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D-D Aquarium Solution Limited v. Giesemann Lichttechnik Und Aquaristik Gmbh

United States District Court, E.D. Virginia, Alexandria Division

April 1, 2015



LEONIE M. BRINKEMA, District Judge.

Before the Court are the parties' motions for partial reconsideration [Dkt. Nos. 115 and 120]. For the reasons that follow, plaintiff's motion will be denied and defendants' motion will be granted in part.


For nearly ten years, plaintiff D-D The Aquarium Solution Limited ("D-D") and defendant Giesemann Lichttechnik und Aquaristik GmbH ("Giesemann") successfully worked together to distribute fluorescent tubes for use in aquariums, bearing the POWERCHROME mark along with Giesemann's own GIESEMANN mark and D-D's own "bubble logo" mark.[1] In May 2014, Giesemann terminated that arrangement and announced plans to distribute a new line of tubes using co-defendant Vue Technology, LLC d/b/a CoralVue ("CoralVue") as its North American distributor. Giesemann also at that time first disclosed to D-D that its CEO, defendant Axel Finken ("Finken"), had registered the POWERCHROME mark in his own name with the United States Patent and Trademark Office ("USPTO").

In its six-count complaint, D-D alleges various violations of the Lanham Act and seeks cancellation of Finken's registration of POWERCHROME and money damages. In count 1, D-D claims that defendants engaged in false advertising and false designation of origin based on advertisements posted to Giesemann's website after the arrangement was cancelled. Count 2 alleges that Giesemann infringed D-D's common law trademark, and Count 3 alleges that Finken's registration of the POWERCHROME mark should be cancelled and defendants should pay for any damages resulting from the registration. Count 4 charges both defendants with interfering with D-D and Giesemann's arrangement and with D-D's relationship with its customers, and Counts 5 and 6 charge both defendants with forming a civil conspiracy to harm D-D. In response, defendants filed a six-count counterclaim seeking in Count 1 a declaratory judgment of non-liability, and alleging that D-D engaged in infringement of the POWERCHROME and GIESEMANN marks, (count 2); false designation of origin (count 3); dilution of the POWERCHROME and GIESEMANN marks (count 4); common law trademark infringement (count 5); and common law unfair competition (count 6). D-D's one-count counter-counterclaim seeks cancellation of the GIESEMANN mark.

On March 26, 2015 the Court granted in part the parties' motions for partial summary judgment, dismissing Counts 2, 4, 5, and 6 of D-D's complaint and D-D's counter-counterclaim and dismissing all of defendants' counterclaims except for those dealing with the POWERCHROME mark. March 26, 2015 Order [Dkt. No. 113]. As a result of that ruling all claims against CoralVue were dismissed and that defendant was dismissed from this action. Id . On March 27, 2015 both parties moved for reconsideration of various aspects of the order.


Defendants argue that: (1) their counterclaims should not have been dismissed as to the GIESEMANN mark because D-D did not move for summary judgment regarding the GIESEMANN mark; (2) count 3 of the complaint is barred by the statute of limitations; (3) plaintiffs did not provide sufficient evidence of damages resulting from the false advertising alleged in count 1; (4) there was insufficient evidence that the claims made in the defendants' advertising were in fact false; and (5) D-D's admission that it does not own the POWERCHROME mark bars its false designation claim. Memorandum in Support of Motion for Partial Reconsideration of the Court's March 26 Summary Judgment Order [Dkt. No. 116] ("Defendants' Br") at 1-2. D-D has filed an Opposition to Motion for Reconsideration [Dkt. No. 118] ("Plaintiff's Opp'n"), and defendants have filed a Reply in Support of Motion for Partial Reconsideration [Dkt. No. 124] ("Defendants' Reply"). For its part, D-D asks the Court to reinstate CoralVue as a defendant because D-D alleged and there is evidence that CoralVue made actionable false statements as described in Count 1. Memorandum in Support of Plaintiff/ Counterclaim-Defendant's Motion for Clarification [Dkt. No. 121] ("Plaintiff's Br.") at 1-2. Defendants oppose D-D's request. Defendants' Opposition to Plaintiff's Motion for Clarification [Dkt. No. 123] ("Defendants' Opp'n").

