United States District Court, D. Connecticut
OMNIBUS RULING ON SUMMARY JUDGMENT MOTIONS
CHARLES S. HAIGHT, JR. SENIOR UNITED STATES DISTRICT JUDGE.
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, 15
U.S.C. § 1051 et seq., and claims pursuant to
the Connecticut Unfair Trade Practices Act
("CUTPA"), Conn. Gen. Stat. § 42-110. Midsun
has brought counterclaims against CSL, alleging violations of
the Lanham Act and CUTPA. The Court has issued a number of
rulings in this matter, familiarity with which is assumed.
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
following facts are derived from the parties' submissions
pursuant to Local Rule 56(a);the uncontroverted deposition
testimony; and the affidavits and exhibits attached to the
parties' submissions. The facts recounted in this section
are undisputed or indisputable.
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. Id. ¶2. Founded in
1984, CSL develops and sells high-voltage silicone-based
coatings for high voltage insulator, anti-corrosion, and
anti-graffiti applications in certain industries.
Id. ¶3. Midsun was founded in 1992, and started
out as a distributor and applicator of other companies'
coating systems for electrical applications. Id.
¶8, 10; Doc. 171-3 at 2. Initially, Midsun did not
manufacture its own products. Id. ¶9.
1994, Midsun and CSL entered into a distribution agreement.
Id. ¶11. The agreement stated that Midsun
"wishes to establish an exclusive marketing arrangement
with a manufacturer of high quality silicones." Doc.
171-3 at 2. The agreement further provided that "CSL has
developed silicone coatings; 560, 570, 579 . . . for
electrical applications hereafter referred to as the
'products'". Id. Under the agreement,
CSL appointed Midsun to be the "exclusive agent for
sales, distribution, marketing and application of
products[.]" Id. Midsun agreed to "use its
best efforts to promote the use of the 'products,
'" including providing "advertising, publicity,
direct sales and other marketing to cover all potential
customers" in the relevant territories. Id. at
3. Midsun further agreed to "do nothing which would in
any way damage the reputation of CSL or its products."
Id. CSL agreed, inter alia, to permit
Midsun to identify itself as the exclusive agent of the
products and to publish Product Data Sheets, sales
literature, and press releases. Id. Thus, under the
agreement, Midsun would purchase products from CSL in Canada,
and would resell the products to customers in the United
States. Midsun's Local Rule 56(a)(1) Statement in Support
of Midsun Group, Inc.'s Motion for Partial Summary
Judgment on Plaintiff's Counts V and VI, Doc. 161-1
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. Id.
at 2. CSL permitted Midsun "to advertise as the
exclusive agent in the territories of the products . . . and
warranty that the products meet their specifications."
Id. Pursuant to this agreement, Midsun purchased
CSL's products and resold the products in the United
States and other locations. Doc. 161-1 ¶11. The
agreement contained annual sales targets. Doc. 161-1
¶14. While the agreements were in effect, Midsun
distributed and sold CSL's high voltage insulator coating
(the '570' product) and an anti-corrosion coating
(the '579' product) in the United States. Doc. 171-4
at 37. The 1995 Agreement was terminated by CSL on January 4,
1999. Doc. 161-1 ¶8.
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.
Id. at 41; see also Deposition of
Midsun's 30(b)(6) Representative, Doc. 171-14 at 18.
Around the same time, Midsun began marketing and selling an
anti-corrosion coating that it designated with the
'579' number. Doc. 171-1 ¶¶26-7. Midsun did
not have an internal chemistry department nor a chemist on
staff, and it did not directly manufacture the
silicone-coating products it sold. Id.
Edward Cherney was the general manager and late r 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. Id. at 136; Doc. 171-17 at
2. In a letter to Midsun, Cherney described the results of
the test, stating that Midsun's '570' product was
superior in performance. Doc. 171-1 ¶32; Doc. 171-17 at
2. Cherney was asked to resign from CSL because, in CSL's
view, he was not acting in the best interests of the company.
Doc. 175-10 at 17. Soon after his resignation, Cherney was
hired by Midsun as a consultant. Doc. 171-4 at 56.
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. Id.
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]." Id. at 7.
