Atlas Biologicals, Inc. v. Kutrubes

          FINDINGS OF FACT AND CONCLUSIONS OF LAW

          Christine M. Arguello United States District Judge.

         This case involves a dispute between a corporation and its former employee over whether the former employee ran afoul of his legal and contractual duties when he established a competing business before he left the employ of the corporation and, if so, the extent to which the corporation was damaged by its former employee’s actions.

         Beginning on March 5, 2018, the Court presided over a five-day bench trial on Plaintiff Atlas Biologicals, Inc.’s claims for: (a) federal trademark infringement, in violation of the Lanham Act, 15 U.S.C. § 1114; (b) false designation of origin and federal unfair competition, in violation of the Lanham Act, 15 U.S.C. § 1125; (c) trademark and trade name infringement under Colorado common law; (d) misappropriation of trade secrets, in violation of the Colorado Uniform Trade Secrets Act, Colo. Rev. Stat. §§ 7-74-101, et seq.; (e) “conversion and civil theft” pursuant to Colo. Rev. Stat. § 18-4-405; (f) deceptive trade practices, in violation of the Colorado Consumer Protection Act, Colo. Rev. Stat. § 6-1-105; (g) breach of fiduciary duty; and (h) breach of contract, see (Doc. # 101), as well as Defendants Thomas Kutrubes, Peak Serum, Inc., and Peak Serum, LLC’s affirmative defenses of: (a) successful mitigation of damages; and (b) the doctrine of unclean hands, see (Doc. # 103). See (Doc. ## 131–35.) Having heard the evidence presented at trial and reviewed the parties’ proposed findings of fact and conclusions of law (Doc. ## 154–55), the Court now enters its findings of fact and conclusions of law.

         I. FINDINGS OF FACT

         A. THE PARTIES

         Plaintiff Atlas Biologicals, Inc. (“Atlas”) specializes in the production of bovine serum^[1]-based products that are used for cell culture and research in the medical, veterinary, and biological sciences. (Doc. # 101 at 4.) Among bovine serum-based products, fetal bovine serum is in particularly high demand because it is widely utilizable in scientific research. (Id.) Fetal bovine serum is, as the name implies, derived from blood drawn from a bovine fetus. (Id.) It is a byproduct of the commercial beef industry, and its price rises and falls as the market for beef product fluctuates. (Id.) Atlas developed and sells EquaFETAL, a proprietary product that meets the specifications of fetal bovine serum but is purportedly more traceable, consistent in quality, and stable in pricing than fetal bovine serum. (Id. at 5.) Atlas, which maintains its principal office in Fort Collins, Colorado, owns and uses in commerce the registered mark EquaFETAL, in addition to the following registered or common law marks: FETAL㲵; PROGENISERUM; FETAL CHOICE; FETAL SELECT; ATLAS; ATLAS BIOLOGICALS; FETAL RESOURCE; and its logo. (Doc. # 123 at 13–14.) In 2014 and 2015, Richard “Rick” Paniccia was the president of Atlas and one of its owners (Paniccia Testimony, Doc. # 137 at 302); Brent Bearden was a partial owner (Bearden Testimony, Doc. # 139 at 555); and Michelle Cheever was the company’s Director of Quality Assurance (Cheever Testimony, Doc. # 136 at 52). Paniccia and Bearden remain partial owners of Atlas today.

         Defendant Thomas Kutrubes was also a partial owner of Atlas in 2014 and 2015 and continuing through the trial; he had at all relevant times a 7% ownership interest in Atlas. (Doc. # 101 at 5); see (Doc. # 103 at 3.) Kutrubes began working for Atlas as an intern in 2005 and was hired as an employee in 2006, initially serving as a regional sales manager. (Doc. # 101 at 6; Doc. # 11-7 at 1.) In January 2010, Kutrubes became a shareholder in Atlas, owning 5% of its common stock. (Doc. # 11-7 at 1.) Atlas awarded Kutrubes an additional 1% of the common stock the following year. (Id.) On November 9, 2012, Atlas promoted Kutrubes to be its National Sales Manager. (Doc. # 101 at 6.) On the date of his promotion, Kutrubes signed a job description for that position; the document listed as one of 12 “key responsibilities” “[u]nderstand[ing] and adher[ing] to company policies and procedures.” (Doc. # 1-2.) Atlas already had in a place a policy entitled “Control of Confidentiality/Proprietary Information” that prohibited all employees from disclosing without the company’s prior written authorization any “Confidential and/or Proprietary Information.” (Doc. # 1-3 at 5.) Kutrubes was subsequently elected to Atlas’s Board of Directors and, on January 1, 2013, was awarded an additional 1% of Atlas’s common stock. (Doc. # 11-7 at 2.)

