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.”
Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 06914, Slip Op. (N.D. Ill. Sept. 26, 2013) (Kocoras, J.).
Judge Kocoras denied defendant Beissbarth’s Fed. R. Civ. P. 12(b)(2) motion to dismiss for lack of personal jurisdiction in this patent infringement case involving patents relating to an optical wheel alignment system. Plaintiff asserted jurisdiction over Beissbarth was proper pursuant to Fed. R. Civ. P. 4(k)(2) that establishes jurisdiction if: (1) the plaintiff’s claim arises under federal law: (2) the defendant is not subject to jurisdiction in any state’s court of general jurisdiction; and (3) the exercise of jurisdiction comports with due process. The first requirement was uncontested. The second requirement was satisfied because Beissbarth refused to identify another forum where jurisdiction would be proper. Under the Federal Circuit’s burden shifting approach, if a defendant asserts that it cannot be sued in the form state and refuses to identify any other state where suit is possible, Rule 4(k)(2) may be used to establish jurisdiction. The third requirement of Rule 4(k)(2) was satisfied under the Federal Circuit’s three-part test to determine if personal jurisdiction over a foreign defendant comports with due process: Beissbarth purposefully directed its activities at residents of the United States; the claims against Beissbarth “arise out of” and “relate to” Beissbarth’s activities in the United States; and, exercising jurisdiction would be reasonable and fair.
Snap-On Inc. v. Robert Bosch, LLC, No. 09 C 6914, Slip Op. (N.D. Ill. July 11, 2012) (Kocoras, J.).
Judge Kocoras denied defendants’ Beissbarth GmbH (“Beissbarth”) and Robert Bosch, GmbH’s (“Bosch Germany”) (collectively “German Defendants”) Fed. R. Civ. P. 12(b)(6) motion to dismiss. As an initial matter, the court denied plaintiff Snap-On’s argument that the motion was an improper Rule 12(b) motion pursuant to Rule 12(g)(2) because the German Defendants previously filed a Rule 12(b)(2) motion to dismiss for lack of personal jurisdiction. The Court ordered limited jurisdictional discovery prior to deciding that motion. That discovery had become “highly contested.” The German Defendants sought and received the Court’s leave to file this Rule 12(b)(6) motion because were the motion granted, it would have removed the need for that discovery. The Rule 12(b)(6) motion, therefore, was not filed for dilatory purposes and it promoted the policies behind Rule 12(g).
Of particular note, the Court held the following with respect to the Rule 12(b)(6) motion:
- General allegations that all defendants directly infringed were sufficient. Snap-On was not required to make separate infringement allegations as to each defendant by name.
- Snap-On’s claim that the German Defendants used the product in Illinois was sufficient to plead direct infringement.
- Snap-On was not estopped from pursuing inducement claims based upon Snap-On’s statements to the Court regarding claiming direct infringement against the German Defendants. Those statements were about direct infringement as opposed to joint infringement claims, and had no bearing upon indirect infringement claims.
- Snap-On’s allegations were sufficient to plead inducement. Snap-On alleged the German Defendants worked with defendant Robert Bosch USA to develop, price, and market the accused products and that Snap-On sent Bosch a warning letter prior to the US introduction of the accused product. Snap-On’s failure to use the words “induce” or “inducement” did not doom its claim because Snap-On still pled the elements of inducement.