The opinion of the court was delivered by: Honorable Stephen J. Murphy, III
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT OF INFRINGEMENT (Docket no. 30)
This is a suit by Express Welding, Inc., a manufacturer of semi-tractor trailers, against Superior Trailers, LLC ("Superior Trailers"), B&B Specialized Sales & Services LLC ("B&B") and Robert Becker, an agent for Superior Trailers and B&B. The suit claims that defendants contracted with another company to manufacture plaintiff's trailer products and are knowingly passing off plaintiff's products as defendants' products. The complaint asserts claims for trademark infringement under state and federal statutes and Michigan common law, unfair competition and tortious interference with business relationship under Michigan common law.
Plaintiff now moves for partial summary judgment on its infringement and unfair competition claims. For the reasons stated below, plaintiff's motion will be granted in part and denied in part. Specifically, the Court finds the plaintiff's marks are valid and protectable and finds that the alleged use of the marks by the defendants creates a likelihood of confusion. The Court also finds that the plaintiff has established that the defendants have actually infringed the EXPRESS and NITRO STINGER trademarks. The Court finds, however, that the defendants have met their burden on summary judgment of demonstrating a genuine issue of material fact as to whether the defendants used the NITRO SPREADER mark in commerce, and the Court therefore denies summary judgment of infringement as to defendants' use of the plaintiff's NITRO SPREADER trademark.
The plaintiff, Express Welding, Inc. ("Express Welding") is the owner of the NITRO STINGER, EXPRESS and NITRO SPREADER trademarks. It has used the EXPRESS trademark to identify its services since 1988, the NITRO STINGER trademark to identify its goods since 2005, and the NITRO SPREADER trademark to identify its goods since 2006.
The plaintiff entered into an agreement with defendant Robert Becker in 2006 under which the defendants would sell plaintiff's NITRO STINGER and NITRO SPREADER trailer products. This relationship was terminated in 2007, but the plaintiff claims that Becker engaged another company to manufacture the plaintiff's trailer products. Plaintiff also claims that defendants are selling plaintiff's products as defendants' products and are generally misrepresenting the identity of both plaintiff's and defendants' products on the web and in advertising.
In support of its motion for summary judgment, plaintiff has submitted a declaration by Jeffrey Scheuren, the Chief Engineer for Express Welding. The Scheuren declaration states that the defendants continue to sell trailer products under Express Welding's trademarks. In support of this statement, the plaintiff attaches a page from defendants' website, www.RBeckerTrailers.com, which states that it is the "Home of the original "Superior Nitro Stinger" and Superior Nitro Spreader." The plaintiff also submits pages from several other websites, www.rockanddirt.com, www.quereltrailers.com, www.TMTTrailerSales.com, and www.SemiTrailers.net. which allegedly associate Express Welding's marks with the defendants' trailer products. The plaintiff has also submitted pictures of instructional stickers on trailer attachments that refer to "Superior Trailers Nitro Stinger." The plaintiff has also attested to a single incident of customer confusion, in which a customer, Dave Harkema, called Scheuren and asked whether Express Welding was the manufacturer of the "Superior Stinger" because he was looking for parts. Finally, the plaintiff has submitted an advertisement for Superior Trailers which advertises "New Superior Trailer Nitro Stinger Attachments Formally (sic) Express."
The plaintiff is seeking a declaration that the defendants are liable to the plaintiff for federal trademark infringement under 15 U.S.C. § 1114; a declaration that the defendants are liable to the plaintiff for federal unfair competition under 15 U.S.C. § 1125(a); a determination that the defendants are liable to the plaintiff for trademark infringement under M.C.L. § 429.42; a determination that the defendants are liable to the plaintiff for trademark infringement under Michigan common law; a determination that the defendants are liable to the plaintiff for tortious interference with business relationships; a determination that the defendants' conduct has been wilful and deliberate; treble damages; attorneys fees; and an injunction barring the defendants from use of the trademarks and requiring the defendants deliver for destruction all infringing products.
The Federal Registrations
Express holds a federal trademark registration for the following trademarks:
1) EXPRESS, Reg. No. 3,452,924, registered June 24, 2008, registered for "custom manufacture of trailers and trailer accessories":
2) NITRO STINGER, Reg. No. 3,444,695, registered June 10, 2008 for "semi-tractor trailers":
and 3) NITRO SPREADER, Reg. No. 3,504,645, registered September 23, 2008 for "semi-tractor trailers";
Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment "should be rendered if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). Summary judgment is appropriate if the moving party demonstrates that there is no genuine issue of material fact regarding the existence of an essential element of the nonmoving party's case on which the nonmoving party would bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Martin v. Ohio Turnpike Comm'n, 968 F.2d 606, 608 (6th Cir.1992).
In considering a motion for summary judgment, the Court must view the facts and draw all reasonable inferences in a light most favorable to the nonmoving party. 60 Ivy St. Corp. v. Alexander, 822 F.2d 1432, 1435 (6th Cir.1987). The Court is not required or permitted, however, to judge the evidence or make findings of fact. Id. at 1435-36. The moving party has the burden of showing conclusively that no genuine issue of material fact exists. Id. at 1435.
A fact is "material" for purposes of summary judgment if proof of that fact would have the effect of establishing or refuting an essential element of the cause of action or a defense advanced by the parties. Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir.1984). A dispute over a material fact is genuine "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Accordingly, when a reasonable jury could not find that the nonmoving party is entitled to a verdict, there is no genuine issue for trial and summary judgment is appropriate. Id.; Feliciano v. City of Cleveland, 988 F.2d 649, 654 (6th Cir.1993).
Once the moving party carries the initial burden of demonstrating that there are no genuine issues of material fact in dispute, the burden shifts to the nonmoving party to present specific facts to prove that there is a genuine issue for trial. Anderson, 477 U.S. at 256. To create a genuine issue of material fact, the nonmoving party must present more than just some evidence of a disputed issue. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986). As the United States Supreme Court has stated, "there is no issue for trial unless there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party. If the [nonmoving party's] evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50 (citations omitted); see Celotex, 477 U.S. at 322-23; Matsushita, 475 U.S. at 586-87.
Consequently, the nonmoving party must do more than raise some doubt as to the existence of a fact; the nonmoving party must produce evidence that would be sufficient to require submission of the issue to the jury. "The mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which the jury could reasonably find for the ...