Porsche Cars North America v. Lloyd Design Corp.

Full title: PORSCHE CARS NORTH AMERICA, INC. and DR. ING h.c.F. PORSCHE AG…

Court: United States District Court, N.D. Georgia, Atlanta Division

Date published: Mar 26, 2002

CIVIL ACTION NO. 1:99-CV-1560A-JEC (N.D. Ga. Mar. 26, 2002)

Opinion

CIVIL ACTION NO. 1:99-CV-1560A-JEC

March 26, 2002

ORDER

JULIE E. CARNES, United States District Judge.

The above-captioned action is before the Court on plaintiffs' Motion for Summary Judgment [74] and Request for Oral Argument [76], defendant's Motion for Summary Judgment [76], and defendant's Motion to Strike Plaintiffs' Unauthorized Submission in Support of Summary Judgment [96].

The Court has reviewed the record and the arguments of the parties and, for the reasons set forth below, concludes that plaintiffs' Motion for Summary Judgment [74] should be DENIED, and defendant's Motion for Summary Judgment [76] should be GRANTED in part, and DENIED in part. Plaintiffs' Request for Oral Argument [75] is DENIED, and defendant's Motion to Strike Plaintiffs' Unauthorized Submission in Support of Summary Judgment [96] is also DENIED.

BACKGROUND

Defendant Lloyd Design Corp. (hereinafter "Lloyd") manufactures and sells floor mats for automobiles. On June 16, 1999, plaintiffs Porsche Cars North America (hereinafter "Porsche NA") and Dr. ING h.c.F. Porsche AG (hereinafter "Porsche AG") filed the instant action against Lloyd, alleging that Lloyd infringed upon Porsche AG's trademark rights in the model numbers of Porsche automobiles in violation of the Lanham Act. (Compl. [1] at 1.) Specifically, plaintiffs (hereinafter collectively "Porsche") allege a trademark dilution claim under 15 U.S.C. § 1125(c), a trademark infringement and counterfeiting claim under 15 U.S.C. § 1114, a false designation of origin and false advertising claim under 15 U.S.C. § 1125(a), and finally a claim of common law trademark infringement. (Id.)

On August 9, 1999, two days prior to the date Lloyd filed its answer in the instant case, Lloyd filed suit against Porsche in the Central District of California, alleging twelve claims related to its use of the Porsche marks. (Notice of Decision [17], Ex. 1 ("California Order") at 3.) After reviewing the procedural history and law related to the first to file rule, the California court granted Porsche's motion to dismiss Lloyd's claims on the condition that Porsche stipulate to permit Lloyd to amend its answer and to present the dismissed counts in the complaint as counterclaims in the instant case. (Id. at 7.) On October 6, 1999, the Court granted the parties an eight-month discovery period which concluded on May 11, 2000. (Order [20].) On November 16, 1999, Lloyd filed its first amended answer to plaintiffs' complaint, including six counterclaims. These claims include claims for trade libel, intentional interference with prospective economic advantage, negligence, and unfair competition under California law. (See First Am. Ans. [24] at 16-23.) In addition, defendant asserted a claim for cancellation of Porsche A.G.'s registered marks under 15 U.S.C. § 1064(e) and a claim for suspension of Porsche A.G.'s exclusive right to use its trademarks under 15 U.S.C. § 1115(B)(3) (Id. at 23-26.) Those latter two claims, however, were dismissed with prejudice by stipulation of the parties on October 2, 2000 [64].

FACTS

As noted above, plaintiffs and defendant have filed cross-motions for summary judgment in this action. Accordingly, the Court takes the following facts primarily from the plaintiffs' "Statement of Undisputed Material Facts" ("Pls. SMF") [74] or the defendant's "Separate Statement of Undisputed Material Facts in Support of its Motion for Summary Judgment and for Recovery of Fees and Costs" ("Def. SMF") [76]. In resolving plaintiffs' motion for summary judgment, the Court has viewed all evidence and factual inferences in the light most favorable to defendant; in resolving defendant's motion for summary judgment, the Court has viewed all as evidence and factual inferences in the light most favorable to plaintiffs. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); McCabe v. Sharrett, 12 F.3d 1558, 1560 (11^th Cir. 1994); Reynolds v. Bridgestone/Firestone, Inc., 989 F.2d 465, 469 (11^th Cir. 1993). Accordingly, the Court has attempted to discern which facts are undisputed, and will discuss those facts in dispute when such disputes are relevant to the claims or defenses.

Porsche AG is a German corporation that has been manufacturing motor vehicles, and motor vehicle parts and accessories since 1952. (Compl. [1], ¶ 4.) Porsche NA is a Delaware corporation with its principal place of business in Atlanta, Georgia, and is the U.S. licensee of Porsche AG with exclusive authority to import and distribute Porsche AG motor vehicles, parts, accessories, and related products in the United States. (Compl. [1], ¶ 3.) Porsche NA was incorporated in 1984, and has served as Porsche AG's U.S. distributor since that time. (Id.) Porsche NA and its approximately 200 franchised dealerships are the only authorized providers of Porsche vehicles and products in the U.S. (Id.) The Court will refer to Porsche AG and Porsche NA collectively as "Porsche" for the purposes of this discussion.

Lloyd Design Corp ("Lloyd") is a California corporation with its principal place of business in Arleta, California. (Id. at ¶ 5.) Lloyd was founded by Lloyd Levine ("Levine") in 1974 to manufacture custom designed rugs and tapestries. (Levine Decl. at ¶ 2, attached to Def. SMF [76] and Def.'s Resp. [79].) In 1978, Lloyd began manufacturing and selling automobile floor mats with either the "Porsche" word or the "928" model number dyed into the mats. (Id.) Within a few years, automotive floor mats became Lloyd's only product. (Id.) According to Levine, in the early to mid-1980's, Lloyd was the largest U.S. producer of floor mats for Porsche, Audi, BMW and Mercedes Benz vehicles. (Id.)

During the period from 1978 through 1990, Lloyd sold floor mats with the "Porsche" name on them, and also sold mats with the following model numbers on them: 928, 924, 944, 911, 911S, and 911SC. (Id. at ¶ 5; see also Def. SMF at ¶ 10; Pls.' Resp. to Def. SMF at ¶¶ 1, 10.) At that time, all Lloyd's mat sales were made exclusively to franchised new car dealers and not to unaffiliated aftermarket accessory sellers. (Levine Decl. at ¶ 5; Def. SMF at ¶ 10.) The standard packaging for Lloyd's mats states in bold and prominent identification that Lloyd Mats is the manufacturer of the mats, and contains repeated disclaimers that: "These mats are a product of LLOYD DESIGN CORP. No affiliation with or approval of any automobile manufacturer is intended or implied." (Levine Decl. at ¶ 13; Def. SMF at ¶ 2, Ex. 13; Pls. SMF at ¶ 2.) Lloyd mats also include hang tags and permanently sewn-in labels that carry the company identification and disclaimer. (Levine Decl. at ¶ 13; Def. SMF at ¶ 3; Pls. SMF at ¶ 3.)

In November, 1989, Porsche entered into the first of a series of four License Agreement with Lloyd in which Lloyd was authorized to use certain Porsche trademarks on floor mats, under specific conditions, and subject to Lloyd's payment of specified royalties to Porsche. (Pls. SMF at ¶ 6, Ex. D1-D4; Def. Resp. to SMF at ¶ 6.) The first License Agreement, entered into on November 1, 1989, stated that "a dispute arose between PCNA and Lloyd concerning the use by Lloyd of one or more of the Porsche Trademarks; and WHEREAS, that dispute is settled pursuant to the terms and conditions of this Agreement under which PCNA, on the one hand, and Lloyd, on the other, hereby waive any and all claims to damages arising out of the conduct of the other up to the effective date of this Agreement;. . . ." (Pls. SMF, Ex. D4 at 1; Def. SMF, Ex. 4 at 1.)

The first License Agreement also contained the following provision:

Subject to the limitations, terms and conditions set forth herein, PCNA hereby grants to Lloyd a right to duplicate the following Trademarks: PORSCHE®, the Porsche Crest, Carrera® (including Carrera 2 and Carrera 4) and Targa® (hereinafter "Porsche Marks or "Marks") for a three (3) year period from the date of this Agreement in connection with the manufacture and sale of Porsche Mats. Insofar as this license applies to sales to third parties, it shall be an exclusive license, except as otherwise set forth in Section VII. In the event Lloyd desires to use any other Porsche Mark or Marks in connection with Porsche Mats, Lloyd agrees that it must first request and obtain prior written consent from PCNA. If such consent is granted, such consent shall be made a part of this Agreement in the form of an exhibit to be attached hereto.

(Pls. SMF, Ex. D1, at 3; Def. SMF, Ex. 4, at 3.) Similar provisions were also part of the three subsequent License Agreements. (Pls. SMF, Ex. D2 at 2, Ex. D3 at 2, Ex. D4 at 2.) Model numbers of Porsche automobiles, or model numbers of any kind, were not mentioned in any of the License Agreements. (Pls. SMF at ¶ 10, Ex. D1-D4; Def. Resp. to Pls. SMF at ¶ 10; Def. SMF at ¶ 5.)

In a letter dated October 25, 1990, from Lloyd Levine, president of Lloyd, to Brad Ripley of Porsche NA, Levine wrote:

As I had mentioned to you before, I have been pressuring the various catalog houses that buy my Authorized Porsche Mats to discontinue offering mats from other suppliers with unauthorized "Porsche" letters or the Porsche Crest. The catalog houses state that these unlicensed Porsche mat suppliers also provide model number mats; i.e., 944, 928S, 911SC, etc. The catalog houses feel it is important for them to offer the model number mats. They said that if I would provide the model number mats, they would discontinue offering unlicensed mats containing Porsche Registered Trademarks.

This seems like a good trade off to me. I plan on preparing embroidery tapes for the stylized model numbers. Although the model numbers are not Porsche Registered Trademarks and therefore not part of our license agreement, I still wanted to advise you of my plans. If you have any objection to my offering Porsche model number mats outside of our license agreement, please let me know right away.

(Pls. SMF, Ex. E (emphasis added); see Def. SMF at ¶ 6, Ex. 3; Levine Decl. at ¶ 7.) In a letter dated October 30, 1990, Ripley responded to Levine:

Thanks for your letter of October 25, 1990, regarding the use of model numbers/names. I have no objection to the use of non-trademarked logos and would encourage you to offer same to obtain business presently going to other manufacturers.

Keep up the good work!

(Pls. SMF, Ex. F; Def. SMF, Ex. 5 (emphasis added).) Ripley sent that letter on letterhead of "Porsche Cars North America, Inc." and below Ripley's signature was the title "Accessories and Vintage Parts Manager." (Pls. SMF, Ex. F; Def. SMF, Ex. 5.) Neither of these two letters was ever made an exhibit to any of the License Agreements between Lloyd and Porsche. (Pls. SMF at ¶ 10; Def. Resp. to Pls. SMF at ¶ 10.)

After October 30, 1990, Lloyd increased the number of mats offered with model numbers, and Lloyd's model number mats were prominently featured in the three largest Porsche accessory catalogs: Automotion, Performance Products, and Tweeks, which were in turn under periodic review by Porsche's trademark enforcement personnel. (Def. SMF at ¶ 11; Levine Decl. at ¶ 8; see Walters Dep. at 57-59.) In an advertising brochure dated January 1, 1991, Lloyd advertised "Embroidered Mats," including mats with "PORSCHE" letters, the Porsche Crest, or with "Special Order stylized model numbers and lettering: 911, 911S, 911SC, 928, 928S, 928S4, 924, 944, CABRIOLET, CARRERA, CARRERA 2, CARRERA 4, TARGA or TURBO." (Pls. SMF at ¶ 12, Ex. H.)¹ On the same page, Lloyd also advertised "Dyed Mats" and indicated that the dyed mats were labeled "PORSCHE" or "CARRERA." (Id.) The brochure further stated:

1 Although defendant claims this fact is "disputed," it does not dispute that plaintiffs' exhibit is an excerpt from a Lloyd advertising brochure dated January 1, 1991, nor does it dispute the accuracy of the exhibit. (See Def.'s Resp. to Pls. SMF at ¶ 12.) Defendant claims only that the quotations are "incomplete and taken out of context," although it does not explain what part of the quotation is missing, nor does it explain further how the quotations were taken out of context. (Id.) Moreover, although defendant states that the brochure "speaks for itself," it cites to an entirely different advertisement dated June 30, 1999. (Id.; see Def. Resp. to Pls. SMF, Ex. 2.)

AUTHORIZED PORSCHE® MATS Manufactured by Lloyd Design Corp., under license from Porsche Cars North America, Inc. PORSCHE, the Porsche Crest, TARGA, and CARRERA are registered trademarks of Dr. Ing. h.c.F. Porsche AG.

(Id.) Below that statement, in large conspicuous lettering, the brochure contained the logo for "Lloyd DESIGN CORP." (Id.)

In 1997, Porsche registered the trademark RS® with the United States Patent and Trademark Office, for "automobiles and structural parts for automobiles." (Pls. SMF at ¶ 1, Ex. B; Def.'s Resp. to Pls. SMF [79] at ¶ 1.) Also in 1997, Porsche registered the trademark 4S®, in the stylized form of a white "4" and a larger black script "S," with the United States Patent and Trademark Office, for "automobiles and structural parts for automobiles." (Pls. SMF at ¶ 2, Ex. C; Def.'s Resp. to Pls. SMF at ¶ 2.)

In a letter dated March 25, 1998, Porsche terminated Lloyd's license effective January 1, 1999.² (Pls. SMF at ¶ 13, Ex. I; Def. Resp. to Pls. SMF at ¶ 13.) In June, 1998, Levine sent a letter to Lloyd's customers, in which he informed them that Lloyd's license agreement with Porsche had been terminated, but also stated that the company continued to offer "Lloyd's Authorized Porsche mats." (Pls. SMF at ¶ 14, Ex. J; Def. Resp. to SMF at ¶ 14.) Attached to that letter was a price list, also dated June, 1998, labeled "Authorized Porsche Floor Mats," which included prices for various mats under the categories "Plain," "Embroidered Letters," and "Embroidered Model Numbers." (Pls. SMF at ¶ 15, Ex. K.) Below the list of prices for various mat designs was the following statement:

2 The actual text of the March 25, 1998, letter from Alex Migues of Porsche NA to Lloyd Levine states that the License Agreement dated February 1, 1995, as amended on August 5, 1996, "shall be terminated effective ninety days from the date of your receipt of this notice." (Pls. Ex. I.) The letter further stated that Lloyd had until January 1, 1999 "to sell your remaining inventory of Porsche Mats." (Id.) Both parties have agreed that the letter effectively terminated the License Agreement on January 1, 1999. (Pls. SMF at ¶ 13; Def. Resp. to SMF at ¶ 13.)

AUTHORIZED PORSCHE® MATS Manufactured by Lloyd Design Corp., under license from Porsche Cars North America, Inc. PORSCHE, the Porsche Crest, TARGA, and CARRERA are registered trademarks of Dr. Ing. h.c.F. Porsche AG.

(Id.) Below that statement, there was a logo for "Lloyd Mats." (Id.)

In another letter sent to Lloyd customers dated June 25, 1998, Levine explained his plans to aggressively pursue the Porsche floor mat market as follows:

The following are my Porsche mat plans: Between now and December 28, 1998, mats will be shipped with the Porsche registered trademarks (Porsche, Carrera, Targa and Boxster), non-registered words (Speedster, Cabriolet, RS America, Turbo and American Roadster) and two designs of Porsche model numbers (Block and Script) (Enclosure 3). These new model number mats will become our primary Porsche mat design after December 28, when the trademark mats will be discontinued.

Every model number combination listed is available in every thread color. These model number emblems are priced at a discount of $5 per mat through 1999. I hope you will use this discount to immediately start promoting the new Porsche number mat designs. This is the time to transition to the new emblems. . . .

Although we'll lose the appeal of the Porsche and Boxster lettering on our mats, we should be able to take mat business away from the very weak Porsche dealer mat program. Please let me know if there is any way I can assist you in making this emblem transition as smooth as possible.

(Pls. SMF at ¶ 16, Ex. L.)

