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Clean Crawl, Inc. v. Crawl Space Cleaning Pros, Inc.

United States District Court, W.D. Washington, Tacoma

November 5, 2019

CLEAN CRAWL, INC., Plaintiff,



         This matter comes before the Court on Defendant Crawl Space Cleaning Pros' (CSCP) second motion for partial summary judgment, Dkt. 120, and Plaintiff Clean Crawl, Inc's (“CCI”) motion for leave to file declaration of Charles E. Henrichsen (“Second Henrichsen Decl.”), Dkt. 129. The Court has considered the pleadings filed in support of and in opposition to the motions and the remainder of the file and hereby denies the motion for summary judgment and grants the motion for leave to file declaration for the reasons stated herein.


         This suit arises from copyright and trademark disputes between CCI and CSCP, two businesses which clean attic and crawl spaces and provide pest exclusion services for homes in the Western Washington area.

         CCI began doing business in its current iteration in 2001 when its president, Charles Henrichsen (“Henrichsen”), transferred his Bio Bug Pest Management, Inc. business to CCI, Dkt. 48 at 6, and began using the trade name Clean Crawls, Dkt. 49, Declaration of Charles Henrichsen (“Henrichsen Decl.”) at 3. CCI is headquartered in Marysville, Washington. Dkt. 1, ¶ 2. CSCP began operations on January 9, 2013, under founder and owner Richard Herron (“Herron”). Dkt. 39 (citing Dkt. 40, Declaration of Richard Herron (“Herron Decl.”), at 1). Henrichsen and Herron had met each other in 2008, and Henrichsen declares that he mentored Herron in starting a business, Sustainable Building and Insulation (“SBI”). Henrichsen Decl. at 3-4. Henrichsen declares that he made SBI a CCI subcontractor, and one of his employees, CCI sales representative Jared Pullen (“Pullen”), referred “many jobs” to SBI. Id. at 4. Henrichsen declares that these referrals allowed Pullen and Herron to be “heavily exposed” to CCI's “family of trademarks and copyrights” between 2010 and 2013. Id. Henrichsen also declares that all of CCI's copyrighted materials at issue “were substantially completed in the form registered in the 2008-2009 time frame.” Id. at 5.

         Henrichsen specifically declares that by 2012, Herron and Pullen “knew and had used repeatedly in association with [CCI] its family of trademarks, ” including the CLEAN CRAWLS trade name, WE GO WHERE YOU DON'T WANT TO (“Slogan One”), and WE DO THE WORK YOU DON'T WANT TO (“Slogan Two”) (collectively “the family of marks”). Henrichsen Decl. at 4. Henrichsen declares that CCI has used the Clean Crawls trade name, Slogan One, and Slogan Two “and similar slogan variations with customers on a daily basis, and have for more than 15 years throughout the Pacific Northwest, ” but typically has not used its slogans in printed advertising or on company vehicles or other items, “instead using them primarily on the Internet and verbally with customers, associates, and the public.” Id. 2-3, 6, 7. Henrichsen and others at CCI declare that CCI has used the Slogans extensively dating back to at least 2010. See, e.g. Henrichsen Decl. at 4; Dkt. 50 Declaration of Vice President of CCI Dale Gjerness (“Gjerness Decl.”) at 4-5; Dkt. 52, Declaration of Patrick J. Smith (“Smith Decl.”), at 1.

         A. 2013

         Herron testified as CSCP's corporate representative that CSCP acquired the domain name “either in the end of 2012 or the beginning of 2013.” Dkt. 121, Ex. 2 at 211. CSCP began operations at a single location in Tacoma in early 2013. Herron declares that it used Slogan One extensively to brand its business. See Herron Decl. at 6-41; Dkt. 120 at 2. Herron testified as CSCP's corporate representative that an employee named Paul came up with Slogan One in “April, May, around that time frame, in 2013” as Paul was finishing out his time with CSCP before moving to Australia. Dkt. 121 at 79-80.

