Metropolitan Area Agency on Aging, Inc. v. Trellis Co.
- Donovan Frank
- 0:24-cv-01854
- U.S. District Court · District of Minnesota
- 17
In Metropolitan Area Agency on Aging v. Trellis Co., Judge Frank granted summary judgment for Trellis Co., declaring it holds priority in the 'Trellis' trademark and permanently enjoining the plaintiff from using the mark in Minnesota.
Nonprofit organizations that share or contest use of the same name or brand in the same geographic market; organizations that undertook rebranding without filing trademark applications; parties opposing or defending trademark registration proceedings at the PTO or TTAB; anyone seeking to understand when commercial use of a mark is sufficient to establish trademark priority.
What happened
Metropolitan Area Agency on Aging, Inc. v. Trellis Co. (Civil No. 24-1854) is a trademark dispute between two Minnesota nonprofits that independently chose the name 'Trellis' during separate rebranding efforts around 2018–2019. The core question was which organization had the right to use the Trellis name first — a legal concept called 'priority' — because trademark rights go to whoever first uses a mark in commerce. Defendant Trellis Co., a property developer focused on affordable housing, launched its Trellis brand on August 12, 2020, through website changes, signage, branded employee clothing, tenant notices, and business materials. Plaintiff Metropolitan Area Agency on Aging, which provides social services to seniors, filed an application to register the Trellis name with the federal trademark office 76 days later, on October 27, 2020.
The court found that Trellis Co.'s pre-October 2020 activities — including a live website with rental inquiry features, new logo decals on office doors where tenants met with employees, branded clothing worn by employees on the job, notices sent to tenants, and business cards and folders given to new and prospective tenants, with over seventy new tenants moving in during that period — constituted genuine 'use in commerce' under federal trademark law. This meant Trellis Co. established priority before the plaintiff's filing date. The court then examined whether consumers were likely to be confused by both organizations using the Trellis name, weighing six standard factors: the mark's strength, the identical wording of both marks, the geographic and service overlap in the Minneapolis–St. Paul area, evidence that the plaintiff knew of Trellis Co.'s use before filing, documented incidents of actual confusion (including a third party who mistakenly contacted the plaintiff's CEO about a Trellis Co. tenant's housing issue), and the nature of the consumer base.
Judge Frank granted summary judgment in favor of Trellis Co. on all claims, declaring Trellis Co. has priority in the mark and finding a likelihood of confusion as a matter of law. The court permanently enjoined Metropolitan Area Agency on Aging and anyone acting with it from using the Trellis mark or any similar variation in connection with its services in Minnesota. However, the court denied Trellis Co.'s request for disgorgement (a money remedy requiring the plaintiff to give up profits gained from use of the mark), finding that a permanent injunction was sufficient, that unjust enrichment was not clearly established, and that stripping funds from a nonprofit doing important community work would not serve the public interest. The plaintiff's own claims were dismissed with prejudice, meaning they cannot be refiled. Trellis Co.'s motions for a bench trial and to exclude an expert witness were denied as moot.
The detailed version
- Metropolitan Area Agency on Aging, Inc. v. Trellis Co. · No. 0:24-cv-01854
- Donovan Frank
- June 2, 2026
Background
This dispute involves two nonprofit organizations operating primarily in the Minneapolis–St. Paul metropolitan area. Plaintiff Metropolitan Area Agency on Aging, Inc. provides social services to seniors and their caregivers, including home-delivered meals, transportation, legal services, chore services, and housing counseling. Defendant Trellis Co. is a property developer focused on affordable housing for low-income populations, including seniors, veterans, and people with disabilities; it owns more than sixty properties in the Minneapolis–St. Paul area and greater Minnesota, most managed by its wholly owned subsidiary Trellis Management Co.
Independently, both parties undertook rebranding efforts around 2018–2019 and each chose the name "Trellis." On August 12, 2020, Trellis Co. formally launched its new brand at a company-wide virtual event and simultaneously undertook several public-facing steps: new logo decals were installed on Trellis Management office doors (as of August 3, 2020), site managers sent tenant notices, the CEO notified business partners, the company's website went live under the new brand (with property listings and a rental inquiry section), and branded clothing was distributed to on-site employees to wear while working. After August 12, the company continued using the Trellis mark in new property deals, tenant communications, and materials given to new and prospective tenants.
