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2:08-cv-10467-GCS-MKM Doc # 151 Filed 05/18/09 Pg 1 of 14 Pg ID 4066
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`TENNECO AUTOMOTIVE
`OPERATING COMPANY INC.,
`
`Plaintiff,
`
`vs.
`
`KINGDOM AUTO PARTS and
`PRIME CHOICE AUTO PARTS,
`
`Defendants.
`
`_____________________________/
`
`Case No. 08-CV-10467
`HON. GEORGE CARAM STEEH
`
`ORDER DENYING DEFENDANTS’ MOTION TO DISMISS OR FOR
`SUMMARY JUDGMENT ON PLAINTIFF’S TRADE DRESS INFRINGEMENT
`CLAIMS AS MOOT [DOC. 87]; GRANTING DEFENDANTS’ MOTION FOR
`SUMMARY JUDGMENT OF CLAIMS BASED ON COPYING OF TENNECO’S
`WARNING LABEL AS PREEMPTED BY FEDERAL COPYRIGHT LAW
`[DOC. 85]; GRANTING DEFENDANTS’ MOTION FOR SUMMARY
`JUDGMENT OF CLAIMS ON THE BASIS OF UNAUTHORIZED USE
`OF PLAINTIFF’S “QUICK-STRUT’ MARKS [DOC. 86]; AND GRANTING
`DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT ON
`DEFENDANTS’ DECLARATORY JUDGMENT COUNTERCLAIM [DOC. 119]
`
`Defendants Kingdom Auto Parts and Prime Choice Auto Parts (collectively "KAP")
`
`filed four separate motions for summary judgment, which were heard by the Court on
`
`March 30, 2009. For the reasons set forth below, KAP's Motion to Dismiss or for Summary
`
`Adjudication on Plaintiff’s Trade Dress Infringement Claims is DENIED as MOOT; Motion
`
`for Summary Adjudication of Claims Based on Copying of Tenneco’s Warning Label as
`
`Preempted by Federal Copyright Law is GRANTED; Motion for Summary Adjudication of
`
`Claims on the Basis of Unauthorized Use of Plaintiff’s “Quick-Strut” Marks is GRANTED;
`
`and Motion for Summary Judgment on Defendants’ Declaratory Judgment Counterclaim
`
`is GRANTED.
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`

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`I. Background
`
`Tenneco manufactures and distributes automotive shock absorbers and struts as
`
`a domestic corporation situated in Illinois. KAP sells automotive struts from its location in
`
`Ottawa, Ontario. Tenneco’s Second Amended Complaint alleges KAP is manufacturing
`
`and selling struts under the name "Quick-Strut" in violation of Tenneco's "Quick-Strut"
`
`mark. Tenneco further accuses KAP of manufacturing and selling struts that are engraved
`
`with Tenneco’s unique product numbers, without authorization. Tenneco alleges a Lanham
`
`Act claim of trademark infringement, 15 U.S.C. § 1114, based on KAP’s use of the “Quick-
`
`Strut” Registered Mark, which use is likely to cause confusion or mistake among
`
`customers. The Second Amended Complaint also alleges a Lanham Act claim of false
`
`designation of origin, 15 U.S.C. § 1125, based on KAP’s unauthorized use of the stamped
`
`product number and the “Quick-Strut” mark, a copyright infringement claim, 17 U.S.C. §
`
`501, based on KAP's alleged unauthorized copying of Tenneco’s "Quick-Strut Installation
`
`Instructions", a Lanham Act claim of false or misleading advertising, 15 U.S.C. § 1125,
`
`based on KAP’s alleged copying of Tenneco’s warning label, and state law claims of unfair
`
`competition, violation of the Michigan Consumer Protection Act (MCPA), M.C.L. §§
`
`445.901, et seq., and tortious interference with prospective economic advantage.
