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Industrial Automation, Inc. v. Industrial Automation

United States District Court, W.D. Kentucky, Bowling Green Division

June 16, 2015

INDUSTRIAL AUTOMATION, INC., Plaintiff,
v.
INDUSTRIAL AUTOMATION d/b/a INDUSTRIAL AUTOMATION OF KENTUCKY, LLC, Defendant.

MEMORANDUM OPINION AND ORDER

GREG N. STIVERS, District Judge.

This matter is before the Court upon a motion by Plaintiff, Industrial Automation, Inc., seeking a preliminary injunction against Defendant, Industrial Automation of Kentucky, LLC d/b/a Industrial Automation of Kentucky. (Pl.'s Mot. for Prelim. Inj., DN 7). Plaintiff seeks to enjoin Defendant from the use of "Industrial Automation" as a component of the Defendant's business name during the pendency of the litigation. Fully briefed, this matter is ripe for decision.

I. STATEMENT OF FACTS AND CLAIMS

Plaintiff is a corporation, organized under Kentucky law on October 11, 1994, with its principal place of business located in Russellville, Kentucky. (Pl.'s Mem. in Supp. of Mot. for Prelim. Inj. 1-2, DN 7-1).[1] Plaintiff alleges it provides services and expertise related to automated solutions for various industrial clients in the region. (Cantrell Aff. ¶ 3, DN 11-1).

On December 15, 2014 Plaintiff registered the mark INDUSTRIAL AUTOMATION, INC. with the Kentucky Secretary of State. (Pl.'s Mot. for Prelim. Inj. Ex. B at 1, DN 7-2). Plaintiff had also registered the INDUSTRIAL AUTOMATION service mark with the Tennessee Secretary of State on July 15, 2014. (Pl.'s Mot. for Prelim. Inj. Ex. B at 2-3).

Defendant is a limited liability company, organized under Michigan law, with its primary place of business in Rochester Hills, Michigan. (Pl.'s Mem. in Supp. of Mot. for Prelim. Inj. at 1, DN 7-1). Defendant has done business under the name Industrial Automation, LLC since 1992 and has full service locations in three states as well as Mexico. (Gust Aff ¶ 3, DN 10-1). Defendant initiated its Franklin, Kentucky, operation in April of 2011, and renders services virtually identical to those of Plaintiff. (Cantrell Aff. ¶ 3). Defendant is registered as a foreign business entity with the Kentucky Secretary of State under the assumed name "Industrial Automation of Kentucky, LLC." (Pl.'s Reply to Def.'s Resp. to Pl.'s Mot. for Prelim. Inj. Ex 2, DN 11-2).

The parties have coexisted for four years within 30 miles of one another. During that time, however, Plaintiff contends that customers and suppliers have confused the businesses, tarnishing Plaintiff's reputation. In support of this claim, Plaintiff cites instances of receiving vendor invoices intended for Defendant and receiving a direct deposit payment intended for Defendant. (Pl.'s Mem. in Supp. of Mot. for Prelim. Inj. Ex. I, DN 7-2; Pl.'s Supplement to Mot. for Prelim. Inj. Exs. A-C, DN 9-1 to 9-3). Plaintiff also alleges that it received a phone call from a customer complaining about a price quotation that had actually been given by Defendant. (Pl.'s Mem. in Supp. of Mot. for Prelim. Inj. 1, DN 7-1). Finally, Plaintiff cites an error in the most recent iteration of the area phonebook that appears to indicate the two businesses are merely separate locations of the same entity as evidence of confusion. (Pl.'s Mot. for Prelim. Inj. Ex. E at 2, DN 7-2).

On February 19, 2015 Plaintiff demanded that Defendant cease the use of "Industrial Automation" in its business name; Defendant refused. (Pl.'s Supplement to Mot. for Prelim. Inj. Ex. E, DN 9-5). Subsequently, Plaintiff filed the present action against Defendant in Logan Circuit Court for service mark/trademark infringement and unfair competition. (Compl. 3-4, DN 1-2). Plaintiff additionally filed the instant motion seeking immediate injunctive relief. (Compl. 128). Defendant removed the action to federal court and filed a counterclaim seeking cancelation of Plaintiff's service mark on the basis that INDUSTRIAL AUTOMATION is too generic to be distinctive or develop secondary meaning. (Answer 8-9, DN 8). It is on this same basis that Defendant opposes the present motion. (Def.'s Resp. to Pl.'s Mot. for Prelim. Inj., DN 10).

II. STANDARD OF REVIEW

"A preliminary injunction is an extraordinary remedy that is generally used to preserve the status quo between the parties pending a final decision of the merits of the action." IP, LLC v. Interstate Vape, Inc., No. 1:14CV-00133-JHM, 2014 WL 5791353, at *2 (W.D. Ky. Nov. 6, 2014). In determining whether to issue a preliminary injunction, the Court will consider four factors: "(1) whether the movant has a strong likelihood of success on the merits; (2) whether the movant would suffer irreparable injury without the injunction; (3) whether issuance of the injunction would cause substantial harm to others; and (4) whether the public interest would be served by the issuance of the injunction." Certified Restoration Dry Cleaning Network, LLC v. Tenke Corp., 511 F.3d 535, 542 (6th Cir. 2007) (quoting Tumblebus Inc. v. Cranmer, 399 F.3d 754, 760 (6th Cir. 2005)). The Court will make specific findings concerning each factor, "unless fewer are dispositive of the issue." In re DeLorean Motor Co., 755 F.2d 1223, 1228 (6th Cir. 1985) (citing United States v. Sch. Dist. of Ferndale, Mich., 577 F.2d 1339, 1352 (6th Cir. 1978)).

III. DISCUSSION

A. Likelihood of Success on the Merits

As a threshold matter, a successful action for service mark infringement requires a plaintiff to demonstrate that the mark at issue is a valid, protectable service mark.[2] See Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002) ("A necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark."(citation omitted)). In determining whether a service mark is valid it is well established that ""[a] generic term is the weakest type of mark; it is a term used to commonly describe the relevant type of goods or services, and cannot become a trademark under any circumstances." Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1116-17 (6th Cir. 1996) (internal quotation marks omitted) (citation omitted). Finally, "[w]hether a name is generic is a question of fact." Bath & Body Works, Inc. v. Luzier Personalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir. 1996) (citation omitted).

It is undisputed that Plaintiff has obtained state registrations of INDUSTRIAL AUTOMATION, INC. in Kentucky and INDUSTRIAL AUTOMATION in Tennessee. (Pl.'s Mem. in Supp. of Mot. for Prelim. Inj. Ex. B, DN 7-1). "If a trademark has been registered, there is a presumption that term is not generic and the defendant must overcome the presumption." Bath & Body Works, 76 F.3d at 748 (citation omitted). In this case, industrial automation is "the use of control systems, such as computers or robots, and information technologies for handling different processes and machineries in an industry to replace a human being." (Pl.'s Supplement to Mot. for Prelim. Inj. Ex. E at 4, DN 9-5). Plaintiff offers services for engineering "control systems integration and the design and development of process control systems for industrial operations and manufacturing and process equipment, and the installation and optimization of process control software for manufacturing processes and equipment." (Pl.'s Mot. for Prelim. Inj. Ex. G at 3-4, DN 7-2). Simply put, Plaintiff's business is industrial automation. In other words, the name of the company strictly defines and ...


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