United States District Court, D. Massachusetts
RIMOWA DISTRIBUTION, INC.
TRAVELERS CLUB LUGGAGE, INC.
MEMORANDUM AND ORDER ON CROSS MOTIONS FOR SUMMARY
Richard G. Stearns UNITED STATES DISTRICT JUDGE.
Distribution, Inc.,  a purveyor of luxury luggage, asserts that
Travelers Club Luggage, Inc. (TCL), markets competing
suitcases that misappropriate Rimowa's protected
"distinctive pattern of ridges and grooves." Am.
Compl. Â¶ 1. Rimowa alleges trademark infringement and false
designation of origin under the Lanham Act (Count I); trade
dress infringement under the Lanham Act (Count II);
common-law trademark and trade dress infringement (Count
III); trademark dilution (Count IV); counterfeiting (Count
V); and common-law unfair competition (Count VI). Discovery
having been completed, TCL now moves for summary judgment of
no liability. Rimowa, for its part, seeks brevis judgment on
TCL's fraudulent procurement defense and counterclaim.
German corporate parent, Rimowa GMBH, is the record owner of
Trademark Registration No. 2, 583, 912 (the '912
registration) on the Supplemental Register, and Trademark
Registrations Nos. 3, 949, 886 (the '886 registration);
4, 548, 851 (the '851 registration); and 4, 586, 888 (the
'888 registration) on the Principal
Register. The '912 registration was issued on
June 18, 2002, and depicts "a piece of luggage having
parallel space ribs." The '886 registration was
issued on April 26, 2011, and depicts "horizontal bands
that run across and around the owner's luggage
products." The '851 registration was issued on June
10, 2014, and depicts "a three-dimensional design
feature of the [luggage] goods consisting of parallel ridges
and grooves that uniformly cover the surface of the
goods." The '888 registration was issued on August
19, 2014, and depicts "a 3D pattern of strait [sic]
ridges and grooves that appear uniformly over the surface of
the applicant's [luggage] goods." The registrations
state that the marks have been in use since 1950, and were
first used in commerce in the United States in 1985. The
claimed marks of the '851 and the '888 are reproduced
asserts infringement of the four registrations as well as its
"distinctive trade dress, consisting not only of the
pattern of ridges and grooves, but also of the overall
appearance of its luggage, including the placement and
appearance of rollers and roller housing, handles, and
trolley bars, locks, and corner protectors."
Rimowa's Response to TCL's Statement of Material
Facts, Dkt. # 102 Â¶ 1. Rimowa identifies as infringing
products TCL's Chicago, Jet Set, Nova, Bayhead, Orbit,
Getaway, Atlas, Maze, Cerulean, Rio, and Sequoia Collections,
the Lulu Castagnette line of luggage, and the lines
designated with the serial numbers HS-27803, HS-27903, and
HS-28103. Am. Compl. Â¶ 1. Exemplars of Rimowa's luggage
and TCL's accused Chicago and Orbit Collections are
judgment is appropriate when "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). "A 'genuine' issue is one
that could be resolved in favor of either party, and a
'material fact' is one that has the potential of
affecting the outcome of the case." Calero-Cerezo v.
U.S. Dep't of Justice, 355 F.3d 6, 19 (1st Cir.
2004), citing Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248-250 (1986). The moving party bears the burden
of establishing that there is no genuine issue of material
fact. See Celotex Corp. v. Catrett, 477 U.S. 317,
322-323 (1986). "The evidence of the non-movant is to be
believed, and all justifiable inferences are to be drawn in
his favor." Anderson, 477 U.S. at 255.
asserts that Rimowa lacks standing to bring the infringement
claims because it is not an exclusive licensee of the
asserted marks. Although the Lanham Act grants to the
"registrant" the right to recover for trademark
infringement, 15 U.S.C. § 1114, the First Circuit has
interpreted the statute liberally to permit recovery by
registrants, their assignees, and exclusive licensees.
Quabaug Rubber Co. v. Fabiano Shoe Co., 567 F.2d
154, 158 (1st Cir. 1977). Rimowa became the exclusive
licensee of the asserted marks in the United States by virtue
of a December 2014 compact with Rimowa GMBH. Pursuant to the
agreement, Rimowa acquired and possesses undivided rights to
the marks within its grant of territory, including the right
to sublicense and enforce the marks as it deems fit.
Licensor hereby grants to Licensee an exclusive license... to
use the Intellectual Property including any and all common
law rights in the Territory in the manner specified in this
License.... Licensor further agrees not to grant licenses to
other parties to use the Intellectual Property within the
Territory, Licensee shall have the right to grant sublicenses
in the Territory.
. . . .
