Box Acquisitions, LLC d/b/a Box Partners, LLC v. Box Packaging Prods., LLC, No. 12 C 4021, Slip Op. (N.D. Ill. Mar. 26, 2014) (Kocoras, J.).
The Court granted summary judgment for defendant in this Lanham Act case involving alleged trademark infringement regarding plaintiff’s BOX PACKAGING trademarks. The “key issue” was whether BOX PACKAGING was a protectable mark or was unprotectable as a descriptive term that has not acquired sufficient secondary meaning.
The Court held that BOX PACKAGING was descriptive as a matter of law. No imagination was required to connect BOX PACKAGING to the box and packaging services offered by plaintiff. The fact that plaintiff did more than just distribute boxes and packaging did not sway the Court because all of plaintiff’s services encompass boxing and packaging somehow. The Court was also swayed by how other companies used “Box Packaging” within the industry. The fact that BOX PACKAGING is not defined in the dictionary was not enough to avoid summary judgment of descriptiveness.
Regarding secondary meaning, plaintiff did not offer any direct evidence, which comes from consumer testimony or consumer surveys. The Court, therefore, turned to the circumstantial evidence. Plaintiffs use of BOX PACKAGING was not exclusive, many others used the phrase. And the fact that plaintiff largely stopped using BOX PACKAGING in favor of BOX PARTNERs weighed against a finding of secondary meaning.
Furthermore, plaintiff offered no evidence of advertising or sales figures to support secondary meaning based upon such expenditures. The Court also held that plaintiff’s evidence of intentional copying was weakened because plaintiff chose a descriptive mark.
Plaintiff’s proof of actual confusion was insufficient because plaintiff could not identify the customers that allegedly expressed confusion.
The Court granted summary judgment regarding plaintiff’s claims that defendant sought to fraudulently register its trademark because there were several other entities using versions of the mark. So, the fact that defendants were aware of plaintiff did not suggest that defendants could not register their marks.
The Court also granted summary judgment as to defendant’s purchase of various “boxpackaging” domain names because plaintiff was not actively using BOX PACKAGING at the time, noting that had defendants acted when plaintiff was actively using the mark the result “could have been vastly different.”
NanoChem Sol’ns, Inc. v. Global Green Prods., LLC., No. 10 C 5686, Slip Op. (N.D. Ill. Sep. 10, 2013) (Hart, Sen. J.).
Judge Hart denied defendants’ motion in limine to exclude plaintiff NanoChem’s late-disclosed lost profit damages analysis. The Court also granted defendants’ motion for summary judgment as to NanoChem’s Lanham Act and Illinois state law unfair competition claims.
During discovery, NanoChem stated that it would seek a reasonable royalty for its patent claims without providing a calculation. In response to defendant’s motion, NanoChem provided a lost profit calculation. While the calculation was late, defendants were not prejudiced because the final pre-trial order had not been filed yet and NanoChem did not rely upon an expert. But NanoChem was limited to the offered calculation and no other damages theories.
The Court granted defendants summary judgment as to NanoChem’s Lanham Act and Illinois unfair completion claims. Each claim required that NanoChem prove that its A-5D mark had acquired secondary meaning. Because NanoChem did not offer evidence supporting secondary meaning, the Court granted defendants summary judgment.
Spitz v. Proven Winners N. Am., LLC, No. 11 C 3997, Slip Op. (N.D. Ill. Aug. 22, 2013) (Hart, Sen. J.).
Judge Hart granted defendants’ motion for summary judgment in this trade secret case involving alleged trade secrets identifying pet-friendly plants. Plaintiff alleged that defendants used plaintiff’s trade secret identification of pet-friendly plants without paying the agreed upon $.02 per pet-friendly plant sold. As an initial matter, the Court denied to strike either parties Local Rule 56.1 statements or responses. Each party claimed that the other did not comply with various portions of Local Rule 56.1, but to the extent the Court was able to understand and use the statements, it would do so without striking any party’s statements. The Court did, however, disregard extraneous facts included in plaintiff’s responses to defendants’ statements of fact, instead of in a Local Rule 56.1 additional statement of facts.
The Court held that plaintiff did not provide sufficient evidence that defendants’ association of a pet-friendly label with certain plants on its website came from plaintiffs’ trade secret information. Instead, the evidence suggested that the information was publicly available. The Court also granted defendants summary judgment as to plaintiff’s other non-IP contract and tort claims, but I will not detail those because they do not have significant IP implications.