Suntree Tech., Inc. v. Ecosense Intl., Inc.

A plaintiff must establish that the defendant not only used its protected mark, or one confusingly similar to it, but also that it was likely to confuse consumers as to source of the product or service.

Opinion (Alarcón): Suntree Tech. and Ecosense Intl. are manufacturers of baffle boxes, which remove debris and pollutants from stormwater. In 2008, the City of West Melbourne, Florida solicited bids for a project to retrofit its stormwater system. The City required contractors to use Suntree baffle boxes or an approved equal. Derrico Constr. Co., the winning bidder, included the use of Suntree’s baffle boxes in its bid. However, after its bid had been accepted, it sought, and received, permission to use Ecosense’s product instead. Suntree sued Derrico claiming that it infringed Suntree’s trademark in its bid; and Ecosense for contributory infringement with respect to the bid, and for direct infringement from an Ecosense maintenance presentation. Derrico settled. The district court granted Ecosense’s motion for summary judgement, and Suntree appealed. The appeals court accepted the validity of Suntree’s mark, and focused on whether it had shown that Derrico had adopted the same mark, or one confusingly similar to it. The court found that Derrico did not intend to confuse the City by changing suppliers, which, combined with the lack of evidence supporting actual confusion about which baffle boxes were used, led the court to conclude that Suntree could not have shown direct infringement by Derrico. Therefore, Ecosense could not have committed contributory infringement. The court similarly dismissed Suntree’s claims regarding the maintenance presentation because it failed to adduce evidence showing that the presentation was designed to generate sales. Summary judgment was AFFIRMED.