Servpro Industries Inc. v. Zerorez of Phoenix LLC

          ORDER

          Honorable Roslyn O. Silver Senior United States District Judge

         Since 2003, Servpro Industries Inc. has used its registered trademark “Like it Never Even Happened” in advertising its restoration and cleaning services. For approximately three months in early 2017, Zerorez of Phoenix LLC used the phrase “Like it Never Happened” in its advertisements for carpet cleaning services. Servpro believes those advertisements infringed its trademark as a matter of law. Zerorez believes consideration of the larger context shows it did not infringe the trademark as a matter of law. Zerorez is correct.

         BACKGROUND

         For purposes of resolving the motion for summary judgment filed by Zerorez, the Court describes the record in the light most favorable to Servpro. Fortunately, most of the relevant facts are undisputed.

         A. Servpro's Business and Advertising

         Servpro “is one of the world's largest providers of cleanup and restoration products and services.” (Doc. 1 at 4). Servpro has more than 1, 700 franchisees operating in the United States with eighteen franchisees in the Phoenix area. Servpro describes the services its franchisees offer as "carpet, furniture and drapery cleaning services; restoration of building structures damaged by fire, water and other catastrophes both indoors and outdoors; restoration of furniture damaged by fire, water and other catastrophes; and mold remediation services." (Doc. 1 at 5).

         In marketing its services, Servpro uses a "House Logo" as "the primary identifier for the company." (Doc. 79-1 at 65). Servpro's House Logo is:

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         In addition to its House Logo, Servpro also uses a phrase it describes as its "Brand Descriptor." That phrase is usually portrayed as:

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         In advertisements, the Brand Descriptor is usually "positioned below the SERVPRO House Logo." (Doc. 79-1 at 70).

         Finally, Servpro uses what it calls a "Branding Statement," which is actually the trademark at issue in this litigation. The trademark is "Like it never even happened." Servpro requires franchisees include the trademark in "[e]very ad and marketing piece . . . except small advertisements where space does not permit." (Doc. 79-1 at 69). Typically, the trademark is placed at the bottom of an advertisement. (Doc. 79-1 at 69). Servpro and its franchisees often include the House Logo, Brand Descriptor, and Branding Statement in advertisements. One such example is:

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         B. Zerorez's Business and Advertising

         Zerorez Franchising, Inc. "is a carpet, upholstery and hard-surface (e.g. stone and granite] cleaning company." (Doc. 98 at 3). There are numerous Zerorez franchisees throughout the country, one of which is Zerorez of Phoenix LLC ("Zerorez"). Zerorez Franchising differentiates itself from other carpet cleaning services by touting its "patented cleaning system with Empowered Water." Zerorez Franchising describes "Empowered Water" as an alternative to traditional water and soap mixtures. Zerorez performs cleaning services but does not perform "any restoration services" similar to those provided by Servpro.

         Zerorez Franchising owns a number of trademarks, including "Zerorez" and "Empowered Water." The "primary logo" used by Zerorez Franchising and its franchisees is a trademark consisting of three rows of three concentric circles:

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         All of the Zerorez advertisements in the record include one or more of the trademarks.

         C. Zerorez's Alleged Infringement

         On December 7, 2016, a few Zerorez employees attended a marketing meeting. (Doc. 98 at 36). At that meeting, a Zerorez employee suggested "the theme and tagline 'Like it Never Happened.'" The meeting participants agreed to use the phrase in future advertisements. On January 1, 2017, Zerorez updated its website to include the phrase on its ...