OTR Wheel Engineering, Inc.; Blackstone/OTR, LLC; F.B.T. Enterprises, Inc., Plaintiffs-Appellees/ Cross-Appellants,
West Worldwide Services, Inc.; Samuel J. West, individually, and his marital community; SSL China, LLC; Qingdao STW Tire Co. Ltd.; SSL Holdings, Inc., Defendants-Appellants/ Cross-Appellees.
and Submitted March 7, 2018 Seattle, Washington
from the United States District Court for the Eastern
District No. 2:14-cv-00085-LRS of Washington Lonny R. Suko,
District Judge, Presiding
Christine Marie Lebrón-Dykeman (argued), R. Scott
Johnson, and Jonathan L. Kennedy, McKee Voorhees & Sease
P.L.C., Des Moines, Iowa; John J. White Jr. and Kevin B.
Hansen, Livengood Alskog PLLC, Kirkland, Washington; for
David Bertocchi (argued), Kimberly A. Jansen, and Jeffrey S.
Dixon, Hinshaw & Culbertson LLP, Chicago, Illinois;
Robert J. Carlson, Lee & Hayes PLLC, Seattle, Washington;
Before: Johnnie B. Rawlinson, Richard R. Clifton, and Morgan
Christen, Circuit Judges.
panel affirmed the district court's judgment after a jury
trial, holding defendants liable for reverse passing off
under the Lanham Act.
parties were competitors in the business of selling
industrial tires. Defendant West asked a supplier of
plaintiff OTR to provide him with sample tires from OTR's
molds, and he asked the supplier to remove OTR's
identifying information from the tires so that he could use
the tires to obtain business from one of OTR's customers.
panel held that West could be found liable for reverse
passing off because he did not simply copy OTR's
intellectual property, but rather passed off genuine OTR
products as his own.
panel affirmed the district court's conclusion that West
did not establish that OTR committed fraud on the United
States Patent and Trademark Office. The panel confirmed that
fraud on the PTO must be established by clear and convincing
panel affirmed the district court's order denying a new
trial on the issue of trade dress validity.
panel affirmed the district court's rejection of a
proposed jury instruction asserting a claim for infringement
of an unregistered trade dress. The panel explained that a
registered claim converts to an unregistered claim if the
registration is invalidated; thus, a plaintiff does not need
to separately plead the identical unregistered claim. But
where the unregistered claim would cover something more than
the registered claim, a plaintiff must put a defendant on
notice of such through the pleadings.
panel addressed additional issues in a concurrently filed
CLIFTON, Circuit Judge.
Wheel and Samuel West are competitors in the business of
selling industrial tires. West asked one of OTR's suppliers
to provide him with sample tires from OTR's molds, and he
asked the supplier to remove OTR's identifying
information from the tires. West wanted to use the tires to
obtain business from one of OTR's customers. OTR sued
West, asserting various claims under the Lanham Act and state
primary issue before us is whether West can be found liable
for reverse passing off under the Lanham Act. Pursuant to the
Supreme Court's opinion in Dastar Corp. v. Twentieth
Century Fox Film Corp., 539 U.S. 23 (2003), a claim for
reverse passing off cannot be brought to prevent the copying
of intellectual property. We conclude that West did not
simply copy OTR's intellectual property but passed off
genuine OTR products as his own, so we affirm the judgment
holding him liable for reverse passing off.
opinion, we also address other issues raised regarding the
Lanham Act. In particular, we affirm the district court's
conclusion that West did not establish that OTR had committed
fraud on the United States Patent and Trademark Office (PTO).
In doing so, we confirm that fraud on the PTO must be
established by clear and convincing evidence. We also affirm
the district court's order denying a new trial on the
issue of trade dress validity, giving us cause to explain how
a finding of fraud on the PTO affects a plaintiff's
burdens in establishing a trademark claim. Finally, we affirm
the district court's rejection of a proposed jury
instruction asserting a claim for infringement of an
unregistered trade dress. We explain that a registered claim
converts to an unregistered claim if the registration is
invalidated. Thus, a plaintiff does not need to separately
plead the identical unregistered claim. But where the
unregistered claim would cover something more than the
registered claim, a plaintiff must put a defendant on notice
of such through the pleadings.
other issues raised by the parties-those that do not touch on
the Lanham Act-do not warrant discussion in a precedential
opinion. We address those remaining issues in a concurrently
filed memorandum disposition.
