SCI Systems, Inc. v. Solidstate Controls, Inc.

• Decision Date: 09 October 1990
• Docket Number: No. C-2-86-971.,C-2-86-971.
• Parties: SCI SYSTEMS, INC., Plaintiff, v. SOLIDSTATE CONTROLS, INC., Defendant.
• Court: U.S. District Court — Southern District of Ohio

748 F. Supp. 1257

SCI SYSTEMS, INC., Plaintiff, v. SOLIDSTATE CONTROLS, INC., Defendant.

No. C-2-86-971.

United States District Court, S.D. Ohio, E.D.

May 1, 1990.

On Motion For Certification of Interlocutory Appeal October 9, 1990.

Edwin M. Baranowski, Porter, Wright, Morris & Arthur, Columbus, Ohio, for plaintiff.

Philip Albert Brown, Vorys, Sater, Seymour & Pease, Columbus, Ohio, for defendant.

MEMORANDUM AND ORDER

HOLSCHUH, Chief Judge.

This is an action for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051 et seq., and the common law in connection with the defendant's alleged wrongful use of plaintiff's registered trademark "SCI". This matter is before the Court on various motions of the parties including defendant's motion for summary judgment on the grounds of laches and estoppel. The parties request an oral hearing on the motion.

I.

Rule 56(c), Fed.R.Civ.P., provides that "the summary judgment motion shall be served at least ten days before the time fixed for the hearing. The adverse party prior to the day of hearing may serve opposing affidavits." The term "hearing," however, does not necessarily mean oral hearing. Finn v. Gunter, 722 F.2d 711, 712 n. 3 (11th Cir.1984); Moore v. State of Florida, 703 F.2d 516, 519 (11th Cir.1983). If the adverse party is given the ten-day notice and is afforded an opportunity to submit materials in opposition to the motion, the party has been heard within the meaning of Rule 56. Moore v. State of Florida, 703 F.2d at 519 (quoting Kibort v. Hampton, 538 F.2d 90, 91 (5th Cir.1976)). In this case, the parties have already submitted extensive briefing on the motion. The Court does not believe that an oral hearing is necessary to rule upon defendant's motion for summary judgment; accordingly, the parties' requests for a hearing are DENIED.

II.

Plaintiff, SCI Systems, Inc., is a Delaware corporation with its principal offices located in Huntsville, Alabama. Plaintiff's name was originally "Space Craft, Inc." until it officially changed its name to SCI Systems, Inc. in June of 1969. Plaintiff is the owner of U.S. trademark registration No. 1,119,950 for the trademark "SCI" which was issued on June 12, 1979. This particular trademark is composed of simply the capital letters "SCI" although plaintiff asserts that it had used these letters from time to time since 1969 within a rectangular "box" and has always used the colors blue and white in the presentation of its trademark. Plaintiff maintains that it has used "SCI" as its trademark and service mark continuously since at least July, 1961 in connection with a variety of electrical and electronic goods including electrical power supplies and in connection with engineering services which it provides. Plaintiff contends that since 1969 it has used the mark "SCI" as a part of its corporate name and as a prominent part of the corporate names for several of its subsidiaries. The complaint alleges that defendant has advertised and displayed its goods at the same trade shows as plaintiff and has publicized its use of "SCI" in the same channels of trade in connection with electrical power supplies and related electrical products and is thereby infringing on plaintiff's registered trademark. Plaintiff contends that such infringement on the use of the mark "SCI" has created a likelihood of, and actual, confusion and mistake or deception of customers.

Defendant, Solidstate Controls, Inc., a Delaware corporation with its principal place of business in Columbus, Ohio, manufacturers and sells electrical power control equipment and is the owner of U.S. trademark registration No. 860,043 for "SCI and design" which was issued on November 12, 1968. This trademark is made up of the capital letters "SCI" surrounded by a box design including two triangles, a circle and another larger circle with an "x" in it (hereinafter referred to as the "arrows" design or logo). Defendant contends that it has continuously used the trademark "SCI" since at least February 1962 and on or in association with its uninterruptible power systems since at least October, 1962. On March 29, 1983, defendant applied to register the trademark "SCI," which consisted of simply the capital letters "SCI," for its uninterrupted power apparatus goods; on April 3, 1984 defendant's "SCI" mark was published for opposition. On April 30, 1984, the plaintiff filed a notice of opposition to the registration, thereby objecting to defendant's use of the unadorned mark "SCI".

