govinfo:USCOURTS-mnd-0_24-cv-01854-1

UNITED STATES DISTRICT COURT 
DISTRICT OF MINNESOTA 
 
 
Metropolitan Area Agency on Aging, Inc.,   
 
 Plaintiff/Counter Defendant, 
 
v. 
 
Trellis Co.,  
 
 Defendant/Counter Claimant. 
Civil No. 24-1854 (DWF/SGE) 
 
 
MEMORANDUM 
OPINION AND ORDER 
 
 
INTRODUCTION 
 This matter is before the Court on four  motions:  Plaintiff/Counter Defendant 
Metropolitan Area Agency on Aging, Inc.’s second motion for summary judgment (Doc. 
No. 95) and Defendant/Counter Claimant Trellis Co.’s motion for bench trial and to strike 
the jury demand (Doc. No. 83), motion to exclude the expert testimony of Theodore H. 
Davis, Jr. (Doc. No. 104), and motion for summary judgment (Doc. No. 110).  For the 
reasons set forth below, the Court grants summary judgment in favor of Defendant and 
denies Defendant’s other motions as moot. 
BACKGROUND 
 This dispute involves two non-profit organizations that operate primarily in the 
Minneapolis-St. Paul metropolitan area.  (Doc. No. 119 ¶¶ 5-6; Doc. No. 121-7 at 6, 24.)  
Plaintiff provides social services to seniors and their caregivers.  (Doc. No. 101-3 at 8.)  
Those services include home-delivered meals, transportation, legal services, chore 
services, and counseling on housing options.  (Doc. No. 121-8 at 10, 14.)  Defendant is a 
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property developer that focuses on creating affordable housing for low-income 
populations, including seniors, veterans, and people with disabilities.  (Doc. No. 119 ¶ 5.)  
Defendant owns more than sixty properties in the Minneapolis-St. Paul metropolitan area 
and greater Minnesota.  (Id. ¶ 6.)  Most of those properties are managed by Defendant’s 
wholly owned subsidiary Trellis Management Co. (“Trellis Management”).  (Id. ¶¶ 1, 6.)  
Independent of each other, both Plaintiff and Defendant engaged in company rebranding 
work in and around 2018 and 2019.  (See Doc. No. 101-3 at 2; Doc. No. 114 ¶¶ 2-3; Doc. 
No. 121-4 at 19.)  Following that process, each party decided to rebrand using the brand 
name “Trellis.”  (See Doc. No. 102 at 3-4; Doc. No. 114 ¶¶ 2-3.) 
 On August 12, 2020, Defendant rolled out its use of the Trellis name and its new 
logo at a companywide virtual picnic.  At or around that time, Defendant took several 
other rebranding steps:  Defendant contracted with a company to install new logo decals 
on the Trellis Management doors, Defendant’s Site Managers sent notices to their tenants 
about the brand change, Defendant’s CEO sent notices about the brand change to 
business partners, Defendant changed its website to its new brand, and Defendant sent 
Trellis-branded clothing to its on-site employees to wear while performing their job 
duties.  (Doc. No. 112-1; Doc. No. 113 ¶¶ 11-12, 14-15; Doc. No. 113-5; Doc. No. 114 
¶¶ 5-6; Doc. No. 114-3; Doc. No. 116 ¶ 6; Doc. No. 117 ¶¶ 6, 8; Doc. No. 119 ¶¶ 6, 10; 
Doc. No. 119-1.)  After August 12, 2020, Defendant began using the Trellis name in new 
property development deals, Defendant’s employees regularly wore Trellis-branded 
clothing when working at Defendant’s properties, Defendant’s Site Managers used the 
Trellis mark on other notices sent to tenants, and Defendant’s employees gave new and 
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prospective tenants Trellis-branded materials.  (Doc. No. 112-2; Doc. No. 113 ¶¶ 11-13; 
Doc. No. 113-2 at 6-7; Doc. No. 116 ¶ 6; Doc. No. 117 ¶ 6; Doc. No. 119 ¶¶ 18-19; Doc. 
No. 120.)  Defendant never filed an intent-to-use application with the U.S. Patent and 
Trademark Office (the “PTO”) for the Trellis word mark or its Trellis design mark. 
 Seventy-six days late r, on October 27, 2020,1 Plaintiff filed an application to 
register the Trellis word mark with the PTO.2  (Doc. No. 121-15.)  Defendant opposed 
Plaintiff’s application at the Trademark Trial and Appeal Board (“TTAB”) on grounds of 
priority and likelihood of confusion (the “TTAB Action”).  (Doc. No. 22-2.)  After some 
discovery, the parties moved for partial summary judgment in the TTAB Action.  (Doc. 
No. 36, Ex. A (“TTAB Order”) at 4.)  While waiting for a decision in the TTAB Action, 
Plaintiff filed this case seeking a declaratory judgment of priority (Count 1) and a 
declaratory judgment of non-infringement (Count 2).  (Doc. No. 1 ¶¶ 27-37.)  Defendant 
subsequently moved to dismiss or, alternatively, stay this case pending final judgment in 
the TTAB Action.  (Doc. No. 12.)  In response, Plaintiff moved for early summary 
judgment in this case.  (Doc. No. 19.)  While those two motions were pending, TTAB 
denied the parties’ cross-motions for partial summary judgment and suspended the TTAB 
Action pending final disposition in this case.  (TTAB Order at 12-14.) 
 
