Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 1 of 33
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF PUERTO RICO
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`WINDMAR PV ENERGY, INC.
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`
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`Plaintiff,
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`v.
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`SOLAR NOW PUERTO RICO, LLC et
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`al.
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`
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`
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`Defendants.
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` CIVIL NO. 24-1570 (RAM)
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`RAÚL M. ARIAS-MARXUACH, United States District Judge
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`OPINION AND ORDER
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`Pending before the Court is Defendant Solar Now Puerto Rico,
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`LLC’s (“Defendant” or “Solar Now”) Motion to Dismiss Complaint
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`Pursuant to Rule 12(b)(6) (“Motion to Dismiss”). (Docket No. 11).
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`For the reasons outlined below, the Court hereby GRANTS Defendant
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`Solar Now’s Motion to Dismiss.
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`I.
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`BACKGROUND
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`Plaintiff Windmar PV, Energy, Inc. (“Plaintiff” or “Windmar”)
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`and Defendant Solar Now are both Puerto Rico-based companies
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`dedicated to the sale and installation of solar energy equipment.
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`(Docket No. 1 ¶¶ 4-5). Plaintiff owns “the exclusive rights to all
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`WINDMAR and WINDMAR HOME commercial marks, service marks and
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`commercial images, name designs, branding, and products” and has
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`filed trademark registrations for these marks with the United
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`States Patent and Trademark Office (“USPTO”). Id. ¶ 13. As shown
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF PUERTO RICO
`
`
`WINDMAR PV ENERGY, INC.
`
`
`
`Plaintiff,
`
`v.
`
`SOLAR NOW PUERTO RICO, LLC et
`
`al.
`
`
`
`
`
`Defendants.
`
`
`
` CIVIL NO. 24-1570 (RAM)
`
`
`RAÚL M. ARIAS-MARXUACH, United States District Judge
`
`OPINION AND ORDER
`
`
`
`Pending before the Court is Defendant Solar Now Puerto Rico,
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`LLC’s (“Defendant” or “Solar Now”) Motion to Dismiss Complaint
`
`Pursuant to Rule 12(b)(6) (“Motion to Dismiss”). (Docket No. 11).
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`For the reasons outlined below, the Court hereby GRANTS Defendant
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`Solar Now’s Motion to Dismiss.
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`I.
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`BACKGROUND
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`Plaintiff Windmar PV, Energy, Inc. (“Plaintiff” or “Windmar”)
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`and Defendant Solar Now are both Puerto Rico-based companies
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`dedicated to the sale and installation of solar energy equipment.
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`(Docket No. 1 ¶¶ 4-5). Plaintiff owns “the exclusive rights to all
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`WINDMAR and WINDMAR HOME commercial marks, service marks and
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`commercial images, name designs, branding, and products” and has
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`filed trademark registrations for these marks with the United
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`States Patent and Trademark Office (“USPTO”). Id. ¶ 13. As shown
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`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 2 of 33
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`Civil No. 24-1570 (RAM)
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`in the Complaint and its attached exhibits, the registered marks
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`consist of various elements including: the silhouette of the sun’s
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`corona; the words “WINDMAR” or “WINDMAR HOME”; a combination of
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`the colors orange, blue, black, and grey; and a stylized image of
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`a windmill replacing the “I” in “WINDMAR.” (Docket Nos. 1 ¶ 16; 1-
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`6; 1-7 and 1-8). The typical logo shows the words “WINDMAR HOME”
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`written in blue and grey, with the “I” replaced by a blue windmill
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`logo; the words are placed under and within an orange outline of
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`a sunburst or corona. (Docket No. 1-12 at 2).
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`Windmar’s registered marks have been in effect since, “at the
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`very least,” January 1, 2015. (Docket No. 1 ¶ 15). During this
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`period, Plaintiff has actively promoted its business by using the
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`registered marks in “newspapers, magazines, social media, radio,
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`billboards,
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`television
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`shows...both
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`nationally
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`and
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`internationally.” Id. ¶ 18. Plaintiff asserts that it is the
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`“number one” company in the “solar energy industry in Puerto Rico,”
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`and has been “internationally recognized” outside of Puerto Rico.
