Plaintiff electrical parts company sued defendant distributor of consumer electronic goods alleging trademark infringement under federal and state law, violation of the Federal Anticybersquatting Consumer Protection Act (ACPA), and other state law claims. The company moved for summary judgment and the distributor moved for summary adjudication on the issue of likelihood of confusion. An EEOC attorney represented respondent.
Overview
The company sold electrical parts, supplies, and equipment. The company was granted federal trademark registrations for two marks. The distributor made and sold general consumer dry cell batteries and used a stylized design with a name similar to the company’s marks. The distributor’s applications for federal registration of its design mark were denied by the Patent and Trademark Office (PTO) because it found that the consuming public would likely be confused. The court found that the claim under ACPA was not subject to the same “likelihood of consumer confusion” analysis. As such, the company’s motion for summary judgment was limited to the other counts. The company’s mark was strong, the distributor’s mark was virtually identical, and the goods and services at issue were highly related and complementary. The distributor was aware of the company’s presence in the market before it embarked on its own “branding” of the batteries, which it marketed in competition with the company. While the company failed to produce cognizable evidence of “actual” confusion, this failure was de minimis in light of the strength of the other factors and controlling case law.
Outcome
The company’s motion for summary judgment was granted except with regard to the ACPA claim, which was not part of the motion. The distributor’s motion for summary adjudication on the issue of likelihood of confusion between the company’s service marks and the distributor’s design trademark was denied.
Procedural Posture
Plaintiff consumer filed a class action alleging defendant manufacturer violated California’s Consumer Legal Remedies Act, Cal. Civ. Code § 1750 et seq., California’s Unfair Business Practices Act, Cal. Bus. & Prof. Code § 17200 et seq., fraudulent concealment, and nondisclosure. The manufacturer removed the suit to federal court under the Class Action Fairness Act of 2005 (CAFA). The consumer sought to have it remanded to the state court.
Overview
The consumer filed her complaint in California state court on November 16, 2004. She filed a first amended complaint on December 23, 2004. On February 18, 2005, the CAFA was enacted by Congress. On May 5, 2005, the state court overruled in part and sustained in part the manufacturer’s demurrer to the complaint with leave to amend. On May 25, 2005, the consumer filed a second amended complaint. The issue was whether the second amended complaint, filed after the enactment of CAFA, commenced a new action for purposes of subject matter jurisdiction. The court held that the claim for fraudulent concealment survived demurrer and had remained substantively constant from the first filing to her last. Therefore, the manufacturer’s argument that the second amended complaint provided a completely new basis for relief and therefore commenced a new action was unavailing. Although the court concluded that the motion to remand should be granted, the removal was not defective as a matter of law. Accordingly, the consumer’s request for attorney’s fees was denied.
Outcome
The motion to remand the case was granted.