Sun Microsystems v. Astro-Med, 39 U.S.P.Q.2d (BNA) 1144 (N.D. Cal. 1996)

Ware, J.

Plaintiff's motion for entry of a preliminary injunction in the above- entitled action was heard by the Court on March 25, 1996. Kathryn J. Fritz of Fenwick & West appeared on behalf of Plaintiff and attorneys Carla B. Oakley and William R. Grimm appeared on behalf of Defendant. Based upon all pleadings filed to date, as well as on the oral argument of counsel, the Court GRANTS Plaintiff's motion, as discussed below.


Plaintiff Sun Microsystems, Inc. ("Plaintiff") filed a complaint against Defendant Astro-Med, Inc. ("Defendant") alleging trademark and trade name infringement and dilution, unfair competition and false and misleading statements regarding Defendant's use of the mark "SUNDANCE" on Defendant's new thermal transfer label printer. Plaintiff contends that it first became aware of Defendant's use of the SUNDANCE mark in December of 1994, when it learned that Defendant had filed an application for trademark registration of the SUNDANCE mark with the U.S. Patent & Trademark Office "(PTO") in September of 1994. Defendant's application was based on an "intent to use" and not on actual use of the mark.

Plaintiff immediately wrote to Defendant and asked about Defendant's intent to use the mark and also notified Defendant that the use of such a mark was likely to cause confusion with the SUN prefixed names and marks. When Plaintiff did not receive a response from Defendant, it again wrote to Defendant in January of 1995 and expressed the same concerns. Defendant responded that it did not agree that confusion was likely.

Over the next few months, the parties exchanged communications regarding Defendant's use of the mark. In June of 1995, Plaintiff filed an opposition to Defendant's intent to use application with the PTO. In July of 1995, Plaintiff learned that Defendant had begun commercial shipments of the SUNDANCE printer in late June. After attempting to settle the matter, Plaintiff filed this action on September 8, 1995.

Plaintiff manufactures and distributes a large array of computer hardware, software and other computer-related products and services. All of Plaintiff's products and services bears one or more of the "SUN Marks". Plaintiff owns and uses 12 SUN-prefixed trademarks, 4 of which have been granted incontestable status. These trademarks are: SUN, SUNSOFT, SUN SITE, SUNEXPRESS, SUN WORKSTATION, SUN MICROSYSTEMS, SUN (Stylized), SUN (and logo), SUNLINK, SUNPICS, SUNSTART and SUNSPECTRUM. Plaintiff has also adopted and uses other SUN-prefixed names and marks for their product and service lines, including SUNSERVICE, SUN MICROSYSTEMS COMPUTER COMPANY, SUN MICROELECTRONICS, SUNDIALS, SUNERGY, SUN SHIELD, SUNBUTTONS, SUNNET MANAGER, SUN NETRA, SUNOS, SUN ULTRA and SUNPHIGS.

Plaintiff was recently granted a preliminary injunction in another trademark infringement action in this Court, Sun Microsystems, Inc. v. SunRiver Corp, 36 U.S.P.Q.2d 1266, 1269 (N.D. Cal. 1995). In that case, Judge Aguilar found that " [g]iven their distinctiveness and notoriety, the SUN marks are strong marks worthy of a high degree of protection."

In September of 1994, at a New York City press conference, Defendant unveiled its SUNDANCE thermal transfer label printer. The SUNDANCE is a one-pass, four-color thermal transfer label printer which can print variable quantities on a wide range of media. It is sold to customers in industries such as apparel, pharmaceuticals, automotive, electronics and others that require instant label printing. The line of printers is promoted by Defendant under a Western theme. The company introduced 3 printers: SUNDANCE, TOP HAND 2 and RANGE BOSS. The theme is enhanced by the use of a design trademark consisting of a cowboy image blended with a bar code on each printer.

Defendant contends that it is not a competitor of Plaintiff's and that, accordingly, there can be no customer confusion by its use of the name SUNDANCE. Defendant asserts that not only is it not in the computer business, but that the SUNDANCE printer is not a computer peripheral. In addition, Defendant argues that Plaintiff does not make or sell a thermal transfer label printer or any similar product and that none of Plaintiff's products are sold under the name "SUNDANCE". Defendant also contends that Plaintiff delayed in both filing this action and in seeking injunctive relief and should not, therefore, be granted such preliminary relief.


