                                                            [DO NOT PUBLISH]


               IN THE UNITED STATES COURT OF APPEALS

                        FOR THE ELEVENTH CIRCUIT                    FILED
                          ________________________         U.S. COURT OF APPEALS
                                                             ELEVENTH CIRCUIT
                                                                 June 20, 2008
                                No. 07-15379                  THOMAS K. KAHN
                            Non-Argument Calendar                 CLERK
                          ________________________

                     D. C. Docket No. 06-01408-CV-RWS-1

WESTERN UNION HOLDINGS, INC.,
WESTERN UNION FINANCIAL SERVICES, INC.,
INTERGRATED PAYMENT SYSTEMS, INC.,

                                                               Plaintiffs-Counter-
                                                           Defendants-Appellees,

                                     versus

EASTERN UNION, INC.,
EU FINANCIAL SERVICES, INC.,
YOUNG CHOE,
individually and d/b/a Check Cash Plus,
EVIAN GROUP, INC.,
ERIC YOUNG,

                                                            Defendants-Counter-
                                                           Claimants-Appellants.

                          ________________________

                   Appeal from the United States District Court
                      for the Northern District of Georgia
                        _________________________

                                 (June 20, 2008)
Before CARNES, BARKETT and PRYOR, Circuit Judges.

PER CURIAM:

      Eastern Union, EU Financial Services, Young Choe, Evian Group, and Eric

Young appeal the summary judgment in favor of Western Union. The district

court concluded that Eastern Union infringed the trademarks of Western Union.

We affirm.

                                I. BACKGROUND

      Western Union owned a number of registered trademarks for the

“WESTERN UNION” mark depicted in a yellow block font on a black background

associated with money transfer and money order services. Young Choe was the

owner of Check Cash Plus, a Georgia corporation that offered money transfer

services and sold money orders and travelers checks. Choe entered an agency

contract with Western Union that allowed Choe to sell Western Union money

transfer and money order services and to use the marks owned by Western Union

at four stores of Check Cash Plus. Choe agreed not to sell any other money order

products or services.

      Choe was registered with the Secretary of State of Georgia as the president

and chief executive officer of Eastern Union, a Georgia corporation that offered

money transfer services, and as holding all corporate officer positions of EU



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Financial Services, a Georgia corporation that offered tax preparation and loan

services. Choe was the registered agent for both corporations and accepted service

for the corporations at the address of one of her Check Cash Plus stores. The same

address was also listed with the Secretary of State as the principal office of EU

Financial Services.

      Five months after Choe contracted with Western Union, Eric Young filed a

trademark application for the mark EASTERN UNION and listed himself as the

chief executive officer of Eastern Union. Young stated on the application that the

mark was associated with the issuance of travelers checks and services for payroll

accounting and tax preparation. Check Cash Plus later advertised money orders,

money transfers, and travelers checks under the name and mark EASTERN

UNION. At one Check Cash Plus store and in a Check Cash Plus brochure, the

EASTERN UNION mark was depicted in a yellow block font on a black

background. When it learned that Check Cash Plus was selling products of Eastern

Union, Western Union notified Choe that the sales violated the agency contract and

demanded that Choe cease use of the EASTERN UNION marks and black and

yellow trade dress.

      When Choe did not respond to its demand, Western Union terminated the

agency agreement and filed a complaint that Choe, Eastern Union, and Young had



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committed unfair trade practices in violation of the Lanham Act and Georgia law.

15 U.S.C. §§ 1114, 1125(a), 1125(c); Ga. Code Ann. §§ 10-1-371–73, 10-1-

451(b), 23-2-55. Western Union alleged that the defendants had committed

trademark and trade dress infringement by using the EASTERN UNION mark in

combination with a yellow and black trade dress similar to that used by Western

Union. Western Union sought to enjoin the defendants from using “any name,

designation or mark containing the phrase EASTERN UNION or any other mark,

word, designation, trade dress or name similar to the WESTERN UNION” marks.

      After a hearing, the district court entered a preliminary injunction that the

defendants cease using the EASTERN UNION mark. The district court later held

the defendants in contempt for failing to comply with the injunction but declined to

impose sanctions for their use of the marks EU and E.U. The district court

amended the preliminary injunction to bar defendants from using the marks EU

and E.U. The district court later held the defendants in contempt for violating the

amended preliminary injunction.

      Western Union filed a motion for summary judgment. The district court

denied the summary judgment for trade dress infringement, but granted summary

judgment for trademark infringement. The district court concluded that Eastern

Union used a mark “decidedly similar” to the mark owned by Western Union and



                                          4
there was a substantial likelihood of consumer confusion. The district court

entered a permanent injunction prohibiting the use of the EASTERN UNION, EU,

and E.U. marks.

