Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA298589
`ESTTA Tracking number:
`07/31/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91188693
`Defendant
`Tenneco Automotive Operating Company Inc..
`LISABETH H. COAKLEY
`HARNESS, DICKEY & PIERCE, P.L.C.
`5445 CORPORATE DRIVE, #200
`TROY, MI 48098
`UNITED STATES
`docketingtm@hdp.com
`Other Motions/Papers
`Lisabeth H. Coakley
`coakley@hdp.com, tjcomparoni@hdp.com
`/lhc/
`07/31/2009
`91188693 073109l.pdf ( 40 pages )(1627142 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK DIVISION
`
`Applicant:
`
`Tenneco Automotive Operating Company Inc.
`
`Serial Nos.:
`
`77/456030, 77/456031, 77/456035, 77/456036, 77/456040,
`77/456044, 77/456051, 77/456046, 77/470209
`
`77/468293, 77/468290, 77/468288, 77/468285, 77/468279,
`77/468275
`
`Trademarks:
`
`171616,171672,171615,171994,17166l,
`171880, 171920, 171504, 171878
`
`71661. 71678, 71679, 71572, 71672, 71662
`
`Examiners:
`
`.1ordan A. Baker / Julie A. Watson
`
`Law Office:
`
`102/ 109
`
`NOTICE OF APPEALS OF DISTRICT COURT DECISIONS
`
`On September 25, 2008 and on May 18, 2009, the United States District Court for
`
`the Eastern District of Michigan issued Orders that may be relevant
`
`to the above—
`
`referenced trademark applications. The Orders are attached hereto as Exhibit A.
`
`Due to legal and factual errors, Applicant believes that the Orders should be set
`
`aside and reversed. Therefore, Applicant has appealed each Order to the Sixth Circuit
`
`Court of Appeals. The Notice of each Appeal is attached hereto as Exhibit B.
`
`The Appeals are currently pending before the Sixth Circuit Court of Appeals.
`
` ate: g/J//Z/_’/2E ,. .. . ~
`
`I
`'
`Lisabeth H. Coakley
`/, //
`HARNESS, DICKEY & PIERCE, €.L.C.
`5445 Corporate Drive, Suite 200
`Troy, MI 48098
`Phone: 248-641-1600
`
`
`
`Fax: 248-641-0270
`
`
`
`
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK DIVISION
`
`Applicant:
`
`Tenneco Automotive Operating Company Inc.
`
`Serial Nos.
`
`77/456030, 77/456031, 77/456035, 77/456036, 77/456040,
`
`77/456044, 77/456051, 77/456046, 77/470209
`
`77/468293, 77,468290, 77/468288, 77/.468285, 77/468279,
`77/468275
`
`Trademarks:
`
`171616,171672,171615,171994, 171661,
`
`171880,171920,171504,171878
`
`71661, 71678, 71679, 71572, 71672, 71662
`
`Examiners:
`
`Jordan A. Baker / Julie A. Watson
`
`Law Office:
`
`102/ 109
`
`NOTICE OF APPEALS OF DISTRICT COURT DECISIONS
`
`EXHIBIT A
`
`

`
`Case 2:O8—cv—'l0467—GCS—MKM Document 72
`
`Filed 09/25/2008
`
`Page 1 of 18
`
`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 PLAINT|FF'S MOTION FOR A PRELIMINARY INJUNCTION (#27),
`OVERRULING DEFENDANTS' OBJECTIONS TO DECLARATIONS (#30, #32, #33, #35),
`AND GRANTING PLA|NTIFF'S MOTION FOR LEAVE
`
`TO FILE A SECOND AMENDED COMPLAINT (#43)
`
`Plaintiff Tenneco Automotive Company Inc. moves for a preliminary injunction and
`
`leave to file a Second Amended Complaint. Defendants Kingdom Auto Parts and Prime
`
`Choice Auto Parts (collectively "KAP") object to several declarations filed by Tenneco in
`
`support of its motion for a preliminary injunction. A hearing on the motion for a preliminary
`
`injunction was held on July 7, 2008. Tenneco filed supplemental briefs in support of their
`
`motion for a preliminary injunction on July 10 and 22, 2008. For the reasons set forth
`
`below, Tenneco's motion for a preliminary injunction will be DENIED. KAP's objections to
`
`the declarations filed by Tenneco in support of the motion for a preliminary injunction will
`
`be OVERRULED. Tenneco's motion for leave to file a Second Amended Complaint will be
`
`GRANTED.
`
`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
`
`