Lloyd's Porsche mat sales from April, 1998, through October, 1998, increased from 428 sets per month the prior year to 1038 sets per month, which is an increase of 242%. (Def. SMF at ¶ 23.) In early 1999, Lloyd was offering sixty different model number designs to approximately 900 catalog, car dealer and other retail customers. (Def. SMF at ¶ 27; Levine Decl. at ¶ 11.) Although Porsche offers a line of floor mats with "Porsche" embroidered on them, it has never offered floor mats with model numbers on them. (Def. SMF at ¶¶ 24, 25; Pls. Resp. to SMF at ¶¶ 24, 25.)

In a letter dated April 16, 1999, counsel for Porsche wrote to Levine that:

It recently came to Porsche's attention that Lloyd Design Corporation ("Lloyd Design") is selling counterfeit floor mats, trunk mats, and rear deck mats using the common law Porsche trademarks and model numbers 996, 986, 993, 964, 930, 911, 911C2, 911C4, 911E, 911S, 911SC, 911T, and 912. Lloyd Design also uses Porsche's distinctive and stylized script in manufacturing these mats. In so doing, Lloyd Design is infringing and diluting Porsche' s significant and world famous trademark and trade dress rights, is misappropriating the good will and reputation of Porsche, and is also engaging in false and misleading advertising by causing the public to believe that the product Lloyd Design is somehow sponsored by, affiliated with, or approved by Porsche, or that Porsche is the source of or has authorized the counterfeit mats.

PORSCHE®, the Porsche Crest, CARRERA, TARGA, and BOXSTER are some of the registered trademarks of Dr. Ing. h.c.F. Porsche AG, and are proprietary property of that corporation. In addition, Porsche has trade dress rights in the distinctive shapes of the Porsche automobiles and trademark rights in its model numbers, including but not limited to, the Porsche models 996, 993, 986, 964, 911, 912, 914, 924, 928, 930, 944, 959, 968, 356, and the Boxster. . . .

Such infringement and dilution of Porsche's trademarks and trade dress must cease immediately. . . .

Porsche sincerely hopes that Lloyd Design will agree through the agreement set forth below to cease and desist immediately from using the Porsche trademarks and trade dress, and pay Porsche reasonable damages for Lloyd Design's infringement and dilution. If Lloyd Design will not agree to cease and desist immediately and pay Porsche reasonable damages, Porsche will seek both a preliminary and permanent injunction against Lloyd Design, and seek Porsche's damages, treble damages, punitive damages, and Porsche's attorney's fees. Please be advised that unless Lloyd Design agrees below to cease and desist from its infringement, dilution, and false advertising, and pay damages, Porsche will immediately initiate litigation against Lloyd Design.

(Def. SMF, Ex. 1.) Other than the October 3, 1990, letter from Brad Ripley, the letter quoted above dated April 16, 1999, was the first time Porsche communicated with Lloyd regarding Lloyd's use of model numbers on floor mats. (Def. SMF at ¶ 19, Ex. 14; Pls. Resp. to Def. SMF [78] at ¶ 19.)

On April 20, 1999, counsel for Porsche wrote to two of Lloyd's biggest customers for its model number mats, Automotion and Performance Products, stating that Porsche had terminated its license agreement with Lloyd and that Lloyd was selling "counterfeit" mats, and demanded that they stop selling Lloyd's mats. (Def. SMF at ¶ 28, Ex. 6.) Porsche's counsel also enclosed the "cease and desist" letter it had sent to Lloyd four days earlier. (Id.) Porsche also threatened to sue Automotion if it did not discontinue selling Lloyd's model number mats. (Def. SMF at ¶ 29; Pls. Resp. to SMF at ¶ 29.)

On May 6, 1999, Levine responded in a letter to Porsche's counsel, in which he stated that Lloyd had been selling model number mats since 1978, and that, by 1983, Porsche dealers nationwide "delivered most Porsche new cars to their customers with Lloyd's model number mats or other Lloyd mats." (Def. SMF at ¶ 31, Ex. 2; Pls. Resp. to SMF at ¶ 31; Levine Decl. at ¶ 3.) In that letter, Levine further stated:

Lloyd has continuously sold model number mats for Porsches for twenty-one years. All of these facts are well known to PCNA, and provable by a combination of documents and testimony. If Porsche once had a complaint regarding Lloyd's model number mats, it is way too late to assert it now.

As for Porsche's registered trademarks, in late 1988 or early 1989, PCNA did complain about Lloyd's mats containing the registered trademarks "Porsche," "Carrera" and "Targa." As a compromise solution, a production/License Agreement ("Agreement"), dated November 1, 1989, was prepared by PCNA and accepted by Lloyd, as to those registered trademarks only. While, PCNA had full knowledge of Lloyd's continuing sales of model number mats, PCNA chose not to include model number mats in the Agreement. It can only be concluded that PCNA placed no value on its model numbers as floor mat trademarks.

(Def. SMF at ¶ 31, Ex. 2; see also Pls. Resp. to SMF at ¶ 31; Levine Decl. at ¶ 3.) Levine also indicated in the letter that he had informed Brad Ripley in 1990 that Lloyd intended to expand its offering of model number mats to the catalogs, and that Ripley had encouraged him to do so. (Def. SMF at ¶ 31, Ex. 2.) Finally, Levine informed Porsche's counsel that the letters to Automotion and Performance Products accusing Lloyd of selling "counterfeit" mats and demanding that they stop selling Lloyd mats, had wrongfully interfered with Lloyd's business relationships and that Porsche could be liable to Lloyd as a result. (Id.)

On June 16, 1999, plaintiffs filed the instant action against Lloyd, alleging that Lloyd infringed upon Porsche AG's trademark rights in the model numbers of Porsche automobiles in violation of the Lanham Act and the common law, and seeking a permanent injunction and other relief. (Compl. [1] at 1.) In their Complaint, plaintiffs alleged as follows:

Porsche has acquired trademark rights in the model numbers (hereinafter "Model Numbers") that Porsche uses to identify and designate its automobiles. These Model Numbers, including the numbers 996, 986, 993, 930, 911, 911C2, 911C4, 911E, 911S, 911SC, 911T, and 912, function as trademarks and are recognized throughout the world. Porsche's trademarks in its Model Numbers, including the foregoing model numbers, are hereinafter collectively referred to as the "Porsche Marks."

(Compl. [1] at ¶ 9.)

On August 11, 1999, Lloyd served a "Rule 68 Offer of Judgment to Plaintiffs," in which Lloyd agreed to allow the entry of Judgment against it in this action, and in which it agreed to cease the manufacture and sale of mats with specific model numbers and using the same font style or other stylized design used by Porsche, and in which Lloyd agreed to pay Porsche's taxable costs incurred in this action as of that date. (Def. SMF at ¶ 33, Ex. 12.)³

3 Although Lloyd states in its SMF that it "filed" this Offer, there is no indication on the docket that the Offer of Judgment was filed with the Clerk and made part of the official record in this action, and the copy of the Offer of Judgment attached as defendant's Exhibit 12 is not a file-stamped copy. (See Def. SMF at ¶ 33, Ex. 12.) In any event, plaintiffs do not dispute that the Offer of Judgment was conveyed to plaintiffs. (Pls. Resp. to Def. SMF at ¶ 33.)

On December 19, 2000, over a year after filing this action, Porsche registered the trademark 911® with the United States Patent and Trademark Office, for "automobiles and structural parts for automobiles." (Pls. SMF at ¶ 20, Ex. O; Def.'s Resp. to Pls. SMF at ¶ 20.)

On April 5, 2001, the plaintiffs filed a Motion for Summary Judgment [74], and on April 6, 2001, the defendant filed a Motion for Summary Judgment [76], both of which are now pending before the Court.

DISCUSSION

I. Summary Judgment Standard

Summary judgment is not properly viewed as a device that the trial court may, in its discretion, implement in lieu of a trial on the merits. Instead, Rule 56 of the Federal Rules of Civil Procedure mandates the entry of summary judgment against a party who fails to make a showing sufficient to establish the existence of every element essential to that party's case on which that party will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). In such a situation, there can be no genuine issue as to any material fact, as a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial. Id. at 322-23.

The movant bears the initial responsibility of asserting the basis for his motion. Id. at 323; Apcoa, Inc. v. Fidelity Nat'l Bank, 906 F.2d 610, 611 (11^th Cir. 1990). The movant is not required to negate his opponent's claim, however. The movant may discharge his burden by merely "`showing' — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 325. After the movant has carried his burden, the nonmoving party is then required to "go beyond the pleadings" and present competent evidence, including affidavit and deposition testimony, answers to interrogatories, and other such evidence, designating "`specific facts showing that there is a genuine issue for trial.'" Id. at 324 (quoting FED. R. Civ. P. 56(e)). While the court is to view all evidence and factual inferences in a light most favorable to the nonmoving party, Samples v. City of Atlanta, 846 F.2d 1328, 1330 (11^th Cir. 1988), "the 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." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (emphasis added).

A fact is material when it is identified as such by the controlling substantive law. Id. at 248. An issue is genuine when the evidence is such that a reasonable jury could return a verdict for the nonmovant. Id. at 249-50. The nonmovant "must do more than simply show that there is some metaphysical doubt as to the material facts. . . . Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no `genuine issue for trial.'" Matsushita Electric Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986) (citations omitted). An issue is not genuine if it is unsupported by evidence, or if it is created by evidence that is "merely colorable" or is "not significantly probative." Anderson, 477 U.S. at 249-50. Thus, to survive a motion for summary judgment, the nonmoving party must come forward with specific evidence of every element material to that party's case so as to create a genuine issue for trial.

II. Plaintiff's Request for Oral Argument

Plaintiffs have filed a Request for Oral Argument before the Court [75] on the pending motions for summary judgment. Plaintiffs state that oral argument will assist the Court in resolving plaintiffs' dispositive motion, but they have failed to provide any specific reason why oral argument would be especially valuable in this action. The Court finds it unnecessary to hold oral arguments on any of the pending motions. Accordingly, plaintiffs' motion for oral argument [16] is DENIED.

III. Plaintiffs' Claims Against Defendant

In their Complaint, plaintiffs have asserted four separate claims against defendant: three claims under the Lanham Act, and one common law claim. In Count One, plaintiffs have asserted a claim for trademark dilution under 15 U.S.C. § 1125(c).⁴ In Count Two, they have asserted a claim for trademark infringement and counterfeiting, under 15 U.S.C. § 1114. In Count Three, they have asserted a claim under 15 U.S.C. § 1125(a) for false designation of origin or sponsorship and false advertising. Finally, in Count Four, they have asserted a claim of common law trademark infringement. All four of these claims arise out of plaintiffs' assertion that the they have valid and enforceable trademark rights in their vehicle model numbers, and that Lloyd violated those rights by selling floor mats displaying those model numbers.

4 This claim has now been abandoned by plaintiffs. See infra at 100-102.

A. Trademark Infringement

Plaintiffs have asserted a claim for trademark infringement and "counterfeiting" under Section 32 of the Lanham Act, 15 U.S.C. § 1114 (Count Two), and have also asserted a claim for trademark infringement arising under the common law (Count Four).

The Lanham Act, 15 U.S.C. § 1051 et seq., provides for the federal registration of trademarks, which it defines to include "any word, name, symbol, or device, or any combination thereof [used or intended to be used by a person in commerce] to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127; see Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000). Registration of a trademark entitles the owner to a presumption that its mark is valid, enables the owner to sue an infringer, and ordinarily renders the registered mark incontestable after five years of continuous use. 15 U.S.C. § 1114, 1057(b), 1065; see Wal-Mart Stores, 529 U.S. at 209. A person is liable as an infringer if he uses a registered trademark without the consent of the registrant, or uses a "counterfeit, copy, or colorable imitation" of a registered mark, "in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1114;⁵ see also John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11^th Cir. 1983).

5 15 U.S.C. § 1114 provides, in relevant part:

(1) Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive;

(b) reproduce, counterfeit, copy or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,

shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. § 1114(1).

In Count Two of the Complaint, plaintiffs have asserted a claim under 15 U.S.C. § 1114 for infringement of a trademark and "counterfeiting."⁶ As noted, Section 1114 pertains to registered marks. Although the Complaint does not specify which marks plaintiffs allege were infringed by defendant in violation of this particular section of the Lanham Act, plaintiffs have presented evidence of having obtained federal registration of only two marks at the time that plaintiffs filed this action: RS® and 4S®⁷ Plaintiffs registered the RS® mark without any particular stylized format, but registered the 4S® mark in the stylized form of a white "4" in front of a larger black script "S." (Pls. SMF at ¶ 2, Ex. C.) It is undisputed that Porsche registered those two marks with the United States Patent and Trademark Office ("USPTO") in 1997 for use in connection with "automobiles and structural parts for automobiles." Thus, plaintiffs' claim of trademark infringement under 15 U.S.C. § 1114 must be analyzed only with respect to those two marks.

6 A "counterfeit" is "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." 15 U.S.C. § 1127.

7 Plaintiffs have further shown that they obtained registration of the trademark 911® with the USPTO on December 19, 2000, over a year after filing this action. (Pls. SMF at ¶ 20, Ex. O.) Because that mark was not registered at the time the plaintiffs filed the complaint, however, the Court will analyze plaintiffs' claims with respect to the 911® mark in connection with plaintiffs' claim of unfair competition under 15 U.S.C. § 1125(a), discussed infra.

Although plaintiffs have produced evidence that they had obtained registration of the 4S® and RS® marks before filing this action, as defendant points out in its response to plaintiffs' motion for summary judgment, plaintiffs have failed to allege anywhere in their Complaint that Lloyd infringed either of these two specific marks. In the Complaint, plaintiffs alleged as follows:

Porsche has acquired trademark rights in the model numbers (hereinafter "Model Numbers") that Porsche uses to identify and designate its automobiles. These Model Numbers, including the numbers 996, 986, 993, 930, 911, 911C2, 911C4, 911E, 911S, 911SC, 911T, and 912, function as trademarks and are recognized throughout the world. Porsche's trademarks in its Model Numbers, including the foregoing model numbers, are hereinafter collectively referred to as the "Porsche Marks."

(Compl. [1] at ¶ 9 (emphasis added).) Because plaintiffs failed to even mention the RS® or 4S® marks in the list of trademarks it alleges that defendant infringed, defendant argues in its response brief that plaintiffs have failed to include any claim in their Complaint that Lloyd infringed upon the RS® or 4Sregs marks. (Def.'s Resp. Br. [79] at 2.n4.) Plaintiffs, on the other hand, argue in their reply brief that the list of model numbers in the Complaint was not exhaustive because plaintiffs asserted claims based on defendant's infringing use of all model numbers of Porsche automobiles, "including" the specific numbers listed. (Pls. Reply Br. [81] at 6.) Moreover, plaintiffs argue, because they have asserted a claim under 15 U.S.C. § 1114 for infringement of their registered trademarks, that claim encompasses all of plaintiffs' registered marks, regardless of whether they were specifically mentioned in the Complaint. (Id.)

The Court agrees with defendant that plaintiffs failed to sufficiently allege in their Complaint that defendant infringed upon the RS® or 4S® marks. Although plaintiffs did allege in their Complaint that they had acquired trademark rights in "the model numbers that Porsche uses to identify and designate its automobiles, including" a specified list of model numbers, the Court concludes that it would be inherently unfair to defendant to find that plaintiff had asserted claims based on an infinite number of unknown, unspecified numbers or alphanumeric designations that plaintiffs were claiming as enforceable trademarks. Plaintiffs have presented no evidence that such a list would include so many different numbers and/or alphanumeric designations as to make it impossible or unpractical to list them all.⁸

8 Although it is not clear from either the Complaint, plaintiffs' statement of facts, or plaintiffs' brief exactly how many model numbers they are claiming as protected trademarks, defendant states in its brief that plaintiffs are claiming that "each of the 60-plus alphanumeric model numbers used by Lloyd" is a separate trademark. (Def.'s Resp. Br. [79] at 11.)

Moreover, the evidence in the record reflects that, at the time they filed the Complaint in this action, plaintiffs had registered only two marks that they are now claiming that defendant infringed. Yet plaintiffs did not even mention those two particular marks anywhere in their Complaint. Plaintiffs have failed to present any reason that would explain why they chose not to list the two registered trademarks when they listed twelve unregistered marks. Accordingly, the Court finds that plaintiffs have failed to assert a claim against defendant for infringement of the 4S® or RS® marks, and defendant is entitled to summary judgment on Count Two of plaintiffs' Complaint on that ground.

