Omega S.A. v. Omega Engineering, Inc.
| Decision Date | 30 September 2005 |
| Docket Number | No. CIV.A.3:01cv2104(SRU).,CIV.A.3:01cv2104(SRU). |
| Court | U.S. District Court — District of Connecticut |
| Parties | OMEGA S.A., Plaintiff, v. OMEGA ENGINEERING, INC., et al., Defendants. Omega Engineering, Inc., Counterclaim Plaintiff, v. Omega S.A. and The Swatch Group Ltd., Counterclaim Defendants. |
James R. Hastings, James M. Collen, Matthew C. Wagner, Paul A. Fattibene, Philip J. Miolene, Collen Law Associates, Ossining, NY, for Plaintiff.
Anthony P. Delio, Peter W. Peterson, Robert Curcio, Delio & Peterson, New Haven, CT, Paul C. Llewellyn, Thomas A. Smart, Kaye, Scholer, New York City, Thomas E. Minogue, Jr., Minogue Birnbaum, New Canaan, CT, for Defendants.
RULING ON CROSS-MOTIONS FOR SUMMARY JUDGMENT
Omega S.A. ("OSA"), a Swiss manufacturer of watches and timepieces, has sued American manufacturer of thermocouples, Omega Engineering, Inc. and its affiliates, Omega Scientific, Inc. and Omega Press, Inc. (collectively "OEI"). This case is the third in a series of lawsuits between these parties in the District of Connecticut. Principally, OSA alleges that OEI has engaged in trademark violations and unfair competition. OEI has asserted counterclaims against OSA and The Swatch Group Ltd. ("Swatch"), OSA's parent company, alleging trademark violations, unfair competition, and cybersquatting, and seeking cancellation of two OSA trademarks. The parties have filed cross-motions for partial summary judgment.
OEI has moved for summary judgment on all five of OSA's claims as well as on its counterclaim seeking cancellation of OSA trademarks due to abandonment and fraud. OSA has moved for summary judgment on its claims of unfair competition under the Lanham Act and the Connecticut Unfair Trade Practices Act (CUTPA), as well as on OEI's counterclaim of cybersquatting.
First, because there are no genuine of issues of material fact concerning essential elements of OSA's trademark infringement, dilution, and unfair competition claims, I grant OEI's motion for summary judgment on those claims. Second, because there is no genuine issue of material fact concerning the required bad faith intent, I grant OSA's motion for summary judgment on OEI's claim of cybersquatting. Third, I deny OEI's motion for summary judgment on its trademark cancellation counterclaim; OEI has failed to produce evidence to support the required fraudulent intent for cancellation on grounds of fraud, and OSA has raised a genuine issue of material fact concerning the alleged abandonment of those marks.
OEI and OSA have been involved in other, related litigation in this District. In 1998, OEI sued OSA, alleging that OSA failed to abide by the terms of a contractual agreement that settled various disputes regarding the parties' trademarks. During a court-sponsored settlement conference, the parties reached a settlement that was enforced by the District Court despite OSA's protest. Omega Engineering, Inc. v. Omega S.A., 2004 WL 2191588 (D.Conn. Aug.12, 2004) ("Omega I"). OSA has appealed the District Court's order enforcing the settlement, and that appeal remains pending before the Second Circuit.
In 2000, OSA sued OEI for cybersquatting based on OEI's registration and use of the web domain names: omegawatch.com and omegatime.com. The District Court ruled on the parties' cross-motions for summary judgment in Omega S.A. v. Omega Engineering, Inc., 228 F.Supp.2d 112 (D.Conn.2002) ("Omega II"). Following that ruling, the parties settled and stipulated to a dismissal of Omega II with prejudice. As part of the Omega II settlement, OEI agreed to transfer the two domain names to OSA. Pl. L. Rule 56(a)1 Statement (doc. # 118) ¶ 26; Def. L. Rule 56(a)2 Statement (doc. # 126) ¶ 26.
The present action has been dubbed "Omega III."
Except where noted otherwise, the following facts are undisputed.
Omega S.A., a Swiss company and subsidiary of Swatch, manufactures and sells watches and other horological products and timekeeping equipment, including equipment for timing athletic competitions. Pl. L. Rule 56(a)1 Statement ¶ 1 (doc. # 118); Def. L. Rule 56(a)1 Statement (doc. # 108) ¶ 44.
OSA products include watches that are upscale, luxury goods, and their prices correspond to that class of product. Emmons Tr. 61-62; Sauser Rupp Tr. 87. Omega Electronics, a licensee of OSA, sells Omega-branded sports timing devices in the United States. Rentsch Tr. 109, 111, 118-19; Sauser Rupp Tr. 163-64; Gibbons Tr. 37, 153.
OSA uses word and design trademarks that incorporate the word "Omega" and the Greek letter "Ω". Pl. L. Rule 56(a)1 Statement ¶¶ 2, 33. Its United States trademark registrations include: Registration Nos. 708,731 and 1,290,661.
