Bijur Lubricating Corp. v. Devco Corp. et al

Internet searches run through various search engines using the keywords “Bijur,” “bijur,” or “bijur.com” would return result lists that included a Devco Web page under the title “bijur replacement lubrication parts by Devco.” Customers who clicked on the Devco result would be taken to a Web page at http://www.devcocorp.com/bijur.html with the words “Bijur Replacement Parts” displayed near the top. Customers who searched for “Devco” or who used Devco’s primary Internet address were taken to a Web page at http://www.devcocorp.com/index.html that appeared identical to the first Web page except that it displayed the words “Devco � Showa” instead. Both Web pages also provided Devco’s contact information and contained the following language: “Lubricating systems & components for machinery maintenance � DEVCO, SHOWA, BIJUR, LUBE, WILLY VOGEL & others � Original Equipment & Replacement Parts.”

Bijur alleges that none of the products advertised for sale on the Devco Web site were manufactured by Bijur. When customers searched for specific parts on the Web site, they were presented with tabular lists of parts. Bijur alleges that the parts advertised in these tables were manufactured by Showa as replacements for Bijur parts and given a Devco model number. The leftmost column of each table contained a Devco model number and was captioned “DEVCO” or “DEVCO Model Type.” The rightmost column contained the corresponding Bijur model number and was captioned “(Replaces Bijur)” or “(Replaces Bijur Type).” Nowhere was Showa identified as the manufacturer.

Devco claims that it sells Bijur-manufactured parts, in addition to those of other manufacturers, through the Web site. It denies that it used the “Bijur” name to sell Showa products. Rather, “[t]he name ‘Bijur’ was used to designate that genuine Bijur parts were sold by Devco, or that Bijur parts were compatible with other products sold by Devco.” Defendants admit that “Replaces Bijur” was used to sell replacement parts that were not manufactured by Bijur.

Bijur’s claims for relief are based on trademark infringement, 15 U.S.C. �1114 (Count I); unfair competition, 15 U.S.C. �1125(a)(1) (Count II); common-law service mark infringement (Count III); common-law unfair competition (Count IV); unfair competition under N.J.S.A. 56:4-1 (Count V); dilution under 15 U.S.C. �1125(c) (Count VI); dilution under N.J.S.A. 6:3-13.20 (Count VII); and unjust enrichment (Count VIII). It requests damages and a permanent injunction barring defendants from any use of its name and registered marks in any medium. Defendants move for summary judgment.

The law governing trademark infringement under �43(a) of the Lanham Act, which protects unregistered trademarks, generally follows the law governing infringement of registered trademarks, which are protected under �32. “[I]n the Third Circuit the test for common law infringement and unfair competition is identical to the test for federal infringement and unfair competition.” Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F.Supp.2d 335, 386 (D.N.J. 2002). “Similarly, New Jersey’s statutory unfair competition law, N.J.S.A. 56:4-1, is equivalent to Section 43(a) of the Lanham Act.” Id. at 386. The following legal analysis therefore applies to Counts I through V of the complaint.

“To prevail on a claim for trademark infringement or unfair competition under the Lanham Act, the owner of a valid and legally protectable mark . . . must show that a defendant’s use of a similar mark for its goods ’causes a likelihood of confusion.’” KOS Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 708-09 (3d Cir. 2004).

Likelihood of confusion is a question of fact. “To prove likelihood of confusion, plaintiffs must show that ‘consumers viewing the mark would probably assume the product or service it represents is associated with the source of a different product or service identified by a similar mark.’” Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 280 (3d Cir. 2001).

Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983), adopted a nonexhaustive list of factors to consider in evaluating likelihood of confusion. Although the original Lapp factors were developed for cases involving noncompeting goods, they have been adapted to apply to goods that compete directly as well.

“None of these factors is determinative in the likelihood of confusion analysis and each factor must be weighed and balanced one against the other.” KOS Pharms., Inc, 369 F.3d at 700, 709. “[T]he different factors may properly be accorded different weights depending on the particular factual setting. A district court should utilize the factors that seem appropriate to a given situation.” Id. “[I]f a district court finds certain of the Lapp factors are inapplicable or unhelpful in a particular case, that court should explain its choice not to employ those factors.” Id. at 711.

