MODERN FENCE TECHNOLOGIES INC. v. QUALIPAC HOME IMPROVEMENT Corp.
| Citation | 726 F.Supp.2d 975 |
| Decision Date | 22 June 2010 |
| Docket Number | Case No. 08-C-543. |
| Parties | MODERN FENCE TECHNOLOGIES, INC., Plaintiff, v. QUALIPAC HOME IMPROVEMENT CORP., Defendant. |
| Court | U.S. District Court — Eastern District of Wisconsin |
OPINION TEXT STARTS HERE
COPYRIGHT MATERIAL OMITTED.
Donald J. Ersler, Donald J. Ersler SC, Brookfield, WI, Philip P. Mann, Mann Law Group, Seattle, WA, for Plaintiff.
Alexander Chen, Ali Kamarei, Inhouse Co., Palo Alto, CA, Jennifer Ab Kreil, Michael J. Cohen, Meissner Tierney Fisher & Nichols SC, Milwaukee, WI, for Defendant.
DECISION AND ORDER
On June 25, 2008, the plaintiff, Modern Fence Technologies, Inc. (“Modern Fence”), filed an action in the Eastern District of Wisconsin for “infringement of federally registered and common law trademark rights (Counts I and II), false designation of origin under Section 43(a) of the Lanham Act (Count III) and Unfair Competition (Count IV),” against the defendant, Qualipac Home Improvement Corp. (“Qualipac”). (Compl. ¶ 1.) This court has jurisdiction over the subject matter of the complaint pursuant to 28 U.S.C. § 1338(a). Both parties have consented to the exercise of jurisdiction by a magistrate judge. See 28 U.S.C. § 636(c); Fed.R.Civ.P. 73(b)(1).
Currently pending before the court is Qualipac's motion for partial summary judgment based upon non-infringement of the '402 and the '669 Trademark Registrations, its motion for partial summary judgment based upon the functionality of the registrations and fraud on the United States Patent and Trademark Office (“USPTO”) in the '668 and '669 Registrations, and finally, its motion to strike portions of certain declarations, portions of Modern Fence's opposition brief, and portions of Modern Fence's counter statement of disputed facts. All motions have been fully briefed and are ready for resolution.
Modern Fence is a corporation engaged in the business of manufacturing, distributing, and selling fence door hinge products. (Compl. ¶ 3.) Qualipac is also a corporation engaged in the business of manufacturing, distributing, and selling fence door hinge products. (Compl. ¶ 12.) Modern Fence asserts that its door hinge products have a distinctive appearance and hinge configuration that Modern Fence has used in commerce since as early as July 21, 1994 and that its distinctive appearance and hinge configuration is protected by multiple United States Trademark Registrations. (Compl. ¶¶ 3, 12.) Modern Fence's complaint alleges that Qualipac began manufacturing, offering for sale, and selling fence door hinge products that include and incorporate the distinctive appearance and configuration of Modern Fence's products, infringing upon Modern Fence's trademark registrations. (Compl. ¶¶ 12-13.)
In response, Qualipac pleads a number of affirmative defenses and counterclaims, the majority of which seek cancellation of the trademark registrations obtained by Modern Fence because of functionality, lack of secondary meaning, and fraud on the USPTO.
Modern Fence has asserted four trademark registrations against Qualipac. On January 11, 2005, Trademark registration 2,917,000 (“'000”) was registered based on a trademark application Modern Fence filed on October 16, 2003. (Defendant's Proposed Findings of Fact in Support of Motion for Partial Summary Judgment Based Upon Functionality of the Trademarks and Fraud on the USPTO (“DPFOF”) ¶ 4.) The '000 mark
consists of a configuration of a first hinge plate having at least three notches formed therein, a second hinge plate having at least three notches formed therein, one end of a T-member pivotally retained by two tabs extending from the first hinge plate and the other end of the T-member retained by two tabs extending from the second hinge plate.
(DPFOF ¶ 5.) The '000 Registration claims at least three “v” notch designs on the perimeter of the hinge plate. (DPFOF ¶¶ 5-6.) At first, the USPTO refused registration of the proposed mark based upon functionality of the mark as well as its nondistinctive configuration. According to the USPTO, the “proposed three-dimensional configuration mark appears to be functional for the identified goods.” (DPFOF ¶ 77.) Further, the USPTO required Modern Fence to present evidence that the proposed mark had acquired distinctiveness by submitting examples of advertising. (Kamarei Decl. ¶ 4, Ex. A.)
