Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Steiner Indus., Inc. v. Auburn Mfg., Inc., No. 07 C 668, 2007 WL 1834176 (N.D. Ill. Jun. 22, 2007) (Darrah, J.).

Judge Darrah denied declaratory judgment defendant Auburn Manufacturing’s (“Auburn”) motion to dismiss. Auburn argued that plaintiff’s (collectively “DJ Plaintiffs”) suit improperly anticipated Auburn’s complaint which alleged Lanham Act claims of false designation and false advertising, as well as related state law claims. Auburn filed its complaint in the District of Maine within a week of DJ Plaintiffs’ filing. Auburn alleged that DJ Plaintiffs’ use of “FM Approved” and “Made in the USA” in their catalogs and website advertising in connection with their welding blankets constituted false designation and false advertising. DJ Plaintiffs were aware of the allegations before they filed suit because, as part of an ongoing negotiation with plaintiffs, Auburn had provided plaintiffs a copy of its complaint. The Court acknowledged its discretion to dismiss the case in favor of Auburn’s later filed complaint, but did not dismiss the case. The two cases mirrored each other, so either could resolve the parties’ dispute. And because both cases were filed in federal courts, there was no concern that the DJ case would cause friction between federal and state courts. The deciding issue was whether the Maine Court could offer a full remedy. DJ Plaintiffs had a motion to transfer or dismiss pending before the Maine Court. In that motion, DJ Plaintiffs argued that the Maine Court lacked personal jurisdiction over two of the three DJ Plaintiffs – Steiner Industries, Inc. and Lab Safety Supply, Inc. DJ Plaintiffs, therefore, asked the Maine Court to transfer the case to the Northern District of Illinois or to dismiss the case.  The Court held that if the Maine Court transferred the case to the Northern District or dismissed Steiner and Lab Safety for lack of jurisdiction, those factors would weigh in favor of maintaining the DJ action. If, however, the Maine Court denied DJ Plaintiffs’ motion and held that it had jurisdiction over all DJ Plaintiffs, then the Main Court could more effectively decide the dispute than the Northern District. The Court, therefore, denied the motion to dismiss with leave to refile if the Maine Court finds it has jurisdiction over all DJ Plaintiffs and does not transfer the case to the Northern District.

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 1576124 (N.D. Ill. May 29, 2007) (Kennelly, J.).

Judge Kennelly denied plaintiff’s motion for reconsideration of the Court’s decision that plaintiff’s "Beef Stick" and "Turkey Stick" marks were generic and the Court’s cancellation of the Beef Stick mark (you can read more about that opinion in the Blog’s archives). The Court denied plaintiff’s argument that it should be given more time, pursuant to Fed. R. Civ. P. 56(f) to conduct a survey to show that the marks are not generic. But the Court reasoned that plaintiff was free to conduct such a survey in the fourteen months of discovery leading up to defendant’s summary judgment motion. Furthermore, in its responsive briefing plaintiff specifically stated that plaintiff would “not seek to delay the briefing of this matter with its own survey at this time.” Instead, plaintiff suggested that it would conduct a survey if the Court denied defendant’s summary judgment motion. The Court held that after these statements, plaintiff’s current request to perform a survey was almost “frivolous.”

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Republic Tobacco L.P. v. North Atlantic Trading Co., No. 06 C 2738, 2007 WL 1424093 (N.D. Ill. May 10, 2007) (Der-Yeghiayan, J.).*

Judge Der-Yeghiayan granted plaintiff/counter-defendant Republic Tobacco’s (“Republic”) motion for summary judgment on defendant/counter-plaintiff North Atlantic Trading’s (“North Atlantic”) counterclaims and granted North Atlantic’s motion for summary judgment as to each of Republic’s claims. Republic brought claims against North Atlantic for Lanham Act false advertising, violation of the Illinois Uniform Deceptive Trade Practices Act (“IDTPA”) and other state law claims, all arising out of an allegedly “false and misleading” presentation entitled “Cigarette Paper Review” (“CPR”) which North Atlantic allegedly gave to various Republic customers. The CPR allegedly criticized Republic, saying among other things that Republic’s cigarette rolling papers were the same as North Atlantic’s and that Republic’s Chairman Donald Levin had “lied” about the composition of Republic’s cigarette papers. North Atlantic filed counterclaims alleging Lanham Act false advertising, violation of the IDTPA and other state law claims, all arising out of Republic’s alleged sales of orange cigarette papers similar in color and size to North Atlantic’s orange Zig-Zag papers, for the purpose of confusing or deceiving consumers.

