i
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFI‘
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registration No. 1,190,527
`Registered 0“ Febfuew 23» 1983
`
`STMICROELECTRONICS, lNC.,
`
`Petitioner,
`
`llllllllllllllllllllllIlllllllllllllllllllllllllll
`
`1 1-1 5-2004
`U_s_ P...“ momm mu Rcpt oz. #11
`
`
`
`VS‘
`
`CANCELLATION NO. 92042527
`
`NARTRON CORPORATION,
`
`
`
`Respondent.
`
`PETITIONER STMICROELECTRONICS, INc.’s RESPONSE TO
`
`RESPONDENT NARTRON’s CROSS—MOTION FOR SUMMARY IUDGMENT
`
`
`
`I hereby certify that this correspondence, including all of the listed attachments, is being deposited with the U.S.
`Postal Service as First Class Mail in an envelope addressed to the Commissioner for Patents, P.O. Box 1450,
`Alexandria, VA 22313-1450, on this date.
`
`

`
`
`
`On January 26, 2004, Petitioner STMicroelectronics, Inc.
`
`(“ST”)
`
`filed a motion for
`
`summary judgment on its Petition for Cancellation of Registration No. 1,190,527 for the mark
`
`“SMART—PO\X/ER” because that mark has become generic after over 20 years of widespread use
`
`in the semiconductor industry. The basis of ST’s motion was collateral estoppel — a purely legal
`
`issue —— based on a prior adjudication of genericness by the United States District Court for the
`
`Eastern District of Michigan, which judgment was affirmed by the Court of Appeals for the Sixth
`
`Circuit. Nartron does not argue that collateral estoppel does not apply. Rather, it has filed its
`
`own cross—motion for summary judgment, arguing that ST is barred from maintaining this
`
`cancellation proceeding because of the doctrine of res judicata, or “claim preclusion.” Nartron’s
`
`summary—judgment motion fails as a matter of law and should be denied.
`
`1. PRELIMINARY STATEMENT
`
`Nartron’s opposition to the cancellation of the registration for “SMART—PO\X/ER” is
`
`notable given that a court of competent jurisdiction, and indeed, a court that Nartron chose to
`
`file suit in, has determined that the mark has become generic.‘ And another federal court has
`
`recognized that, because the mark has been determined to be generic, the records of the PTO are
`
`wrong and should be corrected} Despite these rulings, Nartron refuses to surrender voluntarily
`
`its registration for “SMART—PO\X/ER,” and thus, this action has become necessary.
`
`1 See Exhibit 1 — Nartron Corp. v. STMic'roelectrom'cs, Inc., 305 F.3d 397, 403-04, 64 U.S.P.Q.2d
`(BNA) 1761, 1765 (6th Cir. 2002).
`
`2 See Exhibit 2 — In re Nartron Corp., Case No. SG 02-14263, slip op. at 2 (Bankr. W.D. Mich.
`Sept. 8, 2003) (granting ST relief from bankruptcy stay to file cancellation proceeding as to Nartron’s
`registration) .
`
`STMICROELECTRONICS, INC. ’S RESPONSE TO NARTRON’S CROSS—MOTION FOR SUMMARY JUDGMENT
`
`Page 1
`
`

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`
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`Standing alone, Nartron’s failure to surrender the registration is surprising. The Board
`
`should correct the PTO records by canceling Registration No. 1,190,527, just as the federal
`
`courts have indicated would be proper.
`
`11. DISCUSSION
`
`A.
`
`Nartron’s motion for summary judgment must be denied because Nartron has not
`pleaded res judicata.
`
`The Board’s rules — as well as the relevant decisional law — make clear that a summary—
`
`judgment motion must be denied when the motion is based on an issue that has not been
`
`pleaded} The sole basis of Nartron’s summary judgment is res judicata, which is an affirrnative
`
`defense that must be pleaded.“ Yet Nartron did not plead res judicata in its Answer to ST’s
`
`petition for cancellation. Nor has Nartron filed a motion for leave to amend, despite the fact
`
`that this proceeding has been pending for over a year. Under established TTAB precedent,
`
`Nartron’s failure to plead res judicata as an affirrnative defense is fatal to its motion for summary
`
`judgment.
`
`B.
`
`Federal Circuit precedent precludes application of res judicata to bar this proceeding.
`
`Even had Nartron pleaded res judicata, its summary—judgment motion would fail on the
`
`merits. Nartron argues that ST is barred by res judicata from maintaining this proceeding because
`
`the district court did not order cancellation of Nartron’s trademark registration. But Nartron’s
`
`argument is belied by the express holding of the Federal Circuit in Jet, Inc.