         B. THE BEGINNINGS OF PEAK SERUM

         Unbeknownst to Atlas, Kutrubes was developing a business plan to compete with Atlas while he was still in Atlas’s employ. See (Doc. # 10-2.) The business plan stated that Kutrubes’s company, Peak Serum, would specialize in bovine serum-based products and generate market share among American academic institutions, with a “secondary” emphasis on exporting products to “Korea, Japan, China, Italy, and Canada.” (Id. at 2.) Kutrubues’s business plan continued, “Prices will be more competitive, and direct competition [will] be from Atlas to a certain extent due to SereaTech [sic] sourcing.” (Id. at 6.) On October 31, 2014, Kutrubes filed articles of organization for Defendant Peak Serum, LLC with the Colorado Secretary of State. (Doc. # 11-1.) On December 9, 2014, Kutrubes dissolved Defendant Peak Serum, LLC and incorporated Defendant Peak Serum, Inc. (“Peak Serum”) as a for-profit Colorado corporation. (Doc. # 11-4.)

         Beginning the fall of 2014, at roughly the same time Kutrubes was establishing Peak Serum and while still employed by Atlas, Kutrubes “took certain information, documentation, and data” from Atlas by emailing documents from his Atlas-provided email account to his personal Gmail account. (Doc. # 123 at 23; Cheever Testimony, Doc. # 136 at 72.) These documents included Atlas’s customer contact lists, a supplier agreement; its quality manual; its organizational chart; a contract manufacturing statement; proofs of labels; a marketing brochure; and email exchanges about Atlas’s products, among others. See (Doc. ## 7-1–7-5.) Kutrubes also “sent certain emails to customers of [Atlas]” that contained Atlas’s trademarks and trade names and “solicited business for his company, Peak Serum.” (Doc. # 123 at 13.) In these emails, Kutrubes falsely represented to Atlas’s customers that Atlas and Peak Serum were “sister companies, ” that Atlas was no longer conducting international business, and that Peak Serum would be assuming Atlas’s international customers. See (Doc. ## 7-8–7-21, 8-1–8-21, 9-1–9-14.) Kutrubes also contacted Atlas’s suppliers, contract manufacturers, and business partners, including SeraTec, Central Biomedia, and Rocky Mountain Biologicals, in attempt to secure product for Peak Serum. See (Doc. ## 10-12–10-18.) Kutrubes “admits he breached his duty of loyalty as an employee [of Atlas] between October 1, 2014, and continuing until his termination in December of 2014.” (Doc. # 123 at 12.)

         C. THE END OF THE EMPLOYMENT RELATIONSHIP

         In mid-December 2014, Kutrubes informed Paniccia and Bearden that he was resigning from Atlas in order to independently sell fetal bovine serum. (Paniccia Testimony, Doc. # 138 at 369; Doc. # 101 at 6.) Kutrubes tendered a formal resignation letter to Atlas on December 16, 2014, with an effective date of December 19, 2014. (Doc. # 11-6.) He wrote that he was resigning “from employment” with Atlas and from his alleged role as a director of the company, despite his belief that he “did not perform the duties of a Director, such as overseeing the activities of the company” and did not “serve as an officer for the corporation.” (Id. at 1.) In response to Paniccia and Bearden’s purported “request and desire that the company purchase [his] shares, ” Kutrubes requested a buyout of his shares “upon the recent appraisal of the company at $3, 200, 000.00” and thus requested “a lump sum payment in the amount of $224, 000.00.” (Id.)

         In the days after Kutrubes’s resignation, Atlas discovered that prior to his resignation, Kutrubes had used his Atlas-provided email address to send numerous company documents to his personal Gmail account and to extensively email Atlas’s customers to solicit business for Peak Serum. (Cheever Testimony, Doc. # 136 at 67; Paniccia Testimony, Doc. # 138 at 373.) Cheever, responsible for preparing the desktop Kutrubes used at Atlas for a future employee, observed that the desktop was “surprisingly clean” of files and that “a lot” of Kutrubes’s email history was “missing.” (Cheever Testimony, Doc. # 136 at 67–68.) Cheever restored many of the files and emails that had been deleted from the desktop and notified Paniccia and Bearden of the sensitive nature of their content. (Id. at 73.) Upon advice of its counsel, Atlas then retained an information technology consultant, Dan Silva, to “run a restore” and preserve evidence on the desktop. (Paniccia Testimony, Doc. # 138 at 373; Silva Testimony, Doc. # 136 at 14.)

