KANSAS CITY — U.S. District Judge Beth Phillips ruled in favor O'Reilly Automotive Stores in its trademark action against Bearing Technologies over the use of the word "Precision."
According to the Sept. 10 ruling, issued in the U.S. District Court for the Western District of Missouri - Southern Division, O'Reilly acquired the trademark use of the word in connection with universal joints, or u-joints, from the company, Federal-Mogul, in 2010 for use in wheel hub assemblies.
However, in March 2010, Federal-Mogul applied with the Patent and Trademark Office for registration of the word marks "Precision" and "Precision Hub Assemblies". Seven months later, Bearing Technologies filed its own application to register a mark using the word "Precision", but the patent office advised Bearing that Federal-Mogul's application had priority.
Federal-Mogul acquired the trademark and then transferred ownership to O'Reilly in May 2011, the ruling states.
In December 2015, Bearing sought to have the trademark canceled with the Trademark Trial and Appeal Board, which initiated a review process. O'Reilly filed another application to register its mark.
O'Reilly sued in March 2016, then asked the appeals board to stay its proceedings until the litigation concluded.
O'Reilly sought summary judgment on four grounds: 1) that there was no evidence that it knew its Senior Legal Counsel Eugene Han made false statements to the patent office; 2) that there was no evidence that Han acted with the intent to defraud the PTO; 3) that the record establishes that the patent office did not rely on the false statement, and 4) that there was no evidence that Bearing was injured.
Phillips ruled that Bearing was not "injured" by allegedly fraudulent flings "because it did not cause Defendant to defend this lawsuit or support any issue initially raised by Plaintiff within this lawsuit," she wrote.
"And, if Plaintiff had asserted that its registrations were incontestable, Defendant could have utilized the remedy provided by Congress. Therefore, Defendant was not “damaged...”