Tommy's Supplies LLC v. Papillon Ink LLC
| Decision Date | 31 March 2020 |
| Docket Number | CASE NO. 3:16-cv-1922(PAR) |
| Parties | TOMMY'S SUPPLIES LLC, Plaintiff, v. PAPILLON INK LLC, Defendant. PAPILLON INK LLC, Third-Party Plaintiff, v. TOMMY RINGWALT SR., TOMMY RINGWALT JR., And CAROL LANDRY, Third-Party Defendant. |
| Court | U.S. District Court — District of Connecticut |
Plaintiff-counterclaim defendant Tommy's Supplies LLC ("Tommy's") brings this action alleging trademark infringement, false designation of origin, and unfair competition by Defendant counterclaim-plaintiff, Papillon Ink LLC ("Papillon"), pursuant to the Lanham Act, 15 U.S.C. §§ 1051 et seq. Tommy's, a limited liability company with a principal place of business in Somers, Connecticut, is engaged in the business of manufacturing, advertising, promoting, and selling Starbrite tattoo ink. (Dkt. #46 at 2). This case arises out of the Papillons' allegedinfringement on Tommy's mark by manufacturing, distributing, and selling tattoo ink also under the name Starbrite Ink.
After Tommy's filed the complaint, Papillon filed counterclaims and a third-party complaint against Tommy Ringwalt Sr. ("Tommy Sr."), Tommy Ringwalt Jr. ("Tommy Jr."), and Carol Landry ("Ms. Landry"). Papillon's claims against the three individuals relate to their involvement in the operation of Tommy's Supplies and the alleged misuse and misappropriation of the Starbrite mark. Papillon's complaint alleges trademark infringement by tarnishment, false designation of origin, unfair competition and breach of contract. The third-party complaint also seeks declarations regarding the ownership of the Starbrite mark.
The parties have each filed cross-motions for summary judgment. (Dkt. ##96, 101). Oral argument was held January 28, 2020. During the oral argument each party was asked pointed questions regarding its position. Based on statements and concessions made during the oral argument, as well as statements and arguments made in the briefs, the plaintiff's Motion for summary judgment is GRANTED in part and DENIED in part and the defendant's Motion for Summary Judgment is DENIED.
The following facts, drawn from the parties' Local Rule 56(a)1 and 56(a)2 statements, are undisputed and material to the claims.
Michael Nicholson ("Mr. Nicholson") and Meredith Holden ("Ms. Holden") were married from 1979 until Michael's death in 1998. (Dkt. #118, ¶ 1.).
In the 1980s, Mr. Nicholson formed and operated Papillon Tattoo Limited. (Id., ¶ 2.). The business was run out of the basement of the home of Mr. Nicholson and Ms. Holden in Enfield, CT. (Id., ¶ 3.). Tommy Sr. manufactured tattoo needles, and Mr. Nicholson allowed him to retain the proceeds from the sale of the tattoo needles. (Dkt. #114, ¶ 2).
In 1991, Tommy Sr. left Connecticut and moved to Tucson, Arizona. (Dkt. #118, ¶ 12.). While in Arizona, Tommy Sr. sold tattoo needles and supplies under the name Tommy's Supplies. (Id. ¶ 6.).
While Tommy Sr. was in Arizona, Mr. Nicholson and Carol Landry, the mother of Tommy Sr., began working for Papillon and assisting in mixing tattoo ink for Papillon Studio. (Id. ¶ 8.). Ms. Landry did not have an employment contract with Papillon Studio. (Id. ¶ 9.). Ms. Landry did not know how to mix ink prior to working at Papillon. (Dkt. #118, ¶ 41.). Ms. Landry took notes concerning the combination of pigments and otheringredients used to make various colored tattoo inks. (Dkt. #114, ¶ 14.). Ms. Landry wrote those notes in a notebook that she purchased when she began working for Papillon Studio. (Id.)
Mr. Nicholson passed away in 1998, and his widow, Ms. Holden, began running Papillon Studio. (Id. ¶ 12.) Ms. Holden did not like the tattoo industry and did not want to the run the company. (Id. ¶ 16.) Ms. Holden was responsible for the day-to-day operations of Papillon including ordering, shipping, ink production, and tattoo machine production. (Dkt. #118, ¶ 32.)
In late 2000 or early 2001, Ms. Holden provided Tommy Sr. and a business partner with airline tickets to return to Connecticut from Arizona. (Dkt. #114, ¶ 17, Dkt. #118 ¶ 34).
Upon his return to Connecticut in 2001, Tommy Sr. continued to make cosmetic needles, at Papillon's address in Enfield, Connecticut. (Dkt. #118, ¶ 37.) He also began working at Papillon and was eventually named Vice President. (Dkt. #118, ¶ 35.) Ms. Holden continued to handle the administrative aspects of the Papillon Studio business, and Tommy Sr. was in charge of marketing, attending conventions, and interacting with customers. (Dkt. #114, ¶ 18.) Tommy Jr. also worked for Papillon Studio for approximately one year assisting Ms. Holden in the administration of the business. (Id. ¶ 19.)
Tommy's Supplies was registered with the Connecticut Secretary of the State in September 2003. (Id. ¶ 21.)
After Tommy Sr. told Ms. Holden that he could register the STARBRITE mark online, Ms. Holden told him to do so. (Id. ¶ 31.) Ms. Holden did not tell Tommy Sr. to file the STARBRITE trademark application in Papillon's name. (Id. ¶ 32.)