         CCI Vice President Dale Gjerness testified that he became aware of CSCP's existence by “2014, 2013, somewhere in there.” Dkt. 123, Ex. 1 at 49. CCI General Manager Andrew Gjerness testified as CCI's corporate representative that CCI first became aware that CSCP used the name Crawl Space Cleaning Pros “sometime in mid-2013, around the summer, ” because salesmen “down in that area” including Pullen and Henrichsen heard that Herron had started a new company and was operating under that name. Dkt. 121, Ex. 2 at 11.

         In 2013, CSCP placed Slogan One in advertising including an Angie's list ad, on company cars and trucks, and on its company headquarters. Herron Decl. at 6-24. CSCP opened its second location in Everett, Washington sometime between 2013 and 2016. Dkt. 120 at 2 & n.6 (citing Dkt. 119, Ex. A at 131).[1] Between 2013 and 2019, Herron testified, CCI and CSCP would have both been required to have industry representatives present at annual meetings for three utility companies-Tacoma Power, Puget Sound Energy, and Snohomish County Public Utility District. Dkt. 121, Ex. 5 at 64. Henrichsen testified that he saw Herron at Tacoma Power and Puget Sound Energy meetings. Dkt. 121, Ex. 4 at 86. Herron also testified that during that span “[t]here could be times at the Seattle Home Show where [CCI does] show up and have a booth that [CSCP] would have a booth too.” Id. Henrichsen testified that the Seattle Home Show occurs twice a year but CCI “didn't always do it twice a year. Most of the time we did it, but not always.” Dkt. 121, Ex. 4 at 76.

         B. 2014

         Herron testified as CCI's corporate representative that in Spring 2014, he was at the Seattle Home Show at CSCP's booth, and Henrichsen came by the booth. Dkt. 121, Ex. 2 at 64. Herron testified that Henrichsen looked at a banner on the booth which featured Slogan One, read Slogan One out loud to Herron, and told Herron “[t]hat's a great slogan, Richard.” Id. Herron testified that the spring Home Show was usually held in March or April. Id. at 65. Henrichsen testified that his guess was the first time he saw CSCP at the show was in 2013 or 2014, “[s]omewhere around the time” that CSCP started and testified that he would see CSCP's banners. Dkt. 121, Ex. 4 at 76-77. When asked in deposition if he ever complimented Herron on his booth, Henrichsen replied “Maybe.” Dkt. 121, Ex. 4 at 78. Henrichsen declared that he never saw Slogan One at the Home Show and declared that if he had, he would have complained about it. Dkt. 122 at 5 (citing Second Henrichsen Decl., ¶ 3). Henrichsen also declared that he never complimented Herron on CSCP's use of Slogan One. Id. (citing Second Henrichsen Decl., ¶ 4).

         In 2014, according to Herron's testimony, he was approached by Pullen at an industry show. Dkt. 121, Ex. 5 at 55-56.[2] Pullen told Herron he had planned to leave CCI to start his own business but that plan had failed and CCI had reassigned his territory, so he was interested in a position with CSCP. Id. Herron conducted two interviews with Pullen “probably in February or March of 2014” and then hired him as CSCP's sales manager “in 2014.” Id. at 56. Pullen worked for CSCP “for approximately six months before [CCI] hired him back.” Id. at 56-57. Herron testified that at an unspecified point, Henrichsen told him he “could use [CCI's Project Graph] to create my own graph as long as [Herron] changed it up some.” Dkt. 127 at 88-89.[3] Herron as CSCP's corporate representative testified that Pullen created CSCP's venting calculator. Dkt. 119 at 184-85.[4]

         Henrichsen testified that approximately fifteen employees left CCI around the time Pullen left and when they came back some three weeks later, told him they had been working at CSCP. Dkt. 121, Ex. 4 at 71. He declared that this episode constituted “a major disruption to our business in the southern branch.” Henrichsen Decl. at 5. Herron testified as CSCP's corporate representative that “somewhere around March, April” of 2014, fifteen CCI employees came to CSCP seeking employment because CCI reduced their commissions and he hired three of them. Dkt. 119 at 168-69.[5] Herron also testified that during a conversation after a Tacoma Power annual meeting, Henrichsen told him that most of these employees returned to CCI. Dkt. 119 at 169.[6]