         In light of what it discovered on the desktop Kutrubes had used while an employee, Atlas “decline[d] [Kutrubes’s] resignation” and “instead terminate[d] his directorship and employment for cause” on December 27, 2014. (Doc. # 11-7.) In its letter to Kutrubes, Atlas detailed its findings in the “large volume of material” Kutrubes had apparently deleted from the desktop and alleged that Kutrubes had breached his fiduciary duties as a director and a shareholder and breached his “employment agreement.” (Id. at 4.) It demanded that Kutrubes and Peak Serum “immediately return to Atlas” and cease using all materials obtained from Atlas, surrender all shares of stock in Atlas, and “abandon all plans to commence business operations” similar to those conducted by Atlas. (Id.)

         D. PROCEDURAL HISTORY

         Atlas initiated this action against Kutrubes and Peak Serum on February 20, 2015. (Doc. # 1.) Shortly thereafter, Atlas filed an ex parte motion for immediate injunctive relief. (Doc. # 5.) On March 3, 3015, the Court entered a temporary restraining order that enjoined Kutrubes and Peak Serum from:

a. Using the marks EquaFETAL, FETAL㲵, ATLAS, or ATLAS BIOLOGICALS in connection with Defendants’ goods or services;

b. Using any trademark, trade dress, service mark, name, logo, design or source designation of any kind on or in connection with Defendant’s goods or services that is a copy, reproduction, colorable imitation, or simulation of, or confusingly similar to the trademarks, trade dress, service marks, names or logos of Atlas Biologicals, Inc.;

c. Using any trademark, trade dress, service mark, logo, design or source designation of any kind on or in connection with Defendant’s goods or services that is likely to cause confusion, mistake, deception, or public misunderstanding that such goods or services are produced or provided by Atlas Biologicals, Inc., are sponsored or authorized by Atlas Biologicals, Inc., or are in any way connected with, controlled by, or related to Atlas Biologicals, Inc.

d. Using and further disclosing the proprietary information and trade secrets of Atlas Biologicals to produce bovine or equine serum based products, including EquaFETAL or blended or proprietary products based on Atlas’ proprietary information and trade secrets;

e. Producing products containing EquaFETAL or EquaFETAL in combination with other products;

f. Contacting any customer or prospective customer in Atlas Biologicals, Inc.’s customer list or database; and

g. Deleting, destroying, erasing or otherwise making unavailable for further proceedings in this matter any Atlas business information, trade secrets, proprietary information, tangible or intangible property, and any information belonging to or relating to any Atlas customer or vendor which information was improperly obtained by Kutrubes or Peak Serum during Kutrubes’s employment with Atlas.

(Doc. # 17.) The temporary restraining order was set to expire on March 23, 2015. (Doc. # 38.)

         The parties then stipulated to a partial entry of a preliminary injunction. (Doc. # 26.) The parties did not agree on whether it was permissible for Kutrubes and Peak Serum to contact any customer or prospective customer in Atlas’s customer list or database, nor did they agree on the extent to which Kutrubes and Peak Serum could be ordered to return documents and information Kutrubes obtained from Atlas in the course of his employment. (Id. at 3.) The Court heard argument and received evidence on Atlas’s request for a preliminary injunction on March 23, 2015. (Doc. # 43.) It ruled from the bench that, in the absence of a non-solicitation and non-compete agreement between Atlas and Kutrubes, it did not have the authority to enjoin Kutrubes and Peak Serum from contacting all customers and potential customers in Atlas’s customer database. (Id.)

         The Court entered a preliminary injunction on March 25, 2015, enjoining Kutrubes and Peak Serum from:

a. Using the marks EquaFETAL, FETAL㲵, ATLAS, or ATLAS BIOLOGICALS in connection with Defendants’ goods or services;

b. Using any trademark, trade dress, service mark, name, logo, design or source designation of any kind on or in connection with Defendant’s goods or services that is a copy, reproduction, colorable imitation, or simulation of, or confusingly similar to the trademarks, trade dress, service marks, names or logos of Atlas Biologicals, Inc.;

c. Using any trademark, trade dress, service mark, logo, design or source designation of any kind on or in connection with Defendant’s goods or services that is likely to cause confusion, mistake, deception, or public misunderstanding that such goods or services are produced or provided by Atlas Biologicals, Inc., are sponsored or authorized by Atlas Biologicals, Inc., or are in any way connected with, controlled by, or related to Atlas Biologicals, Inc.

