AMAX, INC. et al v. ACCO BRANDS CORP.

Filing 110

Judge Nathaniel M. Gorton: ENDORSED ORDER entered. MEMORANDUM AND ORDERIn accordance with the foregoing, defendants motion for summary judgment (Docket No. 46) is, with respect to the purported non-infringement of the 709 patent, DENIED without prejudice and, with respect to the collateral estoppel, prior use defenses and trademark infringement, DENIED. So ordered.(Caruso, Stephanie)

United States District Court
District of Massachusetts
)
AMAX, INC. AND WORKTOOLS, INC., )
)
Plaintiffs,
)
)
v.
)
)
)
ACCO BRANDS CORP.,
)
)
Defendant.
)

Civil Action No.
16-10695-NMG

MEMORANDUM & ORDER
Gorton, J.
Plaintiffs Amax, Inc. (“Amax”) and Worktools, Inc.
(“Worktools” and, collectively with Amax, “plaintiffs”) allege
that defendant ACCO Brands Corp. (“ACCO” or “defendant”)
infringed their patents and trademark.

Defendant’s motion for

summary judgment is pending before the Court.

For the reasons

that follow, that motion will be denied.
I.

Background
The plaintiffs are two corporations.

Amax is organized

under the laws of Delaware and has a principal place of business
in East Greenwich, Rhode Island.

Worktools is organized under

the laws of California and maintains its principal place of
business there.

Defendant ACCO is a Delaware corporation with a

principal place of business in Lincolnshire, Illinois.
The plaintiffs and defendant sell competing desktop
staplers.

Worktools is the assignee of U.S. Patent Nos.
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7,178,709 (“the ‘709 patent”) and 7,748,589 (“the ‘589 patent”)
as to which Amax holds an exclusive license.

Amax is also the

assignee of U.S. Trademark Registration No. 3,377,921 for “Long
Reach” (“the Long Reach trademark”).

Defendant manufactures and

sells the Swingline Quick Touch Full Strip and Quick Touch
Compact staplers.

Plaintiffs allege that defendant’s staplers

infringe their patents and trademark.
In April, 2016, plaintiffs filed a complaint alleging two
counts of patent infringement in violation of 35 U.S.C. § 271(a)
and (b) two counts of trademark infringement in violation of the
Lanham Act, 15 U.S.C. §§ 1114, 1125(a)(1)(A).

Defendant

answered in due course and moved to transfer venue.

In October,

2016 this Court denied that motion to transfer and in December,
2016 convened a scheduling conference.
In June, 2017, defendant filed motions 1) to dismiss or
transfer venue based upon a recent decision of the United States
Supreme Court, TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
137 S. Ct. 1514 (2017), and 2) to expedite briefing and stay the
case.

This Court promptly denied those motions.

Meanwhile, in

February, 2017, with leave of Court, defendant filed an early
motion for summary judgment which plaintiffs opposes.
motion is the subject of this memorandum and order.

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That

II.

Defendant’s Motion for Summary Judgment

Defendant moves for summary judgment, asserting that 1) its
staplers do not infringe the ‘709 patent, 2) the asserted claims
of the ‘589 patent are invalid under the doctrine of collateral
estoppel and 3) its senior use of “Long Reach” on its staplers
is a complete defense to trademark infringement.
A. Legal Standard
The role of summary judgment is “to pierce the pleadings
and to assess the proof in order to see whether there is a
genuine need for trial.” Mesnick v. Gen. Elec. Co., 950 F.2d
816, 822 (1st Cir. 1991).

The burden is on the moving party to

show, through the pleadings, discovery and affidavits, “that
there is no genuine dispute as to any material fact and that the
movant is entitled to judgment as a matter of law.” Fed. R. Civ.
P. 56(a).

A fact is material if it “might affect the outcome of

the suit under the governing law.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986).

A genuine issue of material

fact exists where the evidence with respect to the material fact
in dispute “is such that a reasonable jury could return a
verdict for the nonmoving party.” Id.
If the moving party has satisfied its burden, the burden
shifts to the non-moving party to set forth specific facts
showing that there is a genuine, triable issue. Celotex Corp. v.
Catrett, 477 U.S. 317, 324 (1986).
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The Court must view the

entire record in the light most favorable to the non-moving
party and indulge all reasonable inferences in that party’s
favor. O’Connor v. Steeves, 994 F.2d 905, 907 (1st Cir. 1993).
Summary judgment is appropriate if, after viewing the record in
the non-moving party’s favor, the Court determines that no
genuine issue of material fact exists and that the moving party
is entitled to judgment as a matter of law.
B. Application
1. Alleged Infringement of the ‘709 Patent
An infringement analysis requires 1) the Court to
determine, as a matter of law, the meaning and scope of the
patent claims asserted to be infringed, which typically occurs
at a Markman hearing, and 2) the trier of fact to compare the
properly construed claims to the device accused of infringing.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.
Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).
Defendant moves for summary judgment of non-infringement
with respect to the ‘709 patent.

