CSL Silicones, Inc. v. Midsun Grp. Inc.
This text of 301 F. Supp. 3d 328 (CSL Silicones, Inc. v. Midsun Grp. Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Connecticut primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.
Opinion
CHARLES S. HAIGHT, JR., SENIOR UNITED STATES DISTRICT JUDGE
*339Plaintiff CSL Silicones, Inc. ("CSL") brought this action against Defendant Midsun Group Inc. ("Midsun") in connection with Midsun's alleged improper use of CSL's trademarks. CSL alleges that Midsun markets and sells two silicone-based coating products under marks similar to CSL's chosen marks for its own silicone-based coating products. CSL brings claims for trademark infringement and unfair competition pursuant to the federal Lanham Act,
The parties have filed cross-motions for partial summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure. Four motions are pending; this Ruling resolves them.
I. BACKGROUND
The following facts are derived from the parties' submissions pursuant to Local Rule 56(a);2 the uncontroverted deposition testimony; and the affidavits and exhibits *340attached to the parties' submissions. The facts recounted in this section are undisputed or indisputable.
CSL is a Canadian corporation with its principal place of business in Ontario, Canada. CSL's Local Rule 56(a)(1) Statement in Support of CSL Silicones Inc.'s Motion for Partial Summary Judgment, Doc. 171-1 ¶ 1. Midsun is a Connecticut corporation with its principal place of business in Southington, Connecticut.
In 1994, Midsun and CSL entered into a distribution agreement.
In 1995, CSL and Midsun entered into a second distribution agreement, entitled "Sales, Marketing & Distribution Agreement." Doc. 171-5. Under this agreement, Midsun was again appointed as "the exclusive agent for sales and marketing of Products" in specific territories, in exchange for meeting a specified sales target.
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CHARLES S. HAIGHT, JR., SENIOR UNITED STATES DISTRICT JUDGE
*339Plaintiff CSL Silicones, Inc. ("CSL") brought this action against Defendant Midsun Group Inc. ("Midsun") in connection with Midsun's alleged improper use of CSL's trademarks. CSL alleges that Midsun markets and sells two silicone-based coating products under marks similar to CSL's chosen marks for its own silicone-based coating products. CSL brings claims for trademark infringement and unfair competition pursuant to the federal Lanham Act,
The parties have filed cross-motions for partial summary judgment, pursuant to Rule 56 of the Federal Rules of Civil Procedure. Four motions are pending; this Ruling resolves them.
I. BACKGROUND
The following facts are derived from the parties' submissions pursuant to Local Rule 56(a);2 the uncontroverted deposition testimony; and the affidavits and exhibits *340attached to the parties' submissions. The facts recounted in this section are undisputed or indisputable.
CSL is a Canadian corporation with its principal place of business in Ontario, Canada. CSL's Local Rule 56(a)(1) Statement in Support of CSL Silicones Inc.'s Motion for Partial Summary Judgment, Doc. 171-1 ¶ 1. Midsun is a Connecticut corporation with its principal place of business in Southington, Connecticut.
In 1994, Midsun and CSL entered into a distribution agreement.
In 1995, CSL and Midsun entered into a second distribution agreement, entitled "Sales, Marketing & Distribution Agreement." Doc. 171-5. Under this agreement, Midsun was again appointed as "the exclusive agent for sales and marketing of Products" in specific territories, in exchange for meeting a specified sales target.
After the termination of the Agreements, Midsun began developing its own products. Midsun's Local Rule 56(a)(2) Statement, Doc. 183-1 ¶ 22; Deposition of Robert Vojtila, Doc. 171-4 at 11-12. Midsun purchased silicone material from CSL, blended it with other materials, and called that product '570.' Doc. 171-4 at 12. Midsun used the '570' number to designate its product because it was determined to be a "good idea" from a marketing and engineering standpoint, as Midsun had created a "personality" for the high voltage coating.
Dr. Edward Cherney was the general manager and later the president and a director of CSL, from 1989 until he resigned from the company in 1999. Deposition of Faisal Huda, Doc. 171-22 at 10; Deposition of Edward Cherney, Doc. 171-7 at 43-4, 134; Doc. 175-1 ¶ 8. While employed by CSL, he expressly gave permission to Midsun to relabel CSL's product as 'Midsun 570.' Deposition of Faisal Huda, Doc. 175-10 at 18. Cherney also had a test conducted to compare the performance of Midsun's '570' product to CSL's '570' product. Doc. 171-7 at 135-36. The testing was performed by a University of Waterloo student, at the University of Waterloo, where Cherney was also employed as a Research Professor.
Between July 1999 and October 2000, CSL sent Midsun several letters. Doc. 171-18. The first letter, sent on July 15, 1999, noted that CSL had recently become aware that, without its knowledge or approval, Midsun had sold CSL's '570' product under the name 'Midsun 570.' Doc. 171-18 at 8. The letter stated that CSL would only continue to supply Midsun with CSL products if Midsun agreed to cease from repackaging CSL's products.
On October 4, 1999, CSL sent another letter to Midsun, stating that CSL has "recently learned that Midsun is still selling CSL 570 HVIC under the name Midsun 570, despite [CSL's July 15, 1999, letter]."
On June 8, 2000, counsel for CSL sent a letter to Midsun, asserting that '570' and '579' were trademarks.
Midsun responded to this letter, stating that Midsun was "unaware that the numerals 570, 579 and 587 could be trademarked and in fact were trademarked as such. All CSL literature which we printed and which was approved by CSL never carried a 'tm' symbol indicating that they were anything other than just a numeral designation." Doc. 161-4 at 112. Midsun stated that it had been given consent to relabel and repackage all CSL products by Cherney.
On September 28, 2000, counsel for CSL sent a letter to counsel for Midsun offering to "settle this matter" if Midsun "undertakes in writing to immediately discontinue the use of the product designations 570, 579, or 587 or any other designation or trademarks confusingly similar to CSL's product designations and trademarks including the trademarks 570, 579 and 587."
Midsun continues to market and sell a high voltage insulator coating product under the name '570' or 'Midsun 570.'
A. '570'
On January 3, 2000, Midsun filed an intent to use trademark application for registration of the mark 'Midsun 570,' in connection with a "Room-Temperature Vulcanizing Silicon Rubber Coating Material for Application to Electrical Equipment for Protection Against Electrical Failure." Doc. 183-2 at 208; Midsun's Motion to Dismiss, Doc. 10-1 at 2. CSL filed a trademark application for '570' in Canada in April 2000, and in the United States in May 2000, which included labels that showed the terms 'CSL,' '570', and 'Si-Coat' within close proximity of each other. Doc. 164-1 ¶ 11; ¶ 21. An office action was issued by the United States Trademark and Patent Office ("PTO") to CSL in November 2000, citing the 'Midsun 570' application as a potential basis for refusal.
In connection with Midsun's trademark application for 'Midsun 570,' in 2000, Midsun retained Ira Dorfman, a trademark attorney. Midsun's Local Rule 56(a)(1) Statement in Support of Midsun Group Inc.'s Motion for Partial Summary Judgment on Plaintiff's Count I, Doc. 164-1 ¶ 19. Dorfman prepared and filed Midsun's *343trademark application. Deposition of Ira Dorfman, Doc. 181-24 at 12-13.
On November 13, 2001, Midsun was issued the registered trademark 'Midsun 570,'
Midsun's registration expired and was canceled on July 8, 2008, after Midsun did not file the appropriate materials to maintain the registration by the May 13, 2008, deadline. Doc. 181-24 at 38; Doc. 181-16 at 2. On October 19, 2012, Midsun filed a U.S. trademark application seeking to register the mark '570' for "silicone rubber coating material for application to electrical equipment for protection against electrical failure." Doc. 171-1 ¶ 46; Doc. 164-1 ¶ 28. On October 26, 2012, CSL filed a U.S. trademark application to register the mark '570' for "silicone based coating for application to electrical insulators."
In 2014, Midsun filed a U.S. trademark application seeking to register the mark 'Midsun 570' for a "room-temperature vulcanizing silicone rubber coating material for application to electrical equipment for protection against electrical failure."
'570' does not relate to any inherent physical, chemical or other characteristic of room temperature vulcanizing silicone. Requests for Admission, Doc. 172-3 at 6. Nor does it have a publicly recognized meaning within the industry directed to coatings for electrical insulators other than as a source identifier.
Customers, or potential customers, have questioned Midsun about the similarities or differences between CSL's '570' product and Midsun's '570' product, and have asked Midsun if they are the same products.
B. '579'
Pursuant to Midsun and CSL's 1995 Agreement, Midsun used the numerals '579' in sales as early as November 1996. Doc. 161-1 ¶ 11. CSL would sometimes refer *344to the product identified as '579' as 'CSL-579,' or 'CSL 579.' Doc. 175-1 ¶ 11; Doc. 161-4 at 75-6, 83. Starting in 2000, CSL would often use 'Si-Coat' in conjunction with '579'. Doc. 161-1 ¶ 13. On April 5, 2000, CSL filed a trademark application with the PTO for '579,' a "silicone based corrosion protection coating for metal surfaces," based on actual use in commerce. Doc. 161-1 ¶ 4; Doc. 171-1 ¶ 56. The application claimed a first use date of 1997, based on commerce between the United States and Canada.