`
`Case 2:08-cv-10467—GCS—MKM Document 72
`
`Filed 09/25/2008
`
`Page 2 of 18
`
`Ottawa, Ontario. Tenneco filed a Complaint on January 31, 2008 alleging KAP is selling
`
`struts under the name "Quick-Strut" in violation of Tenneco's "Quick-Strut" mark. Tenneco
`
`alleged Lanham Act claims of trademark infringement, 15 U.S.C. § 1114, false designation
`
`of origin, 15 U.S.C. § 1125, and unfair competition, 15 U.S.C. § 1125. Tenneco also
`
`alleged copyright infringement, 17 U.S.C. § 501, based on KAP's alleged unauthorized
`
`copying of a Tenneco "Quick-Strut" instruction manual. Tenneco further alleged state law
`
`claims of unfair competition pursuant to the Michigan Consumer Protection Act (MCPA),
`
`M.C.L. §§ 445.901, _e_t _seg., misappropriation of business value, unjust enrichment, and
`
`tortious interference with prospective economic advantage.
`
`In response to three separate
`
`motions to dismiss filed by KAP on February 21, 2008, Tenneco filed a March 3, 2008 First
`
`Amended Complaintdropping its allegations regarding KAP's use ofthe "Quicl<-Strut" mark,
`
`and instead alleging KAP's unauthorized use of a unique product number stamped onto
`
`Tenneco's struts, and KAP's unauthorized copying of a "warning label,'' pledge‘, and
`
`"Quick-Strut" instruction manual. The First Amended Complaint 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, a copyright infringement claim, 17 U.S.C. § 501 , based on
`
`KAP's unauthorized use of the "Quick-Strut" instruction manual, a Lanham Act claim of
`
`false or misleading advertising, 15 U.S.C. § 1125, based on KAP's alleged unauthorized
`
`copying of the warning label and pledge, and state law claims of tortious interference with
`
`prospective economic advantage, violation of the MCPA, and unfair competition. KAP filed
`
`a fourth motion to dismiss on March 10, 2008 premised on lack of federal subject matter
`
`jurisdiction over the claims set forth in Tenneco's Complaint and First Amended Complaint.
`
`Following a May 14, 2008 hearing on the four motions to dismiss, the court issued a June
`
`"Our pledge to you is to provide a quality product that meets or exceeds OEM
`1
`expectations."
`
`

`
`Case 2:O8—cv—10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 3 of 18
`
`17, 2008 Order granting in part KAP's March 10, 2008 motion to dismiss, dismissing
`
`Tenneco's copyright infringement claim without prejudice for lack of a registered copyright
`
`in Tenneco's "Quick—Strut Installation Instructions." The remainder of the four motions to
`
`dismiss were denied.
`
`In the interim, on May 12, 2008, Tenneco filed its motion for a
`
`preliminary injunction to enjoin KAP from using Tenneco's unique stamped product
`
`numbers, from selling KAP struts under the name "Quick—Strut," and from copying
`
`Tenneco's "Quick-Strut Installation |nstructions." KAP filed notices of objections to seven
`
`declarations attached as exhibits to the motion for a preliminary injunction. On June 19,
`
`2008, Tenneco filed its motion for leave to file a Second Amended Complaint to reallege
`
`its claims that KAP is liable for the unauthorized use of Tenneco's "Quick—Strut" mark, and
`
`to cure its since dismissed copyright infringement claim by alleging a February 28, 2008
`
`copyright registration of the "Quick Strut Installation |nstructions."
`
`ll. Motion for Preliminary Injunction
`
`Tenneco seeks a preliminary injunction enjoining KAP from using Tenneco's
`
`stamped product numbers on KAP's struts, from selling KAP struts under the name "Quick—
`
`Strut," and from copying Tenneco's "Quick-Strut Installation Instructions.'' Lanham Act and
`
`common law unfair competition claims for injunctive relief are generally governed by a
`
`''likelihood of confusion" standard as among consumers. Carson v. Here's Johnny Portable
`
`Toilets, Inc., 698 F.2d 831, 833 (6th Cir. 1983); Homeowners Group, Inc., 931 F.2d 1100,
`
`1103, 1105 n.1 (6th Cir. 1991). Whether a likelihood of confusion exists among consumers
`
`depends on factors such as: (1) the strength of the mark; (2) relatedness of the goods; (3)
`
`similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6)
`
`likely degree of purchaser care; (7) defendant's intent in selecting the mark; and (8)
`
`likelihood of expansion of the product lines. Carson, 698 F.2d at 833 (citing Frisch's
`
`Restaurants, Inc. v. EIby's Big Boy of Stuebenville, Inc., 670 F.2d 642, 648 (6th Cir.), gag
`
`3
`
`

