Mionix, LLC v. ACS Technology
1:16-cv-02154
| D. Colo. | May 14, 2018Background
- Mionix, a biotech company, licensed sales/marketing rights for certain chemical products to ACS Technology (founded by Larry L’Hotta) in a two‑year agreement starting 2007; ACS paid via waived back wages.
- During and after the license term, disputes arose over supply and branding of FreshFlo 100; ACS developed and sold a similar product (LpH 100) and sometimes used Mionix product names, patent info, and the acronym “ACS” in business materials.
- Mionix repeatedly demanded cessation of those uses; L’Hotta removed or modified content when contacted and later dissolved ACS Technology, forming SAFE‑pHix.
- Mionix sued in 2016 asserting Lanham Act and related state claims (unfair competition, trademark/trade dress infringement, Colorado Consumer Protection Act, civil conspiracy); defendants counterclaimed for tortious interference, defamation, and federal unfair competition.
- Both sides moved for summary judgment (Mionix sought liability on its claims and dismissal of counterclaims); the court found material factual disputes (particularly intent and likelihood of consumer confusion) and denied both of Mionix’s summary judgment motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether defendants’ conduct created a "likelihood of confusion" under the Lanham Act and Colorado law (claims 1–6) | Mionix: defendants used Mionix marks/names/patents to mislead buyers; evidence (website, invoices, use of “ACS”) shows confusion | Defendants: uses were inadvertent or limited; ACS is descriptive of a compound; customers deny confusion | Denied — genuine disputes exist on actual confusion, intent, and mark similarity so summary judgment inappropriate |
| Whether defendants violated the Colorado Consumer Protection Act (claim 7) | Mionix: defendants made deceptive trade practices by implying affiliation/authorization | Defendants: actions were unintentional; any statements corrected when notified | Denied — material dispute over intent precludes summary judgment |
| Whether defendants are liable for civil conspiracy (claim 8) | Mionix: defendants coordinated to infringe and harm Mionix | Defendants: no meeting of the minds; actions inadvertent or lawful | Denied — conspiracy requires intent and unlawful act; factual disputes remain |
| Whether Mionix is entitled to summary judgment on defendants’ counterclaims (tortious interference, defamation, federal unfair competition) | Mionix: its communications were truthful and protected because ACS misused Mionix IP | Defendants: Mionix made exaggerated false statements to customers and supplier damaging ACS business | Denied — resolution of counterclaims hinges on disputed facts underlying Mionix’s affirmative claims |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment standard and burden allocation)
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment/genuine issue standard)
- Water Pik, Inc. v. Med‑Sys., Inc., 726 F.3d 1136 (10th Cir. test for likelihood of confusion)
- Donchez v. Coors Brewing Co., 392 F.3d 1211 (likelihood of consumer confusion requirement under Colorado law)
- Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964 (summary judgment inappropriate if dispute on likelihood of confusion)
- Concrete Works of Colo., Inc. v. City & County of Denver, 36 F.3d 1513 (view facts in light most favorable to nonmovant)
- Jet Courier Serv., Inc. v. Mulei, 771 P.2d 486 (Colo. 1989) (elements of civil conspiracy)