No infringement where contractor listed manufacturer's product in municipal bid

United States of America

In Suntree Techs Inc v Ecosense Int’l Inc (Case No 11-13916, September 5 2012), analysing the issue of trademark infringement in the context of a municipal bidding process, the US Court of Appeals for the Eleventh Circuit has affirmed a district court’s denial of summary judgment of trademark infringement where a contractor published a manufacturer’s trademark in its bid proposal pursuant to bidding instructions. 

Suntree Techs Inc manufactures baffle boxes for removing organic debris, trash, oil and other pollutants from storm water before it reaches lakes, rivers and streams. In 2008 a town in Florida began soliciting bids for a storm water retrofit project. The bidding documents required that Suntree baffle boxes be installed for the project. 

Derrico Construction submitted a bid for the project listing Suntree as the supplier for the baffle boxes. After its bid was accepted by the county, Derrico requested approval to use baffle boxes manufactured by Ecosense International Inc as a substitute to the Suntree boxes, as was permitted in the bidding documents. The municipality approved the substitute, and Derrico installed Ecosense baffle boxes. Ecosense prepared a PowerPoint presentation to train personnel on the proper cleaning and maintenance procedures for its baffle boxes. The presentation showed photographs of municipal workers cleaning and maintaining both Ecosense and Suntree baffle boxes. Suntree’s name, however, was not included.

Suntree sued Ecosense, Ecosense’s president and Derrico, alleging that their use of the Suntree trademark in bidding documents and in the PowerPoint presentation was likely to cause confusion as to the origin of the products to be installed, was false and misleading, and was likely to deceive consumers. Suntree filed a motion for summary judgment of trademark infringement, arguing that the undisputed facts in the record established the same. 

After Derrico and Suntree settled, Ecosense and its president filed motions for summary judgment arguing that Derrico alone made the decision to list Suntree on the bidding documents, that the express terms of the bid documents required the contractor to list Suntree and that the bid documents expressly permitted post-bid substitutions of alternative suppliers. Ecosense also argued that the PowerPoint presentation was created for the training of existing customers and that there was no evidence that it caused any consumer confusion. 

The district court granted summary judgment in favour of Ecosense and its president and denied Suntree’s motion for summary judgment. Suntree appealed.

On appeal, the Eleventh Circuit found that Derrico had not directly infringed Suntree’s mark by using it in its bid because Derrico was required to do so pursuant to the bidding documents. The court determined that there was no infringement by requesting a substitution of Ecosense baffle boxes after being awarded the contract because the bidding documents allowed for the substitution. 

The Eleventh Circuit further found that Ecosense had not infringed Suntree’s mark when it showed Suntree baffle boxes in its PowerPoint presentation because Suntree had failed to present evidence that Ecosense had any intention to portray Suntree's product as its own. Thus, the Eleventh Circuit affirmed the district court's denial of Suntree’s motion for summary judgment and affirmed the grant of Ecosense’s motion for summary judgment.

Alesha M Dominique, McDermott Will & Emery LLP, Washington DC 

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