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Wynn Oil Co. v. American Way Serv. Corp.

United States Court of Appeals for the Sixth Circuit

August 2, 1991, Argued ; August 20, 1991, Decided ; August 20, 1991, Filed

Nos. 90-1817, 90-1871, 90-2035

Opinion

 [***1817]   [*597]  MILBURN, Circuit Judge

Defendants-appellants/cross-appellees American Way Service Corporation ("American Way") and Thomas Warmus, the president and sole shareholder of American Way, appeal from an order amending the judgment of the district court. Defendants challenge both the original judgment entered in favor of plaintiff-appellee/cross-appellant Wynn Oil Company ("Wynn") and the amended judgment entered June 26, 1989. Wynn's cross-appeal challenges the district court's failure to award damages upon finding that defendants had engaged in trademark infringement and unfair [**2]  competition. Also, defendants appeal the district court's order of August 16, 1990, awarding costs and attorney fees of $ 47,303.47 to plaintiff.

The principal issues presented in this appeal are: (1) whether the district court erred in determining that defendants' use of the mark constituted trademark infringement in violation of 15 U.S.C. § 1114; (2) whether the district court erred in determining that defendants' use of the mark constituted unfair competition in violation of 15 U.S.C. § 1125(a); (3) whether the district court erred in determining that defendants' use of the mark constituted trademark infringement and unfair competition under Michigan common law; (4) whether the district court erred in declining to award damages to Wynn based on defendants' profits; (5) whether the district court erred in finding this to be an exceptional case which justified the award of approximately $ 47,000 in attorney fees; and (6) whether the district court erred in granting injunctive relief as originally ordered or as amended. For the reasons that follow, we affirm in part, reverse in part, and remand. [***1818]  

On June 5, 1989, Wynn filed this action against defendants seeking damages from  [**3]  defendants' use of Wynn's registered trademark "X-TEND," and demanding an injunction against further use of the mark. Wynn alleged trademark infringement and unfair competition in violation of 15 U.S.C. §§ 1114 and 1125(a) as well as trademark infringement and unfair competition under Michigan common law. 1 

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943 F.2d 595 *; 1991 U.S. App. LEXIS 19185 **; 19 U.S.P.Q.2D (BNA) 1815 ***

WYNN OIL COMPANY, Plaintiff-Appellee/Cross-Appellant, v. AMERICAN WAY SERVICE CORPORATION, and THOMAS A. WARMUS, Defendants-Appellants/Cross-Appellees

Subsequent History:  [**1]  Rehearing Denied September 18, 1991, Reported at: 1991 U.S. App. LEXIS 22483.

Prior History: On Appeal from the United States District Court for the Eastern District of Michigan; Ann Diggs Taylor, District Judge.

CORE TERMS

district court, infringement, profits, defendants', warranty, trademark, unfair competition, attorney's fees, factors, likelihood of confusion, injunction, marketed, service contract, products, trademark infringement, damages, costs, relatedness, advertised, consumer, marks, injunctive relief, registered, sales, purchaser, cease, no evidence, ascertain, dealers, award of attorney's fees

Civil Procedure, Appeals, Standards of Review, De Novo Review, Trademark Law, Consumer Confusion, Circuit Court Factors, General Overview, Clearly Erroneous Review, Causes of Action Involving Trademarks, Infringement Actions, Clearly Erroneous, Likelihood of Confusion, Similarity of Marks, Appearance, Meaning & Sound, Factors for Determining Confusion, Intent of Defendant to Confuse, Business & Corporate Compliance, Trademark Cancellation & Establishment, Registration Procedures, Federal Registration, Incontestability, Determinations, Remedies, Damages, Copyright Law, Types of Damages, Infringement Profits, Conveyances, Profits, Types of Commercial Transactions, Sales of Goods, Antitrust & Trade Law, Private Actions, Costs & Attorney Fees, Clayton Act, Injunctions, Grounds for Injunctions, Irreparable Harm, Equitable Relief