Even assuming that plaintiffs had properly asserted a claim against defendant for infringement of the RS® and 4S® marks, however, plaintiffs would not be entitled to summary judgment on plaintiff's claim of trademark infringement asserted in Count Two of the Complaint, because plaintiffs have failed to prove, as a matter of law, trademark infringement with respect to the two registered marks.⁹ Because an explanation of the reasoning behind this conclusion illuminates the analysis used throughout this Order, the Court will explain how it arrived at this conclusion.

9 The Court does not have to determine whether defendant would be entitled to summary judgment on the claim of infringement of these two marks as a result of its conclusion that plaintiffs did not properly assert this claim in their Complaint.

1. Prima Facie Case

Trademark infringement claims are analyzed under a two-prong test. To prevail on a trademark infringement claim under 15 U.S.C. § 1114, a plaintiff must first show (1) that its mark is valid and enforceable and has priority over defendant's use of the mark and (2) that defendant's use of the mark is likely to cause consumer confusion. SunAmerica Corp. v. Sun Life Assurance Co., 77 F.3d 1325, 1334 (11^th Cir. 1996); Dieter v. B H Indus., 880 F.2d 322, 326 (11^th Cir. 1989); Conagra, Inc. v. Singleton, 743 F.2d 1508, 1512 (11^th Cir. 1984); Burger King Corp. v. Mason, 710 F.2d 1480, 1491 (11^th Cir. 1983).

a. Validity of Trademark

As noted above, the Lanham Act provides that federal registration of a trademark entitles the registrant to a presumption that its mark is valid. 15 U.S.C. § 1057(b); see Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000). "A certificate of registration of a mark . . . shall be prima facie evidence of the validity of the registered mark . . . and of the registrant's exclusive right to use the registered mark . . . in connection with the goods or services specified on the certificate. . . ." 15 U.S.C. § 1057(b).

If the mark has not achieved "incontestable" status,¹⁰ however, this presumption of validity for registered marks may be challenged or rebutted. See Dieter, 880 F.2d at 328. Because plaintiffs have not established that the RS® or 4S® marks are "incontestable" marks,¹¹ defendant may rebut the presumption that the marks are valid by presenting evidence that the marks are merely descriptive and are not inherently distinctive. See id. In order to make such a showing, defendant must present evidence that the mark is merely descriptive of the registrant's product and has not acquired a "secondary meaning," and thus, that the mark was improperly allowed initial registration as a valid trademark by the USPTO. See id.

10 After a mark has been registered for five years, the registrant may file an affidavit seeking a declaration that the mark has achieved "incontestable" status, which thereafter provides conclusive evidence of its validity, subject only to certain enumerated defenses. 15 U.S.C. § 1065.

11 Nor could plaintiffs do so, as the undisputed evidence reflects that plaintiffs obtained registration of the RS® and 4S® marks in 1997; therefore, the marks had not yet been registered for five years, as required before they may be declared "incontestable."

Under the provisions of the Lanham Act, "No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration [unless it] is merely descriptive [of the applicant's goods or services]." 15 U.S.C. § 1052. Thus, "distinctiveness" is an explicit prerequisite for registration under the Act. Wal-Mart, 529 U.S. at 210. In order to successfully rebut the presumption of the validity of a registered mark, the person challenging the mark must establish that the mark is not sufficiently distinctive to identify the source of the product in the minds of the public. See id.

The distinctiveness of a particular mark is generally classified into one of four categories: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Coach House Restaurant, Inc. v. Coach Six Restaurants, Inc., 934 F.2d 1551, 1559-1560 (11^th Cir. 1991); Dieter, 880 F.2d at 327. A generic term suggests the basic nature of the product or service and may never be registered as a trademark under the Lanham Act because it is by definition not distinctive. Coach House, 934 F.2d at 1560; Dieter, 880 F.2d at 328. On the other end of the spectrum, marks that are "arbitrary" or "fanciful" bear no relationship at all to the product or service, and thus, are inherently distinctive. Coach House, 934 F.2d at 1560; Dieter, 880 F.2d at 327. A "suggestive" term suggests characteristics of the product or service and "requires an effort of the imagination by the consumer in order to be understood as descriptive," and is also considered inherently distinctive, although less so than an arbitrary or fanciful mark. See Coach House, 934 F.2d at 1560; Dieter, 880 F.2d at 327. Finally, a "descriptive" mark identifies a characteristic or quality of the product or service, and is not inherently distinctive, but may become distinctive if the mark has acquired a "secondary meaning" that serves to associate the mark with the source of the product or service in the mind of consumers. Coach House, 934 F.2d at 1560; Dieter, 880 F.2d at 328.

As the Supreme Court has stated:

In evaluating the distinctiveness of a mark under [the Lanham Act], courts have held that a mark may be sufficiently distinctive to qualify for status as a protected mark in one of two ways. First, a mark is inherently distinctive if its intrinsic nature serves to identify a particular source. In the context of word marks, courts have applied the now-classic test originally formulated by Judge Friendly, in which word marks that are "arbitrary" ("Camel" cigarettes), "fanciful" ("Kodak" film), or "suggestive" ("Tide" laundry detergent) are held to be inherently distinctive. Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed a secondary meaning, which occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.

Wal-Mart, 529 U.S. at 210 (citations and internal quotes omitted). The Supreme Court also noted that the phrase "secondary meaning" is generally a misnomer when applied to marks that are not words, since non-word marks have no "primary meaning," and suggested that the term "acquired meaning" would be a better term to describe the "acquired, source-identifying meaning" of a word-mark or a non-word-mark. Id. at 210 n. 10.

In their respective briefs, the parties have not addressed the distinctiveness of the RS® and 4S® marks specifically, and have fashioned their arguments with respect to all the model numbers collectively. Porsche argues that the model numbers are "arbitrary" because they do not describe any characteristic of the automobiles, and are inherently distinctive. (Pls. Br. [74] at 5-6.) Defendant contends that all the model numbers at issue in this action are merely "grade designations" that serve only to differentiate one model of Porsche from another. (Defs. Br. [76] at 8-10.)

Although the Court has not uncovered any Eleventh Circuit authority on this point, most courts have held that model numbers, whether numbers or alphanumeric designations, are generally considered descriptive for the purposes of trademark protection. See Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 391 (2d Cir. 1995). Although they may be "arbitrary" in the sense that they do not refer directly to a characteristic of the products, model numbers are generally intended merely to distinguish one specific product from another by a particular source, and are not intended to distinguish products from totally different sources. See J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1469-1470 (10th Cir. 1985); Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1023 (7th Cir. 1979). Thus, in order for model numbers to be granted protection as trademarks, it must be established that they have an "acquired meaning" or a "secondary meaning" that strongly associates them with the source in the minds of the public. See generally 2 J.T. McCarthy, Trademarks Unfair Competition, §§ 7:14-7:16, 11:36-11:39 (4^th ed. 2001).

Nevertheless, because plaintiffs have obtained registration for the RS® and 4S® marks, there is some presumption that the marks are distinctive, and in order to overcome that presumption, the defendant bears the burden of establishing that they are merely "descriptive" marks, and they have not acquired a secondary meaning. See Dieter, 880 F.2d at 328-329 (although "incontestable" marks are presumed to be at least descriptive with a secondary meaning and can not be challenged, registered marks that are not incontestable may be challenged as being merely descriptive with no secondary meaning). Yet, some courts have diminished the effect of federal registration by noting that the presumption of validity may be easily overcome. See 2 McCarthy at § 11:43 n. 9, citing Shaw-Barton, Inc. v. John Baumgarth Co., 313 F.2d 167 (7^th Cir. 1963); see also Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, (1^st Cir. 1980) Vuitton et Fils S.A. v. J. Young Enter., Inc., 644 F.2d 769 (9^th Cir. 1981). Indeed, since Dieter, the Eleventh Circuit has refused to give deference as a result of the registration of a mark and concluded that notwithstanding the registration, a mark was merely descriptive. Investacorp., Inc. v. Arabian Invest. Banking Corp., 931 F.2d 1519, 1524-1525 (11^th Cir. 1991). Thus, federal registration of a mark creates only a weak presumption that the mark is distinctive rather than merely descriptive.

As evidence that the model numbers are nothing more than grade designations, and are thus merely descriptive and not inherently distinctive, defendant cites the deposition testimony of Terry Wells, "Porsche's long-time District Sales Manager," to the effect that the model numbers beginning with "9" refer to various models of Porsche vehicles in the sequential order in which they were developed: "Back in the early '60's, the 901 was the very first Porsche. And we have utilized — every time we've had model changes, we've used 9s. All the way up. And we're up to 996." (Wells Dep. at 137.) That evidence, however, obviously does not apply to the RS® or 4S® marks, and thus, does not support defendant's argument that the RS® or 4S® marks are merely descriptive.

In addition, defendant cites other testimony from Porsche employees in support of its argument that the RS® and 4S® model numbers are not inherently distinctive, but none of the evidence relates to the RS® and 4S® marks specifically.¹² Even assuming that defendant has failed to carry its burden of establishing that the registered marks of RS® and 4S® are not inherently distinctive, however, the Court nevertheless concludes that the RS® and 4S® marks are merely descriptive, and because plaintiffs have failed to present evidence of any secondary meaning, the Court finds that, at best, the marks are entitled to very weak protection as trademarks. See discussion, infra.

12 Of course, the omission is understandable in light of the fact that the RS® and 4S® marks were never referenced in the Complaint.

Thus, the Court will assume for the purpose of this discussion that plaintiffs have valid and enforceable rights with respect to the RS® and 4S® marks. In order to establish that defendant infringed upon those rights, however, the plaintiffs still bear the burden of presenting sufficient evidence to establish that defendant's use of the RS® and 4S® marks as designs on its floor mats is likely to cause confusion as to whether Porsche is the source or sponsor of defendant's floor mats.

b. Likelihood of Confusion

In most actions for trademark infringement, the validity of the plaintiff's mark is not in dispute, and the critical question is typically whether the defendant's use of the mark is likely to cause confusion as to the source or sponsorship of the product to which the allegedly infringing mark is attached. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11^th Cir. 1983); Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 840 (11^th Cir. 1983) (citing Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 258 (5^th Cir. 1980)).

The Eleventh Circuit has identified a number of factors that courts should consider when analyzing whether there is a likelihood of confusion between the registered mark and the allegedly infringing mark. Those factors include: (1) the type and distinctiveness of the registered trademark, (2) similarity between the design of plaintiff's registered trademark and the mark used by defendant, (3) similarity between the services or products provided by the holder of the mark and the alleged infringer, (4) similarity between the trademark holder's and the alleged infringer's retail outlets and customers, (5) similarity between the advertising media used by the trademark holder and that used by the alleged infringer, (6) intent by the alleged infringer to cause confusion as to the source or sponsorship of the product or service, and (7) evidence of actual confusion as to the source or sponsorship of a product. Jellibeans, 716 F.2d at 840; see also John Harland Co., 711 F.2d at 972 (quoting Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 504 (5^th Cir. 1980)); Dieter, 880 F.2d at 326; Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 832-833 (11^th Cir. 1982) (applying same factors in a trade dress infringement case); Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160 (11^th Cir. 1982) (applying same factors in a case involving a registered service mark). Of those seven factors, the Eleventh Circuit has held that the type of mark and the evidence of actual confusion are the most important factors. Dieter, 880 F.2d at 326; Freedom Sav. Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11^th Cir. 1985).

In their brief in support of their motion for summary judgment, plaintiffs state that "[t]he crucial element of Porsche's infringement and unfair competition claims is proof of a likelihood of consumer confusion. In fact, likelihood of confusion is the touchstone of Porsche's federal infringement and unfair competition claims under the Lanham Act . . . and of its claim under the common law." (Pls. Br. [74] at 6 (citations omitted).) Porsche does not discuss the application of the seven factors listed above, however, and argues instead that "such multi-factored balancing is unnecessary in other cases (such as this lawsuit) where the defendant has misappropriated precise counterfeits of the plaintiff's trademarks on goods that compete with the trademark holder's own goods." (Id. at 7.) Under those circumstances, Porsche argues, likelihood of confusion will be presumed to cause public confusion in the marketplace, without any additional evidence on any of the remaining factors enumerated above. (Id. at 7-8.)

Plaintiffs' argument on this point is a little murky, and plaintiffs have not cited persuasive authority from the Supreme Court or the Eleventh Circuit supporting their theory that confusion should be presumed in this action without any analysis of the seven factors listed above. Although plaintiffs do not couch their argument in these terms, in essence, plaintiffs appear to be contending that the second factor listed above may trump all the other factors: according to plaintiffs, if a court finds a very strong similarity between the marks of the senior user and junior user, then it need not evaluate the remaining factors, and may presume a likelihood of confusion. Alternatively, plaintiffs may be arguing that the sixth factor trumps all other factors: if a court finds strong evidence that the defendant intended to cause confusion by adopting a similar mark to the plaintiff's mark, then confusion will be presumed without any consideration of the remaining factors.

In support of this argument that confusion should be presumed, plaintiffs cite to several decisions from other districts and circuits, but the cases cited are distinguishable from the instant action in several respects. Inevitably, the cases finding a presumption of confusion are faced with a defendant using a mark identical or virtually identical to that of the trademark holder, on a product that competes directly with the product of the trademark holder, and using that mark in the same or similar manner as the trademark holder. See, e.g., Polo Fashions v. Craftex, Inc., 816 F.2d 145, 148 (4^th Cir. 1987) (likelihood of confusion presumed where defendant sold a knitted sport shirt bearing an embroidered emblem of a polo player that was substantially identical to the famous trademark used by the plaintiff, and both plaintiff and defendant sold similar knitted sport shirts with the nearly identical emblems on the breast of the shirt); Playboy Enterprises, Inc. v. Chuckleberry Pub., Inc., 687 F.2d 563, 569 (2d Cir. 1982) ("registrant of a mark is presumptively entitled to protection from a newcomer's use of a similar mark in direct competition, `particularly when no reasonable explanation is offered to show the second comer's need to come so close to the mark.'"). Furthermore, despite plaintiffs' contention that the "presumption of confusion in cases involving identical trademarks on competing goods has been widely adopted in the courts," at least one court has specifically expressed some reservations about applying such a rule. See Versa Prod. Co. v. Bifold Co., 50 F.3d 189, 206 (3d Cir. 1995) (disapproving the "intent to copy" rule because a presumption of confusion based only on an "intent to copy" requires a double inference — it is presumed both that the defendant intended to create a confusing similarity of appearance and also that he succeeded in doing so).

Plaintiffs have cited only one case from the Eleventh Circuit holding that a likelihood of confusion is presumed upon a showing that the marks are virtually identical, Bauer Lamp Co. v. Shaffer, 941 F.2d 1165 (11^th Cir. 1991). The panel in Bauer Lamp held that "intent to copy in itself creates a rebuttable presumption of likelihood of confusion." Id. at 1172 (emphasis added). Bauer Lamp was an action for trade dress infringement in which the plaintiff alleged that the defendants had deliberately copied the exact product design of plaintiff's lamp in an effort to put plaintiff out of business. Id. at 1169. The jury returned a verdict for the plaintiff, and the trial court denied the defendants' motion for judgment notwithstanding the verdict. Id. at 1168. On appeal, the Eleventh Circuit held that the evidence presented at trial amply affirmed the jury's finding of a likelihood of confusion between the competing products, and affirmed the trial court's denial of the defendants' motion for judgment notwithstanding the verdict. Id. at 1172.

For the reasons discussed in detail below, the Court concludes that the holding in Bauer Lamp does not mean that, in the context of a claim for trademark infringement, a likelihood of confusion is automatically presumed upon a showing that the allegedly infringing mark is identical to the senior mark. (See discussion of plaintiffs' claim of unfair competition, infra.) Thus, the Court is not convinced that this presumption of confusion is the law of this circuit. Moreover, even if a likelihood of confusion is automatically presumed when the allegedly infringing mark is identical to the senior mark or nearly so, such a presumption may be rebutted by evidence from the alleged infringer that there is no likelihood of confusion. Bauer Lamp, 941 F.2d at 1172 (intent to copy creates a "rebuttable presumption of likelihood of confusion").

