United States District Court, E.D. Michigan, Southern Division
AWGI, L.L.C.; Atlas Logistics, Inc.; and Atlas Van Lines, Inc. Plaintiffs,
Atlas Trucking Company, L.L.C.; Atlas Logistics, L.L.C.; and Eaton Steel Bar Company, Inc., Defendants.
OPINION AND ORDER REGARDING MOTIONS IN
F. Cox United States District Judge.
trademark infringement case will proceed to a bench trial.
Plaintiffs have filed two motions in limine, (ECF
Nos. 120, 121), and Defendants have filed six motions in
limine. (ECF No. 123). For the reasons below, the Court
will (1) grant Plaintiffs' motion to preclude Defendants
from calling Plaintiffs' counsel to testify at trial; (2)
deny without prejudice Plaintiffs' motion to preclude
Defendants from reading Plaintiffs' corporate
designee's deposition into the record; and (3) deny
a trademark case about the use of a stylized “A”
and the terms “Atlas, ” “Atlas Logistics,
” and “Atlas - - the Agent's Van Line.”
The plaintiffs are Atlas Van Lines (which is primarily a
household moving company), Atlas Logistics, Inc. (a logistics
management service) (“Plaintiff Logistics”), and
AWGI, LLC (the holding company for Van Lines and Plaintiff
Logistics). The defendants are Eaton Steel Bar Company (a
steel manufacturer) and its affiliated trucking and logistics
companies, Atlas Trucking Company, LLC, and Atlas Logistics,
LLC (“Defendant Logistics”).
alleged four counts of trademark infringement under the
Lanham Act, two counts of trademark counterfeiting under the
Lanham Act, and one count of common law unfair competition.
Defendant Logistics counterclaimed against Plaintiff
Logistics and AWGI for one count of unfair competition and
false designation of origin under the Lanham Act, and one
count of common law unfair competition. Defendant Logistics
also seeks a declaratory injunction, pursuant to § 1119
of the Lanham Act, stating that Plaintiffs' trademark in
“Atlas Logistics” was improperly registered and
directing the Commission of Patents and Trademarks to cancel
the Court's rulings on the parties's cross-motions
for summary judgment, (ECF Nos. 90, 106), these are the
claims that will proceed to trial:
Type of Claim
Mark at Issue
Stylized A Logo
Atlas--The Agents' Van Line”
Type of Claim
Mark at Issue
Unfair Competition and False Designation of Origin
Dec. Inj. re Cancelling Plaintiffs' Trademark
parties stipulated to a bench trial and withdrew all requests
for any type of monetary relief. (ECF No. 111). Whoever
prevails at trial will receive only injunctive relief.
November 8, 2019, the parties filed their motions in
limine. (ECF Nos. 120, 121, 123). Generally, the
Plaintiffs would like (1) to bar Defendants from calling
Plaintiffs' lead trial counsel to testify, and (2) to
prevent Defendants from reading a deposition into evidence
because the deponent will testify live at trial. Defendants
would like (1) to exclude any evidence regarding the
public's perception of Plaintiffs' marks; (2) to
exclude any evidence regarding “actual
confusion”; (3) to exclude evidence regarding
Plaintiffs' advertising expenditures; (4) to preclude
Plaintiffs from asserting that they haul steel; (5) to
exclude the expert testimony of Krista Holt; and (6) to
exclude a magazine article regarding an award Plaintiffs
allegedly won. Each side responded to the other's motions
(ECF Nos. 129, 130, 131), and filed replies in support of
their own motions. (ECF Nos. 136, 137, 139). The Court heard
oral arguments on these motions on December 12, 2019.
Motions in Limine Generally
are dynamic, and a district court should grant a motion
in limine “only when that evidence is clearly
inadmissible on all potential grounds.” Palmer v.
Allen, 2017 WL 218077 at*1 (E.D. Mich. Jan. 19, 2017)
(quoting Ind. Ins. Co. v. GE, 326 F.Supp.2d, 844,
846 (N.D. Ohio 2004)). In cases where that high standard is
not met, “evidentiary rulings should be deferred until
trial so that questions of foundation, relevancy, and
potential prejudice may be resolved in a proper
context.” Id. Denial of a motion to exclude
evidence in limine does not necessarily mean that
the Court will admit the evidence at trial. See Luce v.
United States, 469 U.S. 38, 41 (1984). “[E]ven if
nothing unexpected happens at trial, the district judge is
free, in the exercise of sound judicial discretion, to alter
a previous in limine ruling.” Id. at
have filed two motions in limine: a motion to
preclude Defendants from calling Plaintiffs' trial
counsel, Mark Warzecha, to testify at trial (ECF No. 120);
and a motion to preclude Defendants from reading into
evidence the deposition testimony of Plaintiffs'
corporate designee Ryan McConnell, who will testify live at
trial (ECF No. 121).
