Dwyer Instruments, Inc. v. Sensocon, Inc.
| Decision Date | 23 March 2012 |
| Docket Number | CAUSE NO.: 3:09-CV-10-TLS |
| Parties | DWYER INSTRUMENTS, INC., Plaintiff, v. SENSOCON, INC., and TONY E. KOHL, Defendants. |
| Court | U.S. District Court — Northern District of Indiana |
The Plaintiff, Dwyer Instruments, Inc. (Dwyer), has sued the Defendants, Sensocon, Inc. (Sensocon), and its owner and operator, Tony Kohl (Kohl) (collectively the Defendants), for trademark infringement, trade dress infringement, counterfeiting, unfair competition, false designation of origin, and copyright infringement. The Plaintiff has moved for partial summary judgment [ECF No. 97] on Count I of its First Amended Complaint, which asserts a claim for federal trademark infringement of United States Trademark Registration No. 3,397,050, and on the Defendants' affirmative defense that the "Plaintiff's claims are barred by the equitable defenses of laches, estoppel, acquiescence, and unclean hands," (Defs.' Revised Answer and Aff. Defenses 33, ECF No. 92). The Plaintiff alleges that Sensocon and Kohl, a former Dwyer employee, infringed on its trademark when they improperly applied the distinctive and trademark-protected pattern of Dwyer's pressure gauge lens covers to Sensocon brand pressure gauges.1
In response, the Defendants argue that genuine issues of material fact exist regardingwhether the mark at issue is a protectable trademark and whether there was a likelihood of confusion between the Plaintiff's and Sensocon's products. The Defendants also assert that none of the actions they took before the mark was registered can constitute infringement and that Sensocon has not sold the gauge with the lens at issue since December 31, 2009. With respect to their affirmative defense, the Defendants contend that, because the Plaintiff delayed in pursuing its alleged rights, its claim is barred under the doctrine of laches. Although the Defendants assert that genuine issues of material fact exist whether Kohl was the alter ego of Sensocon, their brief in opposition to the Plaintiff's Motion for Partial Summary Judgment does not contain any argument on this issue. The Defendants have also filed a cross-motion for summary judgment on Count I of the First Amended Complaint [ECF No. 103], which repeats arguments with respect to the dates of possible infringement and asserts that the Court should enter summary judgment for the Defendants because the Plaintiff cannot recover any damages. The cross motion also adds argument with respect to Kohl's liability as an alter ego of Sensocon.
In connection with their Motion for Partial Summary Judgment, the Defendants have filed a Motion to Strike [ECF No. 114] directed at the Declaration of Eric Budny, who is a manager at Dwyer. The Defendants argue that various portions of Budny's Declaration do not comply with the requirements of Federal Rule of Civil Procedure 56(c)(4) because Budny lacks personal knowledge and makes legal conclusions. This Opinion and Order resolves whether summary judgment should be granted for any party on Count I of the First Amended Complaint. The Court will address the Motion to Strike directed at Budny's Declaration to the extent it is necessary to resolve the cross motions for partial summary judgment.
The Plaintiff is a leading manufacturer in the instrumentation and controls industry. Among the products the Plaintiff sells are gauges that measure the differential pressure of air and compatible gases. The Plaintiff sells these gauges to original equipment manufacturers and end users, including those in industries that involve heating, ventilation and air conditioning, pollution control, chemicals, food, and oil and gas. Since 1962, the Plaintiff has been using a lens design on its gauges that incorporates a generally rounded side wall forming a generally domed face with an ornamental design on the lower portion of the lens face that consists of a plurality of horizontal lines and a raised rectangular portion. One of the Plaintiff's most successful and popular product lines, the Series 2000 Magnehelic® brand pressure gauges, feature this lens design. The Plaintiff uses the same lens on other products it manufactures including the Series 4000 Capsuhelic® brand pressure gauges and Series RMV Rate-Master® brand flow meters.
On November 8, 2006, the Plaintiff filed an application with the United States Patent and Trademark Office (USPTO) to register the lens design that it used on pressure gauges and differential pressure gauges. On March 19, 2007, the USPTO notified the Plaintiff that it was refusing registration "because the proposed mark consists of a nondistinctive configuration of the goods that does not function as a trademark to identify and distinguish applicant's goods from those of others and to indicate their source." (Mar. 19, 2007, USPTO Letter 2, ECF No. 113-1.) Citing to the Supreme Court's decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), the USPTO invited the Plaintiff to submit evidence that its design had acquireddistinctiveness under 15 U.S.C. § 1052(f). The USPTO suggested that the Plaintiff submit examples of advertising and promotional materials that specifically promoted the proposed mark as a trademark, dollar figures for advertising devoted to such promotion, dealer and consumer statements of recognition of the proposed mark as a trademark, and any other evidence that established recognition of the matter as a mark for the goods.