Even if plaintiffs are correct and a likelihood of confusion is indeed presumed when the competing marks are nearly identical, plaintiffs have nevertheless failed to present sufficient evidence that Lloyd intentionally copied the exact design of plaintiffs' registered RS® or 4S® marks on its floor mats, or that Lloyd's use of the marks was identical to Porsche's use of those marks on its own competing floor mats. Plaintiffs contend that "the Court need look no further than the marks themselves to verify that Lloyd has gone out of its way to misappropriate precise counterfeits of the trademarked Porsche Model Numbers." (Pls. Br. [74] at 10.) Further, they state that "Lloyd's floor mats misappropriate the trademarked Porsche Model Numbers, and, in many cases, carefully adopt the precise script that Porsche uses in its genuine marks." (Id. at 10-11.)

The Court first notes that plaintiffs have failed to identify the evidence they are relying upon for these statements.¹³ Although plaintiffs direct the Court to "look no further than the marks themselves," plaintiffs have failed to explain where exactly in the thousands of pages contained in the record the Court should be looking for evidence of these "precise counterfeits." (See id. at 10.) The Court notes that, because both sides have moved for summary judgment, there are six separate briefs filed in connection with the motions, and each brief was filed with numerous attached exhibits. Both parties have presented many different exhibits containing evidence related to the precise design of the marks used by Lloyd, including copies of many different excerpts from various advertisements for Lloyd's floor mats, each one displaying different selections of floor mats and the various available designs.

13 Although plaintiffs have submitted a significant number of exhibits in support of their motion and in response to defendant's motion, some of which apparently contain evidence relating to Porsche's use of the model numbers, the Court will not cull through the voluminous materials submitted by the plaintiffs searching for evidence to support their arguments. That is the obligation of the plaintiffs' counsel. See United States v. Adkinson, 135 F.3d 1363, 1378-1380 (11^th Cir. 1998); Johnson v. City of Ft. Lauderdale, 126 F.3d 1372, 1373 (11^th Cir. 1997); Dickson v. Amoco Performance Prods., Inc., 845 F. Supp. 1565, 1570 (N.D. Ga. 1994) ("It should be the party's responsibility to direct the court's attention separately to each portion of the record which supports each of the party's distinct arguments."). Moreover, because the exhibits attached to plaintiffs' response are neither marked nor tabbed, nor even identified or cited in the plaintiffs' brief for the most part, plaintiffs have made it especially difficult for the Court to search through them to find evidence supporting plaintiffs' arguments.

In contending that the Court "need look no further" than the two competing marks to find that the marks are identical, the only citation to the record given by plaintiffs as evidence of Lloyd's "precise counterfeits" is their Statement of Facts at paragraphs five and sixteen. (Id. at 10.) In paragraph five of their Statement of Facts, plaintiffs state: "Among other products, Porsche offers for sale floor mats." (Pls. SMF [74] at ¶ 5.) As supporting evidence of that fact, plaintiffs cite to the Declaration of Patricia Britton, which states: "Among other products, Porsche offers for sale floor mats." (Britton Decl., Pls. Ex. A, at ¶ 9.) In paragraph sixteen of their Statement of Facts, plaintiffs state that Levine sent a letter to Lloyd customers dated June 25, 1998, in which he explained his plans to aggressively pursue the Porsche floor mat market by adding more mats with model number designs: "These new model number mats will become our primary Porsche mat design after December 28, 1998, when the trademark mats will be discontinued." (Pls. SMF [74] at ¶ 16.) As supporting evidence of that fact, plaintiffs cite to Levine's letter to a Lloyd customer dated June 25, 1998. (Pls. Ex. L, at 2.)

Lloyd does not dispute that it sells floor mats with the model numbers of Porsche automobiles on them, nor does it dispute that it increased the selections of mats with model numbers after December 28, 1998, when its license to use Porsche's registered trademarks of PORSCHE®, the Porsche Crest, Carrera® (including Carrera 2 and Carrera 4) and Targa® was terminated. Thus, none of this record evidence cited by plaintiffs supports their contention that "Lloyd's floor mats misappropriate the trademarked Porsche Model Numbers, and, in many cases, carefully adopt the precise script that Porsche uses in its genuine marks." (Pls. Br. [74] at 10-11.) In particular, plaintiffs have failed to cite to any evidence in the record that would establish that Lloyd deliberately copied the exact design used by Porsche of the registered trademarks for RS® or 4S®.

Despite plaintiffs' failure to cite to evidence supporting their argument, the Court has reviewed all the exhibits attached to plaintiffs' brief in an effort to find Lloyd's "precise counterfeits" of the registered marks of RS® and 4S®. Plaintiffs' Exhibit K contains a price list for Lloyd's "Authorized Porsche Floor Mats" dated June, 1998, that also has an attachment labeled "Embroidery Options." (Pls. SMF, Ex. K.) The list of embroidery options contains designs for "PORSCHE," "Speedster," "Boxster," "Cabriolet," "Carrera," "Carrera S," "Carrera 2," "Carrera 4," "Carrera 4S," "Carrera RS," "RS America," "Targa," "Turbo," "Turbo S," and "America Roadster," all written in a similar style of script lettering. (Id.) Also included on the "Embroidery Options" page is a list of various numbers and alphanumeric designations, including "911," "911SC," "911T," "911C2," "911C4," "912," "928," and several other designs. (Id.) These numbers and alphanumeric designations are shown in both a block-style print and a script design. (Id.) In addition, on another attached page labeled "Embroidery Options" and "Boxster and [blank] Mat Colors,"¹⁴ there is a list of different formats of type styles for each design, including "Block," "Script," "Standard Block," and "Special Block." (Id.)

14 The top of the page appears to be labeled "Boxster and 996 Mat Colors," but the actual number is illegible because of a hole punched in the paper by the Clerk's office in its ordinary procedure of maintaining the file.

In this particular list of Lloyd's floor mat options for Porsche vehicles, the only options listed that contain the registered marks of RS® or 4S® are the "Carrera 4S," "Carrera RS," and "RS America" styles. (Id.) It is not clear whether plaintiffs are arguing that these three designs represent "precise counterfeits" of Porsche's registered trademarks. Assuming that plaintiffs are contending that these three floor mat designs are "precise counterfeits" of Porsche's competing floor mats, the Court rejects that contention. First, the plaintiffs have shown that RS® and 4S® are registered trademarks standing alone, but the evidence reflects that Lloyd's floor mat designs did not use "RS" or "4S" by themselves, but only in conjunction with "Carrera RS," "Carrera 4S," or "RS America."

Second, plaintiffs have failed to present any evidence of Porsche's specific design of the RS® or 4S® marks as they were used by Porsche on its vehicles or in its advertisements, so the Court is unable to evaluate the alleged similarity between the precise script style used by Lloyd and that used by Porsche on its products or in its advertisements. The Certificate of Registration for the 4S® trademark does reflect a specific design for that mark, which is a stylized form of a white "4" over a larger black script "S." (Pls. SMF, Ex. C.) Lloyd's use of the "Carrera 4S" design does use a smaller "4," and a larger "S" that somewhat resembles the script style in plaintiffs' registered mark, but the "4" does not appear to be white. (Id.)

In an effort to find some evidence of Porsche's stylized designs of the RS® and 4S® marks, the Court has sifted through all the exhibits filed by plaintiffs, and has found some evidence attached to plaintiffs' response brief that appears to be advertising brochures for Porsche automobiles.¹⁵ (See Exhibits attached to Pls. Resp. Br. [78].) These brochures do show that Porsche uses model numbers in their brochures, but the model numbers are typically used in conjunction with the Porsche name or another registered trademark, and are almost never used by themselves to refer to a specific model: e.g., Porsche 911, Porsche 911 Speedster, Carrera 911, 968 Cabriolet, 928 GTS, etc. Furthermore, the Court has not uncovered any evidence of the RS® or 4S® marks used by themselves. The Court has uncovered, however, a reference to a "Porsche RS" and an "RS America." One advertisement describes the RS America model as follows:

15 The exhibits are not numbered or identified, so the Court is unable to identify specific exhibits.

The 911 Carrera 2 provides this kind of feedback. . . . Now we have a new derivative of the Carrera 2 for drivers who demand an even higher level of feedback. . . . Indeed the designator "RS" — German for "Renn Sport," or "Race Sport," is traditionally reserved for the highest performance Porsches. . . . Introducing the RS America: a pure 911 that redefines the fun of driving a 911 — for about $10,000 less than a Carrera 2 Coupe.

Thus, it appears that one vehicle, the RS America, could also be referred to as a Porsche 911, and perhaps also a Porsche 911 Carrera 2. In any event, after reviewing plaintiffs' evidence, it appears that at least some of Lloyd's embroidery designs on its floor mats do use the same script style that Porsche uses in its model number designs in its advertisements, including a similar design using the "RS America" label, but plaintiffs have failed to establish that Lloyd used a "precise counterfeit" of any designs of the RS® or 4S® marks standing alone.

Finally, and most importantly, Porsche has simply failed to present any evidence that it offered floor mats using the registered trademarks of RS® or 4S®, so that the Court is able to compare Lloyd's use of those marks on its floor mats with Porsche's use of the marks on its floor mats. In plaintiffs' entire Statement of Facts, the only mention of Porsche's floor mats is in paragraph 5, which states: "Among other products, Porsche offers for sale floor mats." (Pls. SMF at ¶ 5.) Porsche also states that it "has developed a number of distinctive, stylized scripts that it uses in its designations of its various Model Numbers," but Porsche has not included any evidence as to what these designs looked like, nor has it offered any evidence that it used these designs on floor mats. (See id. at ¶ 4.) In any event, defendant has presented evidence that Porsche has never offered floor mats with model numbers on them, and Porsche does not dispute that fact. (See Def. SMF at ¶¶ 24, 25; Pls. Resp. to SMF at ¶¶ 24, 25.)

Although plaintiffs have failed to present any evidence of their use of the marks on Porsche's competing floor mats, they argue in response to defendant's motion for summary judgment that Lloyd Levine has admitted that Lloyd intentionally copied the exact style and designs of the model numbers used by Porsche for use on its own floor mats. According to plaintiffs, "Lloyd not only uses Porsche's Model Numbers; it also uses Porsche's style and script in an obvious attempt to misappropriate the goodwill and drawing power that Porsche has developed in its marks." (Pls. Resp. Br. [78] at 18.) In support of this argument, plaintiffs cite to evidence purportedly "setting forth Lloyd's admissions that he used Porsche's script because Porsche had previously used script." (Id.) In plaintiffs' Statement of Facts, they claim that "Lloyd has admitted that Porsche's use of the Model Numbers was prior to Lloyd's use of such model numbers and that the model number combinations that Lloyd sells on floor mats for Porsche cars is a result of Porsche's use of the model numbers." (Pls. SMF at ¶ 19.) Defendant disputes this, and contends that Lloyd has used model numbers on its floor mats before such model numbers were ever used by Porsche, and has used model numbers on its floor mats that were never used by Porsche. (Def. Resp. to SMF at ¶ 19.)

Thus, the parties strongly dispute whether Lloyd Levine admitted that all the model number designs used on Lloyd floor mats had been deliberately copied from designs used by Porsche. The Court is faced with a difficult task of determining whether this is a genuine dispute of fact, however, because the parties have not identified much evidence in the record on this point. Neither party filed Lloyd Levine's deposition with the Court, and thus, it is not part of the record.¹⁶ Moreover, although plaintiffs quote a very long excerpt in their Statement of Facts that they claim was taken directly from Levine's deposition testimony, they have failed to file any portion of Levine's deposition testimony to support that claim. (See Pls. SMF at ¶ 19.) Plaintiffs cite to "Lloyd Levine Deposition, May 23, 2000, p. 200, line 6 through p. 205, line 12. Electronic Version." (Id.) Plaintiffs do not explain how the Court would have access to this "electronic version" of Levine's deposition, nor do they otherwise explain where the Court could locate this evidence anywhere in the record. (See id.)

16 Under the Local Rules, the parties are not required to file complete depositions with the Court in connection with a motion for summary judgment, but they are required to attach "those portions of depositions . . . which are necessary to the motion," and they are also required to clearly identify for the court all record materials upon which they are relying. LR 26.3B, 56.IB, NDGa. Both parties have relied on evidence that is either not in the record, or has not been identified clearly for the Court.

As the Court noted above, supra note 13, it is the obligation of the parties' counsel to cull through the record in search of evidence supporting their arguments, and to direct the Court's attention to that evidence. See United States v. Adkinson, 135 F.3d 1363, 1378-1380 (11^th Cir. 1998); Johnson v. City of Ft. Lauderdale, 126 F.3d 1372, 1373 (11^th Cir. 1997); Dickson v. Amoco Performance Products, Inc., 845 F. Supp. 1565, 1570 (N.D. Ga. 1994). Nevertheless, in an effort to determine whether there is any evidence in the record on this point, the Court reviewed all the exhibits submitted by the parties and discovered that plaintiffs did attach selected pages of Levine's deposition to their response to defendant's motion for summary judgment, including pages 200-205. The quoted excerpt that plaintiffs included in their statement of facts, however, is not on page 200, as indicated by plaintiffs.

As a result, plaintiffs have simply failed to present evidence establishing that Levine deliberately intended to copy the exact style and design of the various model numbers found on Lloyd floor mats. Even construing all disputes of fact in favor of plaintiffs on this point, however, and assuming that plaintiffs had presented such evidence, and that the quoted excerpt from Levine's deposition is entirely accurate, at most, that quoted testimony from Levine establishes that some, but not all of the model numbers offered on Lloyd floor mats were model numbers of different Porsche automobiles, and some, but not all, of the typeface designs were similar or identical to the typeface of the model numbers used by Porsche. (See Pls. SMF at ¶ 19, p. 10, quoting Levine as stating: "There are some embroidery options in styles of lettering [on Lloyd floor mats] that were never used by Porsche on any automobile.")

Plaintiffs also argue in their response brief that confusion will be presumed if the alleged infringer is a former licensee who continues to use the trademark after the license has expired. (Pls. Resp. Br. [78] at 18.) It is undisputed that Lloyd had a license agreement with Porsche in which Lloyd was licensed to use the marks PORSCHE®, the Porsche Crest, Carrera® (including Carrera 2 and Carrera 4) and Targa®, and that the license agreement authorizing Lloyd to use those specific marks was terminated effective January 1, 1999. Plaintiffs have not produced any evidence that Lloyd continued to use those specific marks following January 1, 1999, and all the evidence appears to be to the contrary. In fact, plaintiffs have presented evidence that Levine informed Lloyd's customers that, after December 28, 1998, the floor mats using those registered trademarks would no longer be available, and that Lloyd would be marketing only mats with model numbers after that time. (Pls. SMF at ¶ 16, Ex. L.)

Accordingly, even assuming that plaintiffs would be entitled to a presumption of confusion upon a showing that Lloyd intended to produce "precise counterfeits" of the RS® or 4S® marks, the Court concludes that plaintiffs have failed to present sufficient evidence to support such a finding. Although plaintiffs contend that Levine admitted that he intentionally copied some of the script designs for some of the Porsche model numbers, and there is some evidence to support that, the evidence is disputed. At most, plaintiffs have presented evidence only to create a genuine issue of fact over whether Lloyd intentionally copied the exact style and script designs of all the model numbers. Moreover, even if plaintiffs had established conclusively that Lloyd intentionally copied the designs of the approximately 60-plus model numbers, any presumption of confusion could be rebutted by evidence that there was no likelihood of confusion.

Thus, the Court is required to evaluate all seven of the factors listed above in an effort to determine whether the evidence in the record as a whole creates a genuine issue of fact as to whether there is a likelihood of confusion. This analysis is made more difficult by the fact that the parties have failed to address each specific factor in their respective briefs, but the Court nevertheless must address each factor individually to evaluate whether the evidence in the record as a whole supports a finding of a likelihood of confusion. See, e.g., SunAmerica Corp. v. Sun Life Assurance Co., 77 F.3d 1325, 1343 (11^th Cir. 1996) ("Resolution of complex intellectual property issues is seldom properly accomplished in a broad and conclusory opinion format).

(1) Type of Trademark

The first factor that must be considered is the type and distinctiveness of the registered trademark. Plaintiffs argue that all the model numbers at issue in this action are "arbitrary" marks because they do not "describe" or "subtly connote something about the service or product" to which they are appended, and thus, they are inherently distinctive. (Pls. Br. [74] at 6.) Porsche argues further that, under "well-settled case law, the Model Number Trademarks are protectable as `inherently distinctive' marks even without a showing of secondary meaning." (Pls. Resp. Br. [78] at 22.) Although plaintiffs argue that the case law on this point is "well settled," they have failed to cite a single case holding that model numbers are inherently distinctive even without a showing of secondary meaning.

