On December 15, Western District of Washington Judge Ricardo Martinez granted defendant Sagem Morpho, Inc.’s motion for summary judgment dismissing plaintiff James Childers’ trademark infringement case. Seattle Trademark Lawyer reported December 6 that Judge Martinez dismissed plaintiff’s claims against co-defendant Sagem Defense Securite for lack of personal jurisdiction but refused to dismiss such claims against SMI. The action arose from SMI’s alleged infringement of plaintiff’s BIOCERT trademark through the use of X-BIOCERT on SMI’s affiliate’s website, www.xelios.com.
SMI argued in its motion and reply brief that plaintiff could not pursue his Lanham Act claims because he failed to present admissible evidence demonstrating that SMI infringed the BIOCERT mark directly or vicariously, or that it otherwise contributed to the alleged infringement of that mark.
In its opposition brief, plaintiff responded that his evidence established that X-BIOCERT and BIOCERT were sufficiently similar to justify a claim of consumer confusion. He also argued that SMI used X-BIOCERT in commerce by offering a software product called “PC Login Pro Suite 5 with X-Biocert” for sale to one of plaintiff’s employees.
Judge Martinez sided with SMI. The Court found “[t]here is no dispute that defendant did not offer to sell, or actually sell, PC Login to [plaintiff’s employee] or anyone else in the United States. Nor did defendant distribute or advertise PC Login to [plaintiff’s employee] or anyone else in the United States.” The Court also found that plaintiff failed to present any facts demonstrating that the person it communicated with about PC Login “worked for, or represented, defendant in any capacity.” Therefore, the Court concluded that “plaintiff has failed to raise a genuine issue of material fact with respect to the threshold element that defendant used the allegedly infringing trademark ‘in commerce….’”