Fabick, Inc. v. FABCO Equipment, Inc. et al

Filing 368

OPINION AND ORDER. It is Ordered that defendant JFTCO, Inc.'s motion for judgment as a matter of law under Federal Rule of Civil Procedure 50(a) is denied. Signed by District Judge William M. Conley on 12/18/2017. (voc)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
FABICK, INC.,
Plaintiff,
v.

OPINION AND ORDER
16-cv-172-wmc

JFTCO, INC.,
Defendant.

At the close of plaintiff’s case in chief and again at the close of its case on its
affirmative defenses, defendant moved for judgment as a matter of law under Federal Rule
of Evidence 50(a), asserting various bases on the record. The court effectively denied those
motions by allowing plaintiff’s claims and defendant’s defenses to go to the jury. The court
issues this brief opinion explaining its reasoning in doing so. While the court has denied
the motion, defendant has preserved these arguments for purposes of bringing a Rule 50(b)
motion.
Under Federal Rule of Civil Procedure 50, judgment as a matter of law may be
granted where there is no “legally sufficient evidentiary basis” to find for the party on that
issue. Fed. R. Civ. P. 50(a). In considering a Rule 50 motion, the court is to “examine the
evidence presented, combined with any reasonably drawn inferences, and determine
whether that evidence sufficiently supports the verdict when viewed in the light most
favorable to the non-moving party.” E.E.O.C. v. AutoZone, Inc., 707 F.3d 824, 835 (7th
Cir. 2013).

The court does not make credibility determinations or weigh the evidence,

though it must assure that more than “a mere scintilla of evidence” supports the verdict.
Hossack v. Floor Covering Assocs. of Joliet, Inc., 492 F.3d 853, 859 (7th Cir. 2007). The court

may “reverse the verdict only if no rational jury could have found for the prevailing party.”
AutoZone, Inc., 707 F.3d at 835.
Orally and in a supplemental brief in support of its motion at the close of plaintiff’s
case-in-chief, defendant sought judgment in its favor on plaintiff’s trademark claims,
arguing that: (1) plaintiff failed to put forth sufficient evidence to support a jury’s finding
of likelihood of confusion and (2) with respect to the common law claim, plaintiff failed to
put forth sufficient evidence to support a finding of acquired distinctiveness, especially in
the Upper Peninsula of Michigan.
As for defendant’s first basis for judgment as a matter of law, the court rejects this
challenge for the same reason it denied defendant’s motion for summary judgment.
(11/8/17 Op. & Order (dkt. #221) 33-50.) Defendant contends that: the parties’ marks
are different; their products are different; there was no evidence that a customer of either
party attempted to purchase goods from the other party; and that the consumers are
sophisticated and educated. Defendant’s counsel also made these same arguments to the
jury. The jury obviously concluded that these factors weighed in favor of plaintiff, and the
court will await further briefing as to the legal sufficiency of that finding.
As for defendant’s second basis -- that plaintiff has failed to demonstrate acquired
distinctiveness -- defendant specifically argues that plaintiff has failed to put forth evidence
to support a finding for the Upper Peninsula of Michigan.

As previously explained,

however, both of the parties treated the relevant geographic area consistently as a
combination of Wisconsin and the Upper Peninsula of Michigan. Regardless, the jury
rejected this claim, thus mooting defendant’s motion on this ground.
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With respect to its defenses, for which it bears the burden of proof, defendant
sought judgment as a matter of law at the close of the evidence, argued that a reasonable
jury could only find that: (1) JFTCO is the continuous, prior user of the mark; and (2)
plaintiff abandoned the mark by failing to reasonably control the quality of the products
in its licensing to others. As for the continuous prior use defense, the court agrees -- as it
indicated on the record -- that defendant’s evidence is strong, but the court declined to
grant judgment in plaintiff’s favor, finding disputes of fact as to whether the John Fabick
Tractor Company’s use of FABICK in Wisconsin and the Upper Peninsula of Michigan
before March 25, 1994, was sufficient to establish “use” as that term is defined in S.C.
Johnson & Son, Inc. v. Nutraceutical Corp., 835 F.3d 660, 666 (7th Cir. 2016).

More

importantly, the scope of the appropriate market segment and how that segment is defined,
whether geographically and/or by product line is at least open for debate.
As for the failure to exercise reasonable control defense, while the court agrees that
plaintiff’s response that the use by other entities of the Fabick name was “permissible”
offers little defense to whether plaintiff exercised any quality control, there is evidence that
none of the other uses were sufficiently substantial or widespread to warrant policing. In
light of defendant’s heightened burden of proof with respect to this affirmative defense,
the court opted to allow the jury to decide that question as well, which, of course, it did
adversely to defendant.

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ORDER
IT IS ORDERED that defendant JFTCO, Inc.’s motion for judgment as a matter of
law under Federal Rule of Civil Procedure 50(a) is DENIED.
Entered this 18th day of December, 2017.
BY THE COURT:

s/
__________________________________
WILLIAM M. CONLEY
District Judge

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