Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

SafeRack, LLC v. Bullard Co.

United States District Court, D. South Carolina, Charleston Division

November 27, 2018

SafeRack, LLC, Plaintiff,
v.
Bullard Company, Defendant.

          ORDER AND OPINION

          RICHARD MARK GERGEL UNITED STATES DISTRICT COURT JUDGE.

         This matter is before the Court on cross-motions for Summary Judgment. For the reasons set forth below, the Court grants in part and denies in part Defendant's Motion for Summary Judgment and grants in part and denies in part Plaintiffs Motion for Summary Judgment.

         I. Background

         Plaintiff SafeRack, LLC ("SafeRack") and Defendant Bullard Company ("Bullard") both produce and sell safe access and loading units, often for use by industries involved in loading and unloading transportation vehicles such as trains, trucks and ships. These safe access and loading units have fall protection equipment, such as safety cages, gates and railings. No. later than 2003, SafeRack began selling fall protection equipment that included the color orange. (Dkt. Nos. 50-2 at 3; 50-3.) Bullard, though a 30(b)(6) witness, acknowledged that he had seen SafeRack products with orange on its "standard truck loading, railcar loading, and access platforms, gangways and gates" prior to June 2017.[1] (Dkt. No. 50-14 at 16, 20, 25.) On May 30, 2017, after a three year examination, the United State Patent and Trademark Office ("USPTO") registered SafeRack's Design Mark No. 5, 211, 514. (Dkt. No. 50-4.) The registration included a photo of a gangway:

         (Image Omitted)

         (Id.) The registration further stated that "[t]he color(s) orange is/are claimed as a feature of the mark. The mark consists of the color orange as applied to railings, gates and cages of fall protection equipment. The product configuration depicted in dotted lines is not claimed as a feature of the mark and serves only to show placement of the mark on the goods." (Id.) In addition to the registered mark, SafeRack submitted photos of equipment it had manufactured that included the color orange on the railings, gates and cages, a copy of which is included below as an example:

         (Image Omitted)

         (Dkt. No. 50-21.)

         In June 2017, Bullard attended the Independent Liquid Terminals Association ("ILTA") trade show and showcased a work platform and gangway with orange railings and other features. (Dkt. Nos. 49-1 at 8; 50-10 at 36.)

         (Image Omitted)

         (Dkt. Nos. 49-1 at 8; 50-13; 50-16.) On June 12, 2017, SafeRack sent a cease and desist letter to Bullard after Bullard's platform was shown at ILTA. Bullard asserts that while it showcased the units, it never sold any with that configuration. (Dkt. No. 49-1 at 8, 15.) SafeRack presented no evidence that Bullard ever sold a work platform or gangway as showcased at the ILTA.

         Instead, both parties agree that since 2015 Bullard has sold at least six[2] mobile access platforms ("MAP") with gray railings, cages, and fall protection with an orange vehicle base.

         (Image Omitted)

         (Dkt. Nos. 49-1 at 8; 50-1 at 31; 50-22.)

         On September 17, 2018, SafeRack and Bullard both filed motions for summary judgment. (Dkt. Nos. 49, 50.) Both responded in opposition to the other parties' motion. (Dkt. Nos. 54, 57.)[3]

         II. Legal Standard

         To prevail on a motion for summary judgment, the movant must demonstrate that there is no genuine issue of any material fact and that the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). The party seeking summary judgment has the burden of identifying the portions of the "pleadings, depositions, answers to interrogatories, any admissions on file, together with the affidavits, if any, which show there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). The Court will construe all inferences and ambiguities against the movant and in favor of the non-moving party. U.S. v. Diebold, Inc., 369 U.S. 654, 655 (1962). The existence of a mere scintilla of evidence in support of the non-moving party's position is insufficient to withstand a motion for summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252 (1986). However, an issue of material fact is genuine if the evidence is such that a reasonable jury could return a verdict in favor of the non-movant. Id. at 257.

         "When the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). "In the language of the Rule, the nonmoving party must come forward with 'specific facts showing that there is a genuine issue for trial.'" Id. at 587. "Where the record taken as a whole could not lead a rational trier of fact to find for the non-moving party, there is no 'genuine issue for trial.'" Id. (quoting First Nat'l Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 289 (1968)).