On June 12, 2013, counsel for CSL sent a letter to counsel for Midsun regarding CSL's ownership of U.S. Trademark
On September 2, 2014, counsel for CSL signed a Declaration of Incontestability of a Mark, certifying that the '579' mark had "been in continuous use in commerce for five consecutive years after the date of registration, or the date of publication under 15 U.S.C. Section 1062(c), and is still in use in commerce on or in connection with all goods/services listed in the existing registration." Doc. 161-1 ¶ 5(b).
Midsun does not own any trademark registrations for the '579' mark. Doc. 171-1 ¶ 57. '579' does not relate to any inherent physical, chemical or other characteristic of room temperature vulcanizing silicone. Doc. 172-3 at 6. Nor does it have a publicly recognized meaning within the industry directed to anticorrosion coatings, other than as a source identifier.
CSL has produced sales data showing that sales of the '579' product took place in the United States from 2004 to 2016. Doc. 161-1 ¶ 6. CSL has not produced sales data for the '579' product in the United States between the date of registration and March 10, 2004.
* * *
This narrative of events reveals the deterioration of a once amicable and presumably mutually profitable business relationship into a welter of recriminations, claims, counterclaims, and energetic litigation. There are four pending motions. CSL has filed two motions for partial summary judgment: Doc. 170 and Doc. 120. These are separate motions which address different claims and counterclaims scattered throughout the pleadings. Midsun has filed two motions for partial summary judgment, Doc. 163 and Doc. 160, coupling the first of these with a motion for the taking of judicial notice on a particular point.
The Court will summarize the standard of review on motions and cross-motions for summary judgment, and will then consider these motions in that order.
II. STANDARD OF REVIEW
A motion for summary judgment shall be granted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a) ; Celotex Corp. v. Catrett ,
"In order to defeat a summary judgment motion that is properly supported by affidavits, depositions, and documents as envisioned by [ Rule 56 ], the opposing party is required to come forward with materials envisioned by the Rule, setting forth specific facts showing that there is a genuine issue of material fact to be tried." Gottlieb v. Cty. of Orange ,
All inferences and ambiguities must be viewed in the light most favorable to the nonmoving party. Rogoz v. City of Hartford ,
"[W]hen both sides move for summary judgment, neither side is barred from asserting that there are issues of fact, sufficient to prevent the entry of judgment, as a matter of law, against it. When faced with cross-motions for summary judgment, a district court is not required to grant judgment as a matter of law for one side or the other." Heublein, Inc. v. United States ,
*346III. CSL's MOTION FOR PARTIAL SUMMARY JUDGMENT [Doc. 170]
CSL seeks summary judgment on Counts I, V, and VI of its complaint. Counts I and VI allege claims of unfair competition under
A. Lanham Act Claims
Section 32 of the Lanham Act prohibits the unauthorized use in commerce "of any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive."
To succeed on a trademark infringement or an unfair competition claim under the Lanham Act, a plaintiff must prove that: (i) the plaintiff's mark is entitled to protection; and (ii) defendant's use of the allegedly infringing mark would likely cause confusion with the plaintiff's mark. Starbucks Corp. v. Wolfe's Borough Coffee, Inc. ,
"The basic rule of trademark ownership in the United States is priority of use." 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (" McCarthy ") § 16:1 (5th ed. 2017) ; see also ITC Ltd. ,
Although trademark ownership rights accrue to the "first to use, not the first to register," 2 McCarthy § 16:18, the Lanham Act provides that registration of a mark is considered "prima facie evidence of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark[.]"
"To be valid and protectable, a mark must be capable of distinguishing the products it marks from those of others." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc. ,
If a mark merits protection, the crucial issue becomes "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Mushroom Makers, Inc. v. R. G. Barry Corp. ,
(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may "bridge the gap" by developing a product for sale in the market of the alleged infringer's product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.
Starbucks Corp. ,
With this guidance in mind, the Court turns the merits of CSL's motion.
B. Ownership of the Marks
The initial dispute before the Court centers on whether CSL has ownership in the '570' and '579' marks, as established through priority and continuous use. CSL contends that the undisputed evidence shows CSL's ownership in the '570' and '579' marks. For its part, Midsun argues that CSL cannot demonstrate its right to use the marks in question. The Court will consider whether CSL has established its ownership of each mark separately.
1. '570'
CSL contends that it is indisputable that it was the first to use the '570' mark in commerce in the United States, and argues that Midsun has admitted to CSL's priority in the mark through its *348witnesses' testimony. Midsun claims that CSL cannot establish priority in the '570' mark because, during the 1990's, CSL did not use '570' as a trademark; and that CSL cannot establish use of the mark in commerce prior to Midsun's own use of the mark. Midsun also contends that CSL cannot rely on the testimony and declaration of its president Faisal Huda to establish priority, as Huda has no firsthand knowledge of certain events that transpired during his absences from CSL. Finally, Midsun argues that the Court should determine which party has priority to the mark by consideration of the parties' previous manufacturer-distributor relationship, and analyze the factors discussed in Haggar Int'l Corp. v. United Co. for Food Indus. Corp. ,
The first question to consider is whether CSL has established priority in the '570' mark as a matter of law. Under the Lanham Act, "use in commerce" is defined as "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. [A] mark shall be deemed to be in use in commerce on goods when it is placed in any manner on the goods ... and the goods are sold or transported in commerce...."
"A court must determine whether a trademark has been used in commerce, on a case by case basis, considering the totality of the circumstances around the use of the mark." Threeline Imports, Inc. v. Vernikov ,
Here, although there is no admissible evidence of actual sales made in the United States prior to the parties' distribution agreement, there is evidence that CSL offered, promoted, and sold its '570' product in the United States, prior to engaging in a business relationship with Midsun in 1994. CSL has established that its employees visited companies in the United States in 1990 in an effort to persuade them to purchase and apply the '570' product to electrical equipment. See December 1, 2016, Deposition of Edward Cherney, Doc. 180-5 at 60-3; Doc. 183-2 at 61-2; Doc. 171-7 at 45-6. Cherney's testimony also establishes that in 1990, CSL retained a distributor in the United States to sell its '570' product, Doc. 183-2 at 62, and that CSL sold the product to Midsun prior to the formation of their exclusive distributor relationship. Id. at 64-5.
Such evidence that CSL's '570' product was on the market prior to Midsun's engagement as exclusive distributor, coupled with CSL's clear intention at that time to continue to exploit its trademark commercially, as evidenced by the parties' 1994 Agreement, is sufficient to establish that CSL was the first to use the '570' mark in the United States. Cf. Cross Commerce Media, Inc. v. Collective, Inc. ,
*349Marvel Comics Ltd. v. Defiant, a Div. of Enlightened Entm't Ltd. ,
Midsun also argues that CSL did not use-or intend to use-'570' as a mark during the relevant time frame. Midsun's argument appears two-fold: One, that CSL failed to designate '570' as a trademark; and two, that CSL's use of 'CSL' in conjunction with '570' is evidence that '570', standing alone, was not a mark. Both arguments are without merit, and fail to raise a material issue of fact.
First , as discussed supra , trademark ownership rights are established through use of the mark in commerce. The use of a 'TM' symbol in connection with a mark, either registered or unregistered, is not statutorily required, and does not, by itself, establish trademark rights. See 3 McCarthy § 19:148 n.5 (collecting cases). Midsun does not point to a single court decision finding otherwise. CSL's failure to use the 'TM' symbol in literature, advertising, labels, or its agreements with Midsun is not determinative of whether CSL has ownership rights in '570'.4
Second , CSL's use of 'CSL' in connection with '570' is considered use of the mark, relevant to determining priority. "A 'housemark' or 'house mark' is a trademark that identifies the business that produces the product." Arrow Fastener Co. ,
Here, in instances where 'CSL' appears next to '570', 'CSL' is the house mark and '570' is the product mark. Midsun does not cite to any authority for the proposition that CSL's use of its 'CSL' house mark in conjunction with the '570' trademark precludes or minimizes the individual "use" of the '570' mark. That is to say: Notwithstanding CSL's juxtaposition of its house mark 'CSL' with the trademark '570,' the use of the trademark may be considered individually for the purpose of establishing priority.
Midsun also argues that CSL's sales of the '570' product under the parties' exclusive *350distribution agreements were made in Canada, to Midsun, and thus do not constitute sales in the United States sufficient to establish "use in commerce." In effect, Midsun's argument is that the sales that were performed in the United States through Midsun from 1994 until the termination of the parties' agreement in 1999 do not inure to CSL's benefit for the purposes of determining use of the '570' mark.
"[W]here two companies operate within a manufacturer-distributor arrangement, the 'exclusive U.S. distributor does not acquire ownership of a foreign manufacturer's mark any more than a wholesaler can acquire ownership of an American manufacturer's mark, merely through the sale and distribution of goods bearing the manufacturer's trademark.' " Haggar Int'l Corp. ,
Midsun urges the Court to engage in a multi-factor analysis to determine priority of rights between a distributor and a manufacturer, citing to Haggar Int'l Corp. ,
Here, it has been established that CSL was first to use the '570' mark in the United States, prior to any distribution agreement between the parties. Midsun has not raised a genuine issue of fact as to CSL's priority in the '570' mark. Thus, despite Midsun's contentions otherwise, the modified Wrist-Rocket test, as applied in Haggar , does not come into play. Midsun's sales of the products affixed with the '570' mark while the parties' distribution agreements were in effect are evidence of CSL's continuous use of the mark in the United States.
