Deere & Co. v. FIMCO Inc.

Citations: 239 F. Supp. 3d 964; 97 Fed. R. Serv. 3d 53; 2017 U.S. Dist. LEXIS 32731; 2017 WL 927235Docket: CASE NO. 5:15-CV-105-TBR

Court: District Court, W.D. Kentucky; March 7, 2017; Federal District Court

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Deere Company alleges that FIMCO Inc. infringes on its federal trademark rights by using a green and yellow color scheme on agricultural equipment, which Deere claims violates both federal trademark law and common law. There are ongoing motions for summary judgment from both parties. Deere seeks partial summary judgment on its trademark dilution claim, while also responding to FIMCO's affirmative defenses, including functionality, laches, acquiescence, and estoppel. The court denies Deere's motion regarding the dilution claim and certain affirmative defenses but grants it concerning FIMCO's functionality defense and laches/implied license defenses. FIMCO's motion for summary judgment, asserting that Deere lacks trademark rights in yellow tanks and that its trademarks are not incontestable, is denied. 

Deere has three registered trademarks related to its color scheme, obtained in 1988 and 2010, which protect various agricultural equipment. In addition to these registrations, Deere claims common law protection for its color combination. FIMCO, which produces lawn sprayers and agricultural equipment, markets products in multiple colors, including Deere's trademark colors. Deere first became aware of FIMCO's use of the colors in 2011 and attempted unsuccessfully to resolve the issue before filing suit on April 27, 2015. The suit includes allegations of trademark infringement, federal false designation of origin, trademark dilution, and common law trademark infringement.

Deere is seeking a permanent injunction to prevent FIMCO from using the Deere Colors trademark on its agricultural equipment and to stop FIMCO from using yellow tanks or wheels with green vehicle bodies. FIMCO denies any infringement, asserting that it and its predecessor have used these colors historically, and raises defenses including laches, estoppel, implied license, acquiescence, and functionality. FIMCO has also filed four counterclaims against Deere, seeking a declaratory judgment to establish that it has not infringed or diluted Deere's trademarks and that its product origins are not falsely designated. The third counterclaim seeks to invalidate Deere’s trademarks under 15 U.S.C. § 1119, arguing that the yellow and green colors are functional and thus not valid trademarks.

Before addressing the summary judgment motions, the court must resolve several pending non-dispositive motions, including FIMCO’s Motion in Limine to exclude testimony from Deere’s expert William Shanks. The court denied this motion, finding Shanks qualified based on his extensive experience as an investigator in intellectual property. Shanks conducted interviews with salespeople at dealers, who consistently associated the yellow and green colors with Deere, supporting Deere's position that these colors are recognized as linked to its brand.

Shanks conducted an investigation by posing as an employee of a film production company interested in renting or purchasing agricultural equipment, aiming to appear less knowledgeable to encourage dealers to educate him. His approach involved informal, candid conversations to elicit honest feedback from respondents. In the ongoing legal motion, FIMCO challenges Shanks' qualifications to testify, arguing that his findings are irrelevant, unreliable, and based on inadmissible hearsay. Deere counters that Shanks meets the qualifications under Federal Rule of Evidence 702 due to his 20 years of experience as a private investigator, which includes developing personas and conducting investigations. The Court agrees with Deere, stating that Shanks' specialized knowledge aids in understanding the evidence and is based on reliable methods. 

FIMCO contends that Shanks’ methodology skewed results, claiming that respondents tailored their answers based on his pretext as a film producer. They argue that the questioning style led to guesses rather than informed responses and that open-ended questions could create demand effects, resulting in biased answers favoring well-known brands. FIMCO emphasizes the need for caution when interpreting responses to open-ended survey questions, as respondents may simply recall dominant brands rather than providing thoughtful insights.

FIMCO asserts that Shanks' testimony is not beneficial for the trier of fact and cannot qualify as expert testimony due to inadequate methodologies and results. FIMCO critiques Shanks' notes for only approximating interview conversations, inconsistencies in his questioning, and lack of context. While these criticisms suggest diminished weight for Shanks' findings, they do not necessitate exclusion of his testimony. Case law indicates that, under the Daubert standard, methodological errors in surveys affect the weight given to the survey rather than its admissibility, allowing courts to limit the importance of flawed studies in confusion analyses. Courts generally accept professionally conducted surveys relevant to the case, with any deficiencies impacting their evidentiary weight. Complete exclusion of survey evidence is reserved for situations where the designer lacks expertise or the survey lacks professionalism and reliability. FIMCO's challenges are characterized as technical inadequacies, which do not warrant exclusion. Furthermore, FIMCO argues that Shanks' report relies exclusively on hearsay from dealer interviews, rendering it inadmissible. However, established legal precedent affirms that evidence regarding the state of mind of survey participants is not considered hearsay and is admissible.

Survey results are considered admissible evidence as they reflect the state of mind of interviewees, falling under Fed. R. Evid. 803(3). These results can support expert witness opinions regarding likelihood of confusion in trademark cases. Shanks' survey questioned dealers about their perceptions of the colors green and yellow on agricultural equipment, and the court determined that the responses represented the states of mind of those polled, thus not constituting inadmissible hearsay. Additionally, under Rule 703, expert witnesses may rely on inadmissible data, provided it is the type experts in the field would reasonably consider in forming opinions. The court found Shanks' methodology acceptable, leading to the denial of FIMCO’s motion to exclude his testimony.

Deere’s motion to exclude the expert reports and testimonies of five FIMCO witnesses was partially granted and partially denied. The witnesses include Mark Schwarz, David Staack, Albert Kessler, Todd Yeazel, and Cindy Perkins, all of whom claim familiarity with the U.S. agricultural equipment industry. Deere argued that the experts did not prepare their own reports, violating Rule 26 of the Federal Rules of Civil Procedure, as each report contained identical language and heavily referenced FIMCO's pleadings.