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`Id. ¶ 19. Furthermore, Windmar asserts that its registered marks
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`have “come to signify the high quality of [its] goods and
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`services,” and hold “incalculable distinction, reputation, and
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`goodwill belonging exclusively to Plaintiff.” Id. ¶ 23.
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`Windmar claims trouble arose on or around August 28, 2024,
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`when Defendant began a marketing campaign that allegedly utilized
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`Plaintiff’s registered marks. Id. ¶ 26. Plaintiff points to
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`billboards and a social media post made by Defendant Solar Now,
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`elements of which allude to Windmar’s registered marks. Id. ¶ 27.
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`Multiple billboards show a salesman pointing to a form listing
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`three different options for solar companies: a colored logo of
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`Defendant Solar Now and two greyscale logos that feature the
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`profile of a sun and its corona. (Docket No. 1-11). One greyscale
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`logo is titled “PAQUITO SOLAR” and the other “MOLINITO.” Id.
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`Plaintiff claims that the word “MOLINITO” (which translates to
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`“little windmill”), when used in conjunction with the sun-related
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`imagery, alludes to Windmar’s logo. (Docket Nos. 1 ¶ 28 and 1-11).
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`On the billboards, Defendant’s logo is next to a “X” mark of
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`approval while the two greyscale logos are placed further down the
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`form with the implication that they are inferior options to Solar
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`Now. (Docket No. 1-11 at 2-11).
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`Plaintiff also objects to a social media post made by Solar
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`Now that shows an indecisive man debating which solar energy
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`company to choose as the aforementioned “PAQUITO SOLAR” and
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`“MOLINITO” logos stand behind him. Id. at 1. The “MOLINITO” logo
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`is surrounded by a yellow sun and corona. Id. With his hand over
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`his head, the man looks up at the “Paquito Solar” logo with his
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`back to the “MOLINITO” logo. Id. In Spanish, the post’s caption
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`advises prospective customers that with many options on the market,
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`Solar Now is here to help customers make easy decisions about their
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`solar power needs. Id.
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`To assist the reader, the Court provides the following two
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`examples of Windmar’s registered mark (to the left) and Solar Now’s
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`“MOLINITO” mark used in its advertisements (to the right).
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`Additional variations of these marks are used by both parties, but
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`these two designs are used most often.
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` Figure 1
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` Figure 2
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`(Docket Nos. 1; 1-11 and 1-12).
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`On September 3, 2024, Plaintiff’s counsel sent Defendant a
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`letter stating that Solar Now’s advertisements infringe on
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`Plaintiff’s registered marks, primarily its main logo. (Docket No.
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`1-12). Windmar requested that Defendant stop using the allegedly
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`infringing advertisements and remove all copies of the materials
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`that include the problematic symbols. Id. at 3-4. On September 12,
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`2024, Solar Now’s counsel responded, denying Plaintiff’s
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`accusations but agreeing to remove the allegedly infringing
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`material “to avoid controversies, inconveniences, and unnecessary
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`expenses.” (Docket No. 1-13). Defendant argued that its activities
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`did not infringe on Windmar’s trademarks but, at most, served to
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`“distinguish Solar Now’s Products and services” from those
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`provided by Windmar and did not violate federal or Puerto Rico
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`law. Id. at 1.
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`On December 10, 2024, Plaintiff filed its Complaint against
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`Solar Now, ABC Entities, John Doe, and XYZ Insurance Companies,
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`asserting that Defendant’s advertisements violated several
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`provisions of the federal Lanham Act, 15 U.S.C. § 1051 et seq.,
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`and Puerto Rico Trademarks Act, P.R. Laws Ann. tit. 10, § 223a et
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`seq. (Docket No. 1). Plaintiff also alleges that Defendant refused
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`to remove the offending advertisements and did so only when the
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`advertising contract expired. (Docket No. 13 at 16). Plaintiff
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`seeks statutory damages under Puerto Rico law, attorneys’ fees and
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`costs, pre- and post-judgment interest, and injunctive relief. Id.
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`¶¶ 94-97.
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`Defendant filed the Motion to Dismiss on January 24, 2025,
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`arguing that dismissal under Rule 12(b)(6) is appropriate because
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`the case is moot and, regardless of mootness, Plaintiff has failed
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`to allege facts showing that trademark infringement occurred.
