a top U–Haul executive and son of U–Haul Chairman Joe Shoen, wrote to his father, “I strongly agree with your message that this is very much the world of the Old West and there is a big difference between the scared shopkeep and the steel-eyed gunfighter. One of them is afraid to say “pods” and the other isn't” (PX 63), and that U–Haul staff who worked on internet searches believed that using “pods” rather than other descriptors for the U–Box would increase customer interest (PX 70). Under Circuit precedent, this evidence alone supports the jury's finding of likelihood of confusion. Frehling, 192 F.3d at 1340.
Finally, while U–Haul characterizes the evidence of actual confusion as de minimis, “the quantum of evidence needed to show actual confusion is relatively small.” Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 937 (11th Cir.2010) (quoting Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 716 F.2d 833, 845 (11th Cir.1983) (citation omitted)); see World Carpets, Inc. v. Dick Littrell's New World Carpets, 438 F.2d 482, 489 (5th Cir.1971) (“very little proof of actual confusion [is] necessary to prove the likelihood of confusion”).
With respect to consumer confusion, the jury heard a recording of a telephone call made by Stuart Sing to a PODS call center that the jury could reasonably have found demonstrated actual consumer confusion. (PX 80); Sept. 11 Tr. 74–83 (Stuart Sing call) (“You're [PODS and U–Haul] not the same company? It's deceiving.... I thought I'm going with PODS”). The jury also heard testimony by PODS employees who related that they frequently dealt with customers who were confused by the difference between PODS products and the U–Box. (See Sept. 11 Tr. 55–56, 84 (Hamelynck); 108:23–111:13 (Viktorin); 152:7–159:4 (Parker); 175:18–176:17 (Eales); 187:11–190:2 (Mullins); 200:7–203:1 (Wade)). The jury reasonably could have found this evidence supported a finding of actual confusion.
Pointing to what it considers “the dearth of evidence suggesting actual confusion,” U–Haul contends that PODS was required to prove that an “appreciable number” of consumers were likely to be confused, citing Custom Mfg., 508 F.3d at 651. This argument is unconvincing and inconsistent with Circuit precedent. The relevant holding in Custom Mfg. focuses on the distinction between “likely,” rather than “merely possible” in describing a plaintiff's burden. Id. (“While there is no bright line test to determine the existence of a likelihood of consumer confusion, recovery under the Lanham Act requires, at a minimum, ‘that confusion, mistake, or deception be ‘likely,’ not merely ‘possible.’ ”). The language on which U–Haul relies, “appreciable number of ordinarily prudent purchasers,” is found in a parenthetical description of a New York district court decision, essentially dicta. See id.
Binding precedent in this Circuit recognizes that a single, isolated instance of
actual confusion,
see
Frehling,
192 F.3d at 1341, or two instances of actual confusion, can be sufficient evidence to support a finding of likelihood of confusion.
See
John H. Harland, 711 F.2d at 978;
Safeway Stores, Inc. v. Safeway Disc. Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir.1982). As discussed, PODS introduced evidence meeting this standard which the jury was entitled to accept as credible.
Finally, U–Haul argues that PODS' failure to introduce survey evidence weighs against a finding of likelihood of confusion. But the Eleventh Circuit has stated just the opposite. See Frehling, 192 F.3d at 1341 n. 5 (“This Circuit ... has moved away from relying on survey evidence [in determining the likelihood of confusion].... [T]he failure to adduce such evidence is not damaging to the Plaintiff's case.”).
Most of U–Haul's arguments challenging the jury's finding of likelihood of confusion go to the weight of the evidence and the credibility of witnesses, determinations within the jury's exclusive province. Accordingly, U–Haul's challenge to the sufficiency of the evidence supporting the jury's verdict on likelihood of confusion is rejected.
2. Trademark Dilution
U–Haul challenges the jury's verdict in favor of PODS on trademark dilution (Counts III and V) on three separate grounds: U–Haul did not use “pod” or “pods” as a trademark, PODS did not prove its mark was famous, and PODS did not produce sufficient evidence for the jury to find likelihood of dilution by blurring.
a. Use of a Trademark
U–Haul relies on National Business Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526 (5th Cir.2012) for the proposition that non-trademark use “cannot dilute by blurring.” Although the Eleventh Circuit has not addressed the scope of trademark dilution after passage of the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c), U–Haul is correct that a trademark dilution claim requires use of a trademark by the alleged diluter. See 15 U.S.C. § 1125(c)(2)(B); National Business Forms, 671 F.3d at 536 (citing Stacey L. Dogan & Mark A. Lemley, The Trademark Use Requirement in Dilution Cases, 24 Santa Carla Computer & High Tech L.J., 541, 551–52 (2008)); (“The TDRA bars another person's commercial ‘use of a mark or trade name in commerce [in a manner] that is likely to cause dilution by blurring ... regardless of the presence or absence of the actual or likely confusion ....’ ”), quoting 15 U.S.C. § 1125(c)(1); 15 U.S.C. § 1125(c)(1) (“... the owner of a famous mark ... shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring ...”). Applying these standards, there was sufficient evidence demonstrating that U–Haul use of “pod” and “pods” constituted trademark usage.
