iD Auto, LLC v. ID Parts LLC

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

CIVIL ACTION NO. 20-CV-11253-RWZ

PARTS ID, LLC

Vv.

IDPARTS LLC

ORDER

May 26, 2021

ZOBEL, S.D.J.

Plaintiff, formerly known as Onyx Enterprises International Corp., alleges that defendant infringes its trademark, “iD,” which Plaintiff initially used with the word “car” (“CARiD”). Defendant has moved for partial summary judgment on the ground that its use of “iD” predates plaintiffs. The parties dispute whether, through tacking, plaintiff has priority over the mark because its “original and revised marks are ‘legal equivalents’ in that they create the same, continuing commercial impression.” Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 420 (2015). They also disagree whether defendant's use of the mark was sufficient to establish priority.

The parties’ perceived issues implicate questions of fact that are inappropriate for disposition on summary judgment. See id. at 420 (“Because the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, . . . a jury should make this determination.”); Fed. R. Civ. P. 56(a) (“The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”). Defendant's motion for partial summary judgment on the ground of priority of its mark (Docket # 34) is therefore DENIED.

The motion to stay the case and the motion for leave to file reply in support of the motion to stay (Docket ##51, 57) are DENIED as moot.

May 26, 2021 “2bb DATE RYA W. ZOBEL UNITED'STATES DISTRICT JUDGE