IP Law Daily, TRADEMARK—W.D. Wash.: Summary judgment denied in landscaping business name dispute, (Feb 12, 2025)

By Kevin M. Finson, J.D.

Claims for trademark infringement would proceed to trial because there were numerous genuine questions of material fact, including which marks were used in which locations by the parties.

A Washington-based landscaping company was not entitled to summary judgment on several claims against it by a an Oregon-based competitor for use of the identical mark PACIFIC LANDSCAPE, the U.S. District Court in Seattle has held. The claims were timely and genuine question of material fact existed about the geographic locations in which each parties’ marks were used and therefore whether there was a likelihood of confusion (Pacific Landscape Management, Inc. v. Pacific Landscape Management, LLC, No. 2:23-cv-01005-JHC (W.D. Wash. Feb. 11, 2025)).

Pacific Landscape Management, Inc. (PLM-WA), a Washington corporation, and Pacific Landscape Management, LLC (PLM-OR), an Oregon limited liability company, were providers of landscaping services under the mark PACIFIC LANDSCAPE MANAGEMENT, PLM-WA in the Puget Sound area of Washington and PLM-OR in Oregon, and occasionally in Vancouver, Washington. The parties first encountered each other in 2002 when PLM-WA sent a cease-and-desist letter to PLM-OR directed to use of the shared mark. The parties entered into ultimately unsuccessful negotiations that were abandoned without a written agreement or litigation. Eventually, in 2022, PLM-OR acquired two existing landscaping businesses which had been operating in the Puget Sound region, bringing the parties into more direct conflict, after which PLM-WA brought suit for trademark infringement and related claims. PLM-OR moved for summary judgment.

Timeliness. PLM-OR argued that PLM-WA’s state law claims were barred by the applicable Washington statute of limitations, which was three years, because the claim accrued in 2002 when PLM-WA first sent a cease-and-desist letter to PLM-OR. The court found, however, that in 2002 PLM-OR had represented to PLM-WA that it was based in Oregon, did not maintain an office in Washington, did not advertise in Washington, and only occasionally performed work in Vancouver, Washington. The claim accrued when PLM-OR expanded into the Puget Sound region of Washington where PLM-WA operated, and all of those factors changed, which was approximately one year before suit was filed. Accordingly, the suit was timely.

Lanham Act. PLM-OR argued that PLM-WA’s claim under the Lanham Act failed because it used only the name PACIFIC LANDSCAPE MAINTENANCE, not PACIFIC LANDSCAPE MANAGEMENT, in the Puget Sound region, where PLM-WA claimed to have common law rights to the MANAGEMENT mark. The court held that this argument failed for two reasons; there was a genuine question of material fact as to whether PLM-OR actually used both marks in the Puget Sound region. Moreover, there was a question of fact as to whether the use of the MAINTENANCE mark was likely to cause of confusion with PLM-WA’s use of the MANAGEMENT mark in that region.

Equitable estoppel. PLM-OR argued that the doctrine of equitable estoppel barred the claims because it only began using the MAINTENANCE name in the Puget Sound area in response to PLM-WA’s suggestion that it would not sue over use of that name during the original, 2002 negotiations. PLM-WA argued that PLM-OR adopted the name before the parties had reached even a tentative agreement and that the parties never actually settled their 2002 dispute. The court held that genuine question of material fact existed as to whether PLM-OR had justifiably relied on any statements of PLM-WA in adopting that name.

The court denied PLM-OR’s motion for partial summary judgment.

The Case is No. 2:23-cv-01005-JHC.

Judge: Chun, J.

Attorneys: Michael G. Atkins (Atkins Intellectual Property PLLC) for Pacific Landscape Management Inc. Reid E. Dammann (Gordon Rees Scully Mansukhani LLP) for Pacific Landscape Management LLC.

Companies: Pacific Landscape Management Inc.; Pacific Landscape Management LLC

Cases: Trademark WashingtonNews