Big O Tires, Inc. v. Bigfoot 4×4, Inc.

• Citation: 167 F.Supp.2d 1216
• Decision Date: 26 September 2001
• Docket Number: No. CIV. A. 01-B-349.,CIV. A. 01-B-349.
• Parties: BIG O TIRES, INC., Plaintiff, v. BIGFOOT 4×4, INC. and Vulcan Chain and Webbing Products, Inc., Defendants.
• Court: U.S. District Court — District of Colorado

167 F.Supp.2d 1216

BIG O TIRES, INC., Plaintiff, v. BIGFOOT 4×4, INC. and Vulcan Chain and Webbing Products, Inc., Defendants.

No. CIV. A. 01-B-349.

United States District Court, D. Colorado.

September 26, 2001.

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Harold R. Bruno, III, Richard D. Judd, Stephen L. Waters, Robinson, Waters & O'Dorisio, P.C., Denver, CO, for plaintiff.

Pamela A. Johnson, Isaacson, Rosenbaum, Woods & Levy, P.C., Denver, CO, for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

BABCOCK, Chief Judge.

Plaintiff, Big O Tires, Inc. ("Big O") brings suit for trademark infringement, dilution, false designation, false representation of origin, false advertising, deceptive trade practices, and unfair competition against Defendants Bigfoot 4×4 ("Bigfoot 4 × 4") and Vulcan Chain and Webbing Products, Inc. ("Vulcan") (collectively "Defendants"). Bigfoot 4 × 4 counter-claims for abuse of process. Big O moves for a preliminary injunction. The motion is adequately briefed and a hearing was held on May 31, June 1, and August 24, 2001. For the reasons set forth below, I grant Big O's motion.

I. Facts and Procedural History

Big O is a Nevada corporation with its principal place of business in Englewood, Colorado. Big O operates a network of more than 500 franchised stores in North America. The stores sell after market parts and accessories for vehicles, and offer installation of some of those parts. Franchisees contribute to both national and local advertising funds. All advertising is administered through these funds, resulting in continuity of information disseminated to the public throughout the franchise system.

Tires make up the largest portion of Big O's sales. Big O sells its own branded tires, as well as tires manufactured by other national companies. The largest category of its tire sales is a brand of Big O tires called "Big Foot." In addition, Big O stores sell non-tire parts and accessories, such as wheels, shocks, suspension kits, oil filters, wiper blades, studs, and chains. In fiscal year 2000, Big O had total revenues of $171,800,000.

Big O began using the Big Foot name, alternatively styled as both one word and two words, in 1974. The company has linked the name not only with its identically named tires, but with its franchise stores generally. The name Big Foot is often linked in Big O's advertising to a design of a "Big Foot monster" or Sasquatch figure. In some cases the name Big Foot is also used in conjunction with a large footprint designed to appear as that of a Sasquatch. In addition, Big O has linked the Big Foot name to the Big O stores through a pervasive national advertising campaign denoting Big O stores as "Big Foot Country."

From 1978 to 2000, Big O was awarded four different trademarks for the Big Foot mark. All four cover the use of the mark in conjunction with vehicle tires. The fourth, Registration Number 2,314,775 also covers "retail stores featuring automotive tires, parts and related accessories" and "vehicle maintenance and repair services." See Exhibit 47. The Big Foot name appears prominently on the branded tires, as well as on store displays, promotional items, and point-of-sale materials. The name also appears on or next to a variety of automotive accessories. Big O estimates that its Big Foot mark appears in approximately 90% of national advertising and 50% of local advertising. Since the late 1980's, Big O has spent approximately $100,000,000. on advertising under the Big Foot mark.

Bigfoot 4 × 4 is a Missouri corporation formed in 1980 by Bob and Marilyn Chandler. The company grew out of Mr. Chandler's work repairing his own, and eventually other drivers', 4 × 4 trucks. Mr. Chandler began putting over-sized tires on his 4 × 4 trucks, creating a "monster" truck. His first monster truck was named "Bigfoot," in reference to Mr. Chandler's heavy use of the gas pedal. The name "BIGFOOT" was painted on the truck, and the Chandlers began showing the truck at races, events, and exhibitions. At the time the first Bigfoot truck was created, the Chandlers owned a company called Midwest Four Wheel Drive. In 1980 they incorporated Bigfoot 4 × 4 in order to separate funds generated by and used for the Bigfoot monster trucks. Both companies were owned and operated by the Chandlers, their family, and friends. In 1992 the assets of Midwest were acquired by Bigfoot 4 × 4 and Midwest ceased to exist.

Bigfoot 4 × 4 eventually developed a small fleet of monster trucks, all named Bigfoot, to appear at events and races throughout the country. Each Bigfoot monster truck has a number of sponsors who donate parts or supplies for the trucks, in return for placement of decals or stickers on the monster trucks indicating the use of those parts. Bigfoot 4 × 4 operates a single store in St. Louis, Missouri which sells souvenirs and novelty items such as clothing, posters, key chains, stickers, calendars, and toys. It also sells items over the World Wide Web.