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`(Docket No. 11). Plaintiff filed a Response on February 10, 2025,
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`rebutting Defendant’s arguments. (Docket No. 13). On February 26,
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`2025, Defendant filed its Reply to the Response. (Docket No. 18).
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`II. LEGAL STANDARD
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`To determine if a complaint has stated a plausible, non-
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`speculative claim for relief, a court must determine whether
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`“all the facts alleged [in the complaint], when viewed in the light
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`most favorable to the plaintiffs, render the plaintiff’s
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`entitlement to relief plausible.” Ocasio-Hernandez v. Fortuno-
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`Burset, 640 F.3d 1, 14 (1st Cir. 2011) (emphasis in original).
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`This requires treating “any non-conclusory factual allegations in
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`the complaint as true.” Nieto-Vicenty v. Valledor, 984 F.Supp. 2d
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`17, 20 (D.P.R. 2013); Schatz v. Republican State Leadership Comm.,
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`669 F.3d 50, 55 (1st Cir. 2012) (courts should take “the
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`complaint’s well-pled (i.e., non-conclusory, non-speculative)
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`facts as true, drawing all reasonable inferences in the pleader’s
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`favor”). A claim holds the facial plausibility necessary to evade
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`dismissal at the Rule 12(b)(6) stage when “the plaintiff pleads
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`factual content that allows the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged.”
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`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted)
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`(while “plausibility” is not the same as “probability,” it requires
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`more than a “sheer possibility that a defendant has acted
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`unlawfully.”).
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` “[A] plaintiff’s obligation to provide the ‘grounds’ of his
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`‘entitle[ment] to relief’ requires more than labels and
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`conclusions, and a formulaic recitation of the elements of a cause
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`of action will not do.” Bell Atl. Corp. et al. v. Twombly et al.,
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`550 U.S. 544, 555 (2007) (citation omitted). Further, a complaint
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`will not stand if it offers only “naked assertion[s] devoid of
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`further factual enhancements.” Ashcroft, 556 U.S. at 678 (internal
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`quotation marks and citation omitted). Courts may also consider:
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`“(a) ‘implications from documents’ attached to or fairly
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`‘incorporated into the complaint,’(b) ‘facts’ susceptible to
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`‘judicial notice,’ and (c) ‘concessions’ in plaintiff’s
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`‘response to the motion to dismiss.’” Schatz, 669 F.3d at 55–56
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`(quoting Arturet–Vélez v. R.J. Reynolds Tobacco Co., 429 F.3d 10,
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`13 n.2 (1st Cir. 2005)). A defendant may raise affirmative defenses
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`on a motion to dismiss under Rule 12(b)(6) if the underlying facts
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`of the defense “are clear from the face of the complaint as
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`supplemented by ‘matters fairly incorporated within it and matters
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`susceptible to judicial notice.’” Monsarrat v. Newman, 28 F.4th
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`314, 318 (1st Cir. 2022) (citations omitted).
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`III. APPLICABLE LAW
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`A. The Lanham Act
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`The Lanham Act is the “core federal trademark statute” and
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`defines a trademark as “‘any word, name, symbol, or device, or any
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`combination thereof’ that a person uses ‘to identify and
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`distinguish his or her goods...from those manufactured or sold by
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`others and to indicate the source of the goods.’” Jack Daniel’s
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`Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 145 (2023) (citing
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`15 U.S.C. § 1127). A trademark “tells the public who is responsible
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`for a product” and “enables customers to select ‘the goods and
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`services that they wish to purchase, as well as those they want to
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`avoid.’” Id. (citing Matal v. Tam, 582 U.S. 218, 224 (2017)). A
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`mark must be distinctive to qualify for trademark protection. See
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`Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116
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`(1st Cir. 2006) (holding “generic marks” cannot be distinctive).
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`The Lanham Act helps assure the holder of a mark that “it
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`(and not an imitating competitor) will reap the financial,
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`reputation-related rewards associated with a desirable product,”
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`incentivizing
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`the
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`“production
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`of
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`quality
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`goods”
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`and
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`“discourag[ing] those who hope to sell inferior products by
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`capitalizing on a consumer's inability quickly to evaluate the
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`quality of an item offered for sale.” Qualitex Co. v. Jacobson
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`Prods. Co., Inc., 514 U.S. 159, 164 (1995) (citations omitted). To
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`obtain certain benefits under the Lanham Act, an owner of a mark
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`should apply to the USPTO to have the mark placed on a federal
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`register. See Jack Daniel’s Props., Inc., 599 U.S. at 146.
