Advance Stores Co. v. Refinishing Specialties, Inc.

188 F.3d 408, 1999 WL 615502
CourtCourt of Appeals for the Sixth Circuit
DecidedAugust 16, 1999
DocketNo. 98-5153
StatusPublished
Cited by6 cases

This text of 188 F.3d 408 (Advance Stores Co. v. Refinishing Specialties, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Sixth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Advance Stores Co. v. Refinishing Specialties, Inc., 188 F.3d 408, 1999 WL 615502 (6th Cir. 1999).

Opinion

OPINION

BATCHELDER, Circuit Judge.

This case presents an entirely unremarkable dispute between two auto parts retail companies for the right to use the trade name “Advance Auto Parts.” The case does, however, raise the issue of whether the Lanham Act directs us to review state law or federal law in order to determine the extent of a senior unregistered user’s rights in a registered trademark or trade name, an issue not heretofore addressed in a published opinion by this Circuit. We publish this opinion solely to address that issue.

Plaintiffs-Appellees are Advance Stores Company, which operates auto parts retail stores nationwide under the disputed trade name, and its wholly-owned subsidiary, Laralev, the owner of Advance Stores Company’s trademarks (hereinafter collectively referred to as “Plaintiff’). Defendant-Appellant, incorporated as Refinishing Specialties, operates three NAPA auto parts stores in Jefferson County, Kentucky, under the disputed trade name. The district court issued several opinions in this case, culminating in a grant of summary judgment to the Plaintiff, an order that Plaintiff, as the federally registered user of the trade name, has the right to use the name throughout the United States except in Jefferson County, Kentucky, and an order canceling Defendant’s Kentucky service mark registration of the trade name. For the reasons that follow, we AFFIRM the district court’s opinions and final judgment in all respects.

I. FACTUAL BACKGROUND

Plaintiff has been in the business of retailing automobile parts since 1932, when it opened its first store in Virginia. Over the years the business has expanded into many states and has used several variations on its initial name of “Advance Stores,” until, in 1984, Plaintiff settled on “Advance Auto Parts,” which it has used consistently ever since.

Plaintiff first registered the name “Advance Auto Parts” and the related design under the Lanham Act in April 1988. In 1992, Plaintiff filed an assumed name certificate for “Advance Auto Parts” with the Kentucky Secretary of State, and recorded a copy of that certificate in Jefferson County, Kentucky, pursuant to KRS [410]*410§ 365.015.1 Plaintiff did not', however, open a store in Jefferson County. Presumably, although Plaintiff does not make any mention of it, Plaintiff also filed copies of the assumed name certificate in counties in eastern Kentucky, because it opened stores in Prestonburg and Paintsville (both in eastern Kentucky).2 In August 1993, a representative of Plaintiff looking for sites in Louisville, saw a NAPA truck bearing the name “Advance Auto Parts;” consulting the Yellow Pages, he determined that Defendant had several stores in the Louisville area using that name.

In 1974, Defendant opened a retail automobile parts store in Louisville, Kentucky,3 under the name “Advance Auto Parts.” Defendant is a retailer of NAPA automobile parts, although it also sells items which do not bear the NAPA brand. NAPA pays for a good deal of Defendant’s advertising, which uses the NAPA name and logo extensively. Defendant opened its second store in 1982, in Jeffersontown, Kentucky, and its third store in 1994, in Louisville. All three of these stores are located in Jefferson County, Kentucky, where there are six other NAPA auto parts stores.

It was not until November 1993, that Defendant applied for a Kentucky certificate of assumed name for “Advance Auto Parts.” That certificate has not been issued. In January 1994 and July 1994, Plaintiff registered modified versions of “Advance Auto Parts” under the Lanham Act. In September 1994, Defendant registered “Advance Auto Parts” in Kentucky as its service mark. In October 1994, Defendant filed a cancellation petition with the Patent and Trademark Office (“PTO”), seeking to cancel Plaintiffs two most recent federal registrations.

II. PROCEDURAL HISTORY

Plaintiff brought this action seeking a declaratory judgment that it is not infringing any proprietary rights claimed by Defendant, Refinishing Specialties, Inc., d/b/a Advance Auto Parts, in the trade name “Advance Auto Parts”; that it is entitled to use the disputed trade name throughout Kentucky, except in Jefferson County; and that its federal service mark registrations for ADVANCE AUTO PARTS marks should not be canceled. Defendant counterclaimed, arguing that Plaintiff had engaged in federal unfair competition, state service mark infringement, and common law unfair competition, and seeking withdrawal of Plaintiffs Kentucky Statement of Assumed Name, cancellation of Plaintiffs federal service mark registrations based on Defendant’s prior use and Plaintiffs alleged fraud, a permanent injunction prohibiting use of the mark in Defendant’s trade area and zone of natural expansion, and damages including Plaintiffs profits, treble damages, punitive damages, costs, and attorneys’ fees.

Plaintiff moved for summary judgment; Defendant moved for partial summary judgment on several issues, including likelihood of confusion and territoriality of Defendant’s trade area. In a published opinion dated November 25, 1996, Advance Stores Co. v. Refinishing Specialties, Inc., 948 F.Supp. 643 (W.D.Ky.1996), the district court held that

(1) the “Advance Auto Parts” mark is suggestive, and the use by both parties of the mark is likely to cause confusion, id. at 647-50;
(2) Plaintiffs 1988 application for federal registration of the mark establishes Defendant as the senior user [411]*411and Plaintiff as the junior user of “Advance Auto Parts,” id. at 650;
(3) Plaintiffs 1988 federal registration of the mark has become incontesti-ble; the Lanham Act protects Plaintiffs incontestable right to use the mark throughout the United States unless the Defendant had acquired valid rights to the name under Kentucky law, id. at 650-51;
(4) under Kentucky law, Defendant did not have an automatic right to statewide protection of its common law mark, but had protection only within its trade area, id. at 651-53;
(5) Defendant could not cancel Plaintiffs federally registered marks based on Defendant’s prior use because the Plaintiffs 1994 registrations were for the “same or substantially identical” marks and products as the Plaintiffs incontestable 1988 federal registration, id. at 653-54;
(6) Defendant could not cancel Plaintiffs marks based on fraud because Defendant had made no showing that Plaintiff knew Defendant had superior rights to the mark when Plaintiff filed its federal registrations, id. at 654;
(7) Defendant’s claims of unfair competition and infringement are dependent upon a jury determination of Defendant’s trade territory, id. at 655;
(8) as a matter of law, Defendant is not entitled to an accounting because there is no showing that Plaintiff acted in bad faith or that any of Defendant’s potential damages are related to Plaintiffs profits, id. at 655-56;
(9) Defendant’s Kentucky service mark registration is canceled under Ky. Rev.Stat. 365.591, because Defendant registered the mark after the Plaintiffs had registered a similar mark likely to cause confusion with the Patent and Trademark Office, id. at 656.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
188 F.3d 408, 1999 WL 615502, Counsel Stack Legal Research, https://law.counselstack.com/opinion/advance-stores-co-v-refinishing-specialties-inc-ca6-1999.