willingway memo for tro by martyschwimmer

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									      Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 1 of 23




                            UNITED STATES DISTRICT COURT
                            SOUTHERN DISTRICT OF GEORGIA
                                STATESBORO DIVISION


WILLINGWAY, INC.,                                   )
                                                    )
                              Plaintiff,            )
                                                    )    Civil Action No.
               v.                                   )
                                                    )
MARIEL HEMINGWAY and                                )
BOBBY WILLIAMS,                                     )
                                                    )
                              Defendants.           )



                  PLAINTIFF'S MEMORANDUM OF LAW IN
         SUPPORT OF MOTION FOR TEMPORARY RESTRAINING ORDER

       Plaintiff Willingway, Inc. submits this memorandum of law in support of its motion for a

temporary restraining order pursuant to Federal Rule of Civil Procedure 65(b). In its Verified

Complaint, Willingway asserts trademark infringement under the Lanham Act, 15 U.S.C. §1114,

and Georgia common law; false designation of origin under the Lanham Act, 15 U.S.C.

§1125(a); dilution under the Lanham Act, 15 U.S.C. §1125(c), and the Georgia Anti-Dilution

Statute, O.C.G.A. §10-1-451; and unfair and deceptive trade practices under the Georgia

Uniform Deceptive Trade Practices Act, O.C.G.A. §10-1-372. Willingway's motion is supported

by the Verified Complaint, the applicable law and the accompanying Declarations of James W.

Mooney (Exhibit A hereto) and Theodore A. Breiner (Exhibit B hereto).

       Specifically, Willingway is likely to succeed on the merits in this case against Defendants

Mariel Hemingway ("Hemingway") and Bobby Williams ("Williams") (collectively

"Defendants") in establishing trademark infringement and the related claims, and Willingway
      Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 2 of 23



will be irreparably harmed if a temporary restraining order and a preliminary injunction are not

granted. The balance of hardships and public interest weigh heavily in favor of Willingway.

I.     OVERVIEW OF THE CASE

       Willingway is the owner of the incontestable federally registered trademark

WILLINGWAY for hospital services and treatment of alcoholism and drug addiction, U.S.

Registration No. 1,161,456. Willingway's services are directed to health and wellness treatment

programs. That is, when an individual is not pleased with his or her current lifestyle choices and

seeks change for a better and more fulfilling lifestyle, Willingway assists in counseling and

treatment.

       Willingway has been using the WILLINGWAY trademark for its health and wellness

services for more than forty years and has counseled more than 18,000 people in making lifestyle

changes, namely treating an addiction to alcohol and drugs and the corresponding mental health

issues relating to such substance abuse, including depression, anxiety, issues at work, family

issues and the like. Willingway has treated people throughout the entire United States and the

world. Willingway is considered one of the best treatment facilities in the country.

       In May 2012, Willingway became aware of Hemingway and Williams' intent to use

Willingway's trademark WILLINGWAY for, inter alia, health and wellness programs, including

Hemingway's filing a trademark application to register THE WILLINGWAY for, inter alia,

health and wellness programs. The U.S. Patent and Trademark Office twice refused registration

based on Willingway's registration for WILLINGWAY. Willingway immediately wrote to

Hemingway requesting that she respect Willingway's incontestable trademark registration and

not use the name THE WILLINGWAY; that she withdraw her trademark application; and that

she cease use of the domain name www.thewillingway.com which incorporates Willingway's



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registered trademark and which Web site uses Willingway's registered trademark. Hemingway

refused to cease use of the WILLINGWAY name but did advise that she was amending her

trademark application to delete reference to health and wellness programs, admitting that these

services "are aligned" with Willingway's services and stating that she was not using the

WILLINGWAY name for these services. Willingway continued to object to Defendants' use of

its trademark in any manner and continued to monitor the Defendants' activities, i.e. at that time

Defendants were not offering any goods or services and had only a one page Web site.

         On April 5, 2013, Willingway discovered through an interview with the Defendants on

the Today Show that Hemingway and Williams had written The Willingway directed to health

and wellness and were offering for sale on their Web site The Willingway and THE

WILLINGWAY Kit, the latter advertised as "the most complete health system ever created."

Accordingly, Hemingway and Williams appropriated Willingway's WILLINGWAY trademark

for their own use and are marketing their book and their healthcare kit directed to health and

wellness products and services, all less than a year after they assured Willingway they would not

do so.

         Lest there be any doubt of the overlap of Willingway and Defendants' goods and services,

Chapter 7 of The Willingway is directed to Detoxification and states at page 115:

Addiction Detox Food Program

A cleansing food program can also be used to help break an addiction-to drugs, alcohol, caffeine
and sugar. Keep in mind, though, that detox from drugs and alcohol is more complicated than
making new dietary choices and requires outside support and assistance, which goes beyond the
scope of this book. Here, we are specifically talking about breaking addictions to caffeine,
processed/packaged food and sugar. But we can say with confidence that living a cleaner life by
implementing the healthy choices we present here in The Willingway will lay a foundation to
help support your goal to break other addictions.

