## United States Court of Appeals
FOR THE EIGHTH CIRCUIT

___________
No. 05-3057

___________ Mid-State Aftermarket Body Parts, Inc., *

* Plaintiff - Appellee, * * Appeal from the United States v. * District Court for the * Eastern District of Arkansas. MQVP, Inc., formerly known as * Global Validators, Inc., *

* Defendant - Appellant. *

___________ Submitted: May 18, 2006 Filed: October 19, 2006

___________ Before LOKEN, Chief Judge, JOHN R. GIBSON and COLLOTON, Circuit Judges.

___________ LOKEN, Chief Judge.

This is a trademark infringement dis pute between the owner of a registered service mark, MQVP, Inc., and an allege d infringer, Mid-State Aftermarket Body Parts, Inc. MQVP appeals the district court’s grant of summary judgment dismissing Lanham Act claims of infringement and fa lse advertising. Concluding there are genuine issues of material fact as to whether Mid-State’s unauthorized use of MQVP’s service mark was “likely to cause confusion” as to the origin of products or services, 15 U.S.C. § 1125(a)(1)(A), or was false comme rcial advertising within the meaning of 15 U.S.C. § 1125(a)(1)(B), we reverse.1 A certification mark is “any word [or] name . . . used by a person other than its owner . . . to certify . . . origin . . . quality . . . or other characteristics of such person’s goods or services.” 15 U.S.C. § 1127. “A certification mark is a special creature created for a purpose uniquely differe nt from that of an ordinary trademark or service mark.” 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 19:91 (4th ed. 2006). A certification mark may be cancelled if the owner markets services to which the mark attaches or permits use of the mark for purposes other than to certify. See 15 U.S.C. § 1064(5)(B) & (C).

2 “QS-9000” is a manufacturing quality control process adopted by Ford, General Motors, and Daimler Ch rysler. “ISO 9000” refers to a set of quality control standards developed by the Internati onal Organization for Standardization.

-2- I.

Insurers, automobile repair shops, and car owners have been legitimately concerned about the quality of parts used to repair damaged vehicles (aftermarket parts) and about the increasing use of c ounterfeit foreign parts. Responding to these concerns, a non-profit organization, Certifie d Automotive Parts Association (CAPA), was created in 1987. After testing, CAPAcertifies that a particular part meets CAPA’s recognized quality standards. The manufacturer is then authorized to place CAPA’s certification mark on the extern al packaging of the certified part. 1

In 2000, MQVP, a for-profit company, began marketing a competing quality assurance program, the Manufacturers’ Qua lification and Validation Program, and set out to enlist manufacturers and distributors of aftermarket parts. To participate, a manufacturer must have its plant “QS-9000 re gistered,” and a distributor must have an “ISO 9000” quality control implementation plan in place that is satisfactory to MQVP. 2 After a manufacturer is approved by MQVP, the program contemplates that each shipment of qualified parts will be en tered into a “Global Online Certification System.” Run by MQVP on-lin e software, this system enables the end user of a specific part -- a repair shop or insurer -- to trace the shipment of that part from the manufacturer through the chain of distribution, thereby validating the part’s quality.-3- The MQVP program also includes a second on-line software service, “Global Online Corrective Action Reporting,” which is a database of customer complaints and reports of non-conforming parts. This MQVP on-line software is available only to participating manufacturers and distribu tors. An early MQVP comparative advertising piece explained the advantages of its program as follows:

[MQVP] has taken the spirit of CA PA, added the globally recognized quality standard to which all OE M’s manufacture [QS-9000], included the added value of cradle to gr ave traceability and accountability and empowered it with on-line reporting software.

In 2001, MQVP registered three servi ce marks to identify its new venture, MQVP® for the program itself, GOCERTS ® for the on-line tracing system, and GOCAR® for the on-line complaint system. As amended by the Examining Attorney of the U.S. Patent and Trademark Office, the registration for the MQVP® service mark describes the services on which the mark will be used as:

Creating and maintaining a registry of manufacturers that validates that parts or products made by the manuf acturers meet established part standards and product specifications and that the manufacturers listed are registered in and follow ISO 9000, QS-9000, TS 16949 and other industry standards.

The MQVP program contemplated that participating manufacturers would qualify their parts as complyi ng with QS-9000 quality standards and sell those parts to participating distributors using the GOC ERTS® on-line tracing software so that end users may validate the quality of a specific partused to repair a vehicle. But the record in this case makes it clear that at l east some participating manufacturers were unwilling to limit sales of qualif ied parts to participating MQVP distributors. Sales to non-MQVP-participants led to this Lanham Act dispute.-4- Mid-State is a distributor of aftermarke t automobile parts that it purchases from various vendors. In 2002, Mid-State advertised that it has “MQVP parts available” in its catalog, various trade journals, flye rs, and over the telephone to customers and potential customers who requested “MQVP parts.” Mid-State also recorded “MQVP parts” on pick tickets sent to Mid-State customers to confirm their orders. In 2003, when Mid-State declined MQVP’s offer of a license to use th e MQVP® service mark and to participate in the MQVP program , MQVP demanded that Mid-State cease all use of the MQVP® mark. Mid-State began telli ng customers that it is not a participant in the MQVP program but continued its use ofthe mark. This lawsuit followed. MidState argues that its statement “MQVP part s available” is true because Mid-State buys qualified parts from MQVP-participating manufacturers.