The parties also dispute whether CSL has demonstrated its continuous use of the '570' mark so as to establish ownership rights in the mark. "To prove bona fide usage, the proponent of the trademark must demonstrate that his use of the mark has been deliberate and continuous, not sporadic, casual or transitory." La Societe Anonyme des Parfums le Galion ,
For evidence of continuous sales from 1999 to 2004,5 CSL relies primarily on Faisal Huda's declaration that CSL's product *351"has been continuously marketed and sold in the United States in connection with the mark 570 from at least as early as 1994 and up to and including the present." Doc. 171-2 ¶ 3. Huda states that "CSL does not currently maintain records of its sales prior to February 28, 2002, or from the time period of January 31, 2003-February 23, 2004, but CSL sold and offered for sale the 570 ... product[ ] in the United States continuously from at least as early as 1994 to the present." Id. ¶ 10. Submitted in support of this declaration is a chart documenting invoices and customers from 2004 onward, Doc. 171-20; and a sales history document that references sales of CSL's '570' product from February 2002 through January 2003, but is silent as to the location of the sales. Doc. 171-21.
Midsun argues that CSL has not produced records of sales for the period of time immediately following the termination of the parties' agreements, from January 1999 through March 2004. Midsun also posits that Huda has no personal knowledge of those matters which occurred prior to his employment with CSL, or those which occurred during Huda's "extended absences from CSL." Doc. 183 at 8. Midsun points to Huda's testimony that he attended college from 1993 to 1998, and was studying for his MBA in France during a portion of the relevant time period. Midsun raises this objection in its opposition, and also has specifically objected to certain parts of CSL's Local Rule 56(a)(1) Statement, where it relies in part or in full on Huda's declaration to support its factual assertions.6
*352CSL responds that Midsun's "attempt to undermine CSL's evidence by challenging the personal knowledge of CSL's declarant, Faisal Huda, is a red herring." Doc. 195 at 10. Without directly addressing Midsun's central position that Huda lacks personal knowledge of the events that transpired at CSL in his absence, CSL contends that it has offered other evidence that supports its main arguments. CSL also argues that Huda's declaration can serve to lay the foundation for CSL's business records, regardless of whether Huda was present at the time the records were created.
Rule 56(c) of the Federal Rules of Civil Procedure provides that "[a]n affidavit or declaration used to support or oppose a motion must be made on personal knowledge, set out facts that would be admissible in evidence, and show that the affiant or declarant is competent to testify on the matters stated." Fed. R. Civ. P. 56(c)(4). "An affiant's conclusions based on personal observations over time ... may constitute personal knowledge, and an affiant may testify as to the contents of records [ ]he reviewed in [his] official capacity." Searles v. First Fortis Life Ins. Co. ,
Huda is President and CEO of CSL. Huda Declaration, Doc. 171-2 ¶ 1. CSL was founded by his father, id. ¶ 2, who passed away in March 2008. Doc. 164-3 at 25. Huda joined CSL in April 1999. Doc. 183-2 at 86. From 1999 to August 2001, Huda worked at CSL in a marketing position, Doc. 161-4 at 31, and "performed a sales support function." Doc. 180-14 at 4. In this capacity, in addition to performing marketing functions, he attended and delivered sales presentations in the United States. Id. Huda left the United States in August 2001 to attend graduate school; he returned in January 2003. Doc. 161-4 at 30. Upon his return, he rejoined CSL in a sales and marketing role. Id. Huda has worked at CSL ever since; he became General Manager in 2004, and took on the titles of President and CEO upon the death of his father in March 2008. Id. at 25.
Huda declares that the statements contained within his declaration are from his "personal knowledge or upon information and belief after having reviewed CSL's business records." Doc. 171-2 ¶ 1. Huda's testimony regarding his involvement in sales presentations in the United States from 1999 through 2001 does not speak to whether such presentations were for the '570' product, and CSL has not submitted any business records that conclusively establish sales of '570' in the United States from 1999 to 2004. Thus, the only admissible evidence before the Court to establish continuous use during this time is Huda's declaration. However, Midsun raises the factual issue that Huda was not at CSL from August 2001 to January 2003, calling into question his personal knowledge during that time. Midsun also points to Huda's conflicting testimony that he couldn't "claim to have full knowledge" of certain sales activity from 1999-2001, because he "wasn't focused on sales," he was "focused on marketing." Doc. 161-4 at 32.
Viewing the evidence in the manner most favorable to Midsun, the Court concludes that a genuine issue of fact exists as to whether CSL continuously used the '570' mark in commerce in the United States from 1999 to January 2003. Huda's conflicting testimony and his absence from *353CSL during a time in which no other evidence of sales has been submitted is sufficient to raise a issue of material fact. A reasonable jury could determine that Huda's knowledge of CSL's sales of '570' does not extend to this time period, and that CSL cannot establish continuous use-and thus ownership-of the '570' mark. Accordingly, resolution of this issue is reserved for the trier of fact.
2. '579'
CSL owns an incontestable trademark for the '579' mark. As noted above, an incontestable registration is "conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce."
In opposition to CSL's motion for summary judgment, Midsun argues that CSL's registration for the '579' mark was obtained by fraud. The Lanham Act provides that one may defend a charge of infringement of an incontestable trademark by establishing that "the registration or the incontestable right to use the mark was obtained fraudulently."
Midsun's first claim of fraud is based on the first use date of 1997 in CSL's 2000 trademark application for the '579' mark. Midsun contends that the declaration of the date of first use was fraudulent, as there is no evidence of sales in the United States of the '579' product until March 10, 2004. Midsun claims that CSL's fraudulent intent to deceive the PTO "can be reasonably inferred" from "the evidence produced by CSL." Doc. 183 at 31. This argument is insufficient to establish, by clear and convincing evidence, that CSL committed fraud on the PTO. As an initial matter, there is admissible evidence in the record that CSL had sales of its '579' product in the United States prior to 1997, and Midsun offers no evidence to the contrary. Thus, the date of first use, as indicated on the '579' trademark application, does not appear to be inaccurate, let alone fraudulent.
Further, even assuming, arguendo , that the supplied date was inaccurate, Midsun has fallen far short of showing, by clear and convincing evidence, that such a representation was a deliberate material misrepresentation of fact. There has been no evidence submitted that would show that the first use date of 1997 had any bearing on the PTO's decision to grant the trademark application. See Haggar Int'l Corp. ,
Midsun's second claim of fraud is based on CSL's Declaration of Incontestability, filed in 2014. Midsun argues that CSL's statement of continuous use was fraudulent, based on a lack of evidence of sales of the '579' product in the United States from 2002 to 2004.
Pursuant to the Code of Federal Regulations, the affidavit or declaration for acquiring incontestability for a mark registered under the Trademark Act must be "filed within one year after the expiration of any five-year period of continuous use following registration."
Thus, Midsun has not raised a material issue of fact to show that CSL obtained its '579' incontestable trademark registration through fraud. CSL's conclusive ownership in the '579' mark has therefore been established as a matter of law.
C. Validity of the Marks
The parties also dispute the validity of the marks in question. As previously noted, "[t]o be valid and protectible, a mark must be capable of distinguishing the products it marks from those of others." Lane Capital Mgmt., Inc., Inc. ,
CSL argues that the '570' mark is an arbitrary mark, inherently distinctive and entitled to protection, as the number '570' is not descriptive or suggestive of silicone high voltage insulator coatings. Midsun contends that '570' is not inherently distinctive.7
A mark is generic if it is a common description of products and refers to the genus of which the particular product is a species. A mark is descriptive if it describes the product's features, qualities, or ingredients in ordinary language or describes the use to which the product is put. A mark is suggestive if it merely suggests the features of the product, requiring the purchaser to use *355imagination, thought, and perception to reach a conclusion as to the nature of the goods. An arbitrary mark applies a common word in an unfamiliar way. A fanciful mark is not a real word at all, but is invented for its use as a mark.
Lane Capital Mgmt., Inc. ,
"Arbitrary marks consist of words that neither suggest nor describe any characteristic of the particular good or service with which it is used." Jordache Enterprises, Inc. v. Levi Strauss & Co. ,
Midsun suggests that CSL's use of '570' is not inherently distinctive, because at one time, CSL used the mark as a model number or grade designator. Midsun suggests that the Court should "accord deference to the PTO's determination" in response to CSL's '570' trademark application that '570' is a grade designator.
Although "deference should be given by a court to the interpretation by the agency charged with its administration[,]" Buti ,
Moreover, in this matter, Midsun has consistently taken a contrary position: That '570' is an inherently distinctive and therefore valid mark. See, e.g. , Midsun's Responses to CSL's First Request for Admissions, Doc. 172-3 at 6 (admitting that " '570' does not relate to any inherent physical, chemical or other characteristic of room temperature vulcanizing silicone"; and that it "does not have a publicly recognized meaning within the industry directed to coatings for electrical insulators other than as a source identifier, whatever the source"); Midsun's 30(b)(6) Deposition of Robert Vojtila, Doc. 171-14 at 26 ("Q: The numbers 5-7-0 do not describe anything about the high voltage insulator coating other than who makes it; correct? A: Correct.").