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Papa John's Int'l, Inc. v. Rezko, No. 04 C 3131, 2007 WL 1521472 (N.D. Ill. May 21, 2006) (Moran, J.).

Relying on its prior opinion, which included a detailed analysis of the Complaint and notice pleading standards (you can read discussion of that opinion in the Blog's archives), the Court denied defendants' various Fed. R. Civ. P. 12(b)(6) motions to dismiss plaintiff's trade secret and trademark infringement claims.  Defendants argued that plaintiff did not sufficiently which defendants were alleged to have performed the acts at issue.  But the Court reasoned that defendants had notice of plaintiff's claims and that notice is all the Federal Rules require.  The Court pointed out that it had "covered much of this same ground in much greater detail" in its prior opinion and cautioned that "this case will not go away for any defendant by a motion to dismiss . . . ."

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Days Inns Worldwide, Inc. v. Lincoln Park Hotels, Inc., No. 06 C 2960, 2007 WL 1455798 (N.D. Ill. May 16, 2007) (Der-Yeghiayan, J.)

Judge Der-Yeghiayan granted in part defendants' motion for reconsideration of the Court's award of plaintiff's attorneys fees' and costs for preparing summary judgment motions.  Plaintiff owns various marks relating to its Days Inn chain (the "Days Inn Marks").  Plaintiff licensed defendants Lincoln Park Hotels, Inc. and Richard Erlich (collectively "LPH") to use the Days Inn Marks in connection with the operation of a hotel in Chicago's Lincoln Park neighborhood.  In 2005, LPH sold the hotel to defendant Gold Coast Investors ("GCI") without informing plaintiff, in violation of the parties' license agreement.  GCI continued operating the hotel using the Days Inn Marks without licensing the rights to the marks from plaintiff.  As a result, plaintiff brought this suit against defendants alleging that, among other things, GCI infringed plaintiff's Days Inn Marks and LPH contributorily infringed plaintiff's Days Inn Marks by selling the hotel to GCI with the knowledge that GCI intended to continue using the Days Inn Marks and without informing plaintiff of the sale or removing the Days Inn Marks from the hotel, as required in the parties' license agreement.  In February, the Court granted plaintiff's summary judgment motion on twelve of fifteen counts and dismissed the remaining three counts as moot (you can find discussion of that opinion in the Blog's archives).  The Court also awarded plaintiff its attorneys' fees, approximately $150,000, for preparing its summary judgment motion.  Defendants moved the Court to reconsider, arguing that the Court should have required the parties to meet to resolve the attorneys fees dispute pursuant to  Local Rule 54.3 before ruling on the fees and that the Court should specifically apportion the fees between defendants.  The Court held that it was not required to follow the Local Rule 54.3 procedure in this case because defendants did not object to plaintiff's requests for fees made in its summary judgment briefing and because additional briefing required by the rule would not have benefited the Court because of its intimate knowledge of the case.  The Court did, however, apportion the fees that it was able to identify as only applicable to one group of defendants.  And the Court awarded an additional $35,000 of fees and costs that had not been presented in the initial motion.

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Gencor Pacific, Inc. v. Nature's Thyme, LLC, No. 07 C 167, 2007 WL 1225362 (N.D. Ill. Apr. 24, 2007) (Kocoras, J.).

Judge Kocoras granted defendants' Fed. R. Civ. P. 12(b)(2)&(3) motion to dismiss for lack of personal jurisdiction and venue and dismissed the case.  Plaintiff brought this Lanham Act false advertising and copyright infringement case alleging that defendants used portions of plaintiff's copyrighted studies regarding the efficacy of a weight-loss and appetite suppressant containing Caralluma Fimbriata extract.  Defendants, a business and two individuals employed by the business, were residents of New Jersey and had a single sale to an Illinois customer, valued at $300.  Defendants only other contacts with Illinois were an interactive website accessible in Illinois and the fact that one or two of defendants' general solicitations may have been sent to Illinois.  Defendants did not own property in Illinois and there was no proof that any defendants sent any of the allegedly infringing information to Illinois.  The Court held these contacts were not sufficient to create either general or specific jurisdiction.  The Court also held that venue was not proper in the Northern District of Illinois because defendants were not residents of Illinois and the acts at issue in the suit did not occur in the Northern District.