Motion Regarding Plaintiffs' Counsel
have indicated that they may call Plaintiffs' counsel,
Mark Warzecha, to testify at trial. Plaintiffs object,
arguing that Defendants cannot meet the required showing for
compelling a party's attorney to testify and that
requiring counsel to testify implicates his ethical
considering whether to compel a party's attorney to
testify at trial, courts in the Sixth Circuit apply the
Eighth Circuit's “Shelton test.”
See Alomari v. Ohio Dep't of Public Safety, 626
Fed.App'x 558, 573 (6th Cir. 2015) (“This circuit
has adopted the so-called ‘Shelton rule'.
. .”); Under the Shelton test, a party seeking
testimony from an attorney must show that (1) no other means
exist to obtain the information at issue; (2) the information
sought is relevant and non-privileged; and (3) the
information is crucial to the case. Shelton v. American
Motors Corp., 805 F.2d 1323, 1327 (8th Cir. 1986);
see also Gazvoda v. Secretary of Homeland Security,
2018 WL 1281756 at *6-*7 (E.D. Mich. 2018) (applying
Shelton in a ruling on a motion in limine);
Commercial Law Corp., P.C. v. Fed. Deposit Ins.
Corp., 2015 WL 7450149 at *5-*6, n.7 (E.D. Mich. 2015)
argue that counsel's testimony is necessary because he
filed and prosecuted the Plaintiffs' “Atlas
Logistic” trademark at the Patent and Trademark Office.
In the application, counsel attested that Plaintiffs had
first used this mark in commerce “at least as early as
December 3, 2012.” (ECF No. 137, PageID 4521).
Defendants allege that they used the “Atlas
Logistics” mark at least as early as September 2005.
After Defendants argued that the application indicated that
Plaintiffs had begun using the “Atlas Logistics”
mark after Defendants' first use, “Plaintiffs
reversed course and claimed that the December 3, 2012 date. .
. was a ‘scrivener's error.'” (ECF No.
130, PageID 4411). Defendants seek to call counsel to
question him about that scrivener's error because he was
Court concludes that no part of the Shelton test is
met. First, counsel's possible testimony regarding
Plaintiffs' first use of “Atlas Logistics, ”
and the information contained in the trademark application,
is likely subsumed by the testimony of Plaintiffs'
executives, who can testify as to whether the date on the
application is correct. Second, the disclosure of how counsel
obtained the information he placed on the application and
what that information was-necessary predicates to the
relevancy of counsel's testimony regarding the
scrivener's error-would likely implicate privileged
client communications. Third, testimony regarding this
alleged scrivener's error is not crucial to the case. The
relevant issue is which party first used “Atlas
Logistics” or its legal equivalent. The accuracy of the
trademark application is not dispositive of this issue, and
the applicable date can be established using other testimony.
Because Defendants have not established the Shelton
factors, the Court will grant Plaintiffs' first motion
in limine. (ECF No. 120).
Motion Regarding Reading Deposition into Record
have indicated that they would like to read into the record
portions of the transcript from the deposition of
Plaintiffs' corporate representative, Ryan McConnell.
Plaintiffs object, arguing that such a reading is unnecessary
because McConnell will be testifying live at trial.
Defendants respond that they want to ensure that
McConnell's testimony on behalf of the company-rather
than his testimony as an individual-is in the record. The
parties agree that the Court has “broad
discretion” to decide this motion. (ECF No. 121, PageID
4184); (ECF No. 129, PageID 4404).
parties appear to agree more than they disagree about this
issue. Plaintiffs admit that, as their Vice President of
Strategic Planning and corporate designee, McConnell's
testimony binds them. (ECF No. 138, PageID 4537). And
Plaintiffs concede that McConnell's deposition may be
used for impeachment purposes and that, during closing
arguments, Plaintiffs may read any portion of the transcript
that has been admitted into evidence. Thus, it appears that
the only dispute is whether the Defendants can, as a matter
of right, enter the deposition into evidence and read it
during their opening statement.
federal district court recently grappled with this precise
issue and outlined the appropriate framework under which to
evaluate this motion:
Whether to admit deposition testimony in evidence at trial
rests within the district court's broad discretion.
Lear v. Equitable Life Assurance Soc'y, 798 F.2d
1128, 1135 (8th Cir. 1986); accord Gonzalez Prod. Sys.,
Inc. v. Martinrea Int'l Inc., 310 F.R.D. 341, 344
(E.D. Mich. 2015). It also is within a district court's
“broad discretion to conduct [a] trial in an orderly
and efficient manner, and to choose among reasonable
evidentiary alternatives” to ensure the fair and
complete presentation of evidence. McCoy v. Augusta
Fiberglass Coatings, Inc., 593 F.3d 737, 747 (8th Cir.
2010) (internal quotation marks omitted) (reviewing
evidentiary rulings in the context of Federal Rule of
Evidence 106); see also Fed. R. Evid. 106 advisory
committee's note (explaining that Rule 106 “is an
expression of the rule of completeness” and “is
substantially a restatement” of the analogous rule
applicable to depositions pursuant to Federal Rule of Civil
Procedure 32(a)). A district court may exclude otherwise