*356In fact, Midsun itself has applied for trademark protection for the mark '570', and in connection with that application, submitted a declaration that "570 is arbitrary and has no significance in the chemical or coating industries or as applied to the goods and/or services except insofar as it has been used by applicant first ... as part of the unregistered mark Midsun 570 and then as a registered mark." Midsun's Trademark Application for the '570' mark, Doc. 183-2 at 231-33. And in support of its own motion for summary judgment on Count I of CSL's Complaint, Midsun asks the Court to "accord deference to the PTO's determination [in connection with Midsun's '570' application ] that '570' meets the substantive requirements for registration and award the registration to Midsun." Doc. 164 at 25. It is hard to reconcile this statement with the position now espoused by Midsun in opposition to CSL's motion for summary judgment.
Based on the evidence in the record and the admissions of the parties, the Court finds that CSL has established as a matter of law that '570' is an arbitrary mark, inherently distinctive and therefore valid and entitled to protection. See Jordache Enterprises, Inc.,
While Midsun claims that '579' is not inherently distinctive, it has already been established that CSL owns an incontestable registration in the '579' mark, which is conclusive evidence of, inter alia , the validity of the registered mark.
D. Likelihood of Confusion
The Court addresses next whether CSL has shown that Midsun's use of the marks is likely to cause confusion within the public.10 As discussed supra , this requires analysis of the Polaroid factors. "If a factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment." Cadbury Beverages, Inc. v. Cott Corp. ,
1. Strength of the Marks
The first Polaroid factor, the strength of the marks, is defined as the "tendency to identify the goods as coming from a particular source." Lang v. Ret. Living Pub. Co. ,
However, the strength of a mark still depends in part on the mark's distinctiveness in the marketplace, known as its acquired distinctiveness. Streetwise Maps, Inc. v. VanDam, Inc. ,
Viewing the evidence in the light most favorable to Midsun, as the Court must on CSL's motion, CSL has failed to show that this factor weighs in its favor as a matter of law. Thus, although the marks are somewhat strong based on their inherent distinctiveness, see, e.g., Star Indus., Inc. v. Bacardi & Co. ,
2. Similarity of the Marks
The second Polaroid factor concerns the similarity of CSL's and Midsun's marks. "In assessing similarity, courts look to the overall impression created by the [marks] and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers." Gruner + Jahr USA Pub. ,
Here, the marks are the same numbers. CSL uses the '570' mark in connection with its high voltage insulator coating product. Midsun uses '570' for its high voltage insulator coating product. CSL uses the '579' mark for its anti-corrosion coating product. Midsun uses '579' in connection with its anti-corrosion coating product. It is clear that the number marks are identical. Nevertheless, Midsun maintains that the marks are not confusingly similar because both companies use their house mark in conjunction with the trademarks at issue: 'CSL 570' or 'CSL Si-Coat 570' and 'Midsun 570'; and 'CSL 579' and 'Midsun 579.' "[T]he use of brand house marks is considered in the context of the specific facts to evaluate the marks' similarity, which is one factor among the totality of factors and contextual clues relevant to determining whether the marks' overall impression will cause confusion about the products' sources." Denimafia Inc. v. New Balance Athletic Shoe, Inc. , No. 12-CV-4112(AJP),
The Court concludes that the degree of similarity between the marks in question is a disputed factual issue to be resolved by the trier of fact. Viewing the evidence in a light most favorable to Midsun, a reasonable jury could determine that the marks are not confusingly similar due to the parties' use of their respective house marks in connection with the marks themselves. See Jordache Enterprises, Inc. ,
3. Proximity of the Products
"This factor focuses on whether the two products compete with each other. To the extent goods (or trade names) serve the same purpose, fall within the same general class, or are used together, the use of similar designations is more likely to cause confusion." Lang ,
4. Actual Confusion
The next Polaroid factor looks to whether consumers have actually been confused by the products that bear the allegedly confusing marks. While a finding of actual confusion would strongly militate in favor of a finding of likelihood of confusion, "[i]t is black letter law that actual confusion need not be shown to prevail under the Lanham Act[.]" Savin Corp. v. Savin Grp. ,
As evidence of actual confusion, CSL submits an email sent by a "prospective customer" to CSL. Doc. 171 at 26. CSL contends that the customer "requested a quote for a Midsun product and thought CSL could facilitate the transaction due to confusion as to the source of the product."
Upon review of the entire correspondence leading up to the email upon which CSL relies for evidence of actual *359confusion, it becomes less apparent that the email evinces that which CSL contends. The email chain shows that CSL initiated the correspondence with the potential customer, LAPP Insulators, to inquire whether LAPP would consider purchasing CSL's product for a particular project. After initially expressing interest, LAPP then responded with regret, stating
we already quoted coated insulators. Lapp USA has some experience with Midsun, they coated some post insulators for Lapp in the past. I regret for having to inform you about this. I gave your contact details to our colleagues so we can consider your company pertaining future opportunities.
Doc. 183-2 at 119-20 [sic]. The correspondence then continues, with CSL noting a perceived deficiency with the Midsun product, and the LAPP individual agreeing to meet to discuss. Id. at 118-19. It is therefore not clearly apparent that the email in question is evidence of actual confusion between the parties' products. Further, even if it was determined that this one email was evidence of actual confusion, "a single anecdote of confusion over the entire course of competition ... constitutes de minimis evidence...." Savin Corp. ,
Finally, CSL's lack of survey evidence weighs against a finding of actual confusion. See Nat. Organics, Inc. v. Nutraceutical Corp.,
5. Bridging the Gap
This factor "seeks to protect the senior user's interest in being able to enter a related field at some future time." Jordache Enterprises, Inc. ,
6. Good Faith
This next factor "examines whether defendant[ ] adopted [its] mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between [its] and plaintiff's product." Streetwise Maps, Inc. v. VanDam, Inc. ,
CSL contends that Midsun acted in bad faith in adopting its '570' and '579' marks, as Midsun was aware of CSL's rights when it intentionally adopted said marks. CSL argues that the only reason Midsun has identified for choosing the marks was to trade upon the reputation that it had developed for the marks. CSL also argues that Midsun's ill intent is demonstrated by its declarations to the PTO in connection with seeking to obtain trademark registrations for 'Midsun 570' and for '570'. In further support of its position, CSL points to evidence that it claims shows that Midsun misappropriated CSL's marketing and sales materials, and altered the dates and product names to promote its own competing products. CSL argues that this conduct is evidence of Midsun's intent to confuse consumers as to the source of its products, "to lead consumers to believe that nothing had changed, when in fact Midsun had stopped distributing and applying CSL's 570 product formulation and started selling its own." Doc. 171 at 34.
Midsun argues that it adopted the marks in connection with its corporate name; at that time, Midsun contends, CSL was not using the numbers as trademarks in the United States. Midsun also argues that CSL has not established the requisite intent, and points to evidence that it adopted its marks after CSL had authorized the relabeling of CSL's product to reflect Midsun's name. Midsun also argues that it reasonably relied on the advice of trademark counsel in adopting its '570' mark, and that its alteration of test reports does not establish the intent to promote Midsun's own product.
Here, it is undisputed that Midsun, CSL's former distributor, adopted the '570' and '579' marks with full knowledge of CSL's own use of the marks. What complicates this analysis is evidence that Midsun affixed its own name to CSL's product during the time the parties were working together to sell CSL's product pursuant to their distribution agreement. Both parties agree that Cherney, then employed by CSL, gave permission for Midsun to do so; however, the parties' accounts diverge on whether such permission was provided with the knowledge and approval of CSL, or if it was done by a rogue and traitorous employee, in breach of his fiduciary duties. The parties also dispute whether the distribution agreements were, in effect, a licensing agreement regarding the marks in question.
Drawing all inferences in favor of Midsun, it cannot be said that Midsun's first use of the marks under the distribution agreements, in connection with CSL's product, was done in bad faith. And a reasonable jury may believe that upon the termination of CSL and Midsun's relationship, Midsun continued to use the marks in connection with its own products to capitalize on the reputation Midsun believed it had created in connection with its own name, rather than any reputation associated with CSL. A reasonable jury could also determine that Midsun did not intend to deceive consumers as to the source of its products. While there is hardly decisive proof of good faith on the part of Midsun-especially in light of the evidence tending to show that Midsun misappropriated test reports that had been conducted on CSL's product-the evidence is not conclusive that Midsun's intent was to deceive purchasers *361as to the source of its product, which is the relevant inquiry.
Drawing all inferences in Midsun's favor as the non-movant, the Court concludes that a genuine factual dispute exists as to whether Midsun acted in bad faith in adopting the trademarks at issue in this matter. See The Sports Auth., Inc. v. Prime Hosp. Corp. ,
7. Quality of the Products
The next factor, the quality of Midsun's products,
is the subject of some confusion. Essentially, there are two issues with regard to quality, but only one has relevance to determining the likelihood of confusion. If the quality of the junior user's product is low relative to the senior user's, then this increases the chance of actual injury where there is confusion, i.e., through dilution of the senior user's brand. A marked difference in quality, however, actually tends to reduce the likelihood of confusion in the first instance, because buyers will be less likely to assume that the senior user whose product is high-quality will have produced the lesser-quality products of the junior user. Conversely, where the junior user's products are of approximately the same quality as the senior user's, there is a greater likelihood of confusion, but less possibility of dilution.
