Unique Sports Products, Inc. v. Babolat Vs, 1:02-CV-2947-CAP.

• Decision Date: 30 November 2005
• Docket Number: No. 1:02-CV-2947-CAP.,1:02-CV-2947-CAP.
• Citation: 403 F.Supp.2d 1229
• Parties: UNIQUE SPORTS PRODUCTS, INC., Plaintiff, v. BABOLAT VS; Babolat vs North America, Inc.; and Rocky Mountain Sports, Inc. of Boulder, USA, Defendants.
• Court: U.S. District Court — Northern District of Georgia

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403 F.Supp.2d 1229 UNIQUE SPORTS PRODUCTS, INC., Plaintiff,
v.
BABOLAT VS; Babolat vs North America, Inc.; and Rocky Mountain Sports, Inc. of Boulder, USA, Defendants. No. 1:02-CV-2947-CAP. United States District Court, N.D. Georgia, Atlanta Division. November 30, 2005.

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Frederic Chaiken, James Jat Wolfson, Chaiken Klorfein, Atlanta, GA, for Plaintiff.

Andrea Anderson, Donald A. Degnan, Holland & Hart, Boulder, CO, Jerry Bryon Blackstock, Joel K. Gerber, Hunton & Williams, Atlanta, GA, Timothy P. Getzoff, Holland & Hart, Boulder, CO, Ann Marie Depriester, Hunton & Williams, Atlanta, GA, Frederic Chaiken, Chaiken Klorfein, Atlanta, GA, Jerry Bryon Blackstock, Leslie

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B. Zacks, Hunton & Williams, Atlanta, GA, for Defendants.

ORDER

PANNELL, District Judge.

This matter is before the court on the defendants' renewed motion for summary judgment [Doc. No. 72], and the plaintiff's renewed motion for partial summary judgment [Doc. No. 73].

Factual Background

The following facts are undisputed, unless otherwise noted. This case arises out of a trademark dispute between rival manufacturers of overgrips for racquets. The plaintiff, Unique Sports Products, Inc., is a small, family-owned sports accessories business located in Alpharetta, Georgia. The plaintiff manufactures and sells tennis accessories to wholesalers, retailers, and consumers throughout the United States.

The plaintiff's flagship product is its LIGHT BLUE colored TOURNA GRIP overgrip¹, which is responsible for nearly 50% of the plaintiff's revenues. The plaintiff's LIGHT BLUE TOURNA GRIP overgrip was invented and introduced into the market in 1977 by the plaintiff's predecessor-in-interest, Consolidated Service Group, Inc. ("Consolidated"). Consolidated selected the color LIGHT BLUE because it believed that it would differentiate Consolidated's TOURNA GRIP overgrip from the OEM and replacement racquet grips² then available in the market. Since its introduction in 1977, the plaintiff's TOURNA GRIP overgrip has been continuously offered and sold in the same particular LIGHT BLUE color, which covers the entire surface of the plaintiff's overgrip, which in turn covers the entire handle of the sports racquet.³

Since its introduction, LIGHT BLUE TOURNA GRIP overgrips have been advertised in a variety of publications, including leading tennis industry magazines and trade publications, as well as local and regional tennis publications. Beginning in 1978, some of those advertisements touted the plaintiff's LIGHT BLUE TOURNA GRIP overgrips as "The Original Blue Grip" or "Blue Tape."

The plaintiff's LIGHT BLUE TOURNA GRIP overgrip was immediately successful and was sold by major sporting goods retailers, tennis and pro shops, and mail order companies. From 1977 to 1982, Consolidated spent $1,000,000 advertising its LIGHT BLUE TOURNA GRIP overgrip, and sold approximately 10,000,000 units of LIGHT BLUE TOURNA GRIP overgrip. Together from 1977 to 1998, the plaintiff and its predecessor spent more than $3,500,000 advertising their LIGHT BLUE TOURNA GRIP overgrip and sold

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approximately 50,000,000 units. Additionally, tennis legends such as Pete Sampras have used and endorsed the plaintiff's LIGHT BLUE TOURNA GRIP overgrip. After 1992, the plaintiff's sales of TOURNA GRIP overgrips have averaged approximately $1,000,000 gross annually.

In addition to selling LIGHT BLUE TOURNA GRIP overgrips, the plaintiff also offers TOURNA GRIP overgrips in a few other colors, including gray and black. The plaintiff, however, contends that sales of LIGHT BLUE TOURNA GRIP overgrips constitute 98.8% of all TOURNA GRIP sales.

In 1999, more than 20 years after the plaintiff, through its predecessor, first began selling LIGHT BLUE TOURNA GRIP overgrips, the plaintiff filed an application with the United States Patent and Trademark Office ("PTO") to register the LIGHT BLUE color it had been using in connection with its TOURNA GRIP overgrips. On February 13, 2001, the PTO issued U.S. Trademark Registration No. 2,428,076 to the plaintiff for the LIGHT BLUE color for grip tapes used for sports racquets.