CSL stated that Midsun's actions are "unethical and
totally unacceptable and were carried out without the
knowledge or consent of CSL[.]" Id. CSL
demanded that Midsun cease and desist the sale of any CSL
product in non-CSL packaging, and also directed Midsun to
respond by a date certain. Id. On October 13, 1999,
CSL wrote again to Midsun, noting that no response to its
previous letter had been received, and terminating its direct
supply relationship with Midsun. Id. at 6. The
letter concluded by warning that "[a]ny future
occurrences of Midsun Group selling CSL product under the
Midsun name will result in legal action by CSL[.]"
8, 2000, counsel for CSL sent a letter to Midsun, asserting
that '570' and '579' were trademarks.
Id. at 5. The letter stated that CSL had learned
that during Midsun's term as CSL's authorized
distributor, Midsun relabeled CSL's products with its own
name, without CSL's knowledge or consent. Id. at
5. The letter further stated that CSL had become aware that
Midsun was selling a product that had been manufactured for
it under the name 'Midsun 570.' Id. at 5.
The letter demanded that Midsun immediately "discontinue
the use of the product designations MIDSUN 570, 579 or 587 or
any other product designation or trade-mark confusingly
similar to CSL's product designations and trade-marks
including the trademarks 570, 579 and 587[.]"
Id. at 5.
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.
Id. The letter further represented that the former
owner of CSL, Mr. Seraj Huda, had visited Midsun on three
occasions in Connecticut and "was provided with
literature denoting the labeling and the name Midsun
570" and that he did not stop Midsun from repackaging
CSL's products. Id.
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." Id. at 2. Midsun
received each of these letters. Doc. 183-1 ¶¶35-9.
continues to market and sell a high voltage insulator coating
product under the name '570' or 'Midsun 570.'
Id. ¶43; Midsun's Answer to CSL's
Complaint, Doc. 84 ¶14. Midsun marketed and sold an
anti-corrosion product under the name '579, '
'Silprocoat 579, ' or 'Midsun 579, ' but has
discontinued its marketing and sale of this product. Doc.
183-1 ¶44; Doc. 84 ¶15. At present, Midsun and CSL
are competitors, and target the same companies for sale of
the parties' competing products. Doc. 171-1 ¶68.
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. Id. ¶23. Midsun filed an application
in March 2001 for 'Midsun 570' based on a first use
date of at least as early as February 14, 2001. Id.
CSL's '570' application was suspended pending the
disposition of the 'Midsun 570' application.
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
trademark application. Deposition of Ira Dorfman, Doc. 181-
24 at 12-13.
November 13, 2001, Midsun was issued the registered trademark
'Midsun 570, ' Registration No. 2508019. Doc. 164-3
at 93. CSL's application to register '570' was
then refused. Doc. 164-1 ¶24. In December 2002, CSL
filed a Petition to Cancel Midsun's registered trademark
for the mark 'Midsun 570, ' alleging, among other
things, likelihood of confusion with CSL's use of
'570' in commerce. Doc. 161-1 ¶22. Midsun filed
two motions to dismiss; the first was rendered moot by the
amendment of the petition and the second was denied. Doc.
181-24 at 39. On June 15, 2004, CSL withdrew its Amended
Petition to Cancel the 'Midsun 570' trademark, and
the Amended Petition was dismissed with prejudice on June 28,
2005. Doc. 161-1 ¶23. CSL withdrew its petition for
financial reasons. Doc. 164-3 at 125.
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." Id. ¶55. CSL's
application provided a first use in commerce date of December
31, 1991. Doc. 1-1 at 2. The application stated that
"570 is a secondary trademark of the application, which
is used in conjunction with its Si-Coat mark." Doc.
164-1 ¶11. The PTO initially refused CSL's
application on several grounds. Doc. 181-20 at 2. CSL's
application was then suspended pending resolution of the
instant lawsuit. Doc. 181-20.
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." Id.
¶47. Midsun does not own any trademark registrations for
the 570 mark. Doc. 171-1 ¶57.
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. Id. The '570' mark used by
Midsun is not famous. Doc. 171-1 ¶80. At the time that
Midsun decided to name its product 'Midsun 570', it
understood that there was a market for 'CSL 570.'
Doc. 171-4 at 101.
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. Id. at
7. CSL has produced sales data that show sales of its
'570' product in the United States from February 2004
to present day. Doc. 164-1 ¶18. Midsun has consistently
promoted and advertised the Midsun brand since at least 1999.
Doc. 164-1 ¶29. CSL has promoted its '570'
product since the early 1990's, and has referred to
'CSL 570' as a trademark since at least 1991 (in
Canada) and 1992 (in the United States). Doc. 181-9; Doc.