As discussed above, courts that have addressed the issue of the strength of model numbers as trademarks have uniformly held that model numbers, whether numbers or alphanumeric designations, are generally considered "descriptive" for the purposes of trademark protection. See Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 391 (2d Cir. 1995). As plaintiffs argue, model numbers may be "arbitrary" in the sense that they do not refer directly to a characteristic of the products or even suggest a characteristic, but model numbers are generally intended merely to distinguish one specific product from another by a particular source. See J. M. Huber Corp. v. Lowery Wellheads, Inc., 778 F.2d 1467, 1469-1470 (10^th Cir. 1985); Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1023 (7^th Cir. 1979).

In this action, the evidence reflects that the model numbers were used by Porsche primarily to distinguish one model of Porsche automobile from another and are thus considered "descriptive" marks. In order for the model numbers to be granted strong protection as trademarks, therefore, plaintiffs must establish that the model numbers have acquired a secondary meaning that automatically associates them with Porsche in the minds of the public. See Arrow Fastener Co., 59 F.3d at 391-393; J.M. Huber Corp., 778 F.2d at 1469-1470; Ideal Indus., Inc., 612 F.2d at 1023. In the absence of consumer survey evidence, four factors can be considered in determining whether a particular mark has acquired a secondary meaning: (1) the length and manner of its use; (2) the nature and extent of advertising and promotion of the mark; (3) the efforts made by the plaintiff to promote a conscious connection between the mark and the plaintiff's business; and (4) the extent to which the public actually identifies the mark with the plaintiff's business. Coach House Restaurant, Inc. v. Coach Six Restaurants, Inc., 934 F.2d 1551, 1560 (11^th Cir. 1991) (citing Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 (11^th Cir. 1984)).

Plaintiffs argue that their model numbers are not merely "internal grade designations," but rather are trademarks "in the sense that Porsche uses them to identify and distinguish its goods `from those of others.'" (Pls. Resp. Br. [78] at 21.) In support of this argument, Porsche cites to evidence that it has used the various model numbers extensively on the vehicles themselves and in marketing brochures, and that, beginning in 1985, Porsche has refereed to model numbers as trademarks in the company's trademark policy it has distributed to its dealers. (Id.) Porsche has also presented some evidence that Porsche owners who were among the "Porsche afficionado" referred to a specific Porsche car by its model number, "even if Porsche would be selling it as a Boxster." (Green Dep. at 93, Pls. SMF, Ex. M.)

The Court first concludes that referring to model numbers as "trademarks" in the trademark policy distributed to Porsche dealers does not automatically make them entitled to trademark protection under the law. Calling a word or number a "trademark" does not make it so. Furthermore, model numbers need not be "internal" grade designations to be considered merely descriptive. See J.M. Huber Corp., 778 F.2d at 1469-1470 (model numbers were considered descriptive, even though they were highly visible on the plaintiff's products and many customers referred to the products by model number). Moreover, evidence that some Porsche owners who were among the Porsche "afficionado" might refer to their Porsche vehicles by the specific model number does not automatically mean that the model numbers have an acquired meaning that associates the numbers with Porsche in the minds of the general public.¹⁷ See id. (although the plaintiff presented evidence that approximately 35% of its customers ordered its products by reference to the specific model number, the court nevertheless held that the model numbers were descriptive marks and had not acquired a secondary meaning, because plaintiff did not present any market survey data or other empirical evidence to establish that the model numbers had acquired a secondary meaning).

17 Porsche's evidence that Porsche owners might refer to their cars by model number in conversations with other Porsche owners, or with Porsche dealers or employees, is not especially probative on the issue of whether the model numbers had acquired a secondary meaning that would automatically associate them with Porsche in the minds of the general public. Porsche has presented no evidence, for example, that would indicate that any Porsche owner, when asked by a stranger what kind of car he drives, would respond that he drives a "4S®" or a "986" or a "930," and that such a response would be understood by most of the general public as referring to a Porsche. On the other hand, courts have found that when automobile manufacturers use words to indicate a specific model, those words may acquire a secondary meaning; for example, the words "Beetle" and "Bug" have both acquired secondary meanings that automatically associate the marks with Volkswagen, and both marks deserve trademark protection even though they were not registered trademarks. See Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 814 (1^st Cir. 1987); Volkswagenwerk Aktiengesellschaft v. Rickard, 492 F.2d 474, 277-478 (5^th Cir. 1974).

It is undisputed that Porsche has not presented any market survey evidence or other evidence that would indicate that either RS® or 4S®, or any other model number for that matter, was identified or associated with Porsche in the minds of the general public. Moreover, defendant has presented some evidence that the model numbers at issue were not used exclusively by Porsche and were also used by other manufacturers to refer to other automobiles and other products. (See Def. Br. [76] at 16-18, and evidence cited therein.) Thus, the Court concludes that Porsche has failed to prove, as a matter of law, that the model numbers had an "acquired meaning" or a secondary meaning that would entitle them to trademark protection.

As discussed above, because plaintiffs have obtained registration for the RS® and 4S® marks, both marks are entitled to a weak presumption that they are valid trademarks entitled to at least some protection, because "distinctiveness" is a prerequisite to obtaining registration. See Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 529 U.S. 205, 210 (2000). The Court also noted that defendant had failed to advocate that these marks had not acquired a secondary meaning as a matter of law. Nevertheless, for the purpose of determining the likelihood of confusion, the Court must evaluate the relative strength of the mark without regard to the presumption of distinctiveness granted to registered marks. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 973-975 (11^th Cir. 1983) (the court held that a registered mark may nevertheless be considered a descriptive mark entitled to very weak trademark protection if there is little evidence of a secondary meaning, without any presumption of distinctiveness). Upon a review of the evidence as a whole, the Court finds that the evidence in the record favors a conclusion that the RS® and 4S® marks are descriptive marks with very little, if any, evidence of any secondary or acquired meaning, and are thus granted only very weak protection as trademarks.

(2) Similarity of Design

The second factor the Court must consider is the similarity between the design of plaintiffs' registered trademark and the mark used by defendant. The Court has analyzed the evidence regarding the similarities of the marks at great length above. Plaintiffs have shown at least a genuine issue of fact over whether some of the scripts of the model numbers used by Lloyd were identical to the scripts used by Porsche, and there is evidence that Lloyd's design of "RS America" did look very similar to Porsche's use of "RS America" in an advertising brochure for a specific model. Plaintiffs' registered trademarks are RS® and 4S® standing alone, however, whereas defendant used the terms "Carrera RS," "Carrera 4S," and "RS America" as embroidered designs on its floor mats. Although there is some similarity to plaintiffs' mark in the design of the "4S" portion of "Carrera 4S," the Court concludes that the marks are not that similar, especially considering that, at the time defendant offered floor mats with those specific designs, it was under a license agreement with Porsche that authorized it to feature the "Carrera" name on its floor mats. Overall, the Court finds that there are genuine issues of material fact over the similarity of designs of many of the disputed model numbers, but plaintiffs' evidence that Lloyd used identical designs for Porsche's use of the RS® and 4S® registered marks is not especially compelling.

(3) Similarity of Products

Third, the Court considers the similarity between the products offered by plaintiffs and the products offered by defendant. Porsche has been manufacturing and selling motor vehicles and motor vehicle parts and accessories since 1952. There is no dispute that the Porsche name is world-famous for its high-end performance vehicles. In conjunction with selling automobiles, Porsche also sells automobile accessories and other related products, including floor mats. Lloyd does not compete at all with Porsche in the automobile market and sells exclusively custom floor mats designed for use with specific automobiles manufactured and sold by other companies, including Porsche. Thus, although the model numbers at issue in this action were primarily used by Porsche in connection with its automobiles, they were used by Lloyd on its floor mats, and the two companies do compete in the automotive floor mat market.

There is very little evidence in the record concerning the overall designs of the floor mats, and the similarity between the overall designs of the Porsche mats and the Lloyd mats. Because the mats are designed to fit the floorboards of specific Porsche vehicles, the Court will assume that the mats are fairly similar in overall design and appearance. Lloyd has also presented evidence that its floor mats are very high quality, that the mats far surpassed Porsche floor mats in "wearability" tests conducted by an independent laboratory, and that the quality of the Lloyd mats is distinctive and noticeable as compared to other floor mats. (See Levine Decl. at ¶ 14; Green Dep. at 32-36.) As one of Porsche's sales managers stated, when asked how she was able to identify a floor mat as being a Lloyd mat: "there was also a distinctive way that the floor mat was made, which was very good quality." (Wells Dep. at 92.)

Moreover, Lloyd has presented evidence that, after Porsche terminated its license agreement with Lloyd and began offering floor mats made by another manufacturer, many Porsche dealers and customers complained to Porsche about the very poor quality of the new floor mats, as compared to the Lloyd mats, and there is evidence that the new mats sold by Porsche were made of a substantially inferior material that was visibly apparent, even on a brand-new floor mat. (See Green Dep. at 32-36.)¹⁸ Lloyd has also presented evidence that some Porsche dealers sent letters to Porsche that they intended to purchase floor mats directly from Lloyd because of customer complaints about the new mats, including complaints that the new mats were of such poor quality that the customers were "embarrassed" to have them in their cars.¹⁹ (See Def. SMF, Ex. 9.)

18 Lloyd has presented deposition testimony from Marjorie Green regarding the relative quality of Lloyd mats as compared to Porsche mats. Because the parties did not file complete depositions, and only portions of Green's deposition are in the record, it is not entirely clear who Marjorie Green works for, or what her position is. It appears that Green worked for Automotion, one of the major automobile accessories catalogs, or another company that was a similar distributor of "after-market" automobile accessories. (See Green Dep. at 82, discussing Porsche's letters to Automotion about the termination of the license agreement with Lloyd).
With respect to the relative quality of the floor mats, Green stated that, after learning that Porsche had terminated its license agreement with Lloyd, "we were quite concerned about the quality of the mats that Porsche Cars North America was selling and decided that it was not in our customers' best interests to sell those." (Id. at 34-35.) She stated further that, in late 1998 or early 1999, she went to a Porsche dealer to buy floor mats and compared them to the Lloyd floor mats previously sold by Porsche. (Id. at 35.) According to Green, "the material [of the new mats] did not feel classy. It felt to us like very inexpensive cheap set of mats, and we were frankly surprised that Porsche would be selling them." (Id.)

19 The evidence presented by Lloyd with respect to the complaints from Porsche dealers indicates that the new mats were "Racemark" mats, or "Porsche/Racemark" mats. (Def. SMF, Ex. 9.) Thus, although Porsche contends that it sells floor mats, it is not clear if it manufactures them, or merely sells mats to its dealers that have been manufactured by other companies under a license agreement. In any event, although it is unclear whether the new mats offered to Porsche dealers after June, 1998, were "Porsche" mats for the purpose of this analysis, the evidence still reflects that Lloyd mats were distinctive because of their high quality, as compared to other automotive floor mats. (Green Dep. at 32-36.)

Porsche has not presented any evidence that would rebut Lloyd's evidence regarding the relative quality of the floor mats, but argues that all of Lloyd's evidence concerning the relative quality of the mats is "subjective" and "there is absolutely no evidence whatsoever to support Lloyd's objective assertion that porsche's current mats are somehow inferior to the quality of the mats offered by Lloyd." (Pls. Resp. to SMF [78] at ¶ 24.) As pointed out above, however, Lloyd has presented evidence that its mats far surpassed Porsche floor mats in "wearability" tests conducted by an independent laboratory. Furthermore, Lloyd has presented more than Lloyd Levine's subjective opinion that the Lloyd mats were of a higher quality than the Porsche mats. Lloyd has also presented evidence that Marjorie Green (who apparently was not an employee of either Lloyd or Porsche, but an independent distributor) considered Lloyd mats to be of a much higher quality than the authorized Porsche mats sold by Porsche dealers in late 1998 or early 1999. Although Porsche is correct that opinions about the quality of the mats are inherently "subjective," judgments about the "quality" of any product are inevitably subjective. In any event, Porsche has not produced any evidence, even an affidavit from one of its own employees or dealers, stating that the Porsche mats were of an equal or greater quality to the Lloyd mats, or that would otherwise rebut any of the evidence presented by Lloyd that many people noticed obvious differences in the material and quality of the mats.

Porsche also argues that any evidence related to the relative quality of the mats is irrelevant to the issue of whether Lloyd infringed Porsche's trademarks. (Pls. Resp. to SMF [78] at ¶ 24.) The Court agrees with Porsche's argument to a certain extent; the relative quality of the competing products is not relevant as an independent factor in determining a likelihood of confusion, and Lloyd can not defend itself against potential liability merely by arguing that its product is of a higher quality than Porsche's competing product. The relevant consideration is the overall similarity of the products, and the Court is required to analyze all the evidence submitted by the parties to determine the degree of similarity.

Unfortunately, the Court does not have the two floor mats before it to make a comparison, and at the summary judgment stage, it must depend on the parties to submit evidence about the similarities and differences between the competing floor mats. For the benefit of plaintiffs, the Court has assumed that the basic overall design of the floor mats is very similar. Lloyd has presented evidence, however, that there were striking differences in the material used in the two mats that were immediately apparent to at least one independent observer, and perhaps were also apparent to many Porsche dealers and customers, and Porsche has not presented any evidence to rebut that fact. The Court will not ignore Lloyd's evidence because it concerns differences in the "quality" of the mats. Lloyd could have presented evidence that Lloyd mats were all red and Porsche mats were all green, so that customers could immediately notice that the mats were different. The relevant issue is the similarity between the competing products and how easily consumers are able to tell them apart.

In addition to the noticeable differences in the quality of the mats, although Porsche and Lloyd both sell floor mats designed for use in Porsche automobiles, and their floor mats compete with each other in the marketplace, the undisputed evidence reflects that, although Porsche offers floor mats with the word "Porsche" on them, it has never offered any floor mats using the model numbers in its designs. Furthermore, the evidence also reflects that, since the termination of the license agreement with Porsche, Lloyd has not sold mats with the "Porsche" name on them, but does sell mats with model numbers on them. Thus, even assuming that the overall design of the Porsche floor mats is similar to the Lloyd mats, the products are not identical, and there is no evidence that anyone has ever confused a Lloyd mat for a Porsche mat or vice versa.

Although Porsche is not required to present evidence that anyone has ever confused a Lloyd mat with a Porsche mat, the cases cited by plaintiffs involving "precise counterfeits" inevitably find that the competing products were so similar as to be nearly indistinguishable to a casual observer. See, e.g., Bauer Lamp Co. v. Shaffer, 941 F.2d 1165, 1169 (11^th Cir. 1991) (defendants' lamps were "exactly" like plaintiff's lamps, and defendants even used lamps manufactured by plaintiff as floor models to take sales orders for their own lamps at a home furnishing show); Polo Fashions v. Craftex, Inc., 816 F.2d 145, 148 (4^th Cir. 1987) (defendant's knitted sport shirt bearing an embroidered emblem of a polo player was substantially identical to the plaintiff's knitted sport shirt bearing its famous trademark of an emblem with a polo player, and both shirts used by the plaintiff, and both plaintiff and defendant sold similar knitted sport shirts with the nearly identical emblems on the breast of the shirt).

In sum, even assuming that the overall design of the floor mats was very similar, the Court concludes that there is no evidence in the record to support a finding that the Porsche mats and the Lloyd mats were indistinguishable from each other. In fact, the only evidence in the record as to the degree of similarity between the products is that the mats were made of such different material that the difference was immediately apparent to many people, including Porsche dealers and customers.

(4) Similarity of Retail Outlets and Customers

The fourth factor that must be addressed is the similarity between the trademark holder's and the alleged infringer's retail outlets and customers. Because the target customer base is a specific subset of consumers — Porsche dealers and people who own Porsche automobiles — the evidence reflects that the floor mats are not generally marketed in any sort of mass retail outlet and are instead marketed specifically to Porsche franchised dealers and in "after-market" automobile accessory catalogs. Although there is not a great deal of evidence in the record on this point, the Court will assume that Porsche's floor mats and Lloyd's floor mats are both marketed to Porsche dealers and in accessory catalogs in a similar fashion.