         Henrichsen testified that when Pullen returned to CCI as an employee, he told Henrichsen that CSCP had copied CCI's “project worksheet, bid sheet, the venting calculator and the project graph.” Dkt. 121, Ex. 4 at 114. Henrichsen testified that other salesmen had also told him about the copying, but he did not know if it was before or after Pullen returned as an employee. Id. at 114-15. Henrichsen testified that a particular salesman, Jeff Young, told him “[a] couple of years ago, maybe” that CSCP copied CCI's project worksheet. Id. at 116. In response to a series of questions about which salesmen had notified him about copying of particular documents, Henrichsen confirmed these conversations had all occurred a couple of years ago. Id. at 117. Henrichsen testified that he did not discuss this copying with Herron when he learned of it because he prefers to “just focus on my own business and move ahead, that's why. I try to ignore the competition and do what I need to do to take care of my employees and my customers.” Id.

         C. 2014-2016

         Herron, as CCI's corporate representative, testified that between 2014 and 2015 Henrichsen was president of the Washington Weatherization Association (“WWA”). Dkt. 121, Ex. 5 at 64.[7] Henrichsen testified this was “an association of your insulation contractors” which he joined “because every business owner wants to be able to share and try to help each other out to grow a business.” Dkt. 121, Ex. 4 at 36. When asked if he had conversations with Herron about CSCP after CSCP began operations, Henrichsen testified “we would run into each other when I was on the way out from the Weatherization Association.” Dkt. 121, Ex. 4 at 85.

         Andrew Gjerness as CCI's corporate representative testified that CCI first “heard stuff” in 2015 or 2016 on the topic of CSCP's using CCI's Project Graph. Dkt. 123, Ex. 3 at 42. He testified that Henrichsen “might have heard a rumor or two, but he thought nothing of it, that they were using our stuff.” Id.

         Between 2014 and 2017, CSCP expanded its use of Slogan One to include business cards, customer giveaways, a domain name, advertising, its payment authorization form, and company jackets. Herron Decl. at 25-41. In late 2016, CSCP opened a third location in Marysville, Washington. Dkt. 120 at 2.

         When asked if he had ever seen CSCP's advertising prior to March 2017, Dale Gjerness testified “I may have seen a truck going down the freeway or so, but not looking at the website, nothing.” Dkt. 121, Ex. 6 at 76. He also testified that at a meeting at some point prior to March 2017 he saw a CSCP employee wearing “either a green jacket or a green shirt - - and it said Crawl Pros - - it must have been Crawl Space Cleaning Pros.” Id. at 77.

         D. 2017

         On March 20, 2017, CSCP applied to register Slogan One in Washington as a trademark in class 37, registering it for use with “[c]leanup of crawl spaces and attics and insulation installation services.” Dkt. 41, Declaration of Emilia L. Sweeney (“Sweeney Decl.”) at 5-14. Also in March 2017, Herron declares that CSCP “learned that CCI had begun using [Slogan One] on CCI's website, ” and so asked CCI to cease and desist. Herron Decl. at 3-4. Herron declares that CSCP received a favorable response but later found that CCI “had added a TM to the end of [Slogan One] and was also using the confusingly similar [Slogan Two] on its website.” Id. Andrew Gjerness as CCI's corporate representative testified that CCI first became aware CSCP had used Slogan One when CCI received the cease and desist letter from CSCP sometime in March or April of 2017. Dkt. 123, Ex. 3 at 12-13. Andrew Gjerness also testified that in May, June, or July of 2017, a new sales manager at CCI, Mike Tutsie, “got competitive bids from quite a few of our competitors to kind of understand how the process was” which was the first time CCI “actually saw” that CSCP was using CCI's documents, specifically the Project Graph and Project Bid Sheet. Dkt. 123, Ex. 3 at 20, 42, 53, 56.

