United States District Court, N.D. Indiana, South Bend Division
OPINION AND ORDER
L. Miller, Jr. Judge.
Barrington Music Products, Inc. (“Barrington”)
sues defendants Eastman Music Company, Guitar Center Stores,
Inc., Music & Arts Centers, and Woodwind and Brasswind
Inc., for state and federal trademark infringement. The
defendants moved for summary judgment asserting a laches
defense. The court denies the defendants' motion.
Center Stores, Inc. markets and sells musical instruments
both at retail stores throughout the country and through a
variety of online platforms. It owns and operates 150 Music
& Arts brand retail stores throughout the country as well
as more than 260 Guitar Center stores throughout the country.
Barrington doesn't operate any retail locations and
principally sells musical instruments through third-parties
such as Amazon and Ebay.
2010, Guitar Center was working on developing a new name for
a brand of musical instruments to be produced by Eastman
Music Company. Eastman is a well-known manufacturer of
woodwind and brass musical instruments, including flutes that
it sells under its Wm. S. Haynes brand name and saxophones
sold under the Andreas Eastman brand name. Eastman
instruments are played by many famous and well-known
performers, such as Earth Wind & Fire and Bob Mintzer.
After vetting several name possibilities with its trademark
counsel, Guitar Center eventually settled on the name
“Ventus” for its new line of musical instruments.
Because Eastman, as the manufacturer, provided the necessary
credibility for the new line of instruments, the instruments
were marketed and sold as “Ventus by Eastman” and
“Ventus by Wm. S. Haynes”. Prominent engraving on
the instruments reinforced this co-branding, as did
conspicuous branding on the carrying cases.
Center filed for trademark protection for
“Ventus” on May 20, 2010 under the goods and
services designation of “Musical Instruments.”
Its application was published for opposition on October 26,
2010. No opposition was filed and it was registered on the
principal register on August 2, 2011. Barrington owns the
trademark of “Vento, ” which is registered with
the goods and services denomination of musical instruments.
Barrington filed for registration of “Vento” on
January 6, 2010. Barrington's application was published
for opposition on May 25, 2010, five days after Guitar Center
had filed the “Ventus” mark. Barrington's
“Vento” was registered on the principal register
on August 10, 2010. Barrington's mark has been used in
commerce since May of 2009, achieving gross sales of a little
less than $700, 000.
March 2011, Guitar Center began using “Ventus”
(in conjunction with “by Eastman” and “by
Wm. S. Haynes”) in commerce. It marketed and sold
flutes, trumpets, alto saxophones, tenor saxophones, and
clarinets under the “Ventus by Eastman” name.
From 2011 until the end of 2015, Guitar Center built the
“Ventus” by Eastman/Wm. S. Haynes brand and
achieved gross sales totaling about $5 million.
parties dispute when Barrington was put on notice of the
“Ventus” line. Between 2011 and 2014, Guitar
Center sold its “Ventus” products exclusively in
Music & Arts retail stores-stores that were not located
in Indiana or Michigan. The combined sales for 2011-2013
totaled less than $800, 000. In 2014, Guitar Center
dramatically expanded its “Ventus” sales, raising
the annual sales to $1.4 million. In 2015, Guitar Center
began selling “Ventus” instruments online through
its websites. Barrington contends that, while web sales have
remained a small part of Guitar Center's total sales, the
sudden shift to the online marketplace in 2015 placed the
“Ventus” mark squarely in competition with
Barrington's mark for the first time. Guitar Center
argues that, had Barrington notified it at or near the time
it registered the “Ventus” mark, Guitar Center
would have simply avoided a dispute and chosen another name.
also says that it regularly reviewed internet and print
catalogues and other music industry publications for the
purposes of market research and policing its
“Vento” marks from May 2009 until now. Barrington
asserts that it first discovered that Guitar Center was
advertising and selling musical instruments using the
“Ventus” in November 2014. In February 2015,
Barrington's counsel sent a letter to Guitar Music
demanding that it cease and desist its use of the
“Ventus” mark. Barrington engaged in negotiations
with Guitar Music, attempting to settle its trademark
infringement claims. When those negotiations broke down,
Barrington filed this lawsuit.
arguments relate to all the defendants, so in the interest of
simplification, the court refers to all defendants as
“Guitar Center” in the rest of this opinion.
Standard of Review
judgment is appropriate when “the pleadings,
depositions, answers to the interrogatories, and admissions
on file, together with the affidavits, if any, show that
there is no genuine issue of material fact and that the
moving party is entitled to judgment as a matter of
law.” Fed.R.Civ.P. 56(c). A genuine issue of material
fact exists whenever “there is sufficient evidence
favoring the nonmoving party for a jury to return a verdict
for that party.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 249 (1986). In deciding whether a
genuine issue of material fact exists, “the evidence of
the non-movant is to be believed, and all justifiable
inferences are to be drawn in his favor.” Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986);
Weigle v. SPX Corp., 729 F.3d 724, 730 (7th Cir.
2013). The existence of an alleged factual dispute, by
itself, won't defeat a summary judgment motion;
“instead, the nonmovant must present definite,
competent evidence in rebuttal, ” Parent v. Home
Depot U.S.A., Inc., 694 F.3d 919, 922 (7th Cir. 2012),
and “must affirmatively demonstrate, by specific
factual allegations, that there is a genuine issue of
material fact that requires trial.” Hemsworth v.
Quotesmith.com, Inc., 476 F.3d 487, 490 (7th Cir. 2007);
see also Fed. R. Civ. P. 56(e)(2). “[S]ummary
judgment is ‘not a dress rehearsal or practice run; it
is the put up or shut up moment in a lawsuit, when a party
must show what evidence it has that would convince a trier of
fact to accept its version of events.” Steen v.
Myers, 486 F.3d 1017, 1022 (7th Cir. 2007)
(quoting Hammel v. Eau Galle Cheese
Factory, 407 F.3d 852, 859 (7th Cir. 2005)).
Center contends that the doctrine of laches bars
Barrington's claims, while Barrington contends that if
the presumption of laches applies, the doctrine of
progressive encroachment forgives the delay. Guitar Center
also contends ...