`
`42. Sewage Aeration
`
`Systems.5 Indeed, while Nartron tries to distinguish Iet, Inc., that case precludes application of res
`
`3 T.B.M.P. §5Z8.07 (a) (“A party may not obtain summary judgment on an issue that has not
`been pleaded"); S. Indus., Inc. v. Lamb—\X/eston, Inc., 45 U.S.P.Q.2d (BNA) 1293, 1297 (T.T.A.B. 1997).
`
`4 Fed. R. Civ. P. 8(c); Blonder—Tongue Labs, Inc. 1;. Univ. of Ill. Found, 402 U.S. 313, 350 (1971)
`(“Res judicata and collateral estoppel are affirmative defenses that must be pleaded.”).
`
`5 223 F.3d 1360, 55 U.S.P.Q.2d (BNA) 1854 (Fed. Cir. 2000).
`
`STMICROELECTRONICS, INc.’s RESPONSE TO NARTRoN’s CROSS—MOTION FOR SUMMARY JUDGMENT
`
`Page 2
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`

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`
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`judicata here. Specifically, in ]et, Inc., the Federal Circuit held that because there are significant
`
`differences in transactional facts required to be proven in an infringement action and in a
`
`cancellation proceeding, claim preclusion cannot bar a petition for cancellation:
`
`This array of differences in transactional facts conclusively demonstrates
`that claim preclusion cannot serve to bar a petition for cancellation based upon an
`earlier infringement proceeding.‘3
`
`The Federal Circuit’s holding —— and not Nartron’s attempt to argue around it — is what is
`
`binding on the Board. There is no dispute that the earlier proceeding was an infringement
`
`action.7
`
`Like the Federal Circuit, the Board has previously held that an infringement action will
`
`not bar a subsequent cancellation proceeding because of res judicata.
`
`In Treadwell’s Drifters, Inc.
`
`v. Marshakf the Board found that a subsequent cancellation proceeding was not barred by an
`
`earlier infringement action because “the claim involved in the civil action [was] different from
`
`the claims brought by the petitioner in [the] cancellation proceeding.” Specifically, the Board
`
`explained that “ [t]he civil action was based on a claim of injury resulting from respondent’s use of
`
`his mark in commerce” while the cancellation proceeding involved a claim “that petitioner
`
`believe[d] it [was] damaged by registration of respondent’s mark.”1° Thus, the Board explained,
`
`“the claims are fundamentally different.”
`
`6 Id. at 1364, 55 U.S.P.Q. 2d at 1857 (emphasis added).
`
`7 See Exhibit 1 — Nartron Corp. v. STMic'roelectronics, Inc., 305 F.3d 397, 402, 64 U.S.P.Q.2d
`(BNA) 1761, 1763 (6th Cir. 2002)
`(“In 1998, Nartron commenced an action against ST alleging,
`infringement of its trademark, ‘Smart power.”’).
`
`8 18 U.S.P.Q.2d (BNA) 1318 (T.T.A.B. 1990).
`
`9 Id. at 1321.
`
`1° Id.
`
`“ Id.
`
`STMICROELECTRONICS, INC.’S RESPONSE TO NARTRON'S CROSS—MOTION FOR SUMMARY ]UDGMENT
`
`Page 3
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`

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`
`
`Nartron cannot avoid this conclusion merely because ST defended against Nartron’s
`
`infringement claims by asserting a number of affirmative defenses, including that the mark was
`
`generic. Tellingly, Nartron has not cited a single case where this Board — or any court — has
`
`held that res judicata would bar a cancellation proceeding following an infringement action, even
`
`where the defendant prevailed by showing that the mark was generic.
`
`C.
`
`Res judicata would not apply because the district court had discretion not to order
`cancellation.
`
`In addition, even had Nartron pleaded res judicata as a defense, it would be inapplicable
`
`because deciding whether to order cancellation of Nartron’s registration was discretionary with
`
`the district court. Specifically, section 37 of the Lanham Act gives the district court the power to
`
`determine whether to cancel a registration, but it does not require the court to make such a
`
`determination: “In any action involving a registered mark the court may determine the right to
`
`registration, order the cancellation of registrations, in whole or in part .
`
`.
`
`.
`
`.’’n The permissive
`
`nature of this provision is underscored by the fact that section 37 gives the district courts
`
`concurrent jurisdiction with the TTAB to cancel registrations.”
`
`Courts often may prefer to allow the PTO to handle cancellation matters in the first
`
`instance rather than exercise their discretionary powers to order cancellation under section 37.
`
`For example, in MasterCard International Inc. v. American Express Co.” —— a case involving facts
`
`12 15 U.S.C. § 1119 (emphasis added).