Witnesses acknowledged during depositions that FIMCO’s counsel completely drafted their reports without any substantive changes by the experts. Prior to receiving the drafts, each witness had a brief conversation with FIMCO’s counsel and participated in a group call after the drafts were circulated. Although the reports included four exhibits, such as photographs and catalogs of JDD, Ag Spray, and John Deere products, the witnesses stated they neither requested these documents nor relied on them in forming their opinions. Deere contends that, under Rule 26(a)(2)(B), the reports must be excluded because they were not 'prepared and signed by the witness(es).' Rule 37(c)(1) stipulates that if a party fails to provide required information, they cannot use that information or witness in proceedings unless justified. FIMCO counters that Rule 26(a)(2)(B) is not applicable since the five witnesses were not retained or regularly employed for expert testimony, asserting that Rule 26(a)(2)(C) governs their disclosure requirements instead. This rule necessitates stating the subject matter of the expected testimony and summarizing the facts and opinions. The Court concurs, noting that the 2010 amendment aimed to clarify the distinction between expert witnesses subject to Rule 26(a)(2)(B) and those under the less stringent Rule 26(a)(2)(C). The analysis in the case of Call v. City of Riverside supports this interpretation, emphasizing that Rule 26(a)(2)(C) applies to hybrid witnesses who are primarily fact witnesses but can also provide expert testimony.

Hybrid witnesses, such as treating physicians, serve dual roles as both fact witnesses and experts due to their relevant education and experience. In *Fielden v. CSX Transp. Inc.*, the Sixth Circuit ruled that a treating physician was not obligated to provide a report, as he formed his causation opinion during treatment without influence from the plaintiff's counsel. The court in *Downey v. Bob’s Discount Furniture Holdings, Inc.* clarified that a non-retained expert, like an exterminator involved in a bed bug outbreak, does not count as "retained or specially employed" because his opinions stemmed from his direct involvement, not from a formal recruitment for expert testimony. The distinction made is critical; a treating physician's opinions developed during the course of treatment are not considered expert testimony per Rule 26(a)(2)(B). In contrast, experts who analyze facts provided by others post-incident, like a racing mechanic assessing a vehicle after an accident, are deemed retained experts. Similarly, in *Beane v. Utility Trailer Manufacturing Co.*, experts without firsthand knowledge of the case's specifics were classified as retained because their insights were formed solely for the purpose of litigation. Each case emphasizes the importance of the context in which expert opinions are formed to determine their classification under the law.

The Beane court differentiates its case from others that interpreted Rule 26(a)(2)(C) to mean that expert witnesses’ conclusions must stem from firsthand knowledge related to the lawsuit. The court finds FIMCO’s five expert witnesses comparable to treating physicians, exempt from the detailed report requirements of Rule 26(a)(2)(B). Unlike experts in previous cases who based their opinions on information supplied by others, FIMCO’s experts possess firsthand knowledge from their involvement in the agricultural equipment industry, specifically regarding sales of Deere and FIMCO products. Each expert's disclosure indicates familiarity with the industry, supported by extensive experience and interactions with industry representatives and customers. The court asserts that FIMCO’s experts did not conduct evaluations after the fact but provided opinions grounded in their existing knowledge. Consequently, the court concludes that these witnesses are only required to meet the disclosure standards of Rule 26(a)(2)(C), which mandates a summary of the subject matter of their testimony and the facts and opinions they will present. The court affirms that the disclosures submitted by FIMCO meet these requirements and that there is no need to exclude them under Rule 37(e)(1). Furthermore, Deere argues that the witnesses' testimony is inadmissible due to reliance on unsupported subjective experiences, which they assert cannot form a valid expert opinion per Rule 702 and relevant case law.

Deere contends that the expert witnesses' opinions are inadmissible as they do not stem from the witnesses' direct perceptions or observations, qualifying them as improper lay opinion testimony. Under Rule 702 of the Federal Rules of Evidence, expert testimony must be qualified by the expert's knowledge, skill, experience, training, or education, and must assist the trier of fact in understanding the evidence or determining an issue, be based on sufficient facts or data, adhere to reliable principles and methods, and demonstrate an application of these principles to the case facts. The trial court acts as a gatekeeper, excluding unreliable and irrelevant evidence, guided by a flexible inquiry that focuses on the expert's principles and methodology rather than their conclusions. 

The factors to assess the reliability of expert testimony, established in *Daubert v. Merrell Dow Pharmaceuticals*, include whether the theory has been tested, subjected to peer review, has a known rate of error, and enjoys acceptance in the scientific community. However, these factors are not universally applicable; their relevance may vary based on the context, particularly when the expert's knowledge derives from personal experience, as seen in *Barreto*. Trial judges have significant discretion in evaluating expert reliability, and their decisions are reviewed for abuse of discretion. The Sixth Circuit interprets Rule 702 as requiring both qualification and a two-part test for relevance regarding the expert's testimony. 

In this case, Deere argues that the expert opinions claiming no consumer confusion regarding the manufacturer of FIMCO’s agricultural equipment lack a proper basis. The court concurs, noting that the witnesses' opinions are based solely on their training, background, and experience, including consumer interactions and personal farming experience.

