                 NOT RECOMMENDED FOR FULL-TEXT PUBLICATION
                            File Name: 10a0663n.06

                                    Case Nos. 08-2276, 09-1920                             FILED
                                                                                       Oct 28, 2010
                           UNITED STATES COURT OF APPEALS                        LEONARD GREEN, Clerk
                                FOR THE SIXTH CIRCUIT

 TENNECO AUTOMOTIVE OPERATING                           )
 COMPANY, INC.,                                         )
                                                        )
           Plaintiff-Appellant,                         )       ON APPEAL FROM THE
                                                        )       UNITED STATES DISTRICT
                  v.                                    )       COURT FOR THE EASTERN
                                                        )       DISTRICT OF MICHIGAN
 KINGDOM AUTO PARTS; PRIME                              )
 CHOICE AUTO PARTS,                                     )
                                                        )
           Defendants-Appellees.                        )
                                                        )
 _______________________________________

BEFORE: BATCHELDER, Chief Judge; MOORE and COOK, Circuit Judges.

          ALICE M. BATCHELDER, Chief Judge. Plaintiff-Appellant Tenneco Automotive

Operating Company, Inc. (“Tenneco”) seeks reversal of the district court’s grant of summary

judgment to the Defendants-Appellees Kingdom Automotive Parts (“Kingdom”) and Prime Choice

Auto Parts (“Prime Choice”) (collectively “Defendants”) on Tenneco’s trademark infringement and

related claims and Defendants’ declaratory counterclaim that Tenneco’s product numbers are not

protectable marks. In this consolidated appeal, Tenneco also seeks reversal of the district court’s

denial of its motion for a preliminary injunction. For the reasons herein we affirm the district court’s

orders.

                                                   I.

          Tenneco and Kingdom are competitors in the strut assembly business. Tenneco does

business out of Illinois, while Defendants are both Canadian corporations with no United States sales
Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



force. Both companies produce struts that are used to replace a car’s original manufacturer’s part,

and the struts themselves are not covered by any patent or trademark protection. Tenneco markets

its “Quick Strut” struts under the popular Monroe brand, and holds a registered mark in “Quick

Strut.” Defendants sell under the “StrutTEK” label.

          Tenneco began using five-digit product numbers to identify its struts in 1983, and has

registered several of those five-digit numbers with the United States Patent and Trademark Office

(“USPTO”). In 2003, Tenneco added a sixth digit, a “1”, to the beginning of its numbers. These

numbers describe the strut they are assigned to and identify the vehicle the strut fits into. For product

number 171994, for example, “1” indicates a strut assembly, “71” a particular model of strut, and

“994” designates the car it is designed for, here a 2002 Ford Escort.

          When Defendants prepared to enter the market, they sent one of Tenneco’s struts to a Chinese

manufacturer with instructions to copy it. In doing so, the manufacturer also copied the six-digit

product number, which is stamped into the column of the strut directly beneath Tenneco’s “Quick

Strut” label. The product number was stamped into Defendants’ struts in the same place, directly

beneath Defendants’ own “StrutTEK” label. Defendants accordingly used the stamped product

number to identify their struts on their packaging and other materials.

          Tenneco attempted to register the six-digit product numbers as trademarks with the USPTO,

but was unsuccessful after several attempts. On June 16, 2008, the USPTO refused registration of

“171994” and several other numbers, stating that “[r]egistration is refused because the applied-for-

mark, as used on the specimen of record, merely identifies a model number; it does not function as

a trademark to identify and distinguish applicant’s goods from those of others and to indicate the


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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



source of applicant’s goods.” The USPTO refused the applications again on July 31, 2008. On

February 11, 2009, the USPTO seemingly reversed itself, declared the product numbers inherently

distinctive, and approved them for publication and registration. The USPTO later withdrew this

notice, however, determining that the assigned attorney had erred in approving the registration. On

April 6, 2009, the USPTO reinstated the original refusals, commenting that the “evidence in the

record overwhelmingly points to use of applicant’s mark as a model or part number.”

          Tenneco filed a complaint against Defendants in January, 2008, and later filed a Second

Amended Complaint. Tenneco alleged various violations of the Lanham Act, 15 U.S.C. §§ 1114,

1125, and Michigan’s Consumer Protection Act, M.C.L. §§ 445.901 et seq., as well as tortious

interference with prospective economic advantage from Defendants’ allegedly unlawful use of

Tenneco’s product numbers and “Quick-Strut” mark.1                 Defendants filed a counterclaim for

declaratory judgment that Tenneco’s product numbers are not protectable marks.

          Tenneco moved for a preliminary injunction to prevent Defendants from continuing with

their allegedly infringing activities. The district court denied the motion and Tenneco filed an

interlocutory appeal with this Court. While that appeal was pending the litigation continued below.

After discovery, Defendants moved for summary judgment, which the district court granted on all

counts but one. The parties stipulated to the dismissal of that count pending the result of this appeal

and the district court entered final judgment. Tenneco now brings this timely appeal (No. 09-1920),




          1
         Tenneco also made several other allegations which were disposed of on summary judgment and were not
appealed. For the sake of clarity we have not recited those counts here.

