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

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Jun. 9, 2010) (Darrah, J.).

Judge Darrah granted in part defendants' bill of costs after defendants prevailed in a trademark infringement trial – click here for much more on the case in the Blog's archives. The Court awarded deposition transcript fees, but only up to the then applicable Northern District costs - $3.30 per page for an original transcript and $.83 per page for a copy. Because defendants did not show they were reasonably necessary, the Court did not award costs for condensed transcripts, word indexes, or delivery charges. 

The Court awarded costs for daily trial transcripts because they were necessary for direct and cross-examinations during trial and post-trial findings of fact. The Court awarded photocopying costs at $.10 per page only to the extent defendants showed the purposes of the copying. Finally, the Court awarded the costs of making the defendants' trial exhibits, excluding shipping costs. 

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AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Mar. 8, 2010) (Darrah, J.).

Judge Darrah, after a bench trial, held that defendant’s use of his Oil Zone and Wash Zone marks did not create a likelihood of confusion with plaintiff AutoZone’s Auto Zone trademarks.*

Likelihood of Confusion

Only one of the seven likelihood of confusion factors weighed in AutoZone’s favor – the strength of AutoZone’s mark. But the strength of the mark was outweighed by the dissimilarity of both the marks and the services offered by the parties. Apart from the common use of the word “zone” there was little similarity between plaintiff’s AutoZone and defendant’s Oil Zone/Wash Zone. And while AutoZone sells auto parts, defendant performs automatic services.

Laches

AutoZone’s four-year delay exceeded the analogous Consumer Fraud and Deceptive Business Practices Act three-year statute of limitations. The fact that defendant’s alleged infringement “fell through the cracks” and was not acted on for four years, was not a sufficient excuse for the delay. And defendant was prejudiced by AutoZone’s delay based upon defendant’s four years of advertising the Oil Zone/Wash Zone names.

*  Click here for more on this case in the Blog’s archives.

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Here are a few stories from the blogosphere that I did not have time to fully cover this week because of pressing client matters and some new opportunities:

• The Federalist Society is offering an excellent podcast discussing Bilski from almost every possible angle.  The podcast features West Virginia University Law Professor Michael Risch and American University Law Professor Joshua Sarnoff, who filed competing amicus briefs.  The podcast is a half-hour well spent for  anyone involved in patent law.  Click here to listen to the podcast.  Hat tip to Duncan Bucknell at the IP Think Tank Blog for pointing out the podcast.
   
• Doug Lichtman's IP Colloquium takes a thorough look at the copyright issue of the year thus far, Shepard Fairey's iconic Obama image, and Lichtman offers free CLE credit for listening.  Click here for that edition and here for the IP Colloquium's archives.
   
• Michael Atkins has identified the top five trademark cases of the last year at the Seattle Trademark Lawyer.  Number 4 is the Seventh Circuit's decision in AutoZone v. Strick.  Click here for more on the district court decisions in the case from the Blog's archives.  This is what Atkins had to say about the Seventh Circuit's decision:

[G]ood likelihood of confusion analysis in reversal of hard-fought trademark infringement case, which also was one of the first dilution cases under the [Trademark Dilution Revision Act].

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AutoZone, Inc. v. Strick, No. 03 C 8152, 2007 WL 683992 (N.D. Ill.  March 1, 2007) (Hart, J.).

Judge Hart denied plaintiffs' motion for a Fed. R. Civ. P. 54(b) entry of final judgment on plaintiffs' Lanham Act and related state law trademark infringement and dilution claims, which the Court dismissed in this opinion.  The Court denied the motion on two grounds.  First, plaintiffs notified the Court of their intent to file the motion 30 days after the Court's order dismissing the claims, but only entered it 37 days later.  The Court noted the Seventh Circuit standard is that a district court generally abuses its discretion by entering a Rule 54(b) judgment when the motion was filed more than 30 days after the underlying order was issued.*  Second, the Court denied the motion on substantive grounds.  Defendants' counterclaims, which were the only claims remaining in suit, involved overlapping factual issues with plaintiffs' dismissed claims.  Defendants sought cancellation of plaintiffs' Zone mark, one of the marks plaintiffs alleged defendants infringed in the dismissed claims.  Additionally, defendants' remaining claims alleged infringement of their Oil Zone mark, a mark that plaintiffs' dismissed claims alleged infringed their AutoZone and Zone marks.

*  The Court also noted that some litigants have argued that the Seventh Circuit standard is no longer good law, but stated that district courts throughout the Seventh Circuit continue to follow it with a string cite.

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AutoZone, Inc. v. Strick, __ F. Supp.2d __, 2006 WL 3626770 (N.D. Ill.  Dec. 7, 2006) (Hart, J.).

Judge Hart granted summary judgment for defendants and dismissed all of plaintiffs' claims in this trademark case.  First, the Court did a detailed analysis of each of the seven likelihood of confusion factors and determined that a reasonable jury could not find a likelihood of confusion between plaintiffs' AutoZone mark and defendants' Oil Zone and Wash Zone marks.  The Court found that plaintiffs' mark was strong, but held that there was not great similarity between the marks, that plaintiffs' and defendants' services were not similar, and that there was no evidence of actual confusion or intentional infringement.  As a result, the Court dismissed plaintiffs' trademark infringement and unfair competition claims.

The Court also dismissed plaintiffs' dilution claim.  Defendants argued that plaintiffs could not prove dilution.  Because plaintiffs bear the burden of proof on dilution, plaintiffs were required to rebut defendants' claim.  Instead of providing evidence of actual or likelihood of dilution, plaintiffs stated they "planned" to present circumstantial evidence of dilution, apparently at trial.  But because plaintiffs did not present any such evidence in their responsive papers, the Court dismissed the dilution claim.

Practice tip:  When responding to a summary judgment motion, make sure to respond to each of your opponent's arguments citing to facts that support you.  Without citing facts, it is difficult to raise an issue of fact.

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