  It is believed that a physical addiction is broken in 72 hours but that it takes a minimum of 21
days to break a mental addiction to a substance. Even so, it can take much, much longer to


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actually get the residues of that substance completely out of the body, and that's where clean
eating comes in… (emphasis added)

Accordingly, Defendants are providing essentially the same advice, counseling and treatment as

Willingway, albeit on a much less sophisticated and knowledgeable level and at times contrary to

the philosophy practiced by Willingway.

       The Willingway "Introduction" makes it clear that Defendants have no hesitation in

"stealing" from others. Note the quote from Defendants in their "Introduction" from Jim

Jarmusch at page 6 followed by reference to the WILLINGWAY wellness program and

philosophy:

               Nothing is original. Steal from anywhere that resonates with inspiration or fuels
your imagination. Devour old films, new films, music, books, paintings, photographs, poems,
dreams, random conversations, architecture, bridges, street signs, trees, clouds, bodies of water,
light and shadows. Select only things to steal from that speak directly to your soul. If you do
this, your work (and theft) will be authentic. Authenticity is invaluable; originality is
nonexistent. And don't bother concealing your thievery-celebrate it if you feel like it. In any
case, always remember what Jean-Luc Goddard said: "It's not where you take things from, its
where you take them to." -- Jim Jarmusch

  The WillingWay is simple and accessible--real food, clean living, a clean environment,
knowing where your food and water come from, connection to the planet and the world of
Nature, conscious physical movement, silence and listening within. All of these things will help
you to know yourself. Where there is a will, there is a way. This is the WillingWay philosophy.
Let's get started! (emphasis added).

       Willingway will be irreparably harmed by the Defendants' continued sale of The

Willingway and the related goods and services using THE WILLINGWAY name as the public is

likely to be confused between the parties' respective commercial activities. In fact, there have

already been instances of actual confusion based on Defendants' use of Willingway's trademark.

Significantly, Willingway has a book launch scheduled for April 30, 2013 for When Two Loves

Collide, a book about the founders of Willingway and the WILLINGWAY brand services.




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Having two books on the market directed to health and wellness using the same name

WILLINGWAY is bound to cause confusion and irreparable harm to Willingway.

       A temporary restraining order and preliminary injunction should issue to stop this

irreparable harm to Willingway.

II.    BACKGROUND

       A.      Willingway And The WILLINGWAY Trademark

       Willingway is a Georgia corporation located in Statesboro, Georgia. Declaration of

Mooney ¶2.1 Willingway provides hospital services, treatment of alcoholism and drug addiction

and health and wellness services (hereafter "Health and Wellness Services"). Id. Willingway

has been in business for more than forty years, has treated more than 18,000 people and has

affected the lives of hundreds of thousands of family members, relatives and friends. Id.

       Willingway was founded by Dr. John Mooney and his wife Dot Mooney (hereafter "the

Mooneys"). Id. ¶3. Willingway was founded after the Mooneys' recovery from addictions to

drugs and alcohol. Id. The Mooneys then sought to treat others having similar problems and

seeking a positive lifestyle change. Id. Willingway is a family owned business and run by the

Mooney's children.

       A book has recently been written about the Mooneys and their founding of Willingway,

When Two Loves Collide, by William G. Borchert, a world renowned author. Id. ¶4. The release

date for this book is April 30, 2013. Id. Willingway is launching a national book tour for When

Two Loves Collide, including scheduling appearances on major television shows and in major




1
 The declarations will be referred to herein by the declarant's name, and paragraph, e.g., as
"Mooney ¶___."

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publications. Id. These appearances will emphasize Willingway and the WILLINGWAY brand

services. Id.2

         Willingway registered the WILLINGWAY trademark in the U.S. Patent and Trademark

Office on July 14, 1981, U.S. Registration No. 1,161,456 (hereafter "the Registration"). Breiner

¶2, Exh. 1. The Registration is incontestable, and Willingway is entitled to the exclusive right to

use the WILLINGWAY trademark throughout the United States. 15 U.S.C. §§1056 and 1115.

Breiner ¶21, Exh. 20.

         The WILLINGWAY trademark is presumed distinctive under the United States

Trademark Laws. 15 U.S.C. §1057. The WILLINGWAY trademark is a well-known trademark.