Additionally, in 1999, the plaintiff entered into a private labeling agreement with a third party, Head Sports AG ("Head"). Pursuant to that agreement, the plaintiff allowed Head to sell LIGHT BLUE overgrips under the HEAD brand. The plaintiff claims that sales of the HEAD brand LIGHT BLUE overgrips are minimal to the point of being inconsequential.

Defendant Babolat VS is a French corporation and one of the world's largest racquet sports companies. Babolat VS's product line includes supplies for professional tennis stringers, tennis equipment such as racquets, and grip products, including overgrips, racquet dampeners, and racquet bags.

Defendant Babolat VS North America, Inc. is Babolat VS's wholly owned subsidiary (collectively "Babolat"). Babolat VS North America, Inc. distributes BABOLAT-branded products in the United States through retail outlets, including major sporting goods chains, independently owned sporting goods shops, and tennis pro shops. Defendant Rocky Mountain Sports, Inc. of Boulder USA ("RMS") sells Babolat's tennis accessories.

Since it entered the U.S. market in the 1970s, Babolat has continuously sold overgrips in various shades of blue, including light or "powder" blues to medium or "royal" blues. For example, from the early 1980s to the late 1980s/early 1990s, Babolat served as a United States distributor for a brand of overgrips called GRIPSY.⁴ The GRIPSY overgrips sold by Babolat were offered in three colors: blue, brown, and salmon. Additionally, since 1989, Babolat has sold several types of blue overgrips throughout the United States under various brand names, including VS GRIP, SYNTEC, EASY GRIP, SYMBIO, STRIPY, and TEAM.

In 1999, Babolat introduced its PRO TEAM overgrip, which is the subject of the present suit. Babolat introduced its PRO TEAM overgrip to mimic, at least, the performance characteristics of the plaintiff's TOURNA GRIP overgrip.⁵

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Babolat sells its PRO TEAM overgrip in a blue color. RMS sells blue PRO TEAM overgrips on behalf of Babolat (collectively Babolat and RMS are hereinafter referred to as "defendants"). The defendants' blue PRO TEAM overgrips are branded with Babolat's BABOLAT house mark and the PRO TEAM trademark. The defendants furnish a black finishing tape with their blue PRO TEAM overgrip, while the plaintiff furnishes a bright red finishing tape with its LIGHT BLUE TOURNA GRIP overgrip.

On October 29, 2002, after sending Babolat two cease and desist letters, the plaintiff filed the instant trademark infringement action against the defendants. In this suit, the plaintiff claims that Babolat's blue PRO TEAM overgrip infringes upon its LIGHT BLUE color trademark used in connection with its TOURNA GRIP overgrips.

Legal Analysis

I. The Standard for Summary Judgment

Rule 56(c) of the Federal Rules of Civil Procedure provides that summary judgment is appropriate "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." The party seeking summary judgment bears the burden of demonstrating that no dispute as to any material fact exists. See Adickes v. S.H. Kress & Co., 398 U.S. 144, 156, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970). In determining whether the moving party has met this burden, the district court must view the evidence and all factual inferences in the light most favorable to the party opposing the motion. See Bradbury v. Wainwright, 718 F.2d 1538, 1543 (11th Cir. 1983). Once the moving party has adequately supported its motion, the nonmoving party then has the burden of showing that summary judgment is improper by coming forward with specific facts showing a genuine dispute. See Matsushita Elec. Indus., Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986).

When deciding a summary judgment motion, the court's function is not to resolve issues of material fact, but rather to determine whether there are any such issues to be tried. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986). The applicable substantive law will identify those facts that are material. Id. at 248, 106 S.Ct. at 2510. Facts that are disputed, but which do not affect the outcome of the case, are not material and thus will not preclude the entry of summary judgment. Id.

Genuine disputes are those by which the evidence is such that a reasonable jury could return a verdict for the non-movant. See id. In order for factual issues to be "genuine," they must have a real basis in the record. See Matsushita, 475 U.S. at 586, 106 S.Ct. at 1356. "When the record as a whole could not lead a rational trier of fact to find for the non-moving party, there is no `genuine issue for trial.'" Id. (citations omitted).

II. The Plaintiff's Renewed Motion for Partial Summary Judgment

In response to the plaintiff's complaint, the defendants primarily argue that the plaintiff's LIGHT BLUE color mark as applied to overgrips is functional and lacks secondary meaning. The defendants also argue that the plaintiff's trademark registration was procured through fraud and that the plaintiff's claims are barred by laches. In an attempt to resolve these limited issues before trial, the plaintiff

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filed its renewed motion for partial summary judgment.⁶ The court construes the plaintiff's renewed motion for partial summary judgment as asking the court to issue judgment on the following issues: (1) whether the plaintiff's LIGHT BLUE color trademark for overgrips is valid, (2) whether the plaintiff's trademark registration covering its LIGHT BLUE color trademark for overgrips was procured through fraud, and (3) whether the plaintiff's claim is barred by...