`
`Case 2:08—cv-10467-GCS—MKM Document 72
`
`Filed 09/25/2008
`
`Page 4 of 18
`
`denied, 459 U.S. 916 (1982). A generic mark such as a part number may enjoy Lanham
`
`Act protection if it acquires "secondary meaning," that is, if the part number has become
`
`
`associated with the product's producer. Westward Co. v. GEM Products |nc., 570 F.Supp.
`
`943, 947 (E.D. Mich. 1983) (citing McGregor-Doniger, Inc. v. Drizzle, lnc., 599 F.2d 1126
`
`(2d. Cir. 1979), and Keebler Co. v. Rovira Biscuit Co., 624 F.2d 366 (1st Cir. 1980)).
`
`Copyright infringement requires proof of: (1) ownership of a valid copyright; and (2) copying
`
`
`of the constituent elements of the work that are original. Feist Publications Inc. v. Rural
`
`Tel. Service Co., 499 U.S. 340, 361 (1991). Absent direct evidence, an inference of
`
`copying may arise by showing: (1) access to the allegedly-infringed work; and (2) a
`
`substantial similarity between the works at issue. Kohus v. Mariol, 328 F.3d 848, 854 (6th
`
`Cir. 2003).
`
`A. Record Evidence
`
`KAP founder and President Gary Calagoure testified at the July 7, 2008 hearing that
`
`KAP adopted a new "Branding Policies & Procedures" in May 2008 that is now published
`
`on KAP's web page. Tr., at 65, 75. The policy reads:
`
`Branding Policies & Procedures
`
`Kingdom Auto Parts has successfully introduced products into the North
`American market under several brand designators,
`including "PRIME
`CHOICE" and "StrutTEK." Kingdom Auto Parts supports its brands with
`advertising, promotion and other forms of marketing,
`to develop their
`recognition and customer acceptance. Furtherto the objective of developing
`brand recognition and acceptance, please make it your policy in the field to
`practice the following style rules:
`
`- Always identify the Kingdom Auto Parts products principally by the brand
`designators assigned by Kingdom Auto Parts. For example, the "PRIME
`CHOICE StrutTEK" should not be referred to informally or mistakenly as a
`"Monroe Quick-Strut" or "Quick-Strut."
`
`- Relatedly, each application for a Kingdom Auto Parts product should be
`denoted principally by the part number assigned by Kingdom Auto Parts for
`that product.
`
`

`
`Case 2:08-cv-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 5 of 18
`
`- However, it is acceptable to cross-reference the Kingdom Auto Parts
`product, by brand and/or part number, to an OEM or competitive aftermarket
`designator, to fairly inform of its intended application. For example,
`it is
`allowable to state: "PRIME CHOICE StrutTEK" Part No. CST1000012
`
`replaces Monroe Part No. 171681.
`
`Defendants’ Exhibit 510. Calagoure admitted that the new marketing policy was instituted
`
`as a result of this January 31, 2008 lawsuit. Tr., at 76.
`
`KAP's strut is packaged in a box prominently advertised as a "PRIME CHOICE
`
`StrutTEK." S_te§_ Plaintiffs Exhibit 106. At one time, a label attached to the end of the
`
`"PRIME CHOICE StrutTEK" box displayed the Tenneco/Monroe part number followed by
`
`the KAP part number:
`
`171994
`CST1000O3
`
`Plaintiffs Exhibit 106. Calagoure testified that this type of cross-reference labeling was
`
`changed in December in 2007. Tr., at 67-68; Defendants‘ Exhibit 501, Calagoure May 28,
`
`2008 Second Declaration, 1] 8, at 2. The label now displays the KAP part number followed
`
`by the Tenneco/Monroe part number, and includes the modifier "replaces":
`
`CST100012
`REPLACES
`
`171681
`
`Defendants’ Exhibit 501, attached as an exhibit to Calagoure May 28, 2008 Second
`
`Declaration.
`
`Tenneco struts are stamped with a Tenneco/Monroe part number followed by a date.
`
`Plaintiffs Exhibit 136. KAP struts were also initially stamped with a Tenneco/Monroe part
`
`number and date, but were later modified as stamped with only a KAP part number.
`
`Defendants‘ Exhibit 501, attached Exhibit 1-G. Tenneco struts bear a roughly 2 inch by 4
`
`inch colored label bearing the term "SENSATRAC," while KAP struts bear a label of
`
`approximately the same size bearing the name "StrutTEK." Plaintiffs Exhibit 103-105.
`
`