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`i. Trademark infringement
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`Section 32(1) of the Lanham Act creates a cause of action
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`against any person who, without the consent of the trademark
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`holder, “use[s] in commerce any reproduction, counterfeit, copy,
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`or colorable imitation of a registered mark” to advertise “any
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`goods or services on or in connection with which such use is likely
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`to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.
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`§ 1114(1)(a). Section 32(1) also prohibits the use of
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`reproductions, counterfeits, copies, or imitations of a registered
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`mark in the “advertising of goods or services...in connection with
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`which such use is likely to cause confusion, or to cause mistake,
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`or to deceive.” 15 U.S.C. § 1114(1)(b). Offenders can be liable in
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`civil actions, although under § 1114(1)(b), the registered holder
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`cannot recover profits or damages unless the offense was committed
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`with the knowledge that “such imitation is intended to be used to
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`cause confusion, or to cause mistake, or to deceive.” Id.
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`A trademark infringement suit typically arises when “the
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`owner of a mark sues someone using a mark that closely resembles
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`its own,” requiring the court to decide if the defendant’s use is
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`likely to result in confusion, mistake, or deception. Jack Daniel’s
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`Props., Inc., 599 U.S. at 147 (citing 15 U.S.C. §§ 1114(1)(A),
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`1125(a)(1)(A)). Confusion most often stems from “the source of a
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`product or service.” Moseley v. V Secret Catalog, Inc., 537 U.S.
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`418, 428 (2003); see also Swarovski Aktiengesellschaft v. Bldg.
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`No. 19, Inc., 704 F.3d 44, 49 (1st Cir. 2013).
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`The First Circuit has held that to prevail on a claim for
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`trademark infringement under the Lanham Act, a plaintiff must show:
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`(i) it owns the relevant trademark, (ii) the offending party used
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`the trademark or a similar mark, and (iii) the offending party’s
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`use of the marks likely confused consumers, causing the harm to
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`the holder. See Venture Tape Corp. v. McGills Glass Warehouse, 540
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`F.3d 56, 60 (1st Cir. 2008) (citations omitted); see also Star
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`Fin. Servs., Inc. v. AASTAR Mortg. Corp., 89 F.3d 5, 9 (1st Cir.
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`1996); 15 U.S.C. § 1114(1).
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`When a trademark infringement claim is brought over alleged
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`confusion about the source of a good or service, a court looks at
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`the possibility and extent of consumer confusion. See Swarovski
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`Aktiengesellschaft, 704 F.3d at 49. There must be a likelihood of
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`confusion, as shown through the eight-factor test articulated in
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`Pignons S.A. de Mecanique de Precision v. Polaroid Corp.:
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`(1) the similarity of the marks; (2) the
`similarity of the goods; (3) the relationship
`between the parties’ channels of trade; (4)
`the relationship between the parties’
`advertising; (5) the classes of prospective
`purchasers; (6) evidence of actual confusion;
`(7) the defendant’s intent in adopting its
`mark; and (8) the strength of the plaintiff’s
`mark.
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`657 F.2d 482, 487-91 (1st Cir. 1981); Borinquen Biscuit Corp., 443
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`F.3d at 120 (citing Astra Pharm. Prods., Inc. v. Beckman
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`Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir. 1983)). Although
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`all eight factors should be considered, no single factor carries
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`“dispositive weight,” and a party does not automatically prevail
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`because the majority of Pignons factors weigh in its favor.
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`Borinquen Biscuit Corp., 443 F.3d at 120 (citations omitted);
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`Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Crédito
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`Oriental, 852 F.3d 15, 32 (1st Cir. 2016). Without a showing of a
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`likelihood of confusion, mistake, or deception, a plaintiff cannot
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`demonstrate trademark infringement occurred and has no cause of
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`action. See Swarovski Aktiengesellschaft, 704 F.3d at 50.
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`Less common “nominative use” cases involve confusion over the
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`affiliation or endorsement of a good or service. Id. at 49. The
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`concern is that a consumer will be confused about a party’s
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`potential connection to the good or service, even if there is no
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`question as to its source. For example, in Swarovski
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`Aktiengesellschaft, the defendant Building No. 19, Inc., a
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`discount retail store, purchased Swarovski crystal figurines from
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`a third party and placed a newspaper advertisement for the
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`figurines that included the word “Swarovski.” 704 F.3d at 46-47.