“The single most important factor in determining likelihood of confusion is mark similarity.” Id. at 712-13. It is undisputed that Devco has used the trademarked name “Bijur” on the Web site and in its metatags. The mark used is exactly the same as Bijur’s registered mark and thus increases the likelihood of confusion. This factor weighs in favor of Bijur.

“Under the Lanham Act, stronger marks receive greater protection because they carry greater recognition, so that a similar mark is more likely to cause confusion.” Id. at 715. “The strength of a mark is determined by (1) the distinctiveness or conceptual strength of the mark and (2) its commercial strength or marketplace recognition.” Checkpoint Sys., 269 F.3d at 282. Trademarks protected under the Lanham Act are divided into four categories: arbitrary or fanciful, suggestive, descriptive and generic. The name “Bijur” falls under the arbitrary or fanciful category, as it “neither describe[s] nor suggest[s] anything about the product.” Id. Such marks are considered highly distinctive and are accorded trademark protection if they have developed a secondary meaning. The “Bijur” name has developed a secondary meaning as a brand of lubricating systems.

It is also undisputed that the marks are well-known in the industrial equipment industry. Bijur has been doing business under the “Bijur” name for more than 80 years. Most of the marks have been registered since the early 1950s, and the “Bijur” name is registered in more than 20 countries. Because they are distinctive and commercially recognized, the marks are strong. This factor weighs in favor of Bijur.

The factors indicative of the care and attention expected of customers “weighs against finding a likelihood of confusion when consumers exercise heightened care in evaluating the relevant products before making purchasing decisions.” KOS Pharms., 369 F.3d at 715. Less-expensive products require less care from consumers. However, “[w]here the relevant buyer class is composed solely of professional or commercial purchasers, it is reasonable to set a higher standard of care than exists for consumers.” Checkpoint Sys., 269 F.3d at 285.

Many replacement parts cost only a few dollars, implying that customers are less likely to exercise much care in purchasing them. However, both Bijur and Devco deal exclusively with commercial purchasers. It is reasonable to expect these purchasers to be relatively sophisticated about the market and careful in their purchasing decisions. But the extent to which their sophistication decreases the likelihood of confusion is substantially mitigated by the low cost of the parts. This factor may weigh slightly in favor of defendants.

The parties have a long history of litigation over alleged customer confusion regarding a perceived affiliation between them. In 1986, Bijur sued defendants in state court alleging that Devco was falsely representing that it was associated with Bijur. Devco apparently had acquired Bijur’s former New Jersey telephone number and customers who thought they were calling Bijur would actually be connected to Devco. In a consent judgment, defendants, without acknowledging any wrongdoing, were enjoined from claiming any association with Bijur or interfering with any relationship between Bijur and its customers through “unfair business practices.”

In 1997, Bijur alleged that Devco was violating the consent judgment by using the “Bijur” name in its listings in the Bergen County telephone directory and the Thomas Register, an industry publication. The Chancery Division ordered Devco to remove the offending listings.

However, Bijur has not presented evidence of current customer confusion. Therefore, this factor does not weigh in its favor. However, the lack of such evidence does not necessarily weigh against it, as “evidence of actual confusion is difficult to find because many instances are unreported.” KOS Pharms., 369 F.3d at 720.

“Evidence of intentional, willful and admitted adoption of a mark closely similar to the existing mark weighs strongly in favor of finding a likelihood of confusion.” Id. at 721. This inquiry includes examining whether defendant intended to “promote confusion and appropriate the prior user’s good will,” as well as whether defendant acted carelessly in choosing its mark. Id. Bijur alleges that Devco used the marks to trade on its reputation and good will by passing off Showa products using the “Bijur” name and by implying a nonexistent affiliation between Bijur and Devco. Defendants claim that the “Bijur” name was used to sell genuine Bijur products and that non-Bijur-manufactured replacement parts were sold using the words “Replaces Bijur” and “Bijur Replacement Parts.” They thus do not dispute that they used the “Bijur” name in connection with the sale of non-Bijur-manufactured replacement parts.

