Aero-Motive Co. v. U.S. Aeromotive - 922 F. Supp. 29 (W.D. Mich. 1996)

Rule:

Eight factors must be considered when determining if there is a likelihood of confusion between trademarks: (1) the strength of plaintiff's mark, (2) the relatedness of the products or services, (3) the similarity of the marks, (4) evidence of actual confusion, (5) the marketing channels used, (6) the likely degree of purchaser care and sophistication, (7) the intent of the defendant in selecting its mark, and (8) the likelihood of expansion of the product lines using the mark.

Facts:

Plaintiff Aero-Motive Company, a product manufacturer, operated its business under two registered trademarks that were incontestable. Defendant was engaged in the contract manufacturing business, and began its business under the corporate name “Tape Tech, Inc.” It later changed its name to “U.S. Aeromotive, Inc.” in order to acquire a name which more accurately described its actual business. Subsequently, defendant, through the Killworth law firm, filed an intent to use trademark registration application in the U.S. Patent and Trademark Office, attempting to register the mark "U.S. Aeromotive." Plaintiff first became aware of defendant's application when it was published for opposition in the Official Gazette of the U.S. Patent and Trademark Office. Immediately upon learning of defendant's application, plaintiff filed an opposition in the Patent and Trademark Office. Thereafter, plaintiff filed the present action against defendant, alleging false designation of origin, trade name, and service mark infringement and dilution of trade name under the Trademark (Lanham) Act of 1946, as amended, 15 U.S.C. §§ 1051, et seq., and for unfair competition under the common law of Michigan. Plaintiff sought a permanent injunction, damages and attorney fees.

Issue:

1. Did the defendant’s name constitute false designation of origin, trade name and service mark infringement, and dilution of trade name under Michigan common law and the Lanham Act of 1946, thereby entitling plaintiff to an injunction?
2. Should the defendant be held liable for attorney’s fees?

Answer:

1) Yes. 2) No.

Conclusion:

The court awarded plaintiff an injunction because it determined that the balance of an eight-factor test determining the likelihood of confusion, the strength of plaintiff's trademark, and the irreparable harm plaintiff would suffer, weighed in favor of a permanent injunction. However, the court reasoned that attorney fees were improper because defendant did not willfully infringe plaintiff's trade name, as it chose the name under the advice of counsel.