Green Edge Enterprises, LLC v. Rubber Mulch, LLC

• Decision Date: 28 March 2007
• Docket Number: No. 4:02CV566TIA.,4:02CV566TIA.
• Citation: 509 F.Supp.2d 814
• Parties: GREEN EDGE ENTERPRISES, LLC, Plaintiff, v. RUBBER MULCH ETC., LLC, et al., Defendants. And Related Claims.
• Court: U.S. District Court — Eastern District of Missouri

509 F.Supp.2d 814

GREEN EDGE ENTERPRISES, LLC, Plaintiff, v. RUBBER MULCH ETC., LLC, et al., Defendants And Related Claims.

No. 4:02CV566TIA.

United States District Court, E.D. Missouri, Eastern Division.

March 28, 2007.

Allen P. Press, Matthew R. Fields, Green and Jacobson, P.C., Jonathan F. Andres, Green and Schaaf, St. Louis, MO, for Plaintiff.

Arthur W. Fisher, III, Law Office of Arthur W. Fischer, III, P.A., Tampa, FL, James D. Hall, Botkin and Hall, LLP, South Bend, IN, Jeffrey H. Kass, John H. Quinn, III, Armstrong Teasdale, LLP, Lisa Demet Martin, Bryan Cave LLP, St. Louis, MO, Ronald D. Foster, South Bend, IN, Gregory S. Vickers, Philip J. Moy, Jr., Scott M. Slaby, Fay and Sharpe, LLP, Cleveland, OH, Defendants.

MEMORANDUM AND ORDER

TERRY I. ADELMAN, United States Magistrate Judge.

This matter is before the Court on Third-party Defendants International Mulch's and Michael Miller's Motion for Summary Judgment on Counts III and IV of the First Amended Counterclaim. The parties consented to the jurisdiction of the undersigned pursuant to 28 U.S.C. § 636(c).

Facts

This case involves the validity of a trademark for RUBBERIFIC MULCH and a patent for synthetic mulch ('514 patent), which consists of shredded rubber coated with a durable colorant substance.¹ On March 19, 2001, counterclaim defendant Green Edge Enterprises was granted Registration No. 2,665,542 for the trademark RUBBERIFIC MULCH, which was recorded in the U.S. Patent and Trademark Office. Green Edge assigned the trademark to International Mulch Company, with July 26, 2002 as the effective date of assignment.² (Decl. William D. O'Neill, ¶ 3) Green Edge cited October 31, 1995 as the date of first use but later claimed that the actual date of first use was October 31, 1997.³ International Mulch filed an amendment with the U.S. Patent and Trademark Office, requesting a change in the records to correct the date of first use and first use in commerce. (O'Neill Decl., ¶ 5) The U.S. Patent and Trademark Office subsequently changed its records to reflect the correct date of first use and first use in commerce and has issued a corrected registration certificate. (O'Neill Decl., ¶ 7)

On January 10, 2005, Plaintiff Green Edge filed its First Amended Complaint alleging common law trademark and service mark infringement and unfair competition; trademark and service mark dilution under Missouri law; and false designation of origin, false description and dilution by Rubber Mulch. (First Amended Complaint, Counts II, III, and IV) Green Edge seeks damages and injunctive relief preventing the use of any trademark or name that might be confusingly similar to its trademark, RUBBERIFIC MULCH. (First Amended Complaint, Request for Relief) Despite Green Edge's trademark infringement claims, International Mulch claims that it owns the mark "RUBBERIFIC MULCH." (Hoekel Decl. Exh. A)

On February 11, 2005, Jennifer Hoekel, counsel for International Mulch, issued a letter to Rubber Mulch demanding that' it cease and desist trademark use of the mark RUBBER MULCH. (Decl. of Jennifer Hoekel, ¶ 3; Exh. B) She specifically stated that the "use of RUBBER MULCH (1) is confusingly similar to our client's use of RUBBERIFIC MULCH, (2) is likely to confuse the public as to the source, affiliation, and/or sponsorship of your product, and (3) will cause substantial damage to our client and its good will." (Hoekel Decl. Exh. A) Ms. Hoekel added that the use of RUBBER MULCH constituted trademark infringement and unfair competition. (Hoekel Decl. Exh. A)

In a reply letter dated February 15, 2007, Ron Foster, counsel for Rubber Mulch, stated that Ms. Hoekel was "incorrect regarding `Rubber Mulch' being on the bags that will be distributed nationwide through each of the Lowe's stores." (Hoekel Decl. Exh. B). Counsel further stated that "it does not agree to cease using the term `Rubber Mulch' in association with its rubber mulch product.... [T]he words rubber mulch are descriptive of the product in question."⁴ (Hoekel Decl. Exh. B) Rubber Mulch counsel added that "your client may be a necessary party in the suit between Green Edge and Rubber Mulch since your client claims to hold an interest in the Rubberific Mulch mark that Green Edge is also asserting an interest in regarding a claim for trademark infringement." (Hoekel Decl. Exh. B)

