'Smart power' held to be generic

In Nartron Corporation v STMicroelectronics Inc, the US Court of Appeals for the Sixth Circuit has held that the term 'smart power' is generic in the semiconductor industry for the technology used to combine power transistors and control circuitry on a single integrated circuit. As a result, it dismissed Nartron's complaint alleging federal and state law claims of trademark infringement, dilution and unfair competition.

Nartron is the holder of an incontestable registration covering the mark SMART POWER for use with "electrical power circuits in combination with electrical logic circuits and parts thereof." ST manufactures and supplies semiconductors.

From 1987 until 1998 (when Nartron commenced suit), Nartron intermittently complained of ST's use of 'smart power', including in employee presentations, a manual entitled Smart Power Application Manual and a product announcement. In its lawsuit, Nartron claimed that ST had previously acceded to Nartron's demands to cease use but that recently ST's use of 'smart power' had become progressively worse. In response, ST claimed that (i) it had never acceded to Nartron's demands but rather had continuously used 'smart power' over the 11-year period in question, and (ii) the term 'smart power', as used by ST and others in the semiconductor industry, had in any event become generic.

The District Court for the Eastern District of Michigan agreed with ST and granted summary judgment in its favour. The Sixth Circuit affirmed that decision.

Because Nartron holds an incontestable registration, ST had the burden of showing that the term is generic. ST was successful in shifting the focus away from Nartron's long use of the mark and any association the mark may have had to Nartron and Nartron's products by submitting evidence of the term's meaning in the industry. The evidence included testimony from third-party manufacturers and distributors of semiconductors that the industry uses the term 'smart power' generically to mean power devices that have control circuits. ST also produced a wealth of documents from trade journals, periodicals and advertisements showing pervasive generic use of the term.

The Sixth Circuit found that ST's evidence was sufficient to rebut the presumption afforded to Nartron's registration. The court also faulted Nartron for not filing suit earlier.

The Nartron Case sends two strong messages to trademark holders: (i) they must - early and vigorously - protect their marks against uses that may make them generic; and (ii) they cannot rely solely on the incontestable status of their registrations to win the day.

Karin Segall, Darby & Darby, New York

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