1  Previously, Defendant disputed this prio rity date because Plaintiff later amended 
the date to March 16, 2021.  Defendant still disputes the October 2020 date.  (See Doc. 
No. 130 at 20 n.3.)  The Court need not address this dispute because no reasonable 
factfinder could find that Defendant did not establish priority before October 27, 2020. 
2  Plaintiff also filed an application to register a design mark featuring the word 
Trellis on September 6, 2022.  (Doc. No. 121-27.) 
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 On December 18, 2024 , the Court denied Plaintiff’s motion for summary judgment 
and largely denied Defendant’s motion to dismiss or stay.  (Doc. No. 45.)  Notably, the 
Court found that Defendant had “presented enough evidence to demonstrate a genuine 
issue of material fact exists concerning priority.”  (Id. at 13.)  Following that ruling, 
Defendant filed its answer and five counterclaims:  (1) declaratory judgment of priority; 
(2) unfair competition under 15 U.S.C. § 1125(a); (3) Minnesota common law trademark 
infringement; (4) Minnesota common law unfair competition; and (5) violation of the 
Minnesota Uniform Deceptive Trade Practices Act (“UDTPA”).  (Doc. No. 51 at 16-20.)  
The parties now move for summary judgment on all claims.  (Doc. Nos. 95, 110.)  
Defendant also moves to strike the jury demand and to exclude the expert testimony of 
Theodore H. Davis, Jr.  (Doc. Nos. 83, 104.) 
DISCUSSION 
Summary judgment is proper if the moving party shows that there are no genuine 
issues of material fact and that they are entitled to judgment as a matter of law.  Fed. R. 
Civ. P. 56(a); Enter. Bank v. Magna Bank of Mo., 92 F.3d 743, 747 (8th Cir. 1996).  A 
party opposing a properly supported motion for summary judgment must demonstrate the 
existence of specific facts in the record that create a genuine issue for trial.  Krenik v. 
County of Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995).  “[A] genuine issue of material fact 
exists if:  (1) there is a dispute of fact; (2) the disputed fact is material to the outcome of 
the case; and (3) the dispute is genuine, that is, a reasonable jury could return a verdict 
for either party.”  RSBI Aerospace, Inc. v. Affiliated FM Ins. Co., 49 F.3d 399, 401 (8th 
Cir. 1995).  The Court must view the evidence and the inferences that may be reasonably 
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drawn from the evidence in the light most favorable to the nonmoving party.  Weitz Co. v. 
Lloyd’ s of London, 574 F.3d 885, 892 (8th Cir. 2009).  
I. Priority (Count 1 & Counterclaim 1)  
The parties dispute who has priority to use the Trellis marks.  They each request 
declaratory judgment on this issue.  Plaintiff asks the Court to declare that Defendant 
cannot establish priority over Plaintiff, while Defendant asks the Court to declare that it 
has priority over Plaintiff.  “The party who first uses a mark in commerce is said to have 
priority over other users.”  Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 419 (2015); see 
also Aveda Corp. v. Evita Mktg., Inc., 706 F. Supp. 1419, 1427 (D. Minn. 1989) 
(“[R]ights in trademarks are not gained through discovery or invention of the mark, but 
only through actual use.”).  Under the Lanham Act, “use in commerce” is defined as “the 
bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a 
right in a mark.”  15 U.S.C. § 1127.  For services, a mark is used in commerce “when it is 
used or displayed in the sale or advertising of services and the services are rendered in 
commerce.”  Id.  Use in commerce requires more than mere steps to establish a business.  
Am. Ass’n for Just. v. Am. Trial Laws. Ass’n, 698 F. Supp. 2d 1129, 1138 n.14 (D. Minn. 
2010).3 
 
