[DO NOT PUBLISH]
IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________ FILED
U.S. COURT OF APPEALS
No. 09-14540 ELEVENTH CIRCUIT
APRIL 23, 2010
Non-Argument Calendar
JOHN LEY
________________________
CLERK
D.C. Docket No. 07-22937-CV-EGT
MYSTIQUE, INC.,
Plaintiff-Counter-Defendant-
Appellee,
versus
138 INTERNATIONAL, INC.,
Defendant-Counter-Claimant-
Appellant,
BANCO POPULAR NORTH AMERICA,
Defendant.
________________________
Appeal from the United States District Court
for the Southern District of Florida
________________________
(April 23, 2010)
Before CARNES, MARCUS and COX, Circuit Judges.
PER CURIAM:
Mystique, Inc. sued 138 International, Inc. (“138 International”) for trademark
infringement and related torts. Mystique, Inc. sought cancellation of the Mystique
trademark registered to 138 International, alleging that Mystique, Inc. had been using
the mark in commerce prior to 138 International’s use and registration. 138
International defended the lawsuit on the basis of laches and alleged in a counterclaim
that Mystique, Inc. was the infringer. The parties consented to resolution of the case
by a magistrate judge and filed cross-motions for summary judgment. The magistrate
judge granted Mystique, Inc. partial summary judgment, finding that Mystique, Inc.
used the Mystique mark in commerce before 138 International registered and used it;
that 138 International infringed Mystique, Inc.’s mark; and that the Mystique
trademark 138 International had registered must be cancelled. The magistrate judge
denied 138 International’s motion for summary judgment. Thereafter, the magistrate
judge held a trial on the issue of damages. After trial, the court awarded Mystique,
Inc. $2,950,000.
138 International appeals. It argues that the district court erred in granting
Mystique, Inc. partial summary judgment because there were genuine issues of fact
to be resolved regarding whether 138 International used the Mystique mark before
Mystique, Inc. did so. It argues that Mystique, Inc. should be barred from recovery
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by laches. And, it argues that Mystique, Inc. is not entitled to damages, as a matter
of law, because Mystique, Inc. did not register the Mystique mark.
This court reviews a district court’s grant of summary judgment by applying
the same legal standards used by the district court. See, e.g., Hilburn v. Murata Elecs.
N. Am., Inc., 181 F.3d 1220, 1225 (11th Cir. 1999). Summary judgment is
appropriate where “‘there is no genuine issue as to any material fact and the moving
party is entitled to a judgment as a matter of law.’” Wooden v. Bd. of Regents of the
Univ. Sys. of Ga., 247 F.3d 1262, 1271 (11th Cir. 2001) (quoting Fed. R. Civ. P.
56(c)). We review the trial court’s application of the laches defense for abuse of
discretion. See Sanders v. Dooly County, 245 F.3d 1289, 1291 (11th Cir. 2001). In
considering 138 International’s challenge to the damages award, we consider de novo
the question of the availability of damages under the Lanham Act.1 See United States
v. Pistone, 177 F.3d 957, 958 (11th Cir. 1999) (“The interpretation of a statute is a
question of law subject to de novo review.”)
We affirm, finding no reversible error. On the record considered by the
magistrate judge, there is no genuine issue of material fact as to whether 138
International used the Mystique mark before Mystique, Inc. Even if all the evidence
1
138 International challenges the legal availability of an award of damages, not the amount
of the damage award.
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138 International cites in its briefs is credited, that evidence is insufficient as a matter
of law to establish 138 International’s use of the mark in commerce prior to
Mystique’s use because it is only evidence of 138 International’s communications
with its suppliers. “[N]ot every transport of a good is sufficient to establish
ownership rights in a mark. To warrant protection, use of a mark ‘need not have
gained wide public recognition,’ but ‘[s]ecret, undisclosed internal shipments are
generally inadequate.’” Planetary Motion, Inc. v. Techplosion, Inc., 261 F.3d 1188,
1196 (11th Cir. 2001) (quoting Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260,
1265 (5th Cir. 1975)). “Trademark claims based upon shipments from a producer’s
plant to its sales office, and vice versa, have often been disallowed.” Blue Bell, 508
F.2d at 1265.2
And, the court did not err in denying 138 International’s motion for summary
judgment on the equitable ground of laches. 138 International did not carry its
burden of proof; it did not prove when Mystique knew or should have known of the
infringement of its mark. Failure to prove that fact is fatal to the laches defense. See
Kason Indus., Inc. v. Component Hardware Group, Inc., 120 F.3d 1199, 1206 (11th
Cir. 1997).
2
In Bonner v. City of Prichard, 661 F.2d 1206 (11th Cir. 1981) (en banc), the Eleventh
Circuit adopted as binding precedent all decisions handed down by the former Fifth Circuit prior to
October 1, 1981.
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Finally, the court did not err in awarding damages to Mystique, Inc. Damages
may be awarded where, as here, the violation is one of section 43(a) of the Lanham
Act, codified at 15 U.S.C. § 1125(a). Registration of the mark is not required. See
15 U.S.C. § 1117(a) (“When a violation of any right of the registrant of a mark
registered in the Patent and Trademark Office, a violation under section 1125(a) or
(d) of this title, or a willful violation under section 1125(c) of this title, shall have
been established in any civil action arising under this chapter, the plaintiff shall be
entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject
to the principles of equity, to recover (1) defendant’s profits, (2) any damages
sustained by the plaintiff, and (3) the costs of the action.”).
AFFIRMED.
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