This does not, in itself, demonstrate defendants’ intent to confuse the public. Devco is entitled to tell potential customers that its non-Bijur-manufactured parts replace Bijur parts. “The Lanham Act does not prohibit a commercial rival’s truthfully denominating his goods a copy of a design in the public domain, though he uses the name of the designer to do so.” G.D. Searle & Co. v. Hudson Pharm. Corp., 715 F.2d 837, 842 (3d Cir. 1983).

There is no evidence that defendants intended to do anything more than inform the public as to the nature of Devco’s replacement parts. The tabular lists of parts clearly set forth the Devco model number for each part and the Bijur model number that it replaces. Neither does Devco’s use of “Bijur Replacement Parts” on the Web site demonstrate an intent to confuse the public. The Web page clearly announces that Devco sells products by a number of manufacturers and that it sells both original equipment and replacement parts. There is nothing inherently misleading about using the “Bijur” name in this context.

Nor is there evidence to show that defendants’ use of the “Bijur” name in its metatags was intended to confuse the public. Bijur argues that defendants used the metatags to create initial interest confusion among customers searching for Bijur products on the Internet. Initial interest confusion occurs when a competitor “lur[es] potential customers away from a producer by initially passing off its goods as those of the producer’s, even if confusion as to the source of the goods is dispelled by the time any sales are consummated.” Checkpoint Sys., 269 F.3d at 294. Initial interest confusion can be created by the misleading use of metatags.

However, just as the Lanham Act permits Devco to inform customers through its Web site that it sells replacements for Bijur parts, it allows Devco to provide that same information in its metatags. When potential customers would run Internet searches using variations on the keyword “Bijur,” the result lists would include a link to the Devco Web page under the title metatag “bijur replacement lubrication parts by Devco.” At that point, the customers could choose whether to visit the Devco site. Nothing in this description of the site was misleading; it informed potential customers that the replacement parts were “by Devco,” implying that they were not manufactured by Bijur. It cannot be inferred that defendants intended to use Devco’s metatags to confuse the public or appropriate Bijur’s good will. This factor weighs in favor of defendants.

Both Bijur and Devco advertise in the same media. Both have Web sites through which they market their products. Bijur’s Web site provides customers with product and technical information, information on upcoming trade shows, and access to service bulletins. Visitors to its Web site can request price quotes, review answers to frequently asked questions, contact Bijur or locate an authorized distributor. Devco’s Web site provides lists of replacement lubricating system parts and contains the company’s contact information. Nothing on Devco’s site indicates that it is affiliated with Bijur or is an authorized distributor of Bijur-manufactured parts. The only references to Bijur are the permissible ones discussed.

That both parties advertise in the same media, including the Internet, increases the possibility that Devco’s use of the “Bijur” name caused a likelihood of confusion. However, it is unlikely that a reasonable visitor to the Devco Web site would believe that the company was affiliated with or an authorized distributor of Bijur. This factor weighs in favor of Devco.

“[W]hen parties target their sales efforts to the same consumers, there is a stronger likelihood of confusion.” Checkpoint Sys., 269 F.3d at 289. It is undisputed that Bijur and Devco target the same customers. This factor weighs in favor of Bijur.

“The closer the relationship between the products, the greater the likelihood of confusion.” KOS Pharms., 369 F.3d at 722. The replacement parts marketed by Devco are nearly identical to the corresponding Bijur parts. This factor weighs in favor of Bijur.

“In assessing [other facts suggesting the public might expect the prior owner to manufacture both products], courts may look at the nature of the products or the relevant market, the practices of other companies in the relevant fields, or any other circumstances that bear on whether consumers might reasonably expect both products to have the same source.” Id. at 724. The parties do not explicitly address this factor. It cannot be determined whether the market for lubricating system parts is such that customers are generally aware that some replacement parts are not manufactured by the manufacturer of the original parts. This factor does not weigh in favor of either side.

The court must determine if there is a genuine issue of material fact as to whether Devco’s use of the marks to sell Showa-manufactured Bijur replacement parts causes a likelihood of confusion. The “Bijur” name is a strong mark and is entitled to substantial protection. It is undisputed that Devco used the trademarked name “Bijur” on its Web site. Although mark similarity is ordinarily the most important factor in the Lapp analysis, it is not necessarily determinative.