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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



which has been consolidated with the still-pending interlocutory preliminary injunction appeal (No.

08-2276).

          Tenneco presses several arguments on appeal, contending that: the district court erred by

finding that Tenneco did not claim its product numbers were inherently distinctive; the district court

erred by finding that the product numbers had not acquired secondary meaning; the district court

erred by finding that Defendants did not infringe on its Quick-Strut mark; and the preliminary

injunction should have been granted. We address each argument in turn.

                                                      II.

          A.        Jurisdiction and Standard of Review

          We have jurisdiction over the appeal of summary and final judgment from the district court

under 28 U.S.C. § 1291. We review the district court’s grant of summary judgment de novo,

DeGidio v. West Group Corp., 355 F.3d 506, 509 (6th Cir. 2004), but review evidentiary findings

for an abuse of discretion. Snyder v. AG Trucking, Inc., 57 F.3d 484, 492 (6th Cir. 1995). On

summary judgment the moving party has the burden to show that there are no genuine issues of

material fact, and the evidence is read in the light most favorable to the nonmoving party. DeGidio,

355 F.3d at 509. Summary judgment is appropriate “if the pleadings, the discovery disclosure

materials on file, and any affidavits show that there is no genuine issue as to any material fact and

that the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c)(2). “The mere

existence of a scintilla of evidence in support of the plaintiff’s position will be insufficient; there

must be evidence on which the jury could reasonably find for the plaintiff.” Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 252 (1986). “Summary judgment is appropriate where the nonmoving


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party fails to make a showing sufficient to create a genuine issue of material fact regarding a matter

on which the nonmoving party has the burden of proof.” Dole v. Elliott Travel & Tours, Inc., 942

F.2d 962, 968 (6th Cir. 1991).

          B.        Inherently Distinctive and Descriptive Marks—Applicable Law

          Tenneco claims Defendants unlawfully used Tenneco’s product number on Defendants’ struts

in violation of the Lanham Act, 15 U.S.C. § 1125(a), Michigan law, and common law. The elements

of all these claims are the same, as is the analysis–failure under one is failure under all. See

Leelanau Wine Cellars, LTD v. Black & Red, Inc., 502 F.3d 504, 521 (6th Cir. 2007); DeGidio, 355

F.3d at 509–10; Wynn Oil Co. v. Am. Way Serv. Corp., 943 F.2d 595, 604–05 (6th Cir. 1991).

          The Lanham Act, 15 U.S.C. § 1051, et seq., “was intended to make ‘actionable the deceptive

and misleading use of marks’ and ‘to protect persons engaged in . . . commerce against unfair

competition.’” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767–68 (1992) (quoting 15

U.S.C. § 1127). The Act forbids “[a]ny person . . . [from] us[ing] in commerce any word, term,

name, symbol, or device . . . which is likely to cause confusion, or to cause mistake, or to deceive

. . . as to the origin . . . of his or her goods . . . or in commercial advertising or promotion,

misrepresent[ing] the nature, characteristics, qualities, or geographic origin of his or her . . . goods.”

15 U.S.C. § 1125(a)(1). Any person who does so is “liable in a civil action by any person who

believes that he or she is likely to be damaged by such act.” Id. The Act protects against

infringement of both registered and unregistered marks. DeGidio, 355 F.3d at 509.

          “[W]hether Plaintiff’s mark qualifies for trademark protection is determined by where the

mark falls along the established spectrum of distinctiveness.” Id. at 510 (internal quotation marks


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and citation omitted). In increasing order of distinctiveness, the categories are (1) generic; (2)

descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful. Two Pesos, 505 U.S. at 768. “Generic”

marks are given no protection, while the latter three types are “deemed inherently distinctive”

because “their intrinsic nature serves to identify a particular source of a product” rather than merely

the product itself. Id.; see Leelanau, 502 F.3d at 512–13. “Marks which are merely descriptive of

a product are not inherently distinctive. When used to describe a product, they do not inherently

identify a particular source, and hence cannot be protected.” Two Pesos, 505 U.S. at 769.

Descriptive marks can only receive trademark protection if they have acquired secondary meaning.

Id. If the mark has acquired secondary meaning, the infringer is only liable under the Act if the mark

holder proves a “likelihood of confusion.” Id.; 15 U.S.C. § 1125(a)(1).

          “A descriptive mark achieves secondary meaning when ‘in the minds of the public, the

primary significance of a product feature or term is to identify the source of the product rather than

the product.’” Leelanau, 502 F.3d at 513 (emphasis added) (quoting Inwood Labs, Inc. v. Ives Labs,

Inc., 456 U.S. 844, 851 n.11 (1982)). Or, put another way:

          To acquire a secondary meaning in the minds of the buying public, an article of
          merchandise when shown to a prospective customer must prompt the affirmation,
          “That is the article I want because I know its source,” and not the negative inquiry
          into “Who makes that article?” In other words, the article must proclaim its
          identification with its source, and not simply stimulate inquiry about it.