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`The plaintiff, Swarovski Aktiengesellschaft (“Swarovski”) argued
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`the defendant’s advertisements constituted trademark infringement,
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`in part because a consumer might be confused by the advertisement
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`and think that Swarovski was affiliated with or endorsed a discount
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`shop “in a way that might detract from its luxury status.” Id. at
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`49-50. There were no allegations of confusion over the source of
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`the goods advertised, but the First Circuit remanded the case
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`because the district court did not make a sufficient finding of
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`the likelihood of consumer confusion as to the plaintiff’s possible
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`affiliation or endorsement of the defendant’s business. Id. at 49.
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`Although it has not endorsed “any particular approach to the
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`nominative fair use doctrine,” the First Circuit considered the
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`use of the following three-factor test to evaluate “the lawfulness
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`of a defendant’s nominative use of a mark” in Swarovski
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`Aktiengesellschaft: (i) “whether the plaintiff’s product was
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`identifiable without use of the mark”; (ii) “whether the defendant
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`used more of the mark than necessary”; and (iii) “whether the
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`defendant accurately portrayed the relationship between itself and
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`the plaintiff.” Id. at 50-51, 53 (citations omitted). The Third
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`and Ninth Circuits have adopted this test, although they differ on
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`whether it is an affirmative defense or replaces the standard
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`eight-factor test for confusion. See Century 21 Real Estate Corp.
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`v. Lendingtree, Inc., 425 F.3d 211, 222 (3d Cir. 2005) (adopting
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`a “two-step approach in nominative use cases” where a plaintiff
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`first proves a likelihood of confusion and a defendant then shows
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`the three-factor test above demonstrates fairness); Toyota Motor
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`Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175-76 (9th Cir.
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`2010) (adopting this three-factor test to evaluate “likelihood of
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`confusion in nominative use cases.”).
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`ii. Unfair competition
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`Section 43(a) of the Lanham Act provides a broader cause of
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`action for unfair competition, including the false representations
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`of origin or affiliation of goods, services, or commercial
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`activities that could mislead consumers. 15 U.S.C. § 1125(a). This
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`section allows claims for false association, § 1125(a)(1)(A), and
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`false advertising, § 1125(a)(1)(B). Lexmark Int’l, Inc. v. Static
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`Control Components, Inc., 572 U.S. 118, 122 (2014).
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`Defendants can be civilly liable for false association if
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`they, “in connection with any goods or services,” use in commerce
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`“any word, term, name, symbol, or device” that is “likely to cause
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`confusion” “as to the origin, sponsorship, or approval of his or
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`her goods, services, or commercial activities by another person”
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`and the plaintiff believes that they are or are likely to be
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`damaged by such an act. 15 U.S.C. § 1125(a)(1)(A). These types of
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`claims “typically involve ‘attempts to appropriate the goodwill
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`associated with a competitor[,]’ for example, by misappropriating
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`a trademark or falsely implying an endorsement.” Am. Bd. of
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`Internal Med. v. Salas Rushford, 114 F.4th 42, 64 (1st Cir. 2024)
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`(citations omitted). The First Circuit “usually consider[s]” the
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`Pignons factors “to gauge the likelihood of consumer confusion”
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`under § 1125(a)(1)(A), which “mostly relate to the possibility of
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`consumers mistaking one party's good, service, or trademark with
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`that of another.” Id. at 64, 64 n.25 (citing I.P. Lund Trading ApS
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`v. Kohler Co., 163 F.3d 27, 43 (1st Cir. 1998)).
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`Defendants may be liable for false advertising if they
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`misrepresent “the nature, characteristics, qualities, or
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`geographic origin of his or her or another person’s goods,
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`services, or commercial activities” in commercial advertising or
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`promotion. 15 U.S.C. § 1125(a)(1)(B). A successful claim for false
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`advertising must show: (i) the defendant “made a false or
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`misleading description of fact or representation of fact in a
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`commercial advertisement about his own or another's product”; (ii)
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`the misrepresentation is material such that it is “likely to
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`influence” a consumer’s purchasing decision; (iii) the
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`misrepresentation “actually deceives or has the tendency to
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`deceive a substantial segment of its audience”; (iv) “the defendant
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`placed the false or misleading statement in interstate commerce”;
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`and (v) “the plaintiff has been or is likely to be injured as a
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`result of the misrepresentation, either by direct diversion of
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`sales or by a lessening of goodwill associated with its products.”