         III. Discussion

         SafeRack argues that Bullard's use of orange on "gangways, railings, and gates" at the ILTA in 2017 and Bullard's sale of MAPs infringed on its trademark and trade dress and constituted unfair competition in violation of the Lanham Act and the South Carolina Unfair Trade Practices Act ("SCUTPA"). SafeRack also brought a claim for unjust enrichment. Bullard argues that the use of orange on its equipment was not likely to cause confusion, and presents six affirmative defenses.

         As the Fourth Circuit has explained, to establish trademark infringement a plaintiff must prove:

(1) that it owns a valid mark; (2) that the defendant used the mark 'in commerce' and without plaintiffs authorization; (3) that the defendant used the mark (or an imitation of it) 'in connection with the sale, offering for sale, distribution, or advertising' of goods or services; and (4) that the defendant's use of the mark is likely to confuse customers.

Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012); see also 15 U.S.C. § 1114(1)(a). As explained below, since there are no disputes of material facts regarding all four elements and Bullard presents no meritorious defenses, the Court grants summary judgment for SafeRack on its claim for trademark infringement.

         A. Ownership of Valid Mark

          There is no dispute that SafeRack owns a valid trademark to the color orange as applied to railings, gates, and cages of fall protection equipment. Generally, "the party claiming ownership of a mark must be the first to use the mark in the sale of goods. The party claiming ownership must also use the mark as a trademark, that is, the mark must be used to identify the source of the goods to potential customers." George & Co., LLC v. Imagination Entm't Ltd., 575 F.3d 383, 400 (4th Cir. 2009) (internal citation omitted). Furthermore, "[Registration grants a presumption of ownership, dating ownership to the filing date of the federal registration application...." Id. at 400 n.15 (emphasis omitted); see also 15 U.S.C. § 1115(a). Finally, color alone can serve as a trademark where it has acquired secondary meaning. See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 163(1995).

         Here, SafeRack has a presumption of ownership of its mark dating to June 11, 2014, when its trademark was filed with the USPTO. (Dkt. Nos. 50-4; 50-7.) SafeRack further presented evidence that it sold its first loading rack with orange colored components in September 2003. (Dkt. No. 50-2 at 3; 50-3.) Bullard has presented no evidence to dispute this fact. The record evidence demonstrates that Bullard first showcased orange on the railings of its fall protection equipment in June 2017, after SafeRack's registration was both filed and granted. (Dkt. Nos. 49-1 at 8; 50-25; 50-10 at 36.) SafeRack therefore owns a valid trademark to the color orange as applied to railings, gates, and cages of fall protection equipment.

         However, SafeRack has not presented any evidence that it owns a valid trademark to orange appearing anywhere else on its safe access and loading units. To begin with, the presumption applies only to the trademark issued by the USPTO, which is limited to "the color orange as applied to railings, gates, and cages of fall protection equipment." (Dkt. No. 50-4) (emphasis added). Furthermore, SafeRack in its motion describes the mark as limited to "orange on specific portions of gangways, railings, gates, and mobile access units-industry ("MAUI")...that SafeRack manufactures and sells." (Dkt. No. 50-1 at 2.) See also (Dkt. No. 50-1 at 21; "The vast majority of them have nothing to do with this field-they are not metallic gangways, railings, gates and other fall prevention components of industrial loading and MAUI applications."). Finally, SafeRack has presented no evidence that it has ever used orange on areas of its equipment other than railings, gates and cages as a mark. All photographs SafeRack has presented includes orange solely on the gangways, railings, cages and gates of its equipment.[4] (Dkt. Nos. 50-11; 50-12; 50-21.) Testimony from SafeRack consumers also confirmed this point. PJ Fjeld-Hansen, a purchaser of SafeRack products, testified that he identified a gangway as a SafeRack product through orange on top railings, midrails and a springcover.[5] (Dkt. No. 50-6 at 3 - 4.) Another consumer, Thomas Hansen, further testified it was orange gangways that identified SafeRack. (Dkt. No. 50-10 at 14.)

         Therefore, it is undisputed that SafeRack owns a trademark to the color orange specifically as applied to railings, gates, and cages of fall protection equipment.

         B. Used in ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.