Ferrari S.P.A. Esercizio Fabriche Auto. E Corse v. Roberts, 944 F.2d 1235, 1239 (6th Cir. 1991)

(hereinafter “Esercizio”). The best evidence of secondary meaning is direct evidence, but this is

rarely available. DeGidio, 355 F.3d at 513 (citation omitted). When direct evidence is unavailable

we draw inferences from the following factors to aid our determination: “1. direct consumer


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testimony; 2. consumer surveys; 3. exclusivity, length, and manner of use; 4. amount and manner

of advertising; 5. amount of sales and number of customers; 6. established place in the market; and

7. proof of intentional copying.” Herman Miller, Inc. v. Palazzetti Imports & Exports, Inc., 270 F.3d

298, 311–12 (6th Cir. 2001). Tenneco has the burden of proof to show secondary meaning, and that

burden is substantial. DeGidio, 355 F.3d at 513.

          C.        Findings Below

          The district court found that Tenneco admitted that the product numbers are descriptive

because the product numbers “are readily decoded into information regarding type of product.” The

district court then analyzed the seven factors listed above. For direct consumer evidence, the district

court found that the 27 “Customer Declarations” proffered by Tenneco could not be considered by

the court because they were neither sworn to in front of a notary nor made on personal knowledge.

Furthermore, when Defendants tried to conduct discovery on the declarations they were “thwarted

due to the alleged disappearance of documents and electronically stored information.” The court

noted that Tenneco has used the six-digit numbers since 2003 on its packaging, catalogues, and other

printings. The court also found that the number is always accompanied by the “Monroe” mark,

which identifies the source, while the number describes the product. Tenneco spent approximately

$1.1 million dollars on advertising that included the product numbers, but the court found that there

was no evidence presented that the advertising made the product numbers into source identifiers.

On the last factor, the court found that, while Defendants did intentionally copy the strut itself,

“intentional copying is not relevant” because this is not a trade dress case.




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          Finally, the court noted the USPTO’s determination that the product numbers did not have

secondary meaning, along with Defendants’ expert Mr. Enborg’s testimony coming to the same

conclusion, and found that evidence persuasive. The district court held that there remained no

genuine issue of material fact with respect to the issue of whether any secondary meaning existed

in the product numbers, and granted Defendants’ motion for summary judgment on the product

number claims.

          D.        Inherent Distinctiveness

          Tenneco argues that the district court erred in determining that Tenneco “waived” the

question of inherent distinctiveness by declaring its product numbers descriptive. It further argues

that because the USPTO found the product numbers to be inherently distinctive and then reversed

itself, there is a genuine issue of fact on this question.

          Tenneco is incorrect. The district court did not hold that Tenneco “waived” the argument,

it merely noted that Tenneco itself admitted its product numbers were descriptive, which the record

shows that Tenneco did do. Even if it was improper for the court to take such a statement as an

admission, the burden is on Tenneco to prove its mark deserves protection. The fact that the

USPTO, after repeatedly refusing to permit Tenneco to register the numbers, briefly found the

product numbers inherently distinctive before subsequently reversing itself in emphatic fashion, not

only does not support Tenneco’s position but strongly undercuts it. Furthermore, these product

numbers, which Tenneco admits are coded to identify the part, do not satisfy the tests for suggestive,

arbitrary, or fanciful marks, nor does Tenneco offer any argument or proof that they do. Tenneco’s

conclusory statements are insufficient to raise a genuine issue of material fact on this question.


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          E.          Secondary Meaning

          Tenneco also contends that the district court improperly deemed irrelevant or ignored its

evidence for secondary meaning, focusing on the first and final factors: direct consumer testimony

and intentional copying. Tenneco claims that the court abused its discretion by refusing to consider

27 unsworn declarations, and erred by ignoring without comment three additional distributor

declarations. It also argues that the district court erred by declaring intentional copying to be

irrelevant.

          We begin by considering whether the district court improperly ignored or deemed irrelevant

the evidence Tenneco has identified. Even if there is any evidence that should have been considered

below and was not, however, that evidence does not, on its own, raise a genuine issue of material

fact. Rather, that evidence must be considered along with the other factors as a whole to determine

if any ultimate error occurred. See Herman Miller, 270 F.3d at 315 (reversing the district court when

a genuine issue of material fact remained on the question of secondary meaning only after

considering all the factors together).

                      1.       Allegedly Ignored Evidence

                               a.        The 27 Unsworn Declarations

          Rule 56(e)2 requires district courts to rely on affidavits, discovery, and disclosure materials

when ruling on a motion for summary judgment. An affidavit “is required to be sworn to by the

affiant in front of an ‘officer authorized to administer oaths,’” Peters v. Lincoln Elec. Co., 285 F.3d



          2
              All references to the Federal Rules of Civil Procedure are to the rules in effect at the time of the orders
below.

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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



456, 475 (6th Cir. 2002) (quoting Blacks’ Law Dictionary 54 (5th ed. 1979)), and must be made on

the affiant’s personal knowledge. Fed. R. Civ. P. 56. 28 U.S.C. § 1746 allows for unsworn

declarations to take the place of affidavits, so long as those declarations are made “under penalty of

perjury” and follow one of the statute’s stated formulas. Peters, 285 F.3d at 475.

