Progressive Distribution Services, Inc. v. United Parcel Service, Inc.

186 F. Supp. 3d 741, 2016 U.S. Dist. LEXIS 63980, 2016 WL 2848339
CourtDistrict Court, W.D. Michigan
DecidedMay 16, 2016
DocketCase No. 1:14-CV-430
StatusPublished
Cited by4 cases

This text of 186 F. Supp. 3d 741 (Progressive Distribution Services, Inc. v. United Parcel Service, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Michigan primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Progressive Distribution Services, Inc. v. United Parcel Service, Inc., 186 F. Supp. 3d 741, 2016 U.S. Dist. LEXIS 63980, 2016 WL 2848339 (W.D. Mich. 2016).

Opinion

OPINION

GORDON J. QUIST, UNITED STATES DISTRICT JUDGE

Plaintiff, Progressive Distribution Services, Inc. (Progressive), has sued several Defendants in the United Parcel Services family of companies (collectively referred to herein as UPS) alleging that UPS is liable for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. § 1051, et seq., and the common law. Progressive also alleges that UPS violated the Michigan Consumer Protection Act (MCPA), M.C.L.A. § 445.901 et seq.. [746]*746All of Progressive’s claims arise out of UPS’s use of Progressive’s federally-registered trademark ORDERLINK as part of the name UPS OrderLink.

UPS has moved for summary judgment, arguing that Progressive’s trademark and unfair competition claims fail because, as a matter of law, Progressive cannot establish a likelihood of confusion. Alternatively, UPS argues that it is entitled to summary judgment on Progressive’s damage claim for corrective advertising and other elements, as well as Progressive’s claim for a reasonable royalty. Finally, UPS argues that Progressive’s MCPA claim fails because UPS’s shipping application was not offered for personal, family, or household purposes.

As explained more fully below, the Court concludes that UPS is entitled to summary judgment on the trademark and unfair competition claims because application of the pertinent factors in Frisch’s Restaurant, Inc. v. Elby’s Big Boy, Inc., 670 F.2d 642 (6th Cir.1982), in light of the record evidence, shows that there is no likelihood of confusion as a matter of law. Accordingly, the Court need not reach UPS’s damages arguments relating to those claims. Finally, the Court concludes that Progressive fails to establish a claim under the MCPA.

I. Background

Progressive is engaged in the business of providing, among other things, outsourced, fully-integrated order fulfillment infrastructure and services under various trademarks, including ORDERLINK. (ECF No. 118 at PageID.3208.) Progressive describes OrderLink as an “innovative e-commerce service that allows an organization to quickly participate in the many benefits of direct channel web commerce without the expense, risk, or delay of in-house development.” (ECF No. 97-3 at PageID.1799.) Order fulfillment begins upon placement of an order, and includes payment processing, inventory availability and coordination, assistance with alternative products, packaging, labeling, and shipping. (ECF No. 118 at PageID.3209-10.) OrderLink platform features include web commerce features, such as customer product reviews, promotion services, media buy administration, marketing support, affiliate site interfacing, site management tools, supply integration, and payment processing. (ECF No. 97-12.) The OrderLink service typically requires a four-to-six week set up period, and customers must commit to a two-year contract with a setup fee ranging from a few thousand dollars to $25,000. (ECF No. 99-3 at PageID.50; ECF No. 99-5; ECF No. 99-6.)

John McGovern, Progressive’s founder and president, adopted the ORDERLINK mark in approximately 1996 because it reflected Progressive’s business of “processing] of orders and movement of orders to the final fulfillment.” (ECF No. 118 at PageID.3212.) The ORDERLINK mark was registered on the Principal Register of the United States Patent and Trademark Office (PTO) on September 21, 2004. (ECF No. 33-2.)

UPS is the world’s largest package shipping company and its trademarks, with their well-known brown and gold color scheme, make UPS one of the world’s most famous brands. (ECF No. 97-43.) UPS’s customers include, in addition to large volume shippers, small volume shippers who operate businesses on Amazon and eBay marketplaces. (ECF No. 97-23 at Pa-geID.1901.) In 2012, UPS’s Customer Technology Marketing (CTM) team proposed an initiative directed to such customers. The project included creation of an internet-based application to enable online marketplace sellers to manage orders and process shipments by linking their orders to UPS’s shipping application. (ECF No. 119 at PageID.3226.) UPS intended this [747]*747service to compete with similar services offered by competitors FedEx and the U.S. Post Office. (ECF No..97-23 at Pa-geID.1938.)

UPS’s CTM team and Christine Allen, UPS’s Brand Manager, developed a list of potential names, including OrderLink, for the new service that were descriptive and easy for its customers to understand. (ECF No. 97-16 at PageID.1858, 1860.) Allen searched the proposed names on the internet and at the PTO to determine whether other parties were using them. Allen initially determined that OrderLink was not available because it was registered to Progressive for order fulfillment services. She also found shopping cart software called “Order-Link” by Ashop Software. (ECF -No. 97-26 at PageID.1988.) Further investigation revealed at least two additional uses of the words “order” and “link” together: OrderWebLink for computer programs for automating cataloging, sales quotes, and sales ordering by Lan-tek, Inc., and “Conestoga OrderLink” for software allowing for customized quotes and order management for Conestoga customers (a cabinet manufacturer). (ECF No. 97-25 at PageID.1976.) Ultimately, the CTM team settled on the name UPS Or-derLink because the UPS house mark leveraged the UPS’ brand and OrderLink described the application’s function. (ECF No. 97-21 at PageID.1886; ECF No. 97-25 at PageID.1981.) UPS submitted an application to the PTO to register “UPS Order-Link” as a mark. However, on November 25, 2013, the PTO rejected the application based on a likelihood of confusion with Progressive’s mark. (ECF No. 136-1 at PageID.3377.)

UPS launched the UPS OrderLink shipping application on December 28, 2013, as a free “secured web-based- shipping solution at ups.com that enables eBay and Amazon sellers to import their orders from these marketplaces to the shipping solution and process for shipping.” (ECF No. 97-29 at PageID.2003.) UPS promoted UPS OrderLinkon its website at www.ups. com, through its online version of UPS’s Compass magazine on a UPS microsite, and to existing UPS customers through direct sales calls. (ECF No. 97-30; ECF No. 97-56 at PageID.2241-42.) In addition, links to UPS Orderlink were placed on Amazon and eBay pages devoted to shipping solutions. (ECF No. 97-30 at Pa-geID.2036.)

On February 17, 2014, Progressive’s counsel sent UPS a cease and desist letter demanding that UPS immediately cease using the UPS OrderLink name. In response, UPS approached Progressive about entering into a coexistence agreement. (ECF No. 97-18 at PageID.1869-70.) While waiting to hear back from Progressive, UPS began to explore replacing UPS OrderLink with “Ship Marketplace Orders.” After Progressive filed its complaint in the instant case on April 17, 2014, UPS continued with its name-change plan and adopted the name “UPS Marketplace Shipping.” (ECF No. 97-16 at Pa-geID.1862.) The transition from UPS Or-derLink to UPS Marketplace Shipping was substantially completed by August 15, 2014.

II. Summary Judgment Standard

Summary judgment is appropriate if there is no genuine issue as to any material fact and the moving party is entitled to a judgment as a matter of law. Fed. R. Civ. P. 56.

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186 F. Supp. 3d 741, 2016 U.S. Dist. LEXIS 63980, 2016 WL 2848339, Counsel Stack Legal Research, https://law.counselstack.com/opinion/progressive-distribution-services-inc-v-united-parcel-service-inc-miwd-2016.