`
`Case 2:08-CV-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 6 of 18
`
`Calagoure admitted that he sent a Tenneco strut to China with instructions to copy the
`
`Tenneco strut. Tr., at 82. Calagoure testified it was "a mistake" to copy the stamped
`
`Tenneco/Monroe part number onto the KAP strut, a mistake he discovered in January or
`
`February 2008. Tr., at 82. Calagoure continued:
`
`. [Y]ou previously stamped Monroe's product numbers on your strut
`.
`.
`.
`Q.
`product, your strut assemblies, correct?
`
`A. [by Calagoure] Correct.
`
`Q. And you purportedly stopped doing that in March of this year [2008]?
`
`A. New inventory from March doesn't have it anymore.
`
`Q. After the commencement of this lawsuit [on January 31, 2008]?
`
`A. That's correct.
`
`Q. Okay. And did you bring with you today a copy of the unmarked strut
`assembly without the Tenneco numbers on it?
`
`A. No, I didn't.
`
`Tr., at 76. Calagoure estimated that KAP had sold 10,000 to 20,000 KAP struts since
`
`November 2007. Tr., at 76-77. Prompted by the court's questioning, Calagoure testified
`
`that customer inventories of KAP struts could vary from as little as 10 to 500 struts, that
`
`customers with larger inventories "would be turning their inventory more often," and that,
`
`on average, "most wholesale distributors that we sell to, they turn their inventory at least
`
`once every 30 days," or "anywhere from 10 to 12 times a year." Tr., at 86-88.
`
`Tenneco has proffered 27 declarations executed by various individuals who work in
`
`the automotive parts business. Plaintiffs Exhibit 111. Each of the declarations reads as
`
`follows:
`
`I am familiar with [Tenneco] Monroe® brand of automotive struts and strut
`2.
`assemblies.
`
`I am familiar with the five-digit product numbering system Monroe® uses
`3.
`for its SensaTrac® struts.
`
`

`
`Case 2:08-cv-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 7 of 18
`
`I am also familiar with the six-digit product numbering system Monroe®
`4.
`uses for its Quick-StrutT'V‘ strut assemblies.
`
`5. When I see a strut product number that begins with the digits "71," I
`associate the product with Monroe® brand products.
`
`6. When I see a strut assembly product number that begins with the digits
`"171," I associate the product number with Monroe® brand products.
`
`lg.
`
`Jeff Tippie, Vice President of Detroit Auto Parts in Cleveland, Ohio, attests to a
`
`February 15, 2008 incident in which a customer cancelled an order for two Tenneco "Quick—
`
`Strut" part numbers 171672 after telling Tippie that he purchased the same struts for half
`
`the price from another supplier, Federated Auto Parts. Plaintiff's Exhibit 119. Tippie later
`
`learned that the struts were KAP struts. Q.
`
`Terry Torbit, an account executive with independent parts distributor Hahn
`
`Automotive of Rochester, New York, testified that he maintains automotive part inventories
`
`for garages, fleets, and dealerships. Tr., at 19-20. Torbit testified that he was making a
`
`sales call on a customer a few months prior to the July 7, 2008 hearing, and observed a
`
`salesman from Auto Part International (API) walk in "with the Quick-Strut in [his] hand" and
`
`make a sales call. Tr., at 21, 27. The strut was unpackaged. Tr., at 26. Torbit testified he
`
`overheard the salesperson state that "this is our Quick-Strut, made in China, starts at
`
`[$99.95]. Here's the part number. .
`
`.
`
`." Tr., at 21. The court overruled KAP's objection
`
`that the testimony constituted inadmissable hearsay. Tr., at 24. Torbit explained he
`
`himself identified the strut as a Tenneco "Quick-Strut" because the salesman had referred
`
`to the strut as such, and because the salesperson showed the customer the Tenneco part
`
`number on the strut which began with the prefix "171." Tr., at 26. Torbit testified he
`
`identified the term "Quick-Strut" with a Tenneco/Monroe strut assembly. Tr., at 26. Torbit
`
`initially believed that "Tenneco was undercutting us and selling a Quick-Strut to API for []
`
`less money," then learned that "API is carrying the [KAP] struts .
`
`.
`
`. and selling them for a
`
`