Savin Corp. ,
Here, CSL argues that Midsun has conceded that there are no significant differences in the quality of the parties' products. Midsun does not contest CSL's characterization of Midsun's position. Accordingly, the Court determines that this factor weighs in favor of a likelihood of confusion.
8. Sophistication of Relevant Consumers
This factor assesses the sophistication of the consumers of the products and the degree of discrimination they exercise when purchasing the products. "[T]he more sophisticated the purchaser, the less likely he or she will be confused by the presence of similar marks in the marketplace." Savin Corp. ,
There is minimal evidence in the record regarding the sophistication of the relevant consumers of each product. Testimony indicates that potential consumers have varied technical knowledge regarding the specifications of the products. See Doc. 171-14 at 6. It is clear to the Court that a consumer of such silicone-coating products must exercise some level of discernment. These goods are not available for purchase *362at a local hardware store. The sellers of these coating products solicit their customers, or the products must be specifically sought out for purchase from a supplier or from the manufacturer itself. The coatings then must be applied in a specialized manner. The parties market and advertise such products in trade magazines and at trade shows. In short, silicone coating products "are not the sort of products that are bought on impulse." Lambda Elecs. Corp. v. Lambda Tech., Inc. ,
Here, as the relevant purchasers of the parties' silicone coating products are relatively sophisticated, CSL has not shown that this factor would weigh in favor of finding a likelihood of confusion.
9. Summary
Summary judgment as to likelihood of confusion is appropriate where "the undisputed evidence would lead only to one conclusion under the Polaroid test." The Sports Auth., Inc. ,
E. Intentional and Willful Infringement and Attorney's Fees
CSL also requests that the Court find, as a matter of law, that Midsun's infringement is intentional and willful. Such a finding would affect the measure of damages and fees that CSL would be entitled to, if it prevailed in this litigation. See Goodheart Clothing Co. v. Laura Goodman Enterprises, Inc. ,
As the Court has determined that questions of fact exist, precluding summary judgment to CSL for its trademark infringement claim, including, inter alia , whether CSL can prove ownership of the '570' mark, and whether Midsun acted in good faith in its adoption of the 570 and 579 marks, summary judgment on the issue of willful infringement is not appropriate; and a determination of whether CSL is entitled to attorney's fees and damages is premature.
F. Midsun's Equitable Defenses
CSL seeks summary judgment on Midsun's affirmative defenses.13 CSL argues *363that Midsun cannot prevail on its defenses of laches, acquiescence or equitable estoppel due to Midsun's intentional infringement, or 'unclean hands,' and because Midsun cannot establish the necessary elements of each defense. For its part, Midsun argues that its defenses bar CSL's claims as a matter of law.
As an initial matter, the Court addresses CSL's contention that Midsun's 'unclean hands' bars invocation of its equitable defenses. It is well established that "he who comes into equity must come with clean hands." Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co. ,
[t]his maxim is far more than a mere banality. It is a self-imposed ordinance that closes the doors of a court of equity to one tainted with inequitableness or bad faith relative to the matter in which he seeks relief, however improper may have been the behavior of the defendant. That doctrine is rooted in the historical concept of court of equity as a vehicle for affirmatively enforcing the requirements of conscience and good faith.... Thus while equity does not demand that its suitors shall have led blameless lives, as to other matters, it does require that they shall have acted fairly and without fraud or deceit as to the controversy in issue.
In evaluating whether the unclean hands doctrine applies, "what is material is not that the [defendant's] hands are dirty, but that [it] dirtied them in acquiring the right [it] now asserts." Liz Claiborne, Inc. v. Mademoiselle Knitwear, Inc. ,
Application of the unclean hands doctrine rests in the discretion of the court, which is "not bound by formula or restrained by any limitation that tends to trammel the free and just exercise of discretion." Keystone Driller Co. v. Gen. Excavator Co. ,
In the context of a suit such as this, sounding in infringement,
[i]t is well established that laches is not a defense ... when the defendant intended the infringement. This good-faith component of the laches doctrine is part of the fundamental principle that he who comes into equity must come with clean hands. Thus, ... intentional infringement is a dispositive, threshold inquiry *364that bars further consideration of the laches defense[.]
Hermes Int'l v. Lederer de Paris Fifth Ave., Inc. ,
Here, in viewing the record in a light most favorable to Midsun, the Court has already determined that material questions of fact exist as to whether Midsun intentionally infringed on CSL's marks. It follows that whether Midsun may maintain its equitable defenses, in light of its potentially dirty hands, is a question to be resolved another day. See Emmpresa Cubana Del Tabaco v. Culbro Corp. ,
However, CSL asserts other, independent grounds for summary judgment on Midsun's defenses. The Court will address each defense in turn.
1. Laches
"Laches is an equitable defense based on the maxim vigilantibus non dormientibus aequitas subvenit (equity aids the vigilant, not those who sleep on their rights). It bars a plaintiff's equitable claim where [it] is guilty of unreasonable and inexcusable delay that has resulted in prejudice to the defendant." Ivani Contracting Corp. v. City of New York ,
CSL contends that Midsun cannot prove the second element, that it has been prejudiced by any delay on behalf of CSL in bringing suit, and that CSL's actions in continually objecting to Midsun's use of the marks in question defeats any claim of prejudice. Midsun responds that has suffered both evidentiary prejudice and economic prejudice from CSL's delay in pursuing any rights to the marks.
"The burden of proving or rebutting the defense of laches is determined by reference to analogous state statutes of limitation." RBC Nice Bearings, Inc. ,
When a suit is brought within the time fixed by the analogous statute, the burden is on the defendant to show, either from the face of the complaint or by his answer, that extraordinary circumstances exist which require the application of the doctrine of laches. On the other hand, when the suit is brought after the statutory time has elapsed, the burden is on the complainant to aver and prove the circumstances making it inequitable to apply laches to his case.
Leonick v. Jones & Laughlin Steel Corp ,
To determine which party has the burden of proof, the Court looks to Connecticut's three-year statute of limitations for fraud claims. See CSL Silicones Inc. , 170 F.Supp.3d at 310 ; see also RBC Nice Bearings, Inc. ,
There are two types of prejudice that may result from a plaintiff's delay in bringing suit.
Evidentiary, or defense prejudice, may arise by reason of a defendant's inability to present a full and fair defense on the merits due to the loss of records, the death of a witness, or the unreliability of memories of long past events, thereby undermining the court's ability to judge the facts. Economic prejudice may arise where a defendant and possibly others will suffer the loss of monetary investments or incur damages which likely would have been prevented by earlier suit.... The courts must look for a change in the economic position of the alleged infringer during the period of delay.
A.C. Aukerman Co. v. R.L. Chaides Const. Co. ,
In response to CSL's motion, Midsun strengthens the presumption of prejudice in its favor by pointing to its marketing, advertising, and sales efforts of the marks in question over the years. Further, Midsun claims that it has encountered difficulties in defending this suit in light of the death of two individuals who would have had knowledge of the key issues relevant to this matter: The founder of Midsun, Kevin Eldridge, and the founder of CSL, Seraj Huda.
As noted supra , "[b]ecause a presumption of prejudice is established in this case, it is plaintiff's burden to make a showing that no prejudice will ensue." Harley-Davidson, Inc. v. O'Connell ,
Here, CSL contends that the Court should reject any claim of prejudice, based on Midsun's awareness of CSL's continuing objections. "It is true that any acts after receiving a cease and desist letter are at the defendant's own risk because it is on notice of plaintiff's objection to such acts." ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy P.C. ,
It is clear that CSL has failed to carry its burden on summary judgment as to Midsun's affirmative defense of laches; notably, a burden that it does not acknowledge it bears. CSL has not rebutted the presumption of prejudice and undue unreasonableness. Accordingly, CSL's motion for summary judgment on Midsun's defense of laches must be denied.
2. Equitable Estoppel
Equitable estoppel "is properly invoked where the enforcement of the rights of one party would work an injustice upon the other party due to the latter's justifiable reliance upon the former's words or conduct." Veltri v. Bldg. Serv. 32B-J Pension Fund ,
In opposition, Midsun makes no argument as to the '579' mark. It appears that Midsun has abandoned this defense by failing to oppose summary judgment in its opposition to CSL's motion.14 Accordingly, CSL is entitled to summary judgment as to the affirmative defense of equitable estoppel regarding the '579' mark. See Fendi Adele S.R.L. v. Filene's Basement, Inc. ,
As to the '570' mark, Midsun contends that CSL's voluntary dismissal of its Petition to Cancel Midsun's 'Midsun 570' registration serves as a misrepresentation sufficient to establish estoppel. Midsun identifies the same economic and evidentiary prejudice that it discusses in relation to its laches defense.
The Court finds that Midsun has raised a triable issue of material fact as to whether CSL's withdrawal of its Petition to Cancel was a material representation upon which Midsun reasonably relied to its detriment. Although CSL argues that it never withdrew its objections to Midsun's use of *367the mark, CSL points to no evidence that Midsun was aware of CSL's continuing objection to the use of the mark from the time it withdrew its petition to the time CSL filed suit in this matter. Accordingly, CSL is not entitled to summary judgment on Midsun's equitable estoppel defense as to the '570' mark.
