Covertech Fabricating, Inc. v. TVM Bldg. Prods., Inc.

124 F.Supp.3d 489

COVERTECH FABRICATING, INC., Plaintiff,

v.TVM BUILDING PRODUCTS, INC., Defendant.

Civil Action No. 3:13–150.

United States District Court, W.D. Pennsylvania.

Signed Aug. 14, 2015.

Brian W. Shaffer, Andrew Whitney, Morgan, Lewis & Bockius LLP, Philadelphia, PA, for Plaintiff.

J. Michael Baggett, McCann, Garland, Ridal & Burke, Pittsburgh, PA, for Defendant.

MEMORANDUM OPINION AND ORDER

KIM R. GIBSON, District Judge.

I. INTRODUCTION

This matter comes before the Court upon conclusion of a bench trial held from October 20, 2014 until October 24, 2014. The parties filed their proposed findings of fact and conclusions of law on April 9, 2015. (ECF Nos. 96 and 97). The parties filed responses on May 21, 2015. (ECF Nos. 100 and 101). The matter is now ripe for disposition.

II. BACKGROUND

a. Procedural

Covertech Fabricating filed a complaint against TVM Canada and TVM Products in the Middle District of Pennsylvania on May 21, 2013. (ECF No. 1). Covertech filed a stipulation of dismissal without prejudice of its claims against TVM Canada on July 8, 2013. (ECF No. 11 at 3). The parties also stipulated to transfer the remainder of the action to the Western District of Pennsylvania pursuant to 28 U.S.C. § 1406(a). (ECF No. 12). The action was transferred to this judicial district on July 11, 2013. (ECF No. 13).

b. Jurisdiction and Venue

This Court has subject matter jurisdiction over the action pursuant to 28 U.S.C. § 1332(a)(2) and (c)(1) because the parties are of diverse citizenship and the amount in controversy exceeds $75,000, excluding interest and costs. (ECF No. 1 at 5). This Court also has subject matter jurisdiction over the claims pursuant to 28 U.S.C. §§ 1331, 1338(b), and 15 U.S.C. § 1121 because this action involves claims for infringement of a federally registered trademark in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114 ; for federal unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) ; and for dilution of a federally registered trademark in violation of § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). This Court also exercises supplemental jurisdiction over Plaintiff's state law claims pursuant to 28 U.S.C. § 1367 because they form part of the same "case or controversy" under Article III of the United States Constitution.

Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(1) because TVM is subject to personal jurisdiction here under 28 U.S.C. § 1391(b)(2), and because a substantial part of the events or omissions giving rise to the claims arose in the Western District of Pennsylvania.

III. LEGAL STANDARD

Pursuant to Rule 52(a) of the Federal Rules of Civil Procedure, the court may enter judgment following a trial without a jury. See FED. R. CIV. P. 52(a). In making a decision following a bench trial, "[t]he court must find the facts specially and state its conclusions of law separately." Id.; see also In re Frescati Shipping Co., Ltd., 718 F.3d 184, 196 (3d Cir.2013). Accordingly, the court will discuss its factual findings and then proceed to conclusions of law.

IV. FACTUAL FINDINGS

a. The parties involved

i. Covertech Fabricating, Inc.

The Plaintiff in this matter is Covertech Fabricating, Inc. ("Covertech"), a Canadian corporation with its principal place of business in Toronto, Ontario, Canada. (ECF No. 87, Trial Tr., at 40:3–4).

The President and owner of Covertech is Furio Orologio. (ECF No. 90, Trial Tr., at 211:11). Mr. Orologio has been an owner and the President of Covertech since its inception in 1990. (Id. at 211:16–18). He oversees every aspect of running the company, including the financials, banking, production and sales. (Id. at 211:19–21). Jonathan Starr is the Vice President and an owner of Covertech. He has been with Covertech since 1990 and is presently responsible for the sales and marketing aspects of the company. (ECF No. 87, Trial Tr., at 40:1). Peter Clarke works for Covertech and is responsible for sales in Canada and the northeast United States. (ECF No. 88, Trial Tr., at 4:19–22). Prior to working for Covertech, Mr. Clarke was employed by TVM as Vice President of Sales in Canada from June 2005 through May 31, 2009. (Id. at 30:13–15). Kelly Myers is the National Sales Manager for Covertech and has been employed by Covertech for the past seven years. Prior to working for Covertech, he was employed at TVM from May 2000 through January 2006. (Id. at 128:23–129:3).

ii. TVM Building Products, Inc.

The Defendant in this matter is TVM Building Products, Inc. ("TVM"). TVM is a distributor of specialty building products including insulation and sealants and maintains its principal office in Johnstown, Pennsylvania. (ECF No. 89, Trial Tr., at 89:6–8).

