General Motors Corp. v. Lanard Toys, Inc.

• Decision Date: 25 October 2006
• Docket Number: No. 05-2085.,05-2085.
• Citation: 468 F.3d 405
• Parties: GENERAL MOTORS CORPORATION and AM General, LLC, Plaintiffs-Appellees, v. LANARD TOYS, INC. and Lanard Toys Limited, Defendants-Appellants.
• Court: U.S. Court of Appeals — Sixth Circuit

Page 405

468 F.3d 405

GENERAL MOTORS CORPORATION and AM General, LLC, Plaintiffs-Appellees, v. LANARD TOYS, INC. and Lanard Toys Limited, Defendants-Appellants.

No. 05-2085.

United States Court of Appeals, Sixth Circuit.

Argued: July 19, 2006.

Decided and Filed: October 25, 2006.

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ARGUED: John A. West, Greenebaum Doll & McDonald, Cincinnati, OH, for Appellants. Mark A. Cantor, Brooks & Kushman, Southfield, MI, David R. Pruitt, Baker & Daniels, South Bend, IN, for Appellees. ON BRIEF: John A. West, Greenebaum Doll & McDonald, Cincinnati, OH, William T. Robinson III, Carrie Anne Shufflebarger, Greenebaum Doll & McDonald, Covington, KY, for Appellants. Mark A. Cantor, Marc Lorelli, Brooks & Kushman, Southfield, MI, David R. Pruitt, Edward A. Sullivan, Gerard T. Gallagher, Baker & Daniels, South Bend, IN, for Appellees.

Before: MARTIN and RYAN, Circuit Judges; MARBLEY, District Judge.^*

RYAN, J. (p. 422), delivered a separate concurring opinion.

OPINION

BOYCE F. MARTIN, JR., Circuit Judge.

The district court, in a trademark and trade dress infringement suit filed against Lanard Toys by General Motors Corporation, granted summary judgment for General Motors on its claims while denying Lanard's motion for summary judgment based on the affirmative defenses of laches and estoppel. Lanard now appeals those decisions. The dispute is over a series of toy vehicles produced by Lanard called "THE CORPS! ATK" which resemble the Hummer vehicle produced by General Motors. Based on the following discussion, we affirm the district court's decisions.

I.

A. Development of Hummer

In the 1980s, the United States government commissioned AM General to produce a high mobility military vehicle. The result was called the High Mobility Multi-Wheeled Vehicle or HMMWV, which was commonly referred to as the "Humvee." After garnering recognition through its use in the first Gulf War, AM General decided to introduce a civilian version of the Humvee in 1992, known as the Hummer. The design of both the Humvee and Hummer included a front grille with seven vertical pill-capsule shaped slots, bookended by round headlights of approximately equal size to the slots. AM General received a registered trademark for the grille design on March 5, 1996. AM General never sold more than 900 Hummers in any calendar year from 1992 to 1999, in part due to a price tag of over $100,000. In December of 1999, AM General transferred the Hummer brand to General Motors as well as all intellectual property rights in the civilian vehicle while maintaining all rights in the Humvee name and the military vehicle. After the transfer, General Motors created the H2, a smaller version of the Hummer.

B. Lanard's Interactions with the Humvee/Hummer brands

In 1992, Lanard Toys, Inc. began selling a toy vehicle called the "MUDSLINGER." It was modeled after the Humvee military vehicle, including a similar grille design to that of the Humvee. The box for the MUDSLINGER labeled the toy as a "Hyper Humvee." Lanard's sales records show that the MUDSLINGER had limited sales between 1992 and 1996, including no sales for the years of 1994 and 1996. In July 1993, AM General contacted Lanard regarding the use of their trademarked name of "Humvee" on its toys. After correspondence between the two parties, Lanard agreed to stop using the "Humvee" name on its toys, but continued to manufacture the MUDSLINGER toy. There is dispute between the parties as to whether Lanard agreed with AM General that Lanard could continue to manufacture MUDSLINGER toys.

In February 1997, Lanard contacted AM General regarding putting the "Humvee" name back on its toys. Lanard, at the time, was producing a number of military vehicle toys, including the "THE CORPS! ATK" vehicle at issue in this case. The ATK vehicle has a similar design to that of the MUDSLINGER vehicle. In response to Lanard's letter, AM General sent a cease-and-desist letter to Lanard to stop using all of AM General's trademarks. Lanard responded by stating that it did not use either the Hummer or Humvee names on its packaging.

