Zurco Inc. v. Sloan Valve Co.

• Decision Date: 31 March 2011
• Docket Number: C.A. No. 08–185.
• Citation: 101 U.S.P.Q.2d 1109,785 F.Supp.2d 476
• Parties: ZURCO, INC., and, Zurn Industries, LLC., Plaintiffs,v.SLOAN VALVE COMPANY, Defendant.
• Court: U.S. District Court — Western District of Pennsylvania

785 F.Supp.2d 476

101 U.S.P.Q.2d 1109

ZURCO, INC., and, Zurn Industries, LLC., Plaintiffs,

v.SLOAN VALVE COMPANY, Defendant.

C.A. No. 08–185.

United States District Court, W.D. Pennsylvania.

March 31, 2011.

John W. McIlvaine, III, Bryan P. Clark, Thomas C. Wolski, The Webb Law Firm, Pittsburgh, PA for Plaintiffs.Craig S. Fochler, Jaclyne D. Wallace, Charles R. Mandly, Jr., Jason A. Berta, Foley & Lardner LLP, Chicago, IL, Michael L. Dever, Buchanan Ingersoll, Pittsburgh, PA, for Defendant.

MEMORANDUM OPINION

SEAN J. McLAUGHLIN, District Judge.

Presently pending before the Court is a Motion for Summary Judgment filed by Defendant Sloan Valve Company (“Sloan”) and a Motion for Partial Summary Judgment on Defendant's Affirmative Defenses filed by Plaintiffs Zurco, Inc. (“Zurco”) and Zurn Industries (collectively, “Zurn”).

I. BACKGROUND

Zurn Industries is a Delaware limited liability company with headquarters in Erie, Pennsylvania. (Complaint ¶ 1). Zurn is a leading manufacturer of plumbing products, including commercial grade urinals, toilets and sinks. Zurn markets, advertises and sells its products to the commercial building trade and other consumers of commercial plumbing services such as chain stores and governmental entities. (Def. Ex. 15, Nicolia Depo., pp. 3, 13–15, 96, 124). As such, the Zurn trade name is “well known” to consumers of commercial plumbing goods and services. ( Id. at 25, 56–58).

Zurn is the registered owner of United States Trademark Registration No. 3,146,173 for the mark “ZURN 1.” (Pl. Ex. A, Trademark Registration). The ZURN 1 trademark registration, issued on September 19, 2006, is for “[p]lumbing fixtures sold in package form for industrial and commercial use, namely, toilets, sinks, urinals, hand dryers and automatic hand dryers, and corresponding flush valves and automatic flush valves, faucets and automatic faucets, traps, supply stops, carrier mountings and fittings therefore, and toilet closet flanges.” ( Id.).

Zurco, based in Wilmington, Delaware, is a holding company for certain intellectual property assets used by Zurn Industries and is not involved in advertising, marketing or selling goods or services. (Zurn Pretrial Statement, Dkt. 48, p. 1; Def. Ex. 10, Interrogatory Answers). Zurco is the registered owner of the following United States Trademark Registrations:

— “ZURN ONE SYSTEMS,” United States Trademark Registration No. 3,077,424, issued on April 4, 2006 for “[p]lumbing fixtures sold in package form for industrial and commercial use, comprising faucets, sensors, flush valves, traps, supply stops, tubing for drains, traps and fixtures, carrier mountings and fittings therefore, toilet closet flanges, and corresponding toilets, sinks and urinals.” (Pl. Ex. B, Trademark Registration).

— “ZURN ONE,” United States Trademark Registration No. 3,030,515, issued on December 13, 2005 for “[p]lumbing fixtures sold in package form for industrial and commercial use, namely, toilets, sinks, urinals, hand dryers and automatic hand dryers, and corresponding flush valves and automatic flush valves, faucets and automatic faucets, traps, supply stops, carrier mountings and fittings therefore, and toilet closet flanges.” (Pl. Ex. C, Trademark Registration).

— “THE PINT,” United States Trademark Registration No. 3,389,517, issued on February 26, 2008 for “[u]rinals.” (Pl. Ex. D, Trademark Registration).

Sloan, an Illinois corporation, is generally engaged in the business of advertising, marketing and selling commercial plumbing goods and services to the commercial building trade and other business and institutional consumers of commercial plumbing services. (Complaint ¶¶ 6, 7, 9, 10). Like Zurn, Sloan is a “well known” name in the commercial plumbing goods and services industry. (Def. Ex. 15, Nicolia Depo., pp. 3, 57–58, 96, 124). In the commercial plumbing industry, Zurn and Sloan are direct competitors who target their marketing, advertising and sales efforts towards a common set of purchasers. (Complaint ¶ 10).

