Jalinski Advisory Grp. v. JBL Fin. Servs.

JALINSKI ADVISORY GROUP, INC. Plaintiff, v. JBL FINANCIAL SERVICES, INC. Defendant.

No. 4:19 CV 1914 DDN

United States District Court, E.D. Missouri, Eastern Division

April 20, 2022

MEMORANDUM & ORDER

DAVID D. NOCE, UNITED STATES MAGISTRATE JUDGE.

This matter is before the Court on:

(1) the motions of defendant JBL Financial Services, Inc. for summary judgment (Docs. 89, 90, 91, 93);

(2) the motions of defendant to bar the testimony and opinions of certain of plaintiff's experts (Docs. 74, 78, 80);

(3) the motion of plaintiff Jalinski Advisory Group, Inc. (JAG) to amend its amended complaint (Doc. 123); and

(4) the motion of defendant to strike and exclude for sanctions certain exhibits submitted by plaintiff (Doc. 130).

The Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. § 1331 and 15 U.S.C. §§ 1114 and 1125. The parties have consented to the exercise of plenary authority by the undersigned United States Magistrate Judge under 28 U.S.C. § 636(c). The Court heard argument on the motions on February 9, 2022.

BACKGROUND

The following facts are uncontroverted by the parties, unless otherwise noted. Plaintiff JAG is a New Jersey corporation providing insurance products; Wealth Quarterback, a corporation affiliated with plaintiff, provides investment advisory services. (Plaintiff Jalinski Advisory Group, Inc and Defendant JBL Financial Services, Inc.'s First Amended Joint Statement of Contested and Uncontested Material Facts ¶¶ 1g, 1i, 113a (hereinafter SOF ¶)). Plaintiff began using the marks “Financial Quarterback” or “The Financial Quarterback” in reference to its services at least as early as 2006. SOF ¶ 136a. Plaintiff is the owner of the trademark “The Financial Quarterback” and “Financial Quarterback” under four different registration numbers: 4722740, 5346563 5633102, and 5346562. SOF ¶¶ 17a-b. Plaintiff is also the owner of the “The Financial Quarterback” trademark under registration number 3782665, which is identified by the U.S. Trademark Office as being “cancelled” and “dead” due to plaintiff's voluntary abandonment of the registration. SOF ¶¶ 18-20a. Plaintiff and Wealth Quarterback have never had a written trademark license agreement, and Wealth Quarterback does not pay plaintiff for use of the mark. SOF ¶ 126a.

Plaintiff generates most of its client leads through radio programs podcasts, television appearances, seminars, social media marketing, and other appearances by plaintiff's president and owner, Josh Jalinski. SOF ¶¶ 16, 94f. Mr. Jalinski's radio program, entitled “The Financial Quarterback, ” is terrestrially broadcast in portions of New York, New Jersey, Connecticut, and Pennsylvania. SOF ¶ 31a. The radio program has also been available nationally via internet streaming since October 2008. SOF ¶¶ 33r, 34c, 75a. Its territorial reach includes New York, New Jersey, Pennsylvania, the Midwest, Washington, D.C., North Carolina, Virginia, Massachusetts, Vermont, and Maine. SOF ¶ 111k. Plaintiff also has a substantial presence on Facebook and other social media sites, which have been a large source of leads in recent years. SOF ¶ 175c.

Defendant is a St. Louis-based entity providing a variety of financial and retirement planning and advisory services, which it promotes using the term “Retirement Coach.” SOF ¶¶ 35, 4160a, 60c, 61a. Since as early as December 1, 2004, defendant has used “Retirement Coach” in its newsletter, “The Coach's Corner.” SOF ¶ 60a. Defendant has also been using the term “Retirement Coach” in its radio program, “Straight Talk on Retirement, ” since May 2006. SOF ¶ 61a. Defendant's radio program is terrestrially broadcast in eastern Missouri and central Illinois, and it has been available via internet streaming since 2007. SOF ¶¶ 61b, 62a. Defendant also uses the word “coach” and phrase “Retirement Coach” frequently when posting on social media. SOF ¶¶ 181a, 182a.

In 2015, defendant received a cease-and-desist letter from the owner of the mark “The Retirement Coach, ” registration number 247023. SOF ¶ 166a. According to defendant's president, Jeff Lapidus, Mr. Lapidus and the owner of the mark agreed that they operated in different geographic areas such that there was no likelihood of confusion. SOF ¶ 167a. There is no evidence that defendant received a license to use the mark “The Retirement Coach, ” but it continues to use it as it had before it received the cease-and-desist letter. SOF ¶¶ 167c, 168a.

