MOBILE ANESTHESIOLOGISTS CHICAGO v. ANESTHESIA ASSOCIATES OF HOUSTON METROPLEX, CA7, 2010

Trademark infringement Houston-based defendant who was sued in Illinois was dismissed because of lack of personal jurisdiction in Illinois.  District court relied upon tradition “minimum contacts” theory of personal jurisdiction to find that defendant did not have sufficient contacts with Illinois.  Federal trademark registration under 15 U.S.C. 1072 does not create automatic jurisdiction nor nationwide service of process.  Internet website emphasizing Houston service was an insufficient contact with Illinois to create minimum contacts.  Actions taken by defendant to prevent preliminary injunction did not act as a waiver of jurisdiction or venue challenge.  The district court found that defendant did not directly aim potentially infringing conduct towards Illinois.  Seventh Circuit affirmed.  Note that the Seventh Circuit applied its own tests for personal jurisdiction.  This seems to clash with a recent Federal Circuit opinion in Nuance Communications v. Abbyy Software House (Fed. Cir. 2010) that indicates that Federal Circuit tests should be used, but for all practical purposes the tests are very similar.

TENNECO AUTOMOTIVE OPERATING CO. v. KINGDOM AUTO PARTS et al., (CA6, 2010)

     In a “not for publication” opinion, the Sixth Circuit appeals court reviewed and affirmed a district court decision in which the lower court granted summary judgment that no trademark protection was available for numbers on automotive struts that primarily serve to identify the strut.  The appeals court agreed that such numbers are descriptive of the product and do not serve a trademark function, identification of source, because there was no evidence of secondary meaning.  Plaintiff Tenneco had applied for federal trademark registration and such registration was refused.  It is interesting that the appeals court stated that the USPTO’s refusal to grant registration upon a finding of lack of secondary meaning was strong evidence on the point.  The USPTO has limited fact finding capability and must rely on declarations.  That is what the district court did in reaching the same finding, which was affirmed.   One of the problems faced by plaintiff was that  several declarations were given little or no weight because they were not properly prepared.

     The principal cases cited by the court relating to the existence of secondary meaning were Ferrari S.P.A. Esercizio Fabriche Auto. E Corse v. Roberts, 944 F.2d 1235, 1239 (6th Cir. 1991) and Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298, 311-12 (6th Cir. 2001 where the court noted that when direct evidence of secondary meaning evidence is unavailable, inferences are drawn from  the following factors: "1. direct consumer testimony; 2. consumer surveys; 3. exclusivity, length, and manner of use; 4. amount and manner of advertising; 5. amount of sales and number of customers; 6. established place in the market; and 7. proof of intentional copying.  The court went through these factors in finding a lack of secondary meaning.

     In a 2-1 decision, the dissenting justice thought that the strut numbers could have secondary meaning based upon the declarations and therefore a question of fact for a jury existed.

     The grant of summary judgment in trademark cases is somewhat rare, yet summary judgment saves court time and the time of jurors.   Perhaps the administrative determination of non-registrability was the most powerful factor influencing the court in this case that a source-identifying trademark did not exist.