UnIP (UnIntellectual Property): Trademark for Numeric Codes for Parts

The United States District Court for the Central District of California granted Defendant’s motion for summary judgment, holding that part numbers are not source identifiers entitled to trademark protection. In doing so, it relies upon case law out of not only the Ninth Circuit, but also the Sixth Circuit, both of which recognized in other cases that while the prefix to a part number may designate source of origin, and thus be entitled to trademark protection, the numbers thereafter are functional and not source identifying. In fact, this Court adopted a relatively recent decision out of the Sixth Circuit Court of Appeals that had held no trademark rights in part numbers for car struts, despite federal trademark registrations, “find[ing] it significant that the product numbers are used to specifically describe the strut and identify the vehicle to which the strut is designated. This use strongly favors Defendants’ claim that these product numbers primarily describe the product, not the source.”

Having failed to establish a protectable trademark right, the Plaintiff could not establish its claims for unfair competition and false advertising. Once again, this appears to have been a spat between a former employer (Plaintiff) and its former employees and startup company (Defendants). It will be interesting to see if Defendants pursue sanctions and recovery of fees/costs as a result of this action. The case law, not only within the Ninth Circuit, but outside of it as well, seems pretty clear. Moreover, it is a bedrock of trademark law that something must serve as a source identifier before it can be subject to trademark protection. However, as seen in the Sixth Circuit case quoted above, the USPTO had allowed a federal registration, possibly not knowing the full extent of how the product numbers were used, only to be invalidated in a court of law.

Wilden Pump & Eng’g LLC v. JDA Global LLC, CV 12-1051 ODW DTBX, 2012 WL 5363319 (C.D. Cal. Oct. 29, 2012).


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