Color Trademark Infringement is Question of Fact

Posted on June 15, 2009 by R. David Donoghue

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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Trial/Prosecution Counsel Not Deposed Until After 30(b)(6) Deposition

Posted on March 11, 2009 by R. David Donoghue

WMH Tool Group, Inc. v. Woodstock, Int'l., Inc., No. 07 C 3885, Slip Op. (N.D. Ill. Jan. 14, 2009) (Mason, Mag. J.).

Judge Mason granted plaintiff's motion to quash the deposition notice of plaintiff's trial counsel ("Counsel") for this trademark infringement dispute, who was also plaintiff's trademark prosecution counsel for the mark in suit.  The Court held that regardless of what the proper standard was for determining whether to depose trial counsel, it had not been met.  Until defendants took plaintiff's Rule 30(b)(6) deposition, there was no way to tell whether Counsel had any specialized knowledge or whether his knowledge could be more easily obtained from another source.  The Court, therefore, quashed the deposition notice, but allowed defendants to seek leave to depose Counsel after document production is complete and all relevant depositions have been taken.

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Specific Dates Not Required for Dilution Complaint

Posted on December 3, 2007 by R. David Donoghue

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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