Optimum Technologies v. Henkel Consumer Adhesives

Citation
Optimum Technologies, Inc. v. Henkel Consumer Adhesives, Inc., 2006 WL 1663357 (N.D. Ga. June 14, 2006), aff'd, 496 F.3d 1231 (11th Cir. 2007) (full-text).

Factual Background
Plaintiff manufactured and sold a product called the "Lok-Lift Rug Gripper" that prevented rugs from slipping on smooth floors. Defendant distributed plaintiff's product over the Internet from 1993 to 2002. Defendant subsequently launched his own similar product called "Hold-It For Rugs." Defendant's website, however, still contained "a couple of" references to plaintiff's Lok-Lift Rug Gripper mark. These included references to the "Hold-It For Rugs" product as part of the Lok-Lift product line. Moreover, a search on defendant's website for retailers selling Lok-Lift products identified retailers selling "Hold-It For Rugs" products.

Trial Court Proceedings
Plaintiff filed suit asserting numerous claims, and defendant moved for summary judgment. The court granted defendant's motion for summary judgment on all claims except trademark infringement, unfair competition, and deceptive trade practices based on the uses of the LOK-LIFT mark on defendant's website.

On February 13, 2006, a jury failed to reach a verdict and the court declared a mistrial. During the trial, the court granted defendant's motion for judgment as a matter of law on the deceptive trade practices claim. Following the mistrial, defendant renewed its motion for judgment as a matter of law on the issues of liability and damages for plaintiff's trademark infringement and unfair competition claims.

The court disposed of the case by granting defendant's motion on the issue of damages. Initially, plaintiff failed to prove that it suffered any actual damages. The court reviewed its earlier decision to admit the testimony of plaintiff's damages expert, and this time it excluded the expert's testimony because he had based his analysis and opinions primarily on claims that had been dismissed before trial. And plaintiff produced no other evidence regarding actual damages.

The court also held that plaintiff did not provide sufficient evidence to recover defendant's profits under any of the three equitable theories. First, in light of the evidence at trial showing that defendant's use was "unintentional," "inadvertent," and "de minimus" and that defendant immediately removed the "Lok-Lift" references upon learning of them, the court held that defendant's actions were neither deliberate nor willful.

Second, the court found no need for deterrence because defendant had ceased using plaintiff's mark as soon as it came to defendant's attention. Third, plaintiff failed to prove any consumer confusion that could prove unjust enrichment. Under these circumstances, the court declined to rule on the remaining issue of liability, and granted defendant's renewed motion for judgment as a matter of law. The court also noted that plaintiff "appear[ed]" to withdraw its claim for injunctive relief prior to trial.

Source
This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).