`
`Defendants have filed the following motions: Motion to Dismiss or for Summary
`
`Adjudication on Plaintiff’s Trade Dress Infringement Claims; Motion for Summary
`
`Adjudication of Claims Based on Copying of Tenneco’s Warning Label as Preempted by
`
`Federal Copyright Law; Motion for Summary Adjudication of Claims on the Basis of
`
`Unauthorized Use of Plaintiff’s “Quick-Strut” Marks; and Motion for Summary Judgment on
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`Defendants’ Declaratory Judgment Counterclaim.
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`2
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`II. Motion for Summary Judgment - Trade Dress
`
`Tenneco’s Second Amended Complaint accuses defendants of attempting to pass
`
`off their strut assemblies as those of Tenneco, based on the strut assemblies being
`
`confusingly similar in appearance to those of Tenneco:
`
`46.
`
`The willful nature of Defendants’ attempt to pass off their Struts as genuine
`Tenneco struts is further evidenced by:
`
`a)
`
`b)
`
`c)
`
`the fact that the Defendants’ struts are manufactured with a glossy
`black color that is identical to the unique glossy black color utilized by
`Tenneco on its strut assemblies in the aftermarket...
`
`Defendants’ Strut Assemblies have the exact same boot design and
`bumper design as the unique and proprietary designs used by
`Tenneco.
`
`Defendants’ sales personnel show Defendants’ Strut Assemblies to
`prospective customers without the packaging. Defendants’ Strut
`Assemblies do not indicate the country of origin (China), and are
`confusingly similar in appearance to Tenneco’s “Quick-Strut” strut
`assemblies.
`
`Defendants move to dismiss any claim of trade dress that plaintiff may be asserting,
`
`arguing that plaintiff has failed to state a claim. Trade dress is described as the “design or
`
`packaging of a product” which has acquired a “secondary meaning” sufficient “to identify
`
`the product with its manufacturer or source.” General Motors Corp. v. Lanard Toys, Inc.,
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`468 F.3d 405, (6th Cir. 2006) (quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532
`
`U.S. 23, 28 (2001)).
`
`Plaintiff makes it clear in its response and at oral argument that it is not pursuing a
`
`claim of trade dress infringement. Instead, plaintiff makes allegations like those quoted
`
`above to show that defendants intended to make their strut assemblies confusingly similar
`
`in appearance to plaintiff’s products. Such evidence supports plaintiff’s Lanham Act claims
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`of false designation of origin and false or misleading advertising. It is plaintiff’s contention
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`that defendants perpetrate a fraud on the public when they present their struts to potential
`
`3
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`

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`customers in unpackaged form, coupled with their duplication of the struts’ appearance,
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`down to the use of Tenneco’s unique product numbers.
`
`Because plaintiff has disclaimed any trade dress claim, defendants’ motion to
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`dismiss is denied as moot. The Court does note that the particular allegations of copying
`
`in paragraph 46 quoted above relate to the copying of things, i.e. glossy black color and
`
`boot and bumper design, not protected by an intellectual property right. As such, public
`
`policy favors copying such unprotected items. TrafFix Devices, Inc. v. Marketing Displays,
`
`Inc., 523 U.S. 23, 29 (2001); Gray v. Meijer, Inc., 295 F.3d 641, 650 (6th Cir. 2002).
`
`III. Motion for Summary Judgment - Preemption
`
`Tenneco’s Second Amended Complaint avers, in Count Four (False or Misleading
`
`Advertising in Violation of Lanham Act), as follows:
`
`74.
`
`Defendants have used, and are continuing to use in commercial advertising
`or promotion in interstate commerce, a copy of Tenneco’s warning label
`which depicts the process for: (1) retracting the piston into the unassembled
`strut; and (b) locking the piston into place with a t-bolt, despite the fact that
`Defendants’ Struts do not perform this function.
`
`In Count Six (Violation of Michigan’s Consumer Protection Act), the Complaint avers:
`
`91.
`
`Defendants’ unauthorized use of Tenneco’s “Quick-Strut” Marks, unique
`product numbers, copying of Tenneco’s “QUICK-STRUT INSTALLATION
`INSTRUCTIONS,” representations of compliance with OEM specifications
`and copying of Tenneco’s warning label (despite lack of corresponding
`product feature) constitute “[u]nfair, unconscionable, or deceptive methods,
`acts or practices in the conduct of trade or commerce” in violation of
`Michigan’s Consumer Protection Act, M.C.L. § 445.903.