          Summary judgment is appropriate where the nonmoving party fails to present admissible

evidence to defeat the summary judgment motion. Dole, 942 F.2d at 968. In Dole, the defendants

argued that the district court erred in granting summary judgment to the plaintiff when defendants

introduced one affidavit based solely on hearsay and two unsworn statements that purported to

undermine the plaintiffs’ evidence. Id. The defendants claimed they should have been allowed to

proceed to trial to prove that plaintiff’s records were not accurate. We affirmed the district court,

holding that the hearsay affidavit could not be considered and the unsworn statements “must be

disregarded because a court may not consider unsworn statements when ruling on a motion for

summary judgment.” Id. at 968–69. “Summary judgment for the [plaintiff] was appropriate because

defendants failed to present admissible evidence to defeat the [plaintiff’s] properly supported motion

for summary judgment.” Id. at 968.

          Regardless of the impact of Tenneco’s failure to produce documentation regarding these

declarations, it was not an abuse of discretion for the district court to refuse to consider the 27

unsworn declarations that were not clearly made on personal knowledge nor made under the penalty

of perjury. The declarations are basically identical, and each states that the signatory “declares that

all statements made herein of my own knowledge are true and that all statements made on

information and belief are true.” The documents, however, do not specify which statements were


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made under information and belief and which were made from personal knowledge. As in Dole, the

declarations are unsworn and were not made under the penalty of perjury. The district court, limited

to admissible evidence on summary judgment, did not abuse its discretion by refusing to consider

these declarations.

                              b.        Three Distributor Declarations

          Tenneco next points to declarations given by three of its distributors. These declarations state

that each of the distributors personally associate the “171” product numbers with Monroe products

based upon the distributor’s industry experience. Each of the declarations is properly made under

penalty of perjury and is admissible. None of the declarations contains any statements about what

Tenneco’s ultimate consumers believe. Tenneco argues that the district court improperly ignored

these declarations and that they create a genuine issue of material fact. We find that the declarations

are relevant, albeit weak, evidence of secondary meaning, and the district court erred by not

considering them.

          “Direct consumer testimony ‘need not take the form of explicit testimony from consumers

stating that “I care that X produced this product.” ’ ” Herman Miller, 270 F.3d at 312 (quoting

Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 294 (7th Cir. 1998)). The plaintiff in

Herman Miller, Herman Miller, Inc., was the producer and copyright-holder of several world-famous

furniture designs. Id. Herman Miller sued Palazzetti Imports for infringing the copyright of its

famous Eames lounge chair and ottoman. The district court granted summary judgment for

Palazzetti, and Herman Miller appealed. Herman Miller had no direct consumer testimony to prove

secondary meaning, but relied on “a variety of circumstantial testimony indicating a link between


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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



Herman Miller and the Eames lounge chair and ottoman in the mind of the consuming public for

modern furniture.” Id. The circumstantial evidence was both substantial and impressive, including

affidavits and supporting evidence from historians, design experts, authors, past and present

employees, and various celebrities who all associated the Eames lounge chair with Herman Miller.

Id. We noted that in Marketing Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929 (6th Cir. 1999),

rev’d on other grounds, 532 U.S. 23 (2001), this court relied on the testimony of former employees

of both the plaintiff and defendant in the absence of direct consumer testimony in a trade dress claim.

Herman Miller, 270 F.3d at 312 (citing TrafFix, 200 F.3d at 937). We found this evidence to be a

factor in Herman Miller’s favor, but not dispositive. We reversed the district court’s grant of

summary judgment only after analyzing all seven factors in the secondary meaning test and finding

that Herman Miller had presented sufficient evidence of secondary meaning to create a genuine issue

of material fact. Id. at 315 (“Taken together, Herman Miller has produced sufficient evidence to

create a genuine issue of material fact . . . .”).

          Tenneco argues that this court should follow the Seventh Circuit’s approach from Thomas

& Betts, where that court found that the mark-holder’s direct consumer evidence created a genuine

issue of material fact. 138 F.3d at 294. There, the mark-holder presented declarations from “[f]our

distributors and two consultants, all of whom have considerable experience in the electrical industry,

[which] state unequivocally . . . that they recognize and associate the oval shape . . . with T & B.”

Id. The court found that because T & B sold its products primarily through distributors, the relevant

class of consumers consisted of both ultimate consumers and dealers. The Seventh Circuit reversed




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the district court’s grant of summary judgment and held that these declarations created a genuine

issue of material fact. Id.

          Applying Herman Miller to the case before us, we find that the district court erred by not

considering the three distributor declarations. In Herman Miller, the court considered volumes of

circumstantial evidence assembled by the plaintiff, including affidavits from nonparty experts in the

relevant field. The district court should have considered the declarations of the mechanics and

distributors who have extensive experience in the industry. We decline, however, to find, following

Thomas’ approach, that the declarations create a genuine issue of material fact. While the court in

Herman Miller did quote from Thomas in its discussion of direct consumer testimony, it did not cite

to Thomas’ holding, nor did it determine based on this factor alone that a genuine issue of material

fact remained as to secondary meaning. Instead, the court analyzed all seven factors in the light of

all the applicable evidence before coming to the conclusion that the district court had erred. Herman

Miller, 270 F.3d at 315–16.