                          II. STANDARDS OF REVIEW

      We review summary judgment de novo and view the evidence in the light

most favorable to the nonmoving party. Alliance Metals, Inc. v. Hinely Industries,

Inc., 222 F.3d 895, 897 (11th Cir. 2000). Summary judgment should be entered

when there is no genuine issue of material fact and the moving party is entitled to

judgment as a matter of law. Fed. R. Civ. P. 56 (c). We review the exclusion of an

affidavit of an undisclosed expert for abuse of discretion. Cooper v. Southern Co.,

390 F.3d 695, 728 (11th Cir. 2004).

                                 III. DISCUSSION

      The defendants, to whom we will refer collectively as Eastern Union, argue

that Western Union was not entitled to summary judgment for trademark

infringement. Eastern Union argues that the district court erroneously applied the

same legal standard as it used to evaluate the request for the preliminary injunction,

overlooked genuine issues of material fact, and erroneously excluded an affidavit

of an undisclosed expert. We disagree.

      Western Union had to establish that its mark had priority and the mark used



                                          5
by Eastern Union was confusingly similar to the mark owned by Western Union so

that it “created a likelihood of confusion among consumers as to the origin of

goods sold.” Alliance, 222 F.3d at 906. Eastern Union does not dispute the

priority of Western Union to the trademark, but Eastern Union denies that there

was a likelihood that consumers would confuse the WESTERN UNION and

EASTERN UNION marks. We agree with the district court that there was no

genuine issue of material fact regarding the likelihood of confusion between the

WESTERN UNION and EASTERN UNION marks.

      To resolve this controversy, the district court assessed seven factors: the

strength of the mark; the similarity of the sales methods of the parties; the

similarity of the advertising methods used by the parties; the similarity of the two

marks; the similarity of the products and services offered by the parties; the

defendants’ intent when using the mark; and actual confusion between the marks.

See Alliance, 222 F.3d at 907. Eastern Union offered no evidence to create an

issue of fact as to the first three factors. The evidence established that the Western

Union mark was arbitrary and deserved strong protection; both parties marketed

their products through small retail outlets targeted to reach the same group of

consumers; and the parties employed the same advertising mediums. The district

court also concluded that there was no genuine issue of material fact regarding the



                                           6
remaining factors. The marks WESTERN UNION and EASTERN UNION were

patently similar in “appearance, sound and meaning . . . as well as the manner in

which they [were] displayed.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l

Imports, Inc., 756 F.2d 1525, 1531 (11th Cir. 1985); see, e.g., Frehling Enters., Inc.

v. Int’l Select Group, Inc., 192 F.3d 1330, 1337 (11th Cir. 1999). The parties also

advertised virtually identical money order and money transfer services that

customers could easily attribute to one source. See Frehling, 192 F.3d at 1338;

Remy Martin, 756 F.2d at 1530.

      The undisputed familiarity of Eastern Union with the WESTERN UNION

mark and its well-known affiliation with money transfer services, imitation of the

WESTERN UNION mark, and repeated refusals to discontinue use of a mimetic

mark established that Eastern Union intended to capitalize on the reputation and

infringe on the market created by Western Union. See Frehling, 192 F.3d at 1340

(“If it can be shown that a defendant adopted a plaintiff’s mark with the intention

of deriving a benefit from the plaintiff’s business reputation, this fact alone may be

enough to justify the inference that there is confusing similarity.”). Although

Western Union did not present evidence of actual customer confusion, the district

court correctly concluded that proof of actual confusion was not required when the

overwhelming evidence regarding the remaining factors supported a judgment in



                                           7
favor of Western Union. See Montgomery v. Noga, 168 F.3d 1282, 1302 (11th

Cir. 1999) (refusing to reverse a finding of a likelihood of confusion between

marks “based merely on the absence of evidence of actual confusion”); see also

Frehling, 192 F.3d at 1340 (evidence of actual confusion “is not a prerequisite, and

thus it is up to individual courts to assess this factor in light of the particular facts

of each case”). The district court did not err.

       The district court also did not abuse its discretion when it excluded the

affidavit of Jeffrey Shusterman. Eastern Union failed to disclose Shusterman as an

expert and failed to provide an expert report during the discovery period as

required by Federal Rule of Civil Procedure 26(a)(2) and Local Rule 26.2C.

“Because the expert witness discovery rules are designed to allow both sides in a

case to prepare their cases adequately and to prevent surprise, ... compliance with

Rule 26 is not merely aspirational.” Cooper, 390 F.3d at 728 (citation omitted).

                                  IV. CONCLUSION

       The summary judgment in favor of Western Union is AFFIRMED.




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