Seventy-six days later, on October 27, 2020, Metropolitan Area Agency on Aging filed an application to register the "Trellis" word mark with the U.S. Patent and Trademark Office (PTO). Trellis Co. had never filed an intent-to-use application with the PTO for either its word mark or design mark.
Trellis Co. opposed the plaintiff's PTO application at the Trademark Trial and Appeal Board (TTAB), asserting priority and likelihood of confusion. The TTAB denied cross-motions for partial summary judgment and suspended its proceedings pending resolution of this federal court case. The plaintiff then filed this lawsuit seeking declaratory judgments of priority (Count 1) and non-infringement (Count 2). Trellis Co. answered and asserted five counterclaims: (1) declaratory judgment of priority; (2) unfair competition under 15 U.S.C. § 1125(a) (the Lanham Act); (3) Minnesota common law trademark infringement; (4) Minnesota common law unfair competition; and (5) violation of the Minnesota Uniform Deceptive Trade Practices Act (UDTPA).
On a prior round of motions, the court denied the plaintiff's first motion for summary judgment, finding a genuine factual dispute about priority. After additional discovery, both sides moved again for summary judgment.
Four Pending Motions
The court addressed four motions:
- Plaintiff's second motion for summary judgment (Doc. No. 95)
- Trellis Co.'s motion for a bench trial and to strike the jury demand (Doc. No. 83)
- Trellis Co.'s motion to exclude expert testimony of Theodore H. Davis, Jr. (Doc. No. 104)
- Trellis Co.'s motion for summary judgment (Doc. No. 110)
Priority Analysis (Count 1 and Counterclaim 1)
Under the Lanham Act, trademark rights are acquired through actual use in commerce, not mere discovery or invention of a mark. See 15 U.S.C. § 1127. "Use in commerce" for services requires that the mark be used or displayed in connection with the sale or advertising of services, and that the services be rendered in commerce — mere preparatory steps are not enough.
The court found six categories of evidence establishing that Trellis Co. used its mark in commerce before the plaintiff's October 27, 2020 filing date:
- Letters and notices bearing the Trellis mark sent to tenants in September and October
- 2. Multiple employee declarations confirming they were instructed to wear Trellis-branded clothing while working and did so.
- A new Trellis-branded website, live as of August 12, 2020, with property listings and a rental inquiry section.
- Trellis mark decals applied to Trellis Management office doors on August 3, 2020 — an office where current and prospective tenants met with employees.
- Business cards and folders bearing the Trellis mark given to new and prospective tenants beginning in August
- 6. Rent rolls confirming more than seventy new tenants moved into Trellis Co. properties between August 13 and October 26, 2020.
The court rejected the plaintiff's argument that this use was insufficient for lack of market penetration, distinguishing Sweetarts v. Sunline, Inc., 380 F.2d 923 (8th Cir. 1967), which addressed geographic scope of an injunction across multiple states — not priority in the same market. Because both parties operate in the same market, a detailed market-penetration analysis was unnecessary. The court concluded that no reasonable factfinder could find that Trellis Co. lacked priority, and granted summary judgment for Trellis Co. on Count 1 and Counterclaim 1.
Note on expert Davis: The court indicated in a footnote that, had it reached Trellis Co.'s motion to exclude expert Theodore H. Davis, Jr., it would have granted that motion: Davis's first opinion improperly stated what the law is (a role reserved for the court), and his second opinion invaded the factfinder's province.
Likelihood of Confusion (Count 2 and Counterclaims 2–5)
Having found Trellis Co. holds priority, the remaining claims — plaintiff's declaratory non-infringement claim and Trellis Co.'s four infringement-related counterclaims — all turned on whether the plaintiff's use of the Trellis mark was likely to cause consumer confusion. The court applied the six-factor "SquirtCo" test from the Eighth Circuit:
Factor 1 — Strength of the mark
The court found the Trellis mark is suggestive (the parties appeared to concede this), meaning it is inherently distinctive and entitled to protection without proof of acquired secondary meaning. Commercially, the court evaluated strength at the time of litigation (not the 76-day priority window), finding Trellis Co. had demonstrated significant commercial recognition through awards, other recognition, and a high volume of rental transactions. This factor favored Trellis Co.