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Flentye v. Kathrein, __ F. Supp.2d __, 2007 WL 1175576 (N.D. Ill. Apr. 18, 2007) (Filip, J.).

Judge Filip denied defendants' motions to dismiss, except as to plaintiffs' claim for punitive damages for intentional infliction of emotional distress, because Illinois law does not allow punitives for IIED.  Plaintiffs (collectively "Flentye") promoted apartment rental services , including some properties owned by Flentye, using their family name, Flentye.  Defendants competed with Flentye promoting similar apartments, some of which were owned by defendant Kathrein LLC.  Flentye brought suit against defendants alleging violations of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), Lanham Act unfair competition and related state law claims.  Flentye alleges that defendants lost a dispute before the UDRP and were forced to return certain domain names to Flentye, including timflentye.com, flentye.com and flentyeproperties.com.  Flentye alleged that defendants then registered new domain name timflentye-not.com and used it to direct traffic to defendants' competing websites.  Flentye also alleged that defendants improperly used the term "Flentye" in its meta tags (key words embedded into a site's source code to director search engines to the site) to direct users seeking information regarding Flentye to defendants sites. 

Defendants first argued that Flentye failed to plead its veil-piercing claims and that, therefore, corporate defendant Kathrein LLC should be dismissed because there were not sufficient allegations against it without a veil-piercing theory.  But the Court held that notice pleading was sufficient for a veil-piercing argument and that Flentye met the notice standard.  It was sufficient that Flentye pled that individual defendant Kathrein  created defendant Kathrein LLC "for the sole purpose of holding title to local real estate through which [Kathrein] operates Lee Street Management" and that in the caption Kathrein LLC was identified as "d/b/a Lee Street Management."  The Court noted that while these allegations might not be sufficient to prove that the veil was pierced, they were sufficient for Fed. R. Civ. P. 8(a) notice pleading.  The Court also noted that a claim of corporate veil-piercing did not require Fed. R. Civ. P. 9(b) heightened pleading.

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Top Tobacco, L.P. v. North Atl. Operating Co., No. 06 C 950, 2007 WL 118527 (N.D. Ill. Jan. 4, 2007) (Kennelly, J.).

Judge Kennelly granted defendants' motion for attorneys' fees and granted in part their bill of costs.  In January, Judge the Court granted summary judgment for defendants on plaintiff's trademark, unfair competition and dilution claims (read more about that decision in the Blog's archives).  The Court ruled that no reasonable jury could find that consumers were confused between plaintiffs' TOP mark and defendants' "Fresh-Top Canister" mark.  Defendants then filed the instant bill of costs and motion for attorneys' fees arguing that the case was exceptional.  The Court held the case exceptional for three reasons.  First, the Court found that plaintiffs' infringement and dilution claims were "exceptionally weak" stating that "a simple look at the canisters as they appeared on store shelves shows the virtual impossibility that consumers would be confused . . . ."  The Court disregarded plaintiffs' purported evidence of actual confusion, which it presented for the first time in its response to the motion for attorneys' fees.  Second, plaintiffs argued before the PTO that other "top" marks in the tobacco classification were narrow.  But before the Court plaintiffs took the "diametrically opposite" position, arguing that their TOP mark should enjoy broad protection.  Third, the Court found defendant Top Tobacco's chairman Donald Levin's testimony that the two products looked identical because they were both cans of tobacco "absurd."  The Court analogized Levin's argument to the position that all the books on library shelves are identical because they are all books, without regard to their titles, jacket designs or colors.