In recent years, in response to environmental concerns, manufacturers have developed environmentally friendly plumbing products such as high efficiency urinal systems and fractional flush urinals, so named because they use only of a fraction of a gallon of water per flush. In that regard, Zurn developed a fractional flush urinal system which it introduced under the the mark “THE PINT.” (Pl. Ex. D). THE PINT is part of Zurn's EcoVantage line of urinals and has a flush volume of approximately 1/8 of a gallon, or one pint, of water. (Def. Ex. 15, Nicolia Depo., pp. 82–86, 105). Zurn first used the trademarked phrase “THE PINT” in connection with a pint urinal on July 1, 2007. (Pl. Ex. D). At that time, Sloan was not using the term “pint” in connection with its own high efficiency urinal systems. (Pl. Ex. F., Response to Request for Admissions, Req. No. 4).

On November 1, 2007, a press release appeared on the website greenlodgingnews.com announcing that Sloan intended to introduce a product called the “Sloan 1 Pint Urinal System” at an upcoming industry tradeshow set to take place in Chicago, Illinois on November 7–9, 2007. (Pl. Ex. G). Shortly thereafter, counsel for Zurn delivered a letter to Sloan expressing concern that Sloan's use of the phrase “Sloan 1 Pint Urinal System” infringed upon the ZURN 1, ZURN ONE, ZURN ONE SYSTEMS, and THE PINT trademarks owned by Zurn. (Pl. Ex. H, November 6, 2007 Letter). Zurn requested that Sloan cease and desist from using the phrase “Sloan 1 Pint Urinal System” as part of the branding of its product. ( Id.). Sloan responded by altering its sign at the Chicago trade show to read “Sloan Pint Urinal System.” On November 7, 2007, Zurn sent another letter acknowledging that the numeral “1” had been removed from Sloan's promotional signs but indicating that it still believed the phrase “Sloan Pint Urinal System” to be an infringement of their trademarks. (Pl. Ex. I, November 7, 2007 Letter). Zurn demanded that Sloan cease using the word “pint” in connection with promotion of its fractional flush urinal system. ( Id.). When Sloan refused to accede to Zurn's demand, Zurn filed the instant lawsuit.

II. STANDARD FOR REVIEW

Federal Rule of Civil Procedure 56(c)(2) provides that summary judgment shall be granted if the “pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Rule 56(e) further provides that when a motion for summary judgment is made and supported, “an opposing party may not rely merely on allegations or denials in its own pleading; rather, its response must—by affidavits or as otherwise provided in this rule—set out specific facts showing a genuine issue for trial. If the opposing party does not so respond, summary judgment should, if appropriate, be entered against that party.”

A district court may grant summary judgment for the defendant when the plaintiff has failed to present any genuine issues of material fact. See Fed.R.Civ.P. 56(c); Krouse v. American Sterilizer Company, 126 F.3d 494, 500 n. 2 (3rd Cir.1997). The moving party has the initial burden of proving to the district court the absence of evidence supporting the non-moving party's claims. Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Country Floors, Inc. v. Partnership Composed of Gepner and Ford, 930 F.2d 1056, 1061 (3rd Cir.1990). Further, “[R]ule 56 enables a party contending that there is no genuine dispute as to a specific, essential fact ‘to demand at least one sworn averment of that fact before the lengthy process of litigation continues.’ ” Schoch v. First Fidelity Bancorporation, 912 F.2d 654, 657 (3rd Cir.1990) (quoting Lujan v. National Wildlife Federation, 497 U.S. 871, 110 S.Ct. 3177, 111 L.Ed.2d 695 (1990)).

The burden then shifts to the non-movant to come forward with specific facts showing a genuine issue for trial. Matsushita Elec. Indus. Company v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Williams v. Borough of West Chester, Pa., 891 F.2d 458, 460–461 (3rd Cir.1989) (the non-movant must present affirmative evidence—more than a scintilla but less than a preponderance—which supports each element of his claim to defeat a properly presented motion for summary judgment). The non-moving party must go beyond the pleadings and show specific facts by affidavit or by information contained in the filed documents (i.e., depositions, answers to interrogatories and admissions) to meet his burden of proving elements essential to his claim. Celotex, 477 U.S. at 322, 106 S.Ct. 2548; Country Floors, 930 F.2d at 1061.

A material fact is a fact whose resolution will affect the outcome of the case under applicable law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Although the court must resolve any doubts as to the existence of genuine issues of fact against the party moving for summary judgment, Rule 56 “does not allow a party resisting the motion to rely merely upon bare assertions, conclusory allegations or suspicions.” Fireman's Ins. Company of Newark, N.J. v. DuFresne, 676 F.2d 965, 969 (3rd Cir.1982). Summary judgment is only precluded if the dispute about a material fact is “genuine,” i.e., if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247–249, 106 S.Ct. 2505.

III. ANALYSIS

In its Complaint, Zurn contends that Sloan's use of the phrases “Sloan 1 Pint Urinal System,” “Sloan Pint Urinal System,” “Sloan Pint” and “1 Pint” are confusingly similar to Zurn's trademarks and, as such, violate Section 32(1) and 43(a) of the Lanham Trademark Act of 1946, 15 U.S.C. §§ 1114, 1125(a) (“Lanham Act”). Section 32(1) of the Lanham Act provides in relevant part:

(1) Any person who shall, without the consent of the registrant—

(a) use in commerce...