For example only:

                 1.     The WILLINGWAY trademark has been used continuously and

exclusively for more than forty years;

                 2.     Willingway has expended substantial time and expense in developing the

WILLINGWAY brand for the Health and Wellness Services, including spending in excess of

$3.5 million over the last five years in marketing the WILLINGWAY brand services;

                 3.     The WILLINGWAY brand is nationally known and Willingway is

recognized as one of the best treatment centers in the country. Thus, (1) Willingway has

rendered its services to others in at least forty-five states of the United States and to others from

countries outside the United States; (2) According to Billboard Magazine, Willingway is one of

the "Top 10 Treatment Centers in the Nation;" (3) Willingway is in the top 20 of "100 Best

Treatment Centers for Alcohol and Drug Abuse;" (4) Willingway has been featured in Good

Housekeeping Magazine in an article entitled "Meet The Mooney Family;" (5) Willingway has


2
    We are providing the Court with copies of Willingway's book and Defendants' The Willingway.

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been featured in Readers Digest in an article entitled "Heroes for Today;" and (6) Guidepost

Publications has named Willingway the "Top Treatment Center in the Southern United States."

               4.      Willingway's in-patient treatment facility and licensed hospital extends

beyond in-patient program services and includes out-patient services, extended-care services and

group meetings throughout the United States;

               5.      Willingway actively promotes its services on its Web site at

www.willingway.com. The Web site is an integral part of its business;

               6.      Willingway is now developing a separate family services program to

advise on health and wellness;

               7.      Willingway's strategic plan includes opening additional facilities

throughout the United States and providing additional services expanding on the

WILLINGWAY brand;

               8.      Willingway markets its WILLINGWAY brand services nationally,

including on the West Coast such as in Palm Springs, California at the "West Coast Symposium

on Addictive Disorders;" to the Recording Academy in Los Angeles; and at the "Freedom and

Recovery Conference" in San Diego;

               9.      Willingway's services extend to related materials, including The Recovery

Book authored by Dr. Al Mooney. This book is internationally recognized as a leading reference

to addiction and recovery and related health and wellness, e.g. proper lifestyle after recovery;

and

               10.     As noted above, Willingway will launch a new book on April 30, 2013

relating to the founders of WILLINGWAY and referencing WILLINGWAY and its services.




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Mooney ¶5. Accordingly, the WILLINGWAY trademark is a strong trademark; a well-known

trademark; is to be accorded a national scope of protection; and has developed substantial good-

will and secondary meaning throughout the United States.

       Willingway has committed significant time, effort, and money to developing and

maintaining a reputation for excellence in the quality of the Health and Wellness Services. Id.

¶6.   The WILLINGWAY mark for the Health and Wellness Services symbolizes Willingway's

commitment to such high-quality services. Id. This is evident from the substantial recognition

received from others such as Billboard Magazine. Id.

       Willingway provides an extremely valuable service to people facing drug and alcohol

addiction, including related problems such as depression, anxiety, and suicidal tendencies. Id.

¶7. It is extremely important that the public is not confused as to the source of the Willingway

services or as to any sponsorship or affiliation of Willingway with the commercial activities of

others. Id.

       B.      Defendants' Infringing WILLINGWAY Trademark

       According to The Willingway and Defendants' Web site, Defendant Hemingway,

granddaughter of Ernest Hemingway, lives in Southern California at The Willingway Ranch

"with her BFF (boyfriend forever)" Defendant Bobby Williams. See The Willingway book cover

and THE WILLINGWAY Web site. Breiner ¶¶9, 12, and 13, Exhs. 8, 11, and 12. She is said to

be a passionate advocate for balanced living and mental health. Id. She is an entrepreneur and

has written books dealing with health and wellness, including directed to the alcoholism and

drug addiction in her family. Id. Defendant Williams is stated to be a stuntman/actor, health and

wellness expert and a nutrition expert. Id. He is said to have been in the world of health and

wellness for twenty-five years.



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        On April 5, 2013, Willingway discovered that Hemingway and Williams authored The

Willingway directed to health and wellness. Mooney ¶8; Breiner ¶9, Exh. 8 (a picture of the

book cover). Defendants appeared that day on nationwide television on the Today Show. Id.

The Today Show transcript is Exhibit 8 to the Declaration of Breiner. As apparent from the

transcript, the entire Today Show discussion was directed to Hemingway and her family's

problems with alcoholism, drug addiction and depression, the very same lifestyle issues treated

by Willingway. The Willingway book using Willingway's registered trademark is directed to

health and wellness and lifestyle changes, the very same treatment offered under the

WILLINGWAY brand. As seen hereafter, these are the very same services for which

Hemingway stated she would not use the THE WILLINGWAY trademark, and which she

admitted would cause confusion with Willingway. Breiner ¶4, Exh. 3.

       Based on the Today Show interview, the public has been confused between Willingway

and the Defendants. Id. ¶9. On April 5, 2013, after the Today Show, Willingway received six

telephone calls or emails from individuals requesting help with alcohol and drug addiction based

on their belief that there is an affiliation between Defendants and Willingway. Mooney ¶9.3

       Defendants are now using the name THE WILLINGWAY on their Web site having the

domain name www.thewillingway.com to offer for sale The Willingway and THE

WILLINGWAY Kit for "the most complete health system ever created." Breiner ¶11, Exh. 10.