On September 19, the Plaintiff submitted a response to the USPTO arguing that the materials submitted established that the mark had acquired distinctiveness based on the duration and exclusivity of the Plaintiff's use of the specific lens configuration, and based on advertising costs associated with gauges containing the lens configuration. On March 18, 2008, the USPTO issued United States Registration No. 3,397,050 to the Plaintiff under § 1052(f) for the mark (Lens Mark) in connection with pressure gauges and differential pressure gauges. The Lens Mark "consists of a plurality of horizontal lines and a raised rectangular portion on the lens of a pressure gauge." (Trademark, ECF No. 98-4.) The Lens Mark illustration from the registration is reproduced below:
By May 2008, the Plaintiff was using the ® symbol in connection with the lens design.
In 1997, Kohl began working for the Plaintiff, ultimately reaching the level of District Sales Manager. In his employment for the Plaintiff, Kohl promoted the sale of the Plaintiff's Magnehelic® brand pressure gauges. On July 20, 2005, Kohl resigned from the Plaintiff's employment, and within three weeks incorporated Sensocon. The following year, Kohl contacted a Chinese-based company seeking information on a product "that was identical to the Dwyer Magnehelic that was made by a company called Best Control Technology (in Beijing)." (Email correspondence, ECF No. 102.) Kohl indicated that he was interested in selling the product in North America. By summer 2006, a Chinese company, Sailsors, was manufacturing differential pressure gauges for Sensocon. In fall 2006, Kohl contacted current customers of the Plaintiff to let them know that Sensocon had an alternative to the pressure gauge they were currently using, specifically a Sensocon model S2000 differential pressure gauge. According to Kohl's deposition testimony, the Sensocon S2000 had a lens "substantially identical to the lens on the Dwyer Magnehelic gauge." (Kohl Dep. 41-42, ECF No. 100.) A former customer of the Plaintiff that began purchasing differential pressure gauges from Sensocon for private label also acknowledged that there was no visual difference between the Sensocon S2000 gauge and the Plaintiff's Magnehelic product. (Haakon Dep. 31, ECF No. 98-20.) The lens had the same plurality of horizontal lines and a raised rectangular portion. The face of the gauge, however, included the word SENSOCON, instead of Magnehelic®.
In later 2006, the Plaintiff became aware that Sensocon was marketing competitive pressure gauges that the Plaintiff believed incorporated its trademarks without authorization. On January 8, 2007, the Plaintiff sent the Defendants a letter with respect to Sensocon's use of thePlaintiff's Magnehelic® and Dwyer® registered trademarks and Series 2000 common law trademark in marketing and promotional materials. The letter also advised that the Plaintiff was the owner of trademark rights in the trade dress of its Magnehelic® pressure gauges as generally shown in an attached drawing, which showed a gauge with a plurality of horizontal lines covering the bottom portion of the lens and a raised rectangular portion. The letter alleged that the Sensocon S2000 differential pressure gauge incorporated the trade dress of the Plaintiff's Magnehelic® pressure gauge, violated the Plaintiff's trademark rights, and was likely to cause confusion, mistake, and deception of the purchasing public. The Plaintiffs requested a written assurance by January 22, 2007, that the Defendants would cease and desist from the identified activities and voluntarily discontinue use of the Plaintiff's marks and trade dress so that future legal action would not be necessary. (Jan. 8, 2007, Letter, ECF No. 104-2.)
The Defendants continued to advertise, promote, and sell the S2000 Sensocon gauge throughout 2008 and 2009.2 On January 7, 2009, the Plaintiff filed its lawsuit against the Defendants for trademark infringement, trade dress infringement, unfair competition, false designation of origin, and copyright infringement. The Plaintiff later added a claim forcounterfeiting.
In 2010, Sensocon began selling gauges with a different lens design, which it referred to as its third generation lens. On November 8, 2010, Sensocon filed a Petition to Cancel U.S. Trademark Registration No. 3,397,050 with the USPTO.3 Sensocon argued that the Lens Mark did not demonstrate distinctiveness because the features that formed the basis of the...
To continue reading
Request your trial