`
`lnc., 196 F. Supp. 2d 971, 975 n.1, 62 U.S.P.Q.2d
`13 See, e.g., Levi Strauss 69’ Co. v. GTFM,
`(BNA) 1394, 1397 n.1 (N.D. Cal. 2002); Top Producer Sys. v. Software Sciences, 43 U.S.P.Q.2d (BNA)
`1853, 1854 (D. Or. 1997); Informix Software «I. Oracle Corp., 927 F. Supp. 1283, 1285-86, 40 U.S.P.Q.2d
`(BNA) 1153, 1155 (N.D. Cal. 1996).
`
`” 14 U.S.P.Q.2d (BNA) 1551 (T.T.A.B. 1990).
`
`STMICROELECTRONICS, INC.’s RESPONSE TO NARTRON’S CROSS—MOT1ON FOR SUMMARY JUDGMENT
`
`Page 4
`
`

`
`
`
`similar to those present here —— the Board acknowledged that the district court had deferred to
`
`the PTO to make decisions regarding registerability and quoted from the district court’s opinion:
`
`Defendant [opposer] has alleged an action for declaratory judgment. This claim
`has been disposed of with the dismissal of the complaint and by reserving to the
`Patent and Trademark Office the issues regarding Registration No. 889,858 [not
`the subject of this opposition proceeding]. This is also true regarding the
`application to register Serial No. 191,889 and Serial No. 309,812 [involved
`herein]. This counterclaim is dismissed.”
`
`Just as the district court in MasterCard, here, the district court exercised its discretion to allow
`
`the PTO to consider registerability issues. And as in MasterCard, res judicata does not preclude
`
`ST from maintaining this cancellation proceeding.“
`
`In fact, after the Sixth Circuit affirrned the district court’s ruling, Nartron filed for
`
`bankruptcy protection. The bankruptcy court lifted the stay of litigation specifically so that ST
`
`could bring this cancellation proceeding:
`
`. The records of the PTO currently reflect that
`.
`Nartron has had its day in court. .
`a trademark protects the “Smart Power” mark. Those records are not correct in
`that the District Court has determined that the mark is generic. The record
`should be corrected. Relief from stay will permit ST to move forward in its
`efforts to correct the public record.”
`
`Given the federal court’s explicit recognition of ST’s right to correct the PTO records, Nartron
`
`should not be permitted to thwart that right through application of res judicata.
`
`15 Id. at 1554 (quoting district court) (alterations in original).
`
`16 However, just as in MasterCard and as explained in ST’s motion for summary judgment, the
`doctrine of collateral estoppel does preclude Nartron from relitigating the district court’s finding that
`Nartron’s mark has become generic.
`
`” Exhibit 2 — In re Nartron Corp., Case No. SG O2—l4263, slip op. at 2 (Bankr. \X/.D. Mich.
`Sept. 8, 2003) (emphasis added).
`
`STMICROELECTRONICS, INC. ‘s RESPONSE TO NARTRON’S CROSS—MOTION FOR SUMMARY JUDGMENT
`
`Page 5
`
`

`
`
`
`D.
`
`Application of res judicata to ST’s claim could lead to additional cancellation
`proceedings filed by others.
`
`The District Court for the Eastern District of Michigan has held that Nartron’s mark is
`
`generic, and the Sixth Circuit affirmed.” The United States Supreme Court denied certiorari.
`
`Nartron had its day in court, and it lost. Now, the records of the PTO are incorrect because the
`
`improperly reflect that SMART—PO\X/ER is a valid trademark. In fact, Nartron continues to act
`
`like that trademark is valid. Indeed, in February 2002 —— over a year after the district court held
`
`that the mark had become generic —— Nartron filed a renewal of its registration.”
`
`As the Sixth Circuit explained in affirming the district court's ruling, ST presented
`
`“testimony that manufacturers, customers, suppliers, vendors, and others in the semiconductor
`
`industry, including the trade and technical press, use the tenn ‘smart power’ generically to mean
`
`power devices that have control circuits.”2° Thus,
`
`if ST is precluded from maintaining this
`
`action, the records of the PTO will remain uncorrected. Another member of the semiconductor
`
`industry will, no doubt, step forward to cancel Nartron’s registration. Since ST was the only
`
`defendant in the federal litigation leading to the ruling of the mark’s genericness, Nartron would
`
`have no argument that res judicata precluded a cancellation proceeding by one of these other
`
`entities.“ It would be a fundamental waste of administrative resources to dismiss this action on
`
`the basis of res judicata where ST’s goal is to ensure that the PTO’s trademark register has been
`
`1 —- Nartron Corp. v. STMicroelectronics,
`18 See Exhibit
`U.S.P.Q.2d (BNA) 1761, 1765, 1772 (6th Cir. 2002).
`
`lnc., 305 F.3d 397, 404, 413, 64
`
`19 See Exhibit 3 — Combined Section 8 & 9 Declaration, filed February 14, 2002.
`
`2° Exhibit 1 —— Nartron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 406, 64 U.S.P.Q.2d 1761,
`1767 (6th Cir. 2002).