A party claiming trademark infringement typically relies on consumer surveys to demonstrate the likelihood of consumer confusion. Courts generally find expert testimony on likelihood of confusion inadmissible unless it is based on scientifically conducted surveys. For instance, in a case where an expert's opinion was deemed unreliable because it was based solely on personal knowledge rather than a consumer survey, the court highlighted that expert witnesses lacking a factual basis for their conclusions about consumer perceptions cannot testify on this matter. Although the absence of a consumer survey does not automatically invalidate an expert's opinion, any expert who has not conducted such a survey must present a reliable alternative methodology to support their claims of confusion or lack thereof. In the current case, witnesses from FIMCO failed to demonstrate such methodologies; their conclusions were primarily based on anecdotal experiences rather than empirical evidence. Thus, while they can share their personal interactions with customers, their opinions regarding the likelihood of confusion among U.S. consumers are deemed insufficiently reliable.

The Court deems the testimony regarding consumer deception by FIMCO's products as inadmissible, agreeing with Deere that the confusion inquiry is closely linked to deception. Consequently, the Court grants Deere’s motion to exclude expert testimony related to the likelihood of confusion or deception among U.S. consumers. However, the Court allows experts to testify on subsidiary factual questions, including sales and advertising methods, consumer sophistication, and purchasing care in the agricultural equipment market. The Court finds permissible the witnesses' assertions that purchasers are knowledgeable and conduct thorough research before buying equipment.

Despite Deere’s claims that the experts lacked research to support their statements, the Court determines these concerns are proper for cross-examination rather than grounds for exclusion. The witnesses’ opinions regarding the use of green and yellow by multiple manufacturers are also deemed acceptable, as they provided specific examples during depositions. The Court acknowledges that while some identified manufacturers may no longer use those colors, such claims do not warrant exclusion of testimony but can be addressed in cross-examination. Additionally, the opinion that self-propelled agricultural sprayers do not compete with trailed sprayers is included as permissible testimony.

Expert testimony regarding the similarity of markets in trademark cases is deemed reliable. The court dismisses Deere's objection that witnesses lack a proper basis for their opinions, noting that witness Kessler's assertion about price differences reflects a valid perspective. The absence of research by the witnesses is viewed as affecting the weight of their testimony rather than its admissibility. Witnesses opine that the colors green and yellow are crucial for purchasers of John Deere tractors, as consumers prefer to match their equipment. Despite Deere's claim of inadequate investigation, the court finds that the witnesses' industry experience provides a sufficient foundation for their opinions. They collectively argue that John Deere's dominant market position would disadvantage FIMCO if it could not offer products in these colors. The court concludes that the witnesses present credible testimony about the importance of color matching to consumers, affirming the reliability of their opinions based on industry observations.

Deere contends that claims regarding potential sales losses and competitive disadvantages are speculative. The Court allows Deere to challenge these claims during cross-examination and will assess the testimony appropriately. Consequently, Deere's motion to exclude certain witness testimony about customer confusion is partially granted, while other aspects are denied. 

Regarding Deere's motion to strike FIMCO’s sales assertions in response to Deere's summary judgment motion, Deere alleges that FIMCO did not provide relevant sales information during discovery, impacting Deere's claims for injunctive relief and progressive encroachment. FIMCO countered by stating that its green and yellow product sales are a minor portion of its revenue compared to Deere’s $29 billion annual revenue and that its sales have fluctuated with economic trends. Deere argues that these statements should be struck since FIMCO initially withheld related information. The Court agrees with Deere and concludes that it cannot rely on FIMCO's sales assertions in ruling on the summary judgment motion, noting that FIMCO failed to support its claim regarding its sales makeup with adequate evidence.

FIMCO claimed that its sales of sprayers and applicators remained constant, fluctuating according to economic trends, citing deposition testimony from owner Kevin Vaughan. However, Vaughan only indicated that FIMCO had not significantly grown since 1994 and provided details about employee numbers, without addressing sales or economic trends. As a result, FIMCO's assertions lack evidentiary support, and the court will not consider them in relation to Deere's summary judgment motion. Under Federal Rule of Civil Procedure 56(e), unsupported factual assertions cannot be accepted as true, and the court emphasized the importance of relying on evidence at the summary judgment stage. Although the court declined to strike these unsupported assertions at this time, it noted that further challenges could arise if FIMCO attempts to introduce supporting evidence at trial. 

Deere also moved to strike new evidence submitted by FIMCO in response to objections raised against its motion for partial summary judgment, asserting that FIMCO failed to properly authenticate evidence and that some materials were inadmissible hearsay. FIMCO countered by providing responses and authenticating evidence in its reply. The court denied Deere's motion to strike, noting that FIMCO’s response to evidentiary objections included new evidence supporting its claims, which Deere contested.

FIMCO submitted evidence to support its motion for summary judgment, which Deere objected to, claiming it was unsupported. Deere contended that FIMCO improperly attempted to introduce new evidence, such as an unsworn expert report and various photographs and catalogs, in its reply brief rather than in the initial motion. FIMCO argued that its additional citations were responses to Deere’s opposition and thus were not “new” evidence. The Court found FIMCO’s efforts to authenticate evidence satisfactory and disagreed with Deere's claim that the declarations constituted new evidence requiring Deere’s response. 

The Court referenced the Sixth Circuit's position on the need for the nonmovant to have the opportunity to respond to new submissions in a reply brief, as outlined in Federal Rule of Civil Procedure 56(c). Deere argued it could have responded had FIMCO submitted its evidence earlier, but notably did not request leave to file a surreply following FIMCO's reply submission, despite having nearly three months to do so. The Court determined that Deere had sufficient opportunity to respond and denied the motion to strike FIMCO's evidence.

