1 Pursuant to 5 T H C I R . R. 47.5, the Court has determined that

this opinion should not be published and is not precedent except

under the limited circumstances set forth in 5 TH C IR . R. 47.5.4. United States Court of Appeals

Fifth Circuit 

## FILED

January 30, 2004

Charles R. Fulbruge III

Clerk UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

03-20368

RADIATOR SPECIALTY COMPANY,

Plaintiff-Appellant,

VERSUS

PENNZOIL-QUAKER STATE COMPANY, formerly known as Pennzoil

Products Company; PANDORA MANUFACATURING INC., formerly known as

Snap Products Inc.

Defendants-Appellees.

Appeal from the United States District Court

For the Southern District of Texas

(01-CV-2205)

Before DUHÉ, BARKSDALE, and DENNIS, Circuit Judges.

PER CURIAM: 1

Plaintiff Radiator Speciality Co. sued makers of “Fix-a-Flat”

under the Lanham Act, alleging that false adve rtising of

Defendants’ product as non-explosive and safe injured Plaintiff in

marketing its own “Puncture Seal” tire inflato r, which was

allegedly truly safe but more expensive. The only issues on appeal

concern the district court’s holding on summary judgment that

Radiator’s claim of false advertisement is barred by the equitable

doctrine of laches. The court found the facts undisputed that2

seven years elapsed between the time Radiator first objected to the

use of the “non-explosive formula” label on the “DME” version of

Fix-a-Flat and the date Radiator filed this suit. On motions for

summary judgment by defendants, Pandora Manufacturing, Inc. and its

alleged successor-in-interest, Pennzoil-Quaker State Company, the

district court dismissed based on laches. We affirm.

I.

Laches is an inexcusable delay on the part of the plaintiff

that results in prejudice to the defendant. C onan Props., Inc. v.

Conan’s Pizza, Inc.

, 752 F.2d 145, 153 (5th Cir. 1985). To the

extent that the relevant facts are undisputed, a district court

“enjo ys considerable discretion in deciding whether to apply the

doctrine of laches.” N ational Ass'n of Gov. Employees v. City Pub.

Serv. Bd.

, 40 F.3d 698, 707 (5th Cir. 1994). When a district court

is making an equity determination such as laches, the scope of its

powers “is broad, for breadth and flexibility are inherent in

equitable remedies.” S wann v. Charlotte-Mecklenburg Bd. of Educ.

,

402 U.S. 1, 15, 91 S. Ct. 1267, 1276 (1971). Unless the district

court resolved disputed issues of material fact against the

nonmovant, “its determination of whether the undisputed facts

warrant an application of laches is reviewed for abuse of

discretion.” National Ass'n , 40 F.3d at 707.

II.

Plaintiff asserts four errors. First, Radiator contends that

the district court ignored its evidence of Pandora’s and Pennzoil’s

“unclean hands,” which should have precluded them from invoking an2 H ot Wax, Inc., v. Turtle Wax, Inc.

, 191 F.3d 813, 82 6 (7th

Cir. 1999).

3 R 2 Medical Systems, Inc. v. Katecho, Inc.

, 931 F. Supp. 1397,

1412 (N.D. Ill. 1996).

3 equitable defense. The district court determined that the

undisputed facts did not demo nstrate any “willful, egregious, or

unconscionable conduct or bad faith” on the part of Defendants, as

discussed in Hot Wax

, 2 so as to constitute unclean hands. We agree

with that assessment. Nor do we find any abuse of discretion in

the court’s requirement, in accorda nce with H ot Wax

, that the

inequitable condu ct alleged relate to the equitable issue in the

case, i.e., the defense of laches. (On the main demand, Radiator

is asking for damages, no t equitable relief.) We agree that the

record demonstrates no genuine is sue of material fact on the

question of D efendants’ “unclean hands” and find no abuse of

discretion in the district court’s ruling in this regard.

Radiator’s second assignment of err or is that the district

court improperly calculated the length of delay for Pennzoil, which

purchased the Fix-A-Flat li ne in November 1997, by allowing

Pennzoil to “tack” onto the delay by Radiator in raising its claim

against the preceding owner of Fix-A-Flat. The court considered

the rationale behind patent a nd trademark jurisprudence allowing

“ tacking.” If a sale involves an entire product line along with

the goodwill, then “the transferee effectively has as sumed the

transferor’s identity,” 3 and both the defendant and its predecessor4 C elastic Corp. v. McClellan Sh oe Specialty Co. , 15 F. Supp.

1048, 1050 (D.C. Del. 1936).

4 have been “lulled into security by plaintiff’s failure to sue.” 4

Because under the undisputed terms of Pennzoil’s acquisition

document the goodwill was transferred with the entire product line,

the court reasoned that Pennzoil similarly effectively assumed the

transferor’s identity for purposes of laches. We discern no abuse

of discretion or error of law in the district court’s careful

analysis.

Radiator’s third and fourth assigned errors are that the

district court inappropriately resolved factual differences against

Radiator on the issues of unjustifiable delay and prejudice. We

conclude from our review of the record, however, that the material

facts are not genuinely disputed. The court did not reject

factually any of the reasons Plaintiff offered for the delay. We

hold that its analysis and conclusions about the insufficiency of

those reasons are well within its discretion.

The court found material evidence of prejudice to be

uncontradicted as well, and we agree. Although the court noted a

conflicting affidavit on the availability of “many of the

witnesses,” the court found no question of fact regard ing the

unavailability of documents or economic harm. The court neither

improperly resolved any material fact nor abused its discretion in

finding prejudice.

III.

Laches “is not determined by a simple rule of thumb,” but by5

“a close scrutiny of the particular facts and a balancing of the

respective interests and equities of the parties, as well as the

general public.” 5 J. Thomas McCarthy, Trademarks and Unfair

Competition, § 31:22 (4th ed. 2003). The district court provided

a thorough opinion, makin g its determination to apply laches to

undisputed facts in precisely that manner. It did not abuse its

discretion in so doing.

AFFIRMED.