Additionally, Defendants through their Web site offer to consumers a video series on health and

wellness treatments stating:

            Live Your Life The Willingway When You're At A Crossroads, Ask Yourself:
"What Would Nature Do?" The Willing Way is a journey of inspiration, hope, and rejuvenation.

3
  Willingway is not submitting the names of the individuals or their concerns due to
confidentiality. Willingway will have the records of this confusion available at any hearing
granted by the Court provided that all confidential information is redacted.

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Get your free video series about 6 of the World's Most Influential and Brilliant Doctors you've
ever heard of.

Id. Accordingly, Defendants are offering health and wellness services for providing a lifestyle

change to people not happy with their lives. Mooney ¶10. Defendants' services, therefore,

clearly overlap those of Willingway, although the parties differ in opinion as to the proprietary of

certain counseling and treatment. That is, certain of Defendants' proposed treatments, including

for alcohol and drugs, may actually be detrimental to individuals, and contrary to the philosophy

of Willingway. Mooney ¶10.

       Additionally, a new documentary is coming out at the same time as The Willingway,

"Running From Crazy," about Hemingway's family history of mental illness, addiction and

suicide. Breiner ¶¶14 and 15, Exhs. 13 and 14. The documentary is said to make reference to

The Willingway. Hemingway says it is a coincidence that The Willingway is coming out at the

same time. Id. She attributes her well-being and freedom from her family's addictions to the

treatment recommended in The Willingway. Id.

       C.      Defendants' Prior Knowledge Of The WILLINGWAY Trademark
               And Their Refusal Not To Use The WILLINGWAY Trademark

       Hemingway filed a trademark application in the United States Patent and Trademark

Office, Application Serial No. 85/431,582, on September 26, 2011, alleging an intent-to-use the

trademark THE WILLINGWAY for health, fitness and wellness services; entertainment and

educational services; health, beauty, food and wellness products and services (hereafter

"Application"). Breiner ¶16, Exh. 15. At the time of this filing, Hemingway was not using the

name THE WILLINGWAY for any goods or services. Mooney ¶1. The U.S. Patent and

Trademark Office examining attorney twice refused registration of the Application for THE




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WILLINGWAY on the grounds that it was confusingly similar to Plaintiff's WILLINGWAY

mark. Breiner ¶¶17 and 19, Exhs. 16 and 18.4

       Plaintiff discovered the Application in May 2012 and immediately wrote to counsel for

Hemingway by letter dated May 14, 2012 (a) objecting to Hemingway's intended use of the

trademark THE WILLINGWAY; (b) objecting to the Application for the trademark THE

WILLINGWAY; and (c) objecting to Hemingway's use and registration of the domain name

www.thewillingway.com and the corresponding Web site. Mooney ¶12; Breiner ¶3, Exh. 2. At

the time of the May 14, 2012 letter, Hemingway had only a one page Web site and was not using

the THE WILLINGWAY trademark for any goods and services. Id. Plaintiff requested that

Hemingway respect Willingway's rights in the WILLINGWAY trademark and cease and desist

any and all such use of the name THE WILLINGWAY. Id.

       Hemingway responded to Willingway's cease and desist letter by letter dated May 15,

2012 stating that the U.S. Trademark Office examining attorney stated that "there would be no

likelihood of confusion based on your client's mark if we delete the services that are aligned with

it (health care services, namely wellness programs), which my client isn't offering anyhow."

(emphasis original). Breiner ¶4, Exh. 3. Accordingly, Hemingway admitted that there is a

likelihood of confusion between the parties' identical marks if Hemingway uses the name THE

WILLINGWAY for wellness programs. Hemingway falsely represented to Willingway that she

would not do so.




4
  Defendants' use of the word "The" in their name has no trademark significance and cannot
distinguish Defendants' name from Willingway's name. See In re The Computer Store, 211
U.S.P.Q. 72, 1981 WL 40483 (Trademark Trial & App. Bd. 1981). Additionally, the media
covering the Defendants' book are sometimes using only the name WILLINGWAY to reference
the Defendants.

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       Hemingway's response was not acceptable to Willingway and Willingway so advised

Hemingway by letter dated May 17, 2012, again requesting that Hemingway cease and desist all

such use of the name THE WILLINGWAY. Breiner ¶5, Exh. 4. Hemingway responded by e-

mail dated May 22, 2012 and Willingway responded thereto by letter dated June 8, 2012, again

requesting that Hemingway cease and desist all such use and explaining in detail how and why

there is an overlap in the channels of trade between the Willingway services and the Hemingway

proposed goods and services. Id. ¶¶6 and 7, Exhs. 5 and 6. At that time, Hemingway still had

only a one page Web site referencing THE WILLINGWAY and was not selling any goods or

services. Mooney ¶13. Hemingway did not respond and Willingway sent a further letter to

Hemingway dated July 18, 2012 objecting to any future use and registration of THE

WILLINGWAY trademark. Breiner ¶8, Exh. 7.