Bijur and Devco target the same customers, and the Showa-manufactured Bijur replacement parts sold by Devco are nearly identical to the original Bijur parts. The low cost of replacement parts leads to the inference that customers do not exercise much care in their purchasing decisions. Both companies market their products through similar media. These factors increase the likelihood of confusion.

Held: However, the commercial purchasers with whom the companies do business can be expected to understand the market. Devco’s Web site did not suggest that it was affiliated with or an authorized distributor of Bijur. There is no evidence of actual customer confusion or any intent by Devco to confuse customers through its Web site or metatags. Most important, Devco was entitled to use the marks in the manner in which it did. As a matter of law, Devco’s use of the marks does not cause a likelihood of confusion. Defendants’ motion for summary judgment is granted as to Counts I through V.

Counts VI and VII assert causes of action for dilution under the Federal Trademark Dilution Act (FTDA), 15 U.S.C. �1125(c), and N.J.S.A. 56:3-13.20.

“The federal cause of action for trademark dilution grants extra protection to strong, well-recognized marks even in the absence of a likelihood of consumer confusion . . . if the defendant’s use diminishes or dilutes the strong identification value associated with the plaintiff’s famous mark.” Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 163 (3d Cir. 2000). Bijur asserts that defendants engaged in dilution by “blurring,” which occurs when the defendant’s use of the plaintiff’s famous mark causes the public to associate both the plaintiff and the defendant with the famous mark.

Playboy Enters., Inc. v. Welles, 297 F.3d 796, 806 (9th Cir. 2002), held that “nominative uses” of marks are excepted from anti-dilution law. “[A] defendant’s use of a plaintiff’s mark is nominative where he or she used the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal is to describe his own product. The goal of a nominative use is generally for the purposes of comparison, criticism or point of reference.” Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 809 (9th Cir. 2003).

This holding is consistent with the purposes of anti-dilution law and the FTDA. When a defendant uses the plaintiff’s mark to describe the plaintiff’s product, it is not creating an improper association in consumers’ minds between the plaintiff’s mark and a new product. The FTDA recognizes this principle by specifically excepting “users of a trademark who compare their product in ‘commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.’” Id. Although this case does not involve comparative advertising, the same principle applies to advertising replacement parts.

Devco’s use of “Replaces Bijur” and “Bijur Replacement Parts” to describe its non-Bijur-manufactured replacement parts are nominative uses of the “Bijur” name. A three-factor test determines whether the use of a mark is a nominative use:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Playboy Enters., Inc. v. Netscape Communs. Corp., 354 F.3d 1020, 1029-30 (9th Cir. 2004).

Clearly, Bijur replacement parts are not identifiable as such without use of the “Bijur” name. Devco did not use any aspects of the marks other than the “Bijur” name in promoting the replacement parts on the Web site. Nothing in the Web site or metatags suggested an affiliation between the parties.

Devco’s nominative use of the “Bijur” trademark does not imply that the mark applies to its non-Bijur-manufactured goods. By describing its parts as replacements for Bijur parts, Devco does not weaken the distinctive link between Bijur and Bijur’s goods, which is the sine qua non of dilution by blurring. It is simply using the “Bijur” name as a point of reference for its own products. Bijur cannot prevail on its federal dilution claim. Because the standard for dilution under N.J.S.A. 56:3-13.20 is similar to the federal standard, Bijur’s state claim must fail as well. Defendants’ motion is granted as to Counts VI and VII.

As to its claim for unjust enrichment under New Jersey law, Bijur has not established that it conferred any benefit on defendants. More important, because defendants’ use of the marks has been lawful, it would not be unjust to allow them to retain any benefit they may have received. Defendants’ motion is granted as to Count VIII.

� Digested by Judith Nallin

[The slip opinion is 22 pages long.]

For plaintiff � Carol Ann Slocum (Klehr, Harrison, Harvey, Branzburg & Ellers). For defendants � Peter J. Kurshan (Chase, Kurshan, Herzfeld & Rubin).