`
`Defendants move for summary judgment on the basis that any right sought to be
`
`protected, which is the equivalent to any of the exclusive rights within the general scope
`
`of copyright, are governed exclusively by the Copyright Act, 17 U.S.C. § 301(a).
`
`Defendants contend that Tenneco’s Lanham Act and Michigan Consumer Protection Act
`
`claims are based on allegations of copying, and are therefore preempted by federal
`
`copyright law.
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`4
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`Tenneco’s position is that it is not alleging a violation of the Copyright Act in Count
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`Four or Count Six, and that it only uses the word “copying” to show that defendants acted
`
`willfully in attempting to pass off their strut assemblies as genuine Tenneco products,
`
`which, it claims, would be in violation of the Lanham Act and Michigan’s Consumer
`
`Protection Act. However, as noted above, public policy favors copying, unless an item is
`
`protected by an intellectual property right such as a patent or copyright. TrafFix Devices,
`
`Inc. v. Marketing Displays, Inc., 523 U.S. at 29; Gray v. Meijer, Inc., 295 F.3d at 650.
`
`Permitting a plaintiff to use evidence of copying to support an element of a cause of action
`
`indirectly, where they would not be permitted to maintain a direct cause of action because
`
`of preemption under the Copyright Act, goes against public policy.
`
`Count Four of the Second Amended Complaint, which alleges false or misleading
`
`advertising in violation of the Lanham Act, is based entirely on defendants’ copying
`
`plaintiff’s warning label and pledge. The Court finds this claim to be preempted by the
`
`Copyright Act, 17 U.S.C. § 301(a).
`
`Count Six alleges violation of Michigan’s Consumer Protection Act due in part to the
`
`copying of plaintiff’s installation instructions and warning label. Plaintiff also bases its
`
`MCPA claim on the unauthorized use of its “Quick-Strut” Mark and unique product
`
`numbers. To the extent that plaintiff alleges copying, this claim is also preempted by the
`
`Copyright Act. Due to the holdings made below, the Court finds that plaintiff does not have
`
`a protectable interest in its product numbers, and there has been no infringement of its
`
`Quick-Strut marks. Therefore, defendants’ motion for summary judgment that the
`
`allegations of copying in Counts Four and Six are preempted by the Copyright Act is
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`GRANTED.
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`5
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`IV. Motion for Summary Judgment - Trade Mark Infringement
`
`In the General Allegation section of Tenneco’s Second Amended Complaint,
`
`Tenneco makes allegations relating to the unauthorized use of its Quick-Strut marks by
`
`defendants.
`
`29.
`
`30.
`
`31.
`
`Defendants have and continue to manufacture, distribute, export, sell and/or
`offer for sale strut assemblies (“Defendants’ Strut Assemblies”) using an
`unauthorized reproduction, copy and/or counterfeit of Tenneco’s “Quick-
`Strut” Marks in the United States.
`
`Among other things, Defendants’ sales personnel refer to Defendants’ Strut
`Assemblies as “Quick-Strut” products when calling on customers located
`within the United States.
`
`Among other things, Defendants caused to be published, or knew or had
`reason to know that third parties would publish, a price list using Tenneco’s
`“Quick-Strut” Marks and unique product numbers in association with
`Defendants’ Strut Assemblies in and around the greater-Chicago, Illinois
`area. See Exhibit 2. (Exhibit 2 is the Declaration of David Drake, which has
`an attached price list with “Kingdom Struts” in the heading and the words
`“Quick Strut” as the part description.)
