Intellectual Property Law

Western District Partially Grants Summary Judgment on Trademark Claims

By Michael Atkins

On Nov. 14, Western District Judge Robert Bryan granted and denied in part plaintiff’s motion for summary judgment on the trademark claims in Suarez Corporation Industries v. Earthwise Technologies, Inc.

Suarez Corporation Industries sells consumer products, including portable electric space heaters, under its EDENPURE and SUN-TWIN trademarks.

Defendants Earthwise Technologies, Earthwise Innovations, Inc., and Bruce Searle were involved to varying degrees in creating Web sites that sell Suarez Corporation Industries’ heaters, heater parts, and refurbished heaters. The Web sites are associated with the domain names edenpure-heater.com and edenpureoutlet.com, among others.

The court found Earthwise Innovations’ use of the the domain names and Suarez Corporation Industries’ trademarks on its Web sites was likely to cause confusion. “In this case, consideration of the Internet trinity and the remaining Sleekcraft factors favors SCI. Consideration of the Internet trinity strongly favors SCI because the trademarks at issue are identical, and Earthwise and SCI simultaneously sold related products through the Internet. The remaining Sleekcraft factors slightly favor SCI because SCI’s marks are unique and because there is no question as to Earthwise’s knowledge of SCI’s marks.”

The court went on to grant summary judgment on a claim of continuing infringement against defendant Earthwise Innovations despite the court’s preliminary injunction order.

“Moreover, Earthwise fails to create a genuine issue of material fact as to whether Earthwise’s use of SCI’s marks ceased on January 30, 2008. For example, as of February 15, 2008, edenpureoutlet.com claimed to be ‘America’s source for EdenPURETM and SUN-TWINTMParts and Refurbished Heaters,’ even though Earthwise was preliminarily enjoined ‘from buying and/or selling refurbished Edenpure or Sun-Twin heaters on the edenpure-heater.com and/or edenpureoutlet.comwebsites.’ Similarly, as of February 15, 2008, Earthwise continued to advertise its program to buy EDENPURE and SUN-TWIN heaters via edenpure-heater.comand to use SCI’s marks on infraredappliances.com, infrared-heating.com, and comfortzoneinfraredheaters.com. In this respect the motion should be granted.”

The court denied summary judgment as to whether Earthwise Technologies or Mr. Searle were liable for the infringement. The court also denied summary judgment on Suarez’s cybersquatting claim.

The case cite is Suarez Corporation Industries v. Earthwise Technologies, Inc., No. 07-5577 (W.D. Wash. Nov. 14, 2008) (Bryan, J.).

Full post as published by Seattle Trademark Lawyer on November 20, 2008 (boomark / email).