       Based on Hemingway's representation that she was not using the trademark THE

WILLINGWAY for health and wellness programs and because Hemingway's Web site was only

one page, Willingway did not file suit for trademark infringement and continued to monitor the

Hemingway Application and Hemingway's use of the name THE WILLINGWAY. Mooney ¶14.

       In February 2013, Willingway determined that Hemingway had amended the Application

to delete reference to the health and wellness services and that the Application may be allowed

by the Trademark Office. Breiner ¶20, Exh. 19. Willingway further determined that

Hemingway had expanded use of the name THE WILLINGWAY on her Web site, although

Hemingway was still not offering any goods or services under the trademark THE

WILLINGWAY. Mooney ¶15. Based thereon, counsel for Willingway again objected to

Hemingway's use of the name WILLINGWAY and registration of the trademark THE

WILLINGWAY by telephone conference between counsel on or about February 28, 2013. Id.



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Defendant refused to withdraw the Application and not use THE WILLINGWAY name. Id.

Willingway was considering what action to take against Defendants when they learned of The

Willingway on April 5, 2013. Id.

III.    LEGAL STANDARDS FOR TEMPORARY RESTRAINING ORDER

        Federal Rules of Civil Procedure 65(a) and (b) authorize this Court to grant a temporary

restraining order and preliminary injunction. To receive such relief, a plaintiff must establish

that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the

absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction

is in the public interest. Winter v. Natural Res. Defense Council, Inc., ____U.S. ____, 129 S.Ct.

365, 374, 172 L.Ed.2d 249 (2008); Tally-Ho, Inc. v. Coast Community College Dist., 889 F.2d

1018, 1022 (11th Cir. 1989); Peter Brasseler Holdings, L.P. v. Gebr. Brasseler GmbH & Co.,

516 F.Supp. 1317, 1319 (S.D. Ga. 2007) ("Brasseler").

        In order to prevail on claims of trademark infringement and unfair competition under the

Lanham Act, a plaintiff is obligated to show the Court that it has a valid, protectable trademark

and that the defendant's use of a colorable imitation of the trademark is likely to cause confusion

among consumers. McDonald's Corp. v. Robertson, 147 F.3d at 1301, 1307 (11th Cir. 1998)

("McDonalds"). In assessing the likelihood of confusion issue, the following seven factors

should be considered: (1) the strength of the plaintiff's mark; (2) the similarity of the two marks;

(3) the similarity of the goods and services that the marks identify; (4) the similarity of the

channels of trade that the two parties use in their businesses; (5) the similarity of the advertising

the two parties use; (6) the defendant's intent; and (7) actual confusion. Frehling Enterprises,

Inc. v. International Select Group, Inc., 192 F.3d 1330, 1335 (11th Cir. 1999) ("Frehling") and

Brasseler, 516 F.Supp. at 1321. Of these, the type of mark and the evidence of actual confusion



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are the most important. Frehling, 192 F.3d at 1335.

IV.    WILLINGWAY FACES IMMEDIATE AND IRREPARABLE INJURY

       In the context of trademark infringement, there is a presumption that the plaintiff will

suffer irreparable injury absent an injunction. McCarthy On Trademarks (4th ed.), § 30:45

citing, inter alia, McDonald's, 147 F.3d at 1310. See also Brasseler, 516 F.Supp. at 1322. As

seen hereafter, Willingway is likely to succeed on the merits in establishing trademark

infringement and irreparable harm is presumed.

       As detailed above, Willingway has actively and extensively marketed its WILLINGWAY

brand Health and Wellness Services. It has spent in excess of $3.5 million in such marketing

over the last five years. It has established a predominant position in the industry, being

consistently named one of the top treatment centers in the nation. The consuming public has,

therefore, come to recognize the WILLINGWAY brand Health and Wellness Services as one of

the premier facilities in the country.

