Free Motion for Summary Judgment - District Court of Connecticut - Connecticut

Case 3:03-cv-00874-MRK

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Filed 08/23/2004

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UNITED STATES DISTRICT COURT DISTRICT OF CONNECTICUT LIGHT SOURCES, INC., and TAN SYSTEMS, INC., Plaintiffs v. Civil Action No. 303 CV 874 (MRK) COSMEDICO LIGHT, INC., Defendant At New Haven August 23, 2004

PLAINTIFFS' LIGHT SOURCES, INC. AND TAN SYSTEMS, INC., , MOTION FOR PARTIAL SUMMARY JUDGMENT Pursuant to Rule 56 of the Fed.R.Civ.P., D.Conn. L.Civ.R. 9(c), and the Court' Scheduling Order dated June s 2, 2004, Plaintiffs, Light Sources, Inc. and Tan Systems, Inc., hereby move for Partial Summary Judgment as to: (a) Defendant Cosmedico' First Counterclaim in its s

Answer and Counterclaims to Plaintiffs' Second Amended Complaint, wherein Defendant is asserting that Plaintiffs' use of the letters THR and TLR on sun lamps infringes Defendant' federally registered mark VHR® and Defendant' s s composite registered word and design mark COSMOLUX VLR® with a cat design for sun lamps pursuant to the Trademark ORAL HEARING REQUESTED

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Laws of the United States, 15 USC section 1114(1). (b) Defendant Cosmedico' Second Counterclaim in its s

Answer and Counterclaims to Plaintiff' Second Amended s Complaint, wherein Defendant is asserting that Plaintiffs' use of the letters THR and TLR as applied to Plaintiffs' sun tanning lamps constitutes a false designation of origin under the Trademark Laws of the United States, viz. 15 USC sect. 1125(a), and which use of said letters THR and TLR by Plaintiffs on its sun tanning lamps constitutes the unlawful and infringing use of Defendant' " s Cosmedico' s, VHR® and COSMOLUX VLR® marks" which are composite word and , design marks. (c) Defendant Cosmedico' Fourth Counterclaim in its s

Answer and Counterclaims to Plaintiffs' Second Amended Complaint, wherein Defendant is asserting that Cosmedico' s registered VHR® and Cosmedico' unregistered VLR mark and s Cosmedico' composite word and design registered marks, s COSMOLUX VLR and cat design, are being infringed under the common law by Plaintiffs' use of the THR and TLR letters which are applied to Plaintiffs' sun tanning lamps. (d) Defendant Cosmedico' Fifth Counterclaim, wherein s

Defendant is asserting that Plaintiffs' use of the letters THR and TLR on its sun lamps constitutes unfair competition

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and unfair deceptive acts under Connecticut General Statutes, Chapter 42, section 110(b). (e) Summary Judgment is also requested with respect

to Count I of Plaintiffs' Second Amended Complaint which seeks a declaratory judgment of non-infringement, which is merely a mirror image of Defendant' Counterclaim. s The grounds for the Motion are: 1. Plaintiff, Light Sources, use of the letters THR

and TLR comprise a portion of a thirteen digit model number which is imprinted on every lamp Light Sources manufactures as an exclusive OEM product, which Light Sources sold exclusively to co-plaintiff, Tan Systems, Inc., e.g. FR71T12 THR-160 or FR71T12 TLR-100. 2. The marking used on Light Sources sun tanning

lamps bearing the model numbers noted above prominently indicate that Light Sources is the source and manufacturer of the lamps bearing said model numbers. 3. The packing material which is required by FDA

regulations to accompany the goods clearly identifies Light Sources as the manufacturer and Tan Systems, Inc. as its exclusive distributor of the accused lamps. 4. Tan Systems, Inc.' house-brand mark TURBO0POWER s

is prominently associated with THR and TLR letters on the sun lamps Light Sources makes exclusively for Tan Systems

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wherein the use of the letters THR and TLR designate physical differences between the two so-marked TURBO0POWER lamps, i.e. either a high output 160 watt reflector lamp or a low output 100 watt reflector lamp. 5. VHR and VLR are descriptive acronyms that describe

the physical characteristics of Cosmedico' lamps bearing s said letters, e.g. VHR stands for a Very High Output 160 watt reflector lamp, and VLR stands for lower output ­ 100 watt lamp. VHR and VLR are standard acronyms that are

known and used by others throughout the entire sun tanning industry to identify very high output reflector, 160 watt lamps from lower output reflector 100 watt lamps. 6. Plaintiffs do not use the COSMOLUX VLR or COSMULUX

VHR marks or the VLR or the VHR marks per se which Defendant is asserting are being infringed by Tan Systems and Light Sources. 7. Plaintiffs' use of THR and TLR letters does not

have the same appearance, phonetics or connotations of the asserted Cosmedico VLR and VHR marks. 8. VHO, HO and VHR are well known generic or highly

descriptive acronym and commonly used throughout the sun tanning industry to designate a specific type of sun lamp having certain physical characteristics or power outputs in common.

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9.

A proper analysis of the Polaroid Factors noted in

Polaroid Corp. v. Polaroid, 287 F.2d 492; 128 USPC 411 (2 Cir 1961), will determine that as a matter of law, there can be no likelihood of confusion. 10. Cosmedico admits that it is not aware of any

instance of any actual confusion and that Cosmedico has not been damaged. 11. Cosmedico does not have any Federal registration The mark VLR has been registered to

for the mark VLR.

another unrelated party or goods that are classified in the same international class, 011, that Cosmedico' goods are s classified. 12. Cosmedico has stipulated in the Joint Report of

the Parties Planning Meeting filed with the Court on or about August 20, 2003, that " Plaintiff, Light Sources, Inc. (Light Sources) have never applied the asserted common law COSMOLUX VLR to any product." And for other reasons as more specifically set forth in Plaintiffs' attached supporting Memorandum, attached Appendix and Rule 56(a)(1) statement of undisputed facts which are being submitted under seal as they contain disclosures, exhibits and arguments that refer to Cosmedico' alleged designated confidential and/or highly s

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confidential information pursuant to the Protective Order as modified by the court' Order of December 17, 2003. s Concurrently herewith, Plaintiffs are filing a motion to unseal Plaintiffs' supporting Memorandum, Appendix and Rule 56(a)(1) statement and to vacate said Protective Order. Respectfully submitted, ____________________________ Arthur T. Fattibene, CT06916 Counsel for Plaintiff Fattibene and Fattibene 2480 Post Road Southport, CT 06890 Tel: 203-255-4400 Fax: 203-259-0033

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