Lanham Act prohibits conduct that would confuse consumers as
to the origin, sponsorship, or approval of goods or services.
See Slep-Tone Entm't Corp. v. Wired for Sound Karaoke
& DJ Servs., LLC, 845 F.3d 1246, 1249 (9th Cir.
2017); see also TrafFix Devices, Inc. v. Mktg. Displays,
Inc., 532 U.S. 23, 28 (2001). To prevent consumer
confusion, the Act allows the producers of goods and services
to enforce trademark rights. 15 U.S.C. §§ 1114,
1125(a); see also Wal-Mart Stores, Inc. v. Samara
Bros., 529 U.S. 205, 209-10 (2000). A trademark is
"any word, name, symbol, or device . . . [used or
intended to be used] to identify and distinguish [goods] from
those manufactured or sold by others and to indicate the
source of the goods." 15 U.S.C. § 1127. In
addition, the Lanham Act protects more than words and
symbols. It also protects a product's "trade
dress," which includes the packaging, dressing, and
design of a product. TrafFix Devices, 532 U.S. at
28; Wal-Mart, 529 U.S. at 209.
sells tires for industrial use. One of OTR's products is
a tire called the "Outrigger." OTR obtained a
registered trademark on the Outrigger name and a registered
trade dress on the Outrigger tire tread design. OTR partnered
with a company called Solideal to make size "355"
Outrigger branded tires for the Chinese market. The 355-size
tires are commonly used for aerial work platforms, which are
mobile platforms sometimes referred to as "cherry
pickers." In order to produce the 355-size tires in
China, Solideal contracted with a plant operated by a Chinese
company called Superhawk.
in the same business as OTR, and he wanted to sell tires to
one of OTR's customers, Genie. In December of 2011, West
began discussions with Superhawk, the Chinese manufacturer,
about making a 355-size tire for West to sell to Genie. In
the spring of 2012, West asked Superhawk for 16 of the
355-size tires for testing by the potential customer.
Superhawk advised West that it would take 50 days to make a
mold for West's tires. West responded, in writing,
"I really need it much sooner. . . . Don't you make
this size for Solideal [OTR's partner]? . . . Could you
buff off the Solideal name on the sidewall or just remove the
plate and let me get the tire tested?"
initially refused, saying that it would be
"dangerous" to use Solideal's mold because
Superhawk had an agreement with Solideal. West responded by
asking, "Will your mold be the same as the [S]olideal
mold? If we take out the nameplate and all the sidewall
information, nobody will know." West then asked
Superhawk to make 50 tires for Solideal even though no
Solideal order had been placed. Superhawk stated that it
would make the 355-type tires "shortly."
of 2012, Superhawk confirmed to West that Superhawk's
355-size tires were OTR Outrigger tires made for Solideal. In
the summer of 2013, Genie stopped buying the 355-size tires
from OTR and began buying them from West.
brought Lanham Act claims against West for trade dress
infringement, trade dress counterfeiting, and reverse passing
off. OTR also asserted state law claims under the Washington
Consumer Protection Act (WCPA), for trade secret
misappropriation, and for tortious interference with various
contracts and business relationships.
case went to trial, with mixed results. The jury found West
liable for reverse passing off in violation of the Lanham
Act. The jury also found West liable for violating the WCPA
and for tortiously interfering with a contract between
Solideal and Superhawk, as well as with business
relationships involving OTR, Genie, Solideal, and Superhawk.
West was not found liable for trade dress infringement, trade
dress counterfeiting, trade secret misappropriation, or
tortious interference with a contract between OTR and Genie.
jury also found that OTR's claim for protected trade
dress on its tire tread was invalid and that the trade dress
registration had been obtained through fraud on the PTO. On a
post-trial motion, the district court set aside the
jury's determination that OTR had obtained its trade
dress registration through fraud. The court otherwise entered
judgment based on the jury's findings, including the
finding that the protected trade dress claim was invalid. The
court directed the PTO to cancel OTR's trade dress
claims on which OTR prevailed, the jury determined that OTR
should be awarded actual damages in the amount of $967, 015.
In addition to those damages, the judgment entered by the
district court awarded prejudgment interest to OTR under
state law and post-judgment interest at the rate authorized
by 28 U.S.C. § 1961(a). The court maintained a
preliminary injunction against West pending the outcome of
separately filed memorandum disposition, we reverse the
district court on the issue of prejudgment interest, vacate
the preliminary injunction, and affirm as to all the