(5) Similarity of Advertising Media

The fifth factor to consider is the similarity between the advertising media used by the trademark holder and that used by the alleged infringer. Again, although there is little evidence on this issue, the Court will assume for the purpose of this discussion that Porsche's floor mats and Lloyd's floor mats are both advertised and marketed to Porsche dealers and in accessory catalogs in a similar fashion.

(6) Defendant's Intent

The sixth factor requires the Court to determine whether there is any evidence that Lloyd intended to confuse consumers into believing that the Lloyd floor mats are actually manufactured or otherwise associated with or authorized by Porsche. This factor is perhaps the most hotly disputed of the seven factors, and much of the evidence on this point has already been discussed above. Porsche argues that Levine admitted that he intentionally copied the exact style designs of many of the model numbers used by Porsche. As discussed above, the Court will assume that Lloyd did use some embroidered designs on its floor mats that were exact replicas of the designs of the model numbers used by Porsche in advertisements, brochures, or on the vehicles themselves, including an exact replica of the "RS America" design used by Porsche in some of its advertising brochures, although there is no evidence that Lloyd used exact replicas of any designs of the registered RS® or 4S® marks by themselves, if those marks were even used by Porsche. Similarity of design alone, however, does not automatically mean an intent to cause confusion, despite Porsche's attempt to argue that confusion is presumed when the designs are identical or nearly so. Under well settled Eleventh Circuit law, similarity of the designs is just one factor to be considered, and intent to confuse is another factor that must be evaluated independently. See generally John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 972 (11^th Cir. 1983); Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 840 (11^th Cir. 1983).

After reviewing all the evidence in the record, the Court concludes that there is little evidence that, by using the model numbers of Porsche vehicles on its floor mats, Lloyd intended to cause confusion about whether Lloyd's model number mats were made by, authorized by, or were in any way associated with Porsche. Certainly there is insufficient evidence to draw such a conclusion as a matter of law. The Court has reviewed all the evidence in the record regarding Lloyd's various advertisements and brochures, and rejects Porsche's argument that the similarity of the script used by Lloyd in its embroidered model number designs to the script used by Porsche in its advertisements or elsewhere automatically results in a finding that Lloyd intended to confuse or deceive consumers into thinking that the model number mats were manufactured by or associated with Porsche.

It is undisputed that Lloyd advertised its mats as "Authorized Porsche Mats" throughout the time it was selling mats under a license agreement with Porsche. The list of embroidery options for the mats included the registered "Porsche" trademarks, and also included mats with various model numbers as well as plain mats with no design on them. (See, e.g., Pls. SMF, Ex. H, K.) The advertisements for Lloyd floor mats also stated in a very obvious fashion:

Manufactured by Lloyd Design Corp., under license from Porsche Cars North America, Inc. PORSCHE, the Porsche Crest, TARGA, and CARRERA are registered trademarks of Dr. Ing. h.c.F. Porsche AG.

(See, e.g., Pls. SMF, Ex. H, K.) On the very same page below that statement, in even larger, very conspicuous lettering, was either a logo for "Lloyd DESIGN CORP," or later, was a different logo for "Lloyd Mats," with the company's website address (www.lloydmats.com). (Id.) Moreover, the packaging and product labeling for Lloyd's mats very clearly identify the mats as being manufactured by Lloyd's mats; not only is the outside packaging clearly marked, but the mats themselves have tags labeled Lloyd mats, and the driver's side mats have permanent labels sewn on the back of the mats. (See Levine Decl. at ¶ 13; Def. SMF, Ex. 13.)

Thus, Porsche has presented considerable evidence that Lloyd's advertisements for its floor mats were labeled very boldly and prominently as "AUTHORIZED PORSCHE® MATS." (See, e.g., Pls. SMF at ¶ 12, Ex. H.) Indeed, Lloyd does not dispute that it advertised its floor mats as "Authorized Porsche Mats" during the time that Lloyd had a license agreement with Porsche, from 1989 through the end of 1998. Porsche has not presented any evidence, however, that Lloyd marketed or advertised its floor mats as "Authorized Porsche Mats" at any time after January 1, 1999, which is the undisputed date that the license agreement was effectively terminated, and after which date Lloyd was no longer authorized to sell any floor mats with the registered Porsche trademarks.

In its reply brief, Porsche contends that Lloyd was notified on March 25, 1998, that the license agreement with Porsche was being terminated, and after that date, Lloyd was only authorized to "sell down" its remaining inventory of floor mats that had the registered Porsche trademarks, through January 1, 1999. (Pls. Reply Br. [81] at 3.) Porsche argues that Lloyd was not entitled, however, to "hold itself out as an `authorized' seller of Porsche mats during that time period." (Id.) Porsche further argues that Lloyd was not authorized to "expand" its offering of licensed floor mats during this period. (Id.) Porsche contends that Levine's letter to customers indicating that Lloyd was expanding its line of model number floor mats after June, 1998, indicates that Lloyd was somehow attempting to deceive the public into believing that the model number mats were authorized by Porsche. (See id.)

In its Statement of Facts, Porsche states: "In a letter dated March 25, 1998, Porsche terminated Lloyd's license effective January 1, 1999." (Pls. SMF at ¶ 13.) Thus, although Porsche admits that the effective date of termination of the license agreement was January 1, 1999, Porsche argues at the same time that Lloyd was deceiving the public by advertising that it was selling "authorized" Porsche floor mats between March 15, 1998, and January 1, 1999. The Court completely rejects this contention. By Porsche's own admission, Lloyd was entitled to sell its remaining inventory of "Authorized" Porsche mats until January 1, 1999. Indeed, since Lloyd was given only until January 1, 1999, to "sell down" its inventory of authorized Porsche mats with the registered trademarks, it stands to reason that Lloyd would advertise those mats heavily in an effort to sell out its entire inventory of mats with the registered Porsche trademarks before January 1, 1999. Porsche has presented no reason why Lloyd was not entitled to label its Porsche mats as "Authorized" Porsche mats between March 25, 1998 and January 1, 1999, and the Court concludes that it was entitled to do so.

Lloyd has consistently claimed that it did not believe that the model numbers were ever considered Porsche trademarks, and thus, the license agreement did not cover model numbers at all, just like the license agreement did not cover Lloyd's right to sell plain floor mats with no embroidered design. All the evidence in the record supports a finding that Lloyd acted consistently with its belief that the model numbers were not considered Porsche trademarks.²⁰ Thus, when the license agreement was terminated effective January 1, 1999, Lloyd stopped selling floor mats with the registered trademarks, but continued to sell floor mats that used model number designs.²¹

20 Although the parties further disagree about the significance of Brad Ripley's letter to Lloyd Levine on October 30, 1990, it is clear from the face of their correspondence that neither Ripley nor Levine considered the model numbers to be Porsche trademarks, and that neither of them understood that Ripley was acting on behalf of Porsche to explicitly "authorize" Lloyd to use the model numbers on its mats. (See Pls. SMF, Ex. E, F; Def. SMF, Ex. 3, 5.) Instead, Levine stated that even though the model numbers were not trademarks, he wanted to advise Ripley of his plans to offer mats with model numbers on them; Ripley responded that he had "no objection to the use of non-trademarked logos and would encourage you to offer same to obtain business presently going to other manufacturers. Keep up the good work!" (Pls. SMF, Ex. F; Def. SMF, Ex. 5; see also Levine Dep. at 150-151.) The Court addresses the significance of this correspondence in connection with its discussion of Lloyd's affirmative defenses below.

21 If Lloyd believed that the model numbers were indeed Porsche trademarks, and put the model numbers on the floor mats in an effort to deceive the public, it defies logic that Lloyd would stop selling the floor mats with the registered "Porsche" trademarks while continuing to sell floor mats with the model numbers, when the evidence reflects that Lloyd sold far more mats with the authorized Porsche trademarks. (See Levine Dep. at 152, attached as Ex. A to Pls. Reply Br., stating that "model numbers were not a big deal. They were not a big seller. by far people preferred the registered trademarks.")

According to Porsche, "It is undisputed that Lloyd had no right to expand its offering of licensed floor mats during this [sell-down] period. It is also undisputed that Lloyd dramatically expanded its floor mat offerings during this sell-down period." (Pls. Reply Br. [81] at 3.) Porsche has pointed to absolutely no evidence in the record that Lloyd expanded its offering of "licensed floor mats" during the sell-down period. The only evidence presented by plaintiffs in support of this argument is evidence that Lloyd intended to expand its offering of model number floor mats after the termination of the license agreement. Thus, Porsche is arguing on the one hand that Lloyd somehow acted improperly by expanding its offering of floor model mats after March 25, 1998, when Lloyd had been notified that the license agreement would be terminated, and on the other hand, Porsche argues vehemently that Lloyd was not authorized under the license agreement to sell floor mats with the model numbers. If the license agreement did not cover model numbers, then the fact that Lloyd chose to expand its offering of model number floor mats after March 25, 1998, or January 1, 1999, or any date for that matter, is irrelevant, because under Porsche's theory, Lloyd's sale of model number floor mats in January, 1998, was just as "infringing" as Lloyd's sale of model number floor mats in January, 1999.

In any event, Porsche agrees with Lloyd that the license agreement did not cover model numbers, even though it contends that the model numbers were nevertheless Porsche trademarks. Thus, because the license agreement did not specifically mention the model numbers, Porsche accuses Lloyd of trying to deceive the public by advertising its floor mats as "Authorized Porsche Mats." Porsche argues that, even though Lloyd had a license to use certain Porsche trademarks on its floor mats, including PORSCHE®, the Porsche Crest, TARGA®, and CARRERA®, Lloyd did not have a license with Porsche that authorized Lloyd to sell mats that had the Porsche model numbers on them, and thus Lloyd intended to confuse or deceive the public into believing that the model number floor mats were also authorized by Porsche, when the license agreements never mentioned model numbers.

After reviewing the advertisements for Lloyd Mats, the Court rejects Porsche's argument that Lloyd intended to deceive the public that the model number mats were "authorized" by Porsche. Although the advertisements are labeled "Authorized Porsche mats," the overall layout of the advertisements also reflects very clearly that the mats are manufactured by Lloyd Mats, and that only certain trademarks are used under license from Porsche. The advertisements clearly notified consumers about the source of the mats:

Manufactured by Lloyd Design Corp., under license from Porsche Cars North America, Inc. PORSCHE, the Porsche Crest, TARGA, and CARRERA are registered trademarks of Dr. Ing. h.c.F. Porsche AG.

(See, e.g., Pls. SMF, Ex. H, K.) Furthermore, the embroidery options not only list the registered trademarks and the model numbers, but also list an option for plain mats with no design at all.

Looking at the advertisement as a whole, the Court concludes that there is no evidence to indicate that Lloyd intended to confuse consumers into believing that the floor mats were manufactured by Porsche. Instead, the only reasonable inference from the advertisements is that the mats were manufactured by Lloyd under a license from Porsche to use certain registered Porsche trademarks. While Lloyd could have been more clear perhaps, and could have labeled the plain mats and the model number mats as "Mats NOT Authorized by Porsche," the Court concludes that Lloyd was not required to do so. The advertisements as a whole were not unduly misleading and do not result in a finding that Lloyd intended to confuse consumers into believing that the model number mats or plain mats were manufactured by Porsche.

(7) Actual Confusion

The seventh and final factor that must be considered is evidence of actual confusion as to the source or sponsorship of a product. Although evidence of actual confusion is not absolutely necessary to establishing a likelihood of confusion, the Eleventh Circuit has consistently held that it is the "best evidence" of a likelihood of confusion. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 978 (11^th Cir. 1983) (citing Amstar Corp. v. Domino's Pizza, Inc., 615 F.2d 252, 258 (5^th Cir. 1980)).

Neither party has presented any evidence of any actual confusion, and it appears to be undisputed that there is no evidence of actual confusion. According to Lloyd Levine, during 22 years of manufacturing floor mats, and after selling approximately 80,000 floor mats with model numbers on them, Lloyd has never received notice of "even one instance" of any confusion by any customer regarding the source of the Lloyd floor mats. (Def. SMF at ¶ 20; Levine Decl. at ¶¶ 10, 13.)

(8) Summary of Likelihood of Confusion

In consideration of all seven of these factors, the Court concludes that plaintiffs have failed to prove as a matter of law that defendant's use of the RS® and 4S® marks created a likelihood that consumers would be confused as to the source of Lloyd's floor mats using those registered marks.²² The Court finds that the possibility of confusion is quite remote, and that Lloyd has taken active steps to ensure that consumers are not confused and are well aware that they are purchasing "Lloyd Mats" that are not manufactured by Porsche.

22 Defendant vigorously contends that plaintiffs have no enforceable rights in the RS® or 4S® marks, and even if plaintiffs had such rights, defendant's use of the "RS America" and "C4S" designs on its floor mats are not likely to cause confusion and do not infringe on plaintiff's registered marks. Nevertheless, defendant states in its response brief that, after Lloyd Levine learned that those two marks were registered trademarks during his deposition in this action in May, 2000, he promptly halted the sales of all floor mats with the "RS America" and "C4S" designs on them. (Def. Resp. Br. [79] at 4 n. 7, Ex. 5.) According to a letter sent by defendant's counsel to plaintiffs' counsel on May 25, 2000, in the previous eighteen months, Lloyd had sold "exactly 15 sets of R.S. America mats and 19 sets of C4S mats. This is not enough to go to war about." (Def. Resp. [79], Ex. 5.) Accordingly, as defendant has stopped selling floor mats with the RS® or 4S® marks, entering injunctive relief against defendant on a claim that was never made in the complaint would serve no purpose, in any event.

As noted above, the Eleventh Circuit has held that the type of mark and the evidence of actual confusion are the two most important factors to consider in determining a likelihood of confusion. Dieter v. B H Indus., 880 F.2d 322, 326 (11^th Cir. 1989); Freedom Sav. Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11^th Cir. 1985). Model numbers are generally considered "descriptive" marks that are not entitled to strong trademark protection, and plaintiffs have not presented sufficient evidence that Porsche's model numbers have acquired a secondary meaning that would entitle the numbers to greater trademark protection. Furthermore, there is absolutely no evidence that any consumer has ever been confused about the source of the floor mats.

The only factors that tend to support a finding of a likelihood of confusion are the similarity of the design, similarity of retail outlets and customers, and similarity of advertising media. Although the Court has assumed that both Porsche and Lloyd market their floor mats in a similar manner, the Court also notes that this marketing is aimed a very specific set of consumers: Porsche dealers and owners of Porsche automobiles. Certainly Porsche dealers can be considered highly sophisticated consumers that will know which products are manufactured by Porsche and which products are manufactured by other companies. Moreover, it is reasonable to assume that Porsche owners who view the advertisements in the various "after-market" accessory catalogs will likewise understand that many of the products, although specifically designed and customized for Porsche vehicles, may be manufactured by companies other than Porsche. Under those circumstances, the similarity of products, customers, and advertising media do not support a finding of a likelihood of confusion.

Accordingly, the only remaining factor that truly supports a finding of a likelihood of confusion is the similarity of the designs, and Porsche has expended considerable effort arguing that this evidence alone gives rise to a presumption that consumers will be confused. The Court has concluded that plaintiffs have presented sufficient evidence to establish a genuine issue of material fact over whether Lloyd deliberately copied Porsche's script style and overall design of its model numbers. Even assuming that Lloyd did so, and assuming that Lloyd copied the exact design of every one of Porsche's model numbers, the remainder of the evidence, taken as a whole, strongly rebuts a finding of a likelihood of confusion. Contrary to plaintiffs' argument, similarity of design alone is insufficient to establish a likelihood of confusion, even when the designs are identical or nearly so.

The Court therefore concludes that plaintiffs have failed to prove as a matter of law that consumers will be confused about the true source of Lloyd's floor mats. Accordingly, plaintiffs would not be entitled to summary judgment on their claim of trademark infringement under 15 U.S.C. § 1114, even if they had specifically asserted claims based on the infringement of the RS® or 4S® marks in their Complaint. As plaintiffs did not identify these marks in Count Two of the Complaint, however, they cannot assert these marks in support of this claim.

