United States District Court, E.D. Michigan, Southern Division
ANTHONY P. PATTI MAG. JUDGE
OPINION AND ORDER DENYING DEFENDANT'S MOTION FOR
SUMMARY JUDGMENT  AND DENYING PLAINTIFF'S MOTION FOR
SUMMARY JUDGMENT 
E. LEVY UNITED STATES DISTRICT JUDGE
case arises out of the fractured business relationship
between Ziebart International, Corp. and Z Technologies,
Corp. Pursuant to leave of the Court, the parties have filed
a second round of summary judgment motions. For the reasons
stated below, both plaintiff's and defendant's
motions for summary judgment are denied.
case, the Court permitted the parties to engage in two rounds
of summary judgment briefing. In an opinion and order dated
January 23, 2017, the Court denied defendant's motion for
summary judgment, granted in part and denied in part
plaintiff and third party defendant Pure Asphalt Corp.'s
motion for summary judgment, and granted Pure Asphalt
Corp.'s motion for judgment on the pleadings. (Dkt. 80.)
In that opinion and order, the Court recounted the facts of
this case, and will primarily rely on that recitation of
facts here. See Ziebart Int'l Corp. v. Z Techs.
Corp., No. 15-CV-11745, 2017 WL 282395 (E.D. Mich. Jan.
1996, plaintiff sold its chemical subsidiary, Ziebart
Products Group, Inc. (“ZPG”) to The Sentry
Corporation, which then became known as Z Technologies, Inc.
(Dkt. 1 at 6; Dkt. 56-2 at 8.) As part of the sale, the
parties entered into the following agreements that addressed,
among other things, use of trade names, trademarks,
disclosure of information, and other intellectual property:
Asset Purchase Agreement; License Agreement; Non-Competition
and Non-Disclosure Agreement; and Supply Agreement. (Dkt. 1
at 4-6; Dkt. 52 at 19-23; Dkt. 66-10 at 2.)
primary agreement was the Asset Purchase Agreement
(“APA”). This agreement transferred all of
ZPG's manufacturing equipment, property, and know-how to
defendant, including the equipment and processes for
manufacturing the product known as Formula Q. In its exact
language, it involved the sale of “all of the assets of
Seller currently used by Seller at the Facility or elsewhere
in connection with the business conducted at the Facility
which are necessary, important or useful to the business
conducted at the facility as set forth in Schedule 2.1,
” where “Seller” was defined as ZPG. (Dkt.
93-1 at 11-12.) Any reference to Ziebart in the APA used the
name Ziebart. (Id. at 7.) Importantly, neither party
could locate and produce Schedule 2.1 during the course of
this litigation, and the parties disagree about its contents.
to the License Agreement, defendant was permitted to license
and use specified trademarks, service marks, and trade names
owned by plaintiff for sale to automobile manufacturers.
(Dkt. 56-4 at 3- 4.) The intellectual property to be licensed
to defendant was supposed to be attached to the License
Agreement as Exhibit A, but neither party provided it to the
parties also entered into a Supply Agreement, which generally
made defendant the exclusive manufacturer of Formula Q, among
other products, for sale by plaintiff. (Dkt. 56-6 at 3.) That
agreement reserved plaintiff's right to control the
quality of the chemical it purchased from defendant, reject
shipments that did not meet its standards, and find an
alternative supplier if necessary. (Id.)
2011, after the parties' business relationship had
deteriorated, plaintiff learned defendant's website was
potentially infringing several of plaintiff's trademarks.
(Dkt. 56 at 16; Dkt. 56-16 at 7.) The parties settled this
dispute in 2012, and entered into a Settlement Agreement.
(Dkt. 95-2.) The Agreement prohibited defendant from using
plaintiff's trademarks on its website. (Id.)
Subsequently, in 2015, plaintiff learned defendant was using
the name Ziebart in the meta tags of its website. Plaintiff
brings a breach of contract claim alleging that the
references to its trademarks in the meta tags of
defendant's website constitute a breach of the Settlement
Defendant's Motion for Summary Judgment
asks the Court to grant summary judgment on three issues.
First, it seeks a determination that it purchased the
trademark for Formula Q in the 1996 APA. Second, it moves the
Court to affirm that since it owns the trademark for Formula
Q, it cannot be subjected to liability for trademark
infringement. Finally, it seeks judicial cancellation of
Ziebart's 2015 application for the Formula Q trademark.
responds by arguing that it never sold the Formula Q
trademark to defendant, and that defendant's motion is
based on a misreading of the documents surrounding
plaintiff's 1996 sale of ZPG to defendant.
trademark is “any word, name, symbol, or device . . .
used by a person . . . to identify and distinguish his or her
goods, including a unique product, from those manufactured or
sold by others and to indicate the source of the goods . .
.” 15 U.S.C. § 1127. The Lanham Act protects a
trademark owner from infringement, regardless of whether the
trademark is registered with the Patent and Trademark Office.
Fuji Kogyo Co., Ltd. V. Pacific Bay Int'l.,
Inc., 461 F.3d 675, 682-83 (6th Cir. 2006). It does so
in order to prevent customer confusion and ensure the quality
of goods in the market by prohibiting ...