Tenneco Automotive Operating Co. v. Kingdom Auto Parts
410 F. App'x 841
6th Cir.2010Background
- Tenneco and Kingdom compete in strut assemblies; Tenneco markets ‘Quick Strut’ as Monroe and owns a registered ‘Quick Strut’ mark.
- Defendants Kingdom and Prime Choice (Canadian) copied a Tenneco strut and stamped the same six-digit product numbers under Defendants’ StrutTEK label.
- Tenneco registered multiple five-digit numbers and later sought to register six-digit numbers; USPTO repeatedly refused then briefly reversed before reinstating refusals.
- Tenneco asserted Lanham Act claims and Michigan consumer protection claims, plus tortious interference; Defendants counterclaimed that product numbers are not protectable marks.
- The district court granted summary judgment for Defendants on most claims, denied preliminary injunctive relief, and this appeal consolidates those rulings; a partial dissent questions the product-number protectability.
- The court ultimately affirmed summary judgment for Defendants and denial of the preliminary injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether product numbers are inherently distinctive. | Tenneco argues numbers can be inherently distinctive. | Defendants contend numbers describe product features, not source. | No genuine issue; numbers not inherently distinctive. |
| Whether product numbers have acquired secondary meaning. | Tenneco presents distributor declarations and industry evidence. | Weak direct evidence; USPTO findings support non-protectability. | No material fact showing secondary meaning; summary judgment upheld. |
| Whether Defendants infringed Tenneco’s Quick-Strut mark. | Various uses (shows, website, price sheet) infringe the mark. | Infringement outside US or by third parties; no US nexus. | Summary judgment for Defendants on Quick-Strut infringement affirmed. |
| Whether the preliminary injunction should have been granted. | Likely success on merits and irreparable harm. | Merits resolution favors Defendants; no likelihood of success. | moot as merits determined against Tenneco; injunction denial affirmed. |
| Whether evidentiary issues require reversal on secondary meaning. | Uns sworn declarations should be considered; other declarations supportive. | Declarations insufficient or not properly admissible. | Court did not reverse on evidentiary grounds; no material factual issue. |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (-setting framework for distinctiveness spectrum and confusion)
- Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) (descriptive vs. inherently distinctive; secondary meaning framework)
- DeGidio v. West Group Corp., 355 F.3d 506 (6th Cir. 2004) (summary judgment standard; burden on mark owner)
- Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d 298 (6th Cir. 2001) (seven-factor test for secondary meaning; direct/indirect evidence)
- Esercizio v. Ferrari S.P.A., 944 F.2d 1235 (6th Cir. 1991) (principles on secondary meaning and descriptive marks)
- Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998) (direct consumer evidence weight in secondary meaning analysis)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) (test for source identification and descriptive strength)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (Lanham Act protection scope)