Paccar Inc. v. Telescan Technologies, L.L.C.
| Citation | 319 F.3d 243 |
| Decision Date | 05 February 2003 |
| Docket Number | No. 00-2183.,00-2183. |
| Parties | PACCAR INC., Plaintiff-Appellee, v. TELESCAN TECHNOLOGIES, L.L.C., Defendant-Appellant. |
| Court | United States Courts of Appeals. United States Court of Appeals (6th Circuit) |
Thomas G. Cardelli, Cardelli, Hebert & Lanfear, Royal Oak, MI, David C. Lundsgaard (argued and briefed), Douglas C. Berry (briefed), Graham & Dunn, Seattle, WA, for Plaintiff-Appellee.
Mary Massaron Ross (argued and briefed), Plunkett & Cooney, Detroit, MI Arnold S. Weintraub, Plunkett & Cooney, Bloomfield Hills, MI, for Defendant-Appellant.
Paul A. Levy (argued and briefed), Public Citizen Litigation Group, Washington, DC, for Amicus Curiae.
Before: SILER and MOORE, Circuit Judges; STAFFORD, District Judge.*
Defendant TeleScan Technologies, L.L.C. ("TeleScan") appeals the district court's preliminary injunction enjoining it from using plaintiff PACCAR Inc.'s ("PACCAR") trademarks "Peterbilt" and "Kenworth" in any of its Internet domain names and metatags. The district court concluded that PACCAR demonstrated a strong likelihood of success on the merits of its claims for trademark infringement and trademark dilution under the Lanham Act, 15 U.S.C. §§ 1114 and 1125. As set forth below, the preliminary injunction is AFFIRMED IN PART and VACATED IN PART and the case REMANDED for further proceedings.
Plaintiff PACCAR is a leading manufacturer of heavy trucks and truck parts under several trademarks, including the "Peterbilt" and "Kenworth" trademarks. Peterbilt Motors Company and Kenworth Motor Truck Company, both divisions of PACCAR, have been manufacturing trucks under their respective names for over sixty years. PACCAR, which owns numerous U.S. Trademark Registrations for the "Peterbilt" and "Kenworth" trademarks, has invested substantial amounts of money in developing, marketing, and advertising those marks.
In addition to its manufacturing business, PACCAR administers a used truck locator service on its web site, www.paccar.com. This service permits consumers to search a database of used Peterbilt and Kenworth trucks available for sale from Peterbilt and Kenworth dealers. Consumers can search the database using twelve different fields, including model, year, and location.
Defendant TeleScan owns several web sites providing truck locator services. Using TeleScan's www.truckscan.com web site, consumers can search for new and used trucks either by viewing listings by dealer or by searching a database of participating dealers using eleven different search terms, including manufacturer, model, and year. Dealers pay a monthly charge to have their listings included in the database. Another TeleScan web site, www.telescanequipment.com, provides links to TeleScan's manufacturer-specific web sites, including www.peterbiltnewtrucks.com, www.peterbiltusedtrucks.com, www.peterbilttruckdealers.com, www.kenworthnewtrucks.com, www.kenworthusedtrucks.com, and www.kenworthtruckdealers.com. In addition to using the "Peterbilt" and "Kenworth" trademarks in its domain names,1 TeleScan displays the marks in the wallpaper underlying the manufacturer-specific web sites in fonts similar to the distinctive fonts in PACCAR's trademarks (i.e., cursive script for "Peterbilt" and block script for "Kenworth") and includes the words "Peterbilt" and "Kenworth" in the sites' metatags.2 The www.telescanequipment.com and manufacturer-specific web sites provide links to the www.truckscan.com database. Each manufacturer-specific web site contains the following disclaimer: "This web site provides a listing service for name brand products and has no affiliation with any manufacturer whose branded products are listed herein."3
By letter dated May 18, 1999, PACCAR asserted that TeleScan's use of its trademarks "Peterbilt" and "Kenworth" in TeleScan's domain names infringes upon PACCAR's trademark rights and demanded that TeleScan relinquish ownership of the domain names. In response, TeleScan acknowledged PACCAR's ownership of the trademarks "Peterbilt" and "Kenworth" but maintained that its use of the marks is a permissible generic fair use.