`
`21 Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362, 55 U.S.P.Q.2d (BNA) 1854, 1856 (Fed.
`Cir. 2000) (stating that res judicata requires an “identity of parties (or their privies)”).
`
`STMICROELECTRONICS, lNC.’S RESPONSE TO NARTRON'S CROSS—MOTION FOR SUMMARY JUDGMENT
`
`Page 6
`
`

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`corrected, only to have another party file a petition for cancellation of the registration for
`
`Nartron’s generic mark.
`
`III. CONCLUSION
`
`Nartron has filed a cross—motion for summary judgment asserting the single ground of res
`
`judicata. But it has not pleaded res judicata as a defense in this matter. Under the Board’s rules
`
`and established precedents, Nartron’s motion must be denied. And the Board should not permit
`
`Nartron to amend its pleadings to assert this affirmative defense, as the doctrine is inapplicable to
`
`this cancellation proceeding.
`
`For the reasons stated above, STMicroelectronics, Inc. requests that the Board deny
`
`Nartron’s cross—motion for summary judgment and that it grant ST’s motion for summary
`
`judgment and order cancellation of Registration No. 1,190,527.
`
`Respectfully submitted,
`
`THOMPSON & KNIGHT LLP
`
`
`
`Richard L. Wynne, Jr.
`Registration No. 43,294
`
`1700 Pacific Avenue, Suite 3300
`
`Dallas, Texas 75201
`214.969.1386
`
`214.969.1751 (facsimile)
`
`ATTORNEYS FOR PETITIONER
`
`STMICROELECTRONICS, INC.
`
`STMICROELECTRONICS, lNC.’S RESPONSE TO NARTRON’S CROSS—MOTION FOR SUMMARY JUDGMENT
`
`Page 7
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 12, 2004, a true and correct copy of the foregoing
`
`“STMicroelectronics, Inc.’s Response to Nartron’s Cross—Motion for Summary Judgment” was
`
`forwarded via certified mail, return—receipt requested, to Robert C.]. Tuttle, Brooks Kushman
`
`P.C., 1000 Town Center, 22nd Floor, Southfield Michigan 48075-1238, counsel for Respondent
`
`Nartron Corporation.
`
`DALLAS 18093111
`
`E/.235“
`
`Richard L. Wynne, Jr.
`
`STMICROELECTRONICS, 1NC.’S RESPONSE TO NARTRON’S CROSS—MOTION FOR SUMMARY JUDGMENT
`
`Page 8
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`

`
`
`
`"Pita?-RON cone. v. STHICROELEcT§"2"'..’f‘i\r:cs, me.
`Clteas305 F.3d 397 (6th Cir. 2002)
`
`397
`
`-.,‘
`
`fendants’ motion for
`pleadings.
`
`judgment on the
`
`w .
`
`o 5 KEY NUMBER svsrm
`1'
`
`NARTRON CORPORATION,
`Plaintiff—Appellant,
`
`V.
`
`STMICROELECTRONICS, INC.,
`Defendant-Appellee.
`
`No. 01-1293.
`
`United States Court of Appeals,
`Sixth Circuit.
`
`Argued: Aug. 8, 2002.
`
`Decided and Filed: Oct. 1, 2002.
`
`action
`Trademark ‘holder brought
`against competitor alleging federal and
`state law claims of trademark infringe-
`ment, dilution, and unfair competition over
`use of term “smart power.” The United
`States District Court for the Eastern Dis-
`
`trict of Michigan, Anna Diggs Taylor, Sen-
`ior District Judge, granted summary judg-
`ment for competitor. Holder appealed. The
`Court of Appeals, Keith, Circuit Judge,
`held that:
`(1)
`term “smart power” was
`g_e_neric;
`(2) overwhelming evidence pre-
`sented by competitor ‘obviated need for
`competitor to conduct consumer survey;
`(3) delay in bringing infringement lawsuit
`was presumptively prejudicial and unrea-
`sonable, and created rebuttable presump-
`tion of laches; (4) trademark holder failed
`
`to rebut presumption under competitor’s
`laches defense; and (5) trademark holder
`
`was not entitled to prospective injunctive
`relief‘.
`
`-“-ffi1'med-
`
`EXHIBIT
`
`tabbler
`
`ml‘
`
`’
`
`'
`
`_ won Novelties, No. 00-027-399-CZ, at
`.Pd1fl’1; State court having held that there
`4'
`.
`robable cause to justify Barrnan’s
`‘Va:
`this court is precluded from recon-
`’ 3.1.1.9:-1;
`the issue for the same reasons
`fldemth: court is barred from reconsider-
`chatthe issue of Detective Anger’s entitle-
`gag
`tb take advantage of the claim-pre-
`meflt
`’ive effect of Peterson’s earlier‘state-
`‘
`suit. Accordingly, Peterson’s mali-
`ci0fi§.:_1prosecufion claim is properly dis-
`ed.
