IP Law Daily, TRADEMARK—D. Wash.: During pandemic, infringer wrongfully used 3M’s marks to sell N95 masks, (Jun 13, 2023)

By Elizabeth C. Pope, J.D.

The court rejected the infringer’s claims that 3M’s lawsuit constituted malicious prosecution and abuse of process.

The federal district court in Seattle granted summary judgment to manufacturer 3M Company over its claims of trademark infringement and false advertising against a purported distributor that at the height of the COVID-19 pandemic used 3M’s logo to falsely advertise that it possessed for sale millions of N95 masks. The court also rejected the distributor’s counterclaims of malicious prosecution and abuse of process. Despite never actually purchasing any of the manufacturer’s masks, the distributor represented to multiple potential clients that it could provide millions of 3M respirators (3M Co. v. Aime LLC, June 7, 2023, Coughenour, J.).

At the start of the COVID-19 pandemic in early 2020, the demand for N95 masks such as those manufactured by 3M Company exploded. Purported distributor AIME LLC began operations in February 2020. Over the next several months, despite never actually purchasing 3M’s N95 masks, AIME offered to multiple potential clients 3M masks for resale at a rate above 3M’s list price. In addition, AIME sent written proposals to several potential customers in which it used 3M’s logo without permission.

3M filed suit alleging trademark counterfeiting, infringement, dilution, unfair competition, false endorsement, false delineation of origin, and false advertising under the Lanham Act. In an interim ruling in December 2021, 3M lost its bid to dismiss counterclaims of malicious prosecution and abuse of process filed by AIME, although AIME’s antitrust claims were dismissed. Subsequently 3M moved for summary judgment.

Trademark infringement. The court granted 3M summary judgment on its trademark infringement and use of counterfeit marks claims. It was undisputed that 3M’s logo is a protected trademark. Further, the court determined it was beyond reasonable dispute that AIME used 3M’s name and logo without permission to sell 3M N95 masks that it did not actually possess. Indeed, AIME admitted sending a document containing 3M’s trademark to potential customers.

The court rejected AIME’s attempt to use the “first sale” exception affirmative defense under 17 U.S.C. §109(a), which provides that “the owner of a particular copy…lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.” The exception does not apply “for obvious reasons,” the court explained. 3M does not seek to limit the resale of its goods and AIME never actually owned or sold any of 3M’s goods.

Other 3M claims. The court also granted summary judgment to 3M on its claims of unfair competition, false endorsement, or false designation of origin under 15 USC §1125(a) and false advertising under §1125(a)(1)(B). AIME used 3M’s trademark to advertise goods it never possessed. AIME’s representations of its ability to supply millions of 3M masks at inflated prices, despite having none in stock, constituted false advertising.

AIME’s counterclaims. The court also granted 3M summary judgment with respect to all AIME’s counterclaims, including malicious prosecution and abuse of process. AIME offered only unsupported conclusory statements to claim that 3M filed suit for malicious purposes or that 3M had an ulterior purpose in filing that was not within the proper scope of the process. In addition, AIME failed to provide any evidence of damages resulting from the alleged wrongful conduct.

The Case is No. 2:20-cv-01096-JCC-BAT.

Attorneys: Nancy M. Erfle (Gordon Rees Scully Mansukhani LLP) for 3M Co. R. Gale Porter (Porter Law Group, P.C.) for Aime LLC.

Companies: 3M Co.; Aime LLC

Cases: Trademark WashingtonNews