Licensee shall ... in its sole and absolute discretion and at
its own expense challenge unauthorized use of [the
Intellectual Property] or institute any proceeding deemed in
its discretion desirable in order to protect the Intellectual
Rimowa License (Dkt. # 83-8) ¶¶1, 5.1.
challenges the exclusivity of Rimowa's license by
pointing to a 2009 license agreement between Rimowa GMBH and
Rimowa North America, Inc. (Rimowa NA), a Canadian subsidiary
of Rimowa GMBH. The agreement bestows on Rimowa NA "a
non-exclusive license" for "all expertise and all
necessary patents and proprietary rights ... to manufacture
polycarbonate [and aluminum] suitcase series of the brand
RIMOWA, " including for "distribution and sales ...
in the USA." Rimowa NA License (Dkt. # 83-9)
§§ 1.1, 2.1; Addendum. The Rimowa NA License, by
its own terms, will expire on December 31, 2016. Id.
at § 5.1. Thomas Nelson, Vice President for Rimowa and
Rimowa NA, explained that the Rimowa NA License was
terminated prior to the Rimowa License (and that Rimowa NA is
now sublicensed by Rimowa with respect to its United States
sales). Nelson Aff. (Dkt. # 96) ¶¶ 3-4, 11-12. TCL
argues that the Rimowa NA License requires that any
alteration of its terms be made in writing, § 7.1, and
because Rimowa has not produced written confirmation of the
termination of the Rimowa NA License, it follows that Rimowa
is not the exclusive licensee of the marks in the United
dispute, concerning the internal reorganization of the
licensing scheme among the Rimowa family of companies, rings
more of sounding brass and tinkling cymbals than of any tune
of pragmatic consequence. The court need not make a determination
whether Rimowa has standing to act as a sole plaintiff. In
the Rimowa License, Rimowa GMBH committed itself to
"assist Licensee in the protection, whether by judicial
means or otherwise, of the Intellectual Property, "
§ 5.1, which is what this litigation is all about.
Because the deficiency is one of form and not of substance,
the court will permit Rimowa to amend its Complaint within
fourteen days of the date of this opinion to add Rimowa GMBH
as a co-plaintiff.
also contends that because only an "owner" may seek
to enjoin the dilution of a "famous mark" under the
Lanham Act, 15 U.S.C. § 1125(c), as a licensee, Rimowa
has no standing to assert such a claim. Although a few
district courts have agreed with TCL, see, e.g., Prince
of Peace Enters., Inc. v. Top Quality Food Mkt., LLC,
760 F.Supp.2d 384, 393 (S.D.N.Y. 2011), it is the view of
this court that the counter-rationale set out in Quabaug
Rubber is the more persuasive. In Quabaug
Rubber, the Court, by analogizing to patents, held that
an exclusive licensee may exercise the rights of an owner
when it holds the monopoly on a mark within a given
territory. 567 F.2d at 158-159. Because it holds the right to
exclude others, grant sublicenses, and enforce the marks in
United States, Rimowa stands in the shoes of the
"owner" for all intents and purposes. Moreover, any
lingering concerns over the niceties of ownership will be
mooted by the joinder of Rimowa GMBH.
maintains that Rimowa cannot prevail on its infringement
claims because Rimowa has no evidence to support a finding of
likelihood of confusion between the companies' competing
lines of suitcases. Likelihood of confusion is "an
essential element of a claim of trademark infringement,
whether asserted under Massachusetts or federal law."
Pignons SA. de Mecanique de Precision v. Polaroid
Corp., 657 F.2d 482, 486-487 (1st Cir. 1981). When
assessing the likelihood of confusion, courts typically
consider the so-called Pignons factors: "the
similarity of the marks; the similarity of the goods; the
relationship between the parties' channels of trade; the
relationship between the parties' advertising; the
classes of prospective purchasers; evidence of actual
confusion; the defendants' intent in adopting its mark;
and the strength of the plaintiff's mark."
Id. at 487. Of the Pignons factors,
"[e]vidence of actual confusion is often considered the
most persuasive evidence of likelihood of confusion because
past confusion is frequently a strong indicator of future
confusion." Beacon Mut. Ins. v. OneBeacon Ins.
Grp., 376 F.3d 8, 18 (1st. Cir. 2004). On the flip side,
"an absence of actual confusion, or a negligible amount
of it, between two products after a long period of
coexistence on the market is highly probative in showing that
little likelihood of confusion exists." Aktiebolaget
Electrolux v. Armatron Int'l, Inc., 999 F.2d 1, 4
(1st Cir. 1993).
court agrees with TCL that Rimowa has failed to identify
admissible evidence of actual confusion between Rimowa's
luggage and the accused products. Although Rimowa asserts
that it has been "contacted by consumers confused by 
look-alike luggage which had not been manufactured by Rimowa,
including consumers 'returning' to Rimowa lookalike
luggage . . . manufactured by someone other than Rimowa,
" Rimowa Opp'n at 3, nothing in the record indicates
that the "returned look-alikes" were manufactured
of actual confusion, however, is not a precondition to
establishing a likelihood of confusion. Bose Corp. v.
Ejaz, 732 F.3d 17, 27 (1st Cir. 2013), citing
Societe Des Produits Nestle, SA. v. Casa Helvetia,
Inc., 982 F.2d 633, 640 (1st Cir. 1992). The absence of
actual confusion evidence is probative only where the
competing products have durably coexisted in the same
marketplace. The First Circuit has observed that
a lack of evidence of actual confusion weighs against a
finding of likely confusion when competing marks have
competed in the same market for six years,
[Aktiebolaget, 999 F.2d at 4], four years,
Pignons, 657 F.2d at 490, or as little as three and
a half years, Keebler ...