Weld-Tech ApS v. Aquasol Corporation
DECISION AND ORDER DENYING Weld-Tech's 27 Motion for Summary Judgment and to Compel Discovery; GRANTING Aquasol's 21 Motion for Dismissal of Plaintiff's Claims; DENYING Aquasol's 39 Motion to Strike. Signed by William M. Skretny, Chief Judge on 9/13/2014. (MEAL) - CLERK TO FOLLOW UP -
UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NEW YORK
DECISION AND ORDER
Weld-Tech Aps and Aqausol Corporation are competitors in the business of the
manufacture and sale of welding equipment. Weld-Tech, based in Denmark, and
Aquasol, a Delaware corporation with its principal place of business in New York, both
make a product called “EZ-Purge,” or “EZ Purge” (with no hyphen), a device that
enables a pipe or fitting to be sealed during welding work.
Although the products
essentially share the same name and are used for the same purpose, they differ in
construction. Weld Tech’s, for example, is designed for multiple uses, while Aquasol’s is
used only once and discarded.
Weld Tech brings this action against Aquasol alleging that Aquasol is liable under
the Lanham Act and New York Business Law, as well as the common-law doctrines of
infringement and unfair competition. Weld-Tech contends that Aquasol is unlawfully
using the mark “EZ-Purge” – a mark Weld-Tech acquired simply by using it, through
common-law trademark principles. Aquasol disagrees. It is the registered owner of the
mark, and Aquasol claims that it, not Weld-Tech, is the so-called “senior user,” with the
right to exclude others from using the mark. It therefore defends this action and also
brings counterclaims against Weld-Tech. Both parties have moved for summary
As explained further below, because Weld-Tech did not “use” the mark, as that
term is defined by settled trademark principles, before Aquasol’s registration of the
mark, Aquasol’s motion for summary judgment is granted and Weld-Tech’s is denied.
Rule 56 of the Federal Rules of Civil Procedure provides that “[t]he court shall
grant summary judgment if the movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” A fact is
“material” only if it “might affect the outcome of the suit under governing law.” Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510, 91 L. Ed. 2d 202
(1986). A “genuine” dispute exists “if the evidence is such that a reasonable jury could
return a verdict for the non-moving party.” Id. In determining whether a genuine dispute
regarding a material fact exists, the evidence and the inferences drawn from the
evidence “must be viewed in the light most favorable to the party opposing the motion.”
Adickes v. S. H. Kress & Co., 398 U.S. 144, 158–59, 90 S. Ct.1598, 1609, 26 L. Ed. 2d
142 (1970) (internal quotations and citation omitted).
Although Weld-Tech, in addition to moving for summary judgment, seeks further
discovery, this Court finds that the established, undisputed facts provide a sufficient
basis to resolve the summary-judgment motions. Those facts are as follows.
Aquasol also moves for dismissal of portions of Weld-Tech’s claim under Federal Rules of Civil
Procedure 12(b)(1) and 12(b)(6). This Court finds it unnecessary to address those portions of the motion.
By separate motion, Aquasol also seeks to strike portions of Weld-Tech’s statement of undisputed
material facts. Although that document does contain improper argument, this Court will exercise its
discretion to (1) accept only those statements that comply with Local Rule 56(a), and (2) deny the motion
to strike. See, e.g., Brown v. Board of Trustees of Building Service 32B–J Pension Fund, 392 F. Supp. 2d
434, 446 (E.D.N.Y. 2005) (“[C]ourts have broad discretion in applying their local rules.”).
Weld-Tech began marketing the EZ-Purge device in the United States sometime
in late 2003 or early 2004. 2 (Pl.’s Stmnt. of Facts, ¶ 8.) It made its first sale of the
product in the United States in December 2004. (Id.) It filed a patent application for this
device in March 2004. (Id., ¶ 12.)
One month later, on April 30, 2004, Aquasol filed a trademark application with the
United States Patent and Trademark Office for the name “EZ Purge” with the “intent to
use” that name in its business. (Douglas Aff; Ex. 10.) This type of application – one
premised on a bona fide intent to use the mark – is authorized by 15 U.S.C. § 1051(b).
The dispute is therefore a simple one: which company has priority over the
When two companies adopt the same mark, basic rules of trademark priority
apply. See, e.g., McKay v. Mad Murphy's, Inc., 899 F. Supp. 872, 881 (D. Conn. 1995).
The Second Circuit has outlined the criteria to determine priority:
Under familiar trademark principles, the right to exclusive
use of a trademark derives from its appropriation and
subsequent use in the marketplace. The user who first
appropriates the mark obtains an enforceable right to
exclude others from using it, as long as the initial
appropriation and use are accompanied by an intention to
continue exploiting the mark commercially. . . . Adoption and
a single use of the mark may be sufficient to entitle the user
to register the mark. . . . To prove bona fide usage, the
proponent of the trademark must demonstrate that his use of
the mark has been deliberate and continuous, not sporadic,
casual or transitory.
