Summary
This memorandum and order from the U.S. District Court for the District of Massachusetts resolves cross-motions for summary judgment and a motion to exclude expert testimony in a trademark infringement and unfair competition dispute. The court denied both parties' summary judgment motions, concluding that genuine disputes of material fact exist regarding the likelihood of confusion between the competing hexagonal marks. The court also partially granted the motion to exclude the plaintiff's expert testimony, striking speculative opinions on actual consumer confusion and defendant intent while permitting analysis of other likelihood-of-confusion factors.
Topics
Practice areas
Questions Presented
- Whether either party was entitled to summary judgment on IEP's federal trademark-infringement claim based on the likelihood of consumer confusion.
- Whether IEP had standing as the registrant of the '573 Registration to pursue infringement claims involving color variations of its hexagonal mark.
- Whether either party was entitled to summary judgment on IEP's Lanham Act unfair-competition and false-designation claim.
- Whether either party was entitled to summary judgment on IEP's claim seeking cancellation of KPM's '755 Registration.
- Whether either party was entitled to summary judgment on IEP's Massachusetts common-law trademark-infringement and unfair-competition claims.
- Whether either party was entitled to summary judgment on IEP's Massachusetts General Laws chapter 93A claim.
- Whether Steve Egenolf's expert testimony satisfied Federal Rule of Evidence 702 and the Daubert reliability and helpfulness requirements.
Holdings
- An industry expert with substantial experience in the relevant powder and bulk processing industry may testify about several likelihood-of-confusion factors, including the similarity of the marks and goods, channels of trade and advertising, prospective purchasers, and the strength of the plaintiff's mark, even without prior experience in trademark litigation or a consumer survey.
- Egenolf may not testify about actual consumer confusion, KPM's intent in adopting its mark, or what other industry participants would conclude about the likelihood-of-confusion factors because those opinions lacked a reliable foundation and included speculation.
- IEP had standing under the Lanham Act as the registrant of the '573 Registration to assert infringement claims, including claims involving the mark as it appears in different colors.
- Neither party was entitled to summary judgment on the trademark-infringement claim because genuine disputes of material fact existed concerning the likelihood of consumer confusion.
- Because the likelihood-of-confusion issue could not be resolved as a matter of law, neither party was entitled to summary judgment on the Lanham Act unfair-competition and false-designation claim, the cancellation claim, or the Massachusetts common-law trademark and unfair-competition claims.
- Neither party was entitled to summary judgment on the Chapter 93A claim because the claim was premised on the trademark and unfair-competition theories that remained unresolved.
Key quotations
“For the foregoing reasons, KPM’s motion for summary judgment, ECF 191, is DENIED. IEP’s cross-motion for summary judgment, ECF 203, is similarly DENIED.” (Conclusion and Order)
“The motion to exclude Egenolf’s testimony will be granted in part and denied in part.” (Conclusion and Order)
“On balance, after weighing the Pignons factors, a reasonable jury could conclude that KPM’s mark is likely to cause confusion, or it could conclude that KPM’s mark is not likely to cause confusion.” (Federal Trademark Infringement—Likelihood of Confusion)
Factual background
IEP owned a registered hexagonal trademark used in connection with explosion-suppression, isolation, and venting equipment and related systems. KPM used a similar hexagonal mark with the words "PROCESS SENSORS CORPORATION" for products including sensors and thermal-imaging equipment used in fire- and explosion-prevention applications. The companies marketed to overlapping customers in the powder and bulk processing industry, shared at least 48 customers, attended at least one of the same trade shows, and advertised through overlapping channels. The record contained no evidence of actual consumer confusion or bad faith, although IEP employees were confused and IEP had lost at least one sale to KPM.
Procedural history
IEP filed suit in March 2021 against KPM Analytics, Incorporated and KPM Analytics North America Corporation. IEP asserted Lanham Act claims, common-law trademark and unfair competition claims, and a Chapter 93A claim. KPM later filed counterclaims seeking cancellation of IEP's trademark registration, but those counterclaims were not resolved in this decision. The court denied both parties' motions for summary judgment and granted KPM's expert-exclusion motion in part while denying it in part.