A. Standard of Review

Under Fed.R.Civ.P. 59(e), a party may seek to alter or amend a judgment and will prevail if it can establish "either (1) an intervening change in the controlling law, (2) new evidence that was not available at trial, or (3) that there has been a clear error of law or a manifest injustice." Robinson v. Wix Filtration Corp. LLC, 599 F.3d 403, 407 (4th Cir. 2010). Reconsideration "is an extraordinary remedy that should be applied sparingly." Mayfield v. Nat'l Ass'n for Stock Car Auto Racing, Inc., 674 F.3d 369, 378 (4th Cir. 2012). "[M]ere disagreement does not support a Rule 59(e) motion." United States ex rel. Becker v. Westinghouse Savannah River Co., 305 F.3d 284, 290 (4th Cir. 2002) (quoting Hutchinson v. Staton, 994 F.2d 1076, 1082 (4th Cir. 1993)). "The fact that [a party] does not agree with the court's conclusion is not grounds to alter judgment under Rule 59(e)." Saylor v. Astrue, No. 5:11cv35, 2013 WL 2252913, at *2 (W.D. Va. May 22, 2013).

Neither motion for reconsideration argues that there has been an intervening change in the controlling law or that there is new evidence which was previously unavailable. Accordingly, the motions to reconsider will be granted only if there has been a clear error of law or a manifest injustice. Robinson, 599 F.3d at 407.

B. Statute of Limitations on Damages Sought in Complaint Count 3

Defendants argue that D-D is barred from seeking any damages for the alleged fraudulent registration of the POWERCHROME mark because D-D filed its suit beyond the statute of limitations period. Defendants' Br. at 4. Specifically, defendants argue that because the Lanham Act does not provide a limitations period for damages resulting from a fraudulent registration of a mark, the statute of limitations must be taken from Virginia's two-year limitations period for fraud. Id . Finken registered the mark in May of 2011 and that registration provides constructive notice that a registrant claims to own the mark. 15 U.S.C. ยง 1072. Given that registration date, defendants argue that the cause of action accrued in May 2011 and therefore D-D's July 2014 filing was untimely. Id . D-D responds that the Lanham Act sets forth a five-year period in which a party can seek cancellation of a trademark registration, and the Virginia limitations period cannot trump federal law. Plaintiff's Opp'n at 2-3.

Plaintiff's position is wrong. The limitations period for a damages claim resulting from an allegedly fraudulent trademark registration must be taken from state law. East West, LLC v. Rahman, 896 F.Supp.2d 488, 504-05 (E.D. Va. 2012). See also Island Insteel Sys., Inc. v. Waters, 296 F.3d 200, 206 (3d Cir. 2002) ("Because the Lanham Act does not contain an express statute of limitations, we follow the traditional practice of borrowing the most analogous statute of limitations from state law."). Courts in this district have applied Virginia's two year statute of limitations for fraud to claims for damages under the Lanham Act. See, e.g., East West, 896 F.Supp.2d at 504 (listing cases), and courts have found that the limitations period to seek damages from a claim stemming from a fraudulent registration begins on the date of registration. See, e.g., Med. Prods. Labs., Inc. v. Premier Dental Prods. Co., No. 12-6051, 2013 WL 395493, at *3 (E.D. Pa. Feb. 1, 2013); Kelly v. Estate of Arnone, No. 08-6046, 2009 WL 2392108, at *7 (D.N.J. Aug. 3, 2009); Lurzer GMBH v. Am. Showcase, Inc., 73 F.Supp.2d 327, 330 n.4 (S.D.N.Y. 1998). Accordingly, the limitations period for D-D to seek damages from defendants' allegedly fraudulent ...

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