`
`Case 2:08-CV-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 8 of 18
`
`lot less money than Monroe's." Tr., at 27.
`
`Tenneco Strategic Account Manager Patricia Fleck attests that, in a January 17,
`
`2008 telephone conversation with the Manager of Eagle Service in Seneca, New York, she
`
`was told that two salesmen had made a sales call using an unpackaged strut, making the
`
`Manager believe that they were carrying an "economy" Monroe "Quick-Strut." Plaintiffs
`
`Exhibit 123. The Eagle Service Manager assumed that one of the salesmen was a
`
`Tenneco/Monroe salesperson. _|_q. Fleck attests to her beliefthat the strut was a KAP strut
`
`in that one of the salesmen was from Keuka Packaging, a distributor of KAP struts. Q.
`
`Steven Siegel, Vice President of Sales at United Automotive Supply (UAP) in
`
`Warren, Michigan, attests that,
`
`in the Fall of 2007, KAP salesperson Jim Dolmetsch
`
`approached him and represented that KAP "was going to start selling what [Dolmetsch]
`
`said were 'Quick—Strut' assemblies." Plaintiff's May 12, 2008 Exhibit 17. Siegel attests that
`
`Dolmetsch provided him with a price sheet, and that the "price listed for each Kingdom
`
`'Quick—Strut' assembly ranged from $35-$50, whereas each Monroe® Quick-Strut®
`
`assembly typically costs $80-$100." Q. Siegel continues that Dolmetsch provided him with
`
`a KAP strut and Tenneco strut for comparison purposes,
`
`that the struts appeared
`
`"identical," with the KAP strut "stamped with a '171' product number, which I associate with
`
`Monroe® brand products." M. Siegel attests that he was instructed by Dolmetsch on
`
`January 15, 2008 to take KAP "assembly number '171616"' off UAP's shelves, at which
`
`time Siegel removed 14 KAP strut assemblies from inventory. lg.
`
`In response, Dolmetsch
`
`testified at the July 7, 2008 hearing that he did not holdout to Siegel that KAP's "StrutTEK"
`
`product was a Tenneco/Monroe product, nor did he refer to KAP's strut as a "Quick-Strut."
`
`Tr., at 90.
`
`At the hearing, Hahn Automotive's Torbitalso identified a manufacturer's price sheet.
`
`Plaintiff's Exhibit 122. The price sheet bears a KAP logo with the statement "Our parts are
`
`8
`
`

`
`Case 2:08-CV-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 9 of 18
`
`priced to sell." |_d. The price sheet is prominently titled "KINGDOM STRUTS," and bears
`
`an effective date of March 10, 2008. id. The sheet lists Tenneco part numbers and prices:
`
`PART #
`171281
`171352
`
`DESCRIPTION
`QUICK STRUT
`QUICK STRUT
`
`LIST
`124.73
`150.01
`
`JOBBER
`66.89
`81.66
`
`|_d_. Torbit opined that the list was the manufacturer's price list that would be given to
`
`independent warehouse distributors. Tr., at29. David Drake, a Tenneco District Manager,
`
`testified that he was making a sales call on distributor Auto-Wares Zone in the Chicago
`
`area on May 1, 2008 when he found a manufacturer‘s price list in a catalogue room. Tr.,
`
`at 35-37. Drake testified that the price sheet had a "Quick-Strut" description underneath
`
`the "Kingdom brand name." Tr., at 37. Drake opined that Plaintiffs Exhibit 122 was not an
`
`Auto-Wares price sheet because it did not bear Auto-Wares‘ name, "which is precisely the
`
`reason I grabbed it." Tr., at 38. Drake continued that he had seen another similar KAP
`
`price sheet in the field "with an Auto-Wares logo on it, but it did not have any Quick-Strut
`
`information on it" except Tenneco's six-digit part number. Tr., at 39, 50. Drake testified the
`
`he last saw a price list "identical" to Plaintiffs Exhibit 122 during a mid-to-late May, 2008
`
`sales visit. Tr., at 40. The court overruled KAP's objection to the admission of Plaintiffs
`
`Exhibit 122. Tr., at 42-44.
`
`Auto-Wares Senior Vice President of Purchasing Scott Grill attests that the price
`
`sheet depicted in Plaintiffs Exhibit 122, as identified by Torbit and Drake, "was produced
`
`by our Pricing Department, without any involvement or knowledge of Kingdom Auto Parts
`
`or Prime Choice Auto Parts." Defendants‘ Exhibit 504. Grill further attests:
`
`At the request of Mr. Gary Calagoure, l have pulled this price list, and it will
`be replaced with a new price list making correct reference to "StrutTEK" and
`the appropriate part numbers for that brand of strut.
`
`l_q. KAP President Calagoure testified consistent with Gri||'s declaration that he acted
`
`9
`
`