In response to the USPTO's rejection of the proposed mark due to functionality, Modern Fence indicated that it would (DPFOF ¶ 78.) In accordance with its response, Modern Fence submitted a drawing of the front side of the hinge, wherein the notches were drawn in solid lines and the pair of openings as well as the bridge was drawn in dashed lines. (DPFOF ¶ 7.) Modern Fence also noted that no design or utility patent application had ever been filed on the hinge. (Kamarei Decl. ¶ 4, Ex. A.) In response to the USPTO's rejection with respect to nondistinctive configuration, Modern Fence declared that it had been using the hinge configuration through substantially exclusive and continuous use in commerce since September 30, 1995. (DPFOF ¶ 10.) 1
A few years after registration was granted to the '000 configuration, Trademark Registration 3,337,668 (“'668”) was registered on November 20, 2007, based on a trademark application that Modern Fence filed on March 28, 2006. (DPFOF ¶ 25.) The '668 Registration is designed with a pair of openings and a centerpiece bridge in the middle of the openings. (DPFOF ¶¶ 28-29.) Specifically,
[t]he mark consists of a configuration of a first hinge plate having at least three first notches formed on a perimeter thereof and a first pair of openings formed through the first hinge plate; and a second hinge plate having at least three second notches formed in a perimeter thereof and a second pair of openings formed through the second hinge plate.
(DPFOF ¶¶ 26-27.) The '668 Registration claims at least three “v” notch designs on the perimeter of the hinge plate with a pair of openings. (DPFOF ¶¶ 26-28.) In procuring the '668 Registration, Modern Fence submitted a drawing of the configuration to the USPTO in which the pair of openings is drawn in solid lines. (DPFOF ¶ 54.)
On March 22, 2007, Margaret Knudson, Vice President of Modern Fence, signed a declaration in support of the distinctiveness of the '668 configuration, declaring that Modern Fence had been using the '668 configuration substantially and exclusively since May 10, 1998. (DPFOF ¶¶ 32-34.) Margaret Knudson represented to the USPTO that the first date of use for the '668 configuration was July 21, 1994. (DPFOF ¶ 30.) During the course of this action, however, Margaret Knudson admitted that the pair of openings in the hinge plate was not available until 1998 when Modern Fence utilized a laser machine to cut open the tabs in the hinge plate. (DPFOF ¶ 31.)
Additionally, with respect to the '668 Registration, Margaret Knudson represented to the USPTO that Modern Fence disclosed the '668 configuration by advertising the configuration in World Fence News nearly every month since September 1995. (DPFOF ¶ 35.) However, the back side of the '668 configuration was never advertised in World Fence News. (DPFOF ¶ 36.) In addition, according to the unopposed assertion of Qualipac, all six invoices that Modern Fence submitted to the USPTO as proof that the '668 configuration had been advertised in Fence News “were false.” (DPFOF ¶ 40.) More specifically, none of the advertisements corresponding to the submitted invoices showed the '668 configuration. (DPFOF ¶¶ 40-41.) Five of the invoices correspond to Modern Fence's advertisements of a hinge with a single opening, as opposed to the pair of openings of the '668 configuration. (DPFOF ¶ 42.) According to Margaret Knudson, Modern Fence did not “want others to copy [their] design.” (DPFOF ¶ 43.)
Modern Fence also represented to the USPTO that it disclosed the '668 configuration by advertising the configuration in the FENCETECH trade show circulars for 2000, 2001, 2002, and 2003. (DPFOF ¶ 37.) While it does not appear that the '668 configuration was ever advertised in the FENCETECH trade show circulars for any of the above-mentioned years, (DPFOF ¶ 38), Modern Fence indicates that it spent money to attend the FENCETECH tradeshow and to display the '668 hinge configuration, (Plaintiff's Counter Statement of Disputed Facts (“PCSDF”) ¶ 38). 2
On November 27, 2007, Trademark Registration 3,342,402 (“'402”) was registered based on a trademark application Modern Fence filed on November 15, 2004. (DPFOF ¶ 55.) The '402 mark
consists of a configuration of a first hinge plate having at least three first scalloped-out areas, a second hinge plate having at least three second scalloped-out areas, one end of a T-member pivotally retained by two first tabs extending from the first hinge plate and the other end of the T-member retained by two second tabs extending from the second hinge plate.
(DPFOF ¶ 56.) The '402 Registration claims at least three scallop notch designs on the perimeter of the hinge plate. (DPFOF ¶¶ 56-58.) The USPTO initially refused registration of the proposed '402 configuration based upon functionality of the mark. (DPFOF ¶ 79.) In response to the USPTO, Modern Fence stated the following: “It appears that the examiner is focusing on the functional portion of the mark and ignoring the non-functional curved notches formed in the exterior of the hinge as described in solid lines on the drawing page of the trademark application.” (DPFOF ¶ 79.) Modern Fence submitted a drawing of the front or pivotal side of the configuration, wherein the notches were...
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