American Circuit Breaker Corp. v. Oregon Breakers, Inc.

In 1950, Federal Pacific Electric Company (FPE) began using the trademark Stab-Lok in the United States for circuit breakers. Federal Pioneer Limited (Pioneer) was an FPE subsidiary until 1988, when Pioneer was sold to Schneider Canada, a Canadian entity. In 1952, a US company that merged into FPE registered the same Stab-Lok mark in Canada. The Canadian registration was assigned to Pioneer in 1986, and then in 1999, Pioneer assigned the Canadian registration to its parent company Schneider Canada. Meanwhile, FPE’s Stab-Lok trademark remained in continuous use in the United States for circuit breakers through a chain of successors, most recently American Circuit Breaker Corporation (ACBC) (plaintiff). ACBC owned an incontestable United States trademark registration for its Stab-Lok trademark. Pursuant to an agreement that Pioneer reached with ACBC (the Pioneer-ACBC agreement), Pioneer manufactured circuit breakers in gray casings for itself to sell in Canada and, since 1993, circuit breakers in black casings for ACBC to sell in the United States. Before 1993, ACBC manufactured the black circuit breakers on its own. The gray and black circuit breakers were identical in construction other than the casing colors, and both bore the Stab-Lok trademark. The Pioneer-ACBC agreement forbade Pioneer from selling its gray circuit breakers in the United States. Oregon Breakers, Inc. (defendant) purchased the gray Stab-Lok circuit breakers through a Canadian third-party supplier and, without ACBC’s permission, imported them into the United States for resale. ACBC sued Oregon Breakers, asserting trademark infringement and related claims. ACBC moved for partial summary judgment on these claims. The district court denied ACBC’s motion, finding that genuine issues of fact remained concerning whether the gray circuit breakers were genuine and whether quality-control procedures resulted in differences between the breakers. Following that denial, the parties entered into a stipulation that: (1) there were no material differences between ACBC’s black Stab-Lok circuit breakers and the gray Stab-Lok circuit breakers sold by Oregon Breakers, and (2) the gray Stab-Lok circuit breakers were genuine products. The district court then entered a final judgment that incorporated the stipulation and dismissed all of ACBC’s claims. ACBC appealed the dismissal of its trademark-related claims.