`
`Defendants contend that the Lanham Act does not reach conduct in Canada by a
`
`
`
`Canadian company. In Steele v. Bulova Watch Co., 344 U.S. 280, 283, 286 (1952), the
`
`Supreme Court interpreted the jurisdictional scope of the Lanham Act, stating it extends to
`
`“all commerce which may lawfully be regulated by Congress.” The Court concluded, “a
`
`United States district court has jurisdiction to award relief to an American corporation
`
`against acts of trademark infringement and unfair competition consummated in a foreign
`
`country by a citizen and resident of the United States.” Id. at 281.
`
`This Court previously addressed the issue of jurisdiction over Tenneco’s Lanham
`
`Act claim, finding that the Lanham Act claim survived a Fed. R. Civ. P. 12(b)(1) challenge
`
`to the Court’s subject matter jurisdiction. The Court was careful to make clear that it was
`
`not addressing a challenge under Rule 12(b)(6) for failure to state a claim at that time.
`
`(June 17, 2008 Order, Doc. 40).
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`6
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`The only clear use of Quick-Strut” by either defendant was at a trade show held in
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`Toronto, Ontario, Canada in November 2007. Defendants describe this one-time
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`occurrence as inadvertent and discontinued. In an attempt to show that defendants’ use
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`of the Tenneco mark was on-going, and wide-reaching, Tenneco points to web pages
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`related to the Toronto trade show, which display Tenneco’s Quick-Strut marks. Tenneco
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`claims that defendants are responsible for creating this display, which is accessible by
`
`anybody over the Internet. The exhibit is supported by the declaration of Lisabeth Coakley,
`
`one of Tenneco’s counsel. The web page appears on the website of automechanica
`
`CANADA, the sponsor of the Toronto trade show. There is no indication that defendants
`
`were responsible for any of the material appearing on the website. It is plaintiff’s burden
`
`to prove that the use of a mark is attributable to defendants, and in this case there are only
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`inferences, which are too weak to sustain plaintiff’s burden.
`
`Defendants next argue that they have never referred to their StrutTEK Strut
`
`Assemblies as “Quick-Strut” in the United States. Neither defendant employs any sales
`
`personnel in the United States. Defendant Kingdom Auto Parts is represented through
`
`independent sales companies, such as Jim Dolmetsch’s company. Tenneco provides the
`
`declaration of Steven Siegel to support its claim that defendants “used” Tenneco’s marks.
`
`Siegel states that James Dolmetsch referred to the StrutTEK strut assembly by the term
`
`“Quick Strut”. Mr. Dolmetsch appeared on July 7, 2008 at the evidentiary hearing before
`
`this Court, and testified that he has “absolutely not” misidentified the StrutTEK mark as a
`
`product of Monroe or a Quick Strut. Mr. Siegel failed to appear at the evidentiary hearing
`
`and could not defend his declaration under cross-examination. There is no credible
`
`evidence to refute Mr. Dometsch’s testimony.
`
`Defendants maintain that they had no involvement in the Auto-Wares Price Sheet,
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`referred to in paragraph 31 of the Second Amended Complaint. Tenneco offers the Drake
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`Declaration in support of the price sheet. At paragraph 6, the Drake Declaration states, “.
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`. . I saw what appeared to be a Kingdom Auto Part’s price sheet.” Scott Grill, Vice
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`President of Auto-Wares, said in his declaration that the price list was produced by Auto-
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`Wares’ pricing department, without any involvement or knowledge of either defendant.
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`Furthermore, at the request of Gary Calagoure, who is the President of both defendants,
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`Grill pulled the price list and replaced it with a new price list making reference to “StrutTEK”.
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`(Grill Declaration at ¶¶ 3, 4).
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`Both defendants are Canadian corporations. The only clear use of the mark by
`
`defendants took place in Canada. A Lanham Act claim, therefore, cannot be based on
`
`defendants’ use of the Quick Strut marks. Summary judgment is GRANTED as to Count
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`One, which alleges trademark infringement based on unauthorized use of the Quick Strut
`
`marks. Summary judgment is GRANTED IN PART as to Count Two, to the extent that it
`
`alleges a violation of the Lanham Act based on the unauthorized use of the Quick-Strut
`
`marks. Summary judgment is GRANTED IN PART as to Count Five, tortious interference
`
`with prospective economic advantage, to the extent it alleges unauthorized use of the
`
`Quick-Strut marks. Summary judgment is GRANTED IN PART as to Count Six, violation
`
`of Michigan Consumer Protection Act, to the extent it alleges unauthorized use of the
`
`Quick-Strut marks. Summary judgment is GRANTED IN PART as to Count Seven, which
`
`alleges common law unfair competition and trademark infringement, to the extent it is
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`based on the allegation of use of the Quick-Strut marks.