          This conclusion is supported by our treatment of similar evidence in “likelihood of

confusion” cases. In Champions Golf Club, Inc. v. The Champions Golf Club, Inc., the district court

had rejected intermediate vendor testimony as irrelevant, but we reversed the court’s grant of

summary judgment, holding that evidence regarding “point of sale” consumers was not the only

relevant evidence of confusion. 78 F.3d 1111, 1119 (6th Cir. 1996). Similarly, in Esercizio we

found that the protections of the Lanham Act extended beyond preventing customer confusion at the

point of sale. 944 F.2d at 1244. We have also held that the evidence of three or four selected

individuals is insufficient to raise a genuine issue of material fact as to actual confusion.


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Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1110 (6th Cir. 1991).

In Homeowners Group, the district court granted summary judgment and we affirmed, finding that

“the existence of only a handful of instances of actual confusion after a significant time or a

significant degree of concurrent sales under the respective marks may even lead to an inference that

no likelihood of confusion exists.” Id.; see also Leelanau, 502 F.3d at 519 (finding a few stories

from customers insufficient to demonstrate clear error after a bench trial); Champions Golf, 78 F.3d

at 1120 (finding that “four incidents is not a considerable quantum of evidence of actual confusion”).

These cases, together with Herman Miller, support the conclusion that the declarations are relevant,

but very weak, evidence in Tenneco’s favor. The declarations are insufficient by themselves to

create a genuine issue of material fact.

                              c.        Intentional Copying

          The district court found Tenneco’s evidence that Defendants copied Tenneco’s struts to be

irrelevant because this is not a trade dress case. Tenneco argues that the district court erred, and

further argues that its evidence of intentional copying raises a genuine issue of material fact. Besides

the copying itself, Tenneco points out that Defendants used the product numbers on their external

packaging, labels, and packing slips. Tenneco characterizes this use as an “admission” of secondary

meaning that consumers, or at least distributors, associate the numbers with Tenneco.

          Defendants, apparently realizing the district court’s error, attempt to recast the district court’s

language by arguing that the district court was distinguishing this case from the trade dress cases on

the basis of what is being protected. Defendants also point out that the strut was not protected, that

Tenneco themselves copied it from the original part, and that there is no evidence Defendants


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instructed their Chinese contractor to copy the product number as well. As to the labels, Defendants

argue that Tenneco’s argument for an “admission” is overdrawn. Use of the product numbers as a

cross-reference is common practice in the industry; furthermore, Tenneco offers nothing but its own

gloss on the numbers to show that they point out the source rather than the product.

          Tenneco is correct that the district court erred when it stated, apparently categorically, that

because this was not a trade dress case the evidence of intentional copying was irrelevant. See, e.g.,

Two Pesos, 505 U.S. at 773 (“[T]he protection of trademarks and trade dress under § 43(a) [of the

Lanham Act] serves the same statutory purpose of preventing deception and unfair competition.

There is no persuasive reason to apply different analysis to the two.”); Herman Miller, 270 F.3d at

308 n.2 (“Trade dress issues follow the same rules and laws as trademark issues.”). The district

court should not have found Tenneco’s evidence of intentional copying to be irrelevant because this

is a trade mark case.

          Tenneco’s application of the trade dress cases to the present case, however, is flawed. “Trade

dress refers to the image and overall appearance of a product.” Herman Miller, 270 F.3d at 308

(internal quotation marks and citation omitted). The trade dress cases, including Esercizio, Two

Pesos, and Herman Miller, all focus on the intentional copying of the relevant trade dress at issue,

whether the Ferrari exterior, the restaurant appearance and atmosphere, or the lounge chair and

ottoman. See Esercizio, 944 F.2d at 1239; Two Pesos, 505 U.S. at 765 n.1; Herman Miller, 270 F.3d

at 314. The Supreme Court in Two Pesos and this Court in Herman Miller and Esercizio considered

evidence of intent to specifically copy those protectable trade dress designs. These were broad

inquiries because the idea of trade dress is broad and encompasses the whole scope of the product.


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          Here, however, the product itself is not protected. Tenneco seeks protection only for the

product number. Defendants were perfectly within their rights to send the strut to China to be

copied, despite Tenneco’s repeated attempts to paint that action as a black mark. As the district court

noted, the law favors the copying of nonprotected items. The testimony Tenneco quotes from

Defendants’ President Gary Calagoure simply does not provide evidence of an intent to copy the

product numbers. Calagoure admits that they sent the product to China to be copied, and that the

numbers were stamped on the struts. He further characterizes this as a mistake that has been

corrected. This is not a trade dress case, where the Court is necessarily engaged in a broad inquiry.

Here, we are looking for evidence of intent to copy a specific mark, and that evidence is absent.

Once the product number was already on the strut, it made perfect sense for Defendants to use it on

packaging and labels, which they did until switching, as a result of this litigation, to new product

numbers.3 Therefore, although the district court’s given reason for deeming the evidence irrelevant

was incorrect, we find that Tenneco has not produced any evidence of intentional copying.