         On July 6, 2017, CCI submitted an application for protection of Slogan One with the United State Patent and Trademark Office (“USPTO”). Dkt. 57-1 at 51. CSCP also filed for protection of Slogan One with the USPTO, which issued a Notice of Publication on July 12, 2017, announcing its intent to register Slogan One to CSCP. Sweeney Decl. at 15-24. Andrew Gjerness as CCI's corporate representative testified that in June or July 2017, CCI became aware through checking social media to compare competitor's advertisements that CSCP was changing their name to Crawl Pros. Dkt. 121, Ex. 3 at 12. Herron testified as CSCP's corporate representative that CSCP changed its name because it was entering the Portland, Oregon market in August of 2017 and because it owned the domain name. Dkt. 121, Ex. 2, at 211. Herron also testified as CSCP President that CSCP's goal was to entirely switch the name under which CSCP does business from Crawl Space Cleaning Pros to Crawl Pros by the end of 2019. Dkt. 123, Ex. 4 at 31.

         On August 14, 2017, CSCP filed a complaint against CCI in the Pierce County Superior Court for the State of Washington for violation of Washington's Trademark Registration Act, RCW Chapter 19.77 et seq., common law trademark infringement, and violation of Washington's Consumer Protection Act (“CPA”), RCW Chapter 19.86. Dkt. 39 at 5. On September 6, 2017, CCI filed this lawsuit against CSCP, alleging copyright infringement, trademark infringement, false designation of origin and unfair competition in violation of the CPA, and seeking a permanent injunction against infringement of the copyrighted materials and the trademarked materials, destruction of all infringing materials, damages, and other relief. Dkt. 1. On October 10, 2017, CCI registered Slogan Two as a service mark with the USPTO. Dkt. 57-1 at 53. On November 28, 2017, CCI filed a Notice of Opposition to CSCP's application for protection of Slogan One with the federal Trademark Trial and Appeal Board, Sweeney Decl. at 26-31, citing CCI's July 6 application for protection of Slogan One, see Dkt. 57-1 at 51.[8]

         On March 19, 2018, CSCP filed an amended answer in the instant case, asserting counterclaims and affirmative defenses including laches. Dkt. 32. On September 6, 2018, CSCP filed a motion for summary judgment. Dkt. 39. On January 29, 2019, the Court granted the motion as to CCI's copyright claims for two of the five copyrighted documents at issue. Dkt. 75 at 40. The Court denied summary judgement as to CCI's trademark claims, and reserved ruling and requested supplemental briefing as to CCI's copyright claims for the remaining three documents, a Project Graph, a Project Bid Sheet, and a Venting Calculator. Id. On March 1, 2019, in response to CSCP's request for a continuance, Dkt. 86, and CCI's notice of non-opposition, Dkt. 101, the Court granted the motion for a continuance and struck the scheduling order based on the then-existing trial date. Dkt. 105. On May 31, 2019, the Court ruled on the remaining questions from CSCP's motion for summary judgment and granted summary judgment only as to the second page of the Venting Calculator document and denied summary judgment as to the remainder of the motion. Dkt. 112.

         On July 11, 2019, CSCP filed its second motion for partial summary judgment. Dkt. 120. On July 29, 2019, CCI responded. Dkt. 122. On August 2, 2019, CSCP replied. Dkt. 126.

         On August 6, 2019, CCI filed a motion for leave to file Dkt. 128, Second Henrichsen Declaration. Dkt. 129. CSCP did not respond.

         On September 25, 2019, in response to the parties' joint status reports, the Court set a new trial date and new pretrial deadlines including a new dispositive motions deadline of October 16, 2019. Dkt. 136.


         A. Summary Judgment Standard

         Summary judgment is proper only if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The moving party is entitled to judgment as a matter of law when the nonmoving party fails to make a sufficient showing on an essential element of a claim in the case on which the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). There is no genuine issue of fact for trial where the record, taken as a whole, could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must present specific, significant probative evidence, not simply “some metaphysical doubt”). See also Fed. R. Civ. P. 56(e). Conversely, a genuine dispute over a material fact exists if there is sufficient evidence ...

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