       Defendants were fully aware of the WILLINGWAY brand prior to marketing The

Willingway; prior to marketing THE WILLINGWAY Kit; and prior to expanding their use of the

WILLINGWAY name on their Web site. Additionally, Willingway's Federal Trademark

Registration is constructive notice of Willingway's WILLINGWAY trademark. 15 U.S.C. §

1072 ("Registration of a mark on the principal register...shall be constructive notice of the

registrant's claim of ownership thereof"). Further, Defendants presumably learned of the

WILLINGWAY brand when they selected the domain name www.thewillingway.com and this

name was presumably selected because Plaintiff had registered the domain name

www.willingway.com. Notwithstanding, Defendants were fully aware of Willingway when the

U.S. Trademark Office refused the Application to register THE WILLINGWAY based on



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Willingway's incontestable registration for WILLINGWAY. Defendants were clearly aware of

Willingway's objection to their use of the WILLINGWAY trademark in May 2012, long before

the release of The Willingway and the related commercial activities commenced in April 2013,

e.g. a total make-over of THE WILLINGWAY Web site. Breiner ¶22, Exh. 21 (prior Web site)

and ¶11, Exh. 10 (today's Web site). In using Willingway's trademark, did Defendants decide to

follow their quoted philosophy of Mr. Jarmusch that "Nothing is original" and "[s]teal from

anywhere that reasonates with inspiration…?"

       If Defendants are allowed to continue to use the WILLINGWAY trademark during the

pendency of this action, Willingway will be irreparably harmed for at least the following

reasons:

       Consumers are likely to be confused as to the source or sponsorship of the Defendants'

       goods and services with Willingway's WILLINGWAY services. In fact, there have

       already been instances of actual confusion. This problem is further exacerbated because

       Willingway is concerned that individuals, having alcoholism and drug addictions, may

       not be able to reach Willingway, thereby putting them at risk. Additionally, certain of the

       Defendants' "Willingway" philosophies are contrary to the WILLINGWAY philosophies

       practiced by Plaintiff.

       Willingway's launch of When Two Loves Collide will be detrimentally affected. For

       example only, Willingway intends to direct others to its Web site for purchase of the

       book and information on the WILLINGWAY brand services. It is highly likely that the

       public may not reach the Willingway Web site but rather the Web site of the Defendants.

       The WILLINGWAY name will be weakened and diluted by Defendants' unauthorized

       use of Willingway's WILLINGWAY trademark. Thus, there are currently no other third



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        party uses of the name WILLINGWAY. If Defendants are allowed to use the name, this

        may cause others to use the name.

        The millions of dollars which Willingway has spent on marketing the WILLINGWAY

        brand services for the last forty years will be for naught.

        Money damages cannot fully rectify these injuries to Willingway.

        In summary, without a temporary restraining order and preliminary injunction,

Willingway is faced with the constant and ever increasing injury to its goodwill, reputation and

trademark distinctiveness from the infringing use of its trademark. Moreover, the public is faced

with confusion as to the source of the parties' respective goods and services, all to the detriment

of those seeking Plaintiff's hospital services and the treatment for alcohol and drug addiction.

V.      WILLINGWAY WILL SUCCEED ON THE MERITS

        A.      Validity And Strength Of The WILLINGWAY Mark

        Willingway is the owner of the WILLINGWAY federally registered trademark. The

Registration issued by the U.S. Trademark Office under the Trademark Act is prima facie

evidence of Willingway's exclusive right to use the registered mark in commerce. 15 U.S.C.

§1115(a) ("Any registration...of a mark registered on the principal register provided by this

Act...shall be prima facie evidence of the validity of the registered mark and of the registration of

the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use

the registered mark in commerce on or in connection with the goods or services specified in the

registration..."). The effect of the registration is to shift the burden from the plaintiff to the

defendant, who must introduce evidence to rebut the presumption of plaintiff's right to exclusive

use. Accordingly, the burden of proof lies with Defendants as to any assertion that the




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      Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 17 of 23



WILLINGWAY trademark is not valid. Defendants have never alleged that the WILLINGWAY

mark or the Registration are invalid.

       Notwithstanding, the evidence shows that the WILLINGWAY mark is a strong and

distinctive mark entitled to protection under the Lanham Act and common law. As seen above,

the WILLINGWAY mark has been in continuous and exclusive use for more than forty years

and has been aggressively promoted to the consuming public in connection with the

WILLINGWAY brand Health and Wellness Services. Willingway has spent in excess of $3.5

million marketing the WILLINGWAY brand in the last five years. Willingway has treated more

than 18,000 people and touched the lives of hundreds of thousands of these individuals' family,

friends, relatives, neighbors, co-workers, etc. There is no doubt that the public understands that

the WILLINGWAY mark refers to the WILLINGWAY brand. Willingway's mark has thereby

become strongly associated with Willingway's history of quality and innovation in the field of

Health and Wellness Services and as recognized by, inter alia, Billboard's finding Willingway to

be one of the top ten treatment facilities in the country. These facts weigh strongly in favor of

broad protection for the WILLINGWAY trademark.

       B.      Trademark Infringement

       Willingway will prevail on the merits of this case because Defendants' use of the

WILLINGWAY mark is likely to cause confusion as to the origin of the parties' goods, services

and commercial activities. Each of the Frehling factors will be discussed hereafter and support a

finding of Willingway's likelihood of success on the merits.

