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Poison Spider Bicycles, Inc. v. TAP Manufacturing, LLC

United States District Court, D. Utah, Central Division

February 12, 2018

POISON SPIDER BICYCLES, INC., a Utah corporation, Plaintiff,
v.
TAP MANUFACTURING, LLC, a Delaware limited liability company; POISON SPYDER CUSTOMS, INC., a California corporation; LAWRENCE ROBERT McRAE, an individual residing in California; and JOHN DOES 1- 20, Defendants.

          MEMORANDUM DECISION AND ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

          Honorable Clark Waddoups United States District Judge.

         This dispute is between a bicycle shop and an off-road vehicle company with similar names inspired by a local public trail. Defendants TAP Manufacturing, LLP (TAP), Poison Spyder Customs, Inc. (PSC), and Lawrence Robert McRae (McRae) (collectively, Defendants), seek summary judgment on plaintiff's first, second, fifth, seventh, and ninth claims of trademark infringement and unfair competition under federal, state, and common law. Defendants also seek summary judgment on plaintiff's third, fourth, and eighth claims of trademark dilution under federal, state, and common law, as well as plaintiff's sixth claim under the Utah Consumer Sales Practices Act. The court held a hearing on this motion on January 10, 2018. Having found that plaintiff failed to show excusable neglect to warrant modifying its prior order denying plaintiff's motion for extension of time to file its opposition to Defendants' motion for summary judgment, the court allowed plaintiff to argue the legal merits of Defendants' motion in the context of the undisputed facts in Defendants' motion for summary judgment. (ECF No. 52.) After considering the parties' memoranda, the record, relevant legal authority, and hearing oral argument, the court GRANTS Defendants' motion for summary judgment in its entirety. (ECF No. 27.)

         BACKGROUND

         A. The Origin of Poison Spyder Customs

         Clifton Slay formed PSC in 2002 to produce heavily customized off-road vehicles based loosely on the Jeep Wrangler platform. (ECF No. 27 at 2.) The vehicles are capable of “rock crawling, ” or literal scaling of boulder-strewn off-road trails. The company's name was inspired by the Poison Spider Mesa public trail located outside of Moab, Utah, which is popular with cyclists and off-road enthusiasts. Mr. McRae purchased the company in 2008 and operated it until January 2015, when its assets were purchased by TAP. TAP is a large nationwide manufacturer, distributor, and retailer of off-road parts and accessors for trucks and SUV's. Under the PSC brand, TAP markets and sells hundreds of unique parts and accessories ranging from bumpers and roll cages to off-road lighting and customized hood louvers. TAP sells the PSC products in its nationwide chain of retail stores (4 Wheel Parts Performance Centers), on its Internet websites, and through many third-party distributors and retailers of off-road automotive products and services. (Id. at 3-4.)

         B. The PSC Brand

         The PSC brand is designed to appeal to the off-road Jeep enthusiast market. Many of TAP's products have the stylized PCS spider logo cut by laser into the product itself, such that every vehicle with a PSC product installed becomes a mobile advertisement. The PSC trademarks are also utilized online and in print magazines and advertisements. (Id. at 4.) PCS trademarks and brands are also promoted through in-person promotional activities, such as at nationwide rock-crawling events including the Easter Jeep Safari in Moab, Utah; the Bantam Jeep Heritage Festival in Butler, Pennsylvania; and the Pickens Sheriff's Jeep Fest in Jaspar, Georgia. TAP also promotes the PCS brand via a line of “swag” merchandise featuring the PSC logo and usually its name on items such as T-shirts, hats, and the like. (Id. at 5.) Such “swag” makes up around two percent of PCS's annual sales. (Id. at 7.) TAP has never sold bicycle products, has not marketed to the cycling industry or consumer, and does not intend to enter the cycling market. (Id. at 12.)

         C. The PSC Marks

         The words “Poison Spyder Customs” or “Poison Spyder” and a fanciful representation of a spider comprise PCS's trademarks, which have been in use continually since the company began operating in 2003. PCS originally obtained a United States Trademark Registration for “Poison Spyder Customs” in 2006, which was renewed in 2013, for “automobiles and automobile parts, namely custom-made all-terrain off-road vehicles, chassis and bumpers.” (Id. at 6.)

         (Image Omitted)

         TAP's applications for registration of these marks for apparel have either been rejected or are suspended pending review following resolution of this lawsuit. (Id.)

         D. Poison Spider Bicycles

         Plaintiff Poison Spider Bicycles is a bicycle shop located in Moab, Utah whose name was similarly derived from the local public Poison Spider Mesa trail. (ECF No. 27 at 7.) Its primary focus is its brick and mortar business, although it does sell via the Internet as well. (Id. at 13-14.) In September 1997, plaintiff registered a trademark for “Poison Spider Bicycles” for “retail store services featuring bicycles and bicycle accessories, namely, water bottles, locks, fanny packs, T-shirt, shorts and caps.” (Id. at 7.) Plaintiff believes its customers purchase its branded apparel items primarily to identify with the Poison Spider Bicycles brand. (Id. at 13.) Plaintiff does not sell off-road parts and accessories nor service off-road vehicles, and has no intention to expand its brand into this market. (Id.) Plaintiff's marks and logos have been presented differently over the years:

         (Image Omitted)

         Plaintiff's trademark registration application for its Poison Spider Bicycles mark in the apparel class was suspended indefinitely due to TAP's prior apparel class application. (ECF No. 27 at 7.)

         SUMMARY JUDGMENT STANDARD

         “The court shall grant summary judgment 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). When applying this standard, the court must “review the evidence and draw reasonable inferences therefrom in a light most favorable to the nonmoving party.” Commercial Union Ins. Co. v. Sea Harvest Seafood Co., 251 F.3d 1294, 1298 (10th Cir. 2001). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the movant has met this initial burden, the burden shifts to the nonmoving party to “‘set forth specific facts showing that there is a genuine issue for trial.'” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986) (quoting First Nat'l Bank of Ariz. v. Cities Serv. Co., 391 U.S. 253, 288 (1968)). In doing so, the nonmoving party “must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indust. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Instead, the nonmoving party is required to “go beyond the pleadings” and identify specific facts that support each element of its case. See McKnight v. Kimberly Clark Corp., 149 F.3d 1125, 1128 (10th Cir. 1998) (quoting Celotex, 477 U.S. at 322). “The plain language of Rule 56(c) mandates the entry of summary judgment . . . against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.” Celotex, 477 U.S. at 322.

         ANALYSIS

         I. Trademark Infringement and ...


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