United States District Court, M.D. North Carolina
TURN AND BANK HOLDINGS, LLC, and PRECISION AIRMOTIVE, LLC, Plaintiffs,
AVCO CORPORATION and AVSTAR FUEL SYSTEMS, INC., Defendants.
MEMORANDUM OPINION AND ORDER
Catherine C. Eagles, District Judge.
Turn and Bank Holdings, LLC, and Precision Airmotive, LLC,
ask this Court for a preliminary injunction barring
defendants Avco Corporation and AVStar Fuel Systems, Inc.
from selling fuel injection servos, a component of aircraft
engines, bearing trademarks the plaintiffs contend are
confusingly similar to their own. The plaintiffs have shown a
likelihood of success on the merits. To the extent the
plaintiffs seek to prevent the defendants from selling servos
with the infringing marks while this litigation is pending,
they have met the other requirements for a preliminary
injunction, and the motion will be granted. To the extent the
plaintiffs seek a broader preliminary injunction, they have
not met their heavy burden, and the motion will be denied.
Court, having reviewed the motions, the supporting documents,
all matters of record, and the briefing, makes the following
findings of fact and conclusions of law for the purpose of
this Order only.
Plaintiff Turn and Bank holds trademark rights over marks
used on fuel injection servos, which control the delivery of
a combustible fuel-air mixture to aircraft engines. Doc. 1 at
¶¶ 13, 17; AVCO Corp. v. Turn & Bank
Holdings, LLC, No. 4:12-CV-01313, 2018 WL 1706359, at
*2, *9 (M.D. Pa. Apr. 9, 2018); see also Doc. 1-1
(USPTO registrations). Turn and Bank bought this servo line
in 2012 and licensed its intellectual property rights to
Precision for servo production. Doc. 1 at ¶ 17. For ease
of reading, the Court will refer to the plaintiffs Turn &
Bank and Precision collectively as Precision.
Precision's predecessor, the Bendix Corporation,
developed fuel injection servos in the 1960s and affixed the
marks at issue to identify its servos. Doc. 1 at ¶ 14;
Doc. 7-1 at ¶ 5. The marks have been used on servos
consistently, exclusively, and prominently for years by
Precision and its predecessors. AVCO Corp., 2018 WL
1706359, at *8.
Precision's servo marks consist of the prefix
“RSA” followed by a series of numbers and
letters. Doc. 1 at ¶ 15; Doc. 7-1 at ¶ 5.
“All of the RSA model numbers consist of (1) the
letters ‘RSA,' (2) a dash, (3) a one- or two-digit
number, (4) two more letters, and (5) a one-digit number-in
that order (e.g., ‘RSA-5AD1,'
‘RSA-10ED2').” AVCO Corp., 2018 WL
1706359, at *3; see also Doc. 1 at ¶ 15.
While there is not complete consensus over the precise
meaning of these model numbers, in the past the parties have
agreed that the numbers and letters after the dash indicate
different functional or structural aspects of the servos.
AVCO Corp., 2018 WL 1706359, at *3. Each model
number represents not a specific servo but rather a
“family” of servos sharing certain general
functional characteristics. Id. at *4.
marks are more akin to general model numbers than part
numbers. Numerous servos may share the same model number, but
a part number is required to ensure it is compatible with a
specific engine. Id. at *4.
Precision's RSA marks appear on servo “data
tags” affixed to the servos. Doc. 29-3 at ¶ 13.
Precision has registered both the RSA prefix and three of the
full model numbers at issue here on the USPTO's Principal
Register, and it has registered the remainder on the
Supplemental Register. Doc. 1-1.
Servo buyers have used the RSA marks for decades to identify
the Bendix/ Precision line of servos. Doc. 1 at ¶ 20;
Doc. 7-1 at ¶ 8; Doc. 7-6 at ¶ 5; Doc. 7-13 at
¶ 8; Doc. 7-14 at ¶ 6.
without the prefix RSA, some in the servo industry recognize
the suffixes “5AD1, ” “10AD1, ” and
“10ED1” as originating from the Precision line of
servos, Doc. 7-2 at ¶ 7, and use these suffices as a
“shorthand” for the entire RSA mark. Doc. 7-12 at
¶ 5; Doc. 7-13 at ¶ 10; Doc. 7-14 at ¶¶
6-8; Doc. 7-15 at ¶ 6.
previous trademark litigation between these same parties, the
Middle District of Pennsylvania found there was
“overwhelming evidence showing that, in [the] minds of
the relevant consumers, the primary significance of the RSA
marks is to refer to Bendix and its
successors-in-interest.” AVCO Corp., 2018 WL
1706359, at *7. The marks are not generic but are descriptive
and have acquired secondary meaning. Id. at *7-8.
Precision's RSA marks are valid and protected trademarks.
Id. at *11.
