982 F. Supp. 2d 507
E.D. Pa.2013Background
- Southco, a hardware manufacturer, sued Fivetech for patent and trademark infringement over Southco’s registered “Segmented Circle” mark on captive (panel) screws.
- Fivetech uses a “Five Pentagon” mark on some fasteners; Southco alleges infringement of U.S. Trademark Registrations Nos. 2,478,685 and 3,678,153.
- Disputed factual uses of the Five Pentagon mark: a 2009 sale to SRI (the screws lacked the mark), a U.S. trademark application (filed by outside counsel and later abandoned), product listings/catalog on Fivetech’s website, and Fivetech fasteners bearing the mark incorporated into HP servers sold in the U.S.
- Court previously granted summary judgment to Fivetech on all asserted patent claims; remaining dispute here concerns trademark use in U.S. commerce and potential extraterritorial application of the Lanham Act.
- Southco moved to supplement the record with shipment and website documents purportedly showing Fivetech sales into the U.S.; the court found those exhibits had admissibility/authentication problems and did not change the outcome.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Fivetech’s Five Pentagon mark was “used in commerce” in the U.S. under the Lanham Act | Five Pentagon was used in U.S. commerce (website/catalog accessible in U.S., HP servers sold in U.S., trademark application stating use) | No U.S. commerce use: website/catalog/ads insufficient; no direct U.S. sales of marked goods; application statement is uncorroborated | No. Court: no triable evidence of the mark being sold or transported in U.S. commerce; website/catalog/ads and 2009 sale (no mark) insufficient; application alone insufficient |
| Whether extraterritorial application of the Lanham Act is warranted (substantial effect on U.S. commerce) | Presence of Fivetech-marked screws in HP servers sold in U.S. has substantial effect; supplemented shipping records suggest U.S. shipments | No substantial U.S. effect: Fivetech’s sales are to foreign manufacturers; no evidence of consumer confusion or harm to Southco’s goodwill in U.S.; limited U.S. activity | No. Court: Bulova-based multi-factor test not satisfied — defendant is foreign and Southco failed to show substantial effects on U.S. commerce or consumer confusion |
| Authenticity/admissibility of Southco’s supplemental shipping and web evidence | Documents and web printouts show shipments and U.S. offers for sale | Evidence suffers hearsay and authentication defects; Fivetech denies U.S. sales of the series at issue | Denied as moot: court considered filings but held supplemental materials inadmissible or insufficient and would not alter ruling |
| Need to decide likelihood-of-confusion on merits | If jurisdiction exists, there is a triable issue on likelihood of confusion | Even if Lanham Act applied, no confusion established | Court did not reach merits because it found Lanham Act inapplicable extraterritorially and no use in commerce |
Key Cases Cited
- Weil Ceramics & Glass, Inc. v. Dash, 878 F.2d 659 (3d Cir. 1989) (explains Lanham Act’s dual purpose of consumer protection and goodwill protection)
- Steele v. Bulova Watch Co., 344 U.S. 280 (1952) (Lanham Act applied extraterritorially where foreign sales affected U.S. commerce and goodwill)
- All. Richfield Co. v. Arco Globus Int’l Co., 150 F.3d 189 (2d Cir. 1998) (second-circuit multi-factor approach to extraterritorial reach of Lanham Act)
- Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993 (2d Cir. 1997) (importation of products into U.S. supports substantial effects analysis)
- Buti v. Perosa, 139 F.3d 98 (2d Cir. 1998) (mere advertising in U.S. insufficient for "use in commerce")