`
`Case 2:08-cv-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 10 of 18
`
`immediately after learning about the price sheet bearing KAP's name and former logo,
`
`instructing Auto-Wares to replace the list with a new price list making correct references
`
`to "StrutTEK" and appropriate part numbers. Tr., at 69-70. Calagoure testified that KAP
`
`was not the source of the price list set forth in Plaintiffs Exhibit 122. Tr., at 69-70.
`
`Tenneco Director of Ride Control Channel Management Bill Denne attested by way
`
`of declaration that Tenneco authored its "Quick-Strut Installation lnstructions" in 2003, and
`
`that Tenneco has distributed these instructions with packaged Tenneco "Quick—Strut"
`
`assemblies since May 2004. Plaintiff's May 12, 2008 Exhibit 1. Denne attests that KAP
`
`includes the "Quick—Strut Installation |nstructions" within the packaging of KAP struts. Q.
`
`Tenneco's side-by-side comparison of Tenneco's "Qulck-Strut Installation Instructions" and
`
`KAP's installation instructions reveals that, with the exception of the titles "QU|CK-STRUT
`
`INSTALLATION lNSTRUCTIONS" and "STRUT-TEK INSTALLATION lNSTRUCTIONS,"
`
`the instructions are virtually the same, including seven diagrams. Plaintiff's May 12, 2008
`
`Exhibit 15. KAP President Calagoure attests that KAP revised its installation instructions
`
`in February 2008, providing a copy of the revised instructions. Defendants‘ Exhibit 501.
`
`Calagoure testified that KAP will not be including any installation instructions with its KAP
`
`struts in the future. Tr., at 102.
`
`Licensed professional engineer Ph.D. Elborn Jones attests by way of declaration
`
`that, at Tenneco's request, he studied and tested the fatigue strength of four coil springs
`
`taken from KAP strut assemblies. Plaintiffs Exhibit 116. Ph.D. Jones applied a "Pontotoc
`
`Spring Test," which he described as repeatedly running the coil springs through cycles of
`
`compression, an accelerated fatigue life test the Pontotoc Spring Company applies to the
`
`coil springs it sells to Tenneco. Q. Ph.D. Jones attests that the lot of four springs failed
`
`the test because the average of 147,092.25 cycles-before—failure fell below a 150,000
`
`cycles-before-failure requirement, and three of the four springs failed to satisfy a 75,000
`
`10
`
`

`
`Case 2:08-CV-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 11 of 18
`
`to 150,000 cycles-before-failure requirement.
`
`Ph.D. Jones attests that one of the
`
`springs was tested as having a Rockwell Hardness factor of 28-30, below the 48-52
`
`Rockwell Hardness specification of the Pontotoc Spring Company. l_d. Ph.D. Jones opines
`
`that the lower Rockwell Hardness of the KAP spring was "a major factor contributing to the
`
`failure of [the spring] to satisfy the Pontotoc Spring Test." Q. Bodycote Testing Group
`
`Laboratory Manager Michael Fec and Tenneco Support Engineer Kurt Adams attested to
`
`their involvement in testing. Plaintiffs Exhibits 117-118. Tenneco Product Manager Mark
`
`Christiaanse testified at the July 7, 2008 hearing that he had no opinion whether KAP strut
`
`assemblies were "inferior," and agreed that KAP's coil springs were not tested against any
`
`Original Equipment Manufacturer's (OEM) standards. Tr., at 57-58.
`
`B. Analysis
`
`The court is to consider four factors in deciding whether to grant a preliminary
`
`injunction: (1) whether the movant has a "strong" likelihood of success on the merits; (2)
`
`whether the movant will otherwise suffer irreparable harm; (3) whether issuance of a
`
`preliminary injunction would cause substantial harm to others; and (4) whether the public
`
`interest would be served by issuance of a preliminary injunction. Leam v. Daechner, 228
`
`F.3d 729, 736 (6th Cir. 2000) (quoting McPherson v. Michigan High Sch. Athletic Ass'n.,
`
`119 F.3d 453, 459 (6th Cir. 1997) (en banc). The court is not required to make specific
`
`findings as to each of the factors if fewer factors are dispositive of the motion. Jones v. City
`
`of Monroe, 341 F.3d 474, 476 (6th Cir. 2003) (citing irfi $ in re Delorean Motor Co, 755
`
`F.2d 1223, 1228 (6th Cir. 1985)).
`
`Even though Lanham Act trademark infringements may be presumed, without more,
`
`to cause irreparable harm, "there is no parallel presumption that because such
`
`infringements have occurred in the past, they will inevitably be continued in the future."
`
`American Bd. of Psychiatgj and Neurology, Inc. v. Johnson-Powell, M.D., 129 F.3d 1, 4
`
`ll
`
`