Deere has raised objections to evidence submitted by FIMCO in support of its motion for partial summary judgment, as outlined in its response and subsequent reply. Deere cites Federal Rules of Civil Procedure 56(c)(2) and 56(c)(4) for its objections, arguing that certain materials cannot be admitted as evidence due to lack of proper authentication and personal knowledge. Specific items contested include photographs from a 1960 catalog, images from 1957, and a 2016 photo of an agricultural sprayer, all claimed by FIMCO to depict products associated with its predecessor, JDD. FIMCO's CEO, Kevin Vaughan, submitted a declaration asserting these items are accurate representations found in archived records. The Court finds these photographs sufficiently authenticated, overruling Deere's objections.

Deere also challenges deposition testimony from Vaughan regarding the use of specific colors dating back to the 1930s, citing a lack of personal knowledge and hearsay concerns. However, the Court deems this objection moot as it will assess admissibility in the context of the summary judgment motions. Further, Deere objects to testimony from FIMCO's COO, Dave Wipson, which states there has never been confusion regarding FIMCO's products being sold as John Deere equipment. Deere claims this statement constitutes an improper legal conclusion regarding trademark infringement. Nonetheless, Wipson also indicated he is unaware of any consumer confusion between the products.

Wipson clarified that while there is no official survey, based on customer interactions, there has never been confusion regarding the association with John Deere products. Under Federal Rule of Evidence (FRE) 602, a witness may testify only if there is sufficient evidence of personal knowledge, which can include their own testimony. Wipson's testimony was deemed to be grounded in personal knowledge rather than an impermissible legal conclusion about consumer confusion. He also stated that the colors green and yellow represent agriculture rather than Deere, a claim Deere contested as lacking foundation and being improper lay opinion under Rule 702. However, the court accepted Wipson's opinion as valid based on his extensive industry experience.

Deere's objections to the expert report from A1 Kessler were overruled as moot after Kessler submitted a Declaration adopting his report, addressing concerns about it being unsworn hearsay. Additionally, Deere objected to excerpts from Kessler's deposition as based on unsupported experiences and speculations. However, as this challenge had been raised in a separate motion regarding multiple expert testimonies, the court declined to revisit these objections, deeming them moot.

FIMCO's motion to submit additional evidence was denied as moot, as was Deere's motion for a sur-reply in opposition. FIMCO sought to add notes from Deere's expert, Shanks, which were obtained following a granted motion to compel, but the court found both parties' motions unnecessary at this stage.

FIMCO discovered through Shanks’ additional notes that agricultural dealers affirmed that farmers do not confuse John Deere products with FIMCO products, despite initial associations of green and yellow with John Deere. Deere argued that since it did not seek summary judgment on its trademark infringement claim, the relevance of Shanks’ notes, which pertain to consumer confusion, is moot at this stage. Deere's summary judgment motion focused solely on its dilution claim, which requires an association with John Deere products rather than proof of confusion. FIMCO countered that Shanks’ notes are pertinent as confusion implies an association, potentially undermining both infringement and dilution claims. However, the Court deemed it unnecessary to address this issue for now, as it did not evaluate the likelihood of dilution by blurring in its prior ruling. Consequently, FIMCO’s motion to submit the evidence was denied as moot, along with Deere’s request to file a surreply, with both parties allowed to revisit evidence admissibility before trial. 

The standards for summary judgment were outlined, emphasizing that it is appropriate when no genuine dispute of material fact exists, requiring the court to view evidence in favor of the nonmoving party. Competing summary judgment motions must be evaluated separately, and the moving party bears the burden of demonstrating the absence of genuine disputes regarding essential claims or defenses.

The legal standards concerning summary judgment are highlighted, emphasizing that once the moving party meets its burden of production, the non-moving party must present specific facts through various means, such as depositions or affidavits, to show a genuine issue for trial. Not all factual disputes rise to the level of materiality; only those that present a jury question regarding each case element are significant. Mere speculation does not suffice to oppose a summary judgment motion. 

Deere's motion for summary judgment addresses three claims: 1) dilution, 2) FIMCO's defenses of functionality and its counterclaim for trademark cancellation based on functionality, and 3) FIMCO's defenses of laches, acquiescence, estoppel, and implied license. The court denies Deere's motion concerning the dilution claim and FIMCO's defenses of acquiescence and estoppel but grants it regarding FIMCO's functionality defenses and its laches and implied license claims.

Under the Lanham Act, a trademark owner can seek an injunction against dilution of a famous mark, which differs from traditional infringement claims by focusing on the mark's integrity rather than confusion. To prove dilution by blurring, the mark must be famous and distinctive, the junior mark must have been used in commerce after the senior mark gained fame, and such use must likely cause dilution. The essence of dilution by blurring is the impairment of the famous mark's distinctiveness. Actual confusion or competition is irrelevant; the focus is solely on whether the junior mark weakens the senior mark's strength or damages its reputation.

FIMCO contests the claims that Deere's trademark is famous and distinctive, asserting that it began using the green and yellow colors after Deere's mark gained fame and that its usage does not likely cause dilution by blurring. A "famous mark" is defined as one that is widely recognized by the U.S. consuming public as a source identifier for the goods or services of its owner. The 2006 revision to the trademark dilution act allows courts to recognize brands like Nissan, Nike, and Pepsi as famous. To determine if a mark is sufficiently "widely recognized," courts consider four statutory factors: 

1. The duration, extent, and geographic reach of advertising and publicity for the mark.
2. The volume and geographic extent of sales under the mark.
3. The extent of actual recognition of the mark.
4. Whether the mark is registered on the principal register.

Deere details its advertising efforts, noting significant expenditures since the early 1900s, including $34,000 in 1903 and $75.3 million in 2015, emphasizing its use of the yellow and green color scheme in advertising since the 1920s. Regarding sales, Deere reports extensive historical sales figures, with $299.7 million in 1950 and $29 billion today, indicating many products featured the Deere colors. For actual recognition, Deere provides evidence of public acknowledgment of its colors since at least 1923, citing industry publications and popular culture references, including a 1923 article and a 1950 novel that mention the Deere colors.