3  The parties briefly discuss “analogous use,” which is where certain pre-sales 
activity can be sufficient to establish priority and thus successfully oppose registration 
with the PTO.  See, e.g., T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372, 1375 (Fed. Cir. 
1996).  The Court need not reach that issue because this case does not involve merely 
“pre-sales activity.” 
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 The parties’ dispute boils  down to whether Defendant’s use of the Trellis mark 
before October 27, 2020 qualifies as “use in commerce” under the Lanham Act.  On 
Plaintiff’s first motion for summary judgment, the Court found a genuine issue of 
material fact on the issue of priority because there was enough evidence to show that 
Defendant may have used the Trellis mark in commerce.  (Doc. No. 45 at 13.)  For 
example, there was evidence of Trellis-branded clothing but no evidence that such 
clothing was used on or around August 12, 2020 by Defendant’s employees in connection 
with its services.  (Id. at 11.)  Now, Defendants have provided significant additional 
evidence that addresses the Court’s previous questions.  After reviewing the new 
evidence, the Court finds that no reasonable factfinder could find that Defendant does not 
have priority in the Trellis mark. 
 There is significant evidence of use in commerce.  First, Defendant used its Trellis 
mark on letters and notices sent to tenants in September and October of 2020.  (Doc. 
No. 112-2.)  Second, multiple employees confirmed that they were instructed to wear 
clothing with the Trellis mark while performing their job duties and that they followed 
this instruction.  (Doc. No. 113 ¶¶ 11-12; Doc. No. 116 ¶ 6; Doc. No. 117 ¶ 6.)  Third, 
Defendant created a new website with the Trellis mark, which went live on August 12, 
2020.  (Doc. No. 114 ¶ 6; Doc. No. 114-3; Doc. No. 119 ¶ 10; Doc. No. 119-1.)  This 
website provided links to a list of Defendant’s properties and a Rental Inquiries section.  
(Doc. No. 119-1 at 2, 4.)  Fourth, new decals including Defendant’s Trellis mark were 
applied to the office doors of Trellis Management on August 3, 2020.  (Doc. No. 113-5; 
Doc. No. 114 ¶¶ 4, 5.)  Current and prospective tenants met with Defendant’s employees 
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in this office.  (Doc. No. 113 ¶ 17.)  Fifth, Defendant’s employees gave new and 
prospective tenants business cards and folders with Defendant’s Trellis marks starting in 
August 2020.  (Doc. No. 113 ¶ 13; Doc. No. 113-2 at 6-7.)  Lastly, Defendant’s rent rolls 
confirm that over seventy new tenants moved into units at Defendant’s properties 
between August 13, 2020 and October 26, 2020.  (See Doc. No. 120.)  Together, this 
evidence shows that Defendant was using the Trellis mark in the sale or advertising of its 
services, property management and development, prior to October 27, 2020.  Contrary to 
what Plaintiff claims, this use went beyond “mere steps” to establish a property 
management and development business.  Defendant was actually engaged in providing 
these services and doing so while using the Trellis brand. 
Plaintiff asserts that this evidence is insufficient to establish priority because 
Defendant has not shown market penetration and that any prior use was “de minimis.”  
(Doc. No. 100 at 22.)  Plaintiff specifically relies on Sweetarts v. Sunline, Inc., a case 
where the Eighth Circuit considered market penetration when determining the geographic 
scope of the injunction to be entered against the defendant.4  380 F.2d 923, 928-29 (8th 
 