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`Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave., 284 F.3d
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`302, 310-11 (1st Cir. 2002); see also Pegasystems, Inc. v. Appian
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`Corp., 424 F.Supp. 3d 214, 221-22 (D.Mass. 2019).
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`The “false” statement may be literally or implicitly false;
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`if literally false, the plaintiff does not need to establish
`
`evidence of consumer deception. See Cashmere & Camel Hair Mfrs.
`
`Inst., 284 F.3d at 311.S False advertising does not encompass
`
`“exaggerated advertising, blustering and boasting upon which no
`
`reasonable buyer would rely,” but may include “specific and
`
`measurable claims of product superiority” that “may be literally
`
`false under the Lanham Act.” Ferring Pharm. Inc. v. Braintree
`
`Lab’ys., Inc., 38 F.Supp. 3d 169, 177 (D.Mass. 2014) (quoting
`
`Clorox Co. P.R. v. Proctor & Gamble Com. Co., 228 F.3d 24, 38-39
`
`(1st Cir. 2000)).
`
`iii. Trademark dilution
`
`
`
`Section 43(a) establishes a cause of action for the dilution
`
`of trademarks that are considered “famous” under the Lanham Act,
`
`
`
`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 15 of 33
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`Civil No. 24-1570 (RAM)
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`
`
`15
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`
`regardless of whether the marks have been registered. 15 U.S.C. §
`
`1125(c); see Matal, 582 U.S. at 225. A mark is famous if “it is
`
`widely recognized by the general consuming public of the United
`
`States as a designation of source of the goods or services of the
`
`mark’s owner.” 15 U.S.C. § 1125(c)(2)(A). Courts may consider “all
`
`relevant factors” to determine if a mark should be designated as
`
`famous, including: (i) the “duration, extent, and geographic reach
`
`of advertising and publicity of the mark”; (ii) “[t]he amount,
`
`volume, and geographic extent of sales of goods or services offered
`
`under the mark”; (iii) “[t]he extent of actual recognition of the
`
`mark”; and (iv) whether the mark has been registered. 15 U.S.C. §
`
`1125(c)(2)(A)(i)-(iv).
`
`The holder of the famous registered mark can seek injunctive
`
`relief if, after the mark is famous, another person starts using
`
`the mark or trade name “in commerce” in a manner “that is likely
`
`to cause dilution by blurring or dilution by tarnishment of the
`
`famous mark.” 15 U.S.C. § 1125(c)(1). Proof of the “likelihood of
`
`confusion” is not required. See Lyons v. Gillette, 882 F.Supp. 2d
`
`217, 228 (D.Mass. 2012). “Dilution by blurring” involves the
`
`“association arising from the similarity between a mark or trade
`
`name and a famous mark that impairs the distinctiveness of the
`
`famous mark.” 15 U.S.C. § 1125(c)(2)(B). To determine if “dilution
`
`by blurring” has occurred, courts may consider “all relevant
`
`factors,” including:
`
`
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`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 16 of 33
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`Civil No. 24-1570 (RAM)
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`
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`16
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`
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`(i) The degree of similarity between the mark
`or trade name and the famous mark; (ii) the
`degree of inherent or acquired distinctiveness
`of the famous mark; (iii) the extent to which
`the owner of the famous mark is engaging in
`substantially exclusive use of the mark; (iv)
`the degree of recognition of the famous mark;
`(v) whether the user of the mark or trade name
`intended to create an association with the
`famous mark; (vi) any actual association
`between the mark or trade name and the famous
`mark.
`
`15 U.S.C. § 1125(c)(2)(B)(i)-(vi). “Dilution by tarnishment” is
`
`the association between a famous mark and another mark or trade
`
`name “that harms the reputation of the famous mark.” 15 U.S.C. §
`
`1125(c)(2)(C).
