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Optimum Techs., Inc. v. Home Depot U.S.A., Inc.

United States Court of Appeals for the Eleventh Circuit

February 14, 2007, Decided ; February 14, 2007, Filed

No. 06-14432 Non-Argument Calendar

Opinion

 [*901]  PER CURIAM:

Optimum Technologies, Inc. ("Optimum") filed suit against Home Depot, Inc. ("Home Depot") alleging that Home Depot committed trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114, and false advertising in violation of 15 U.S.C. § 1125(a). Home Depot sought partial summary judgment as to Optimum's claim for monetary damages under the Lanham Act and for Optimum's claim of false advertising. The district court granted Home Depot's motion. The district court found [**2]  that Optimum's claim for monetary damages, which consisted of Home Depot's profits, attorney fees, and enhanced damages, were not appropriate under the facts of this case. Optimum appeals the district court's decision concerning Optimum's claim for monetary damages. Optimum does not appeal the court's order dismissing the false adverting claim.

BACKGROUND

Optimum is a family owned company that sells a variety of floor related products. Optimum's best selling product is the Lok-Lift Gripper ("Lok-Lift"). This product is applied in strips to the back of rugs and mats to secure them in place and prevent slippage on hard floors and carpets. Optimum is the registered owner of the Lok-Lift mark.

From 1994 until January 2003, Optimum sold the Lok-Lift product to Home Depot through a joint venture partnership between Optimum and Henkel Consumer Adhesives, Inc. ("Henkle"). Pursuant to this partnership, Henkle purchased the Lok-Lift product from Optimum then distributed it to various retailers, including Home Depot. In 1998, Henkle began developing its own material that could be used to hold carpets and mats in place on floors. Henkle's product, which was later named Hold-It for Rugs ("Hold-It"),  [**3]  is similar to Optimum's Lok-Lift product; however, the Hold-It product is not intended to be used to hold rugs in place on carpets, only floors.

In October 2002, Henkle provided Home Depot with notice that it intended to substitute its Hold-It product in the place of the Lok-Lift product. Henkle began the announced product change sometime between December 2002 and January 2003. As the product change over occurred, Henkle sent Home Depot Hold-It with the same product number and tracking information as the Lok-Lift product. Therefore, Home Depot's computer system did not reflect that the products had changed. Accordingly, Home Depot did not update its shelf tags, which still bore the name Lok-Lift, and Home Depot's cash register receipts reflected that Lok-Lift had been purchased even if Hold-It had actually been purchased. However, the Hold-It product that was sold at Home Depot was packaged and marked with the name Hold-It and had no reference to Lok-Lift or Optimum.

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217 Fed. Appx. 899 *; 2007 U.S. App. LEXIS 3392 **

OPTIMUM TECHNOLOGIES, INC., Plaintiff-Appellant, versus HOME DEPOT U.S.A., INC., ACE HARDWARE CORPORATION, Defendants-Appellees.

Notice:  [**1]  NOT FOR PUBLICATION

Prior History: Appeal from the United States District Court for the Northern District of Georgia. D. C. Docket No. 04-03260-CV-TWT-1.

Optimum Techs., Inc. v. Home Depot USA, Inc., 2005 U.S. Dist. LEXIS 34776 (N.D. Ga., Dec. 2, 2005)

Disposition: AFFIRM.

CORE TERMS

infringement, district court, profits, attorney's fees, receipts, willful, tags, enhanced damage, no evidence, monetary, register, damages, rectify

Civil Procedure, Appeals, Standards of Review, De Novo Review, Summary Judgment Review, Standards of Review, Trademark Law, Infringement Actions, Abuse of Discretion, Remedies, General Overview, Damages, Types of Damages, Costs & Attorney Fees, Profits, Causes of Action Involving Trademarks, Equitable Relief, Equitable Accountings, Litigation Costs, Treble Damages