4  In its briefing, Plaintiff relied on lega l standards as explained by Davis in his 
expert report.  (See Doc. No. 100 at 17, 19-20.)  In the interest of fairness, the Court 
reviewed the cases and standards in Davis’s report but notes that an expert report should 
not be used as a way around this District’s word count limitations.  See D. Minn. 
L.R. 7.1(f).  The Court regularly grants requests for enlargement of the word count 
limitation, and indeed, granted one in this case to Defendant.  (See Doc. Nos. 97, 98.)  
However, the Court’s conclusion would be the same with or without Davis’s report. 
 Relatedly, if the Court had reached De fendant’s motion to strike Davis as an 
expert, it would have granted the motion.  The fact that Plaintiff relies on Davis’s report 
for legal standards demonstrates the precise issue with his first opinion:  the “opinion” 
usurps the role of the Court to say what the law is.  See Am. Dairy Queen Corp. v. W.B. 
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Cir. 1967).  There, the plaintiff had principal markets in three states, significant sales in 
ten other states, and sporadic sales in twenty-two other states.  Id. at 925.  Thus, in 
crafting an injunction, the court looked at the plaintiff’s activity in each of the states it 
made sales in to determine the geographic scope.  Id. at 929.  However, the court 
acknowledged that this kind of analysis was unnecessary “in the ordinary case of parties 
competing under the same mark in the same market.”  Id. at 928 (citation modified).  In 
this case, two parties are using the same mark in the same market.  Thus, the Court need 
not conduct a more detailed market penetration analysis.  Moreover, Defendant has 
clarified that it only seeks to enjoin Plaintiff’s use of its Trellis marks in Minnesota.  
(Doc. No. 136 at 4.) 
In sum, the new evidence clarifies the Court’s previous questions about 
Defendant’s use of its Trellis marks in commerce.  The Court finds that there is no 
genuine issue of material fact on the issue of priority.  Defendant has established that it 
has priority over Plaintiff.  Accordingly, the Court grants summary judgment in favor of 
Defendant on Count 1 and Counterclaim 1. 
 
Mason Co., Inc., 543 F. Supp. 3d 695, 732 (D. Minn. 2021) (“Generally, experts may not 
testify so as to invade the province of the court, testify to legal matters, or offer legal 
opinions couched as expert testimony.”).  His second opinion invades the province of the 
factfinder.  See Scobee v. USAA Cas. Ins. Co., 168 F.4th 507, 514-15 (8th Cir. 2026) 
(“Courts must guard against invading the province of the jury on a question which the 
jury was entirely capable of answering without the benefit of expert opinion.” (citation 
modified)). 
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II. Likelihood of Confusion (C ount 2 & Counterclaims 2-5) 
Having found that Defendant has priority over Plaintiff, the disposition of the 
remaining claims—declaratory judgment of non-infringement, unfair competition under 
15 U.S.C. § 1125(a), common law trademark infringement, common law unfair 
competition, and violation of the UDTPA—come down to whether Plaintiff’s use of its 
Trellis marks is likely to cause confusion.  See First Bank v. First Bank Sys., Inc., 84 F.3d 
1040, 1044 (8th Cir. 1996); Am. Dairy Queen, 543 F. Supp. 3d at 712; Northland Ins. 
Cos. v. Blaylock, 115 F. Supp. 2d 1108, 1117 (D. Minn. 2000) (listing the elements of 
Minnesota common law trademark infringement); Mid-List Press v. Nora, 275 F. Supp. 
2d 997, 1003 (D. Minn. 2003) (explaining that claims under UDTPA are coextensive with 
claims under the Lanham Act). 
Courts in the Eighth Circuit determine whether there is a likelihood of confusion 
by considering the six SquirtCo5 factors:  (1) the strength of the owner’s mark; (2) the 
similarity between the parties’ marks; (3) the products’ competitive proximity; (4) the 
alleged infringer’s intent to pass off its goods as those of the trademark owner; 
(5) incidents of actual confusion; and (6) the type of product, its cost, the conditions of 
purchase, and the degree of care to be exercised by potential customers of the trademark 
holder.  Select Comfort Corp. v. Baxter, 996 F.3d 925, 933 (8th Cir. 2021).  No one factor 
controls and each factor’s weight depends on the particular setting.  Id.  Evidence of 
actual confusion is strong proof of a likelihood of confusion.  See Hubbard Feeds, Inc. v. 
 