d. Using and further disclosing the proprietary information and trade secrets of Atlas Biologicals to produce bovine or equine serum based products, including EquaFETAL or blended or proprietary products based on Atlas’ proprietary information and trade secrets;

e. Producing products containing EquaFETAL or EquaFETAL in combination with other products; and

f. Deleting, destroying, erasing or otherwise making unavailable for further proceedings in this matter any Atlas business information, trade secrets, proprietary information, tangible or intangible property, and any information belonging to or relating to any Atlas customer or vendor which information was improperly obtained by Kutrubes or Peak Serum during Kutrubes’s employment with Atlas.

(Doc. # 46 at 2–3.) The Court also ordered that, pursuant to the agreement the parties reached at the hearing, Kutrubes and Peak Serum were to permit Silva to obtain forensic copies of all drives and media. (Id. at 3.) Finally, the Court ordered Kutrubes and Peak Serum to return to Atlas “all information, documents, and things” Kutrubes took from Atlas. (Id.)

         After more than a year of discovery, Atlas filed an Amended Complaint on November 14, 2016, asserting claims against Kutrubes and Peak Serum for: (a) federal trademark infringement, in violation of the Lanham Act, 15 U.S.C. § 1114; (b) false designation of origin and federal unfair competition, in violation of the Lanham Act, 15 U.S.C. § 1125; (c) trademark and trade name infringement under Colorado common law; (d) misappropriation of trade secrets, in violation of the Colorado Uniform Trade Secrets Act, Colo. Rev. Stat. §§ 7-74-101, et seq.; (e) “conversion and civil theft” pursuant to Colo. Rev. Stat. § 18-4-405; (f) deceptive trade practices, in violation of the Colorado Consumer Protection Act, Colo. Rev. Stat. § 6-1-105; (g) breach of fiduciary duty; (h) breach of contract; (i) unfair competition under Colorado common law; (j) copyright infringement pursuant to the federal Copyright Act, 17 U.S.C. § 504(b); and (k) attorneys’ fees. (Doc. # 101.) Atlas subsequently withdrew its claims for unfair competition under Colorado common law and for federal copyright infringement. See (Doc. # 130.) Kutrubes and Peak Serum filed an Answer to the Amended Complaint on December 5, 2016. (Doc. # 103.) Kutrubes and Peak Serum denied all of Atlas’s claims against them and asserted affirmative defenses of “the doctrine of unclean hands” and Atlas’s “successful mitigation of damages, ” among others. (Id. at 11–12.)

         In advance of trial, the parties stipulated to the following facts:

1. Defendant Thomas James Kutrubes admits he breached his duty of loyalty as an employee between October 1, 2014 and continuing until his termination in December of 2014. [Defendant Kutrubes does not admit an earlier breach of loyalty, but Plaintiff reserves the right to contend and put on evidence that Defendant Kutrubes breached his duty of loyalty beginning in 2013].

2. Defendant Thomas James Kutrubes admits that prior to his separation from employment with Plaintiff he sent certain emails to customers of Plaintiff and solicited business for his company, Peak Serum. Defendant Kutrubes admits that certain emails in which he solicited business for Peak Serum contained Plaintiff’s trademarks and/or tradenames.

3. Defendant Thomas James Kutrubes admits that prior to his separation from employment, he took certain information, documentation, and data from Plaintiff. The parties, however, have not stipulated that such information, documentation, and data constitute information, documentation, and data which is proprietary or trade secret to Plaintiff.

4. Defendants stipulate that a permanent injunction should be issued restraining Defendants from infringing upon the website FAQ which Plaintiff alleges [D]efendants infringed, and in exchange for that stipulation Plaintiff waives a claim for attorney fees and damages with respect to the copyright infringement claim only.

5. The parties stipulate that the following trade marks were owned by Plaintiff, were in use in commerce, and are valid registered or common law marks at

         all relevant dates to this litigation:

a. EQUAFETAL (U.S. Reg. No. 3, 307, 832)

b. FETAL㲵 (U.S. Reg. No. 4, 086, 021)

c. PROGENISERUM (U.S. Reg. No. 4, 354, 970).

d. FETAL CHOICE (U.S. Application serial no. 86/372, 131)

e. FETAL SELECT (U.S. Application serial no. 86/502, 135)

f. ATLAS (common law, as relates to the bovine serum industry)

g. ATLAS BIOLOGICALS (common law, as relates to the bovine serum industry).

h. FETAL RESERVE (common law, as relates to the bovine serum industry).

i. The Atlas Biologicals’ Logo depicting a carton figure of the mythical character Atlas holding a round bottom flask (common law, as relates to the bovine serum industry).