181-12 at 8, 29.
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 to 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. Id.
Seraj Huda signed the '579' trademark application
declaration on behalf of CSL. Id. On May 14, 2002,
the mark '579' was registered under Registration
Number 2, 569, 185. Doc. 161-1 ¶5(b); Doc. 171-1
12, 2013, counsel for CSL sent a letter to counsel for Midsun
regarding CSL's ownership of U.S. Trademark Registration
No. 2, 569, 185, for the mark '579.' Doc. 161-4 at
120-21. The letter noted that Midsun appeared to be using the
mark '579' in violation of CSL's rights in its
own mark. Id. Following receipt of the letter,
Midsun agreed to rename its '579' anti-corrosion
product 'Midsun Silprocoat.' Doc. 161-1 ¶26.
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).
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. Id.
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. Id.
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.
Court will summarize the standard of review on motions and
cross-motions for summary judgment, and will then consider
these motions in that order.
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, 477 U.S. 317, 323 (1986). The moving party must
"demonstrate the absence of any material factual issue
genuinely in dispute" to be entitled to summary
judgment. Am. Int'l Grp., Inc. v. London Am.
Int'l Corp., 664 F.2d 348, 351 (2d Cir. 1981)
(quoting Heyman v. Commerce & Indus. Ins. Co.,
524 F.2d 1317, 1319-20 (2d Cir. 1975)) (quotation marks
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, 84 F.3d 511, 518 (2d Cir. 1996). The non-moving
party cannot "defeat the motion by relying on the
allegations in his pleading, or on conclusory statements, or
on mere assertions that affidavits supporting the motion are
not credible." Id. (citations omitted). In
other words, "[w]hen the moving party has carried its
burden under Rule 56, its opponent must do more than simply
show that there is some metaphysical doubt as to the material
facts." Matsushita Elec. Indus. Co. v. Zenith Radio
Corp., 475 U.S. 574, 586 (1986). The nonmoving party
"must present specific evidence demonstrating a genuine
dispute." Gannon v. UPS, 529 Fed.Appx. 102, 103
(2d Cir. 2013) (citing Anderson, 477 U.S. at 248).
"An issue of fact is genuine if the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party. A fact is material if it might affect the
outcome of the suit under the governing law."
Fincher v. Depository Tr. & Clearing Corp., 604
F.3d 712, 720 (2d Cir. 2010) (quotation marks and citation
omitted); see also Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 248 (1986) ("Only disputes over facts that
might affect the outcome of the suit under the governing law
will properly preclude the entry of summary judgment. Factual
disputes that are irrelevant or unnecessary will not be
inferences and ambiguities must be viewed in the light most
favorable to the nonmoving party. Rogoz v. City of
Hartford, 796 F.3d 236, 245-46 (2d Cir. 2015). The same
standard applies where the Court is evaluating cross-motions
for summary judgment. See Morales v. Quintel
Entertainment, Inc., 249 F.3d 115, 121 (2d Cir. 2001)
("[E]ach party's motion must be examined on its own
merits, and in each case all reasonable inferences must be
drawn against the party whose motion is under
consideration." (citation omitted)).
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, 996 F.2d 1455, 1461 (2d Cir. 1993)
(citation omitted); see also Coutard v. Mun. Credit
Union, 848 F.3d 102, 114 (2d Cir. 2017) ("The fact
that both sides have moved for summary judgment does not
guarantee that there is no material issue of fact to be tried
and that one side or the other is entitled to that
relief."). Instead, in evaluating cross-motions for
summary judgment, "the court must evaluate each
party's motion on its own merits, taking care in each
instance to draw all reasonable inferences against the party
whose motion is under consideration." Schwabenbauer
v. Bd. of Ed. of City Sch. Dist. of City of Olean, 667
F.2d 305, 314 (2d Cir. 1981); see also Omega S.A. v.
Omega Eng'g, Inc., 396 F.Supp.2d 166, 173 (D. Conn.
2005) ("When faced with cross-motions for summary
judgment, the court must consider the evidence differently
depending on which motion is being addressed."),
opinion adhered to on reconsideration, No.
3:01-CV-2104(SRU), 2005 WL 3307277 (D. Conn. Dec. 6, 2005).
