March 2013 Issue
Civil Cases
Wilden Pump & Eng’g LLC v. JDA Global LLC,
105 U.S.P.Q.2d 1166 (C.D. Cal. Oct. 29, 2012)
CASE SUMMARY
FACTS
Wilden Pump and Engineering LLC (“Wilden”) is a manufacturer of industrial and commercial pumps that use codes for purposes of identifying replacement pump parts. Wilden’s codes are formulated to communicate information about the part using the scheme XX-YYYY-ZZ, where XX identifies the size of the pump, YYYY identifies the part itself, and ZZ identifies the material from which the part was made. For many years, Wilden’s competitors have used Wilden’s part codes in connection with the sale of replacement parts for Wilden pumps, adding a prefix to the beginning of the code to identify their company followed by the complete Wilden code for the part that it was intended to replace (e.g., PP01-1080-52). Wilden’s own subsidiary aftermarket part company, Spectrum, even followed this naming convention when selling replacement parts for pumps made by its competitors, by placing an “S” before a competitor’s part numbers.
After years of allowing competitors to use its part codes, Wilden brought suit against JDA Global LLC (“JDA”), a start-up company founded by several former Wilden employees, seeking to stop JDA from using the Wilden part codes in connection with competing goods. Wilden asserted claims for trademark, trade-dress, and copyright infringement based on its part codes, as well as false advertising and unfair competition. Wilden argued that its numbering scheme was entitled to trademark protection, given “the long and exclusive use of those designations by Wilden—and others—to represent Wilden products.”
ANALYSIS
JDA moved for partial summary judgment, arguing that the XX-YYYY-ZZ part codes are purely functional and do not serve as source identifiers. Because Wilden’s alleged marks were unregistered, it had the burden of proving that the matter sought to be protected was not functional. The court agreed with JDA’s position, finding that “it is the prefix before the numbers which designates the source, while the numbers themselves merely represent the product with which a particular part is compatible.” The court thus held that Wilden’s part numbers describe the technical specifications of the products themselves, not the origin or source of the products.
Finding that Wilden’s part numbers fail to serve any source-identifying function in the minds of consumers, the court held that there can be no likelihood of confusion and dismissed Wilden’s copyright and trademark claims based on the alphanumeric codes.
CONCLUSION
While the court did not establish a per se rule regarding the functionality of part codes, it found in this case that such numbers described a feature of the products, not the source of goods. However, the decision did not articulate what impact, if any, Wilden’s long-standing nonobjection to competitors’ uses of its part codes also had on the analysis.