John Deere is referenced twice in relation to agricultural equipment, highlighting its distinctive green and yellow colors. An article from Smithsonian.com marks the company's historical significance and notes the recognizability of its tractors. Deere presents survey evidence indicating widespread public recognition of its color scheme, with 153 out of 156 respondents identifying a tractor in these colors as belonging to Deere. Additionally, Deere holds three registered trademarks, although they were obtained after the alleged fame of its mark.

The crux of the dispute lies in whether Deere's mark was famous before FIMCO began using similar colors. FIMCO claims to have used the green and yellow scheme since 1932 or 1938, supporting its argument with photographs and a 1960 catalog showing its predecessor, JDD, using these colors on equipment. Deere contests FIMCO's assertion of being JDD's successor, arguing that FIMCO has not provided admissible evidence to substantiate this claim. FIMCO's CEO, Kevin Vaughan, testified about his family's involvement in JDD's history, but his recollection of the company's transition to FIMCO is vague, citing his age at the time and the bankruptcy circumstances. The court finds that genuine disputes of material fact exist concerning the fame of Deere's mark and the timeline of FIMCO's use of the color scheme.

Vaughan describes his father's acquisition of assets from J-D-D through a bankruptcy court, aided by capital raised with three associates. In return for creditor support, his father agreed to pay off the Hoefer family's past debts, which was a condition of the sale approved by the bankruptcy judge. Vaughan speculates that the purchased assets included some tooling, the company name, the building, limited inventory, some rolling stock, and a few patents, but he lacks knowledge about the specifics of receivables and payables from the bankruptcy process. His understanding of FIMCO’s origins stems from family stories shared during Christmas gatherings, as he was only six years old when the company was founded in 1966. After his father’s death in 2011, Vaughan found only a balance sheet revealing J-D-D’s financial difficulties around the time of the acquisition. Deere argues that Vaughan’s testimony about FIMCO being JDD’s successor is based on hearsay, which is inadmissible for establishing material facts in opposition to a summary judgment motion under Federal Rules of Civil Procedure and Evidence. Consequently, FIMCO's evidence relies solely on hearsay from Vaughan’s father, and Vaughan lacks detailed knowledge of the asset acquisition that purportedly occurred in 1966.

FIMCO's response to Deere's evidentiary issues fails to present a genuine dispute regarding whether JDD is its predecessor in interest, as the Court sees no admissible form for FIMCO to present its evidence at trial. Both parties agree that FIMCO was established in 1966 and used the green and yellow colors at that time. Deere claims that its yellow and green colors were famous by 1923 or 1950, citing various publications. However, the Court finds that mere references in these publications do not sufficiently demonstrate that Deere's mark was "widely recognized" for dilution purposes. Previous cases have indicated that general media assertions are weak evidence of fame. Although Deere has provided advertising and sales data, determining the exact year of fame requires weighing evidence, which is inappropriate at the summary judgment stage. Consequently, the Court denies Deere's motion for summary judgment on the dilution claim due to existing factual disputes regarding the mark's fame prior to FIMCO's use.

Regarding Deere's motion for summary judgment against FIMCO’s functionality defense and counterclaim to invalidate Deere's trademarks, the Court notes that registration on the principal register provides prima facie evidence of validity and a rebuttable presumption of trademark validity. A mark can become incontestable after five years of continuous use, provided the owner meets specific affidavit requirements. Once incontestable, the mark's validity is conclusively established. However, even incontestable marks may be challenged on statutory grounds, including functionality, which could lead to invalidation and cancellation of the mark. The Court will further analyze the incontestability of Deere’s marks in response to FIMCO’s summary judgment motion.

A product's feature cannot be used as a trademark if it significantly disadvantages competitors, particularly when the feature is essential to the product's use, purpose, or affects its cost or quality. This principle is established in Qualitex Co. v. Jacobson Prod. Co. and further elaborated in TrafFix Devices, Inc. v. Mktg. Displays, Inc. A mark may be considered aesthetically functional if its exclusive use would disadvantage competitors in a non-reputation-related manner, prompting courts to assess whether the aesthetic feature significantly impacts competition. The Sixth Circuit identifies two tests to evaluate aesthetic functionality: the "comparable alternatives" test and the "effective competition" test, both of which are fact-based inquiries. If either test is met, the trademark will be deemed aesthetically functional and canceled.

The "comparable alternatives" test assesses whether trade-dress protection leaves competitors with viable alternative features. Deere argues that FIMCO has alternatives since it can use any color scheme besides green and yellow without detriment. FIMCO counters that farmers prefer to match their equipment with John Deere tractors, asserting that alternative colors would disadvantage them in the market. Deere points out that FIMCO sells products in various colors and that competitors successfully use different color schemes. FIMCO acknowledges this but maintains that most customers prefer matching colors, particularly with the popular John Deere brand.

Deere presents eight examples of competitors that sell sprayers in various colors, including CropCare, Sprayer Specialties, FAST Manufacturing, and Big John Manufacturing. FIMCO counters by noting that 38 other companies also sell equipment in Deere's green and yellow, arguing that farmers prefer matching equipment to tractors. In response, Deere highlights that 35 of these companies have ceased using green and yellow at Deere's request, and that FAST Manufacturing has successfully transitioned to a yellow and black color scheme without losing sales. FAST's General Manager testified that a loyal Deere customer eventually purchased a FAST sprayer in the new colors after initially requesting the original green and yellow.