Ms. Hoekel responded on March 21, 2005, requesting that Mr. Foster send her a sample of the product packaging and stating that "[i]f the bag is as your represent, my client's concerns may be alleviated." (Hoekel Decl. Exh. C) She concluded by stating that her client would continue enforcing its rights in the mark. (Id.) After this date, neither International Mulch Company nor its counsel sent any further letters to Rubber Mulch, Rubber Resources, or its counsel. (Hoekel Decl. ¶¶ 8-11) ms. Hoekel did not contact Rubber Resources regarding possible trademark infringement; however, Rubber Resources manufactures and sells colorized rubber particles for the purpose of mulch and advertises said product with trademarks and services marks that include the term RUBBER MULCH. (Decl. Dale Hawker, ¶¶ 2-3)

On June 28, 2005, Defendant/Counterclaim Plaintiffs Rubber Mulch and Rubber Resources filed a First Amended Counterclaim Counts III and IV are against Counterclaim Defendants International Mulch and Michael Miller. Count III seeks declaratory judgment that defendants are not infringing on International Mulch's registered trademark RUBBERIFIC MULCH. Count IV seeks declaratory judgment that International Mulch's registered trademark RUBBERIFIC MULCH is invalid and/or unenforceable. On May 15, 2006, Counterclaim Defendants filed a Motion for Summary Judgment on Counts III and IV, claiming that summary judgment is warranted because there is no cause or controversy. Alternatively, they assert that Defendants cannot prove that the trademark is invalid or unenforceable. Defendants/Counterclaim Plaintiffs disagree, alleging that a case or controversy does exist and that there is a factual basis on which to conclude that Green Edge, at International Mulch insistence, fraudulently amended the trademark registration so that it would not invalidate the '541 patent.

Standard for Ruling on Summary Judgment

Pursuant to Federal Rule of Civil Procedure 56(c), a court may grant a motion for summary judgment only if all of the information before the court shows "there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The court must view the evidence and all reasonable inferences in the light most favorable to the non-moving party. Hutson v. McDonnell Douglas Corp., 63 F.3d 771, 775 (8th Cir.1995). The United States Supreme Court has noted that, "[s]ummary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the federal rules as a whole, which are designed to `secure the just, speedy and inexpensive determination of every action'." Celotex, 477 U.S. at 327, 106 S.Ct. 2548 (1986) (quoting Fed.R.Civ.P. 1).

The initial burden of proof is placed on the moving party to establish the non-existence of any genuine issue of fact that is material to a judgment in its favor. City of Mt. Pleasant, Iowa v. Associated Elec. Co-op., Inc. 838 F.2d 268, 273 (8th Cir.1988). Once this burden is discharged, if the record does in fact bear out that no genuine dispute exists, the burden then shifts to the nonmoving party who must set forth affirmative evidence and specific facts showing there is a genuine dispute on that issue. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

When the burden shifts, the non-moving party may not rest on the allegations in its pleadings, but by affidavit and other evidence must set forth specific facts showing that a genuine issue of material fact exists. Fed.R.Civ.P. 56(e). The non-moving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). In fact, the non-moving party must show there is sufficient evidence favoring the non-moving party which would enable a jury to return a verdict for it. Anderson, 477 U.S. at 249, 106 S.Ct. 2505; Celotex, 477 U.S. at 324, 106 S.Ct. 2548.

Discussion

Case or Controversy

In the motion for summary judgment, Counterclaim Defendants International Mulch and Michael Miller (collectively "International Mulch") assert that they are entitled to judgment as a matter of law because there is no case or controversy for the Court to issue declaratory judgment. The undersigned finds that summary judgment in favor of International Mulch is warranted on Counts III and IV of the Amended Counterclaim.

The plaintiff bears the burden of establishing subject matter jurisdiction in a declaratory judgment action. McKee Foods Kingman v. Kellogg Co., 474 F.Supp.2d 934, 937-38 (E.D.Tenn.2006) (citation omitted). "To establish declaratory judgment jurisdiction, a plaintiff must show that (1) it has a real and reasonable apprehension of litigation, and (2) it has engaged in a course of conduct which brought it into conflict with the declaratory defendant." Capital One Fin. Corp. v. Drive Fin. Servs., L.P., 434 F.Supp.2d 367, 372 (E.D.Va.2006) (citing Windsurfing Int'l Inc. v. AMF, Inc., 828 F.2d 755, 757 (Fed.Cir.1987)). "The defendant must have engaged in conduct giving rise to a reasonable apprehension on plaintiffs part that it will face ... suit or the threat of one if it commences or continues the activity in question'" Trippe Mfg. Co. v. American Power Conversion Corp., 46 F.3d 624, 627 (7th Cir.1995) (quoting International Harvester Co. v. Deere & Co., 623 F.2d 1207, 1210 (7th Cir.1980)). This inquiry focuses on the defendant...