3. Acquiescence
To establish a defense of acquiescence, defendant must prove that: "(1) the senior user actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice." ProFitness Physical Therapy Ctr. ,
CSL argues that Midsun cannot identify an active representation made by CSL to assure Midsun that it would not assert its trademark rights. Midsun does not identify any such representation in opposition to CSL's motion. Accordingly, CSL is entitled to summary judgment on Midsun's acquiescence affirmative defense.
G. Midsun's Counterclaims
CSL also seeks summary judgment on Midsun's counterclaims for trademark infringement under the Lanham Act and CUTPA, illegal importation, and dilution. CSL argues that Midsun's counterclaims alleging trademark infringement fail because CSL has priority in the marks. CSL also argues that Midsun's CUTPA-based counterclaims are barred by the statute of limitations, as this Court has previously held that CUTPA claims sounding in trademark infringement do not accrue as to each use of a plaintiff's mark, and therefore a timely trademark-based CUTPA claim must be brought within three years of the first occurrence of the allegedly infringing conduct. See CSL Silicones Inc. , 170 F.Supp.3d at 314. Midsun presents no arguments in opposition to CSL's motion for summary judgment in support of its counterclaims. Nevertheless, the Court will address the merits of CSL's arguments in favor of summary judgment.
1. Midsun's Counterclaims I-VI
Midsun's Counterclaims I-VI sound in trademark infringement. Counts I and III allege Lanham Act claims for unfair competition for use of the '570' mark and the '579' mark, respectively. Counts II and IV allege violations of CUTPA for use of the '570' mark and the '579' mark, respectively. Count V alleges a claim of illegal importation for the '570' mark. Count VI alleges a claim of federal trademark dilution for the '570' mark.
As discussed supra, CSL has established ownership of the '579' mark, and Midsun has failed to raise a triable issue of fact in this regard. Accordingly, Counts III and IV of Midsun's counterclaims fail as a matter of law, and summary judgment in CSL's favor on those counts is warranted.
Further, the Court has previously determined that a CUTPA claim must be brought within three years of the first occurrence of the allegedly infringing conduct. Here, in regards to Count II and IV, the allegedly infringing conduct-CSL's sales of products marked with '570' and '579'-commenced in the United States, according to Midsun, on or about 2004. Accordingly, any CUTPA claim would have had to be brought within three years of that first conduct. Midsun's counterclaims were filed on July 25, 2016. Doc. 84. Accordingly, Midsun's CUTPA-based counterclaims fail as a matter of law, as they are time-barred.
*368CSL also seeks summary judgment on Midsun's counterclaim alleging trademark dilution of the '570' mark, pursuant to the Federal Trademark Dilution Act ("FTDA"),
In its Local 56(a)(1) Statement, CSL asserts that it is a fact that the '570' mark used by Midsun is "not famous." Doc. 171-1 ¶ 80. Midsun expressly admits this fact, see Doc. 183-1 ¶ 80, and does not point to any admissible evidence that would raise a triable issue of fact. As the mark used by Midsun is not famous, Midsun may not prevail on a claim for trademark dilution pursuant to the FTDA. Accordingly, CSL is entitled to summary judgment on Count VI.
However, the Court has determined that an issue of fact exists as to whether CSL owns the '570' mark. CSL's arguments for summary judgment as to Midsun's remaining counterclaims for unfair competition and illegal importation are premised on the assumption that CSL had ownership rights in the '570' mark as a matter of law. CSL has not shown the absence of material issues of fact as to these claims, and thus summary judgment is denied as to Counts I and V of Midsun's counterclaims.
H. Conclusion
Accordingly, CSL's Motion for Partial Summary Judgment [Doc. 170] is GRANTED, in part, and DENIED, in part. CSL has proven, as a matter of law, that it is the owner of a valid, protectable trademark in the '579' mark. A triable issue of fact exists as to whether CSL has used the '570' mark continuously so as to establish ownership of the mark. Triable issues of fact also exist as to whether a likelihood of confusion exists as to Midsun's use of the '570' and '579' marks; specifically, whether Midsun's marks are confusingly similar, and whether Midsun adopted the marks in good faith. CSL has shown entitlement to summary judgment on Counts II, III, IV and VI of Midsun's counterclaims, and summary judgment is denied as to Counts I and V. Triable issues of fact preclude summary judgment on Midsun's affirmative defenses of laches and equitable estoppel. Finally, triable issues of fact exist on the issue of willful infringement, and CSL's motion for an award of attorney's fees is DENIED without prejudice to renewal.
IV. CSL'S MOTION FOR PARTIAL SUMMARY JUDGMENT [Doc. 120]
CSL separately moves for partial summary judgment on Counts VII, VIII, and IX of Midsun's counterclaims. Counts VII and VIII allege CUTPA violations for commercial disparagement and corporate defamation. Count IX alleges a violation of section 43(a) of the Lanham Act,
*369A. Count IX: Lanham Act False Advertising
Section 43(a) of the Lanham Act provides that
[a]ny person who ... in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
[T]he touchstone of whether a defendant's actions may be considered 'commercial advertising or promotion' under the Lanham Act is that the contested representations are part of an organized campaign to penetrate the relevant market. Proof of widespread dissemination within the relevant industry is a normal concomitant of meeting this requirement. Thus, businesses harmed by isolated disparaging statements do not have redress under the Lanham Act; they must seek redress under state-law causes of action.
Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc. ,
B. Counts VII and VIII: CUTPA Disparagement and Defamation
Under Connecticut law, "to establish a prima facie case of defamation, the plaintiff must demonstrate that: (1) the defendant published a defamatory statement; (2) the defamatory statement identified the plaintiff to a third person; (3) the defamatory statement was published to a third person; and (4) the plaintiff's reputation suffered injury as a result of the statement." Gleason v. Smolinski ,
*370Devone ,
A claim for commercial disparagement is "akin to the torts of injurious falsehood and slander of title." Valtec Int'l, Inc. v. Allied Signal Aerospace Co. , No. 3:93-CV-01171(WWE),
"To prove these torts, and thus to prove commercial disparagement, a plaintiff must demonstrate that the defendant made false representations." Doctor's Assocs., Inc. v. QIP Holder LLC , No. 3:06-CV-1710(VLB),
CUTPA prohibits any person from engaging in "unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce."
It is well settled that in determining whether a practice violates CUTPA [the Supreme Court of Connecticut has] adopted the criteria set out in the cigarette rule by the Federal Trade Commission for determining when a practice is unfair: (1) Whether the practice, without necessarily having been previously considered unlawful, offends public policy as it has been established by statutes, the common law, or otherwise-in other words, it is within at least the penumbra of some common law, statutory, or other established concept of unfairness; (2) whether it is immoral, unethical, oppressive, or unscrupulous; (3) whether it causes substantial injury to consumers, competitors or other businesspersons. All three criteria do not need to be satisfied to support a finding of unfairness. A practice may be unfair because of the degree to which it meets one of the criteria or because to a lesser extent it meets all three. Thus a violation of CUTPA may be established by showing either an actual deceptive practice or a practice amounting to a violation of public policy. In order to enforce this prohibition, CUTPA provides a private cause of action to any person who suffers any ascertainable loss of money or property, real or personal, as a result of the use or *371employment of a prohibited method, act or practice.
Ulbrich v. Groth ,
CSL alleges that Midsun failed to identify any allegedly disparaging or defamatory statements that were spoken by CSL within the statute of limitations period applicable to CUTPA claims. In its opposition and again in its sur-reply, Midsun presents a number of statements that it contends are sufficient to raise genuine issues of fact to defeat CSL's motion for partial summary judgment. The Court will examine each statement in turn.
1. 2002 "Sun West" Fax
In response to an interrogatory requesting the factual basis for Midsun's defamation-based CUTPA counterclaims, Midsun identified a communication dated July 12, 2002, from CSL's former Executive Vice President John Barr to the Sun West Sales Company. Doc. 121-1 ¶ 5; Doc. 122-3 at 2. In this letter, transmitted by facsimile, Barr makes several statements regarding the quality of Midsun's '570' product, noting that it is "totally different from and inferior to" CSL's '570' product; that an independent analysis of its constitution reveals that it contains no aluminum trihydrate, and that "[i]n fact, the product is simply a rubber coating similar to a basic roof coating material." Doc. 122-3 at 2.
CSL argues that the statements in this fax do not establish a CUTPA violation as a matter of law, as they are outside the three-year statute of limitations period for CUTPA claims. In reply, CSL further argues that it is "far from clear that the statements in that fax are untrue, which would eliminate it from serving as evidence of defamation or disparagement." Doc. 135 at 6. In opposition, Midsun argues that this communication "establishes a recurring theme in CSL's long term campaign to discredit and damage Midsun and its products." Doc. 128-1 at 17. Implicitly acknowledging that a 2002 communication would be time-barred under CUTPA, Midsun instead contends that CSL's allegedly defamatory statements were part of a continuing course of conduct, which would serve to toll the statute of limitations until such time as the wrongful conduct is completed.