In the Ninth Circuit, in order to obtain a preliminary injunction, the moving party must show a combination of probable success on the merits and the possibility of irreparable injury or that serious questions are raised and the balance of hardships tips sharply in its favor. Atari Games Corp. v. Nintendo of America, Inc., 897 F.2d 1572, 1575 [ 14 USPQ2d 1034 ] (Fed. Cir. 1990); Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 612 [ 12 USPQ2d 1740 ] (9th Cir. 1989).

The Lanham Act defines "trademark" as any combination of words or symbols used in commerce to identify and distinguish one's goods from those manufactured or sold by others and to indicate the source of the goods. 15 U.S.C. Section 1127. Marks registered on the Principal Register in the Patent and Trademark Office constitute "prima facie evidence" of the validity of the registered mark and of the registrant's exclusive right to use the mark on the goods and services specified in the registration. 15 U.S.C. Section 1115(a).

The scope of judicial protection against infringement depends upon the mark's distinctiveness. Certain marks are deemed inherently distinctive, and afforded the greatest protection, because their intrinsic nature serves to identify a particular source of a product. [citations omitted]. Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1390 [ 28 USPQ2d 1641 ] (9th Cir. 1993). Fanciful, arbitrary and suggestive marks are considered "inherently distinctive". Id. In contrast to fanciful, arbitrary, and suggestive marks, a descriptive mark is not inherently distinctive. Id. The generic name of a product -- what it is -- can never serve as a trademark. Id.

To succeed on the merits of its claim for trademark/trade name infringement claims, Plaintiff must show that (1) it has a valid, protectable trademarks or trade name, and (2) a likelihood of confusion between its product and that of the Defendants. Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1391 [ 28 USPQ2d 1641 ] (9th Cir. 1993). The district court applies an eight factor test to determine the likelihood of confusion. Id. The eight factor test applies when the products are related but are not in direct competition. Id. The 8 factor test is set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 [ 204 USPQ 808 ] (9th Cir. 1979) and is as follows: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the sight, sound and meaning of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and, (8) likelihood of expansion of product lines. The Court is not required to consider each factor in order to conclude that a preliminary injunction is appropriate. Apple Computer, Inc. v. Formula Int'l, Inc., 725 F.2d 521, 526 [ 221 USPQ 762 ] (9th Cir. 1984).


Defendant does not contest the validity or ownership of Plaintiff's marks. Rather, Defendant argues that, applying the 8 factors noted above, Plaintiff cannot establish a likelihood of success on its infringement claim. Defendant also asserts that Plaintiff will not prevail on its additional claims and that its delay in seeking injunctive relief proves that there is no irreparable harm. Finally, Defendant contends that it will be severely prejudiced if it is not permitted to continue its marketing and sales efforts regarding the SUNDANCE printer.

As noted above, Plaintiff must show that it has valid, protectable trademarks or trade names. Plaintiff has established that it has valid and protectable trademarks and trade names regarding various SUN prefixes. Plaintiff does not contend that it has a protectable trademark which covers the specific name of "SUNDANCE". Rather, Plaintiff contends that such name would be included in the "family of SUN marks" which have been afforded protection. Therefore, if Plaintiff can demonstrate that it has established a "family of marks", then Plaintiff may obtain trademark protection against one whose mark emanates from the same source as the Plaintiff's family. McDonald's Corp. v. McBagel's,Inc., 649 F. Supp. 1268, 1272 [ 1 USPQ2d 1761 ] (S.D.N.Y. 1986). As the McDonald's court noted, the existence of a family of marks is a question of fact based on the distinctiveness of the common formative component and other factors, including the extent of the family's use, advertising, promotion, and its inclusion in a number of registered an unregistered marks owned by a single party. Id. Here, as described above, Plaintiff has used the "SUN" trademark in connection with every aspect of its business since its founding in 1982. Plaintiff's trade names, SUN and SUN MICROSYSTEMS have been used in connection with the sale of all of Plaintiff's computer goods and services. Plaintiff owns and constantly uses 12 federally registered SUN-prefixed trademarks, 4 of which have been granted incontestable status. Every single piece of computer hardware Plaintiff ships bears the SUN house mark.