`W
`
`’
`
`13]” Peterson’s final claim, alleging un-
`nable search and seizure,
`is also
`perly dismissed based, ‘311 the N°Ve_m‘
`' W01 state court "decision, though possi-
`_r a‘ diflerent reason.
`it is not clear
`ffthe record before this court what
`3 claims Peterson brought before the
`court in that action.
`If he brought
`easonable search and seizure claim,
`s court would be precluded from
`that claim, much as we are
`"ed fi'om reconsidering the issues of
`Detective Anger can take advan-
`-f the claim-preclusive effect of the
`state court decision and whether
`
`-‘existed probable cause to justify
`an’s arrest. However, even if Peter-
`d not bring such a claim before the
`.1kland- County Court in 2001, it is clear
`eterson’s unreasonable search and
`claim is ‘.‘based on the same trans-
`dnor events” as those at issue in that
`“See Ditmore, 625 N.W.2d at 466.
`Vefore, since the 2001 Oakland County
`Was decided on the merits, resulted in‘
`A decision, and involved the ‘same
`fifties, claim preclusion under Michigan
`this court from considering Peter-
`°_“'5. junreasonable search and seizure
`"Claim now.
`Ibid.
`
`
`
`Peterson Noyem
`3.
`
`es,
`
`;an courtgg, rejection
`7 malicious progecu
`cs this court to hold
`~
`om considering 13,‘,
`secution claim _ n A
`
`.y would have '_b
`nce defined the
`
`A
`
`‘
`
`ice 1n hght of m
`case law, an
`‘we may no’ _1~
`fmalicious pgéseéagn
`per cause of '
`3 prosecution
`zrrah 12. City ofo
`311 (6th C’
`
`i'ue'r, 510 US‘
`L.Ed.2d 114..
`
`
`
`312, 114 sot;
`E state law fals
`mber 2001 dé'_‘
`Circuit Court:
`
`
`
`that
`iriformationi
`[’s] and his emplfo
`ued by the Oaklaz
`omca
`
`-
`
`IV
`-
`’ For the foregoing reasons, We AFFIRM
`3 “'9 district court’s order granting the de-
`
`

`
`
`
`398
`
`305 FEDERAL REPORTER, Eu, SE"IES
`
`6. Trade Regulation <%23
`
`the appropfiate
`trademark law,
`In’
`test for genericness is whether the 1~e1e.
`vant public perceives the term primarily as
`the designation of the article.
`
`7. Trade Regulation @587
`
`Overwhelming evidence presented by
`competitor obviated need for competitor to
`conduct consumer survey to prove that
`“smart power” trademark was generic;
`competitor provided testimony that manu.
`facturers, customers, suppliers, vendom,
`and other persons in semiconductor lndug-
`try,
`including trade and technical press,
`used term “smart power” generically to
`mean power devices that had control cir.
`cuits.
`
`...__..._....,.
`
`2
`
`4
`
`I
`
`1. Trade Regulation @478
`
`Where a mark registered on the fed-
`eral principal registry is “merely descrip-
`tive,” e.g., identifies a characteristic of the
`thing, and has become incontestable, the
`mark is presumed to have acquired a sec-
`ondary meaning.
`Lanham Trad<.LMark
`Act, § 15, 15 U.S.C.A. § 1065.
`
`2. Trade Regulation €=23
`
`Term “smart power” was “generic,”
`even though term had been registered as
`trademark and had become incontestable;
`term “smart power,” as used in semicon-
`ductor industry, was not “merely descrip-
`tive,” but it was used to describe type of
`technology,
`i.e., wide range of products
`and technologies all of which implemented
`function of interfacing logic circuits to
`power loads, not to identify source of such
`products. Lanham Trade-Mark Act, § 15,
`15 U.S.C.A. § 1065.
`
`3. Trade Regulation “P23
`A generic term can never function as
`a trademark; on the other hand a term
`that is “merely descriptive” may be used
`as a trademark if it has acquired a second-
`
`ary meaning.
`
`4. Trade Regulation.@23
`
`A “generic” term is one that is com-
`monly used as the name of a kind of goods;
`unlike a trademark, which identifies the
`source of a product, a generic term merely
`identifies the genus of which a particular
`product is a species.
`'
`See publication Words and Phras-
`es for other judicial constructions
`and definitions.
`
`5. Trade Regulation @23
`
`If a mark’s primary significance is to
`describe a type of product rather than the
`producer, it is “generic” and is not a valid
`trademark.
`
`8. Trade Regulation @255, 571.1
`When a trademark is federally regjg-
`tered, there is a presumption that the term 7
`is non-generic and the defendant bears the
`burden of overcoming this presumption.
