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

Eva's Bridal Ltd. v. Halanick Enterprises, Inc., No. 07 C 1668, Slip Op. (N.D. Ill. May 19, 2010) (Darrrah, J.).

Judge Darrah granted in part defendants' and denied plaintiffs' summary judgment motions in this Lanham Act case over the use of the name "Eva's Bridal." The Court granted defendants' summary judgment as to plaintiffs' trademark infringement claim because plaintiffs presented no evidence that they federally registered the "Eva's Bridal" trademark.

Plaintiffs' Lanham Act unfair competition and trademark dilution claims did not require a federally registered trademark. But because the mark was not registered, plaintiffs had the burden of proving ownership of the mark.  Plaintiffs created at least a question of fact as to ownership with evidence that plaintiffs' business was a continuation of the original use of the mark. And because the mark was based upon a first name and not a last name the mark was not necessarily descriptive. The Court, therefore, held there was a question of fact as to whether the mark was descriptive. 

Defendants agreed that plaintiffs abandoned the mark by licensing it without maintaining any quality control. Plaintiffs, however, presented sufficient evidence of control to create a question of fact.

Defendants' argument that plaintiffs had not shown a likelihood of confusion was not relevant to a dilution analysis. And defendants' argument that the Eva's Bridal mark was not famous failed because it was not developed. Defendants' argument was a single sentence without elaboration or support.

There was also a question of fact as to defendants' laches and acquiescence claims. Plaintiffs cited evidence that during the alleged delay the parties engaged in various negotiations and defendants made various payments.

Finally, the Court denied plaintiffs' summary judgment motion. Plaintiffs failed to comply with Local Rule 56.1(a)(3) requiring a statement of uncontested material facts supported by admissible evidence. Plaintiffs' statements were largely taken verbatim from its amended complaint, were largely irrelevant to the summary judgment issues and were largely not supported by cites to the record. The Court, therefore, denied plaintiffs' motion without analyzing it on the merits. 

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WMH Tool Group, Inc. v. Woodstock Int'l, Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Apr. 8, 2009) (Darrah, J.).

Judge Darrah granted in part defendants' motion for summary judgment as to plaintiff's Lanham Act claims related to plaintiff's trademark for white exteriors applied to woodworking and metalworking machines.  Defendants sought summary judgment based upon the fact that their products were green and tan, and that plaintiff's counsel admitted that green and tan machines did not infringe plaintiff's trademark white color.  But the Court held that summary judgment was not appropriate even if plaintiff admitted the green and tan products did not infringe because the parties disputed which of the products were green and tan and whether defendants also sold green and white products.  Additionally, the Court held that there was a question of fact as to whether the alleged green and white products infringed plaintiff's trademarks.  The Court did, however, grant summary judgment as to plaintiff's dilution claim because plaintiff did not respond to the summary judgment arguments.

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Jones Day v. BlockShopper.com, No. 08 C 4572, Order (N.D. Ill. Aug. 18, 2008) (Darrah, J.).*

Judge Darrah entered the parties stipulated temporary restraining order ("TRO").  Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claimed service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition and sought a TRO – click here for the Blog's earlier post on the case.

The Court entered the parties' stipulated TRO, ordering defendants not to:

1. Use reproductions or imitations of plaintiff's service mark;
    
2. Use any content from or link to plaintiff's website; or
    
3. reference plaintiff in its headlines.

Defendants were also ordered to remove any website content already on the site that would violate the TRO if written after its entry. 

As you would expect, other blogs and mainstream media have noticed the case.  At Legal Blog Watch, Robert J. Ambrogi just wrote about the dispute (click here), noting my post and discussing an article by Lynne Marek that will appear in next week's National Law Journal -- click here (subscription required).  According to the NLJ story, plaintiff asked only $10,000 to settle the case, but defendants rejected the offer, explaining:

Bending to the law firm's demands to stop coverage of the firm's lawyers would strangle the company's business model of using public records and publicly available Internet information, he said. Blockshopper, founded by former newspaper industry professionals, considers itself a next generation media outlet entitled to First Amendment protections just like any other news organization, he said.

Ambrogi sums up the issue at the heart of the dispute well:

In this age of electronically enhanced transparency, this whole dust-up reflects a sentiment I encounter time and again: "We like our public records to be public -- just not too public.

*  Click here for the Order.

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Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that allegedly discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition – click here for the complaint. Plaintiff also moved for a temporary restraining order (“TRO”) – click here for the TRO motion. In addition to the use of its service marks, plaintiff alleged that defendants used pictures of plaintiff’s associates that appear to be identical to pictures on plaintiff’s website.

A January 2007 Chicago Tribune article described defendants’ website as one that provides details surrounding Chicago-area real estate transactions using a Cook County list of home sales and internet research, noting that subjects of some posts do not like the stories:

But BlockShopper goes beyond the basic who-what-and-how-much, revealing tantalizing tidbits such as what the parties do for a living and what the sellers originally paid for the property, plus satellite maps and even photos of the property and the parties.