(Doc. # 123 at 12–14.)

         The Court presided over a five-day bench trial between March 5, 2018, and March 9, 2018. See (Doc. ## 131–35.) Pursuant to the Court’s direction on the last day of trial, the parties submitted proposed findings of fact and conclusions of law on May 17, 2018.^[2] (Doc. ## 154–55.)

         Approximately one month after trial, Atlas filed an Emergency Ex Parte Motion for Pre-Judgment Attachment and Injunctive Relief Against Further Conveyances of Assets by Kutrubes. (Doc. # 142.) Atlas alleged therein that on April 4, 2018, Kutrubes “purported to transfer all of his stock in [Atlas] to Biowest, LLC, a Missouri limited liability company, whose president and CEO is Wendell Leinweber.” (Id. at 2.) However, Atlas continued, this transfer was unsuccessful (i.e., not completed) because “no endorsed share certificate ha[d] been tendered nor a request for a transfer on the books and records of Atlas . . . ha[d] been made.” (Id.) The appropriate remedy, according to Atlas, was prejudgment attachment of Kutrubes’s shares of its stocks pursuant to Colorado Rule of Civil Procedure 102(c). (Id. at 6–7.) Kutrubes responded in opposition, arguing that he had successfully transferred his stock to Biowest, LLC and requesting “an injunction preventing Atlas and its shareholders [and] officers . . . from holding any shareholder meetings, amending corporate bylaws, or otherwise taking actions that would impact any minority shareholder until such time as the dispute with respect to ownership of shares is resolved.” (Doc. # 145 at 8.) The Court issued a Writ of Attachment on April 24, 2018, that ordered the Sheriff of Larimer County, Colorado, to “attach and safely keep any stock of [Atlas] owned by [Kutrubes].” (Doc. # 147.) The parties are litigating ownership of the shares in another matter, Atlas Biologicals, Inc. v. Thomas James Kutrubes and Biowest, LLC, 18-cv-00969-CMA-MEH. The status of the shares has no bearing on Atlas’s claims and Kutrubes’s and Peak Serum’s affirmative defenses in this matter.

         II. CONCLUSIONS OF LAW

         A. ATLAS’S CLAIM FOR FEDERAL TRADEMARK INFRINGEMENT AND CLAIM FOR COLORADO COMMON LAW TRADEMARK AND TRADE NAME INFRINGEMENT

         The Court addresses Atlas’s claim for federal trademark infringement and its claim for Colorado common law trademark and trade name infringement together because the claims are comprised of nearly identical elements.

         With regard to the federal claim, under the Lanham Act, a party infringes another’s trademark when it uses a similar mark in commerce and “such use is likely to cause confusion.” 15 U.S.C. § 1114(1)(a); Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831, 832–33 (10th Cir. 2005). Section 32 of the Lanham Act allows the owner of a registered mark to bring a civil action for infringement against any person who “use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of [the] registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.” Id.; 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1238 (10th Cir. 2013). To establish a trademark infringement claim, the mark owner must prove that: (1) the mark is valid and protectable; (2) the defendant used the mark in commerce without consent; and (3) the defendant’s use of the mark is likely to cause confusion. KMMentor, LLC v. Knowledge Mgmt. Prof’l Soc’y, Inc., 712 F.Supp.2d 1222, 1241 (D. Kan. 2010) (citing Utah Lighthouse Ministry v. Found. for Apologetic Info. & Research, 527 F.3d 1045, 1050–57 (10th Cir. 2008)).

         As to the Colorado common law claim, the Colorado Supreme Court “has consistently recognized and followed a policy of protecting established trade names and preventing public confusion, and the tendency has been to widen the scope of that protection.” Wood v. Wood’s Homes, Inc., 519 P.2d 1212, 1215–16 (Colo.App. 1974). The elements of common law trademark infringement in Colorado are virtually indistinguishable from those required to provide trademark infringement under the Lanham Act. Donchez v. Coors Brewing Co., 392 F.3d 1211, 1219 (10th Cir. 2004). “[A] plaintiff must establish a protectable interest in its mark, the defendant’s use of that mark in commerce, and the likelihood of consumer confusion.” Id. Similar to federal trademark law, “[t]he test in Colorado is whether the public is likely to be deceived.” Wood, 519 P.2d at 1216 (citing Swart v. Mid-Continent Refrigerator Co., 360 P.2d 440 (Colo. 1961)).

