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

406 F.3d 577 (2005)

From our private database of 45,900+ case briefs, written and edited by humans—never with AI.

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

United States Court of Appeals for the Ninth Circuit
406 F.3d 577 (2005)

Facts

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.

Rule of Law

Issue

Holding and Reasoning (McKeown, J.)

What to do next…

  1. Unlock this case brief with a free (no-commitment) trial membership of Quimbee.

    You’ll be in good company: Quimbee is one of the most widely used and trusted sites for law students, serving more than 734,000 law students since 2011. Some law schools—such as Yale, Berkeley, and Northwestern—even subscribe directly to Quimbee for all their law students.

    Unlock this case briefRead our student testimonials
  2. Learn more about Quimbee’s unique (and proven) approach to achieving great grades at law school.

    Quimbee is a company hell-bent on one thing: helping you get an “A” in every course you take in law school, so you can graduate at the top of your class and get a high-paying law job. We’re not just a study aid for law students; we’re the study aid for law students.

    Learn about our approachRead more about Quimbee

Here's why 734,000 law students have relied on our case briefs:

  • Written by law professors and practitioners, not other law students. 45,900 briefs, keyed to 984 casebooks. Top-notch customer support.
  • The right amount of information, includes the facts, issues, rule of law, holding and reasoning, and any concurrences and dissents.
  • Access in your classes, works on your mobile and tablet. Massive library of related video lessons and high quality multiple-choice questions.
  • Easy to use, uniform format for every case brief. Written in plain English, not in legalese. Our briefs summarize and simplify; they don’t just repeat the court’s language.

Access this case brief for FREE

With a 7-day free trial membership
Here's why 734,000 law students have relied on our case briefs:
  • Reliable - written by law professors and practitioners, not other law students
  • The right length and amount of information - includes the facts, issue, rule of law, holding and reasoning, and any concurrences and dissents
  • Access in your class - works on your mobile and tablet
  • 45,900 briefs - keyed to 984 casebooks
  • Uniform format for every case brief
  • Written in plain English - not in legalese and not just repeating the court's language
  • Massive library of related video lessons - and practice questions
  • Top-notch customer support

Access this case brief for FREE

With a 7-day free trial membership