CSL's MOTION FOR PARTIAL SUMMARY JUDGMENT [Doc.
seeks summary judgment on Counts I, V, and VI of its
complaint. Counts I and VI allege claims of unfair
competition under 15 U.S.C. § 1125(a) for Midsun's
use of CSL's '570' mark and '579' mark,
respectively. Count V alleges a claim of trademark
infringement pursuant to 15 U.S.C. § 1114 for
Midsun's use of CSL's '579' mark. CSL also
moves for summary judgment on Midsun's counterclaims I
through VI; Midsun's affirmative defenses; and on the
issue of willful infringement. Finally, CSL requests that the
Court award attorney's fees.
Lanham Act Claims
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." 15 U.S.C. § 1114(1)(a). Section 43(a) of
the Lanham Act similarly prohibits the infringement of
unregistered, common law trademarks. See 15 U.S.C.
§ 1125(a)(1); see also Time, Inc. v. Petersen Pub.
Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999).
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.,
588 F.3d 97, 114 (2d Cir. 2009); see also Christian
Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc.,
696 F.3d 206, 224 (2d Cir. 2012) ("[W]e analyze a
trademark infringement claim in two stages, asking first
whether the mark merits protection and, second, whether the
allegedly infringing use of the mark (or a similar mark) is
likely to cause consumer confusion." (quotation marks
and citation omitted)). "Preliminary to making this
showing, however, a plaintiff must demonstrate its own right
to use the mark or dress in question." ITC Ltd. v.
Punchgini, Inc., 482 F.3d 135, 154 (2d Cir.
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., 482 F.3d at 146
("[T]rademark rights are acquired and maintained through
use of a particular mark."). Ownership rights
"develop when goods bearing the mark are placed in the
market and followed by continuous commercial
utilization." Buti v. Perosa, S.R.L., 139 F.3d
98, 103 (2d Cir. 1998) (quotation marks and citation
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[.]" 15 U.S.C. §
1115(a). Moreover, a registered mark attains an
incontestable status "if it has been in continuous use
for five consecutive years subsequent to its registration and
is still in use." Gruner Jahr USA Pub., a Div. of
Gruner Jahr Printing & Pub. Co. v. Meredith Corp.,
991 F.2d 1072, 1076 (2d Cir. 1993) (quotation marks and
citations omitted). For an incontestable mark, "its
registration shall be conclusive evidence of the
registrant's exclusive right to use the registered mark
in commerce[.]" Id.
be valid and protectible, a mark must be capable of
distinguishing the products it marks from those of
others." Lane Capital Mgmt., Inc. v. Lane Capital
Mgmt., Inc., 192 F.3d 337, 344 (2d Cir. 1999) (citation
omitted). "There are five different categories of terms
with respect to the protection of a mark: generic,
descriptive, suggestive, arbitrary, and fanciful. The
categories reflect both the eligibility for protection and
the degree of protection accorded." Lane Capital
Mgmt., Inc., 192 F.3d at 344 (citation omitted). "A
mark is entitled to protection when it is inherently
distinctive; if the mark is 'merely descriptive, ' it
qualifies for protection only if it has acquired secondary
meaning, i.e., if it 'has become distinctive of the . . .
goods in commerce.'" Time, Inc., 173 F.3d
at 117 (quoting 15 U.S.C. § 1052(e)).
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., 580 F.2d 44, 47 (2d Cir. 1978). To
determine whether there exists a likelihood of confusion, the
Court applies the eight-factor balancing test introduced in
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492
(2d Cir. 1961), cert. denied, 368 U.S. 820, 82
(1961). The factors are:
(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., 588 F.3d at 115. "The
application of the Polaroid test is not mechanical,
but rather, focuses on the ultimate question of whether,
looking at the products in their totality, consumers are
likely to be confused." Int'l Info. Sys. Sec.
Certification Consortium, Inc. v. Sec. Univ., LLC, 823
F.3d 153, 160 (2d Cir. 2016) (quotation marks and citation
omitted), cert. denied, 137 S.Ct. 624 (2017). While
no one factor is dispositive, and in some cases, a factor may
be irrelevant to the facts before it, "it is incumbent
upon the district judge to engage in a deliberate review of
each factor, and, if a factor is inapplicable to a case, to
explain why." Arrow Fastener Co. v. Stanley
Works, 59 F.3d 384, 400 (2d Cir. 1995) (citation
this guidance in mind, the Court turns the merits of
Ownership of the Marks
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.