`Lanham Trade—Mark Act,
`§ 15,
`15
`
`".25:
`;__
`..
`
`U.S.C,A.§ 1065.
`
`9. Trade Regulation €=14, 23
`
`In trademark law, ordinarily, it is a
`term’s meaning to consumers, not profes-
`sionals in the trade, that is the test of
`genericness and descriptiveness for ordi- ,
`nary consumer goods.
`
`r_
`
`10. Trade Regulation @723
`
`In trademark law, when deciding ge-
`nericness, evidence of the relevant public’s
`understanding of a term may be obtained
`from any competent source.
`
`11. Trade Regulation <°‘.=>388
`Trademark ho1der’s delay in bringing
`infringement
`lawsuit was presumptively
`prejudicial and unreasonable, and created
`rebuttable presumption of “laches,” since
`holder waited 11 years after it began to
`have actual or constructive knowledge of
`alleged infringing activity, eight years
`
`
`
`.....—....r...~..:......,,_......~»-»..-,...--...._.........__,.g_,‘_:‘.'«-..‘-
`
`
`
`

`
`
`
`=
`
`_
`
`.A.“TR0iV' CORP. v. STTVIICROELECT. NICS, INC.
`Citeas305 F.3d 397 (6th Cir. 2002)
`
`399
`
`
`
`_
`
`@323
`w,
`the appm 1.
`“ate:
`is whetherthe rel
`;he term primarfly:
`article.
`.
`g
`
`estimony that ifjanu
`suppliers, vendoi§
`
`md technical :p‘§e_s'S'«
`wer” generically
`hat had contro“
`
`P255, 571.1 '
`
`":
`
`k is federally re
`3
`"C5el-I-1O‘.3 E5231 S’-(‘D FF(D
`defendant bears“
`:
`this presumpti
`' Act,
`§15,’ i’
`
`.u,,e1- that Michigan’s statute of limita-
`n ._-
`-
`.
`-
`:1-'on5 for personal
`injury actions, before
`'-
`1avvsuit. M.C.L.A. § 600.5805(8).
`- biiflging
`
`_
`
`'
`
`'
`
`*
`’ f
`
`1
`
`- o1,aches” is the negligent and uninten-
`al failure to protect one’s rights.
`. don
`see publication Words and Phras-
`es for other judicial constructions
`and definitions.
`("Trade Regulation <«->3s5.1
`party asserting laches in a trade-
`om;-u;k case must show:
`(1) lack of diligence
`Eb» ~ thévparty against whom the defense is
`Jégérfiéd, and (2) prejudice to the party
`Y
`.
`a
`It.
`
`-‘Trade Regulation <%=387
`i the purpose of the application of
`defense of laches in a trademark case,
`here is a strong presumption that a plain-
`ifts delay in asserting its rights is reason-
`ib_1_e'as long as an analogousstate statute
`
`power” was both prejudicial and unreason-
`able; competitor was “prejudiced” because
`potential damages increased during each
`
`year that claimed mark was used, prompt
`lawsuit could have resolved whether and
`
`how competitor
`could have use term
`“smart power,” and several significant wit-
`
`nesses either were no longer living or ex-
`pressed inability to remember important
`details.
`
`18. Trade Regulation @9388
`
`Any prejudice is sufficient, including
`
`an increase in potential damages or a loss
`
`of evidence, in the context of application of
`the defense of laches in a trademark case.
`
`19. Trade Regulation <">'-7385.1
`A defendant need not have detrimen-
`
`tally relied on a plaintiffs delay for laches
`to bar plaintiffs monetary claims for past
`trademark infringement.
`20. Trade Regulation ®==388
`Unavailability of important witnesses,
`dulling of memories of witnesses, and loss
`or destruction of relevant evidence all con-
`stitute “prejudice” for the purpose of the
`application of the defense of laches in a
`trademark case.
`'
`
`See publication Words and Phras-
`es for other judicial constructions
`and definitions.
`‘
`
`21. Trade Regulation @9622
`Trademark holder was not entitled to
`
`prospective, injunctiye relief to preclude
`competitor .from. using “smart power”
`mark, since “smart power,” as used in
`connection with competitor’s product
`in
`semiconductor_industry, was generic and
`was not entitled to trademark protection.
`
`22. Trade Regulation €=385.1
`In trademark law,
`laches only bars
`damages that occurred before the filing
`date of the lawsuit.
`
`
`
`.714, 23
`.
`. ordinarfly, it -IS
`sumers, notproufl
`that is the test?