5  SquirtCo. v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980). 
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Animal Feed Supplement, Inc., 182 F.3d 598, 602 (8th Cir. 1999).  “When identical marks 
are used in the same geographic area for the same class of goods or services, likelihood 
of confusion is presumed.”  Cmty. of Christ Copyright Corp. v. Devon Park Restoration 
Branch of Jesus Christ’ s Church, 634 F.3d 1005, 1010 (8th Cir. 2011) (citation modified).  
After balancing these factors, the Court concludes that no reasonable factfinder could 
find that there is no likelihood of confusion between Plaintiff and Defendant’s marks.   
First, the Trellis mark is a strong mark.  A trademark’s strength is measured both 
conceptually and commercially.  Zerorez Franchising Sys., Inc. v. Distinctive Cleaning, 
Inc., 103 F. Supp. 3d 1032, 1041 (D. Minn. 2015).  To determine conceptual strength, 
courts must classify the mark into one of four categories:  generic, descriptive, 
suggestive, or arbitrary or fanciful.  Id.  Plaintiff appears to concede that the Trellis mark 
is suggestive, and therefore conceptually strong.  (See Doc. No. 123 at 27; Doc. No. 134 
at 7.)  The Court agrees and finds the Trellis mark is suggestive and inherently distinctive 
because the mark does not describe Defendant’s services, rather, it suggests qualities like 
growth.  See First Bank, 84 F.3d at 1045 n.5 (“A mark that suggests some quality or 
ingredient constitutes a suggestive trademark, which is entitled to trademark protection 
without proving secondary meaning.”). 
“Commercial strength is based on the public recognition and renown of the mark 
as shown by the amount of advertising, sales volume, features and reviews in 
publications, and survey evidence.”  Zerorez, 103 F. Supp. 3d at 1042 (citation modified).  
The commercial strength determination “is made at the time the mark is asserted in 
litigation.”  Roederer v. J. Garcia Carrion, S.A., 732 F. Supp. 2d 836, 867 (D. Minn. 
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2010) (citation modified); see also 1 McCarthy on Trademarks and Unfair Competition 
§ 11:80 (5th ed. 2026) (“The marketplace strength of the mark must be evaluated at the 
time of litigation or at the time registration is sought.”).  Plaintiff focuses on the seventy-
six-day priority window once again to determine commercial strength.  (Doc. No. 134 
at 7.)  That is the wrong timing for this determination.  Defendant has shown significant 
evidence of commercial strength at the time of litigation, including numerous awards and 
other recognition, and a high volume of rental transactions due to its large volume of 
buildings and units.  (See Doc. No. 119 ¶ 15; Doc. No. 119-3; Doc. No. 119-15.)  
Defendant’s mark is also commercially strong.  This factor weighs in Defendant’s favor. 
Second, the parties’ word marks are identical.  Plaintiff seems to dispute this factor 
on grounds that their services differ from Defendant’s services.  (Doc. No. 134 at 7.)  The 
Court addresses that argument below.  This factor weighs in Defendant’s favor. 
Third, the competitive proximity is close.  This factor concerns the degree to 
which the two businesses’ services compete with each other, which is determined by 
looking at the overlap in services, geographic proximity, customers, and trade channels.  
See Zerorez, 103 F. Supp. 3d at 1043; Roederer, 732 F. Supp. 2d at 868-69.  Although the 
parties’ services are not the same, there is some overlap.  Plaintiff offers generally 
broader services, but those services do include housing related services for seniors.  (See, 
e.g., Doc. No. 121-6 at 9, 25-26; Doc. No. 121-14; Doc. No. 121-15.)  Additionally, the 
parties operate exclusively within Minnesota, and primarily within the Minneapolis-St. 
Paul metro.  Moreover, likelihood of confusion does not require that the parties’ services 
directly compete with one another.  Rather, the relevant question is whether the proximity 
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is such that the buying public thinks the services derive from the same source.  See 
Anheuser-Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769, 774 (8th Cir. 1994).  This factor 
weighs in Defendant’s favor. 