          Because the three distributor declarations should have been considered below, we must

briefly detail and weigh the evidence for all the factors.

                    2.        Weighing All the Factors

                              a.        Direct Consumer Evidence

          Tenneco’s only direct consumer evidence is the aforementioned declarations of three of its

distributors, each declaring that from their experience in the field they personally associate the 171


          3
          Because there is no evidence supporting the intentional copying of the product numbers themselves, we do
not address Tenneco’s assertion of a presumption in its favor.



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product number with the Monroe brand.4 Taking all available inferences in Tenneco’s favor, this

factor weighs very slightly in Tenneco’s favor.

                              b.        Consumer Surveys

          There are no consumer surveys in this case. In cases where no survey evidence was filed this

Court has treated the factor as favoring neither party, although it’s absence certainly does not help

the mark holder’s effort to meet its burden to prove secondary meaning. See Herman Miller, 270

F.3d at 313 (“While consumer surveys certainly would have been helpful to Herman Miller’s claim,

their absence is not fatal, at least on summary judgment.”).

                              c.        Exclusivity, Length, and Manner of Use

          The district court noted that Tenneco claimed that it continuously used its “71” product

numbers since 1983 and its “171” numbers since 2003. These numbers appear on the struts,

packaging, sales catalogs, sell sheets, price lists, and promotional rebates. However, the district

court noted that on the packaging the number is always prominently accompanied by the Monroe

trademark. For the purpose of the end consumer, the district court found that the “use of multiple

marks appearing together suggests that the product number has a different purpose than identifying

the product as belonging to Tenneco. The Monroe mark identifies the source of the product, and the

number identifies the type of product contained inside the package.” Tenneco does not seriously

dispute this finding, arguing only that there is “no requirement . . . that a mark be used or advertised




          4
           The only other evidence Tenneco submitted to the district court on this factor was Richard Alameddine’s
declaration, which the district court refused to consider following Defendants’ objection. Tenneco has not appealed
that decision, so we do not consider it either.

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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



alone in order to be entitled to protection.” The district court’s finding, however, is not a strictly

legal one, but rather one of common sense, and is not incorrect.

          Although neither of the parties nor the district court mentions it in this context, we also find

it significant that the product numbers are used to specifically describe the strut and identify the

vehicle to which the strut is designated. This use strongly favors Defendants’ claim that these

product numbers primarily describe the product, not the source. This factor strongly favors

Defendants.

                              d.        Amount and Manner of Advertising

          The district court noted that Tenneco spent over $1.1 million in advertising that included the

“171” product numbers, and that advertising reached around 75,000 potential and existing customers.

The district court disregarded this assertion, however, because Tenneco offered “no evidence that

Tenneco’s advertising is directed to connecting its product numbers with its identification as the

source of the products.” Tenneco does not dispute this finding on appeal. Again, the lack of

evidence does not weigh in favor of Defendants so much as it does not help Tenneco to satisfy its

substantial burden.

                              e.        Amount of Sales and Number of Customers

          The district court did not note any evidence on this factor. The parties quibble over it, but

Tenneco does not claim that this factor raises a genuine issue of material fact. Tenneco asserts it has

about 80% of the struts market with about 1,500 customers and $26.6 million in revenue in 2007.

Defendants argue this is irrelevant because Tenneco’s customers are all distributors, and therefore

Tenneco cannot connect these sales to any individual retail consumer. Tenneco responds that relying


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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



solely on individual consumers to the exclusion of distributors is erroneous. For the same reasons

we found the three distributor declarations relevant, we also find that sales volume is relevant.

However, it does little if anything here to demonstrate that the product numbers have acquired

secondary meaning. See Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d

590, 596 (6th Cir. 1989).

                              f.        Established Place in the Market

          The district court did not note any evidence for this factor. The parties considered it together

with the fifth factor—the amount of sales and number of customers. Therefore, for the reasons in

subpart e., supra, this factor weighs very slightly in Tenneco’s favor.

                              g.        Proof of Intentional Copying

          As explained above, Tenneco has not produced any proof of intentional copying.

                              h.        Other Evidence

          The district court also considered two pieces of other evidence. The district court found

persuasive Mr. Enborg’s declaration, in which he gave his opinion as a trademark expert that the

Tenneco product numbers did not qualify as protectable marks because they are “descriptors that use

a numeric code separately assigned to each strut assembly to describe its (i) product type and (ii)

application to a particular vehicle chassis.” The district court also gave substantial weight to the

USPTO’s decisions to deny Tenneco’s patent applications because Tenneco’s product numbers did

not “distinguish Tenneco’s goods from those of others.”

          Tenneco objects to the Enborg declaration, claiming that it is based on an erroneous view of

the law and the facts. Defendants argue that Tenneco waived any objection to this evidence by not


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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



objecting to it below, and further argue that the declaration is opinion from his experience, not a

statement of law in all cases.