In November 1998, AM General sent a demand letter to Lanard regarding the ATK vehicle's "nose design." Lanard responded by refusing to comply with the demand to stop producing the toy. In November 2000, General Motors contacted Lanard to inform it that Lanard's military toy vehicles infringed on the Hummer vehicle produced by General Motors. Lanard again rejected that contention and continued to produce its toys. On March 20, 2001, General Motors filed suit claiming that Lanard's toys infringed on its rights to the Hummer vehicle and grille design.

C. Procedural History

General Motors's complaint alleged that Lanard's toys infringed on its Hummer vehicle and grille design, resulting in trademark infringement, trade dress infringement, dilution, and common law trademark infringement. On July 16, 2003, Lanard filed a complaint against AM General seeking a declaratory judgment as to AM General's rights in the Humvee vehicle and grille design. AM General, on September 29, 2003, filed a counterclaim against Lanard for infringement on its Humvee trade dress. In April 2004, all parties moved for summary judgment and the district court granted summary judgment for AM General and General Motors on their trade dress and trademark infringement claims. The district court dismissed all of Lanard's defenses except for laches and estoppel.

From March 8 to 10, 2005, a jury trial was held on damages and the issue of laches and estoppel. The jury awarded damages to General Motors as a eight percent royalty on sales of the ATK ($340,330) plus over $900,000 from Lanard's profits. Acting in an advisory capacity, the jury denied Lanard's laches and estoppel defenses. Lanard filed a timely appeal to this Court on August 10, 2005.

II.

A. Summary Judgment Standard

This Court reviews a district court's decision to grant summary judgment de novo. Bennett v. City of Eastpointe, 410 F.3d 810, 817 (6th Cir.2005). Summary judgment is only appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). "The burden is generally on the moving party to show that no genuine issue of material fact exists, but that burden may be discharged by `showing—that is, pointing out to the district court—that there is an absence of evidence to support the nonmoving party's case.'" Bennett, 410 F.3d at 817 (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). "In reviewing a summary judgment motion, credibility judgments and weighing of the evidence are prohibited. Rather, the evidence should be viewed in the light most favorable to the non-moving party." Id. (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). "Thus, the facts and any inferences that can be drawn from those facts, must be viewed in the light most favorable to the non-moving party." Id. (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)).

B. Trademark Infringement Claim

To demonstrate trademark infringement, the plaintiff must show that the use of the allegedly infringing trademark "is likely to cause confusion among consumers regarding the origin of the goods offered by the parties." Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 280 (6th Cir.1997) (citing 15 U.S.C. § 1114). In order to determine confusion, this Court examines the eight so-called Frisch factors: "(1) strength of the plaintiff's mark, (2) relatedness of the goods or services, (3) similarity of the marks, (4) evidence of actual confusion, (5) marketing channels used, (6) likely degree of purchaser care, (7) the defendant's intent in selecting its mark, and (8) likelihood of expansion of the product lines." Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 548 (6th Cir.2005) (citing Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.1982), cert. denied, 459 U.S. 916, 103 S.Ct. 231, 74 L.Ed.2d 182 (1982)). "These factors imply no mathematical precision, but are simply a guide to help determine whether confusion is likely." Id. (citing Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir.1991)). As we have noted:

This Circuit considers the question of whether there is a likelihood of confusion a mixed question of fact and law. Factual findings must be made with respect to the likelihood of confusion factors set out above. However, the further determination of whether a given set of foundational facts establishes a likelihood of confusion is a legal conclusion. Because this case is presented to us after a grant of summary judgment, our task is to determine whether the District Court correctly held that no genuine issues of material fact were presented regarding the likelihood of confusion factors.

Id. at 548 n. 11 (citing Homeowners Group, 931 F.2d at 1107).

1. The District Court's Treatment of the Frisch Factors

The district court held that Lanard's ATK vehicle grille design infringed on the Hummer Nose Design trademark (Trademark No. 1,959,544). Lanard's primary objection to the summary judgment against them on the infringement of the '544 trademark was the failure by the district court to discuss any of the Frisch factors in its judgment. "[N]ot all of these factors may be particularly helpful in any given case. But a thorough and analytical treatment must nevertheless be attempted." Daddy's Junky Music Stores, 109 F.3d at 280. Lanard argues that no such "thorough and² analytical treatment" was given to the trademark...