JDR Industries, Inc. v. McDowell
121 F. Supp. 3d 872
| D. Neb. | 2015Background
- JDR claims LaGrange welding rod mark used since 1970 by its predecessors, LEC and TGS Marketing (Farmer’s Choice).
- McDowell, a former LEC employee, started selling LaGrange welding rod from the 1980s and later formed LaGrange Supply Co. and LG Supply.
- Ralston Bank foreclosed on LEC assets in 1985, acquiring LaGrange rights, then transferred them to TGS and eventually to JDR in 2003.
- Vance, after leaving JDR, licensed LaGrange to sell via telemarketing, leading to customer confusion and a pending state court suit against Vance.
- JDR obtained federal registration for LaGrange in 2012, with first use in commerce stated as 1969; McDowell began using the mark earlier (1985).
- Court evaluates ownership, validity, and priority of use, finding JDR’s ownership via priority of use and protectability of the mark.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who has priority of use in LaGrange? | JDR asserts priority through unbroken chain to 1970. | McDowell contests chain and asserts earlier ownership interests. | JDR holds priority via continuous use back to 1970. |
| Is the LaGrange mark protectable? | Mark is descriptive but acquires secondary meaning with priority. | Mark is not inherently distinctive; registration § 2(f) evidence complicates. | LaGrange is descriptive but shown to have acquired secondary meaning by 1985. |
| Did LaGrange acquire secondary meaning before 1985? | Evidence of exclusivity, copying by McDowell, and geographic use supports. | Evidence of marketing and timing is unclear; cannot prove by preponderance. | Secondary meaning established by 1985; JDR entitled to summary judgment on ownership/validity elements. |
| Are laches or NU DTPA limitations barriers to relief? | Equitable defenses should not bar prospective relief given ongoing confusion. | Defenses apply; timing could bar some relief and limit claims. | Court declines to resolve these defenses now; further development required; not defeated on summary judgment. |
Key Cases Cited
- 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005) (likelihood of confusion elements govern trademark/infringement and unfair competition claims)
- Harley-Davidson Motor Co. v. Elworthy's Harley-Davidson Sales & Service, Inc., 2010 WL 1427317 (D. Neb. 2010) (overview of trademark infringement standards and summary judgment framework)
- Miller v. Glenn Miller Prods., Inc., 454 F.3d 975 (9th Cir. 2006) (priority of use and common law rights independent of registration)
- Allard Enters., Inc. v. Advanced Programming Res., Inc., 249 F.3d 564 (6th Cir. 2001) (priority of use; senior user rights superior to junior user's registration)
- Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978) (secondary meaning and priority framework for unregistered marks)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (descriptive vs. suggestive analysis for mark protectability)