II.

We conclude that the district court’ s application of the Lanham Act to the undisputed and disputed facts of this case is flawed. First, the court criticized MQVP because it uses a registered service mark, MQVP®, “to refer to products, and it licenses others to use the mark MQVP® to re fer to products.” But a service mark may properly be used to identify the goods associ ated with the services protected by the mark, so long as the mark continues to id entify the presence of some services and not only goods. Therefore, “while the distinc tion between a trademark and a service mark may be relevant for registration purposes, it is not particularly relevant for the purposes of the likelihood of confusion analysis .” Frehling Enters., Inc. v. Int’l Select Group, Inc. , 192 F.3d 1330, 1334 n.1 (11th Cir. 1999). Moreover, in this case, whether MQVP uses the mark to refer to products as well as its program services is a disputed fact. Mid-State without MQVP approval has used the mark to refer to products -- “MQVP parts available” -- a nd there is evidence that some program participants have used the mark in the same way. But MQVP submitted evidence that it has never authorized such a use. Thus, whether MQVP has permitted participants to use the mark in the same way CAPA pe rmits third parties to use its certification-5- mark, and the relevance of that fact to the likelihood-of-confusion and false advertising inquiries, are issues for trial.

Next, misconstruing the “validating” component of the MQVP program, the district court concluded that MQVP desc ribes and uses the MQVP® mark “in terms that fit the definition of” a certification mark such as th e CAPA mark. To be sure, Mid-State’s unauthorized use -- “MQVP parts available” -- makes MQVP® look like a certification mark for products, divorced from the validating on-line software services that MQVP markets as an essen tial part of the overall program. But MQVP registered MQVP® as a service mark, nota certification mark, and it is entitled to service mark protection. As described by MQVP, the mark identifies a basket of services -- verifying that participating ma nufacturers and distribut ors of qualified parts satisfy the QS-9000 and ISO-9000 quality c ontrol standards, monitoring their continued compliance, and providing on-line software that enables end users to verify that the qualified parts they use are genuine . “The Lanham Trademark Act affords the trademark holder the right to control th e quality of the goods manufactured and sold under its trademark.” Shell Oil Co. v. Commercial Petrol., Inc. , 928 F.2d 104, 107 (4th Cir. 1991). Service mark owners are entitled to the same protection, so MQVP may control the servi ces sold under its service mark. See 15 U.S.C. § 1053. Of course, MQVP may have altere d its initial concept in marketing the program, in which case its infringement claims may fail. But MQVP’s use of the mark and the nature of the services its use protects are disputed issu es for trial that are relevant to both the likelihood-of-confusion and the false advertising issues.

Finally, the district court’s likelihood- of-confusion analysis emphasized that distributor Mid-State does not offer servi ces that compete withthe MQVP services protected by the mark, and that Mid-Stat e’s customers are collision shops who are parts end users, not the manufacturers and distributors who are potential purchasers of MQVP’s services. But the Lanham Act’s unfair competition inquiry is not so narrow. “Confusion is relevant when it exis ts in the minds of persons in a position to-6- influence the purchasing decision or persons whose confusion presents a significant risk to the sales, goodwill, or reputation of the trademark owner.” Beacon Mut. Ins. Co. v. OneBeacon Ins. Group , 376 F.3d 8, 10 (1st Cir. 2004). Here, viewing the evidence most favorably to MQVP, as we must, Mid-State engaged in the unauthorized use of the MQVP® mark for the obvious purpose of confusing, indeed deceiving, end users into believing they are buying qualified “MQVP parts” that are fully validated under the MQVP program, w ith all its attendant services. The deception, if successful, would discourag e competing vendors from paying MQVP to participate in the full program, thereby destroying the market for the very basket of services the MQVP® mark was intended to protect.

Under the Lanham Act, like lihood of confusion and false advertising are factintensive inquiries. See SquirtCo v. Seven-Up Co. , 628 F.2d 1086, 1091 (8th Cir. 1980) (likelihood of confusion); United Indus. Corp. v. Clorox Co. , 140 F.3d 1175, 1180 (8th Cir. 1998) (false advertising). The many uncertain and outright disputed issues of material fact thatpermeate the chaotic record in this case persuade us that summary judgment was improperly granted. The judgment of the district court is reversed, and the case is remanded for furthe r proceedings not inconsistent with this opinion.

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