By Memorandum Order entered by the Honorable Maryellen Noreika in Apex Clearing Corp. v. Axos Financial Inc. et al., Civil Action No. 19-2066-MN (D.Del. September 24, 2021), the Court (1) denied Plaintiff Apex Clearing Corporation’s motion to exclude the expert testimony of defendants’ experts Mumford and Distler; (2) denied Plaintiff Axos Bank’s motion for summary judgment on four counts of trademark infringement; (3) denied defendants/counter-plaintiffs Axos Financial, Inc. and Axos Clearing LLC’s motion for summary judgment of non-infringement; and (4) granted-in-part defendants/counter-plaintiffs Axos Financial, Inc. and Axos Clearing LLC’s motion for summary judgment of no actual damages or disgorgement damages.

In denying Apex’s motion to exclude the expert testimony of defendants’ experts, the Court disagreed with Apex’s assertions that Mumford’s opinions were “not based on sufficient data or methodology” and that Distler’s testimony was “too basic to assist the trier of fact.”  Id. at *2.  With respect to Axos Bank’s motion for summary judgment concerning liability on the trademark infringement claims, the Court noted that “likelihood of confusion” is a “fact-intensive inquiry” and “cannot typically be decided at the summary judgment stage.”  Id. at *3.  The Court explained “[t]his case is not the exception.  Genuine issues of material fact as to the similarity of the marks, the strength of the marks, the intent of Defendant in adopting their marks, as well as other Lapp factors exist.”  Id.  Thus, the Court denied the motion.  Id.  The same reasoning applied and same genuine issues of material fact were present with respect to Axos Financial, Inc. and Axos Clearing LLC’s motion for summary judgment of non-infringement.  Thus, the Court denied that motion as well.  Id.  With respect to Axos Financial, Inc. and Axos Clearing LLC’s motion for summary judgment of no actual damages or disgorgement damages, defendants were requesting the Court to bar an award of actual and disgorgement damages.  Id.  As to actual damages, the record was undisputed that “Plaintiff has no actual knowledge of damages resulting from Defendants’ conduct, .  .  . Plaintiff is not seeking lost sales, lost market share, or lost goodwill, .  .  .  [and that] Plaintiff did no corrective advertising.”  Id.  Thus, the Court granted the motion with respect to actual damages.  With respect to disgorgement damages, the motion was denied after recognizing there exists genuine issues of material fact on several of the factors the Third Circuit instructs in Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 175 (3d Cir. 2005) for courts to consider when deciding whether to grant disgorgement damages in a trademark infringement action.  Id. at *4.

A copy of the Memorandum Order is attached.

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