`lptiveness for..o'r
`‘
`
`@223
`
`_,
`‘(_'>‘,"’I‘rade Regulation e=»385.1
`:II‘ ‘In order to overcome the presumption
`-oflaches in a trademark case, a plaintiff
`when deciding
`"1
`8‘F
`(‘DE.'5Q‘0:3 9o "C3
`5C9‘
`/7C '1(Do-'E» E T:
`he relevant publi
`
`_
`(2) establish that there was a good
`§-;‘é'xcuse for its delay; or (3) show that the
`‘defendant engaged in particularly egre-
`' gious conduct which would change the eq-
`‘ uities significantly in plaintiffs favor.
`
`
`
`rce.
`
`‘
`F388
`i delay in bringing?
`vas presumptively;
`nable, and created’ __‘_v:,
`of ‘‘laches,’’ since ,3
`after it began toll.
`itive knowledge of
`.vity,
`eight years :57
`
`’ 17. Trade Regulation @7388
`
`‘Trademark holder failed to rebut the
`Dfesumption under competitor’s laches de-
`fense that its significant delay in bringing
`infringement
`lawsuit over
`term “smart
`
`'_
`
`

`
`
`
`400
`
`305 FEDERAL REPORTER, 3; ‘ERIES
`
`23. Trade Regulation @623
`
`To defeat a suit for injunctive relief, a
`
`defendant must prove elements of estoppel
`which requires more than a showing of
`mere silence on the part of a plaintiff; a
`defendant must show that
`it had been
`
`misled by the plaintiff through actual mis-
`representations, affirmative acts of miscon-
`duct, intentional misleading silence, or con-
`
`duct amounting to virtual abandonment of
`the trademark.
`
`Robert Tuttle (briefed), Ernie L. Brooks
`
`(argued), Frank A. Angileri (briefed), Pete
`N. Kiousis (briefed), Brooks & Kushman,
`
`Southfield, MI, for Plaintiff-Appellant.
`
`Philip J. Kessler (argued and briefed),
`Laurie
`J. Michelson
`(briefed), Butzel
`
`Long, Detroit, MI, William A. Sankbeil,
`Kerr, Russell & Weber, Detroit, MI, Jane
`
`Politz Brandt (briefed), Bruce S. Sostek
`
`(briefed), Thompson & Knight, Dallas, TX,
`James E. Stewart (briefed), Butzel Long,
`- Ann Arbor, MI, for Defendant-Appellee.
`
`Before KEITH, MOORE, and
`
`GILMAN, Circuit Judges.
`
`OPINION
`
`"KEITH, Circuit Judge.
`
`Plaintiff-Appellant, Nartron Corpora-
`tion (“Nartron” or the “plaintiff”), appeals
`the district court's grant of summary judg- _
`ment in favor of the Defendant Appellee,
`STMicroelectronics, Inc. (“ST” or the “de-
`
`fendant”) on ST’s claim of laches and ge-
`nericness in Nartron’s action for trade-
`
`tron filed an affidavit of incontestability
`with the United States Patent and Trade-
`
`1.
`
`ST was formed in 1987 as a result of the
`
`combination of Thomas Components Mostek
`with SGS Semiconductor.
`In 1998, ST
`changed its name from SGS Thompson Mi-
`croelectronics,
`Inc.
`to STMicroelectronics,
`Inc.
`
`2. Semiconductors and microchips are entire
`electric circuits on a silicon chip, frequently
`no larger than a dime, which control the flow
`of electrical current.
`
`
`
`._.._......,_
`
`,
`
`.
`
`,.
`
`mark infringement. For the reasons set
`forth below, we AFFIRM the district
`court's Order granting ST’s motion for
`summary judgment on both claims, and
`dismissing NartrOn’s complaint alleging
`federal and state law claims of trademark
`infringement, dilution, and unfair competi.
`tion.
`
`I_. BACKGROUND
`
`Nartron is a Michigan corporation with
`its principal place of business in Reed City,
`Michigan. Nartron develops and produces
`advanced electronic devices including sen-
`sors, acoustic devices, displays, controls,
`harnesses and connectors, lamps, flashers
`and switches.
`
`ST is a Delaware corporation having a
`principal place of business in Carrollton,
`Texas.‘
`ST manufactures and supplies
`semiconductors or “microchips,” and com-
`petes with numerous companies such as
`Motorola, International Rectifier and Si1i-
`
`conix in the semiconductor industry. Over
`the years, ST has also manufactured prod-
`ucts that combine power and intelligence
`on a single integrated circuit chip.
`
`,
`
`In April 1978, Nartron began using ‘
`“Smart power” as a trademark and in
`
`it obtained a federally registered '5“:
`1982,
`trademark for “Smart power” for “electri-
`cal relay assemblies in combination with
`electrical
`logic
`components
`and parts
`thereof.” In 1986, Nartron broadened the
`identification of its goods to “electrical
`‘power circuits in combination with electri-
`cal
`logic circuits and parts thereof.”
`In
`1987, pursuant to 15 U.S.C. § 1065, Nar-
`
`it
`-
`
`.
