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Scheu & Scheu, Inc. v. Scheu

United States District Court, S.D. Florida

June 22, 2017

SCHEU & SCHEU, INC., Plaintiff,
v.
Y SCHEU, VERONICA SCHEU, and APE.COM, LLC, Defendants.

          OMNIBUS ORDER DENYING SUMMARY JUDGMENT MOTION AS TO COUNTS I AND IV OF THE COMPLAINT AND DENYING MOTION TO STRIKE DECLARATION

          JONATHAN GOODMAN UNITED STATES MAGISTRATE JUDGE

         Juliet cared little that her beloved Romeo was a Montague, and not a Capulet, when she exclaimed, “A rose by any other name would smell as sweet.”[1');">1" name= "FN1');">1" id="FN1');">1">1');">1] But in trademark law -- as it also turned out in Shakespeare's tragic love story -- names carry consequences. Label a product or service with a moniker that is not distinctive, but merely generic or descriptive, and the law may not protect your mark.

         That is what Defendants Casey Scheu; Veronica Scheu; and APE.com, LLC contend in their summary judgment motion. Defendants move for summary judgment on Counts I and IV of Plaintiff Scheu & Scheu, Inc.'s Complaint, which raise claims against Defendants for trademark infringement under the Lanham Act, 1');">15 U.S.C. § 1');">1051');">1 et seq., and for violating the Anticybersquatting Consumer Protection Act (“ACPA”), § 1');">11');">125(d). [ECF No. 1');">1');">61');">1]. Defendants argue that the trademarks Plaintiff seek to guard are generic marks, or at best, descriptive marks without a secondary meaning, and therefore, are not entitled to legal protection. As an additional wrinkle, Defendants move to strike a declaration Plaintiff relies on to oppose summary judgment.

         For the reasons discussed below, the Court denies both Defendants' summary judgment motion and their motion to strike.

         I. Factual and Procedural History

         Plaintiff sued Defendants under various federal and state-law claims, stemming from Defendants' alleged infringement of Plaintiff's trademarks: “APE, ” “A.P.E., ” and related domain names. [ECF No. 1');">1]. As Defendants conceded in their Answer, Plaintiff “has been in the business of circuit board repair and related services including, but not limited to, the sale of machinery and parts utilized in such repair for some period of time.” [ECF No. 1');">10 ¶ 9]. Under Count I of the Complaint, Plaintiff brought a claim for trademark infringement under the Lanham Act, and under Count IV, a claim for violations of the ACPA. [ECF No. 1');">1, pp. 7-9, 1');">12-1');">13]. The remaining claims (arising from state law) are not implicated here.

         Defendants seek summary judgment on both federal-law claims. [ECF No. 1');">1');">61');">1]. Defendants incorporate into the summary judgment motion their statement of undisputed facts, setting forth just seven facts. [ECF No. 1');">1');">61');">1, p. 3]. Plaintiff admits the following four facts, with minimal caveats: (1');">1) that “A.P.E.” is an acronym for “Automated Production Equipment;” (2) that the APE mark may be phonetically pronounced with a “long a, ” meaning, the same as the word “ape” when speaking of primates; (3) that Plaintiff does not mind Defendants using the word “ape” when referencing large primates;[2] and (4) that Plaintiff's website includes its company's name as “Automated Production Equipment” followed by “A.P.E.” in parenthesis. [ECF No. 72');">72, pp. 4-5].

         As to the facts Plaintiff disputes, all are essentially aimed to show, in Defendants' view, that the APE marks and the name “Automated Production Equipment” always go hand-in-hand, in all advertisement and marketing. First, Defendants posit as an undisputed fact that “Plaintiff's company has evolved to ‘where it is Automated Production and Equipment with A.P.E.'” [ECF No. 1');">1');">61');">1, p. 3]. Second, Defendants say that it is undisputed that “[a]ll marketing and advertising [for Plaintiff] includes ‘all of' the purported marks, including the words ‘Automated Production Equipment.'” [ECF No. 1');">1');">61');">1, p. 3]. And third, Defendants maintain that no one disputes that “[a]ll of the purported marks are used interchangeably.” [ECF No. 1');">1');">61');">1, p. 3].