Based upon the foregoing, it is clear to the court that it is likely that Plaintiff will prevail at the trial of this action in establishing that it owns a family of marks, both registered and unregistered, whose common characteristic is the use of "SUN" as a formative. As such, the Court finds that it is further likely that Plaintiff will establish at trial the strength of its marks and the similarity of the "SUNDANCE" mark to Plaintiff's other SUN-prefixed marks.

With respect to the factors of proximity of the marks and convergence of marketing channels, Plaintiff has presented evidence which shows that, although perhaps not in direct competition with Plaintiff's products, Defendant's SUNDANCE printer is marketed and sold to a number of similar customers. (See Declaration of Kathryn J. Fritz, Exhibit 1, Astro-Med's 1995 Annual Report). The SUNDANCE printer may also be compatible with Plaintiff's computer products. (See Declaration of Anne Gundelfinger, Para. 31). [FN1]

Defendant contends that the SUNDANCE printer is expensive (starting at about $15,000.00 without optional equipment) and that, accordingly, consumers act with great care and decisiveness when purchasing a SUNDANCE printer. The Court agrees with Defendant's analysis as to this factor. However, the Court is also mindful of the fact that Defendant was notified by Plaintiff prior to the time that Defendant engaged in the marketing of the SUNDANCE that the use of such a name would likely cause consumer confusion with Plaintiff's product lines. In addition, Defendant could have conducted a simple tradename/mark search to ascertain the availability of the SUNDANCE name. There has not been evidence submitted to the Court which indicates that Defendant conducted such a search.

Based upon a combination of all of the above factors, the Court finds that Plaintiff has demonstrated a likelihood of success on the merits of its trademark infringement claim. Such a showing raises a presumption of irreparable harm. Sega Enterprises, Inc. v. Maphia, 857 F. Supp. 679, 688 [ 30 USPQ2d 1921 ] (N.D. Cal. 1994). Therefore, the Court GRANTS Plaintiff's motion for entry of a preliminary injunction.


Based upon the foregoing, the Court finds that Plaintiff has established a combination of probable success on the merits and the possibility of irreparable injury such that it is entitled to the entry of a preliminary injunction. Therefore, the Court orders that:

1. Defendant Astro-Med, Inc., and its parents, subsidiaries, divisions, officers, agents, servants, employees and attorneys, and all those in active concert or participation with it are hereby required to develop and implement a plan which, within six (6) months from the date of this Order, will terminate: (a) using in any manner in its business, on or in connection with its products or services, directly or indirectly, the SUNDANCE mark or name, and/or any other SUN-prefixed mark or name on any printer or other computer peripheral devices; (b) using in any manner in advertising, marketing or promotion, on or in connection with its printer or computer peripheral products or services, directly or indirectly, the SUNDANCE mark or name, and/or any other SUN-prefixed mark or name; (c) using the SUNDANCE mark or name, and/or any other SUN-prefixed mark or name, in any manner on any literature, manuals, letterhead, signage, brochures, labels, invoices, tags, purchase orders, business cards, business forms videos, World Wide Web pages and links, Internet domain names, or any other company material regardless of media in connection with printers or other computer peripheral devices.

2. Defendant is to develop the aforementioned plan and submit it to the Court for approval within twenty (20) days of the date of this Order.

3. As a condition of the preliminary injunction, Plaintiff shall post a bond in favor of Defendant in the amount of $500,000.00 as security for damages that may result if Defendant is found to have been wrongfully restrained.

FN1 The Court notes that Defendant has filed a motion to strike portions of the Gundelfinger and Fritz Declarations, as well as to strike portions of the Behm and Walden Declarations. The Court DENIES the motion to strike, although it did not rely on the Behm and/or Walden Declarations in reaching this decision, nor did the Court consider Para. 3 of the Fritz Declaration.