2007 US Dist LEXIS 80594 (ED Cal. 2007). Decided October 31, 2007
Ruling: Defendant’s 12(b)(6) motion against Plaintiff’s cause of action for trademark infringement based on genericism denied because whether Plaintiff’s mark is generic is a question of fact meaning a triable issue of fact exists.
Factual Background: Defendant was a former purchaser and installer of Plaintiff’s patented “Ice Dam Melting System” sold under the name “Roof Ice Melt Systems.” Defendant registered www.rooficemeltsystems.com and used the site to sell products identical to Plaintiff’s products. Plaintiff alleged that Plaintiff owned the trademarks for Roof Ice Melt System based on use over a number of years. Defendants asserted that Roof Ice Melt Systems is generic within the meaning of 15 USC §1125.Legal Analysis: Genericism is a question of fact. Plaintiff set forth numerous facts sufficient to support its claim to have acquired trademark rights in “Roof Ice Melt Systems” sufficient to withstand a 12(b)(6) motion.
Plaintiff: Bylin Heating Systems, Inc. dba Bylin Engineered Systems
Counsel: Glenn W. Peterson, Millstone Peterson & Watts, LLP (Roseville, CA)
Defendant: M&M Gutters, Inc. et al.
Counsel: Daniel N. Ballard, Bullivant Houser Bailey PC (Sacramento, CA)
Judge: Frank Damrell, United States District Judge