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Wheel Specialties, Ltd. v. Starr Wheel Group, Inc.

Citations: 918 F. Supp. 2d 688; 2013 WL 179465; 2013 U.S. Dist. LEXIS 6511Docket: Case No. 4:10cv2460

Court: District Court, N.D. Ohio; January 15, 2013; Federal District Court

Narrative Opinion Summary

In this case, the plaintiff, a designer and seller of aftermarket wheels, filed suit against several defendants, including Starr Wheel Group, Inc., alleging trademark infringement and related claims. The dispute arose after the plaintiff discovered that Starr was selling wheels bearing its trademarks, which were acquired from Baody, a former authorized manufacturer. The court addressed motions for summary judgment filed by both parties. It denied Starr's motion, finding substantial evidence that Starr sold non-genuine wheels infringing on the plaintiff's trademarks under the Lanham Act. The court applied the eight-factor test for likelihood of confusion, noting marketing similarities and potential customer confusion, despite Starr's claim of ignorance about the wheels' authenticity. The court granted partial summary judgment for the plaintiff, determining that Starr violated trademark rights by selling non-genuine products. However, a factual dispute regarding Starr's knowledge of the counterfeit nature of the wheels was left for jury determination. The court also granted summary judgment against another defendant, Warrior, who failed to contest the claims. Ultimately, the court concluded that damages should be assessed, with the plaintiff entitled to recover profits, damages, and costs under 15 U.S.C. § 1117, leaving the exact amount to be determined by a trier of fact.

Legal Issues Addressed

Counterfeit Mark Liability

Application: The court found a factual dispute regarding whether Starr knew the wheels were counterfeit, necessitating a jury determination.

Reasoning: A factual dispute exists regarding whether the defendants knew the wheels obtained from Baody were counterfeit.

Damages for Trademark Infringement

Application: The court recognized that Custom Wheels could show damages from Starr's sales of counterfeit wheels, necessitating a determination of the amount by a fact finder.

Reasoning: Damages for trademark infringement are defined under 15 U.S.C. § 1117, allowing a plaintiff to recover (1) the defendant's profits, (2) any damages the plaintiff sustained, and (3) litigation costs.

Genuineness of Goods under Trademark Law

Application: The wheels sold by Starr were deemed non-genuine because Custom Wheels did not authorize their manufacture or sale, thereby infringing trademark rights.

Reasoning: Since Custom Wheels rejected the wheels produced by Baody and did not authorize their manufacture or sale, the wheels sold by Starr are deemed non-genuine, infringing upon Custom Wheels' rights under the Lanham Act.

Likelihood of Confusion Factors

Application: Despite the absence of actual customer confusion evidence, the court found a likelihood of confusion based on the marketing channels, product similarity, and lack of customer care.

Reasoning: The Sixth Circuit identifies eight factors to assess the likelihood of confusion... The absence of such evidence does not negate the likelihood of confusion.

Summary Judgment Standards

Application: The court must view evidence in favor of the non-moving party and assess whether material facts could affect the outcome of the case.

Reasoning: The legal standards for Summary Judgment require the moving party to show no genuine dispute of material fact, after which the burden shifts to the opposing party to demonstrate a genuine issue exists.

Trademark Infringement under the Lanham Act

Application: The court found that Starr violated the Lanham Act by selling non-genuine wheels, thus infringing on Custom Wheels' trademark rights.

Reasoning: Liability for trademark infringement arises if a person uses a registered mark without consent in a manner likely to cause confusion.