As discussed supra , CUTPA provides that a claim "may not be brought more than three years after the occurrence of a violation of th[e] chapter."
*372Further, Midsun's "continuing wrongful course of conduct" theory cannot serve to toll the statute of limitations in this instance. The Connecticut Supreme Court "has recognized that under certain circumstances, the [CUTPA three year] limitations period may be tolled under the continuing course of conduct doctrine." Izzarelli v. R.J. Reynolds Tobacco Co. ,
In order to support a finding of a continuing course of conduct that may toll the statute of limitations there must be evidence of the breach of a duty that remained in existence after commission of the original wrong related thereto. That duty must not have terminated prior to commencement of the period allowed for bringing an action for such wrong. Where [the Connecticut Supreme Court has] upheld a finding that a duty continued to exist after the cessation of the act or omission relied upon, there has been evidence of either a special relationship between the parties giving rise to such a continuing duty or some later wrongful conduct of a defendant related to the prior act. Thus, there must be a determination that a duty existed and then a subsequent determination of whether that duty is continuing.
Stuart v. Snyder ,
"The continuing course of conduct doctrine reflects the policy that, during an ongoing relationship, lawsuits are premature because specific tortious acts or omissions may be difficult to identify and may yet be remedied." Bartold v. Wells Fargo Bank, N.A. , No. 14-CV-00865(VAB),
Application of the continuing course of conduct doctrine thus arises most often in cases where a fiduciary relationship exists between the parties during the time the conduct complained of transpired. See Flannery v. Singer Asset Fin. Co., LLC ,
Here, at the time that the 2002 Sun West letter was sent by facsimile, CSL and Midsun had terminated their distributorship agreement, and were, by all accounts, competitors in the same field. There is no evidence to support on an ongoing breach of duty, nor is it "impossible to pinpoint" when the alleged *373defamatory statements were made. Thus, an application of the continuing course of conduct toll is not supported in these circumstances. See Venables v. Bell ,
2. Epsilon India Communications
Midsun also claims that upon several occasions in 2015, 2016, and 2017, it was informed that an India-based CSL employee had been making disparaging and defamatory remarks and written statements to third parties within India. The source of this information was Midsun's foreign customer/distributor, Epsilon India. Epsilon India sent an email to Midsun on April 20, 2015, attaching an unsigned, undated document, entitled "Facts of EPSILON INDIA PRIVATE LIMITED, New Delhi and MIDSUN Group Inc. USA". Doc. 128-2 at 49. The document contained several allegations about the quality and source of Midsun's products.
On December 28, 2016, Epsilon India's managing director, Neelesh Arora, sent another email to several individuals at Midsun, with the subject "CSL Defamation Case."
On January 5, 2017, Mr. Arora once again wrote to Midsun, "Powergrid, the largest transmission company in India, told me this morning that the CSL rep claimed our coating was made in China. They want to see the Waukesha plant as well."
CSL argues that as a matter of law, the statements made in these three emails cannot serve to create liability under CUTPA, as the statements were not made within Connecticut, and only conduct that occurs in this state is actionable under CUTPA.
As noted above, CUTPA defines 'trade' and 'commerce' as "the advertising, the sale or rent or lease, the offering for sale or rent or lease, or the distribution of any services and any property, tangible or intangible, real, personal or mixed, and any other article, commodity, or thing of value in this state. "
Midsun acknowledges that the statements were made in India, but argues that its principal place of business is in Connecticut; CSL competes with Midsun in Connecticut; the allegedly disparaging remarks "made their way into Connecticut by way of emails" to Midsun's CEO, "caus[ing] Midsun to contact its Connecticut attorney"; and the potential diversion of foreign sales away from Midsun would result in revenue not realized in Connecticut. Doc. 128-1 at 19. Midsun thus posits that there is a sufficient connection with Connecticut to maintain its cause of action under CUTPA for these India-based statements.
The Court disagrees. The alleged violations forming the basis of this CUTPA claim-the allegedly disparaging remarks-are not "tied to a form of trade or commerce intimately associated" with Connecticut. The fact that Midsun's principal place of business is located in Connecticut (and that, as a result, an economic impact may be felt in Connecticut) is not sufficient by itself to tie the alleged violative conduct to Connecticut. See PTI Assocs., LLC ,
Nor does the fact that such statements made their way into Connecticut by emails from Midsun's customer to Midsun's executives support a connection with Connecticut sufficient to maintain a CUTPA claim. The case that Midsun relies on for this proposition does not provide strong support for its argument, as it is distinguishable on its facts. In Titan Sports, Inc. ,
Here, in contrast, there is not even an allegation that the alleged defamatory statements were received by Midsun's Connecticut customers. All that Midsun offers to bridge the alleged CUTPA violation-the India-based defamatory statements-to Connecticut is receipt of emails containing the statements in Connecticut by Midsun's president , sent by Midsun's customer. There is no evidence that any potential customer of either party received the statements in Connecticut. Thus, the facts do not support a finding that the violation was tied to a form of trade intimately associated with Connecticut.18
*375Finally, and more fundamentally, even were it shown that such statements were sufficiently tied to trade intimately associated with Connecticut, there is no admissible evidence establishing that statements were made or authored by CSL.19 Midsun claims that statements were made to third parties; this information was relayed by said third-parties to Epsilon, a Midsun customer; and Epsilon in turn informed Midsun of the existence of such statements third-hand. "When challenged on a motion for summary judgment, a plaintiff may not rely solely on hearsay or conclusory allegations that the slanderous statement was made." Albert v. Loksen ,
3. Faisal Huda Testimony
Midsun also points to the testimony of CSL's CEO, Faisal Huda, as evidence that disparaging or defamatory statements about Midsun were made by CSL during the relevant time frame. Huda testified that in the past, he had personally stated that Midsun's product "resembles a roof coating, highly resembles a roof coating." Testimony of Faisal Huda, Doc. 128-2 at 79-80. Huda could not recall the last time he said that. Id. at 81. He further testified that CSL had used "the fact that they believe that Midsun is selling roof coating" in its presentations, but he could not say where he had made those statements, and could not definitively confirm nor deny that such statements were made in the United States. Id. at 77. Huda testified that he doesn't "agree that [such a statement is] disparagement.... It's just the truth of what CSL knows to be the case." Id.
Midsun asks this Court to deny partial summary judgment to CSL on the basis of this testimony. Such testimony, however, does not raise a genuine issue of fact. First , no evidence is submitted as to when and where the statements were made. In conclusory fashion, Midsun submits that the Court should view the testimony in the light most favorable to Midsun, and find that they "could well have been" made in Connecticut within the statute of limitations, because CSL competes with Midsun in Connecticut and has made sales in Connecticut *376during the relevant time period. Doc. 128-1 at 18. Such surmise and conjecture cannot create a genuine issue of fact. See Fletcher v. Atex, Inc. ,
Second , in Connecticut, "to be actionable in defamation, the offending statement must convey an objective fact rather than an opinion." Hewett v. Murray , No. 3:12-CV-558(WWE),
Here, the two statements attributed to CSL are that Midsun's product "resembles a roof coating, highly resembles a roof coating," Doc. 128-2 at 79 (emphasis added); and that CSL "believe[s] that Midsun is selling roof coating," id. at 77 (emphasis added). Both statements are non-actionable statements of opinions. Whether a substance resembles another substance is clearly a subjective statement that would be difficult to prove true or false. Thus, assuming, arguendo , that CSL made the statements within the statute of limitations, and in Connecticut, such statements would not rise to the level of a defamation or disparagement-based CUTPA violation as they convey matters of opinion, not objective fact, and are therefore insufficient to raise a triable issue of fact.
4. Energy Northwest Emails
Finally, in sur-reply, Midsun produces several email exchanges between Faisal Huda and employees at Energy Northwest, a "former Midsun customer." Doc. 151 at 8. Midsun characterizes these emails as "defamatory or disparaging both under Connecticut common law and support Midsun's claims of unfair trade practices under CUTPA." Id. Midsun identifies four statements in the emails that are defamatory, and submit that they raise genuine issues of fact in regards to CSL's motion. Midsun argues that the emails imply that Midsun engaged in "trickery" which resulted in Energy Northwest choosing Midsun's product over CSL's in 2003. The Court will address each email in turn.
a. September 15, 2016 Email from Faisal Huda to Brian Adami
At issue are statements in an email from Huda to Brian Adami, an employee of Energy Northwest, that "MIDSUN continues *377to use the [570] trademark without authorization or agreement from CSL." Doc. 151-1 at 5. Huda continues, "You will recall ENW mistakenly installed coating supplied by MIDSUN despite ENW having originally tested and approved the Si-COAT® 570TM HVIC material from CSL, and never having tested and approved the material from MIDSUN." Id. Midsun argues that these two statements imply that Midsun engaged in an "unethical or unlawful business practice," and are therefore defamatory. Doc. 151 at 8.
The allegedly defamatory statements must be read in the context of the entire email from Huda to Adami. After some initial pleasantries, Huda writes,
For the past few years CSL has been organizing its case regarding the CSL '570' trademark. Midsun continues to use the trademark without authorization or agreement from CSL.