Fourth, Plaintiff knew about Defendant’s use of the Trellis mark, so intent can be 
inferred.  “An inference of an intent to trade upon the [senior user’s] good will arises if 
the [junior user], with knowledge of [senior user’s] mark, chose a mark similar to that 
mark from the infinite number of possible marks.”  Aveda Corp. v. Evita Mktg., Inc., 706 
F. Supp. 1419, 1429 (D. Minn. 1989).  While there is no direct evidence in the record that 
shows Plaintiff chose the name Trellis with intent to benefit from Defendant’s good will, 
there is evidence that Plaintiff knew about Defendant’s use of the Trellis mark before it 
filed its application to register and began using the mark itself.  (See Doc. No. 121-6 at 
24; Doc. No. 121-12 at 16; Doc. No. 121-18.)  This evidence allows the Court to 
reasonably infer intent, but even without that inference, the other factors show a 
likelihood of confusion. 
Fifth, there have been multiple incidents of actual confusion.  Generally, courts 
look at the confusion of purchasers, but they may also consider the confusion of 
nonpurchasers.  First Nat’l Bank in Sioux Falls v. First Nat’l Bank S.D., 679 F.3d 763, 
770 (8th Cir. 2012).  Defendant provided several examples of confusion, including news 
articles that confused the two organizations and an incident where a Minneapolis City 
Council Member confused the two organizations.  (See Doc. No. 119 ¶¶ 26, 28; Doc. 
No. 119-10; Doc. No. 119-12.)  Plaintiff argues that none of these examples show actual 
confusion because they do not involve purchasers.  (Doc. No. 126 at 23-25.)  One 
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incident, at a minimum, could be considered actual confusion:  In August 2025, a third-
party representing one of Defendant’s tenants emailed Plaintiff’s CEO seeking to resolve 
issues on behalf of that tenant, believing that Plaintiff owned the building where her 
client lived.  (Doc. No. 121-21.)  So, even without considering nonpurchaser confusion, 
this factor weighs in Defendant’s favor. 
Sixth, housing is an important service, but the parties serve communities that may 
exercise a lower degree of care, so this factor is neutral.  In addition, consumers 
exercising considerable care may still be confused where the parties use “identical or 
substantially similar marks while offering the same category of services in the same 
geographical location.”  Cmty. of Christ, 634 F.3d at 1009.  The parties here do not offer 
the exact same services, but there is overlap and they use an identical mark.   
Weighing these factors together, the Court concludes that no reasonable factfinder 
could find that there is no likelihood of confusion between Plaintiff and Defendant’s 
marks.  There is no genuine dispute of material fact and Defendant is therefore entitled to 
judgment as a matter of law on Count 2 and Counterclaims 2 through 5.  Defendant’s 
other motions are denied as moot. 
III. Remedy  
 Because the Court found in favor of De fendant on its counterclaims, the Court 
now considers the proper remedy.  Defendant requested permanent injunctive relief and 
disgorgement of Plaintiff’s profits. 
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 A. Permanent Injunctive Relief  
Before a court may grant permanent injunctive relief, the moving party must show 
that:  (1) it actually succeeded on the merits; (2) it faces irreparable harm; (3) the harm to 
it outweighs any possible harm to others; and (4) a permanent injunction serves the public 
interest.  Cmty. of Christ, 634 F.3d at 1012; see also Amoco Prod. Co. v. Village of 
Gambell, 480 U.S. 531, 546 n.12 (1987) (noting that the standard for a permanent 
injunction is essentially the same as the one for a preliminary injunction, except that the 
moving party must have actual success on the merits).  “[T]he decision whether to grant 
or deny injunctive relief rests within the equitable discretion of the district courts, and . . . 
such discretion must be exercised consistent with traditional principles of equity . . . .”  
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394 (2006). 
Plaintiff argues that Defendant has not met the first factor, relying on its merits 
