48 F. Supp. 3d 675
S.D.N.Y.2014Background
- Kwik Lok (WA) owns long‑used U.S. product‑configuration trademarks (Registrations '043 and '545) and sells bag closures in the U.S.; Schutte BV (Netherlands) manufactures similar closures in Europe and formed Schutte Inc. (NY) to pursue U.S. marketing.
- Schutte BV shipped samples of the Clipps G‑Series into New York and Schutte Inc. ran limited U.S. promotion; other Schutte product lines were not marketed in the U.S. at the time this action began.
- Schutte Inc. sued for declaratory judgments of non‑infringement and sought cancellation of Kwik Lok marks; Kwik Lok counterclaimed for trade dress infringement, dilution, and related claims, and added Schutte BV as a third‑party/counterclaim defendant.
- Schutte BV moved to dismiss for lack of personal jurisdiction; Schutte parties moved to dismiss Kwik Lok’s counterclaims; both sides filed cross motions for summary judgment.
- The Hague Court of Appeal had earlier held Kwik Lok’s EU trade dress registration invalid and found no infringement in Europe; the U.S. litigation focuses on U.S. trademark/trade dress rights and specific products (primarily the Clipps G‑Series).
Issues
| Issue | Plaintiff's Argument (Schutte Inc./BV) | Defendant's Argument (Kwik Lok) | Held |
|---|---|---|---|
| Personal jurisdiction over Schutte BV | Schutte BV lacked sufficient New York contacts to be haled into court in NY | Schutte BV purposefully directed business to NY (shipped samples, created Schutte Inc., promoted products) and Schutte Inc. acted as its agent | Denied Schutte BV’s 12(b)(2) motion; NY specific jurisdiction proper under CPLR §302(a)(1) and due process satisfied |
| DJA jurisdiction for declaratory relief as to multiple product lines | All listed Clipps products present an actual controversy warranting declarations | Only the Clipps G‑Series had been meaningfully marketed/promoted in the U.S. at filing; other product claims are speculative | Schutte’s declaratory claims dismissed except for Clipps G‑Series (no case/controversy for other lines) |
| Validity of Kwik Lok’s registrations and trade dress (standing/cancelation) | Registrations are invalid: generic, functional, abandoned, or lacking secondary meaning | Kwik Lok has long continuous use, advertising, and sales supporting validity and secondary meaning; registered mark is incontestable absent specific defenses | Schutte withdrew some challenges; remaining factual disputes prevent summary judgment; issues of genericness/abandonment/secondary meaning remain for trial |
| Trade dress infringement & dilution (Clipps G‑Series) | No likelihood of confusion; mark weak; customers sophisticated; no actual confusion; no dilution | Kwik Lok’s mark is strong, commercially proximate, and Schutte intended to compete; evidence supports potential confusion and dilution | Schutte’s summary judgment motions denied; Kwik Lok’s remaining counterclaims re: '043 registration and unregistered beveled/notched configuration survive; dilution claim likewise survives |
Key Cases Cited
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) (DJA requires substantial, immediate controversy; "reasonable apprehension" test rejected)
- Int'l Shoe Co. v. Washington, 326 U.S. 310 (1945) (minimum contacts/due process standard for personal jurisdiction)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (Polaroid likelihood‑of‑confusion multi‑factor test)
- Wal‑Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (product design trade dress distinctiveness rules)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (trade dress protection and goodwill rationale)
- Daimler AG v. Bauman, 134 S. Ct. 746 (2014) (limits on general jurisdiction; "essentially at home" test)
- Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir. 2004) (federal dilution requires truly famous marks under TDRA)
- CutCo Indus. v. Naughton, 806 F.2d 361 (2d Cir. 1986) (prima facie standard for jurisdictional facts at motion to dismiss stage)