Opinion
No. 01-2941 Bre
May 8, 2002
ORDER GRANTING PLAINTIFFS' MOTION FOR PARTIAL SUMMARY JUDGMENT
Before the court is the motion of the plaintiffs, AutoZone, Inc. and Speedbar, Inc. (sometimes collectively referred to herein as "AutoZone'), for partial summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure.
SUMMARY JUDGMENT STANDARD
Rule 56(c) provides that a
. . . judgment . . . shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.
Fed.R.Civ.P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986); Canderm Pharmacal, Ltd. v. Elder Pharmaceuticals, Inc., 862 F.2d 597, 601 (6th Cir. 1988). In reviewing a motion for summary judgment, the evidence must be viewed in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986). When the motion is supported by documentary proof such as depositions and affidavits, the nonmoving party may not rest on his pleadings but, rather, must present some "specific facts showing that there is a genuine issue for trial." Celotex, 477 U.S. at 324, 106 S.Ct. at 2553. It is not sufficient "simply [to] show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., 475 U.S. at 586, 106 S.Ct. at 1356. These facts must be more than a scintilla of evidence and must meet the standard of whether a reasonable juror could find by a preponderance of the evidence that the nonmoving party is entitled to a verdict. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 2512, 91 L.Ed.2d 202 (1986). "[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Id. at 247-48, 106 S.Ct. at 2510 (emphasis in original). Summary judgment must be entered "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial."Celotex, 477 U.S. at 322, 106 S.Ct. at 2552. In this circuit, "this requires the nonmoving party to "put up or shut up' [on] the critical issues of [his] asserted causes of action." Lord v. Saratoga Capital, Inc., 920 F. Supp. 840, 847 (W.D. Tenn. 1995) (citing Street v. J.C. Bradford Co., 886 F.2d 1472, 1478 (6th Cir. 1989)). Conclusory statements alone are not sufficient to establish a genuine issue of material fact. Federal Express Corp. v. United States Postal Serv., 75 F. Supp.2d 807, 815 (W.D. Tenn. 1999). "If the adverse party does not so respond, summary judgment, if appropriate, shall be entered against the adverse party." Fed.R.Civ.P. 56(e). The "judge may not make credibility determinations or weigh the evidence." Adams v. Metiva, 31 F.3d 375, 379 (6th Cir. 1994). "While infringement and unfair competition cases often present factual issues that render summary judgment inappropriate, this is not invariably so." Copy Cop, Inc. v. Task Printing, Inc., 908 F. Supp. 37, 43 (D. Mass. 1995) (citations omitted).
FACTS AND PROCEDURAL BACKGROUND
The following facts relevant to this motion for partial summary judgment are as follows. Plaintiffs have utilized the tradename "AutoZone" in connection with retail auto parts store services and automotive parts and accessories since November 19, 1987. (Decl. of Amy M. Clunan at ¶ 3.) Plaintiff Speedbar, Inc., a wholly-owned subsidiary of AutoZone, is the record owner of the federal registrations of the mark AUTOZONE and plaintiff AutoZone uses the mark pursuant to a license by Speedbar. (Decl. of Amy M. Clunan at ¶¶ 2, 4.) AutoZone stores, located in more than 44 states and the District of Columbia, sell a variety of automotive parts and accessories, including automotive heating and air conditioning parts. (Decl. of Amy M. Clunan at ¶¶ 5, 7.)
Defendant, Ferrell Air Conditioning and Heating, Inc. ("Ferrell"), filed an application with the United States Patent and Trademark Office ("USPTO") seeking to register the mark "CLIMATEZONE" for heating and air conditioning installation, service and repair. (Def's Resp. to Pl.'s Mot. for Partial Summ. J. at ¶ 2.) Information received by plaintiffs' counsel from the USPTO indicated that Ferrell had first used the mark on June 28, 2001 and that it was first used in commerce on July 1, 2001. (Decl. of Debora McCormick at ¶ 3, Ex. 1.) AutoZone has alleged that it first became aware of defendant's use of the CLIMATEZONE name and mark on or about August 1, 2001. (Decl. of Amy M. Clunan at ¶ 9.)
On August 9, 2001, plaintiffs' corporate counsel sent a letter to Ferrell objecting to its use of the name CLIMATEZONE and usage of the phrase "Get in the Zone" in connection with defendant's advertising efforts. (Decl. of Amy M. Clunan at ¶ 10, Ex. 1.) Plaintiffs submit that, when the August 9 letter was returned as undeliverable, corporate counsel sent another letter to Ferrell on August 30, 2001, again objecting to use of the mark. (Decl. of Amy M. Clunan at ¶ 11, Ex. 2.) AutoZone asserts that, upon defendant's failure to respond to the August 30 letter, it instructed its local outside counsel to correspond with Ferrell, this time advising it, in a letter dated October 1, 2001, that legal action would be instituted if defendant did not agree to cease use of the CLIMATEZONE name by October 15, 2001. (Decl. of Amy M. Clunan at ¶ 12, Ex. 3.) Counsel for defendant replied to AutoZone's demand in a letter dated November 6, 2001, stating he was unwilling at that time to advise his client to discontinue use of the tradename. (Decl. of Amy M. Clunan at ¶ 13, Ex. 4.) The instant action, alleging service mark infringement, trade name infringement, unfair competition, and service mark dilution in violation of the Federal Trademark Act and Tennessee state law, was filed on November 26, 2001. In its answer to the complaint, defendant asserted various affirmative defenses, including laches.