In 1999, PACCAR brought an action under the Lanham Act and state law against TeleScan in the United States District Court for the Western District of Washington. The case was dismissed for lack of personal jurisdiction over TeleScan.
Subsequently, TeleScan brought a declaratory judgment action in the United States District Court for the Eastern District of Michigan, seeking a declaration that its activities do not infringe upon PACCAR's trademarks. TeleScan also claimed that PACCAR tortiously interfered with its business relationships relating to its web sites and Internet business. PACCAR counterclaimed, alleging claims for trademark infringement, unfair competition, false designation of origin, and trademark dilution under the Lanham Act, 15 U.S.C. § 1114(1) and 1125(a), (c); common law unfair competition and dilution; and violations of the Michigan Consumer Protection Act, Mich. Comp. Laws § 19.418 et seq. The district court realigned the parties and ordered that the caption show PACCAR as plaintiff and TeleScan as defendant.
PACCAR then moved for preliminary injunctive relief under Fed.R.Civ.P. 65, seeking an order enjoining TeleScan from using domain names that incorporate PACCAR's trademarks and from using web sites that convey the impression that the sites are affiliated with or sponsored by PACCAR. PACCAR also requested that TeleScan be required to transfer ownership of the domain names containing "Peterbilt" and "Kenworth" to PACCAR. TeleScan defended the motion on the grounds that it made a descriptive or fair use of PACCAR's trademarks.
In 2000, the district court granted PACCAR's motion for a preliminary injunction, concluding that PACCAR demonstrated a strong likelihood of success on its trademark infringement and trademark dilution claims. It enjoined TeleScan from using its domain names containing "Peterbilt" or "Kenworth" and ordered TeleScan to transfer registration of those domain names to PACCAR. In addition, it enjoined TeleScan from using the trademarks "Peterbilt" or "Kenworth" in any domain name or metatag and from using the trademarks on its web sites "in a way such that it is likely to cause confusion on the part of consumers that the web page is associated with PACCAR, Peterbilt or Kenworth, including the use of the trademarks as the title or as `wallpaper' background of a web page."
TeleScan appealed from the preliminary injunction and moved this court for an order staying the injunction pending appeal. The motion was denied.
We review the district court's decision to grant a preliminary injunction for abuse of discretion, according "great deference to the decision of the district court." Blue Cross & Blue Shield Mut. of Ohio v. Blue Cross & Blue Shield Ass'n, 110 F.3d 318, 322 (6th Cir.1997). "The district court's determination will be disturbed only if [it] relied upon clearly erroneous findings of fact, improperly applied the governing law, or used an erroneous legal standard." Id.
When ruling on a motion for a preliminary injunction, the district court must consider and balance four factors: (1) whether the movant has a strong likelihood of success on the merits; (2) whether the movant would suffer irreparable injury without the injunction; (3) whether issuance of the injunction would cause substantial harm to others; and (4) whether the public interest would be served by issuance of the injunction. Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir.1998).4 The only factor that TeleScan challenges on appeal is PACCAR's likelihood of success on the merits of its trademark infringement and dilution claims.
PACCAR alleges that TeleScan's use of the "Peterbilt" and "Kenworth" marks in its domain names infringes on PACCAR's trademark rights in violation of § 32 of the Lanham Act, which provides a cause of action against "[a] person who ... use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion." 15 U.S.C. § 1114(1).
"The touchstone of liability under § 1114 is whether the defendant's use of the disputed mark 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 Ctr., 109 F.3d 275, 280 (6th Cir.1997). In determining whether a "likelihood of confusion" exists, we examine eight 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) intent of the defendant in selecting the mark; and (8) likelihood of expansion of the product lines. Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.1982). These factors "imply no mathematical precision, and a plaintiff need not show that all, or even most, of the factors listed are present in any particular case to be successful." Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988). "The ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way." Daddy's Junky Music Stores, 109 F.3d at 280.
Whether there is a likelihood of confusion is a mixed question of fact and law. Wynn Oil Co., 839 F.2d at 1186. Thus, we review for clear error the findings of fact supporting the existence of the "likelihood of confusion" factors but review de novo the legal question of...
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