Deere argues that the cost for FIMCO to change its color scheme would not be prohibitive. FIMCO acknowledges no significant cost disadvantage but maintains that farmers prefer to match their equipment to their tractors. The Sixth Circuit's precedent indicates that functional features require competitors to incur costs to design around them. The court previously found in favor of Deere in a case where the color green was deemed aesthetically functional due to farmers' preferences. However, Deere asserts that this decision is outdated, as it predates important Supreme Court rulings on aesthetic functionality.

The Farmhand court did not utilize the modern aesthetic functionality standard from the Supreme Court, which assesses whether trademark protection would disadvantage competitors for reasons unrelated to reputation. It also did not apply the Sixth Circuit's tests for comparable alternatives or effective competition. Farmhand involved Deere attempting to entirely prevent the use of a specific shade of "John Deere green," while in the current case, Deere seeks to protect its green and yellow color scheme but allows FIMCO to use other colors. This distinction raises different legal questions, as the Sixth Circuit recognizes that trademark rights in a single color can differ from those in color combinations. 

In Kerr Corp. v. Freeman Manufacturing, the court ruled that Kerr could claim rights to its overall color scheme rather than individual colors, and that the functionality of colors was irrelevant since there was no evidence that Freeman would face a significant disadvantage in adopting a different scheme. The court also noted that aesthetic functionality cannot be claimed simply because a competitor desires to match colors. Other courts have similarly rejected the idea that consumer appeal alone qualifies a feature as functional. The Ninth Circuit emphasized that aesthetic functionality is limited to features serving an aesthetic purpose independent of source identification.

In various legal precedents, courts have ruled that certain color uses can serve non-trademark purposes, such as avoiding visual issues or enhancing product functionality. In Qualitex, the use of color on dry cleaning pads was deemed non-trademark because it addressed visible stains. Similarly, in Publications International, the coloring of cookbook pages prevented color bleeding, while in Brunswick Corp., black color on outboard engines was found to reduce their apparent size. In Pagliero v. Wallace China Co., decorative patterns on hotel china were identified as essential selling features rather than trademarks. 

In Au-Tomotive, the court rejected the argument that Volkswagen and Audi’s trademarks were aesthetically functional, noting any disadvantage Auto Gold faced was related to brand reputation. FIMCO claims its inability to use a specific green and yellow color scheme affects its market appeal, arguing that customers prefer to match their equipment with John Deere tractors. However, FIMCO has not justified why the inability to use both colors would lead to a disadvantage unrelated to John Deere's reputation. Despite FIMCO's reliance on expert testimonies and past decisions, Deere contends that alternatives like using only green or yellow, or combinations without both colors, would adequately meet customer preferences. Expert depositions indicated that while customers desire matching colors, alternatives could still complement John Deere tractors without directly matching them. The court emphasizes that multiple solutions exist for achieving aesthetic appeal in product design.

FIMCO has not demonstrated a genuine dispute regarding the existence of alternative methods to paint agricultural equipment that would match Deere tractors' color scheme. The Court finds that FIMCO's inability to utilize the green and yellow colors does not impose a significant non-reputation-related disadvantage, failing the comparable alternatives test. Regarding the effective competition test, the Court asserts that FIMCO's argument—that it would be hindered in competing against Deere if it could not offer matching colors—is insufficient for establishing aesthetic functionality. FIMCO’s reliance on expert testimony, which claims that Deere’s market dominance would disadvantage FIMCO without the green and yellow options, does not convince the Court. The testimonies indicate that FIMCO's claimed disadvantages are intrinsically linked to Deere's reputation, as FIMCO's witnesses acknowledged that customers prefer color-matching due to brand association. Thus, FIMCO fails both the comparable alternatives and effective competition tests.

FIMCO's defense of aesthetic functionality is insufficient to establish a significant non-reputation-related disadvantage, leading to the granting of Deere’s motion for summary judgment regarding FIMCO’s functionality defense and its counterclaim to invalidate Deere’s trademarks. Additionally, Deere has moved for summary judgment on FIMCO's equitable defenses of laches, estoppel, acquiescence, and implied license, which FIMCO bases on historical correspondence with Deere from 1944 and 1963. The 1944 letter indicated that Deere would not consider the J-D-D designation trademark infringement if FIMCO added "Hoe-fer" to its labels, while the 1963 letter expressed concerns that the use of J-D-D and Deere’s colors could mislead consumers. FIMCO argues that these letters show Deere's awareness of JDD’s use of the colors, thus providing grounds for its equitable defenses due to Deere's delay in litigation.

Concerning laches, Deere contends that FIMCO’s defense fails legally since laches does not impede injunctive relief. The Sixth Circuit defines laches as a negligent failure to protect rights, requiring the asserting party to demonstrate a lack of diligence by the opposing party and resulting prejudice. Importantly, laches does not bar injunctive relief, and FIMCO’s acknowledgment of this precedent highlights that while delay may not preclude such relief, extreme and unreasonable delays could suggest abandonment of rights.

Mere delay by an injured party does not, in itself, bar injunctive relief; however, excessive delay—such as a hundred years—could prevent a court from granting such relief even against a fraudulent infringer. FIMCO contends that Deere's alleged delay of nearly seventy years constitutes "outrageous, unreasonable, and inexcusable" abandonment of its rights, arguing that Deere was aware of FIMCO's use of the green and yellow colors for almost seventy years, and specifically for its agricultural sprayers and applicators for nearly fifty years. FIMCO supports this claim with letters from Deere to JDD from 1944 and 1963. While equitable defenses can extend to successors-in-interest where privity exists, FIMCO fails to demonstrate the necessary privity with JDD. The privity inquiry involves assessing the nature of the relationship between the parties in light of the alleged infringement, considering all direct and indirect contacts. Previous cases illustrate that ownership and control can establish privity, but ownership of less than a majority can still imply effective control. Deere asserts that FIMCO has not shown it is JDD's successor in interest, as JDD ceased to exist in 1966 and Deere only learned of FIMCO's use of the colors in 2011.