`
`V. Motion for Summary Judgment - Counterclaim
`
`Defendants filed a counterclaim for declaratory judgment that Tenneco’s product
`
`numbers do not qualify for protection as trademarks. Defendants have now brought a
`
`motion for summary judgment on their counterclaim. Tenneco uses six-digit part numbers,
`
`an example being the Monroe Quick-Strut having the number 171994. Tenneco contends
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`8
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`that its customers associate its product numbers with a single source, that being Tenneco,
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`and that its product numbers have acquired secondary meaning. Defendants, on the other
`
`hand, argue that the product numbers merely describe a particular part, and are not
`
`inherently distinctive such that they would be entitled to trademark protection.
`
`It is true that the numbers making up the six-digit product number contain descriptive
`
`information. The “1" in the first position designates a strut assembly, the “71" in the second
`
`and third positions designates the particular model of strut, in this case a “Sensa-Trac”
`
`strut. The “994" in the last three positions designates the particular product application, in
`
`this case a 2002 Ford Escort. (Bill Dennie Declaration, May 12, 2008, ¶¶ 11, 12 [Doc. 27-
`
`3]).
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`Tenneco has a history of attempting to register its six-digit numeric product numbers
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`with the U.S. Patent and Trademark Office (“PTO”). On June 16, 2008, the Trademark
`
`Examining Attorney issued an Office Action refusing registration of “171994" on the
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`following ground:
`
`Registration is refused because the applied-for-mark, as used on the
`specimen of record, merely identifies a model number; it does not function
`as a trademark to identify and distinguish applicant’s goods from those of
`others and to indicate the source of applicant’s goods.
`
`Tenneco submitted a Response to Office Action on July 3, 2008, which included the 27
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`Customer Declarations that have been submitted to the Court in support of Tenneco’s
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`motion for preliminary injunction. On July 31, 2008, the PTO issued a second Office Action
`
`wherein the Trademark Examining Attorney maintained the refusal to register Tenneco’s
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`six-digit numeric product numbers on the ground they do not function as trademarks.
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`On February 11, 2009, the PTO determined that Tenneco’s product numbers are
`
`inherently distinctive and approved the product numbers for publication and registration.
`
`A Notice of Publication was issued on March 4, 2009, and the mark was Published for
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`9
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`Opposition on March 24, 2009. However, the PTO subsequently determined that the
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`examining attorney erroneously approved the application for publication and erroneously
`
`encouraged applicant to withdraw its claim of acquired distinctiveness. The Trademark
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`Examiner then refused to register Tenneco’s product number as a mark because it “merely
`
`identifies a model number; [it does not function as a trademark to identify and distinguish
`
`applicant’s goods from those of others and to indicate the source of applicant’s goods].”
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`The PTO withdrew Tenneco’s nine applications for the 171 series of part numbers
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`from publication. On April 6, 2009, the PTO issued Office Actions which reinstated the
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`previously issued refusals to register the part numbers for failure to function as trademarks:
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`“The evidence in the record overwhelmingly points to use of the applicant’s mark as a
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`model or part number. Therefore, registration must be refused on the Principal Register.”
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`The PTO had the following comment about the 27 Declarations Tenneco submitted
`
`as evidence of secondary meaning:
`
`Applicant’s declarations are from dealers and distributors of auto parts, but
`evidence in the record shows that ordinary retail customers purchase strut
`assemblies too, and these purchasers may be less aware of part numbers,
`and more interested in the brand names like QUICK STRUT and SENSA-
`TRAC that applicant uses on its goods.