Michael Boulding has been the President of TVM Building Products since its inception in 1998. (Id. at 7:3–8:5). In about 1998, Mr. Boulding met with Mr. Orologio to discuss the marketing of Covertech's products by TVM. (ECF No. 90, Trial Tr., at 219:11–220:19). At that time, TVM was a marketing company. (ECF No. 87, Trial Tr., at 47:19–48:2). TVM did not manufacture any insulation products. (ECF No. 89, Trial Tr., at 15:5–7).

b. Covertech's Reflective Insulation and Protective Packaging Business

Covertech manufactures protective packaging and reflective insulation. (ECF No. 87, Trial Tr., at 40:17–23). Covertech extrudes polyethylene film and converts it into different products. (Id. ). Covertech manufactures and sells extruded film, various protective packaging products, such as bubble wrap, and various products relating to reflective insulation, which are polyethylene bubble products with foil facings laminated to them. (Id. at 40:18–41:4).

Covertech began manufacturing reflective insulation products in the mid–1990s and sells its products in the United States, Canada, and around the world. (Id. at 41:5–9). Covertech started manufacturing and selling reflective insulation in 1994 or 1995 to be used on walls, ceilings, floors, and around ductwork. (Id. at 41:10–15). Covertech began selling reflective insulation products in the United States in 1998 or 1999. (Id. at 47:12–15).

c. Reflective insulation

Covertech's reflective insulation product is called rFOIL. (ECF No. 87, Trial Tr., at 41:20–22). Covertech has been using the rFOIL mark in interstate commerce since about 1998. (Id. at 14:4–6). The mark has been associated with Covertech products since then. (Id. at 53:22–24). Covertech has been using the rFOIL mark continuously throughout the United States since 1998 and it uses it today. (Id. at 66:25–67:7). Covertech came up with the name rFOIL. It developed the name with a marketing company prior to working with TVM. (Id. at 62:2–4).

Covertech sells its reflective insulation products under its rFOIL brand. (Id. at 41:23–42:7). Covertech has a number of different product names that it sells under the rFOIL brand, including ULTRA NT RADIANT BARRIER, NT RADIANT BARRIER, CONCRETE BARRIER FOIL, CONCRETE UNDERPAD, and ULTRA CONCRETE UNDERPAD. (Id. ).

Pursuant to an application filed by Covertech on September 18, 1997, the United States Patent and Trademark Office ("USPTO") added the trademark rFOIL to its principal register on April 17, 2001 as Reg. No. 2,444,633. (ECF No. 97 at 5, citing Exs. 1, 114, ¶ 1). The rFOIL trademark is incontestable pursuant to 15 U.S.C. § 1065. (Id., citing Exs. 1, 114, ¶ 2). After Covertech had registered the rFOIL mark, Covertech immediately told TVM about it. (Id. at 66:15–24).

d. CONCRETE BARRIER

Covertech has been using the CONCRETE BARRIER mark in interstate commerce since about 1998. (ECF No. 87, Trial Tr., at 53:10–24). Covertech has used the mark continuously throughout the United States since 1998 and uses it today. (Id. at 66:25–67:7). Covertech's CONCRETE BARRIER products are also referred to as CBF, which stands for CONCRETE BARRIER Foil. (Id. at 52:19–23, 53:18–20). Covertech has sold millions of dollars of its CONCRETE BARRIER product in the United States. (Id. at 74:2–4). According to Covertech's National Sales Manager, Kelly Myers, the CONCRETE BARRIER product is "huge" and one of Covertech's "marquee products." (ECF No. 88, Trial Tr., at 147:22–148:10).

Covertech registered the trademark "CONCRETE BARRIER" with the USPTO by filing an application on June 17, 2003. (Joint Stipulation, ECF No. 79 at 1). The mark was added to the supplemental register on September 20, 2005 as Reg. No. 2,999,338. (Id.; Exs. 3, 114 ¶ 3). Pursuant to an application filed by Covertech on September 10, 2013, the USPTO added the trademark CONCRETE BARRIER to its principal register on June 3, 2014 as Reg. No. 4,542,586. (Id.; Exs. 2, 114 ¶ 4).

After Covertech had registered the CONCRETE BARRIER mark, it immediately told TVM about it. (ECF No. 87, Trial Tr., at 66:15–24). Covertech sells its CONCRETE BARRIER product using the product number 1620. (Id. at 45:3–7; Ex. 117). Since Covertech began using that number, it has always been associated with Covertech's CONCRETE BARRIER product. (Id. at 70:3–5).

e. ULTRA CONCRETE UNDERPAD and CONCRETE UNDERPAD

Covertech has been using the CONCRETE UNDERPAD and ULTRA CONCRETE UNDERPAD marks in interstate commerce since about 2003 or 2004. (Id. at 53:10–24, 83:11–13). The marks have been associated with Covertech products since then. (Id. ). Covertech has been using the CONCRETE UNDERPAD mark continuously throughout the United States since then and still uses it today. (Id. at 83:23–25). The product number associated with Covertech's CONCRETE UNDERPAD mark is 4620, and the product number associated with Covertech's ULTRA CONCRETE UNDERPAD mark is 4320. (Id. at 45:8–9, 46:1–7; Exs. 118, 119). Covertech has sold millions of dollars using the CONCRETE UNDERPAD marks over the years. (Id. at 86:1–3).

f. ULTRA NT RADIANT BARRIER and NT RADIANT BARRIER

Covertech filed an application with the Canadian Intellectual Property Office on July 6, 2009, to register the trademark "ULTRA NT RADIANT BARRIER." The Canadian Intellectual Property Office...