               (1) The Strength Of The WILLINGWAY Mark

       The WILLINGWAY mark is a valid and inherently distinctive mark. This is presumed

from the U.S. Trademark Office allowance of the Federal Registration.



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      Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 18 of 23



       Classifying the type of mark of Plaintiff determines whether it is strong or weak.

Frehling, 192 F.3d at 1335. The stronger the mark, the greater scope of protection. The

WILLINGWAY mark is an arbitrary mark and should be accorded a broad scope of protection.

Thus, the WILLINGWAY mark is clearly not generic or descriptive of the Health and Wellness

Services, nor is it suggestive thereof.

       Also important in gauging the strength of a mark is the degree to which third parties use

the mark. Frehling, 192 F.3d at 1336. The less that third parties use the mark, the stronger it is

and the more protection it deserves. Id. In this case, there is no known third party use of the

WILLINGWAY trademark. Mooney ¶16.

       Finally, if a mark is "incontestable," that is, if it has been registered for five years with

the U.S. Patent and Trademark Office, then the mark's incontestability serves to enhance its

strength. Frehling, 192 F.3d at 1336. The Registration for WILLINGWAY is incontestable.

Breiner ¶21, Exh. 20.

       Therefore, the WILLINGWAY mark is a strong mark.

               (2) Similarity Of The Marks

       There can be no dispute that the parties' marks are identical. Use of the indefinite article

"the" has no trademark significance. In re The Computer Store, supra. This factor favors

Willingway.

               (3) Similarity Of The Goods, Services And Commercial Activities

       The greater the similarity in the marks, the lesser the similarity required in the goods or

services of the parties to support a finding of likely confusion. McCarthy On Trademarks (4th

ed.) §23:20.50 citing In re Opus One, Inc., 60 U.S.P.Q.2d 1812, 2001 WL 1182924 (Trademark

Trial & App. Bd. 2001) ("[T]he greater the degree of similarity between the applicant's mark and



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      Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 19 of 23



the cited mark, the lesser the degree of similarity between the applicant's goods or services and

the registrant's goods or services that is required to support a finding of likelihood of

confusion"). If the marks are very similar, it is only necessary that there be a viable relationship

between the goods or services in order to support a holding of likelihood of confusion. Id. If the

marks are identical, then the degree of similarity between the parties' goods or services can be

quite large and there will still be a likelihood of confusion. Id., citing Kohler Co. v. Baldwin

Hardware Corporation, 82 U.S.P.Q.2d 1100, 2007 WL 117575 (T.T.A.B. 2007) (likelihood of

confusion found when identical marks used on senior user's plumbing fixtures and junior user's

door hardware).

       The goods and services offered by Willingway and Defendants under the

WILLINGWAY mark are substantially the same. They are both directed to people not happy

with their lifestyle and seeking a change. The Willingway book specifically references alcohol

and drug addiction, albeit indicating that this is somewhat beyond the purview of the book.

However, the television interviews on Defendants' book tour are essentially all directed to

Hemingway and her family's alcoholism and drug addiction. After the Today Show interview

discussing these addictions, Willingway received six communications requesting help with

addictions to alcohol and drugs.

       Additionally, the Court may consider the fact that the U.S. Patent and Trademark Office

twice refused registration of THE WILLINGWAY for health and wellness services based on

Willingway's registered trademark due to a likelihood of confusion caused by the similarity of

the parties' services. See Carling Brewing Co. v. Philip Morris, Inc., 277 F.Supp. 326, 333 (N.D.

Ga 1967) ("the court recognizes that the Patent Office's rejection of the defendant's application




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      Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 20 of 23



for a federal trademark registration constitutes meaningful support for the court's independent

judgment on the question of 'likelihood of confusion'.").

               (4) Similarity Of Channels Of Trade, Advertising And Customers

        Dissimilarity in the channels of trade lessens the possibility of confusion; mistake or

deception. Frehling, 192 F.3d at 1339. However, direct competition between the parties is not

required for this factor to weigh in favor of likelihood of confusion. Id.

       As seen above, the parties' books, services and commercial activities are directed to

health and wellness. They are directed to people seeking a lifestyle change. The Willingway

speaks directly to "Detoxification" and touches on alcohol and drug addiction, the same services

provided by Willingway. The Today Show interview was directed primarily to alcoholism, drug

addiction and the resulting effects such as depression and suicide. The fact that six people

contacted Willingway seeking help for addiction after seeing the Today Show interview clearly

establishes the similarity in the channels of trade of the parties' goods and services.

       The documentary "Running From Crazy" is directed to the addictions in Hemingway's

family, the same addictions treated by Willingway. The fact that the documentary is said to

reference The Willingway further illustrates the parties' common channels of trade.