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 witnesses' 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., 906 F.Supp.2d 96 (E.D.N.Y.
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. . . ." 15 U.S.C.
§ 1127. "Adoption and a single use of the mark may
be sufficient to entitle the user to register the mark."
La Societe Anonyme des Parfums le Galion v. Jean Patou,
Inc., 495 F.2d 1265, 1271 (2d Cir. 1974) (collecting
cases). While evidence of mere advertising, without more, is
inadequate to establish "use" within the meaning of
the Lanham Act, if the use is "calculated to consummate
a sale, " it can be sufficient. 3 McCarthy
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, 239 F.Supp.3d
542, 558 (E.D.N.Y. 2017) (quotation marks and citation
omitted). See also La Societe Anonyme des Parfums le
Galion, 495 F.2d at 1274 n.11 (noting that "what
constitutes sufficient use for trademark ownership purposes
is obviously a case-by-case task").
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
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., 841 F.3d 155, 167-68 (2d Cir. 2016)
(finding that defendant had raised a genuine issue of fact as
to use in commerce where it offered evidence that it had a
commercial website featuring the mark and several stand-alone
advertisements directing consumers to the website prior to
plaintiff's use); Marvel Comics Ltd. v. Defiant, a
Div. of Enlightened Entm't Ltd., 837 F.Supp. 546,
549 (S.D.N.Y. 1993) (finding, on a motion to dismiss, the
plaintiff adequately alleged commercial use that may be
sufficient to establish its right to a mark where, without
making sales, the plaintiff promoted and advertised the
mark); La Societe Anonyme des Parfums le Galion, 495
F.2d at 1272, 1275 (noting that in determining whether bona
fide use exists, "[t]here must be a trade in the goods
sold under the mark or at least an active and public attempt
to establish such a trade" and a "present plan of
commercial exploitation" or "present intent . . .
to market the trademarked product" may be considered in
making such a determination (quotation marks and citation
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.
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'.
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., 59 F.3d at 388 n.1 (citation omitted); see
also 4 McCarthy, § 23:43 ("A
'house mark' is a mark used on several different
goods or services which themselves use a particular
'product mark.'"). The use of a house mark in
connection with a trademark is common, and does not speak to
the validity of the trademark of the product itself.
See 1 McCarthy § 7:5 (explaining that
"the mark KELLOGG may appear on a label along with
POP-TARTS, but this does not per se detract from the
trademark function of the product mark POP-TARTS").
"Whether or not a product mark always used with a house
mark possesses a separate trademark significance depends upon
the manner of use and the commercial impression engendered by
that use." Id. In line with these principles,
"use of house and product marks together does not
constitute abandonment of each one individually."
BeautyBank, Inc. v. Harvey Prince, LLP, No.
10-CV-00955(AJN), 2013 WL 11327097, at *9 (S.D.N.Y. Mar. 29,
2013) (citing Bridgestone Americas Tire Operations, LLC
v. Fed. Corp., 673 F.3d 1330, 1336 (Fed. Cir. 2012)).
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.
also argues that CSL's sales of the '570' product
under the parties' exclusive distribution 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.
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., 906
F.Supp.2d at 110-11 (quoting 2 McCarthy §
29.02). Here, CSL has established that it was the first to
use the '570' mark in commerce in the United States.
While Midsun acquired an exclusive right to distribute
CSL's products through the 1994 and 1995 Agreements, the
Agreements did not confer trademark rights upon 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., 906
F.Supp.2d at 96, in support. Haggar is a trademark
infringement matter involving a foreign manufacturer and a
domestic distributor. Following a bench trial, Magistrate
Judge Pollack applied a test to determine which party had
acquired ownership of the mark in question. Id. at
112-25. This analysis has been referred to as the
"modified Wrist-Rocket test, "
id. at 112, so named for its application by the
District of Nebraska in Wrist-Rocket Mfg. Co. v.
Saunders, 379 F.Supp. 902, 913-14 (D. Neb. 1974)
("Wrist-Rocket I"), aff'd in part,
rev'd in part on other grounds, 516 F.2d 846 (8th
Cir. 1975) ("Wrist-Rocket II"), and its
subsequent modification by the Ninth Circuit in Sengoku
Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1220
(9th Cir.), as modified, 97 F.3d 1460 (9th Cir.