arguments that the Court addressed above.  (Doc. No. 126 at 28-29.)  Plaintiff appears to 
concede that Defendant has shown the second, third, and fourth factor.  (See id.)  
Accordingly, now that Defendant has succeeded on the merits, the Court finds that 
permanent injunctive relief is an appropriate remedy.  Defendant only asks the Court to 
enjoin Plaintiff’s use of the Trellis mark, and any variations of that mark, in the State of 
Minnesota.  Therefore, the Court permanently enjoins Plaintiff, and any person or entity 
associated with Plaintiff, from using the Trellis mark, or any variation thereof, in 
association with Plaintiff’s services in Minnesota. 
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B. Disgorgement  
Defendant requests disgorgement of Plaintiff’s profits in addition to permanent 
injunctive relief.  Generally, injunctive relief is the preferred remedy to resolve trademark 
disputes, but the Lanham Act also allows disgorgement.  See Masters v. UHS of Del., 
Inc., 631 F.3d 464, 471 (8th Cir. 2011) (citing 15 U.S.C. § 1117(a)).  “Courts have broad 
discretion to decide whether an injunction alone will be sufficient to do justice.”  Wing 
Enters., Inc. v. Tricam Indus., Inc., 511 F. Supp. 3d 957, 978 (D. Minn. 2021) (citation 
modified).  A disgorgement award may be based on unjust enrichment, damages, or 
deterrence of a willful infringer.  Minn. Pet Breeders, Inc. v. Schell & Kampeter, Inc., 
41 F.3d 1242, 1247 (8th Cir. 1994).   
Defendant asserts that Plaintiff “has been unjustly enriched by its infringing 
conduct, and deterrence is warranted due to [Plaintiff’s] adoption of an identical mark 
despite its express knowledge [Defendant].”  (Doc. No. 12 at 47.)  After a review of the 
record, the Court finds that permanent injunctive relief is a sufficient remedy here and 
disgorgement is not warranted under the principles of equity.  While Plaintiff acted with 
knowledge, it is not clear that Plaintiff was unjustly enriched.  Additionally, permanent 
injunctive relief is a sufficient deterrent in this situation.  Lastly, both organizations are 
nonprofits that do important work in this community.  Disgorgement could harm Plaintiff 
and limit its ability to continue its important work.  That is not in the best interest of the 
public.  Defendant’s request for disgorgement of Plaintiff’s profits is denied. 
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ORDER 
Based upon the foregoing and the record in this case, IT IS HEREBY 
ORDERED that: 
 1. Defendant/Counter Claimant Trellis  Co.’s motion for summary judgment 
(Doc. No. [110]) is GRANTED. 
2. The Court DECLARES that Defendant/Counter Claimant Trellis Co. has 
priority of use of the Trellis mark over Plaintiff/Counter Defendant Metropolitan Area 
Agency on Aging, Inc. 
 3. Plaintiff/Counter Defe ndant Metropolitan Area Agency on Aging, Inc. and 
its principals, officers, directors, shareholders, partners, agents, servants, employees, 
parents, subsidiaries, and affiliates, and all persons or entities acting in concert or 
participation with any of them, are PERMANENTLY ENJOINED from using the 
infringing Trellis mark or any similar variations thereof, alone or in combination with any 
other word(s) or design(s), in connection with Plaintiff/Counter Defendant’s services in 
the State of Minnesota. 
 4. Defendant/Counter Claimant Trellis  Co.’s request for disgorgement of 
profits is DENIED. 
 5. Plaintiff/Counter De fendant Metropolitan Area Agency on Aging, Inc.’s 
claims (Doc. No. [1]) are DISMISSED WITH PREJUDICE. 
 6. Plaintiff/Counter De fendant Metropolitan Area Agency on Aging, Inc.’s 
second motion for summary judgment (Doc. No. [95]) is DENIED. 
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 7. Defendant/Counter Claimant Trellis  Co.’s motion for bench trial and to 
strike the jury demand (Doc. No. [83]) is DENIED AS MOOT. 
 8. Defendant/Counter Claimant Trellis  Co.’s motion to exclude the expert 
testimony of Theodore H. Davis, Jr. (Doc. No. [104]) is DENIED AS MOOT. 
 LET JUDGMENT BE ENTERED ACCORDINGLY. 
 
Dated:  June 2, 2026.   s/Donovan W. Frank   
DONOV AN W. FRANK 
United States District Judge 
CASE 0:24-cv-01854-DWF-SGE     Doc. 141     Filed 06/02/26     Page 17 of 17

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