OSA uses the domain name www.omega.ch. Pl. L. Rule 56(a)1 Statement ¶ 1. On behalf of its subsidiary, Swatch completed an application for the domain name: www.omega.us. The so-called Sunrise application process permitted persons or entities, including foreign entities with a presence in the United States, to register for web domains with a .us top-level domain ("usTLD"), in advance of general registration. To participate in the Sunrise process, applicants were required to hold a United States federal trademark registration or application on the Principal Register of the Patent and Trademark Office ("PTO"). Ex. E to doc. # 119-3.1 Because multiple trademark owners might apply for the same .us domain name, a random selection process assigned domain names for which there were multiple qualified applicants. Id. The domain name, www.omega.us, was eventually assigned to Swatch.
Omega Engineering, Inc. was founded in 1962 by Betty Ruth Hollander. M. Hollander Dec. ¶ 2. Its first products were thermocouples, devices used in factories and laboratories to measure temperatures. Id. The founder chose to name the company Omega Engineering because of an early user of the thermocouples, a company called Alpha Molykote. Id.
OEI has used a design mark consisting of juxtaposed Greek letters Omega (Ω) and Epsilon (E), the so-called "Omega bug," for nearly forty years. Id. ¶ 4 and Ex. A.
In 1966, OEI first registered in the United States for an Omega trademark relating to industrial and scientific apparatus. Riggs Dec. ¶ 2 and Ex. A. OEI's Omega trademark registrations include: Registration No. 2,022,762 (" '762") ("OMEGA"), Registration No. 2,034,705 (" '705") ("Ω"), and Registration No. 2,236,657 (" '657") ("OMEGA"). Riggs Dec. ¶¶ 4-7 and Exs. D-F. According to OEI, Registrations '762 and '705 relate to "timers, namely period timers ... industrially and/or scientifically employed" and "industrial and scientific clocks," and Registration '657 covers telecommunications. Riggs Dec. ¶¶ 4-6 and Exs. C-E. OSA appears to dispute the descriptions of these Registrations as set forth in OEI's Local Rule 56(a)1 statement. In its Local Rule 56(a)2 statement, OSA states simply: "Plaintiff denies the facts in [paragraphs 33-35]" and cites — without pinpoints — the voluminous file histories for Registrations '762, '705, and '675. Def. L. Rule 56(a)2 Statement ¶¶ 30-32.
OEI holds several pending trademark applications. These applications include: Serial No. 76/337,374 (an intent-to-use application under 15 U.S.C. § 1051(b) for the design mark Ω.com); Serial No. 76/337,450 (an intent-to-use application for a design mark consisting of "Ω"); and Serial No. 76/242,073 (an intent-to-use application for the design mark Ω). Riggs Dec. ¶¶ 7, 9 and Exs. F, G.
OEI markets and distributes, under its Omega marks, products that include scientific apparatus for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain, and flow. M. Hollander Dec. ¶ 5. Because the measurement of time is often critical to their applications, some of these apparatus contain a timing function. Id.
Since at least 1987, OEI has marketed and distributed time-related goods for science and industry under its Omega marks. Id. ¶ 6. Omega Press, an OEI affiliate, operates as a trade vehicle for OEI and sells scientific and technical books, computer software, and printed matter under OEI's Omega marks. Id. ¶ 11. Omega Scientific, also an OEI affiliate, uses Omega marks in connection with its sale of scientific and technical instruments. Id. ¶ 12 and Ex. G.
OEI does not offer or sell any goods or services under the Omega marks to markets or fields other than industry and science.2 M. Hollander Dec. ¶¶ 13, 15-16. OEI advertises its goods in specialized trade publications and journals and via direct mail. Id. ¶¶ 17-18 and Exs. I-L. OEI also advertises its products and services at scientific and industrial trade shows. M. Hollander Dec. ¶ 19 and Ex. M. OEI maintains the web domain www.omega.com, and its products are available for purchase there.
After many years of trademark disputes spanning several countries, in 1994 OEI and OSA attempted to resolve their trademark disputes in a worldwide agreement. M. Hollander Dec. ¶ 30 and Ex. T. The agreement stated that both parties desired:
an agreement for the avoidance of future interference Worldwide between their respective fields of commercial operation under their Rights in respect of Trademarks consisting of or including the word OMEGA and/or the Greek letter Ω or containing elements colourably resembling either of thos[e] two elements.
M. Hollander Dec. ¶ 31 and Ex. T ¶ F.
In addition to settling particular contested trademark matters between the parties, the 1994 agreement provided:
4. Henceforth from the signing of this Agreement and effective in all countries of the World: —
a. OMEGA ENGINEERING INCORPORATED undertakes not to use, register or apply to register any trademark consisting of or containing the word OMEGA or the Greek letter Ω or any mark containing...
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