1996). As the Eighth Circuit made clear in Wrist-Rocket
II, however, this analysis only applies to resolve the
question of "who, as between the manufacturer and
distributor, has ownership of a trademark created
after the formation of the business relationship,
" as opposed to "a case where a distributor
appropriates to its own use an existing trademark of the
manufacturer." Wrist-Rocket Mfg. Co., 516 F.2d
at 850 (emphasis added).
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.
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, 495 F.2d at 1271-72.
evidence of continuous sales from 1999 to 2004,
relies primarily on Faisal Huda's declaration that
CSL's product "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.
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.
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.
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., 98 F.Supp.2d 456, 461 (S.D.N.Y. 2000) (footnotes
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.
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.
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 CSL
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.
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." 15 U.S.C. § 1115(b). A mark gains
incontestable status when it "has been in continuous use
for five consecutive years subsequent to the date of such
registration and is still in use in commerce[.]" 15
U.S.C. § 1065 (including other conditions not at issue
in this matter). CSL qualifies for that status, having
achieved registration of the '579' mark in May 2002.
Thus, CSL's incontestable registration for the
'579' mark is conclusive evidence that CSL owns the
mark and has an exclusive right to use the mark in commerce
in the United States.
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." 15 U.S.C. § 1115(b)(1). "Fraud
in procuring a trademark registration occurs when an
applicant knowingly makes false, material representations of
fact in connection with his application." MPC
Franchise, LLC v. Tarntino, 826 F.3d 653, 658 (2d Cir.
2016) (quotation marks and citation omitted). "A party
seeking cancellation of a registered trademark on grounds of
fraud must demonstrate the alleged fraud by clear and
convincing evidence." Orient Exp. Trading Co. v.
Federated Dep't Stores, Inc., 842 F.2d 650, 653 (2d
Cir. 1988) (quotation marks and citation omitted). "To
rise to the level of fraud, the false statement must be made
knowingly and have been material to the PTO's decision to
grant [the] trademark application." Haggar Int'l
Corp., 906 F.Supp.2d at 127 (citation omitted).
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.
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., 906 F.Supp.2d at 127 (finding no clear and
convincing evidence of fraud where there was no indication
that an inaccurate date of first use was material to the
PTO's decision to grant a trademark application, noting
that an inaccurate dates "only becomes relevant and
material if the PTO had to determine which of two companies
had the superior claim because of first use in United States
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.
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." 37
C.F.R. § 2.167(f) (emphasis added). See also
Trademark Man. of Exam. Proc., 1605.03, (5th ed. 2007)
("A §15 affidavit may not be filed until the
federally registered mark has been in continuous use in
commerce for at least five consecutive years after the date
of registration. This may be any five-year period after the
date of registration for marks registered under the Act of
1946. . . .The registrant may file the affidavit within one
year after the five-year period that is selected."). As
it is undisputed that CSL's '579' product was in
continuous use from 2004 to present, there is no merit to
Midsun's argument that CSL's Declaration of
Incontestability in 2014 was fraudulent.
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.
Validity of the Marks
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., 192 F.3d at 344 (citation omitted). Thus, whether
the marks are valid speaks to the question of whether the
marks are entitled to protection. The Court will examine each
mark in turn.
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
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 imagination, 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., 192 F.3d at 344 (citation
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., 841 F.Supp. 506, 515 (S.D.N.Y. 1993)
(citation omitted). CSL has submitted evidence that
'570' is not descriptive or indicative of a
silicone-based coating for high voltage
insulators. The evidence shows that '570' does
not pertain to a characteristic or quality of silicone
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
"deference should be given by a court to the
interpretation by the agency charged with its
administration[, ]" Buti, 139 F.3d at 105, the
PTO examiner's initial rejection of CSL's
'570' trademark application was not a final
determination. See Therapy Prod., Inc. v.
Bissoon, 623 F.Supp.2d 485, 495 (S.D.N.Y. 2009)
(rejecting an argument that "significant weight"
should be afforded to the PTO's determination to approve
a registration, "because the PTO's approval is only
a preliminary determination"), aff'd in part,
remanded in part sub nom on other grounds, Erchonia
Corp. v. Bissoon, 410 Fed.Appx. 416 (2d Cir. 2011);
but see Arrow Fastener Co., 59 F.3d at 392-93
(according weight to the PTO's "initial
conclusion" that the mark was a model designator, and to
the decision "not to register the mark without evidence
of secondary meaning").
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 ...