       Willingway is launching a book tour for When Two Loves Collide which will directly

discuss substance abuse and the results thereof. This book tour will refer to Willingway and the

WILLINGWAY brand services. This further illustrates the similarity in the channels of trade.

       Both parties are using books and media tours to advertise their goods, services and

commercial activities. Both parties rely on the Internet for marketing. The use of virtually the

same domain name has caused actual confusion and will continue to cause confusion.




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      Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 21 of 23



               (5) Defendants' Intent

       The evidence is that Defendants intentionally began use of the WILLINGWAY mark

with full knowledge of Willingway's use thereof, including the Trademark Office refusals to

register THE WILLINGWAY for health and wellness services because it is confusingly similar

to Willingway's trademark. Willingway further placed Defendants on notice of its

WILLINGWAY trademark prior to Defendants entering the market. Despite the identical nature

of the marks, the substantially similar goods and services and the same channels of trade,

Defendants intentionally refused to refrain from using of the WILLINGWAY mark.

       Additionally, it is well-settled that one who adopts a mark similar to the mark of another

for closely related goods acts at his peril and any doubt there might be must be resolved against

him. McCarthy on Trademarks (4th ed.) §23:65 (citing cases). If there is evidence that the

junior user in fact knew of the senior user's mark before beginning use, the "acting at one's peril"

rationale finds stronger support. Id.

               (6) Actual Confusion

       It is undisputed that evidence of actual confusion is the best evidence of likelihood of

confusion. Frehling, 192 F.3d at 1340. However, such evidence is not a prerequisite. Id.

       As seen above, there has been actual confusion between the Defendants and Willingway.

Such evidence is highly persuasive evidence of likelihood of confusion.

VI.    BALANCE OF HARDSHIPS

       As explained in detail above, Willingway faces substantial immediate irreparable harm

absent a temporary restraining order and preliminary injunction.

       By contrast, any harm to Defendants resulting from a temporary restraining order or

preliminary injunction is entitled to reduced consideration because Willingway has shown a



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       Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 22 of 23



strong likelihood of success on the merits. See Boustany v. Boston Dental Group, Inc., 42

F.Supp.2d 100, 111 (D. Mass. 1999). Further, Defendants cannot be heard to complain that

taking their book off the market under the WILLINGWAY name or changing the name of their

Web site will be prejudicial when the Defendants intentionally went forward with their book and

Web site despite Willingway's objections. Defendants intentionally misled Willingway stating

that they were not going into health and wellness programs.

VII.    PUBLIC INTEREST

        In this case, the relevant public interest at stake is the prevention of consumer confusion

as to the source of Willingway's and Defendants' respective goods and services. See Vitality

Anti-Aging Center and Med Spa, LLC v. La Bella Donna Advanced Laser Med Spas of N. Amer.,

LLC, No. 5:08cv108, 2009 WL 348217, *8 (W.D.N.C. February 11, 2009). In trademark cases,

the public interest almost always favors granting otherwise appropriate injunctions. Id. When

products like health and wellness services are involved, the likelihood of consumer confusion is

particularly significant. People seeking Willingway's services usually require immediate and

proper counseling and treatment. Without such treatment, lives are at stake. If someone seeking

Willingway's services contacts Defendants, they will not receive the appropriate counseling and

treatment. Accordingly, this case is no exception as the public faces a likelihood of confusion as

to the source of the parties' goods and services which will grow rapidly if Defendants are

allowed to expand their presence on the market.

VIII. CONCLUSION

        For the foregoing reasons, Willingway respectfully requests that this motion be granted

and a temporary restraining order and preliminary injunction be entered against Defendants

Hemingway and Williams.



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     Case 6:13-cv-00040-BAE-GRS Document 6 Filed 04/11/13 Page 23 of 23



                                                   Respectfully submitted,

                                                   WILLINGWAY, INC.



                                               By: /s/ Wesley C. Taulbee
                                                  Wesley C. Taulbee
                                                  Ga. Bar No. 368972
                                                  FRANKLIN, TAULBEE, RUSHING,
                                                  SNIPES & MARSH, LLC
                                                  12 Siebald Street
                                                  Statesboro, Georgia 30458
                                                  Telephone: (912) 764-9055
                                                  Fax: (912) 764-8687
                                                  Email: wtaulbee@ftrsm.com
Dated: April 11, 2013


Of Counsel:

Theodore A. Breiner
BREINER & BREINER, L.L.C.
115 North Henry Street
Alexandria, Virginia 22314
Telephone: (703) 684-6885
Fax: (703) 684-8206
Email: tbreiner@bbpatlaw.com




                              CERTIFICATION OF SERVICE

       I hereby certify that a true copy of the above document was served upon

Amy L. Wright the attorney for defendants by e-mail at awright@taftlaw.com and by Federal

Express on April 11, 2013.



                                                    /s/ Wesley C. Taulbee
                                                        Wesley C. Taulbee




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