`
`Tenneco admits that its product numbers are descriptive because they are readily
`
`decoded into information regarding type of product. (Brief in Support of Tenneco’s Rule
`
`60 Motion, p. 15 [Doc. 111], filed Nov. 24, 2008). However, Tenneco also contends that
`
`its product numbers have acquired secondary meaning. In order to receive trademark
`
`protection, the product numbers must be shown to have acquired secondary meaning.
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`R&B, Inc. V. Needa Parts Mfg., Inc., 418 F.Supp.2d 684, 699-700 (E.D. Pa. 2005). To
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`determine whether secondary meaning exists, the Court looks to factors including:
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`(1) direct consumer testimony; (2) consumer surveys; (3) exclusivity, length,
`and manner of use; (4) the amount and manner of advertising; (5) the
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`amount of sales and number of customers; (6) established place in the
`market; and (7) proof of intentional copying.
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`Herman Miller, Inc. v Palazetti Imports and Exports, Inc., 270 F.3d 298, 311-312 (6th Cir.
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`2001).
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`Tenneco sells its Quick-Strut assemblies to aftermarket auto parts warehouses,
`
`jobbers, installers, and retailers. Tenneco’s customers then sell the Quick-Strut assemblies
`
`to the general public, who install the assemblies on their cars. Tenneco submits 27
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`Declarations from among its customers, who testify that they associate Tenneco’s product
`
`numbers with Tenneco and Tenneco’s Monroe brand. Tenneco argues that where the
`
`relevant buyer class consists of both dealers and ultimate consumers, the state of mind of
`
`the dealers is important, and can create a genuine issue of material fact to prelude
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`summary judgment. Thomas & Betts Corp. V. Panduit corp., 138 F.3d 277, 294 (7th Cir.
`
`1998); 2 McCarthy On Trademarks § 15:46.
`
`Defendants object to the 27 Declarations because they are unsworn witness
`
`statements, and therefore should not be considered by the Court. Federal statute provides
`
`that unsworn declarations must be made on penalty of perjury. 28 U.S.C. § 1746. Rule
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`56(e) provides that evidence in support or opposition of a motion for summary judgment
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`be presented in the form of an affidavit, and therefore sworn to, and made on personal
`
`knowledge. In the case of the 27 Declarations, neither of these safeguards are present.
`
`The statements, which are standardized and identical, state that “I hereby declare that all
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`statements made herein of my own knowledge are true and that all statements made on
`
`information and belief are believed to be true.” Witness statements must be made on
`
`personal knowledge, and not on information and belief. The Court is concerned that the
`
`declarations are not notarized, are not clearly based on personal knowledge, and that
`
`defendants’ attempts to conduct discovery into the unsworn witness statements were
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`thwarted due to the alleged disappearance of documents and electronically stored
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`information. Under the circumstances surrounding the 27 Declarations, the Court will not
`
`consider them in making its determination with regard to defendant’s motion for summary
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`judgment on its counterclaim.
`
`Tenneco submits the Declaration of Richard Alameddine, Vice President of
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`Marketing for Tenneco, in support of its opposition to the motion for summary judgment on
`
`defendants’ counterclaim. Defendants object to the Alameddine Declaration for several
`
`reasons, including that it presents sales and advertising data that was not turned over by
`
`Tenneco within the time parameters dictated by the Court’s discovery order dated
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`December 18, 2008. Defendants also allege that the Alameddine Declaration contains
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`improper expert opinion testimony that should be excluded. Mr. Alameddine purports to
`
`give his opinion on what is occurring in the minds of consumers who observe Tenneco’s
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`part numbers. (Alameddine Decl. ¶¶ 5, 12). The Court will not consider the opinion
`
`testimony in paragraphs 5 and 12, but will otherwise accept the Alameddine Declaration
`
`and consider it along with all the other evidence in the case.