In 1983 Bigfoot 4 × 4 filed three applications for federal trademark registration for use of the mark "Bigfoot." Although Big O initially opposed the applications, it withdrew its opposition after being assured by Bigfoot 4 × 4 that the trademarks applied only to novelty items, and not to tires. In 1994 Bigfoot 4 × 4 filed an application for federal trademark registration for use of the mark "Bigfoot" in connection with truck and automotive parts. The United States Patent and Trademark Office ("PTO") rejected the application on the basis that it would create a likelihood of confusion with Big O's prior registrations.

Over the past 15 years, Bigfoot 4 × 4 has sporadically licensed the use of the name Bigfoot for automotive parts or accessories. These have included air fresheners, auto sun shields, and seat cushions. Bigfoot 4 × 4 also licensed the name to Trail Master Products for use on shock absorbers. This product first appeared in 1993. Upon being made aware of the Trail Master product in 1994, Big O sent a cease and desist letter to Trail Master. The shock absorbers thereafter disappeared from the market.

Vulcan is a Michigan corporation with its principal place of business in Detroit, Michigan. Vulcan manufactures and distributes automobile securement systems, for example those used by railroads and tow-trucks to secure automobiles during transportation. Vulcan also manufactures and distributes automobile cargo securement systems, including tie-down straps and nets. Last year Vulcan had gross sales revenues of $10,416,662.

Prior to 1998, Vulcan made attempts to enter into the retail automotive after market. Those attempts were unsuccessful, largely because the Vulcan name was not known to distributors or retailers. In 1998 Vulcan entered into a license agreement with Bigfoot 4 × 4 in order to gain use of a nationally-recognized brand name. The agreement allows Vulcan to use "Bigfoot" and "The Original Monster Truck" in connection with a line of tie-down straps and cargo control products. The agreement provides that Bigfoot 4 × 4 will receive a percentage of sales, although no payments have yet been made. It also provides that Bigfoot 4 × 4 will indemnify Vulcan for the costs of, and any losses associated with, this suit.

After entering into the agreement with Bigfoot 4 × 4, Vulcan created a line of products entitled "Bigfoot by Vulcan," including stretch cords, cargo nets, and tiedown straps. The packaging has the word "Bigfoot" featured prominently. On some packages the words "by Vulcan" appear underneath in smaller letters. Other products are identified only by the word "Bigfoot" without the addition of "by Vulcan." The line was designed to be sold through large national automotive parts retail chains, such as Advanced Auto Parts and Big O, as well as catalogues and the internet. Total sales for the Bigfoot by Vulcan line have amounted to $61,403.45.

In November 1998 Vulcan launched its Bigfoot by Vulcan line at the SEMA show in Las Vegas. Also in November 1998 Vulcan sent Big O a letter and sample of its marketing materials, describing its potential customer base as identical to Big O's current customers. Big O sent a cease and desist letter to Bigfoot 4 × 4 and Vulcan in January 1999. It thereafter entered into settlement negotiations with Vulcan, followed by settlement negotiations with Bigfoot 4 × 4. Although the parties discussed a joint marketing project, those negotiations failed due to conflicts with Bigfoot 4 × 4's other sponsors. Big O filed this suit on February 27, 2001.

II. Motion for Preliminary Injunction

Big O moves for an injunction against both Bigfoot 4 × 4 and Vulcan. Under 15 U.S.C. § 1116(a), federal courts may "grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent or Trademark office ...." These injunctions must comply with the requirements of Federal Rule of Civil Procedure 65. See generally Redken Labs., Inc. v. Levin, 843 F.2d 226, 228 (6th Cir.1988).

A preliminary injunction is an equitable remedy that invokes the sound discretion of the district court. See Lundgrin v. Claytor, 619 F.2d 61, 63 (10th Cir.1980). Preliminary injunction is an extraordinary remedy — an exception rather than the rule. See GTE Corp. v. Williams, 731 F.2d 676, 678 (10th Cir. 1984). Thus, the right to relief must be clear and unequivocal. See Penn v. San Juan Hosp., 528 F.2d 1181, 1185 (10th Cir.1975). See generally 11 C. WRIGHT & A. MILLER, FEDERAL PRACTICE AND PROCEDURE § 2948m at 428-29 nn. 19-21 (1973 & 1991 Supp.). "[I]t is `a well-settled principle that an injunction must be narrowly tailored to remedy the harm shown.'" Davoll v. Webb, 955 F.Supp. 110, 113 (D.Colo. 1997) (citing Citizen Band Potawatomi Indian Tribe of Okla. v. Oklahoma Tax Comm'n, 969 F.2d 943, 948 (10th Cir. 1992)).

The burden is on the movant to make a prima facie showing...