Tommy Sr. filed the STARBRITE trademark application on March 27, 2003. On December 4, 2003, Tommy Sr. submitted a response to an Office Action dated September 23, 2003 from the United States Patent and Trademark Office ("USPTO"). The response was on Tommy's Supplies LLC letterhead and included a specimen of the STARBRITE mark. (Id. ¶ 34.)
U.S. Trademark Registration No. 2852912 for STARBRITE was issued on June 15, 2004 in the name of Tommy Ringwalt Sr. (Id. ¶ 36.) Ms. Holden was not surprised when she learned that the STARBRITE mark was issued to Tommy Sr. (Id. ¶ 37.)
Declarations of Use and Incontestability under Sections 8 and 15 of the Lanham Act (15 U.S.C. §§ 1058 and 1065) were filed for Registration No. 2852912 on September 10, 2010. (Id. ¶ 38.) U.S. Trademark Registration No. 2852912 was assigned from Tommy Sr. to Tommy's Supplies on December 29, 2011, as recorded by the USPTO on December 30, 2011. (Id. ¶ 39.)
A Declaration of Use and a Renewal under Sections 8 and 9 of the Lanham Action (15 U.S.C. §§ 1058 and 1059) was filed for Registration No. 2852912 on April 4, 2014 and accepted on April 19, 2014. (Id. ¶ 40.)
Tommy's Supplies owns U.S. Trademark Registration No. 4724705 for the mark STARBRITE COLORS GOES IN STAYS IN (Stylized) and Design for "tattoo inks," in Class 2, filed on November 13, 2013 and issued on April 21, 2015. (Id. ¶ 41.) Tommy's Supplies owns U.S. Application Serial No. 87185677 for the mark TOMMY'S STARBRITE COLORS (Stylized) and Design for "tattoo inks; tattooing ink; tattoo engraving ink," in Class 2, filed on September 28, 2016. (Id. ¶ 42.)
Papillon applied for the trademark STARBRITE COLORS PURE PIGMENT DISPERSION, U.S. Application Serial No. 87039378, but the application was refused as likely to cause confusion with Tommy's Supplies STARBRITE and STARBRITE COLORS GOES IN STAYS IN marks. (Id. ¶ 43.)
Tommy's Supplies also filed registrations, in 2012, for STARBRITE in numerous countries around the world, including nations in the European Union, China, Australia, Singapore, the Philippines, and Thailand. (Dkt. #118, ¶ 91.)
In the 2003-04 STARBRITE Trademark Application, Tommy Sr. initially included specimens that related to Tommy's Supplies, (a Tommy's Supplies Advertisement), but the application was rejected because the specimen was an advertisement. A second specimen was submitted once again with Tommy's labeling and was accepted. (Id. ¶ 93.) The submission of these specimens wasaccompanied by correspondence bearing Tommy's Supplies letterhead. (Id. ¶ 94.)
In 2004, Tommy's Supplies and Papillon Studio entered into an Exclusive Distributorship Agreement ("Distribution Agreement"), pursuant to which Papillon Studio granted Tommy's Supplies a nonexclusive right to purchase and distribute all products produced by Papillon Studio. (Dkt. #114, ¶ 23.) Payment under the Distribution Agreement was due upon ordering. (Id. ¶ 24.)
At the time that the 2004 STARBRITE trademark was registered, and at all times pertinent to this action, Tommy Sr. was an employee of Papillon and received a weekly check, and a W-2. (Dkt. #118, ¶ 55.)
Pursuant to the Distribution Agreement, it was understood that Tommy's Supplies was going to sell Papillon's STARBRITE ink in Europe. (Id. ¶ 64.)
Tommy Sr. began manufacturing his own ink in 2003, while still at Papillon, prior to the Distribution Agreement. (Id. ¶ 68.) Tommy Sr. left Papillon in 2005. (Id. ¶ 69.) Tommy Jr. was subsequently laid off from Papillon. (Id. ¶ 70.)
Ms. Holden later discovered that Tommy St. had begun selling tattoo ink to Dermagraphics, CAM, and Tattoo Supplies UK. (Id. ¶ 71.) Some of Papillon's customers have reported that they mistakenly bought Tommy's ink instead of Papillon's ink.(Id. ¶ 98.) Tommy Sr., Tommy Jr., Tommy's Supplies, its agents, servants, and/or employees never had, and do not have the STARBRITE proprietary formula developed by Papillon. (Id. ¶ 100.)
Once Tommy Sr. and Tommy Jr. ceased working at Papillon Studio, they began to operate Tommy's Supplies from a separate location. (Dkt. #114, ¶ 27.) However, Ms. Landry continued to work for Papillon Studio mixing ink. (Id. ¶ 28.)
Ms. Landry only taught her ink recipes to two people, Aaron Oullette and David Taylor, and she only taught them a few colors. (Id. ¶ 29.) Ms. Landry did not teach Tommy Jr. how to mix inks or the recipes she made for Papillon. (Id. ¶ 30.)
While still working at Papillon, Ms. Landry began "cleaning" at Tommy's Supplies. (Dkt. #118, ¶ 113.) Ms. Landry was not allowed to go into the ink room at Tommy's Supplies, as Tommy Jr. did not want trade secrets revealed by either side. (Id. ¶ 114.)
Shortly after Tommy Sr. and Tommy Jr. left Papillon Studio, Ms. Holden became aware that Tommy's Supplies was selling STARBRITE Ink. (Dkt. #114, ¶ 45.) Tommy Jr. created the formulas for the Starbrite Ink sold by Tommy's Supplies and the formulas were different than the formulas used by Papillon Supply. (Id. ¶ 46.)
Ms. Holden sold the company to...
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