The TRO hearing was noticed for Tuesday, August 19. I will keep you updated as decisions are issued.

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Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).

Judge Manning granted in part the defendants' Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs' RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites' business.*

Anticybersquatting Consumer Protection Act ("ACPA")

The Court denied the Parking Defendants motion to dismiss plaintiffs' ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs' marks.

The Court denied Google's motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.

Trademark Infringement

The Court upheld plaintiffs' trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants' misspelled domains. Additionally, the Court could not rule upon Parking Defendants' arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants' particular acts constituted use would require reliance upon facts outside the complaint.

Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs' false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.

Trademark Dilution

Defendants argued that the dilution claims must be dismissed because plaintiffs' marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.

*  This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.

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Several unrelated legal stories that are worth a read:

• An excellent Illinois Business Law Journal article regarding whether Google is losing its trademark to genericide.  It concludes that Google's mark is relatively safe, partly because Google's trademark is identical to its domain name.*
  
• Patent Troll Tracker has been unmasked.  The unmasking was based, at least in part, on Ray Niro's bounty for Troll Tracker's name.  As would be expected, Troll Tracker unmasked himself with class and a sense of humor.  He is taking a few weeks off from blogging to decide whether to continue.  I hope he decides to continue.  Troll Tracker is a powerful voice on some complex issues, and he is right that it is great to see another inhouse legal blogger.  Plus, it would be a shame for Troll Tracker to disappear just after Ron Coleman finally discovered him. 
  
• Blawg Review #148 is up at Blawg IT.  In addition to the usual links to law blog posts, Brett helps us smell the electronic roses with numerous non-legal video clips.

*  Hat tip to Michael Atkins at the Seattle Trademark Blog for pointing out the article during his Trademark Dilution Weekend.

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WMH Tool Group, Inc. v. Woodstock Int’l, Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Nov. 14, 2007) (Darrah, J.).*

Judge Darrah denied defendants’ Fed. R. Civ. P 12(b)(6) motion to dismiss plaintiff WMH Tool Group’s (“WMH”) Lanham Act dilution claim and its related Illinois Consumer Fraud and Deceptive Business Practices Act (“Consumer Fraud Act”) claim. WMH registered a trade dress for the color white on its woodworking and metal working products, sold under its JET brand. WMH alleged that its white trade dress was both famous and exclusively associated with WHM’s tools. WMH further alleged that defendant Woodstock International (“Woodstock”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Woodstock’s Shop Fox brand. Similarly, WMH alleged that defendant Grizzly Industrial (“Grizzly”) diluted WMH’s trade dress by selling woodworking and metal working tools in WMH’s distinctive white color under Grizzly’s Grizzly or Grizzly Industrial brands. 

Defendants argued that WMH did not state a claim for dilution because the complaint did not specify the date when WMH’s trade dress became famous and that defendants’ allegedly infringing sales began after that date. But the Court held that notice pleading did not require that WMH plead specific dates. It was enough that WMH pled that the trade dress had become famous and that defendants' infringement of the trade dress occurred after the fame was acquired.

Defendants also argued that WMH lacked standing to bring a Consumer Fraud Act claim because WMH was not a “person” or a “consumer” pursuant to the Act.  But the Court held that 815 ILCS 505/1(1)(c) defined “persons” to include business entities, and that a plaintiff need not be an actual consumer to bring a claim pursuant to the Consumer Fraud Act.

* Click here for a copy of the opinion.

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Milwaukee Elec. Tool Corp. v. Robert Bosch Tool Corp., No. 05 C 1171, 2007 WL 2875232 (N.D. Ill. Sep. 28, 2004) (Kendall, J.)

Judge Kendall granted plaintiff’s motion to dismiss its Lanham Act case with prejudice and awarded defendant its costs but not its fees pursuant to 15 U.S.C. § 1117(a). The Court held that attorney’s fees were not warranted because the case and its dismissal after substantial fact discovery were not exceptional. Plaintiff dismissed its case because of two significant events which plaintiff believed reduced its likelihood of success.

            First, during discovery Congress passed the Trademark Dilution Revision Act (“TDRA”)* which changed the definition of “famous” such that fame within a niche market was no longer sufficient for dilution. Plaintiff was not certain it could prove fame outside its market. Second, defendant changed the trade dress, and particularly the color scheme, of its accused SKIL line of power tools. Plaintiff believed that defendant’s new trade dress was less similar to plaintiff’s and, therefore, plaintiff’s case was more difficult to prove. The Court accepted plaintiff’s reasoning and, therefore, held that the case was not exceptional. The Court did, however, award costs, which plaintiff had originally agreed it would pay.

* For more on the TDRA, click here for the Seattle Trademark Lawyer’s coverage of the TDRA this week in honor of the TDRA’s first anniversary.

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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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