This Court agrees with

plaintiffs that, because the patent terms must be construed
before evaluating infringement and a Markman hearing is
scheduled for October, 2017, summary judgment is premature at
this point. See, e.g., McNulty v. Taser Int'l, Inc., No. SACV
01-395-DOC, 2002 WL 257860, at *5–6 (C.D. Cal. Feb. 4, 2002);
Gallant v. Telebrands Corp., 35 F. Supp. 2d 378, 403 (D.N.J.
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1998).

Thus, defendant’s motion for summary judgment of

noninfringement of the ‘709 patent will be denied without
prejudice.
2. Collateral Estoppel and the ‘589 Patent
Defendant avers that the asserted claims of the ‘589 patent
are invalid under the doctrine of collateral estoppel because
they are substantially similar to previously litigated claims of
the ‘709 patent.
a. Legal Standard
Collateral estoppel, or issue preclusion, prevents a party
from re-litigating issues that have been previously adjudicated.
Manganella v. Evanston Inc., 700 F.3d 585, 591 (1st Cir. 2012)
(citing Rodriguez-Garcia v. Miranda-Marin, 610 F.3d 756, 770
(1st Cir. 2010)).

Issue preclusion applies where 1) the same

issue is raised in both actions, 2) the issue was actually
litigated in the earlier action, 3) the issue was determined by
a valid and binding final judgment and 4) the determination of
the issue was necessary to that judgment. Id.
“Complete identity of claims is not required to satisfy the
identity of issues requirement for claim preclusion.” Soverain
Software LLC v. Victoria's Secret Direct Brand Mgmt., LLC, 778
F.3d 1311, 1319 (Fed. Cir. 2015).

The crucial question is

whether the differences between the two sets of claims
“materially alter the question of validity.” Id. (quoting Ohio
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Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir.
2013)).

If two patents describe inventions that are

“substantially the same” using “slightly different language” and
a final judgment has been issued with respect to one patent,
issue preclusion may apply to the second, similar patent. Ohio
Willow Wood Co., 735 F.3d at 1342-43.

To defeat the application

of collateral estoppel, a party must show that the patents are
different in a “patentably significant” way. Id. at 1343.
b. Application
According to defendant, issue preclusion applies because in
Accentra Inc. and WorkTools, Inc. v. Staples, Inc., et al., No.
07-5862, 2013 WL 12113238 (C.D. Cal. June 5, 2013) [hereinafter
“the Accentura case”], the United States District Court for the
Central District of California determined that claims 24 and 25
of the ‘709 patent were obvious and thus invalid pursuant to 35
U.S.C. § 103(a) because of two prior art staplers.

Defendant

contends that, because the language of the asserted claims of
the ‘589 patent is substantially similar to the language in the
invalid claims of the ‘709 patent, collateral estoppel applies.
Plaintiffs respond that the claims of the ‘589 patent are
substantially different than those litigated in the Accentra
case because the ‘709 patent refers to handle motion in relation
to the base of a stapler while the asserted claims of the ‘589
patent refer to handle motion in relation to the body of a
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stapler.

Plaintiffs proffer that, because the ‘589 patent

involves a stapler in which the handle pivots around the body,
the stapler has better leverage than prior art staplers.

In

support of that contention, plaintiffs offer the declaration of
Joel Marks, the inventor of the ‘709 and ‘589 patents.
Viewing the record in the light most favorable to
plaintiffs and construing reasonable inferences in their favor,
this Court agrees that there is a material difference between
the previously litigated ‘709 patent claims and the asserted
claims of the ‘589 patent.

Increased leverage because of the

connection between the handle and the body is distinct from the
connection between the handle and the base.

Thus, because

plaintiffs have identified a “patentably significant”
difference, defendant’s motion for summary judgment based upon
collateral estoppel will be denied. See Ohio Willow Wood Co.,
735 F.3d at 1342-43.
3. Infringement of the Long Reach Trademark
Finally, defendant claims that its senior use of “Long
Reach” on staplers is a complete defense to plaintiffs’ claims
that it is infringing their “Long Reach” trademark that was
federally registered in 2007 pursuant to the Lanham Act.
a. Legal Standard
In 1946, Congress passed the Lanham Act which enables
entities to register trademarks with the United States Patent
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and Trademark Office (“PTO”). Dorpan, S.L. v. Hotel Melia, Inc.,
728 F.3d 55, 61–62 (1st Cir. 2013).

Such registration provides

notice to the public that the registering entity owns the mark.
Id.
Two alternatives to claiming prior use as a defense to
trademark infringement are identified in the Lanham Act.

