EMC Corp. v. Hewlett-Packard

Citation: EMC Corp. v. Hewlett-Packard Co., 59 F.Supp.2d 147

Factual Background
EMC Corp. produces and sells computer storage systems that catalog and store computer data from computers and networks. Hewlett-Packard, HP, is a computer supplier. In 1995 EMC and HP agreed that HP would sell EMC’s storage systems to customers who were purchasing HP computers. The agreement stated that EMC’s trademark would not appear on the HP products, and the HP trademark would not appear on the EMC product. The parties renegotiated and extended this agreement in 1998. HP subsequently announced in May 1999 that they would be offering their own enterprise storage system, entitled “HP SureStore E Disk Array MC256.” EMC claims that this name infringes on the “EMC” and “EMC<2>” marks, due to that fact that “HP representatives will invevitable abbreviate, and already have abbreviated, the cumbersome product name, therby putting the letters “E” and “MC” together, and confusing prospective customers as to whether EMC is associated with HP’s new product.” EMC Corporation v. Hewlett-Packard Company, 59 F. 2d 147, 148. EMC seeks to preliminarily enjoin HP from using this new product name.

Trial Court Proceedings
The preliminary injunction analysis for trademark infringement is whether the plaintiffs claim appears successful on its merits. EMC must show that the name of HP’s new product is likely to confuse prospective buyers as to the manufacturer of the product. The confusion analysis consists of either factors including: 1) the similarity of the marks, 2) the similarlity of the goods, 3) the relationship between the parties channels of trade, 4) the relationship between the parties advertising, 5) the classes of prospective purchasers, 6) evidence of actual confusion, 7) the defendants intent in adopting its mark; and 8) the strength of the plaintiffs mark. I.P Lund Trading ApS v. Kohler Co., 163 F.3d 27, 43 (1st Cir. 1998). “No one factor is necessarily determinative, but each must be considered.” Id. In regards to the first factor, the “similarity of the two marks ‘is determined on the basis of the total effect of the designation, rather than a comparion of individual features’” Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 817. (1st Cir. 1987). The court determined that the marks and the goods were similar, that there was a relationship between the channels of trade and advertising methods, and that the goods had similar prospective purchasers. The court determined the defendants intent was a “wash” but that EMC had a very strong mark. Evidence of actual confusion was not applicable yet because HP’s intended mark had not been released yet.

The court held that EMC showed a likelihood of success on its merits and allowed the preliminary injunction. However, the court allowed the use of the letter “E” only in order to minimize hardship, taking into considering that the use of the letter “E” without “MC” is unlikely to cause confusion to customers.