PODS introduced considerable evidence that U–Haul used “pods” and “pod” on its website for the purpose of drawing attention to and identifying its competing product, the U–Box. That evidence demonstrated that “U–Haul pods” appeared on the masthead over approximately 160,000 webpages on the U–Haul.com website. (Dkt. 376: Sept. 12 Tr. at 71:18–23; 72:119–22) (Chris Silver Smith testimony).
Further, evidence was introduced that U–Haul used “pod” and “pods” thousands of times to optimize its website, and that U–Haul “undoubtedly” benefitted from that use in promoting its products and services. (
Id. at 66:21–24; 67–68; PX 59) (“By the end of August, I found somewhere over 119 million mentions of the word “pods” produced by U–Haul, and I also found that they had mentioned the word “pods” on their website 596,000 times ... In November 2013, I found that U–Haul had mentioned the word “pods” on their website right around—a little over 400,000 times. So there has been a significant increase in the months since November.... It's undoubtedly a benefit since they're trying to promote that term and trying to sell products and services related to it.”).
The jury could therefore reasonably have found from this testimony that U–Haul's use of “pods” constituted trademark usage to identify and promote its products and services, and that U–Haul intentionally used “pod” and “pods” to direct attention of consumers to its U–Box. By contrast, in National Business Forms, the alleged diluter was a commercial printer which simply reproduced Ford's marks for its customers. 671 F.3d at 530, 536. That use is distinguishable from U–Haul's use of “pod” and “pods” in reference to its U–Box, which competed with PODS-branded containers.
Moreover, whether U–Haul's use of “pods” and “pod” constituted a trademark usage turns on the commercial impression that usage generated to the ordinary purchaser. 3 J. McCarthy, Trademarks and Unfair Competition § 17:26, p. 17–71 (4th ed.2014) (“ ‘Commercial impression,’ like most issues in trademark law, should be determined from the perspective of the ordinary purchaser of these kinds of goods or services”); Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 953 (7th Cir.1992) (“A word or phrase functions as a trademark when it is “used by a source of [a product] to identify itself to the public as the source of its [product] and to create in the public consciousness an awareness of the uniqueness of the source and of its [products]” ”).
The commercial impression generated to the ordinary purchaser by U–Haul's use of “pods” and “pod” was a factual determination for the jury. See Hana Financial, Inc., 135 S.Ct. at 911 (“Application of a test that relies upon an ordinary consumer's understanding of the impression that a mark conveys falls comfortably within the ken of a jury.”). The jury's determination is therefore determinative, since there was sufficient evidence from which the jury could find that U–Haul used “pods” in a trademark sense on its website since October 2010. (Dkt. 359: Sept. 12Tr. at 199:7–14).
b. Fame
To prove its dilution claim, PODS was required to prove that its mark was “famous,” meaning that “it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the
mark's owner.”
15 U.S.C. § 1125(c)(2)(A). The Lanham Act provides that “all relevant factors,” including the (1) duration and reach of advertising thousands of times in attempting to optimize its website “to rank effectively for the word ‘pods,’ ” and to identify its competing U–Box, constituted a trademark use. and publicity of the trademark, (2) the amount of sales of goods offered by the trademark, (3) actual recognition of the mark, and (4) whether the mark was registered, may be considered in determining whether a mark is famous.
Id.
Substantial evidence was presented to the jury from which it could reasonably have found that PODS' trademark was famous, at least since 2008. PODS introduced evidence that it spent $70 million in advertising by 2008, and in excess of $186 million in 2014, which the jury could reasonably have found favored the mark's fame. (PX 16; see Sept. 9 Tr. at 24 (Pete Warhurst testimony on franchisee advertising)). PODS also proved it had a nationwide network of locations and franchises and cumulative sales of more than $3 billion before trial. (PX 30). As to actual recognition of the PODS mark, a 2006 study commissioned by U–Haul showed PODS with a “total awareness” of 78% nationally, which the jury could have found demonstrated widespread actual recognition of the mark. (PX 77 at UHI00018575, –591). While U–Haul disputes this interpretation and the study's methodology, those arguments go to the weight of the evidence, a matter reserved for the jury. U–Haul also argues that PODS only had “niche” fame at best, but there was sufficient evidence for the jury to conclude otherwise. Finally, the marks were registered with the Patent and Trademark Office at all relevant times. (PX 1, PX 2, PX 9, PX 10).
c. Likelihood of Dilution by Blurring
U–Haul argues that PODS did not prove that its brand came to mind when consumers viewed U–Haul's use of “pod” and “pods,” contending that “dilution by blurring requires that the plaintiff ‘comes to [ ] mind’ for some appreciable number of consumers when they view the defendant's use,” citing Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198, 212 (2d Cir.2013). This argument misapprehends the standard for likelihood of dilution by blurring, and the holding in Starbucks.
