SELEE Corporation v. McDanel Advanced Ceramic Technologies
Filing
124
AMENDED JUDGMENT in favor of SELEE Corporation against McDanel Advanced Ceramic Technologies, LLC. Signed by District Judge Martin Reidinger on 7/21/2017. (khm)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
ASHEVILLE DIVISION
CIVIL CASE NO. 1:15-cv-00129-MR
SELEE CORPORATION,
)
)
Plaintiff,
)
)
vs.
)
)
McDANEL ADVANCED CERAMIC
)
TECHNOLOGIES, LLC,
)
)
Defendant.
)
________________________________ )
AMENDED
JUDGMENT
THIS MATTER came to for trial and was heard by the undersigned
judge, and a jury was duly empaneled and has answered the issues
presented as follows:
1.
Is the Plaintiff’s trademark invalid because the phrase “engineered
ceramics” is generic?
ANSWER: NO
2.
Does the Defendant’s use of the phrase “engineered ceramics” infringe
the Plaintiff’s trademark?
ANSWER: YES
3.
Does the Defendant’s use of the Plaintiff’s trademark constitute
descriptive fair use?
ANSWER: NO
4.
Did the Plaintiff unreasonably delay in asserting its trademark rights to
the prejudice of the Defendant?
ANSWER: NO
5.
Did the Defendant’s infringement of the Plaintiff’s trademark occur in
or affect commerce?
ANSWER: NO
6.
Was the Defendant’s trademark infringement a proximate cause of an
injury to the Plaintiff?
ANSWER: YES
7.
What amount of damages, if any, is the Plaintiff entitled to recover from
the Defendant?
ANSWER: $ 1.00
8.
Was the Defendant’s trademark infringement willful?
ANSWER: YES
2
Based on the foregoing facts as found by the jury, the Court concludes
as a matter of law that the trademark infringement found by the jury in answer
to special interrogatory 3 does not constitute unfair and deceptive trade
practices and unfair competition within the prohibitions of N.C. Gen. Stat.
§75-1.1, et seq.
IT IS, THEREFORE, ORDERED, ADJUDGED AND DECREED that
the Plaintiff shall have and recover of the Defendant the sum of $1.00, along
with prejudgment interest and costs.
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the
Defendant and its officers, agents, servants, employees, affiliates,
successors, and assigns, and any and all persons acting in concert or
participation with them who receive actual notice of this Order (collectively
“Defendant”) are hereby enjoined and restrained as follows:
1)
using the ENGINEERED CERAMICS® mark, or any mark
confusingly similar to the ENGINEERED CERAMICS® mark, in
Defendant’s company name and in connection with the
marketing, promotion, advertising, sale, or distribution of any
product;
3
2)
directly or indirectly engaging in false advertising or promotions
of
any product
in
connection
with
the
ENGINEERED
CERAMICS® mark;
3)
using the terms ENGINEERED CERAMICS in any fashion as is
likely to relate or connect Defendant with SELEE;
4)
using the terms ENGINEERED CERAMICS in any fashion as is
likely to confuse the public into associating the terms
ENGINEERED
CERAMICS
with
the
ENGINEERED
CERAMICS® mark;
5)
using the terms ENGINEERED CERAMICS in any fashion as is
likely to cause damage to the ENGINEERED CERAMICS® mark
through genericization; and
6)
making or inducing others to make any false, misleading, or
deceptive statement of fact or representation of fact in
connection with the promotion, advertisement, packaging,
display, sale, offering for sale, manufacture, production,
circulation or distribution of any product by making false
representations regarding Defendant’s related products.
4
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the
Defendant shall correct any erroneous impression persons may have
derived concerning the nature, characteristics, or qualities of any products
advertised or sold by Defendant in connection with the ENGINEERED
CERAMICS® mark, whether used as a trademark or as an attempted
generic descriptor, including without limitation:
1)
the sending of a registered letter (with a copy to Plaintiff) to all
internet search engines, including but not limited to, Google,
Bing, and Yahoo!, requesting that (i) any and all of Defendant’s
keyword advertising and sponsored advertisements containing
the terms ENGINEERED CERAMICS be removed from its
search engines, and (ii) any use of the terms ENGINEERED
CERAMICS be removed or replaced with a non-infringing
alternative, which may include but is not limited to CUSTOM
CERAMICS,
ADVANCED
CERAMICS,
or
TECHNICAL
CERAMICS; and
2)
the placement of corrective advertising on Defendant’s websites
informing consumers of its prior infringing use of the mark
ENGINEERED CERAMICS.
5
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the
Plaintiff’s claims arising for unfair competition and false advertising pursuant
to N. C. Gen. Stat. § 75-1.1, et seq. are hereby DISMISSED WITH
PREJUDICE; and the Plaintiffs shall recover nothing from the Defendants in
the form of damages on these claims.
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that all
counterclaims asserted by the Defendant are DISMISSED WITH
PREJUDICE, and the Defendant shall recover nothing from the Plaintiff in
the form of damages.
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the
Plaintiff is hereby awarded $7,500.00 in attorneys’ fees and costs as a
discovery sanction.
IT IS FURTHER ORDERED, ADJUDGED AND DECREED that the
Plaintiff is hereby awarded $17,881.70 in costs. The Plaintiff’s request for
an award of attorneys’ fees pursuant to 15 U.S.C. § 1117(a) is DENIED.
Signed: July 21, 2017
6
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?