Weld-Tech mentions that it used the mark in a foreign jurisdiction before 2003. But Weld-Tech does not
argue that this use is relevant in determining priority status in the United States. See Pers.'s Co. v.
Christman, 900 F.2d 1565, 1568-69 (Fed. Cir. 1990) (“[F]oreign use has no effect on U.S. commerce and
cannot form the basis for a holding that appellant has priority here.”).
La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271–
72 (2d Cir. 1974). Further, “federal registration of a mark grants nationwide priority as of
the filing date of . . . an intent-to-use application.” Dudley v. Healthsource Chiropractic,
Inc., 883 F. Supp. 2d 377, 389 (W.D.N.Y. 2012) (citing 15 U.S.C. § 1057(c)). Under the
Lanham Act, a certificate of registration constitutes “prima facie evidence of the validity
of the registered mark and of the registration of the mark, of the registrant's ownership
of the mark, and of the registrant's exclusive right to use the registered mark in
commerce on or in connection with the goods or services specified in the certificate.” 15
U.S.C. § 1057(b); see Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848, 854
(2d Cir. 1988). But registration “does not give priority over” prior users – those “persons
who had used and had not abandoned the mark prior to filing.” Id. (citing 15 U.S.C. §
1057(c)(1)). Accordingly, if Weld-Tech used the mark without abandoning it before April
30, 2004, it is the senior user. If not, Aquasol is.
The dispute turns on the meaning of “use.”
“An unregistered mark is entitled to protection . . . if it would qualify for
registration as a trademark.” Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 381
(2d Cir. 2005). The common-law “right to a particular mark grows out of its use, not is
mere adoption.” Jean Patou,, 495 F.2d at 1271. Before April 30, 2004, Weld-Tech
argues that it “used” the mark in the United States in marketing and advertising, and
that the product bearing the trademark was “available for sale and delivery.” (Pl.’s Reply
Br., at 2; Docket No. 42)
This activity, however, cannot qualify as “use” for the purposes of trademark
First, the extent of the marketing and promotion of the mark is unclear. Weld-
Tech asserts only summarily that it “market[ed] and promot[ed] the product to
Magnatech, a United States manufacturer and distributor.” (Gronmark Decl., ¶ 5.) No
further details are provided. On this scant evidence, no reasonable juror could conclude
that Weld-Tech used the mark before April 30, 2004.
What is more, a mark is only “used” on goods when goods bearing the mark “are
sold or transported in commerce.” 15 U.S.C. § 1127; Star Indus., Inc. v. Bacardi & Co.
Ltd., 412 F.3d 373, 381 (2d Cir. 2005); Am. Express Co. v. Goetz, 515 F.3d 156, 161
(2d Cir. 2008) (“[T]here can be no trademark absent goods sold.”). Standing alone
“mere advertising or promotion of a mark . . . is insufficient to constitute ‘use’ of the
mark ‘in commerce.’” Buti v. Perosa, S.R.L., 139 F.3d 98, 105 (2d Cir. 1998); see
Gameologist Grp., LLC v. Scientific Games Int'l, Inc., 508 F. App'x 31, 33 (2d Cir. 2013)
(summary order) (affirming district court’s finding that the prior user could not be
considered the senior user since the prior user had only meager sales and engaged in
mere promotional efforts). Thus, even if Weld-Tech’s bare-bones assertion were
accepted, because there is no dispute that Weld-Tech’s first sale of an EZ-Purge device
in the United States did not occur until December of 2004 – several months after
Aquasol had registered the mark – Aquasol’s registration of the mark establishes it as
the senior user. See 15 U.S.C. § 1057(c).
Finally, Weld-Tech does not argue that it is entitled to protection under the
“analogous-use” doctrine, and it has not shown, as it must under this doctrine, that its
use of the EZ-Purge mark was “open and notorious,” or “of such a nature and extent
that the mark has become popularized in the public mind.” Goetz, 515 F.3d at 161-62
(internal citation and quotation marks omitted). Indeed, in its own statement of facts, it
identifies only one U.S. company to which it “promoted” the device .
This finding resolves each of Weld-Tech’s claims, as it does not argue that it can
prevail on any of its claims even if Aquasol is determined to be the senior user. This
Court’s finding that Aquasol is the senior user, however, does not resolve the entire
case because Aquasol has asserted counterclaims against Weld-Tech, and Aquasol
has not sought summary judgment with respect to those claims. Accordingly, those
claims remain outstanding and the parties remain free, within the confines of the law, to
pursue and defend those claims as they see fit.
IT HEREBY IS ORDERED, that Weld-Tech’s motion for summary judgment and
to compel discovery (Docket No. 27) is DENIED
FURTHER, that Aquasol’s motion for dismissal of Plaintiff’s claims (Docket No.
21) is GRANTED.
FURTHER, that Aquasol’s motion to strike (Docket No. 39) is DENIED.
Dated: September 13, 2014
Buffalo, New York
/s/William M. Skretny
WILLIAM M. SKRETNY
United States District Court
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