`
`Tenneco avers that it has continuously used its product numbers beginning with the
`
`prefix “71" to distinguish its Monroe Sensa-Trac brand struts from competitors’ products
`
`since 1983. In 2003, Tenneco introduced its Monroe Quick-Strut assemblies, and added
`
`the numeral “1" to the “71" prefix, so that it now reads “171". Tenneco uses its product
`
`numbers on product packaging, sales catalogs, sell sheets, price lists and promotional
`
`rebates.
`
`The six-digit product number appears on a white label in a large, bold font, to
`
`distinguish it from other numbers on the packaging and to identify what product is contained
`
`in the package. The number always appears with Tenneco’s Monroe mark on the package.
`
`Tenneco argues that the presence of multiple marks appearing together does not diminish
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`the significance of Tenneco’s product number as a source identifier. In addition, Tenneco
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`argues that the product number is the only way to determine that the product inside is a
`
`Quick-strut assembly. At least as it pertains to the end consumer, the use of multiple
`
`marks appearing together suggests that the product number has a different purpose than
`
`identifying the product as belonging to Tenneco. The Monroe mark identifies the source
`
`of the product, and the number identifies the type of product contained inside the package.
`
`Tenneco explains that it has spent over $1.1 million printing and distributing
`
`materials which include its product numbers, to over 75,000 potential and existing
`
`customers. However, there is no evidence that Tenneco’s advertising is directed to
`
`connecting its product numbers with its identification as the source of those products.
`
`Tenneco argues that defendants intentionally copied the product numbers by having
`
`them stamped on the strut assemblies, and that such intentional copying is evidence of
`
`secondary meaning. Esercizio v. Roberts, 944 F.2d 1235, 1239 (6th Cir. 1991).
`
`Defendants duplicated Tenneco’s Quick-Strut assembly exactly, including having
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`Tenneco’s product numbers stamped directly onto the parts. However, this type of
`
`wholesale copying would only be relevant in a trade dress case where the plaintiff was
`
`seeking protection of intellectual property rights in the look or overall appearance of the
`
`product. Esercizio is a trade dress case. Tenneco is not claiming trade dress infringement,
`
`therefore intentional copying is not relevant.
`
`There is no clear evidence in this case supporting Tenneco’s claim to a protectible
`
`interest in its product numbers. Defendants’ expert Kenneth Enborg has opined that:
`
`Tenneco’s six-digit part numbers do not qualify as trademarks, but instead
`are descriptors that use a numeric code separately assigned to each strut
`assembly to describe its (i) product type and (ii) application to a particular
`vehicle chassis. (Enborg Decl., ¶ 28).
`
`13
`
`

`
`2:08-cv-10467-GCS-MKM Doc # 151 Filed 05/18/09 Pg 14 of 14 Pg ID 4079
`
`The evidence supports Mr. Enborg opinion. In addition, while not binding on this Court, the
`
`fact that the PTO has refused to register Tenneco’s product numbers as trademarks
`
`because they do not function to identify and distinguish Tenneco’s goods from those of
`
`others is persuasive. The Court finds that the product numbers have not acquired
`
`secondary meaning such that they function as a source identifier for Tenneco’s strut
`
`assemblies. Because the Court finds that product numbers are not entitled to trademark
`
`protection, use of them by defendants is not prohibited.
`
`Summary judgment is therefore GRANTED on defendants’ counterclaim which
`
`seeks declaratory judgment of no trademark protection in Tenneco’s product numbers.
`
`This finding that Tenneco’s product numbers are not entitled to trademark protection means
`
`that summary judgment is granted in favor of defendants on Counts Two, Five, Six and
`
`Seven. The only count remaining in the Second Amended Complaint is Count Three,
`
`alleging copyright infringement due to defendants’ copying of Tenneco’s installation
`
`instructions.
`
`Dated: May 18, 2009
`
`s/George Caram Steeh
`GEORGE CARAM STEEH
`UNITED STATES DISTRICT JUDGE
`
`CERTIFICATE OF SERVICE
`
`Copies of this Order were served upon attorneys of record on
`May 18, 2009, by electronic and/or ordinary mail.
`
`s/Marcia Beauchemin
`Deputy Clerk
`
`14

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