`
`Case 2:08—cv-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 12 of 18
`
`(1st. Cir. 1997).
`
`The purpose of interlocutory injunctive relief is to preserve the status quo
`pending final relief and to prevent irreparable injury to the plaintiff—not simply
`to punish past misdeeds or set an example. E CMM Cable Rep., Inc. v.
`Ocean Coast Properties, |nc., 48 F.3d 618, 620 (1st Cir. 1995); Acierno v.
`New Castle County, 40 F.3d 645, 647 (3d Cir. 1994). Absent likelihood of
`future infringement, there can be none of the ill effects that an injunction
`seeks to prevent: no loss of future profits, no loss of goodwill or reputation.
`
`Q. at 4. S_ee _s_9_ Hecht v. Bowles, 321 U.S. 321, 339 (1944) (recognizing that "[t]he
`
`historic injunctive process was designed to deter, not to punish."). Even if presented with
`
`ample evidence of past infringing conduct, unfair competition, or bad faith, a district court
`
`may properly deny preliminary injunctive relief if the defendant proffers sufficient evidence
`
`and assurances that it will not commit future violations. American Bd. of Psychiatgr, 129
`
`F.3d at 6; Pan American World Airways, Inc. v. Flight 001, |nc., No. 06 Civ. 14442(CSH),
`
`2007 WL 2040588, *6 (S.D.N.Y. July 13, 2007); Ferber Corp. v. Grodin, 92 U.S.P.Q. 93,
`
`No. 12196, 1952 WL 5700 (E.D.N.Y. Jan. 16, 1952).
`
`Tenneco has failed to demonstrate that it will likely suffer irreparable harm if KAP
`
`is not ordered to cease stamping Tenneco product numbers onto KAP's struts, selling KAP
`
`struts under the name "Quick-Strut," or copying Tenneco's "Quick-Strut
`
`installation
`
`lnstructions." KAP has produced convincing evidence that it has stopped stamping
`
`Tenneco part numbers onto KAP struts beginning with KAP's March 2008 inventory. KAP
`
`instituted a new marketing policy in May 2008 — instructing KAP salespersons not to sell
`
`KAP "PRIME CHOICE StrutTEK" struts as a "Monroe Quick-Strut" or "Quick—Strut" — in
`
`response to the alleged sales incidents attested to by Tippie (February 15, 2008), Torbit
`
`(May 2008), Fleck (January 2008), and Siegel (Fall 2007). KAP's packaging, prominently
`
`advertising "PRIME CHOICE StrutTEK," now bears a part number label that clearly
`
`communicates that KAP's part number, beginning with the alpha-characters "CST,"
`
`"replaces" Tenneco's part number. KAP's Calagoure instructed Auto—Wares' Grill to pull
`
`12
`
`