Of primary concern is the confusion that two HVIC products labeled with '570' has caused and continues to cause. Energy Northwest (ENW) is at the centre of one example of this confusion. You will recall ENW mistakenly installed coating supplied by MIDSUN despite ENW having originally tested and approved the Si-COAT® 570TM HVIC material from CSL, and never having tested and approved the material from MIDSUN. Luckily, we caught the error together and CSL helped ENW correct the situation by supplying material free of cost to ENW in order to recoat your insulators.
Anyway, long story short, our USA legal counsel may have some questions for you. I have provided them your contact details and hope that if they do indeed contact you, it will not be an onerous imposition.
Thanks, as always, for your support and confidence in CSL. Please let me know if you have any concerns.
Doc. 151-1 at 5.
"It is well settled that communications uttered or published in the course of judicial proceedings are absolutely privileged so long as they are in some way pertinent to the subject of the controversy." Hopkins v. O'Connor ,
the court must decide as a matter of law whether the alleged defamatory statements are sufficiently relevant to the issues involved in a proposed or ongoing judicial proceeding, so as to qualify for the privilege. The test for relevancy is generous, and "judicial proceeding" has been defined liberally to encompass much more than civil litigation or criminal trials.
Id. at 839,
The Connecticut Supreme Court's discussion of this privilege in Kelley v. Bonney ,
To accomplish the purpose of judicial or quasi-judicial proceedings, it is obvious that the parties or persons interested must confer and must marshal their evidence for presentation at the hearing ... unchilled by the thought of subsequent judicial action against such participants; provided always, of course, that such preliminary meetings, conduct and activities are directed toward the achievement of the objects of the litigation or other proceedings.
*378
It is clear from the entirety of the email that Huda is writing to inform Adami-a potential witness-about this lawsuit; indeed, to marshal evidence to be used in support of CSL's claims. See Kelley ,
The second statement that Midsun finds actionable-that "ENW mistakenly installed coating supplied by MIDSUN"-is preceded by the words, "[y]ou will recall." In addition to the statement falling under the above privilege, there is no allegation or evidence that the statement is false, which is one of the requirements for defamation.20 Accordingly, this statement is not actionable as a matter of law.
b. October 1, 2016, Email from Huda to Adami
Midsun alleges that the following statement, made from Huda to Adami in a subsequent email, is defamatory: "You are right to point out that this has nothing to do with ENW's actions, but how ENW and others have (and may have) fallen victim to issues of confusion surrounding branding practices of suppliers." Doc. 151-1 at 7. "A required element of a prima facie case of defamation is that an allegedly defamatory statement must identify the plaintiff to a third person." Devone ,
c. September 30, 2016, Email from Adami to Timothy Croyle
The next email Midsun relies upon was sent from Adami to Timothy Croyle, another Energy Northwest employee. Huda and Winemiller, a CSL attorney, are copied on the email. Adami writes: "I think that we certainly can still shore up our design documents to protect ourselves from some errant procurement in the future happening due to a particularly good salesman showing up on our doorstep and talking us into it." Doc. 151-1 at 8. He further states, "[Mr. Winemiller, CSL's attorney] is helping CSL to put pressure on Midsun to drop the 570 number from their product."
It is not alleged that these statements were made by CSL. Instead, Midsun asks the Court to impute the statements made by a third-party to CSL because the "statements would not have been made but for Mr. Huda['s] request for support and assistance from Mr. Adami and others within Energy Northwest." Doc. 151 at 10. Midsun cites no authority for this position, nor could they. The law is clear that to *379establish a claim for defamation, Midsun must show that the defendant published a defamatory statement. See Gleason v. Smolinski ,
d. November 14, 2016, Email from Romeo Tudor to Energy Northwest Employees
Finally, Midsun points to an email written by Romeo Tudor, an Energy Northwest employee, to other individuals at Energy Northwest. Tudor writes, "Midsun is a company selling diluted CSL products under Midsun brand at a lower price." Doc. 151-1 at 9. This statement fails to raise a genuine issue of fact for the same reasons explained above; namely, that the author of the statement is not a CSL employee and therefore such a statement cannot be imputed to CSL.
C. Conclusion
In sum, CSL has demonstrated that it is entitled to summary judgment on Counts VII and VIII of Midsun's counterclaims, alleging CUTPA-based violations for disparagement and defamation, and on Count IX of Midsun's counterclaims, alleging a claim Lanham Act claim for false advertising. Midsun has failed to raise a triable issue of fact. Accordingly, CSL's Motion for Partial Summary Judgment [Doc. 120] is GRANTED.
V. MIDSUN'S MOTION FOR PARTIAL SUMMARY JUDGMENT AND FOR JUDICIAL NOTICE [Doc. 163]
Midsun seeks summary judgment on Count I of CSL's Complaint, a Lanham Act claim for unfair competition for use of the '570' mark. Midsun also moves this Court to take judicial notice of Midsun's trademark application for the mark '570', Serial No. 85/758631, which was filed on October 19, 2012. The Court will address each motion in turn.
A. Motion for Judicial Notice
Midsun moves the Court to take judicial notice of the trademark application for the '570' mark that Midsun filed on October 19, 2012, at the PTO. CSL has not opposed this aspect of Midsun's motion. In its Complaint, CSL alleges that Midsun "is currently seeking registration of the following marks at the U.S. Patent and Trademark Office: U.S. Trademark Application Serial No. 85/758,631 (for '570') and U.S. Trademark Application Serial no. 86/311,799 (for 'Midsun 579')." Doc. 1 ¶ 19.
As previously discussed in this matter, it is proper for the Court to notice documents that establish that certain events central to the Complaint occurred. See CSL Silicones Inc. , 170 F.Supp.3d at 309 ; see also Liberty Mut. Ins. Co. v. Rotches Pork Packers, Inc. ,
B. Ownership of the 570 Mark
Midsun argues that it is entitled to summary judgment on CSL's Lanham Act claim of unfair competition as to the '570' mark, because Midsun has a superior right to the mark. Specifically, Midsun argues that Midsun was the first to use the '570' mark in commerce in the United States, and that it has produced evidence of continuous use from the mid-1990's to present. As to ownership, Midsun asserts many of the same arguments that were raised in opposition to CSL's Motion for Partial Summary Judgment on Count I.
The Court has already determined that, as a matter of law, CSL was the first to use the '570' mark in commerce in the United States. Accordingly, for the reasons stated supra , Midsun's argument as to its priority in the mark-and its superior rights under the Haggar factors-fails. Further, it has been established that a material issue of fact exists as to whether CSL continuously used the mark from 1999 through 2003 in the United States. As this issue is reserved for the trier of fact, Midsun's motion for summary judgment on this issue is denied.
C. Good Faith
Midsun argues that it adopted the '570' mark in good faith. It claims that CSL did not object to Midsun's practice of relabeling and repackaging CSL's product as 'Midsun 570' during the term of the 1995 Agreement; that Midsun relied on the advice of counsel in filing for the registration of the trademark 'Midsun 570'; and that there is no evidence of its intent to deceive the PTO.22 In connection with CSL's motion for partial summary judgment, the Court previously determined that issues of fact exist as to whether Midsun adopted the '570' mark in good or bad faith. No additional information has been submitted here that would require summary judgment in Midsun's favor on the issue of bad faith or willfulness. Accordingly, the question of Midsun's intent in this matter is reserved for the trier of fact.
D. Equitable Defenses
The Court has already determined that there are questions of fact as to whether the 'unclean hands' doctrine applies; thus, Midsun's motion for summary judgment as to its remaining equitable defenses is denied.
VI. MIDSUN'S MOTION FOR PARTIAL SUMMARY JUDGMENT [Doc. 160]
Finally, Midsun seeks summary judgment on Counts V and VI of CSL's Complaint, which allege Lanham Act claims for trademark infringement and unfair competition for use of the '579' mark.
*381A. Ownership of the '579' Mark
Midsun argues that it has priority in the '579' mark. As the Court has already determined that CSL has established its ownership of the '579' mark as a matter of law, and that no genuine issue of fact as to fraud exists, Midsun's motion as to the ownership of the '579' mark is denied.
B. Good Faith
Midsun contends that it adopted the '579' mark in good faith. The Court has previously determined that a material issue of fact exists as to whether Midsun's actions in adopting the marks in question were made in good or bad faith. Accordingly, Midsun's motion as to good faith is denied.
C. Equitable Defenses
Midsun argues that the equitable defenses of laches and acquiescence bar CSL's claims. As the Court has determined that a material issue of fact exists as to whether Midsun has come to court with 'unclean hands,' Midsun's motion for summary judgment as to its equitable defenses is denied.
VII. CONCLUSION
For the foregoing reasons, CSL's Motion for Partial Summary Judgment [Doc. 170] is GRANTED IN PART and DENIED IN PART; CSL's Motion for Partial Summary Judgment [Doc. 120] is GRANTED; Midsun's Motion for Partial Summary Judgment and for Judicial Notice [Doc. 163] is GRANTED IN PART and DENIED IN PART; and Midsun's Motion for Partial Summary Judgment [Doc. 160] is DENIED.
Consistent with the Court's prior Scheduling Order [Doc. 67], the parties are directed to file a joint trial memorandum in the form required by this Court's Standing Order Regarding Trial Memoranda in Civil Cases on or before May 14, 2018 . This case will then be placed on the Court calendar as trial ready, with a trial date to be determined subsequently.
It is SO ORDERED.
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