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Engineered Mech. Servs. v. Applied Mech. Tech., Inc.

United States District Court for the Middle District of Louisiana

April 11, 1984

Civil Action No. 81-663-A



This action is brought by Engineered Mechanical Services, Inc. (EMS), a Louisiana corporation (formerly known as "The Metalock Corporation") and Metalock Corporation (Metalock Corp.) an Illinois corporation, asserting trademark and service mark infringement under the Lanham Act, 15 U.S.C. § 1114(1). This court has jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. § 1338. Defendants are Gonzales Machine, Inc. (Gonzales) a Louisiana corporation, Gerald D. Whitehouse (Whitehouse) a Louisiana citizen and Applied Technology, Inc. (AMTEC) a Louisiana corporation. While certain pendent state law claims were also asserted in the original complaint, the court has dismissed all of them because of pending state court litigation between the same parties. Only the federal trademark claims remain.

Plaintiff, Metalock Corporation, is the registered owner of the trademark METALOCK, registered on May 3, 1938 for [**2]  "METALIC RODS AND ELEMENTS FOR REPAIRING CRACKED OR BROKEN CASTINGS OF STEEL, IRON OR OTHER METAL," renewed on May 3, 1958 and renewed again on May 3, 1978. Plaintiff, Metalock Corp., is also the registered owner of the service mark "METALOCK" registered November 4, 1980, for MACHINERY AND CASTING REPAIR SERVICES." Plaintiff, EMS, holds a license from Metalock Corporation for both marks. Plaintiff, Metalock Corporation, also owns the trademarks MASTERLOCK and METALACE which, all concede, defendants have not used and are not at issue in this litigation.

Plaintiffs assert that defendants have infringed their marks. The defendants' assert a variety of defenses, including that the term METALOCK is or has become a generic term and thus it is not entitled to registration, that METALOCK is merely descriptive and that the defendants have used the term only in a descriptive manner and are entitled to assert the "fair use" defense, that plaintiffs have abandoned the marks and that likelihood of confusion has not been shown. Defendants also originally claimed that the manner of use by the plaintiffs violated the anti-trust laws of the United States but, since they offered no [***325]   [*1152]  evidence [**3]  in support of that claim and make no mention of it in post-trial brief, it is considered abandoned.

The term METALOCK was coined, or at least used and registered, by one Lawrence B. Scott to identify a process for repairing cracked or broken machinery or castings, as well as to identify the metal bars or fasteners used as "locks." As set forth in a 1946 brochure used by Scott's company, the mark is shown as follows:

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584 F. Supp. 1149 *; 1984 U.S. Dist. LEXIS 17703 **; 223 U.S.P.Q. (BNA) 324 ***



METALOCK, repairs, trademark, metal, cold, license, infringers, Casting, patent, repair service, abandonment, registered, licensees, generic, Products, generic term, cracked, quality control, registration, utilization, brochure, broken, rights, brand, locks, terms, secondary meaning, advertising, Machinery, fasteners

Antitrust & Trade Law, Robinson-Patman Act, Defenses, Trademark Law, Likelihood of Confusion, General Overview, Clayton Act, Evidence, Inferences & Presumptions, Consumer Confusion, Registration Procedures, Federal Registration, Federal Registration as Evidence, Business & Corporate Compliance, Trademark Cancellation & Establishment, Incontestability, Continuing Use Requirement, Subject Matter of Trademarks, Eligibility for Trademark Protection, Strength of Trademark, Terms Requiring Secondary Meaning, Special Marks, Trade Names, Descriptive & Laudatory Terms, Determinations of Protectability, Names, Generic Names, Terms With Inherent Distinctiveness, Suggestive Terms, Federal Registration, US Trademark Trial & Appeal Board Proceedings, Cancellations, Infringement Actions, Defenses, Defenses to Incontestability, Fair Use, Trademark Law, Abandonment, Intentional Abandonment, Unintentional Abandonment, Loss of Significance, Uncontrolled Licensing, Criminal Law & Procedure, Abandonment & Withdrawal, Conveyances, Licenses, Labels, Packaging & Trade Dress, Reviewability, Preservation for Review, Abandonment, Similarity of Marks, Appearance, Meaning & Sound