          Tenneco does not argue with Defendants’ assertion that it did not raise the issue below, and

it has therefore waived the objection. “If a party fails to object before the district court to the

affidavits or evidentiary materials submitted by the other party in support of its position on summary

judgment, any objections to the district court's consideration of such materials are deemed to have

been waived, and [this Court] will review such objections only to avoid a gross miscarriage of

justice.” Johnson v. U.S. Postal Serv., 64 F.3d 233, 237 (6th Cir. 1995) (alteration in original).

There is no gross miscarriage of justice here, or any other error, because the Enborg declaration is

merely one trademark lawyer’s opinion from years of experience in trademark practice. The district

court was free to take it or leave it, and Tenneco was free to refute Enborg’s opinion with its own

evidence. The Enborg declaration will be considered with the other evidence.

          The same goes for the USPTO decisions, which Tenneco strives mightily to distinguish or

explain away or even demonstrate that they somehow cut in its favor. The mere fact of a USPTO

decision reversing itself, and reversing itself again soon thereafter, does not create a genuine issue

of fact for Tenneco. The USPTO denied Tenneco’s nine applications because, in its judgment,

Tenneco failed to establish secondary meaning with “ordinary retail customers,” and because the

product number “merely identifies a model number; it does not function as a trademark to identify

and distinguish applicant’s goods from those of others and to indicate the source of appellant’s

goods.” The district court found these decisions to be persuasive, and Tenneco offers no plausible




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reason why this Court should not do so as well. Both these sources of evidence weigh heavily in

Defendants’ favor.

                              i.        Summary

          As stated above, “[a] descriptive mark achieves secondary meaning when ‘in the minds of

the public, the primary significance of a product feature or term is to identify the source of the

product rather than the product.’” Leelanau, 502 F.3d at 513 (quoting Inwood Labs, Inc. v. Ives

Labs, Inc., 456 U.S. 844, 851 n.11 (1982) (emphasis added)). Compiling the evidence above yields

the following:

 1. Direct consumer testimony                                     Very slightly favors Tenneco
 2. Consumer surveys                                              No evidence
 3. Exclusivity, length, and manner of use                        Strongly favors Defendants
 4. Amount and manner of advertising                              No evidence
 5. Amount of sales and number of customers                       Very slightly favors Tenneco
 6. Established place in the market                               Very slightly favors Tenneco
 7. Proof of intentional copying                                  No evidence
 Enborg Declaration                                               Strongly favors Defendants
 USPTO decisions                                                  Strongly favors Defendants

          Considering these factors, particularly how weakly Tenneco’s evidence supports its claim,

we hold that Tenneco has not carried its substantial burden to demonstrate that a genuine issue of

material fact exists as to whether the primary significance of the product numbers in the minds of

the consuming public is to identify Monroe rather than the type of strut and what car it fits into.

Accordingly, the district did not err in granting summary judgment on the product number claims.


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                                                      III.

          Tenneco also alleged that Defendants infringed on their registered Quick-Strut marks based

on four allegedly illegal uses of the mark: (1) Defendants’ use of the mark at the automechanika

auto show in Canada, (2) the use of the mark in Defendants’ listing on the auto show’s website; (3)

the statements by independent contractor salesman in the United States using the mark, and (4) the

use of the mark in the Auto-Wares Price Sheet. The district court addressed each of these incidents

in turn. While Defendants admitted to using the Quick-Strut mark at the auto show, the district court

found this was not an infringing act within the reach of the Lanham Act because it was done outside

the United States by two Canadian corporations. The district court also found that the website

reference did not support Tenneco’s burden because it was on the auto show’s website and there was

no evidence Defendants were responsible for any of the material on the site. On the third-party

salesman evidence, Tenneco relied on the sworn statement of Mr. Siegel, who then failed to appear

at the hearing before the district court. The district court therefore credited the testimony of

Defendants’ witness Jim Dolmetsch, who strongly denied Siegel’s assertions. Finally, the district

court found that the Auto-Wares price sheet did not support Tenneco’s burden. Defendants provided

affidavits that the sheet was produced by Auto-Wares without their knowledge or consent, and that

the sheet had been withdrawn as soon as Defendants requested Auto-Wares to do so. Tenneco did

not provide any evidence to refute these affidavits. Because there was no evidence of an infringing

act by Defendants in the United States, the district court granted summary judgment on the Quick-

Strut infringement claims to Defendants.




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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



          On appeal Tenneco challenges the district court’s findings on the second, third, and fourth

incidents, apparently conceding that the Defendants’ admitted use of the mark at the Canadian auto

show does not come within the purview of the Lanham Act. Tenneco argues that Defendants gave

automechanika the language to put on the website, and that Defendants are liable for contributory

infringement. It further argues that the district court erroneously disregarded Siegel’s declaration,

and that a genuine issue of material fact remains about the price sheet because it had Kingdom’s logo

at the top of the sheet. Tenneco’s arguments fail.