Factor 2 — Similarity of marks
The parties use identical word marks. This factor favored Trellis Co.
Factor 3 — Competitive proximity
Although the parties' services are not identical, both operate exclusively in Minnesota (primarily the Minneapolis–St. Paul metro), and the plaintiff's services include housing-related services for seniors, creating overlap with Trellis Co.'s residential property services. Likelihood of confusion does not require direct competition; it asks whether the public might think the services come from the same source. This factor favored Trellis Co.
Factor 4 — Intent
No direct evidence existed that the plaintiff chose "Trellis" to trade on Trellis Co.'s goodwill, but the record showed the plaintiff knew of Trellis Co.'s use before filing its PTO application. Under Eighth Circuit law, intent can be inferred from adopting a similar mark with knowledge of a senior user's mark. This factor favored Trellis Co., though the court noted the other factors would establish confusion even without this inference.
Factor 5 — Actual confusion
Trellis Co. presented several examples, including news articles and a Minneapolis City Council member who confused the two organizations. Most significantly, in August 2025, a third party representing one of Trellis Co.'s tenants emailed the plaintiff's CEO to resolve housing issues, believing the plaintiff owned the tenant's building. The court found this constituted actual purchaser-adjacent confusion. This factor favored Trellis Co.
Factor 6 — Conditions of purchase / consumer care
The court found this factor neutral. Housing is an important service, but the populations served may exercise a lower degree of care. Even so, the court noted that careful consumers may still be confused when identical marks are used for overlapping services in the same geographic market.
Balancing all factors, the court concluded no reasonable factfinder could find an absence of likely confusion. It granted summary judgment for Trellis Co. on Count 2 and Counterclaims 2 through 5.
Remedies
Permanent Injunction
To obtain a permanent injunction, a party must show: (1) actual success on the merits; (2) irreparable harm; (3) the balance of harms favors the movant; and (4) the injunction serves the public interest. The plaintiff challenged only the first factor. The court found the plaintiff appeared to concede factors 2–4. Having now granted summary judgment for Trellis Co. on the merits, the court found permanent injunctive relief appropriate. The court permanently enjoined Metropolitan Area Agency on Aging, Inc. — and its principals, officers, directors, shareholders, partners, agents, servants, employees, parents, subsidiaries, affiliates, and all persons or entities acting in concert with any of them — from using the Trellis mark or any similar variation, alone or in combination with other words or designs, in connection with the plaintiff's services in the State of Minnesota.
Disgorgement of Profits
The Lanham Act (15 U.S.C. § 1117(a)) permits disgorgement of an infringer's profits, which may be awarded on grounds of unjust enrichment, actual damages, or deterrence of willful infringement. The court declined to award disgorgement, reasoning: (1) it was not clear the plaintiff was unjustly enriched; (2) permanent injunctive relief is a sufficient deterrent; and (3) both organizations are nonprofits performing important community work, and disgorgement could harm the plaintiff's ability to continue that work, which would not serve the public interest. Trellis Co.'s request for disgorgement was denied.
Final Disposition
- Trellis Co.'s motion for summary judgment (Doc. No. 110): GRANTED - Trellis Co. declared to have priority of use of the Trellis mark over Metropolitan Area Agency on Aging, Inc. - Metropolitan Area Agency on Aging, Inc. (and associated persons/entities) PERMANENTLY ENJOINED from using the Trellis mark or similar variations in connection with its services in Minnesota - Trellis Co.'s request for disgorgement of profits: DENIED - Plaintiff's claims (Doc. No. 1): DISMISSED WITH PREJUDICE - Plaintiff's second motion for summary judgment (Doc. No. 95): DENIED - Trellis Co.'s motion for bench trial and to strike jury demand (Doc. No. 83): DENIED AS MOOT - Trellis Co.'s motion to exclude expert testimony of Theodore H. Davis, Jr. (Doc. No. 104): DENIED AS MOOT
Read the full 17-page opinion on CourtListener, the free public archive maintained by the Free Law Project.