FIMCO has not provided admissible evidence to establish its privity with JDD, relying instead on hearsay testimony from Vaughan, which the Court deems inadmissible. Consequently, the 1963 letter cannot substantiate claims of unreasonable delay by Deere that would suggest virtual abandonment, leading to the Court granting Deere’s motion for summary judgment on FIMCO's laches defense. Without laches, FIMCO must show acquiescence, estoppel, or implied license. Acquiescence requires proof that Deere assured FIMCO it would not enforce trademark rights, while estoppel necessitates evidence of misleading conduct by Deere. Despite the Court's ruling on the letters not supporting FIMCO's defenses, FIMCO has presented sufficient evidence to create a genuine dispute regarding acquiescence and estoppel. FIMCO argues that Deere was aware of its use of green and yellow before 2011, citing long-standing catalogs and display practices at farm shows alongside Deere products. Vaughan testified that FIMCO representatives regularly attended these shows, where Deere was also present, indicating Deere had notice of FIMCO’s activities long before it claimed to have learned of them in 2011.

FIMCO collected a product to analyze its purpose, and Vaughan testified that FIMCO salespeople frequently visit John Deere dealerships, suggesting that Deere representatives may have been aware of FIMCO's use of the green and yellow colors before 2011. However, Deere asserts that no personnel responsible for trademark enforcement at the company were aware of FIMCO's alleged infringement prior to that date. The Court finds a genuine dispute regarding this fact, indicating that a reasonable fact finder could conclude Deere was aware of FIMCO’s use, which could imply that Deere’s inaction suggested a waiver of rights or misleading silence. Consequently, the Court denies Deere’s motion for summary judgment concerning FIMCO’s defenses of acquiescence and estoppel.

Regarding FIMCO’s defense of implied license, the Court determines that FIMCO has not established a genuine factual dispute. While the Sixth Circuit recognizes that implied licenses can arise in trademark contexts, the requirement is that an implied agreement must be evident from the parties' conduct. FIMCO claims that their close relationship with Deere, evidenced by joint attendance at farm shows and shared dealerships, indicates mutual understanding that FIMCO's use was implicitly permitted. The Court disagrees, noting that FIMCO provided no supporting evidence for these assertions and emphasizing that implied obligations must be clear and intended, as per precedent.

Parties did not intend for FIMCO to possess a license for the use of green and yellow colors, with no evidence indicating a relationship that would imply such a license. Consequently, the Court grants Deere’s motion for summary judgment regarding FIMCO’s affirmative defense of implied license. 

FIMCO's motion for partial summary judgment seeks to establish three claims: 1) Deere lacks trademark rights in yellow tanks used on towed agricultural sprayers and applicators, 2) Deere's registered trademarks have not achieved “incontestable” status concerning these products, and 3) farmers wish to match their equipment to John Deere tractors. The Court denies FIMCO’s motion.

FIMCO contends that Deere has no enforceable trademark rights in yellow tanks, asserting that Deere's three registered trademarks do not mention yellow tanks, thus limiting their protection to green bodies and yellow wheels. In response, Deere argues that the absence of yellow tanks in trademark registrations does not negate the potential for infringement. The legal questions focus on whether FIMCO’s use of similar colors on comparable equipment creates a likelihood of confusion or dilution.

The Court acknowledges the eight factors outlined by the Sixth Circuit for assessing trademark infringement, emphasizing the significant weight of the similarity of marks. It notes that determining public confusion requires considering the marks individually, as consumers may have a vague impression of the marks rather than viewing them side by side.

To establish trademark infringement, a defendant's mark must be "sufficiently similar" to the plaintiff's mark to create a likelihood of confusion, rather than being identical. Courts assess the overall impression of the marks rather than focusing on individual features. Dilution by blurring also requires that the junior mark's similarity to a famous mark impairs the distinctiveness of the famous mark. The determination of whether a likelihood of confusion or dilution exists involves weighing relevant factors, including the degree of similarity between the marks.

FIMCO challenges Deere's common law trademark rights, arguing that Deere did not manufacture or sell yellow tanks in the U.S. from 1968 to 2013 and that FIMCO has used yellow tanks continuously since the 1930s. Deere counters that FIMCO has not substantiated these claims and that the key issue is the likelihood of confusion based on mark similarity, not on exact copying. Common law trademark rights are established through deliberate and continuous use of the mark in commerce. Deere asserts it holds exclusive rights to the use of green-bodied agricultural equipment with yellow tanks due to extensive use and promotion, while FIMCO contends that Deere has not maintained continuous use of its green and yellow colors on tanks.

FIMCO argues that Deere lacks common law rights in yellow tanks, citing deposition testimony from Deere's archivist, Dahlstrom, who identified the first color photograph of a yellow tank on a John Deere agricultural sprayer as dating to 1968. Dahlstrom acknowledged Deere's sale of products in the 1960s that likely had yellow tanks but could not confirm their distribution in the U.S. FIMCO claims Dahlstrom stated Deere did not reintroduce towed agricultural sprayers in the U.S. until a 2013 agreement with FAST; however, Deere contends FIMCO provides no supporting evidence for this assertion, nor does Dahlstrom’s testimony corroborate it. 