ANALYSIS
In the instant motion, plaintiffs seek partial summary judgment on the laches affirmative defense. The doctrine of laches is "based upon the maxim that equity aids the vigilant and not those who slumber on their rights. It is defined as neglect to assert a right or claim which, taken together with lapse of time and other circumstances causing prejudice to the adverse party, operates as a bar in court of equity." Kansas v. Colorado, 514 U.S. 673, 687, 115 S.Ct. 1733, 1742, 131 L.Ed.2d 759 (1995) (quoting Black's Law Dictionary 875 (6th ed. 1990)). Dismissal of a claim on the grounds of laches generally requires a showing of both (1) unreasonable and unexcused delay in pursuing the claim and (2) material prejudice to the defendant resulting from the delay. Vance v. United States, 965 F. Supp. 944, 946 (E.D. Mich. 1997). Both prongs must be met. Id. Delay in itself is not sufficient to establish the defense.Patton v. Bearden, 8 F.3d 343, 347 (6th Cir. 1993). If the party succeeds in making the required showing as to both prongs, the court is then to weigh the delay and prejudice in order to decide whether justice requires that the claim be barred. Vance, 965 F. Supp. at 946-47. The "period of delay is measured from when the claimant had actual notice of the claim, or, would have reasonably been expected to inquire about the subject matter." Id. at 947. In trademark cases, a party must show not only unreasonable delay and prejudice but also "some affirmative conduct in the nature of an estoppel or conduct amounting to `virtual abandonment.'"Tandy Corp. v. Malone Hyde, Inc., 769 F.2d 362, 366 n. 2 (6th Cir. 1985) (internal citations omitted), cert. denied, 476 U.S. 1158, 106 S.Ct. 2277, 90 L.Ed.2d 719 (1986); see also Elvis Presley Enter., Inc. v. Elvisly Yours, Inc., 936 F.2d 889, 894 (6th Cir. 1991).
Courts in the Sixth Circuit have consistently held that there is a strong presumption a plaintiffs delay in bringing suit is not unreasonable as long as the analogous statute of limitations has not run. Herman Miller Inc. v. Palazzetti Imp. and Exp., Inc., 270 F.3d 298, 321 (6th Cir. 2001); Elvis Presley Enter., Inc., 936 F.2d at 894; Tandy Corp., 769 F.2d at 366; SCI Sys., Inc. v. Solidstate Controls, Inc., 748 F. Supp. 1257, 1261 (S.D. Ohio 1990). "Only rarely should laches bar a case before the analogous statute has run." Tandy Corp., 769 F.2d at 366. In order to set aside the presumptive period, the court "must articulate compelling reasons." Id. The burden of establishing the laches elements rests with the defendant. Id. A plaintiff is to be afforded "some latitude to assess both the impact of another's use of an allegedly infringing trademark as well as the wisdom of pursuing litigation on the issue." Id.
AutoZone maintains that the statute of limitations period applicable to this case is three years. See Tenn. Code Ann. § 28-3-105 (1999) (Tennessee state statute governing actions for injury to personal or real property). As the defendant does not dispute plaintiffs assertion in this regard, the court will assume for purposes of this motion that the three-year limitations period does apply.
Ferrell has failed to submit evidence to create a dispute of material fact that would permit it to meet its burden of showing laches. In its response to the motion for summary judgment, defendant argues that over 700 other names and marks containing the word "ZONE" have been federally registered with the USPTO and that plaintiffs have consistently failed to contest the use of such names and marks. Such failure to enforce its trademark, Ferrell maintains, constitutes waiver, relinquishment, and virtual abandonment by AutoZone of any right to lay claim to exclusive use of the word "ZONE," upon which defendant reasonably relied.
With respect to the delay prong, Ferrell appears to rely only upon AutoZone's alleged generalized failure over a period of many years to object to the use of the term "ZONE" by numerous other entities. Defendant makes no allegation, however, that delay occurred in this case in connection with Ferrell's use of the term "CLIMATEZONE," which is the relevant inquiry in the court's view. The evidence presented indicates that the name was first used on June 28, 2001 and that Ferrell became aware of AutoZone's objections by early October at the latest. Therefore, in this case, the "delay" amounted to just over three months. The court cannot imagine how a delay of such a short period could be considered "unreasonable and unexcused." Even if defendant could succeed in demonstrating delay, it has offered nothing beyond conclusory statements to support its argument that it suffered prejudice. Although Ferrell maintains that it has not had sufficient time in which to obtain adequate discovery on the elements of its affirmative defenses, it must, by definition, already have knowledge of any prejudice from which it suffered if such prejudice indeed exists.
Accordingly, from the reasons articulated herein, the motion for partial summary judgment is GRANTED.