`
`

`
`’ _"iR'rRoN CORP. v. STMICROELEcrifiwics, INC.
`Citeas305 F.3d 397 (6th Cir. 2002) i
`
`401
`
`more, ST claims that it has consistently
`rejected Nartron’s contentions regarding
`the validity of Nartron’s “Smart power”
`trademark. According to ST, like the rest
`of the semiconductor industry, ST has only
`used the term “smart power” to refer gen-
`erally to technology that combines power
`transistors and control circuitry on a single
`
`integrated circuit. ST alleges that since at
`least 1988', it has manufactured and mar-
`
`keted products that contain integrated cir-
`
`cuits which combine power circuits and
`logic circuits. ST claims that its VIPoW-
`er® products are illustrative of products
`
`that utilize or embody this “smart power”
`
`technology.
`
`ST,
`
`for example, has de-
`
`scribed certain of its VIPoWer® products
`
`as follows: “The VIPoWer® MO process is
`
`a vertical smart power technology that
`
`allows a rugged power stage to be com-
`bined with on-chip analog and digital cir-
`
`cuitry.” See JA. at "883 (emphasis added).
`ST says that it uses the federally regis-
`tered trademark VIPower®—as well as its:
`
`company name—to clearly inform the
`reader that ST is the source of its VIPow-
`
`Indeed, claims ST, the ST
`er® products.
`name and federally-registered ST logo is
`
`prominently featured in the advertising,
`marketing and sales of ST products,
`in-
`cluding those that fall within the “smart
`power” category.
`'
`.
`'
`
`_ After each of ST’s uses, which Nartron
`alleged infringed its trademark, Nartron
`alleges that it took measures to stop the
`infringing activity. Nartron claims, con-
`trary to ST’s assertions of continuous use,
`that after each of Nartron’s objections, ST
`ceased use of Nartron’s “Smart power”
`mark. ST disagrees and instead contends
`that it clearly and unequivocally rejected
`Nartron’s contentions regarding the_legali-
`ty- of ST’s use of the term “smart power.”
`
`-
`
`"
`
`_
`
`
`
`yr the reasons Set
`[RM the district
`ST’s motion
`3
`both claims, and
`omplaint
`aneging
`iims of trademark
`3d unfair C0mpeti_
`
`
`
`erally registered
`wer” for “elect:
`
`
`
`
`
`mark 0ffice.3 Nartron alleges that over
`me\.ea1.5, it has expendedlsignificant time,
`em.-t and money advertising and promot-
`in, its “Smart powerf’ mark.
`a result,
`_\-:u.u.on alleges that 1t has acquired a rep-
`Nation as a provider of high-quality elec-
`meal componentsin connection with the
`fiSma1't power” mark. This, according to
`m_n.0n, distinguishes its products from
`those of its competitors.
`Inuthis action for trademark infringe-
`fimént’ Nartron alleges that ST made in-
`fringing use of its “Smart power” mark on
`"i;,,e\;era1‘ occasions.
`First,‘ between 1987
`.9‘-,1f1diji1993, Nartron alleges that ST made
`,“‘-Q01-gited use of Nartron’s “Smart power”
`7,§ark_w Nartron asserts that
`in August
`j’1937,_an ST employee presented a paper
`7-_"(§}i£it_1ed Smart Power Application in
`‘Multiple Systems at a Society of Automo-
`.71;i've; “Engineers (“SAE”) show.‘ Nartron
`chips,» 2
`.
`A-further" asserts that in October 1990, ST
`
`mpanies such__ aé
`"..pnhlished a’ manual entitled Smart Power
`Application MamtaL Finally, in October
`993,‘ Nartron claims that ST used Nar-
`o'n’s"7' “Smart power” mark in an ST
`.,pi'-tauiit armouncement published in the
`V ctober 25, 1993, issue of Electronic Eri-
`Times, and in an article pub-
`iijshea in the October 14, 1993, edition of
`_' Electronic Design.
`Second, Nartron al-
`.:‘leges"that after 1996, ST ran three adver-
`ftisements, which Nartron claims used its
`"“S_i_nart power” mark in an infringing
`anner. Nartron alleges that these ads
`emphasized the “Smart power” mark, cap-
`‘i‘_it31_izing or otherwise enhancing the two
`"§.'_'W:o1'ds'. However, unlike previous uses,
`‘ Nartron alleges that these uses were not
`isolated,
`
`' ST, on the other hand, alleges that it has
`always made continuous, non-infringing
`"38 of the “Smart power” mark. Further-
`
`3- Under the Lanham Act, 15 U.S.C. § 1065,
`‘he filing and acceptance of an affidavit of
`C°ntinuous use for five consecutive years from
`
`the date of registration makes the right of the
`registrant to use the regist