In July 2017, defendant hired a third party, FMG Suite, to update its website; in the process, FMG Suite added “financial quarterback” and “quarterback” into the content of the website. SOF ¶ 177a. Plaintiff identified multiple uses of “financial quarterback” by defendant on defendant's website and social media pages, in close proximity to links to and/or advertisements for defendant's newsletter and radio program. SOF ¶¶ 71b, 174b. In May 2017, defendant posted the following message on Facebook: “We pride ourselves on always simplifying complex terms into understandable terminology to come up with a game plan that works for you! #finance #retirement #quarterbacks #gameplan #coachingsession.” (Doc. 124-36 at 2.) In April 2018, defendant posted messages on Facebook and Twitter that each included the sentence “We pride ourselves on being your financial quarterbacks!” (Id.) These three social media posts, as well as three posts from March 2018 that did not include the words “financial” and/or “quarterback, ” include an image of a football team. (Id. at 2-6.) Screen captures from defendant's website as of October 2016 and July 2017 show that the defendant described itself as “coach, quarterback, and adviser” for its clients. (Doc. 124-5 at 3; Doc. 124-20 at 3; Doc. 67-4 at 4.) Additionally, screen captures from October 2017, April 2018, and January 2019 show that defendant's website included the phrase “We pride ourselves on being your financial quarterbacks.” (Doc. 67-4 at 1-3.)

Defendant learned of the use of “financial quarterback” on its website on July 13, 2019, after plaintiff filed this action. SOF ¶ 178a. Defendant removed the phrase “financial quarterback” from its website on July 15, 2019. SOF ¶ 80a. Plaintiff has not identified an instance wherein defendant used “Financial Quarterback” or “The Financial Quarterback” in defendant's newsletter or radio program. SOF ¶ 174a. There is no evidence that defendant was aware of plaintiff prior to the filing of this action. SOF ¶ 147a.

Plaintiff has one client in Missouri but states that it has received calls from potential clients located in Missouri. SOF ¶¶ 81, 82a. Defendant serves some clients in states where plaintiff has a presence, including Texas and Florida; however, the majority of its clients reside in Missouri and Illinois. SOF ¶¶ 85, 87b. Plaintiff has not identified any actual confusion or lost leads due to defendant's use of the phrase “Retirement Coach.” SOF ¶¶ 93a, 94a.

Plaintiff claims trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1) (Counts 1-4); unfair competition and false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a) (Counts 5-8); common law trademark infringement and unfair competition (Count 9); and Missouri state law claims of unfair trade practices and trademark dilution (Counts 10-11).

Defendant counterclaims for declaratory judgments of non-infringement and regarding plaintiff's rights to the mark “Financial Quarterback” (Counts 1-5); unfair competition and false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a) (Count 6); state law claims of trademark dilution, unfair trade practices, and injury to business reputation (Count 7); and cancellation or restriction of plaintiff's asserted trademark registrations (Counts 8-9).

MOTIONS TO BAR EXPERT TESTIMONY

Federal Rule of Evidence 702 allows a witness who qualifies as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion or otherwise about scientific, technical, or other specialized knowledge. Fed.R.Evid. 702. Expert opinion testimony must pass threshold standards of reliability and relevance. Daubert v Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). The inquiry of Rule 702 is a flexible one, id. at 594 n. 12, but the Daubert court identified five important considerations relevant in determining whether these standards are met.

First, the evidence must be scientific, technical, or otherwise specialized. Fed.R.Evid. 702. Opinion evidence is “scientific” if it is grounded in the methods and procedures of science. Daubert, 509 U.S. at 589-90. Second, the evidence must be “knowledge” and not mere “subjective belief or unsupported speculation.” Id. at 590. This means that the subject of scientific testimony must be derived by the scientific method. Id. Third, Rule 702 requires that the evidence be relevant in the sense that it is helpful to the trier of fact to decide a fact at issue. Id. at 591, 592. Fourth, if the expert opinion is based on evidence that is inadmissible, the opinion may be admitted only if this evidence is “of a type reasonably relied upon by experts in the particular field in forming opinions or inferences on the subject.” Id. at 595 (citing Fed.R.Evid. 703). Fifth, the trial court must determine whether the expert's reasoning and methodology are reliable, i.e., (a) whether they can be and have been tested; (b) whether they have been submitted to peer review and publication; (c) whether the asserted scientific technique has a known or potential rate of error; and (d) whether the asserted technique is generally accepted in the scientific community. Id. at 593-94.

These can be summarized in Rule 702's post-Daubert amendment, which requires expert evidence be (a) such that it ...