          The protections of the Lanham Act extend to all marks in “commerce,” which is defined as

“all commerce which may lawfully be regulated by Congress.” 15 U.S.C. § 1127. In Steele, the

Supreme Court held that the actions of a United States citizen, Steele, making counterfeit watches

in Mexico fell within the ambit of the act. 344 U.S. at 285. Relying on Steele’s United States

citizenship and the fact that his actions reached into the United States for supplies, the Court

affirmed the lower court’s ruling of infringement under the act. Id. at 285–288. The district court

below relied on Steele in finding that Defendants’ use of Tenneco’s mark at the Canadian auto show

was not actionable, a finding Tenneco does not dispute.

          Tenneco’s strongest assertion regards the use on automechanika’s website. Tenneco attorney

Lisabeth Coakley’s declaration presents the offending material, which consists of a single reference

to the “StrutTek quick strut by Prime Choice” combined with Kingdom’s booth number. As

Defendants point out, this is a website for the Canadian auto show, hosted and maintained by that

auto show, and Tenneco presents no evidence that anyone in the United States, other than their

attorney, accessed this site or was confused by it. It is clearly not directed towards the United States.


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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



The district court did not err in finding that this website reference did not sustain Tenneco’s burden

to prove infringement.

          Tenneco’s claim regarding the actions of the third-party vendors similarly fails. Even if the

district court abused its discretion in disregarding the Siegel declaration after Siegel refused to

appear for cross-examination at the hearing below, a fact Tenneco completely ignored in its briefs,

on its face the Siegel declaration merely alleges that a third-party vendor made a passing remark that

Kingdom was “going to start selling . . . ‘Quick Strut’ assemblies.” The action of a third-party,

without inducement by Defendants, is not an act of trademark infringement by Defendants. See

Inwood Labs., 456 U.S. at 853–854.

          Finally, the district court did not err in finding that the use of the mark in the third-party

Auto-Wares price sheet was not an act of infringement by Defendants. The only evidence to explain

the origin of the price sheet is the declaration by Auto-Wares’ Senior Vice President of Purchasing,

Scott Grill, and Gary Calagoure’s testimony. Both agree that Defendants had nothing to do with

producing the price sheet, and that Auto-Wares removed it when Defendants asked it to. Tenneco

cannot rely on the bare fact that a Kingdom logo is on the price sheet in the face of this evidence

explaining its origin.

          Taking every available inference in its favor, we hold that Tenneco has not carried its burden

to prove that a genuine issue of material fact remains as to whether Defendants infringed upon their

registered mark. Therefore, the district court did not err in granting summary judgment to

Defendants on the Quick-Strut infringement claims.




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                                                      IV.

          We have jurisdiction over the denial of a preliminary injunction under 28 U.S.C. §

1292(a)(1). We review the district court’s legal rulings de novo and its ultimate denial of the

preliminary injunction for an abuse of discretion. Gonzales v. O Centro Espirita Beneficente Uniao

do Vegetal, 546 U.S. 418, 428 (2006).

          “A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on

the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the

balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v.

Natural Res. Def. Council, Inc., 129 S. Ct. 365, 376 (2008) (emphasis added). “A preliminary

injunction is an extraordinary remedy never awarded as of right.” Id. at 377.

          Because of our findings above this question is moot. Tenneco cannot establish that it is likely

to succeed on the merits when it has lost on the merits.

                                                      V.

          Accordingly, we affirm the district court’s grant of summary judgment for Defendants and

denial of Plaintiff’s motion for a preliminary injunction.




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Nos. 08-2276/09-1920, Tenneco v. Kingdom Auto Parts



          KAREN NELSON MOORE Circuit Judge, dissenting in part. Because I conclude that

Tenneco presents genuine issues of material fact with regard to its product-numbers claims, I

respectfully dissent from Part II of the majority opinion.

          With respect to the protectability of Tenneco’s product numbers, I would first note that much

of the evidence the majority cites as “[s]trongly favor[ing]” the Defendants has little probative value.

In particular, both Enborg’s declaration and the USPTO’s decision offer what are essentially legal

conclusions devoid of any evidence as to how consumers view Tenneco’s product numbers.

Furthermore, although the majority asserts that “the product numbers are used to specifically

describe the strut and identify the vehicle to which the strut is designated,” Maj. Op. at 17-18, this

does not necessarily weigh against Tenneco. While the numbers may be used to “describe the strut,”

they do so by indicating that the strut is a “Monroe Sensa-Trac® product from Tenneco,” Bill Dennie

Decl. at ¶ 8, and thereby provide the sort of identifier that trademark laws are designed to protect.

          I agree with the majority, however, that the evidence in favor of Tenneco is somewhat thin.

Nonetheless, Tenneco has offered the declarations of three distributors, all of whom explicitly stated

that they associate Tenneco’s product numbers with Monroe brand products. Furthermore, although

the majority concludes that there is no evidence that Kingdom intended to copy Tenneco’s product

numbers, a reasonable jury could infer such intent from the fact that Kingdom “sent a Tenneco strut

to China with instructions to copy,” Doc. 57 at 82 (Gary Calagoure Prelim. Inj. Test.), and did not

exclude the product numbers from its instructions. Although this may not be overwhelming

evidence, it is sufficient to survive summary judgment when combined with the other evidence that

Tenneco has offered. Therefore, I respectfully dissent from Part II of the majority opinion.


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