There is no reference in Starbucks that a plaintiff “comes to mind for some appreciable number of consumers” when viewing the defendant's use. Rather, that court balanced the factors in § 1125(c)(2)(B), stating that “the ultimate question is whether the Charbucks Marks are likely to cause an association arising from their similarity to the Starbucks Marks, which impairs the Starbucks Marks' tendency to identify the source of Starbucks products in a unique way.” Id. at 211. In discussing the “degrees of distinctiveness, exclusive
use, and recognition,” that court focused on “the more important factors in the context of this case,” the similarity of the marks and actual association.
Id. at 212. Although it mentioned the “weak evidence of actual association” in that case and observed that “more survey participants did not think of “Starbucks” upon hearing “Charbucks” ” than did, the court did not, contrary to U–Haul's suggestion, quantify some minimal level of association.
Id. And while
Starbucks does analyze survey results on the level of association, that was but one of several considerations in its analysis of whether there was a likelihood of dilution. It certainly was not, as U–Haul suggests, the
sine qua non of dilution by blurring.
In conclusory fashion, U–Haul simply argues that “no evidence showed that U–Haul used ‘pod(s)’ as a trademark, that PODS was a famous mark among the general consuming public of the United States before 2008, or that consumers think of PEI when viewing ‘pod(s)’ on U Haul's website.” Yet, U–Haul fails to discuss or even acknowledge the evidence PODS introduced bearing on these factors. That includes the evidence of U–Haul's intent to use “pod” and “pods” to create an association with the PODS mark, at least some actual confusion as discussed with respect to likelihood of confusion, the incontestable status of the PODS mark, and PODS' efforts to preserve the exclusivity of its marks. (See PX 44). In sum, the evidence was sufficient for the jury to find that U–Haul's use of “pod” and “pods” created a likelihood of dilution which impaired the distinctiveness of the PODS mark.
C. U–Haul's Affirmative Defenses
U–Haul contends it is entitled to judgment as a matter of law or a new trial with respect to its claim that “pod” and “pods” was generic ab initio, and to a new trial with respect to its claims of genericide and fair use. These arguments are rejected.
1. Genericness ab initio
U–Haul's motion with respect to genericness ab initio is denied for the reasons discussed in the Order denying U–Haul's Renewed Motion for Directed Verdict, for Judgment as a Matter of Law, or in the Alternative, Motion for a New trial (Dkt. 369).
2. Genericide
With respect to genericide, U–Haul renews its arguments that “pods” was generic ab initio, in addition to referencing the evidence it introduced supporting its contention that the mark has become generic. The test for genericness is the “primary significance of the mark to the relevant public,” 15 U.S.C. § 1064(3); Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312, 1320 (11th Cir.2012), with the relevant public being actual or potential purchasers of the goods in question. See Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir.2007); Creative Gifts, Inc. v. UFO, 235 F.3d 540, 544 (10th Cir.2000).
U–Haul introduced considerable evidence of generic use of “pod” and “pods” after the registration of the marks, including use on internet social media (DX 602, 608, 609, 611, 612), classified advertising (DX 613), traditional media (DX 606, 617), in local government ordinances (DX 617, 627, 629), and use by competitors (DX 626, 627, 629, 630). U–Haul also introduced evidence that employees of PODS used the
marks generically at times. (DX5, 8, 25–26, 54, 75–76, 428, 432, 707). In contrast to U–Haul's evidence, however, PODS presented testimony, which the jury apparently found to be more credible, that occasional internal generic use did not alter the primary significance of the mark to the consuming public. (
See Sept. 10 Tr. at 229–230 (Spowart); Sept. 11 Tr. at 182 (Eales)).
PODS' evidence of non-genericness included the incontestability of the marks (PX 1, PX 2, PX 9, PX 10), fame, supra Part II.B.2.b., and survey evidence, infra. Since that evidence lends “some support” for the jury's verdict that the mark had not become generic, a new trial will not be ordered. Redd v. City of Phenix City, Ala., 934 F.2d 1211, 1215 (11th Cir.1991) (“When there is some support for a jury's verdict, it is irrelevant what we or the district judge would have concluded.”); Auto–Owners Ins. Co. v. Southeast Floating Docks, Inc., 571 F.3d 1143, 1145 (11th Cir.2009) (in considering motion for new trial based on sufficiency of the evidence, district court must ensure it “does not simply substitute its own credibility choices and inferences for the reasonable choices and inferences made by the jury”).