Lumino, Inc. v. Lumi Importing Ltd.

Summary

The United States District Court for the Western District of Wisconsin addresses multiple motions in a trademark infringement and deceptive trade practices action between Lumino, Inc. and Lumi Importing Ltd. The court partially grants and denies Lumino’s motion to dismiss Lumi’s counterclaims, allowing fraud-based cancellation claims to proceed while dismissing certain claims barred by trademark incontestability provisions. The court denies the parties’ motions for partial summary judgment and resolves additional motions concerning supplementation of the record, trial bifurcation, expert disclosures, and continuance of trial.

Holdings

1. Counterclaims II and V were barred by the incontestability provisions of 15 U.S.C. § 1065 because they did not fit within an applicable statutory exception, and Lumino's motion to dismiss those counterclaims was granted.
2. Counterclaims III and VI were permitted to proceed because 15 U.S.C. § 1064(6) allows cancellation at any time after the applicable period when a registered mark has never been used in commerce for some or all of the identified goods.
3. Counterclaims IV and VII adequately pleaded fraud because Lumi alleged with sufficient particularity that Lumino knowingly and intentionally misrepresented use of the LUMINO mark in its applications and declarations of use and incontestability.
4. Lumino was not entitled to summary judgment because conflicting recorded assignments created a factual ambiguity about whether the LUMI mark was assigned in May 2020, before the statement of use, or in November 2023, after the statement of use.
5. Lumi was not entitled to summary judgment because a reasonable jury could find a likelihood of confusion between the LUMI and LUMINO marks when considering the marks, overlapping products, shared retail channels, actual-confusion evidence, and related factors as a whole.
6. The court denied Lumi's request to defer damages-expert disclosures because the requested delay would unfairly benefit Lumi and jeopardize existing trial deadlines.

Questions Presented

1. Whether Lumi's counterclaims seeking cancellation of Lumino's registrations for lack of bona fide use, nonuse, and fraud were adequately pleaded.
2. Whether Lumino was entitled to summary judgment on its claim that Lumi's registration was illegally assigned in violation of the Lanham Act's anti-trafficking provision.
3. Whether Lumi was entitled to summary judgment on Lumino's federal and common-law infringement and unfair-competition claims based on the absence of a likelihood of confusion.
4. Whether Lumi should be permitted to supplement its proposed findings of fact with late-produced survey evidence and an expert report.
5. Whether the trial should be bifurcated and damages-expert disclosures deferred.
6. Whether the trial and remaining deadlines should be continued.

Disposition

other