A dispute over trademarks featuring the word DRIVE for financial services / auto loans has been going for several years. One company, Santander Consumer, uses a variety of DRIVE themed marks for financial services, in particular purchasing loans from automobile dealerships. Another company, Inopin uses marks featuring DRIVEUSA for financial services including auto and vehicle loans.
Santander instituted a TTAB proceeding against Inopin’s mark, which it dismissed after two years (“on the eve of trial” as alleged by Inopin) in favor of federal litigation in the N.D. Tex. That case was transferred to Mass. for lack of personal jurisdiction over the defendants. Then things got messy.
After all was said and done, the pleadings contained a dozen counts and counterclaims. The parties cross moved for summary judgment / dismissal. Unfortunately for anyone seeking some kind of resolution, almost all the motions were denied by Magistrate Bowler. She even gave both parties the opportunity to file more papers on certain questions. The only action that was dismissed was a counterclaim for trademark misuse, which is really an affirmative defense.
The decision broke down as follows: Despite some evidence of weakness in the plaintiff’s marks, defendants’ motions for summary judgment of no likelihood of confusion and no protectability were denied due to lingering factual questions best resolved by a jury. Summary judgment on the TX and MA state dilution claims were also denied in the face of sufficient facts to reach a jury.
Plaintiff’s motion to dismiss a counterclaim for fraud in the procurement was denied since sufficient damages were plead to withstand dismissal. (In an issue of first impression in the First Circuit, Judge Bowler sided with other courts in holding that attorneys fees were not considered damages for purposes of standing to pursue the counterclaim under 15 U.S.C. § 1120.) A motion to dismiss a declaratory judgment counterclaim was dismissed without prejudice, pending plaintiff addressing law of the case issues surrounding an earlier related motion. A motion to dismiss an antitrust counterclaim failed as the court held that defendants had pled sufficient facts to proceed with a sham litigation theory. Leave to amend the counterclaim was granted to allow the defendants to allege the relevant geographic market. Finally, a motion to dismiss the 93A counterclaim was also denied.
Santander Consumer USA, Inc. v. Walsh, et al., 08-11778-MLB (D. Mass. Nov. 30, 2010)
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