B. Unfair Competition

Other than the registered marks of RS® and 4S® discussed above, the remainder of the model numbers that plaintiffs seek to establish as valid trademarks were unregistered at the time the plaintiffs filed this action. In addition to protecting registered trademarks against infringement, the Lanham Act also protects trademarks that are not registered. If a person uses "any word, term, name, symbol, or device, or any combination thereof" in connection with any goods or services that is "likely to cause confusion" regarding the origin, source, or sponsorship of such goods or services, then that person could be liable to anyone damaged as a result. 15 U.S.C. § 1125(a).²³

23 15 U.S.C. § 1125(a) provides, in relevant part:
(a) Civil Action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which —

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities or geographic origin of his or her or another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a).

Plaintiffs' claim in Count Three of the Complaint of "false designation of origin or sponsorship and false advertising" is brought under 15 U.S.C. § 1125(a). Such claims are typically referred to as "unfair competition" claims, and, as plaintiffs have referred to their "unfair competition" claim in their brief, the Court will also refer to this claim as an "unfair competition" claim for the purpose of this discussion. (See Pls. Br. [74] at 5.) Plaintiffs allege that defendant's use of their unregistered marks is likely to cause confusion regarding the origin or source of defendant's product; specifically, that Lloyd's use of model numbers on its floor mats is likely to confuse consumers about the source of the floor mats or deceive them into believing that Lloyd's floor mats were authorized or sponsored by Porsche.

1. Prima Facie Case

"[T]o prevail under 15 U.S.C. § 1125(a), a party must show (1) that it had prior rights to its mark or name, and (2) that the other party had adopted a mark or name that was the same, or confusingly similar to its mark, such that consumers were likely to confuse the two." Lone Star Steakhouse Saloon, Inc. v. Longhorn Steaks, Inc., 106 F.3d 355, 359, modified on reh'g by 122 F.3d 1379 (11^th Cir. 1997). Thus, the analysis of the unfair competition claims under 15 U.S.C. § 1525(a) and the analysis of the trademark infringement claims under 15 U.S.C. § 1114 contain the same two prongs. First, the Court must determine whether plaintiffs have valid and enforceable trademark rights in the model numbers; and second, the Court must determine if plaintiffs have presented sufficient evidence to establish a likelihood that defendant's use of the unregistered model numbers on its floor mats would cause consumers into believing that Lloyd's mats are made by Porsche, or are otherwise associated with or authorized by Porsche.

a. Validity of Trademark

Unlike registered marks, unregistered marks are not entitled to a presumption of validity, and plaintiffs must present sufficient evidence to establish that the marks are valid and enforceable trademarks. As discussed in detail above, in order to demonstrate that they have valid, enforceable rights in the claimed trademarks, plaintiffs must demonstrate not only that they used the marks before defendant, but also that the marks are "inherently distinctive" or that they have "acquired secondary meaning." SunAmerica Corp. v. Sun Life Assurance Co., 77 F.3d 1325, 1344 (11^th Cir. 1996) (citing Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519, 1522 (11^th Cir. 1991)).

In their Complaint, plaintiffs alleged as follows:

Porsche has acquired trademark rights in the model numbers (hereinafter "Model Numbers") that Porsche uses to identify and designate its automobiles. These Model Numbers, including the numbers 996, 986, 993, 930, 911, 911C2, 911C4, 911E, 911S, 911SC, 911T, and 912, function as trademarks and are recognized throughout the world. Porsche's trademarks in its Model Numbers, including the foregoing model numbers, are hereinafter collectively referred to as the "Porsche Marks."

(Compl. [1] at ¶ 9.) Thus, Porsche argues that, in addition to its registered trademarks, it also has valid trademarks rights in the model numbers 996, 986, 993, 930, 911, 911C2, 911C4, 911E, 911S, 911SC, 911T, and 912.

In their brief in support of their motion for summary judgment on this claim, plaintiffs' entire argument concerning the validity of their enforceable rights to the claimed marks takes up exactly one paragraph, in which plaintiffs do little more than make the bald assertion that "Porsche's trademarked Model Numbers are `arbitrary' or `fanciful' marks `afforded the widest ambit of protection.'" (Pls. Br. [74] at 6.) In support of this argument, plaintiffs cite to Sun Banks of Florida, Inc. v. Sun Fed. Savings Loan Ass'n, 651 F.2d 311, 315 (5^th Cir. 1981), but nothing in that decision supports plaintiffs' argument that the model numbers at issue in this action are considered "arbitrary" marks, as that term is used in the context of trademark law in the Eleventh Circuit.

For all the reasons discussed above in connection with plaintiffs' registered marks, the Court concludes that the model numbers are actually descriptive marks, and thus, in order for plaintiffs to show that they have enforceable trademark rights in the model numbers, the plaintiffs must establish that the model numbers have acquired a secondary meaning. Although plaintiffs have presented some evidence that Porsche has used its model numbers in connection with its advertising and promotion of its vehicles, they have failed to present sufficient evidence to establish that any of the model numbers has acquired a secondary meaning sufficient to grant Porsche valid trademark rights in that number. Accordingly, the Court concludes that plaintiffs have failed to present a prima facie case of unfair competition, and defendant is entitled to summary judgment on this claim, as it relates to all model numbers other than "911." See infra.

Nevertheless, although none of the model numbers at issue was a registered trademark at the time this action was filed, plaintiffs have shown that the model number "911" was registered as a trademark by the USPTO after this action had been filed. Thus, despite plaintiffs' failure to present sufficient evidence that "911" has acquired a secondary meaning, because registration of a mark does result in a presumption that the mark is valid and enforceable, the Court will assume for the purposes of this discussion that the model number "911" is sufficiently distinctive to afford plaintiffs valid trademark rights in that model number.²⁴

24 The Court notes that the registration certificate for the "911" mark reflects that the mark is registered only with respect to "automobiles and structural parts for automobiles." (Pls. SMF, Ex. O.) With some reservations, the Court assumes in this discussion that automobile floor mats are considered "structural parts for automobiles," although the parties do not address this issue in their respective briefs.

b. Likelihood of Confusion

As with plaintiffs' claims of trademark infringement, the Court must now review the evidence to determine whether the defendant's use of the "911" model number is likely to cause confusion as to the source or sponsorship of the product to which the allegedly infringing mark is attached. The Court has already undertaken an exhaustive review of all the evidence involved with each of the seven factors above, and has concluded that plaintiffs have failed to prove as a matter of law that there is a likelihood that consumers will be confused about the source of Lloyd's model number floor mats.

Although the discussion above concerned the evidence involving Lloyd's use of all the model numbers on its mats, the Court focused specifically on Lloyd's use of the RS® and 4S® registered marks. The Court also finds, however, that the conclusions apply with equal force to all the model numbers in dispute, including the "911" model number.

As noted above, plaintiffs obtained registration for the number "911" after this action had been filed, and thus there is some presumption that the "911" number is sufficiently distinctive in the context of automobiles. Lloyd has presented evidence, however, that the "911" mark has been used by other companies in other contexts, including use by other automobile manufacturers with respect to their own model numbers. (See Def. Resp. Br. [79], Ex. 11.) Lloyd has also presented evidence that Porsche employees did not consider the individual model numbers as trademarks, since Porsche did not use the number "911" unless it was accompanied by other terms reflecting an association with Porsche, such as "Porsche 911," "911 Carrera," etc. (See Def. Br. [76] at 17-18; Wells Dep. at 136.)

Thus, even though plaintiffs were able to obtain registration of the "911" model number, they have presented very little evidence reflecting that the "911" model number has acquired a secondary meaning that would entitle it to strong trademark protection. Moreover, it is undisputed that Porsche has not presented any market survey evidence or other evidence that would indicate that "911," or any other model number for that matter, was identified or associated with Porsche in the minds of the general public. Thus, despite its subsequent registration with the USPTO as a trademark, the Court finds that "911" is, at most, a descriptive mark with a very weak secondary meaning.

Accordingly, the Court concludes that the 911® model number, like the RS® and 4S® marks, is entitled, at best, to very weak protection as a trademark. Moreover, in reviewing all the evidence in the record, the Court concludes that there is a disputed issue of fact as to whether consumers would be confused into believing that Lloyd's model number floor mats, including those mats with the "911" model number, were manufactured by Porsche, or otherwise authorized by, or associated with Porsche.

Nevertheless, plaintiffs have presented substantial evidence that Lloyd's use of the "911" number on its mats copied the same script style and design as the model number was used by Porsche in its advertising brochures to represent the Porsche 911 automobile. (See, e.g., Pls. Reply Br., Ex. B, C, illustrating Porsche's design of "911" and Lloyd's design of "911"). Plaintiffs argue that such evidence results in a presumption that consumer confusion over the "911" model number mats is likely. Although the Court has already concluded that there is no such presumption in the Eleventh Circuit, the Court addresses that argument in more detail.

Porsche argues that the presumption of confusion in cases involving identical trademarks has been "widely adopted" by the courts, citing many cases from other circuits in support, and also argues that "this standard is of such universal acceptance that the 1993 GATT TRIPs international trade agreement requires that member nations adhere to the rule that `[i]n the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.'" (Pls. Br. [74] at 9, citing GATT Agreement, Dec. 15, 1993 (TRIPs), Part III, Art. 16, at ¶ 1). The Court first notes that, although plaintiffs may have presented sufficient evidence that defendant may use an "identical sign" on its mats, they have failed to present sufficient evidence that plaintiffs and defendant are selling "identical goods." (See discussion above involving the third factor, similarity of products.)

Moreover, the cases cited by plaintiffs from other districts and circuits are distinguishable from the instant action. Inevitably, the cases finding a presumption of confusion are faced with a defendant using a mark identical or virtually identical to that of the trademark holder, on a product that competes directly with the product of the trademark holder, and using that mark in the same or similar manner as the trademark holder. See, e.g., Polo Fashions v. Craftex, Inc., 816 F.2d 145, 148 (4^th Cir. 1987) (likelihood of confusion presumed where defendant sold a knitted sport shirt bearing an embroidered emblem of a polo player that was substantially identical to the famous trademark used by the plaintiff, and both plaintiff and defendant sold similar knitted sport shirts with the nearly identical emblems on the breast of the shirt); Playboy Enterprises, Inc. v. Chuckleberry Pub., Inc., 687 F.2d 563, 569 (2d Cir. 1982) ("registrant of a mark is presumptively entitled to protection from a newcomer's use of a similar mark in direct competition, `particularly when no reasonable explanation is offered to show the second comer's need to come so close to the mark.'"). Furthermore, as pointed out above, one court has specifically expressed reservations about applying a rule that would presume confusion upon a showing of similarity of marks or an intent to copy. See Versa Prod. Co. v. Bifold Co., 50 F.3d 189, 206 (3d Cir. 1995) (disapproving the "intent to copy" rule because a presumption of confusion based only on an "intent to copy" requires a double inference — it is presumed both that the defendant intended to create a confusing similarity of appearance and also that he succeeded in doing so).

In any event, the Court concludes that plaintiffs have failed to cite authority that conclusively shows that this presumption of confusion is the law of the Eleventh Circuit. As discussed in detail above, the Eleventh Circuit has consistently held that courts must evaluate seven separate factors in determining whether plaintiffs have established a likelihood of confusion between their products and defendant's competing products. Plaintiffs have cited to only one case from the Eleventh Circuit that purportedly held that confusion should be presumed upon a showing that defendant copied the exact mark as used by the plaintiff: Bauer Lamp Co. v. Shaffer, 941 F.2d 1165 (11^th Cir. 1991).

As noted, in Bauer Lamp, the plaintiff brought an action for trade dress infringement, alleging that defendants had deliberately copied the product design of plaintiff's lamp in an effort to take business away from plaintiff. Id. at 1169. The case proceeded to trial, and the jury returned a verdict for plaintiff on the trade dress infringement claim, finding that the plaintiff had proved a likelihood of confusion between defendant's lamp design and plaintiff's lamp design. Id. at 1171. The defendants moved for judgment notwithstanding the verdict, and the trial court denied their motion. Id. at 1168. On appeal, the Eleventh Circuit affirmed the jury verdict, holding that: "There was more than enough evidence to establish that [defendants] were out to destroy [plaintiff's] position in the marketplace. In fact, the evidence is clear that they deliberately intended to copy Bauer's lamps in their effort to seek revenge. Intent to copy in itself creates a rebuttable presumption of likelihood of confusion." Id. at 1172.

Plaintiffs' argument that a likelihood of confusion should be presumed when the marks are nearly identical and the products directly compete with each other is more persuasive when used in the context of a defendant who clearly intended his product to look confusingly similar to the product of the trademark holder. For example, if Lloyd manufactured automobiles and deliberately copied the model numbers of Porsche automobiles in the same script and design, then plaintiffs would have a better argument that a likelihood of confusion should be presumed.

In the instant action, however, plaintiffs use the model numbers in connection with its automobiles, whereas defendant uses the model numbers exclusively on floor mats and is not in the business of manufacturing or selling automobiles. Although it is undisputed that Porsche also sells floor mats, it is also undisputed that Porsche only sells floor mats with the name "Porsche" on them, and does not sell floor mats containing any design using model numbers. Thus, it is undisputed that Lloyd does not sell a product that is designed to look identical or even confusingly similar to a product sold by plaintiffs. Instead, Lloyd is selling a product that is designed to appeal to small subset of consumers: people who have already purchased a Porsche automobile and are interested in buying a floor mat that is designed to fit their specific automobile.

Under the specific circumstances of this case, the Court finds that there is no presumption of confusion. See, e.g, John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 977 n. 16 (11^th Cir. 1983) ("There is nothing wrong with exact copying of an article or a symbol in the public domain. Even if defendant admits that he used plaintiff's [design] as a model to copy from in designing his own [design], this does not necessarily mean that defendant intentionally was passing off his product as plaintiff's. Such an admission is merely evidence relevant to the ultimate test of likelihood of confusion." (citing 2 J.T. McCarthy, Trademarks Unfair Competition, § 23:35, at 111-12 (1973))). Moreover, even if confusion will be presumed under the Eleventh Circuit's holding in Bauer Lamp, for all the reasons discussed in detail with respect to plaintiffs' claim of trademark infringement, the evidence in the record as a whole arguably rebuts that presumption, and supports a conclusion that there is no likelihood of confusion. At the most, however, there are disputed issues of fact on this question.

Finally, the Court addresses the parties' arguments concerning the "aesthetic functionality" doctrine. Defendant argues that its use of the model numbers on its floor mats is intended only to identify the vehicle from the interior, and thus is a "functional use" that is not intended to create confusion about the source of the item and is a "fair use which should be well beyond any trademark infringement claim." (Def. Br. [76] at 13.) In support of this "aesthetic functionality" argument, defendant cites Plasticolor Molded Prod. v. Ford Motor Co., 713 F. Supp. 1329 (C.D. Cal. 1989), vacated by consent, 767 F. Supp. 1036 (C.D. Cal. 1991), which held that the defendant's use of the "Ford" trademark on an automobile floor mat served an "aesthetic function" in that it made the product more appropriate for use in a vehicle manufactured by Ford. Although defendant notes that this decision was later vacated due to a settlement between the parties, it argues that "this thoughtful opinion endures." (Def. Br. [76] at 13 n. 17.)

Plaintiffs, on the other hand, argue that the Plasticolor decision has been soundly criticized by commentators and other courts, and that the "aesthetic functionality" doctrine "has suffered a timely and well deserved death." (Pls. Reply Br. [81] at 11.) Thus, plaintiffs argue that the "disclaimers" present in the advertisements for Lloyd mats, on the packaging of all Lloyd floor mats, and on the mats themselves, do not serve as a defense to the claims of trademark infringement and unfair competition. In any event, plaintiffs argue, Lloyd has admitted that the model numbers are present on the Lloyd mats to increase the potential that a Porsche owner will buy the mat, and thus, and thus, the model numbers are not intended only to "identify" the vehicle. (Id.)

The Court first notes that there is no indication that the Eleventh Circuit has accepted the "aesthetic functionality" doctrine, and the Court concludes that the Eleventh Circuit would likely not apply that doctrine as a defense to an otherwise valid claim of trademark infringement. Moreover, the Court agrees with plaintiffs' argument that the use of a "disclaimer" by itself will not defeat an otherwise valid claim of trademark infringement. See, e.g., University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1547 (11^th Cir. 1985).