Defendant maintains that plaintiff knew of defendant's use of the "SCI" mark since at least November 17, 1969 when plaintiff's counsel sent a letter to defendant which read as follows:

We represent Space Craft, Inc. which does business under the trademark SCI.

It has recently come to our client's attention that you are doing business under that trademark and that substantial confusion among customers is or is likely to occur among our client's customers. Our client has been doing business in Ohio for some time.

Unless you give us your immediate assurance that you will promptly cease and desist from using the trademark SCI, we will be forced to institute legal action against you.

Exhibit 6 to defendant's motion for summary judgment. Defendant's counsel responded to plaintiff's warning on November 25, 1969 as follows:

Our client, Solidstate Controls Inc., has referred your letter of November 17, 1969 to us.

Please be advised that the trademark "SCI" is registered to our client on the Principal Register in the United States Patent Office under the Trademark Act of 1946.

Defendant's exhibit DX-23 to reply memorandum. Defendant contends that because plaintiff knew of defendant's use of the SCI mark since at least 1969 but did not bring this action until 1986, defendant is entitled to summary judgment on the grounds of laches and estoppel.

III.

Summary judgment is as appropriate in a trademark infringement case as in any other case and should be granted or denied on the same principles. WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1086 (6th Cir.1983).

Fed.R.Civ.P. 56(c) provides:

Summary judgment ... shall be rendered forthwith 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 judgment as a matter of law.

"This standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986) (emphasis in original); Kendall v. Hoover Co., 751 F.2d 171, 174 (6th Cir.1984).

Summary judgment will not lie if the dispute about a material fact is genuine; "that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248, 106 S.Ct. at 2510. The purpose of the procedure is not to resolve factual issues, but to determine if there are genuine issues of fact to be tried. Lashlee v. Sumner, 570 F.2d 107, 111 (6th Cir.1978). Therefore, summary judgment will be granted "only where the moving party is entitled to judgment as a matter of law, where it is quite clear what the truth is, ... and where no genuine issue remains for trial, ... for the purpose of the rule is not to cut litigants off from their right of trial by jury if they really have issues to try." Poller v. Columbia Broadcasting Sys., 368 U.S. 464, 467, 82 S.Ct. 486, 488, 7 L.Ed.2d 458 (1962) (quoting Sartor v. Arkansas Natural Gas Corp., 321 U.S. 620, 627, 64 S.Ct. 724, 728, 88 L.Ed. 967 (1944)); accord County of Oakland v. City of Berkley, 742 F.2d 289, 297 (6th Cir.1984).

In a motion for summary judgment the moving party bears the "burden of showing the absence of a genuine issue as to any material fact, and for these purposes, the evidence submitted must be viewed in the light most favorable to the opposing party." Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970) (footnote omitted); accord Adams v. Union Carbide Corp., 737 F.2d 1453, 1455-56 (6th Cir.), cert. denied, 469 U.S. 1062, 105 S.Ct. 545, 83 L.Ed.2d 432 (1984). Inferences to be drawn from the underlying facts contained in such materials must also be considered in the light most favorable to the party opposing the motion. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962); Watkins v. Northwestern Ohio Tractor Pullers Ass'n, 630 F.2d 1155, 1158 (6th Cir.1980). Additionally, "unexplained gaps" in materials submitted by the moving party, if pertinent to material issues of fact, justify denial of a motion for summary judgment. Adickes, 398 U.S. at 157-60, 90 S.Ct. at 1608-10.

If the moving party meets its burden and adequate time for discovery has been provided, summary judgment is appropriate if the opposing party fails to make a showing sufficient to establish the existence of an element essential to that party's case and on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). The existence of a mere scintilla of evidence in support of the opposing party's position is insufficient; there must be evidence on which the jury could reasonably find for the opposing party. Anderson, 477 U.S. at 252, 106 S.Ct. at 2512.

When a motion for summary judgment is made and supported as provided in this rule, an adverse party may not rest upon the mere allegations or denials of the adverse party's pleading, but the adverse party's response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If the adverse party does not so

...