Ultraclear Epoxy, LLC v. Epodex USA Corp.
3:23-cv-00715
| M.D. Tenn. | Feb 27, 2024Background
- UltraClear Epoxy, LLC (UCE), a Tennessee-based company, owns a federally registered design mark for “ULTRA CLEAR EPOXY” with certain elements disclaimed (no exclusive right to "CLEAR EPOXY").
- Epodex USA Corp. (Epodex), a Florida competitor, began using “ultra clear” and “ultra clear epoxy” in product packaging and advertising, leading UCE to sue for trademark infringement under the Lanham Act and state law.
- UCE sought a broad preliminary injunction to stop Epodex from using "ULTRA," "ULTRA CLEAR EPOXY," or confusingly similar terms, and requested the court to order a compliance report.
- Epodex counterclaimed, seeking cancellation of UCE’s trademark, alleging tortious interference based on UCE’s takedown notices to online platforms, and claims under consumer protection laws.
- UCE moved to partially dismiss these counterclaims, arguing immunity under the Noerr-Pennington doctrine and failure to state a claim; Epodex opposed dismissal (except for one withdrawn count).
- The court resolved both the preliminary injunction and the motion to dismiss, granting partial relief to both parties.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Strength and scope of UCE’s trademark rights | UCE’s mark is valid, protectable, and infringed by Epodex’s use | UCE’s rights are weak/descriptive; fair use of common terms | UCE has moderate, limited rights; only enjoined some advertising uses |
| Likelihood of irreparable harm (PI factor) | There will be loss of control, confusion, and reputational harm | No real injury; Epodex just describes product clarity | Moderate likelihood; supports a narrow injunction only |
| Noerr-Pennington doctrine for takedown notices | Protects UCE from liability for takedown notices/confers immunity | Doctrine doesn’t apply to private, non-litigation communications | Doctrine does not immunize takedown notices from business interference |
| Dismissal of state law tort/FDUTPA claims | No improper/unjustified conduct; lack of standing for FDUTPA | Improper motive and unjustified actions caused competitive harm | Tort interference claims survive; FDUTPA dismissed for inadequate showing |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (framework for trademark distinctiveness)
- Hensley Mfg. v. ProPride, Inc., 579 F.3d 603 (trademark defined by use to identify source)
- ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915 (trademark rights not rights in gross, fair use doctrine)
- Fuji Kogyo Co. v. Pac. Bay Int’l, Inc., 461 F.3d 675 (registration creates rebuttable presumption of validity)
- Trau-Med of Am., Inc. v. Allstate Ins. Co., 71 S.W.3d 691 (elements of Tennessee tortious interference)
- Font & Nelson, PLLC v. Path Med., LLC, 317 So. 3d 134 (elements of Florida tortious interference)