         The third element of these claims-the likelihood of confusion-is the key inquiry. Team Tires Plus, 394 F.3d at 833. The Court of Appeals for the Tenth Circuit has identified six factors that aid in determining whether a likelihood of confusion exists between two marks: (a) the degree of similarity between the marks; (b) the intent of the alleged infringer in adopting its mark; (c) evidence of actual confusion; (d) the relation in use and the manner of marking between the goods or services marketed by the competing parties; (e) the degree of care likely to be exercised by purchasers; and (f) the strength or weakness of the marks. King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1089–90 (10th Cir. 1999) (internal citation omitted). “No one factor is dispositive, and the final determination of likelihood of confusion must be based on consideration of all relevant factors.” Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 554 (10th Cir. 1998) (internal citation omitted).

         Atlas alleges that Kutrubes infringed on its trademarks and trade names by “sen[ding] existing and prospective Atlas customers numerous emails” containing Atlas’s marks and names in an effort to promote Peak Serum’s products and by “displaying prominently” on Peak Serum’s Google webpage^[3] Atlas’s marks and names. (Doc. # 101 at 11.) Atlas asserts that Kutrubes’s and Peak Serum’s use of their trademarks and trade names was “knowing, intentional, [and] willful” and was “carried out with clear intent to trade on the reputation and goodwill associated with Atlas” and to “divert and harm Atlas’[s] business.” (Id. at 11–12.)

         1. Factual findings specific to the claims

         The parties stipulated to the first and second elements of the trademark infringement claims. See (Doc. # 154 at 2.) As to the first element, they agreed that Atlas owned and used in commerce valid registered or common law marks and names, including EQUAFETAL, ATLAS, and Atlas’s logo at all relevant times. (Doc. # 123 at 13–14.) With respect to the second element, Kutrubes admitted that “certain emails in which he solicited business for Peak Serum contained [Atlas’s] trademarks and/or trade names.” (Id. at 13.) He also acknowledged at trial that for a time in 2015, the Google page for Peak Serum contained “all of the information” and “all of the testimonials” from Atlas’s Google page. (Kutrubes Testimony, Doc. # 140 at 796.) The Court thus only makes findings of fact relevant to the third element, that Kutrubes’s and Peak Serum’s use of Atlas’s marks was likely to cause confusion.

         In the emails that Kutrubes sent from his Atlas-provided account to Atlas’s customers and prospective customers, Kutrubes explicitly referred to Atlas’s products and included his email signature, which identified him as the National Sales Manager of Atlas and contained Atlas’s contact information and logo. For example, in an email dated November 5, 2014, to Yunjeong Lee of Daemyung Science Co., Ltd., Kutrubes wrote that he was in the process of “trying to obtain a . . . [fetal bovine serum] source (separate from Atlas)” and was “going to form a new company in 2015 to help provide international customers the option of [fetal bovine serum] since Atlas has discontinued supply.” (Trial Ex. 67 at 4.) He suggested to Lee that Daemyung could buy fetal bovine serum from his new company, put its “own serum label on the bottle[s], ” and “sell Daemyung brand [fetal bovine serum], ” which “would be easier than EquaFETAL.” (Id.) At the bottom of the email, Kutrubes included his signature with Atlas’s name, logo, and contact information. (Id.); see (Cheever Testimony, Doc. # 136 at 162; Trial Exs. 69, 70, 316, 369, 413, 421.)

         Atlas’s customers and potential customers were confused by Kutrubes’s use of Atlas’s marks and names in these promotional emails. Returning to the example of Kutrubes’s email exchange with Lee of Daemyung, in response to Kutrubes’s statement that he was going to form a new company separate and apart from Atlas because Atlas was discontinuing its supply of fetal bovine serum, Lee asked on behalf of Daemyung’s chief executive officer, “Are you going to leave Atlas . . . and make a new company? Will Atlas . . . stop supplying all [fetal bovine serum] products from [sic] 2015? Can’t we have FetalPlus or EquaFETAL since [sic] 2015?” (Trial Ex. 67 at 1.) Cheever accurately characterized Lee’s questions: “That is confusion.” (Cheever Testimony, Doc. # 136 at 163); see also (Paniccia Testimony, Doc. # 138 at 403–10.) Paniccia testified that as a ...