         Plaintiff does dispute the three facts set forth above. [ECF No. 72');">72, pp. 4-5]. While conceding that the APE mark are sometimes used in association with the tradename “Automated Production Equipment, ” Plaintiff responds that it “has used, and presently uses, the trademark ‘APE' and ‘APE.com' in connection with its products where the trade name ‘Automated Production Equipment' does not appear.” [ECF No. 72');">72, pp. 4, 5]. In support of that refutation, Plaintiff relies on a declaration by Ian Scheu, at paragraphs 1');">18, 22, 23 and 24, which show various uses of the APE marks on advertisements, products, and labels. [ECF No. 72');">72-1');">1, pp. 8-24].

         In opposition to Defendants' statement of undisputed facts, Plaintiff also sets forth six additional facts. Pertinent here, Plaintiff asserts that “[t]he trade name ‘Automated Production Equipment' was coined and/or arbitrarily chosen by Mr. and Mrs. Scheu so that they could market their products under the equally coined, catchy, abbreviation ‘APE.'” [ECF No. 72');">72, p. 5');">p. 5]. As support, Plaintiff cites to deposition testimony from Barbara Schue, where she explained how the “Automated Production Equipment” name was chosen:

Through the process of renaming the company from Pacenter to Automated Production Equipment we were looking for a name to name our new company since we were no longer going to be using Pacenter. And Automated Production and Equipment was chose mainly because of its initials and the advertising capabilities using APE.

[ECF No. 58');">58, p. 28');">p. 28].

         In addition, Plaintiff states that rather than being automated, “Plaintiff's machines are manually operated to remove defective or inoperable surface-mounted electronics components from printed circuit boards, and to remove the solder that holds the components in place, in order to facilitate the replacement of such components.” [ECF No. 72');">72, p. 6]. As support, Plaintiff cites to paragraph three of Ian Scheu's declaration, in which he stated, among other things, that Plaintiff's products are operated manually, requiring “a skilled human operator to perform delicate, manual, tasks.” [ECF No. 72');">72-1');">1, p. 2].

         Plaintiff also adds that “[t]he phrase ‘automated production equipment' as applied to Plaintiff's goods and services is arbitrary, as Plaintiff's machines are neither automated nor used to produce any product, nor are they used as part of an automated machine.” [ECF No. 72');">72, p. 6]. Relevant here, apart from paragraph three, Plaintiff also relies on paragraph two of Ian Scheu's declaration [ECF No. 72');">72, p. 6], in which he testified as to his parents' innovation in the circuit-board-repair business:

In the early 1');">1970's, my parents started an innovative circuit board repair service, which immediately led to the invention of the so-called “solder sucker, ” a machine which allows an operator to efficiently and accurately (but manually) remove soldered-on electronics components and any remaining solder from printed circuit boards so that the components can be replaced, which, in turn, evolved into many of the products that we sell to this day under the trademarks APE, APE.com, A.P.E. and A.P.E.com.

[ECF No. 72');">72-1');">1, p. 1');">1].

         Defendants move to strike Ian Scheu's declaration. As to paragraphs two and three of the declaration in particular, [3] Defendants argue that Ian Scheu's “position cannot be maintained in good faith and is contradicted by the very terms of the Declaration.” [ECF No. 75, p. 1');">10]. Specifically, Defendants point out that several products, the advertisements for which are attached to the declaration, show several instances where the term “automatic” was used. [ECF No. 75, pp. 1');">10-1');">11');">1]. For its part, while admitting that “some of Plaintiff's machines employ settable parameters that Plaintiff's own advertising describes as ‘automatic' features, ” Plaintiff maintains that “those features are nonetheless features of Plaintiff's manually operated machines.” [ECF No. 78, p. 1');">12 (emphasis in original)].

         II. Legal Standard

         The Court “shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.p. 5');">p. 56(a). When “the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.” Scott v. Harris, 72');">72');">550 U.S. 372');">72, 380 (2007) (internal citation and marks omitted). If the movant establishes the absence of a genuine issue, then the non-movant must “do more than simply show ...


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