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Chicago Tribune Co. v. Fox News Network LLC, No. 07 C 0865, 2007 WL 1052508 (N.D. Ill. Apr. 4, 2007) (Bucklo, J.).*

Judge Bucklo denied plaintiff Chicago Tribune's ("Tribune") motion for a preliminary injunction.  The Tribune sought an injunction which would have required defendant Fox News Networks ("Fox") to change the name of its "Redeye" late-night television news program based upon alleged infringement of the Tribune's Redeye mark related to its Redeye newspaper.  The Court held that the Tribune had only shown a "possibility" that it would prevail on the merits.  The Court found that the Tribune's Redeye mark was at least suggestive and, therefore a strong mark.  And the Court held that while the marks did not visually resemble each other, the Tribune proved a likelihood that the marks were aurally identical.  But the evidence did not favor the Tribune on either of the other two "most important" factors in deciding likelihood of confusion:  defendant's intent and actual confusion.  No evidence showed that Fox "passed off" its program as coming from the Tribune, so the issue of Fox's intent favored Fox.  As to actual confusion, the Tribune put forth a witness that testified that he suffered "momentary actual confusion" when he first learned of Fox's Redeye program, but that it was cleared up almost immediately by someone he was talking with about the program.  Additionally, the witness did not have cable television, so could not watch the show.  While initial confusion can be sufficient to show actual confusion, the Court disregarded the witnesses testimony because he admitted that he was a consumer of neither the Tribune's nor Fox's products. 

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Hickory Farms, Inc. v. Snackmasters, Inc., No. 05 C 4541, 2007 WL 772919 (N.D. Ill. Mar. 8, 2007) (Kennelly, J.).

Judge Kennelly held that plaintiff's "Beef Stick" and "Turkey Stick" marks were generic and canceled the Beef Stick mark, plaintiff had already let its "Turkey Stick" registration lapse.  Plaintiff alleged that defendant infringed its marks by marketing defendant's beef and turkey snacks in stick forms and labeling them "Beef Sticks" and "Turkey Sticks," respectively.  But defendant countered with evidence that numerous companies use the terms to refer to meat products sold sell in stick form.  For example, Trader Joe's, Flat Iron, Jimmy Dean, Slim Jim and Tombstone all sell meat stick products using the marks.  The Court held that the terms were generic because they name a class of goods -- meat packaged in a stick form.  The Court also noted that "it [was] difficult to imagine what else a seller would call a beef or turkey product packaged in stick form."

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Allied Ins. Co. v. Bach, No. 05 C 5945, 2007 WL 627635 (N.D. Ill. Feb. 27, 2007) (Leinenweber, J.).

Judge Leinenweber granted declaratory judgment defendants/counter-plaintiffs (collectively "defendants") summary judgment DJ plaintiff/counter-defendant's ("plaintiff") duty to defend defendants against Lanham Act and related state law claims.  Defendants were sued by third party Acushnet which accused defendants of willful and intentional violation of Acushnet's marks related to its Titlest Pro VI golf ball based upon defendants' alleged marketing of counterfeit golf balls.  Defendants sought defense and indemnification from plaintiff, their insurer.  Defendants' insurance policy covered, among other things, defendants' infringement of third party marks or copyrights in defendants' advertising so long as the infringement was not done with knowledge or intent of the infringement.  Although the Complaint charges defendants' with willful and intentional violations of the marks, the Lanham Act provides claims without regard to intent.  Because not all of Acushnet's claims require intent, plaintiff has a duty to defend defendants' against the suit.  The Court did note, however, that should Acushnet prove that defendants' acts were willful and intentional, plaintiff would have no duty to indemnify.

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Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Manufacturing Co., No. 02 C 4048, 2007 WL 465423 (N.D. Ill. Feb. 6, 2007) (Zagel, J.).

Judge Zagel held that the Court had jurisdiction over plaintiff's trademark infringement action and ordered defendant to respond to plaintiff's summary judgment motion on the merits of the case.  In October 2002, the Court stayed the case pending resolution of contractual disputes related to ownership of the marks at issue in an Italian court.  The Court lifted the stay in May 2005.  Plaintiff distributed defendant's accordions in the United States.  In 1997, Plaintiff registered the mark at issue, which defendant claims to own.  While the contract at issue in the Italian court may play a role in determining ownership of the mark, the Court held that if plaintiff can prove ownership of the mark prior to the Agreement, then the Court can exercise jurisdiction and resolve the trademark infringement dispute.