Nevertheless, the Court discusses this "aesthetic functionality" doctrine for two reasons. First, like the Plasticolor court, the Court recognizes that there may be other legitimate reasons for the use of a trademark on an automobile floor mat other than an intention to confuse the consumer; for example, because the mat is designed specifically for use with certain vehicle models, the model number on the mat serves as a decorative element, "giving consumers the opportunity to express their allegiance to their [Porsche] automobiles." See Plasticolor, 713 F. Supp. at 1349. Although this use of the model number on the mats does not serve as a "defense" to plaintiffs' claim of trademark infringement, it does illustrate why Lloyd's use of the model number designs on its floor mats does not lead to an automatic presumption of confusion, and also does not lead to an inference that Lloyd intended to confuse consumers into believing that the mats were actually manufactured by, or authorized by Porsche.

Second, although the Court also agrees with plaintiffs that a "disclaimer" does not serve as a defense against an otherwise valid claim of trademark infringement or unfair competition, the Court is still required to review Lloyd's advertisements and packaging in an effort to determine whether Lloyd intended to confuse consumers into believing that its mats were manufactured by Porsche, or otherwise associated with or authorized by Porsche. Under Eleventh Circuit law, the Court must evaluate all the evidence in the record with respect to each of the seven factors listed above in order to determine whether there is a likelihood of confusion. While disclaimers can not "cure" actual confusion, they may serve to minimize confusion in cases in which there is no evidence of actual confusion and the likelihood of confusion is small. See, e.g., August Storck K.G. v. Nabisco, Inc., 59 F.3d 616, 618-619 (7^th Cir. 1995). Cf. University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 1547 (11^th Cir. 1985) (although defendant used disclaimers on its product, disclaimers were not very conspicuous and they were insufficient to defeat claim of trademark infringement where mark was very strong and there was evidence of actual consumer confusion).

The Court therefore concludes that plaintiffs have failed to prove as a matter of law that consumers will likely be confused about the true source of Lloyd's model number floor mats, including the floor mats with the model number "911" on them. As there are disputed issues of fact on this matter, however, neither party is entitled to summary judgment on plaintiffs' claim of unfair competition under 15 U.S.C. § 1125(a), as that claim relates to model number "911." Accordingly, plaintiffs' Motion for Summary Judgment [74] is DENIED with respect to Count Three of the Complaint, and defendant's Motion for Summary Judgment [76] is likewise DENIED with respect to Count Three, as to model number "911."

Given the timing of the registration of the "911" mark, however, defendant has arguably been somewhat ambushed by plaintiffs' delayed registration. That is, the 911 "mark" was not registered when this complaint was filed nor was it registered prior to the expiration of discovery. Instead, plaintiffs registered the "911" mark on December 19, 2000. (Pls. SMF at ¶ 20, Ex. O.) Discovery, however, had expired on May 11, 2000. This fact is important because prior to registration, plaintiffs had the burden of demonstrating that the "911" model number had acquired a secondary meaning. As noted, plaintiffs adduced no such evidence. With registration, however, a weak presumption of inherent distinctiveness arises, meaning that the defendant then has the burden of disproving the existence of a secondary meaning. Yet defendant could not have known that it had this burden during discovery as the "mark" was not registered at that time. Thus, if defendant needs to expand its witness list or list of exhibits to respond to this new burden, the Court will consider a motion seeking leave to do so.

As to the other unregistered model number marks, the Court has concluded that plaintiffs have failed to present sufficient evidence that these marks were inherently distinctive or that defendant infringed its trademark rights. Accordingly, defendant is entitled to summary judgment on plaintiffs' claims of common law trademark infringement with respect to those marks, as asserted in Count Four of the Complaint. Accordingly, plaintiffs' Motion for Summary Judgment [74] is DENIED with respect to Count Four of the Complaint, and defendant's Motion for Summary Judgment [76] is GRANTED with respect to Count Four.

2. Affirmative Defenses

The Court has concluded that plaintiffs have failed to present sufficient evidence to create a genuine issue of material fact as to whether Lloyd infringed on its unregistered model number trademarks, but that disputed issues of fact remain with respect to plaintiffs' claim of infringement of the registered "911" mark. Defendant argues that, even if plaintiffs had presented prima facie claims of trademark infringement, defendant would still be entitled to the affirmative defenses of acquiescence and laches. The Court finds that there are genuine issues of material fact surrounding Lloyd's assertion of both of these affirmative defenses.

Acquiescence and laches are both equitable defenses that may be asserted as defenses to otherwise valid claims of trademark infringement. SunAmerica Corp. v. Sun Life Assurance Co., 77 F.3d 1325, 1334 (11^th Cir. 1996); Coach House Restaurant, Inc. v. Coach Six Restaurants, Inc., 934 F.2d 1551, 1558, 1563 (11^th Cir. 1991). The difference between acquiescence and laches is that laches indicates passive consent or a long period of silence, while acquiescence requires an overt or explicit act of consent from the holder of the mark. SunAmerica, 77 F.3d at 1344; Coach House, 934 F.2d at 1558. Defendant argues that it is entitled to assert a defense of acquiescence because Porsche explicitly consented to its use of the model number on its floor mats in 1990; alternatively, defendant argues that it is entitled to the defense of laches, because Porsche knew about Lloyd's use of the model numbers dating back to 1978, and failed to complain to Lloyd about its use of the model numbers until 1999.

Acquiescence to the use of a trademark is analogous to an implied license to use the trademark, and typically, the implied license is terminable at will. Coach House, 934 F.2d at 1563. Therefore, a mark holder may terminate the implied license at any time and sue for trademark infringement and unfair competition for any use of the mark subsequent to termination, if the mark holder's acquiescence does not preclude it from claiming an exclusive right to use the mark. Coach House, 934 F.2d at 1563. To assert an affirmative defense of acquiescence after the "implied license" has been revoked, the defendant must establish three elements: (1) that the plaintiff actively represented that it consented to the use of the mark and that it would not assert a claim against the defendant; (2) that the delay between the plaintiffs' active representation and the plaintiff's attempt to stop defendant's use of the mark was not excusable, and (3) that the delay caused the defendant undue prejudice. See SunAmerica, 77 F.3d at 1334, 1344 n. 8; Coach House, 934 F.2d at 1558.

Defendant argues that, even if plaintiffs have succeeded in establishing a prima facie case of trademark infringement, defendant is nevertheless entitled to the affirmative defenses of acquiescence and laches. First, defendant argues that, even if the model numbers could be considered valid trademarks, Porsche consented to Lloyd's use of the model numbers on its floor mats when Brad Ripley wrote the letter to Lloyd Levine on October 30, 1990, stating:

Thanks for your letter of October 25, 1990, regarding the use of model numbers/names. I have no objection to the use of non-trademarked logos and would encourage you to offer same to obtain business presently going to other manufacturers.

Keep up the good work!

(Pls. SMF, Ex. F; Def. SMF, Ex. 5.) Defendant contends that Ripley was Lloyd Levine's regular "contact" at Porsche concerning the license agreement and the floor mats in general, and thus, that Ripley was acting on behalf of Porsche when he explicitly consented to Lloyd's use of the model numbers on its floor mats.

Although it is undisputed that Ripley wrote the letter to Levine in which he said that "I have no objection," plaintiffs contend that Ripley was merely expressing his personal opinion, and was not acting on behalf of Porsche. In support of this argument, plaintiffs have presented evidence that Levine was aware that Ripley did not have the final say regarding Porsche's trademark policy, and that because Ripley did not sign the license agreements, Levine was aware that Ripley did not have the authority to consent to Lloyd's use of the model numbers on its floor mats. The Court concludes that the evidence surrounding Ripley's alleged "consent" is in dispute, and that a genuine issue of material fact exists as to whether Ripley had the authority to consent on Porsche's behalf, and whether it was reasonable for Levine to believe that Ripley had such authority.

Defendant argues further that, even if the model numbers at issue could be considered trademarks, Porsche was aware that Lloyd had been using the model numbers on its floor mats as far back as 1978, and thus, Porsche's inaction for over twenty years prohibits it from asserting claims against Lloyd for trademark infringement. Porsche contends that it was not aware of Lloyd's use of the model numbers on its floor mats in 1978, and furthermore, that any alleged delay in asserting its trademark rights was excusable due to the parties' subsequent license agreement. The Court concludes that the facts are in dispute surrounding Porsche's knowledge of Lloyd's use of the model numbers, and the reasonableness of Porsche's decision to delay the assertion of its rights against Lloyd. Moreover, genuine issues of material fact exist regarding whether Lloyd was unduly prejudiced by any delay.

When a defendant has presented sufficient evidence to establish all the elements of a defense of acquiescence or laches, the mark holder is ordinarily estopped from asserting a claim of trademark infringement or unfair competition. Because the public interest in preventing confusion in the marketplace is paramount to any other interest, however, the holder of a trademark may nevertheless revive its claims by establishing not only that there is a likelihood of confusion, but that the confusion between the competing products is inevitable. SunAmerica, 77 F.3d at 1334-1335; Coach House, 934 F.2d at 1564. The Court has already concluded that plaintiffs have failed to establish a likelihood of confusion, and thus, it must also conclude that plaintiffs have failed to present sufficient evidence to establish that confusion is inevitable. Accordingly, the Court concludes that, with respect to plaintiffs' claim of trademark infringement and unfair competition as to the "911" model number, Lloyd will be granted an opportunity to present evidence of its affirmative defenses of acquiescence and laches during the trial on plaintiffs' claims.

C. Trademark Dilution

Plaintiffs' final claim is for "trademark dilution," as asserted in Count One of the Complaint. This claim is brought under 15 U.S.C. § 1125(c), which allows the owner of a "famous mark" to seek an injunction against another person's commercial use of a mark, "if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." 15 U.S.C. § 1125(c). "Dilution" is defined as "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of . . . competition between the owner of the famous mark and other parties; or . . . likelihood of confusion, mistake, or deception." 15 U.S.C. § 1127.

In determining whether a mark is sufficiently distinctive and famous for the purpose of analyzing a claim of trademark dilution, a court may consider the following factors:

(A) the degree of inherent or acquired distinctiveness of the mark;

(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

(C) the duration and extent of advertising and publicity of the mark;

(D) the geographical extent of the trading area in which the mark is used;

(E) the channels of trade for the goods or services with which the mark is used;

(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;

(G) the nature and extent of use of the same or similar marks by third parties; and

(H) whether the mark was registered.

15 U.S.C. § 1125(c)(1).

Defendant has moved for summary judgment on plaintiffs' claim of trademark dilution on the grounds that plaintiffs have failed to present any evidence that any of the model numbers have achieved the requisite level of fame required to qualify them for protection from trademark dilution. Plaintiffs have not moved for summary judgment on this claim, nor have they responded to defendant's arguments that they have failed to present sufficient evidence to prove that any of the model numbers are "famous marks" that are sufficiently distinctive. Moreover, in their response to defendant's motion, plaintiffs state that "Porsche hereby voluntarily agrees to dismiss its dilution claim in the interest of an expeditious resolution of this case." (Pls. Resp. Br. [78] at 2 n. 2.)

The Court agrees with defendant that plaintiffs have failed to present any evidence that any of the model numbers at issue in this action are "famous marks" deserving of protection from trademark dilution under 15 U.S.C. § 1125(c). Accordingly, defendant's Motion for Summary Judgment [76] is GRANTED with respect to Count One of the Complaint.

IV. Defendant's Counterclaims Against Plaintiffs

In its First Amended Answer, Lloyd asserted counterclaims against plaintiffs for trade libel, intentional interference with prospective economic advantage, negligence, and unfair competition under California law. (See First Am. Ans. [24] at 16-23.) It is undisputed that, on April 20, 1999, before filing the instant action, counsel for Porsche sent letters to two of Lloyd's customers, Automotion and Performance Products, stating that Porsche had terminated its license agreement with Lloyd and that Lloyd was selling "counterfeit" mats, and demanded that they stop selling Lloyd's mats. (Def. SMF at ¶ 28, Ex. 6.) Lloyd argues that plaintiffs falsely and maliciously described Lloyd's floor mats as "counterfeit," and thus damaged Lloyd's reputation throughout California and the United States, and damaged its business and contractual relationships with various third parties. Lloyd argues that the use of the term "counterfeit" implies that Lloyd intentionally infringed upon Porsche's registered trademarks, and argues that Porsche labeled Lloyd' s floor mats as "counterfeit" when Porsche knew that the mats did not infringe upon any registered trademarks.

Defendant has not moved for summary judgment on its counterclaims against plaintiffs, but plaintiffs have moved for summary judgment on defendant's counterclaims. Plaintiffs first argue that the Noerr-Pennington doctrine grants plaintiffs immunity on defendant's counterclaims. Alternatively, plaintiffs argue that they are entitled to summary judgment on defendant's counterclaims because they had a good faith belief that defendant was infringing upon their trademarks, and thus, that their actions in sending cease and desist letters to third parties selling Lloyd floor mats were reasonable and done with a good-faith belief that Lloyd was unlawfully infringing upon Porsche trademarks.

The Noerr-Pennington doctrine was first recognized in two antitrust cases: Eastern R.R. Presidents Conference v. Noerr Motor Freight, Inc., 365 U.S. 127 (1961) and United Mine Workers v. Pennington, 381 U.S. 657 (1965). The Noerr-Pennington doctrine immunizes an entity from antitrust liability under the Sherman Act, based on efforts by that entity to influence legislative or executive action, and also based on efforts to petition courts and administrative bodies. See Cardtoons, L.C. v. Major League Baseball Players Ass'n, 208 F.3d 885, 888 (10^th Cir. 2000) (en banc).

Defendant argues that the Noerr-Pennington doctrine has no application outside the antitrust context, citing the Tenth Circuit's decision in Cardtoons in support of that argument. The Tenth Circuit held in Cardtoons that, outside the antitrust context, the Noerr-Pennington doctrine does not apply, and the Petition Clause of the First Amendment is the only proper basis on which to assert a defense to any claim based on the filing of an objectively reasonable lawsuit under a state or federal statute. Cardtoons, 208 F.3d at 889-890. Moreover, the Tenth Circuit held further that when the basis for immunity is solely asserted under the right to petition, "purely private threats of litigation are not protected because there is no petition addressed to the government." Id. at 893.

Although plaintiffs have also cited cases in support of their argument that the Noerr-Pennington doctrine immunizes them from liability on defendant's counterclaims, the cases cited do not establish with any certainty that the Eleventh Circuit has applied the Noerr-Pennington doctrine to immunize claims, such as defendant's counterclaims, that arise outside the antitrust context and which are based purely on correspondence between private parties. Moreover, given the absence of authority from the Eleventh Circuit, the Court will assume to be persuasive the reasoning of the Tenth Circuit that the Noerr-Pennington doctrine does not immunize parties from liability based on claims arising out of purely private communications outside the context of litigation. Accordingly, the Court concludes that the plaintiffs have failed to establish as a matter of law that they are entitled to summary judgment on defendant's counterclaims on the basis that the Noerr-Pennington doctrine provides immunity from suit.

There is a practical reason as well for allowing defendant's counterclaims to be considered by the finder of fact. Because this case is going to trial on Lloyd's use of the "911" mark, for considerations of judicial efficiency, a trial on defendant's counterclaims is prudent. Obviously, a decision for defendant by the finder of fact on these claims will then force this Court to decide whether the Noerr-Pennington doctrine applies in this action. If the Court decides that it does apply, and that plaintiffs' accusations against Lloyd were not a "sham," then the Eleventh Circuit will be able to review the jury's verdict and this Court's conclusion and choose between the two outcomes. Whatever determination the appellate court reaches, a second trial will not be necessary.

CONCLUSION

For the foregoing reasons, plaintiffs' Motion for Summary Judgment [74] is DENIED, and defendant's Motion for Summary Judgment [76] is GRANTED in part, and DENIED in part. Defendant's motion is denied solely with respect to plaintiffs' claim of unfair competition based on defendant's use of the "911" model number on its floor mat designs. Defendant's motion is granted with respect to all of plaintiffs' remaining claims.

Plaintiffs' Request for Oral Argument [75] is DENIED and defendant's Motion to Strike Plaintiffs' Unauthorized Submission in Support of Summary Judgment [96] is also DENIED.

Pursuant to the Scheduling Order [20] entered on October 6, 1999, the parties' Proposed Consolidated Pretrial Order should be due within thirty (30) days of the entry of this Order. The Court, however, will allow the parties an additional thirty days to be used in an effort to settle this litigation. Therefore, the pretrial Order will be due sixty (60) days from this date. If defendant needs to expand its witness list or exhibit list as a result of the Court's observation at 95-96, supra, it should advise the Court by this deadline.

SO ORDERED.