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Mag Automotive LLC V. Gadra Enterprises, Inc.

Brooks Kushman Obtains Summary Judgment of No Trademark Infringement

Tuesday, September 18, 2018

In a case involving a claim of trademark infringement regarding a Numbering System on automotive equipment parts, the U.S. District Court for the Eastern District of Michigan granted summary judgment in favor of Brooks Kushman’s client Gadra Enterprises, Inc. Brooks Kushman successfully convinced the Court that Plaintiff Mag Automotive LLC had not produced sufficient evidence to establish that the mark qualified as a protectable unregistered trademark.

Mag Automotive and Gadra Enterprises (“Gadra”) compete to supply replacement parts for Mag Automotive’s equipment. To help identify the replacement parts, Mag Automotive uses a parts designation system (the “Numbering System”), wherein parts are labeled with identifiers such as A.1004.1041 and A.1077.9939. In June 2016, Mag Automotive brought suit against Gadra Enterprises, alleging false association and false advertising relating to Gadra’s usage of Mag Automotive’s Numbering System.

The case was high stakes for Gadra: Gadra would not only face damages if the court were to find infringement but also would likely lose a significant number of sales if it was precluded from using the Numbering System to identify its replacement parts. Recognizing the importance of a favorable outcome in this case, Gadra sought help from the attorneys at Brooks Kushman.

The Brooks Kushman team took the clever approach of attacking the protectability of the Numbering System and filing three counterclaims, which alleged that Mag Automotive had engaged in false advertising, business and product disparagement, and tortious interference with business relationships. Our experienced litigators persuaded the court that the Numbering System was not a protectable mark under the Lanham Act because it was descriptive and lacked secondary meaning. Additionally, the Brooks Kushman litigators successfully argued that Gadra’s usage of the Numbering System had not actually deceived and did not have a tendency to deceive a substantial portion of the intended audience. Thus, the court granted summary judgment in favor of Gadra on all of Mag Automotive’s claims.

Our litigation team’s success continued when the court denied Mag Automotive’s motion for summary judgment on Gadra’s counterclaims. As a result, Gadra’s counterclaims were set to proceed to trial. However, the parties opted to settle the dispute before trial, which ultimately led to a favorable settlement agreement for Gadra.

Brooks Kushman attorneys Mark Cantor and Rebecca Cantor led the team that achieved this successful outcome for Gadra.


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