`
`Section 43(a) includes various exclusions for fair use. “Any
`
`fair use of a famous mark by another person other than as a
`
`designation of source for the person’s own goods or services” is
`
`excluded, such as: (i) comparative advertising or promotions that
`
`let “customers compare goods or services,” and (ii) “identifying
`
`and parodying, criticizing, or commenting upon the famous mark
`
`owner or the goods or services of the famous mark owner.” 15 U.S.C.
`
`§ 1125(c)(3)(A)(i)-(ii); Jack Daniel’s Props., Inc., 599 U.S. at
`
`148 (noting that the exclusion does not apply “if the defendant
`
`uses the similar mark” to designate the source of his own goods).
`
`Comparative advertising that allows consumers to compare
`
`“potentially competitive” services between parties is permissible
`
`under § 1125(c)(3)(A)(i). Allied Interstate LLC v. Kimmel &
`
`
`
`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 17 of 33
`
`Civil No. 24-1570 (RAM)
`
`
`
`17
`
`
`Silverman P.C., 2013 WL 4245987, at *4 (S.D.N.Y. 2013). An
`
`excludable parody must “conjure up” enough of the underlying object
`
`or concept as to make it recognizable, as well as enough of a
`
`contrast “so that [the parody’s] message of ridicule or pointed
`
`humor becomes clear.” Jack Daniel’s Props., Inc., 599 U.S. 161. A
`
`successful parody can be considered when “assessing the likelihood
`
`of confusion” and “is not often likely to create confusion”. Id.
`
`B. The Puerto Rico Trademarks Act
`
`The Puerto Rico Trademarks Act, codified at P.R. Laws Ann.
`
`tit. 10, § 223a et seq., mirrors the Lanham Act in scope and
`
`content. Section 223w creates a cause of action for trademark
`
`infringement involving the reproduction, forgery, copying,
`
`imitation, use, or attempted use of any mark if such activity “is
`
`likely to cause confusion or deceive as to the origin of the goods
`
`or services or as to sponsorship or association.” P.R. Laws Ann.
`
`tit. 10, § 223w. The Act also creates a cause of action against a
`
`person who, “as to goods or services, uses in commerce any word,
`
`term, name, symbol, slogan, trade dress, medium, logo, design,
`
`color, sound, scent, shape, object or a combination thereof; or
`
`any false origin designation; or any false or misleading”
`
`description or representation of a fact that:
`
`(1) Is likely to cause confusion or mislead or
`deceive as to the affiliation, connection, or
`association of such person with another person, or
`as to the origin, source, sponsorship, or approval
`
`
`
`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 18 of 33
`
`Civil No. 24-1570 (RAM)
`
`
`
`18
`
`
`
`of his/her goods, services, or commercial
`activities by another person, or
`
`(2) in commercial advertising or in promotion,
`misrepresents
`the
`nature,
`characteristics,
`qualities, or geographic origin of his/her or
`another person's goods, services, or commercial
`activities, shall be held liable in civil action
`by any person who was injured as a consequence of
`such acts.
`
`P.R. Laws Ann. tit. 10, § 223x. Finally, § 223y guards against the
`
`dilution of famous marks, defined as those that are “widely
`
`recognized by the general consumer in Puerto Rico, or in a
`
`geographic area of Puerto Rico,” as a source of goods or services
`
`of the mark’s holder. P.R. Laws Ann. tit. 10, § 223y(b). As with
`
`the Lanham Act, the Puerto Rico Trademarks Act contains various
`
`exclusions for the use of a famous mark without the owner’s
`
`consent, including comparative advertising and parody. P.R. Laws
`
`Ann. tit. 10, § 223y(c).
`
`IV. DISCUSSION
`
`Windmar’s claims revolve around the alleged use of its
`
`trademarks in Solar Now’s advertisements. (Docket No. 1). The
`
`Complaint alleges the advertisements are likely to result in
`
`consumer confusion by creating the impression that Defendant’s
`
`goods and services “originate from, are associated or affiliated
`
`with, or otherwise authorized by” Windmar. Id. ¶ 45. Plaintiff
`
`brought claims for trademark infringement under Section 32(1) of
`
`the Lanham Act, 15 U.S.C. § 1114(1); unfair competition under
`
`
`
`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 19 of 33
`
`Civil No. 24-1570 (RAM)
`
`
`
`19
`
`
`Section 43(a), 15 U.S.C. § 1125(a); and trademark dilution under
`
`Section 43(a), 15 U.S.C. § 1125(c). Id. ¶¶ 55, 68, 76.