`
`Case 2:08-cv-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page 13 of 18
`
`the price sheet Grill created immediately after learning of the document. The document
`
`was last seen being circulated at Auto-Wares‘ Chicago warehouse in May 2008. KAP
`
`distributed new installation instructions in February 2008, and will no longer provide
`
`installation instructions with KAP struts in the future. The undisputed fact that KAP
`
`instituted these changes as a result of this lawsuit does not weigh in favor of granting
`
`Tenneco's motion for a preliminary injunction as punishment for KAP ‘s past "mistakes," as
`
`characterized by KAP President Calagoure. American Bd. of Psychiatry, 129 F.3d at 6;
`
`H_ecm, 321 U.S. at 339.
`
`Tenneco's argument that the court should order KAP to recall all of its struts
`
`stamped with the Tenneco part number and/or packaged with the original "STRUT-TEK
`
`INSTALLATION INSTRUCTIONS" is not persuasive. The evidence shows KAP had sold
`
`a maximum of 20,000 struts from November 2007 through July 7, 2008, a period of eight
`
`months. KAP stopped stamping Tenneco's part numbers onto KAP struts approximately
`
`three months before the July 2008 hearing? KAP began using new installation instructions
`
`in February 2008, five months before the July 7, 2008 hearing, and will no longer include
`
`instructions with KAP struts. Considering the 10 to 12 month inventory turn around time,
`
`and that some of KAP's distributors maintain inventories of up to 500 units, it is likely that
`
`few, if any, KAP struts stamped with Tenneco product numbers and/or packaged with the
`
`original "STRUT-TEK INSTALLATION lNSTRUCTlONS" remain in inventory.
`
`Tenneco's argument that the court should grant injunctive relief even assuming KAP
`
`has stopped engaging in the alleged unfair competition and trademark infringement is also
`
`unpersuasive. A "preliminary injunction is an extraordinary remedy involving the exercise
`
`of a very far-reaching power, which is to be applied only in the limited circumstances which
`
`2 Calagoure clarified that some KAP April inventory did not have the Tenneco part
`number.
`
`13
`
`

`
`Case 2:08-cv-10467-GCS-MKM Document 72
`
`Filed 09/25/2008
`
`Page14 of18
`
`clearly demand it." Lily, 228 F.3d at 739 (internal citations and quotations omitted).
`
`Absent a showing of a likelihood of future irreparable harm which cannot be compensated
`
`by -money damages, the circumstances here do not demand the injunctive relief sought by
`
`Tenneco. As did the Southern District Court in New York, this court rejects a "no harm, no
`
`fou|" policy of granting injunctive relief where the defendant has demonstrated it will not
`
`commit future alleged violations, finding such a rule "at odds with the nature of a
`
`preliminary injunction, which is an extraordinary remedy .
`
`.
`
`.
`
`requiring the plaintiff
`
`demonstrate probability of irreparable harm in the absence of injunctive relief." 1
`
`American, 2007 WL 2040588 at *6 (internal citations and quotations omitted). Consistent
`
`with the voluntary steps taken by KAP President Calagoure after this lawsuit was filed in
`
`January 2008, the court finds credible Ca|agoure's testimony that "we will change [our
`
`product] to not confuse the public in any way." Tr., at 75.
`
`Tenneco has not demonstrated a strong likelihood of success on the merits of its
`
`unfair competition claims premised on KAP's use of Tenneco's stamped part numbers and
`
`alleged selling of KAP struts under the "Quick-Strut" mark, or its claim of copyright
`
`infringement. Even if Tenneco had met this burden, the balance of equities weighs against
`
`granting Tenneco preliminary injunctive relief in light of the evidence presented by KAP
`
`that it will not commit alleged future violations. American Bd. of Psychiatry, 129 F.3d at 6;
`
`Pan American, 2007 WL 2040588 at *6; Ferber Corp., 1952 WL 5700. Tenneco's unfair
`
`competition claim premised on use of its stamped part number is dependent on a finding
`
`that the stamped part number has acquired "secondary meaning" in the marketplace.
`
`Westward C0,, 570 F.Supp. at 947. The existence of "secondary meaning" turns on such
`
`factors as: (1) direct consumertestimony; (2) consumer surveys; (3) exclusivity, length, and
`
`manner of use; (4) the amount and manner of advertising; (5) the amount of sales and
`
`number of customers; (6) established place in the market; and (7) proof of intentional
`
`14
`
`

`
`Case 2:08—cv-10467-GCS—MKM Document 72
`
`Filed 09/25/2008
`
`Page 15 of 18
`
`copying. Herman Miller, Inc. v. Palazzetti Imports and Exports, lnc., 270 F.3d 298, 311-312
`
`(6th Cir. 2001). Tenneco's 27 proffered declarations are limited to individuals who work in
`
`the automotive parts business and do not, in the court's view, give a reliable indication of
`
`whether ultimate consumers identify a strut stamped with a five—digit number beginning with
`
`the digits "71," or a six—digit number beginning with the digits "171," as being a strut
`
`produced by Tenneco as opposed to a generic part number.
`
`In the context of its motion
`
`for a preliminary injunction, Tenneco's claim that KAP salespersons were passing off KAP
`
`struts as Tenneco's "Quick-Strut" product was dependent upon allegations that the
`
`salespersons were presenting unpackaged struts to Tenneco customers an