First,

15 U.S.C. § 1065 recognizes that, rather than replacing the
common law trademark regime, the Lanham Act coexists with it by
grant[ing] federally registered marks the right to
exclusive use of the mark only insofar as they do not
conflict with any pre-existing rights acquired under state
law.
Id. (citing 15 U.S.C. § 1065).

Accordingly, the rights of the

owner of a trademark registered with the PTO “are always subject
to any superior common law rights acquired by another . . . .”
Id. (quoting Allard Enter., Inc. v. Advanced Programming Res.,
Inc., 249 F.3d 564, 572 (6th Cir.2001)).
Neither party specifically asserts which law should be
applied to determine whether a pre-existing trademark exists
consistent with 15 U.S.C. § 1065.

While recognizing that the

state and federal common law standards are essentially the same,
the First Circuit Court of Appeals (“First Circuit”) has
determined that whether a prior trademark exists is a question
of state law. Id. at 63, n.10.

Both the First Circuit and the

Commonwealth of Massachusetts require that secondary meaning be

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established for trademark protection to attach. Boston Beer Co.
P'ship v. Slesar Bros. Brewing Co., 9 F.3d 175, 180 (1st Cir.
1993); USTrust v. U.S. Tr. Co. of New York, 210 F. Supp. 2d 9,
27 (D. Mass.), amended in part, 218 F. Supp. 2d 15 (D. Mass.
2002).
The second path to defeating a trademark infringement claim
is found in § 1115 of the Lanham Act.

Under subsection (b)(5)

thereof, there is no infringement if the party which allegedly
infringed the trademark began using the mark 1) before it was
registered pursuant to the Lanham Act, 2) has used the mark
continuously and 3) can establish continuous use in a particular
geographic area. 15 U.S.C. § 1115(b)(5); see also Thrifty RentA-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d 1177, 1181 (1st
Cir. 1987).
b. Application
Defendant claims that it has been using “Long Reach” on its
staplers since 1974 and its use is senior to plaintiffs’
registration of the “Long Reach” trademark in 2007.

In support

of that assertion, defendant provides excerpts from its “Fact
Books”, which it publishes annually, for the years 2003 to 2017.
Each year, the Fact Book is purportedly distributed to
defendant’s sales representatives and customers throughout the
United States.

Plaintiffs counter that defendant has 1) failed

to show secondary meaning and 2) failed to establish continuous
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use in a specific geographic location as required by 15 U.S.C.
§ 1115(b)(5).
Plaintiffs’ contention that defendant has failed to show
secondary meaning and thus cannot raise a defense pursuant to a
senior mark based upon state law under 15 U.S.C. § 1065 is
tenable.

When a trademark is descriptive, “[p]roof of secondary

meaning entails vigorous evidentiary requirements.” Boston Beer
Co. P'ship, 9 F.3d at 181 (quoting Perini Corp. v. Perini
Construction, 915 F.2d 121, 125 (4th Cir. 1990)).

The proponent

of the mark must prove that “the consuming public recognizes”
the mark and associates it with the proponent’s business. Id. at
181-82.
Here, although defendant has shown that it has used “Long
Reach” for several years through its Fact Books, it has provided
no evidence that consumers associate “Long Reach” with ACCO
staplers.

Accordingly, a genuine issue of material fact remains

with respect to secondary meaning and summary judgment is
unwarranted on 15 U.S.C. § 1065 grounds.
Moreover, defendant has failed to establish that the
statutory defense under 15 U.S.C. § 1115(b)(5) applies.

The

Fact Books establish continuous use of “Long Reach” since at
least 2003, before plaintiffs registered their mark but there is
no information in those exhibits that shows the geographic
location where they were distributed.
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Similarly, although

defendant asserts that its annual sales records demonstrate
nationwide sales, the single record submitted is devoid of
information as to the geographic location of such sales.
The only indication that the “Long Reach” mark was used
nationally is the conclusory assertion of ACCO’s General
Manager, John Peters, Jr. that it has “offered and sold a
stapler with the ‘Long Reach’ mark across the entire United
States”.

This Court is not compelled to accept such an

unsupported statement. See Torrech-Hernandez v. Gen. Elec. Co.,
519 F.3d 41, 47 (1st Cir. 2008).

Accordingly, because

defendants have failed to establish the geographic location of
the sales of their “long reach” staplers, they are not entitled
to judgment as a matter of law and summary judgment based upon
15 U.S.C. § 1115(b)(5) will be denied.

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ORDER
In accordance with the foregoing, defendant’s motion for
summary judgment (Docket No. 46) is, with respect to the
purported non-infringement of the ‘709 patent, DENIED without
prejudice and, with respect to the collateral estoppel, prior
use defenses and trademark infringement, DENIED.

So ordered.

/s/ Nathaniel M. Gorton
Nathaniel M. Gorton
United States District Judge
Dated August 8, 2017

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