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Specialized Seating, Inc. v. Greenwich Indus., L.P., 472 F. Supp.2d 999 (N.D. Ill. Feb. 2, 2007) (Holderman, C.J.).

Judge Holderman held declaratory judgment defendant's, Greenwich Industries ("Greenwich"), trademark invalid and held that Greenwich committed fraud on the USPTO while prosecuting its trademarks.  Declaratory judgment plaintiff, Specialized Seating ("Specialized"), and Greenwich are competing manufacturers of folding chairs.*  Greenwich has a trademark to a configuration of a folding chair with certain physical characteristics.  Because Greenwich secured patents for most or all of the features identified in its trademark, the Court held that Greenwich's trademark was functional and, therefore, invalid.  In addition to having held patents on the claimed features, Greenwich had also touted the functional benefits of the features in advertising.

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International Profit Assocs., Inc. v. Paisola, 461 F. Supp.2d 672 (N.D. Ill. Nov. 14, 2006) (Bucklo, J.).

Judge Bucklo held that plaintiff was likely to succeed on its Lanham Act and cyberpiracy or cybersquatter, 15 U.S.C. Section 1125(d), claims and issued a temporary restraining order ("TRO") preventing defendants from conduct that likely infringed plaintiff's trademarks.  Based upon the cyberpiracy claim, Defendants were ordered to stop making content available through their website, www.ipaopinion.com, which was likely confusingly similar to plaintiff's site, www.ipaopinions.com.  The Court also ordered defendants to stop using plaintiff's trademarks as search terms in Google's Adwords program. 

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Top Tobacco, L.P. v. North Atl. Operating Co., No. 06 C 950, 2007 WL 118527 (N.D. Ill. Jan. 4, 2007) (Kennelly, J.).

Judge Kennelly granted summary judgment for defendants on plaintiff's trademark, unfair competition and dilution claims.  Plaintiffs, Top Tobacco and Republic Tobacco ( collectively "Top Tobacco ") own various trademarks associating the word "top" or a picture of a toy top with tobacco products.  Both Top Tobacco and defendant, North Atlantic Operating and National Tobacco Company ("National Tobacco"), are large players in the "make your own" and "roll your own" cigarette market.  Top Tobacco alleged that its Top marks were infringed and diluted by National Tobacco's use of its "Fresh-Top Canister" mark.  The Court granted summary judgment of non-infringement because it ruled that no reasonable jury could find that consumers were confused between Top Tobacco's TOP mark and National Tobacco's "Fresh-Top Canister" mark.  The Court held that they were visually distinct and cited Top Tobacco's remarks to the USPTO during prosecution of its marks that its TOP marks were visually distinct from marks relating to lids, as does the National Tobacco mark.  Additionally, the Court noted that Top Tobacco had chosen not to present a consumer survey to show actual confusion and did not explain why no survey was done.

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Best Vacuum, Inc. v. Ian Design, Inc., No. 04 C 2249, 2006 WL 3486879 (N.D. Ill. Nov. 29, 2006) (Hort, J.).

In this trademark and Lanham Act unfair competition suit, Judge Hort granted summary judgment for defendant and dismissed the case.  Plaintiff had operated under the name "Best Vacuum" since 1983 and operated a www.bestvacuum.com website since 1996.  In 2003, defendant began operating a www.bestvacuumcleaners.com website, but when plaintiff complained, defendant changed its website to www.bestchoicevacuums.com.  After defendant refused to take down its second site, plaintiff sued.  Plaintiff's trademark infringement claim was dismissed earlier in the case because plaintiff never registered its "Best Vacuum" mark.  The case was before the Court on cross summary judgment motions.

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Gail Green Licensing & Design Ltd. v. Accord, Inc., No. 05 C 5303, 2006 WL 2873202 (N.D. Ill. Oct. 5, 2006) (St. Eve, J.).

Judge St. Eve dismissed plaintiffs's Lanham Act false advertising claim, but refused to dismiss plaintiffs's breach of contract claim, among others.  Both claims are based upon defendants's receipt of plaintiffs's copyrighted designs for pet clothing and accessories pursuant to a Non-Disclosure and Confidentiality Agreement (the "NDA") and defendants's subsequent alleged sale of  goods based upon plaintiffs's copyrighted designs.

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