`
`A. The Complaint is Not Moot
`
`As a threshold matter, the Court turns to Defendant’s argument
`
`that the instant case is moot because Solar Now has removed all
`
`contested advertisements from circulation. (Docket No. 11 at 13).
`
`“It is well settled that a defendant's voluntary cessation of a
`
`challenged practice does not deprive a federal court of its power
`
`to determine the legality of the practice.” Friends of the Earth,
`
`Inc. v. Laidlaw Env’t Servs., 528 U.S. 167, 189 (2000) (citations
`
`and internal quotation marks omitted). To hold otherwise would be
`
`to allow Defendant to continue to run the allegedly infringing
`
`advertisements indefinitely without a court reviewing the issue,
`
`provided the offending materials were taken down before a lawsuit
`
`could begin. Although a case can be mooted by a defendant’s
`
`voluntary conduct “if subsequent events made it absolutely clear
`
`that the allegedly wrongful behavior could not reasonably be
`
`expected to recur,” there is no indication that is the situation
`
`here. Id. (citation omitted).
`
`Furthermore, the Complaint alleges that Solar Now was still
`
`using the allegedly infringing material at the time of filing,
`
`contradicting Defendant’s claims of mootness. (Docket No. 1 ¶¶ 42-
`
`44). Although the materials may have been removed now, Plaintiff
`
`asserts this is only because the contractual term of advertising
`
`
`
`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 20 of 33
`
`Civil No. 24-1570 (RAM)
`
`
`
`20
`
`
`for the billboards has expired, not because Defendant Solar Now is
`
`seeking to correct its behavior. (Docket No. 13 at 16). Treating
`
`“any non-conclusory factual allegations in the complaint as true,”
`
`the Court assumes Defendant Solar Now’s allegedly wrongful
`
`behavior could continue in the future and proceeds to the merits
`
`of the Complaint. Nieto-Vicenty, 984 F.Supp. 2d at 20.
`
`B. Windmar’s Federal Trademark Infringement Claim Does Not
`Survive Rule 12(b)(6)
`
`Plaintiff alleges that Solar Now’s advertisements constituted
`
`trademark infringement because they were likely to confuse the
`
`public about the nature of the parties’ relationship. (Docket No.
`
`1 ¶¶ 55-56). As alleged in the Complaint, Windmar owns the
`
`registered marks at issue and that Defendant ran the offending
`
`advertisements without permission. (Docket Nos. 1 and 1-12); see
`
`Venture Tape Corp., 540 F.3d at 60. Plaintiff alleges that Solar
`
`Now’s use of the marks confused consumers and harmed Windmar’s
`
`business and professional reputation, bringing claims of trademark
`
`infringement as to the “origin, source, sponsorship, [and]
`
`affiliation” of Solar Now’s goods and services. (Docket No. 1 ¶¶
`
`55-60); see Venture Tape Corp., 540 F.3d at 60.
`
`Although the Court must draw all reasonable inferences in
`
`Plaintiff’s favor, Windmar has not shown that its federal claims
`
`are entitled to relief because it has not plausibly alleged a
`
`likelihood of consumer confusion under the Pignons test. See
`
`
`
`Case 3:24-cv-01570-RAM Document 19 Filed 03/06/25 Page 21 of 33
`
`Civil No. 24-1570 (RAM)
`
`
`
`21
`
`
`Schatz, 669 F.3d at 55; Ocasio-Hernandez, 640 F.3d at 14; Star
`
`Fin. Servs., Inc., 89 F.3d at 120 (listing eight factors to show
`
`the likelihood of confusion).
`
`First, Windmar’s registered marks do not closely resemble the
`
`logos used in Solar Now’s advertisements. The “WINDMAR HOME” logo
`
`uses the words “WINDMAR HOME” written in deep blue, black, and
`
`grey, with the distinct image of a windmill replacing the “I” in
`
`“WINDMAR HOME.” (Docket No. 1 at 5). This phrase is placed on a
`
`white background and below an orange sun corona that uses
`
`alternating short and long spiking sun rays. Id. The “WINDMAR
`
`SOLAR” marks omit the windmill icon and are either: (i) all-black
`
`on a white background or (ii) on a blue background with the
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