Defendant Avco purchased servos from Precision's
predecessors for decades. Doc. 1 at ¶ 24; Doc. 7-6 at
Around 2002, Avco began pressuring Precision to reduce its
servo pricing. Doc. 1 at ¶ 24. When that company
refused, Avco contracted with defendant AVStar to
reverse-engineer the servos and sell them to Avco.
Id. at ¶¶ 24-26, 28; see Doc.
29-3 at ¶ 3.
early as 2010, AVStar and Avco began selling
reverse-engineered servos bearing RSA marks identical to
Precision's RSA marks. Doc. 29-3 at ¶ 8; Doc. 1 at
other company besides Precision and its predecessors had used
the RSA marks, with or without the suffixes, e.g.,
“5AD1, ” until AVStar and Avco started using
identical marks. AVCO Corp., 2018 WL 1706359, at *8;
Doc. 7-13 at ¶ 8.
AVStar has and is directly competing with Precision in the
servo market for the same customers. AVCO Corp.,
2018 WL 1706359, at *10.
AVStar intentionally copied Precision's RSA trademarks in
full. Id. at *8 (finding “comprehensive”
evidence that AVStar intentionally copied the RSA marks).
AVStar's use of identical RSA marks on its servos
infringed on Precision's trademark rights. Id.
Avco induced AVStar's infringement. Id.
ease of reading hereafter, and because the defendants have
acted collectively as is relevant here, the Court will refer
to defendants Avco and AVStar collectively as AVStar.
AVStar's infringement caused consumer confusion. AVCO
Corp., 2018 WL 1706359, at *10.
the previous litigation, Precision prevailed at summary
judgment on liability against AVStar arising out of
AVStar's use of the RSA trademarks. See generally
AVCO Corp., 2018 WL 1706359. In April 2018, the
Pennsylvania court found that the RSA marks were valid
trademarks and that AVStar was infringing the marks.
Id. at *11.
Soon after the Pennsylvania decision, AVStar began the
process of obtaining approval from the Federal Aviation
Administration (“FAA”) to sell and use the same
servos with a new mark. The new mark replaced the
“RSA” prefix with “LFC” but retained
the same model numbers as suffixes, i.e.,
“LFC-5AD1, ” “LFC-10AD1, ” and
“LFC-10ED1.” See Doc. 1 at ¶ 33;
Doc. 7-7 at 10-11; Doc. 29-3 at ¶¶ 17-18; Doc. 29-2
at ¶ 9.
using the suffixes and simply changing the three-letter
prefix, AVStar intentionally copied the letter/number
combinations originally used by Precision.
AVStar first mentioned in court filings in May 2018 that it
was seeking FAA approval for the LFC servos. See
Doc. 7-7 at 14.
took about four months to obtain FAA approval, see
Doc. 29-2 at ¶¶ 9-10; Doc. 29-3 at ¶ 17, and
Avco and AVStar began selling servos and engines with LFC
servos in July 2018. Doc. 29-3 at ¶ 17.
order to obtain FAA approval to use the LFC servos in
Lycoming engines, AVStar had to demonstrate the functional
design of its LFC servos was “at least equal” to
Precision's RSA servos. Doc. 29 at 28; Doc. 29-5 at 16.
cost more than $8500 for the defendants to switch from the
RSA marks to the LFC marks. Doc. 29-2 at ¶ 16.
AVStar sells its servos to another engine manufacturer,
Continental Motors, with an entirely different mark,
“CFC-370, ” which does not use the Precision
suffixes. Doc. 1 at ¶ 41; Doc. 1-2; Doc. 7-12 at ¶
8. These sales had begun by early 2019. Doc. 7-12 at
early 2019, Precision began hearing that AVStar was selling
servos with another mark to Continental Aerospace
Technologies, but its president learned that the mark on
those servos did not use the RSA suffixes. Doc. 7-12 ¶
April 2019, Precision obtained emails from AVStar employees
confirming that AVStar-produced servos would bear a new LFC
mark but retain the previous RSA mark's suffix. Doc. 7-12
at ¶ 9.
There is evidence of at least one sale of an engine with an
LFC servo in North Carolina as of July 2019. Doc. 15-4 at
¶ 19; Doc. 34-1. The customer ordered the engine
containing an LFC servo in late 2018. Doc. 34-1 at ¶ 4.
Otherwise, no party has provided any evidence about the
number of LFC servos sold. See Doc. 34-3 at ¶ 4
(indicating all parties have this information). It is likely
that the number sold has been fairly small, since Precision
did not learn its only competitor had entered the market with
the LFC servos until April 2019.
is not necessary for safety, for functionality, or for
regulatory reasons that AVStar use the RSA-associated
suffixes. AVCO Corp., 2018 WL 1706359, at *3, *8.
There is no evidence that the FAA requires AVStar to use the
LFC marks on servos.
servos made by Precision and by AVStar differ somewhat in
appearance, see Doc. 29-3 at ¶ 12, and have
variations in their maintenance ...