FIMCO also references testimony from Clay Roll, FAST’s General Manager, who was unaware of any demand from Deere to cease using green and yellow colors on its equipment prior to 2012 or 2013. Deere counters that Roll's position limits his knowledge to his own company's interactions and does not encompass Deere's overall trademark enforcement actions before 2013. 

FIMCO incorrectly claims Deere failed to prove it manufactured or sold towed agricultural equipment, misunderstanding that it bears the burden to demonstrate there is no genuine dispute regarding Deere’s common law rights in yellow tanks, as Deere has not sought summary judgment on this claim. Deere asserts that its definition of "towed agricultural equipment" encompasses a broader range of products than just sprayers and nutrient applicators, providing evidence of consistent sales of equipment in green and yellow since at least 1905, with specific color schemes dating back to the 1950s.

Deere asserts that it has continuously sold agricultural sprayers with yellow tanks since 1968, and the court agrees that FIMCO's evidence fails to prove a lack of genuine dispute regarding Deere's use of yellow tanks. FIMCO claims its predecessor, JDD, has used yellow tanks since the 1930s, relying on deposition testimony and historical photographs and catalogs. However, the court finds FIMCO has not provided admissible evidence linking its use to JDD that can be attributed to FIMCO. Even if FIMCO proves Deere has no common law rights specifically in yellow tanks, the case will hinge on whether FIMCO’s use of colors is similar enough to Deere’s trademarks to cause confusion or dilution. The court emphasizes that a trademark analysis must consider the overall impression of the marks rather than individual features. FIMCO's argument that Deere's trademark validity must be established first is acknowledged but does not negate the need to compare FIMCO's marks with Deere's valid trademarks. Consequently, FIMCO's motion for summary judgment regarding Deere's common law trademark protection for yellow tanks is denied.

FIMCO has filed for summary judgment regarding the incontestability of Deere's three registered trademarks under 15 U.S.C. 1065. Registration provides prima facie evidence of a trademark's validity, creating a rebuttable presumption of its validity. A trademark becomes incontestable if it has been registered for at least five years and the owner submits a "Section 15" affidavit within one year, confirming continuous use and the absence of adverse decisions or pending challenges. Incontestability offers conclusive evidence of the mark's validity, ownership, and exclusive rights for commercial use but does not preclude certain defenses, such as claims of fraud, abandonment, or functionality.

Deere submitted Section 15 affidavits for its trademarks in 1996 and 2016, asserting continuous use for five years. FIMCO claims Deere has not used its marks on towed agricultural sprayers and nutrient applicators since the 1960s, suggesting that Deere is entitled only to a rebuttable presumption of ownership, which FIMCO intends to challenge based on its own prior use. FIMCO references deposition testimony indicating that Deere did not sell certain products in the U.S. until 2013. Deere, however, argues that a detailed review of its registrations and affidavits shows that its marks are incontestable or, at least, that genuine factual disputes exist regarding their incontestability.

Deere contends that FIMCO's argument regarding the incontestability of Deere’s ’103 Registration is irrelevant because the registration does not mention sprayers or applicators. FIMCO agrees but claims this acknowledgment allows the court to grant summary judgment in its favor regarding all of Deere's claims related to the ’103 Trademark, a contention the court rejects. The absence of sprayers in the ’103 Registration does not impact its incontestability status. 

For the ’576 Registration, which includes “sprayers,” FIMCO references an employee's statement indicating no trailed sprayers have been sold in the U.S., arguing this demonstrates a failure to meet the continuous use requirement for incontestability. However, since the registration does not differentiate between types of sprayers and FIMCO concedes that Deere does sell self-propelled sprayers, the court finds FIMCO's argument unconvincing. Even if the statement implied a lack of sales for trailed sprayers, Deere's Section 15 affidavit asserting continuous use raises a genuine dispute, leading to the denial of FIMCO’s motion for summary judgment on the ’576 Registration.

Regarding the ’095 Registration, which lists “nutrient applicators,” FIMCO points out that these were not sold until 2013 according to Myers’ testimony. However, Deere’s Section 15 affidavit claiming continuous use creates a genuine dispute, resulting in the denial of FIMCO’s summary judgment motion concerning the ’095 Registration as well.

Lastly, FIMCO seeks a legal determination that farmers desire matching implements and tractors, which the court deems inappropriate for summary judgment. This assertion is not a claim or defense but serves as the basis for FIMCO's argument that Deere's marks are functional and thus invalid due to competitive disadvantage concerns.

FIMCO's motion for summary judgment is denied, as the factual issue regarding whether all U.S. farmers desire to match their agricultural equipment to their John Deere tractors remains genuinely disputed. FIMCO cites the 1982 Farmhand decision, which made a factual determination based on a bench trial, but the Court distinguishes that case from the current situation, stating it is not persuaded by FIMCO's assertions. FIMCO's expert witnesses support the notion that color is important for matching equipment to tractors; however, deposition testimony from these experts reveals that only about half of their customers prioritize color, indicating that color is not a universal consideration for all farmers. Consequently, the Court finds insufficient evidence to support FIMCO's claim that all farmers want their equipment to match their tractors.

Various motions are addressed: FIMCO's Motion in Limine to exclude Deere's expert testimony is denied, while Deere's motions to exclude certain witnesses are granted in part. Deere's motions to strike certain assertions and new evidence from FIMCO are denied as moot. The Court overrules Deere's objections to FIMCO's evidence and denies FIMCO's motion for additional evidence as moot. Deere's motion for summary judgment is partially granted and denied concerning different claims and defenses, while FIMCO's motion for partial summary judgment is denied. The Court clarifies that FIMCO's use of the term "report" in reference to its expert witnesses does not bind them to a specific format, as the term may have been used interchangeably with "disclosure."