FIVETECH TECHNOLOGY INC.
MARY A. McLAUGHLIN, District Judge.
The plaintiff in this case, Southco, Inc. ("Southco"), is a manufacturer of hardware, including "panel" or "captive" screws. The defendant, Fivetech Technology Inc. ("Fivetech"), is a competitor of Southco. Southco has alleged patent and trademark infringement by Fivetech. Before the Court is Fivetech's motion for partial summary judgment of noninfringement of U.S. Trademark Registrations 2, 478, 685 and 3, 678, 153 (Docket No. 198) and Southco's motion to supplement the record (Docket No. 231). The Court will grant the motion for partial summary judgment and deny as moot the motion to supplement.
I. Procedural History
Southco is a manufacturer of hardware, including panel screws, which are also known as "captive screws" or "fastener screws." Compl. ¶¶ 6-7. Fivetech is a competitor of Southco. Answer ¶¶ 2, 7. Southco alleges that Fivetech has infringed its patents and trademarks through the sale of Fivetech's captive fasteners.
More specifically, Southco alleges infringement on its patent number 5, 851, 095 ("the 095 patent") issued on December 22, 1998; on its patent number 6, 280, 131 ("the 131 patent") issued on August 28, 2001; on its patent number 6, 468, 012 ("the 012 patent") issued on October 22, 2002; and on its Trademark registrations numbers 2, 478, 685 and 3, 678, 153. Compl. ¶¶ 11-18 (095 patent), 19-26 (131 patent), 27-34 (012 patent), 35-44 (trademark).
The Court granted summary judgment in favor of Fivetech on both the 095 and 131 patent claims. (Docket Nos. 185, 186, 194, 195). The Court also granted summary judgment in favor of Fivetech on the 012 patent claims. (Docket Nos. 250, 251). The Court now considers Southco's motion to supplement the record (Docket No. 231) and Fivetech's motion for partial summary judgment of noninfringement of U.S. Trademark Registrations 2, 478, 685 and 3, 678, 153 (Docket No. 198).
II. Summary Judgment Record
Southco has two registered trademarks for the "Segmented Circle" design that appears on its fasteners. Compl., Ex. E, F; Def. Br. at 2, ECF No. 198. On some of its fasteners, Fivetech uses a "Five Pentagon" mark, which Southco alleges infringes on the Segmented Circle design. Compl., Ex. A; Def. Br. at 2.
The primary issue in this summary judgment motion is whether Fivetech's Five Pentagon mark was used in United States commerce, so that the Lanham Act applies. The parties do not dispute the relevant facts, but argue whether those facts show use in commerce. There are four possible uses of Fivetech's Five Pentagon mark in United States commerce.
A. Sale of Captive Screws to SRI
In December 2009, Fivetech sold 500 fasteners to a company called Specialty Resources, Inc. ("SRI") in Pennsylvania. Def. Mot. Dismiss, Hsinyi Wang Decl. ¶ 11, ECF No. 23-3. Following this sale, a Fivetech employee sent an SRI employee price quotes on other Fivetech fasteners, but Fivetech never sold SRI any additional products. Id . ¶¶ 16-17. The 500 fasteners sold to SRI did not feature Fivetech's Five Pentagon mark. Def. Reply Mot. Dismiss, Supplemental J. Wang Decl. ¶ 12, ECF No. 26-1.
B. Fivetech's Patent Application
On March 25, 2010, Mr. Steven Rabin, a lawyer acting on behalf of Fivetech, filed a trademark application for the Five Pentagon mark with the United States Patent and Trademark Office. Pl. Opp. Mot. Dismiss, Ex. B, ECF No. 24-2. In response to a prompt, the application states that the "first use in commerce" of the Five Pentagon mark was "[a]t least as early as 03/10/2010" and that the Five Pentagon mark was in use in commerce at the time of the application. Id . The application was withdrawn and abandoned on June 24, 2010. Def. Mot., Allen Decl., Ex. J, ECF No. 198-11. Fivetech's president, Gary Wang, did not know that this application was filed, and according to Mr. Wang, Fivetech "does not use its mark in commerce in the United States, since Fivetech does not market or sell products in the United States." Def. Mot. Dismiss Supplemental Br., G. Wang Decl. ¶ 20, ECF No. 44-1.
C. Fivetech's Website and Catalogue
Fivetech's online catalogue, available on its website and therefore accessible from the United States, includes descriptions of fasteners bearing the Five Pentagon mark. Compl., Ex. A, ECF No. 1-1. This document is an exhibit attached to Southco's Complaint, but there is ...