Unitek Solvent Services, Inc. v. Chrysler Group, LLC , 580 F. App'x 535 ( 2014 )

NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS FILED
FOR THE NINTH CIRCUIT JUN 19 2014
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
UNITEK SOLVENT SERVICES, INC., a No. 13-17151
Hawaii corporation,
D.C. No. 1:12-cv-00704-DKW-
Plaintiff - Appellant, RLP
v.
MEMORANDUM*
CHRYSLER GROUP, LLC, a Delaware
limited liability company,
Defendant - Appellee.
Appeal from the United States District Court
for the District of Hawaii
Derrick Kahala Watson, District Judge, Presiding
Argued and Submitted June 11, 2014
Honolulu, Hawaii
Before: W. FLETCHER, IKUTA, and HURWITZ, Circuit Judges.
Unitek Solvent Services appeals the district court’s denial of a preliminary
injunction in Unitek’s trademark infringement case against Chrysler Group. We
have jurisdiction under 28 U.S.C. § 1292 and we affirm.
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
The district court did not clearly err in ruling that “ECODIESEL” was a
descriptive mark, rather than a suggestive mark.1 See Lahoti v. VeriCheck, Inc.,
586 F.3d 1190, 1195 (9th Cir. 2009). The district court did not violate the anti-
dissection rule when it examined the two components of the ECODIESEL mark
and then analyzed the composite term as a whole. See, e.g., id. at 1200–01;
Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1015–18
(9th Cir. 1979). Nor did the district court clearly err in holding that no “mental
leap is required in order to reach a conclusion” that the ECODIESEL mark refers
to environmentally friendly diesel fuel. Rudolph Int’l, Inc. v. Realys, Inc., 482
F.3d 1195, 1198 (9th Cir. 2007) (internal quotation marks omitted); see also
Surgicenters, 601 F.2d at 1015.
Volkswagen’s registration of “ECODIESEL” in 1992 (a mark it apparently
abandoned in 1999), provides little evidence of the distinctiveness of Unitek’s
mark, given that the more widespread use of the “eco-” prefix since 1992 has
reduced its distinctiveness. Nor does the attempted registration of the term “ECO-
DIESEL” by Jeff Gordon provide evidence of distinctiveness, given that Gordon’s
application was ultimately rejected or abandoned. The other “ECO-” registered
1
Unitek does not argue on appeal that the ECODIESEL mark has acquired a
secondary meaning.
2
marks cited by Unitek likewise provide little evidence of distinctiveness, because
they are not “highly similar” to Unitek’s mark, Lahoti, 586 F.3d at 1199, and relate
to different goods, see id. at 1201. Finally, the evidentiary value of Chrysler’s
statements regarding the brand strength of “EcoDiesel” as applied to its diesel
engines is slight. Accordingly, the district court did not abuse its discretion when
it determined that Unitek had not demonstrated a likelihood of success on the
merits of the trademark infringement claim.2 See Herb Reed Enters., LLC v.
Florida Entm’t Mgmt., Inc., 736 F.3d 1239, 1247 (9th Cir. 2013).
Moreover, the district court did not abuse its discretion by concluding that
Unitek had not established a likelihood of irreparable harm. See id. at 1249.
Although the record reflects some effort by Unitek to create a viable #2 diesel fuel
product, the record does not suggest that Chrysler’s use of “EcoDiesel” will have
any appreciable effect on those efforts.
AFFIRMED.
2
Because we affirm the district court’s ruling on this ground, we do not reach
its analysis of the likelihood of confusion question.
3