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

Minemyer v. B-Roc Reps., Inc., No. 07 C 1763, Slip Op. (N.D. Ill. Oct. 27, 2009), (Cole, Mag. J.). 

Judge Cole granted defendants' motion for summary judgment regarding plaintiff's Lanham Act trade dress and related state law claims. Plaintiff alleged that defendants infringed his trade dress in certain plastic pipe couplers. The trade dress consisted of the coupler's length, diameter, internal lead-in taper, flutes, arrows, the solid reinforced area between the flutes and end taper, and the base coloring of the material. But the Court held that plaintiff admitted that each element of his alleged trade dress was functional. Of particular note, the coupler's color was dictated by the parties' customers. And the flutes were the subject of a utility patent held by plaintiff. The fact that the flutes could have been designed using another shape did not matter. The Court held that once an element is functional, you need not consider whether there are other ways to obtain the function. 

Although the case was resolved on functionality grounds, the Court also considered plaintiff's secondary meaning arguments. But plaintiff provided no direct evidence of secondary meaning. Instead of survey evidence or consumer testimony, plaintiff relied upon direct copying. But event assuming defendants copied plaintiff's coupler, that alone did not create secondary meaning. Plaintiff also needed to show that defendants intended to steal plaintiff's goodwill. No such evidence was offered.

The Court also held that there was not a likelihood of confusion. Defendants printed their names on their products. And the parties' customers were very sophisticated purchasers and were unlikely to be confused. The customers competitively bid its purchases of the couplers, so purchasing decisions were made directly with the parties, not by looking at the products in bins side-by-side at a hardware store.

Finally, the Court held that plaintiff's state law Consumer Fraud and Deceptive Trade Practices Act claim were coterminous with the Lanham Act claim. The Court, therefore also granted summary judgment as to the state law claims.

* Click here fore more on this case in the Blog's archives.

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Best Vacuum, Inc. v. Ian Design, Inc., No. 04 C 2249, 2006 WL 3486879 (N.D. Ill. Nov. 29, 2006) (Hort, J.).

In this trademark and Lanham Act unfair competition suit, Judge Hort granted summary judgment for defendant and dismissed the case.  Plaintiff had operated under the name "Best Vacuum" since 1983 and operated a www.bestvacuum.com website since 1996.  In 2003, defendant began operating a www.bestvacuumcleaners.com website, but when plaintiff complained, defendant changed its website to www.bestchoicevacuums.com.  After defendant refused to take down its second site, plaintiff sued.  Plaintiff's trademark infringement claim was dismissed earlier in the case because plaintiff never registered its "Best Vacuum" mark.  The case was before the Court on cross summary judgment motions.

The Court dismissed plaintiff's unfair competition claim because plaintiff's "Best Vacuums" mark was descriptive and lacked secondary meaning.  Plaintiff's only evidence to support secondary meaning was six selected responses from an in-store survey it did asking customers how long they had been aware of plaintiff's store.  The Court held that "selective responses from a targeted audience are of little or no probative value."  In contrast, defendant commissioned an online, random survey which showed that less than 2% of respondents had heard of plaintiff's website and only 2% knew of plaintiff's retail store.  So, despite the fact that plaintiff operated its store for more than twenty years and its website for about ten years, the Court held that there was insufficient evidence to allow a reasonable jury to find that plaintiff established secondary meaning.

The Court dismissed plaintiff's trademark dilution claim for lack of secondary meaning as well, coupled with a failure to comply with Local Rule 56.1.  Plaintiff filed a Rule 56.1 statement with its summary judgment brief.  Defendant responded to plaintiff's Rule 56.1 statement in its responsive papers and filed a cross summary judgment motion, along with its own additional Rule 56.1 statement for its cross motion.  Plaintiff, despite having the opportunity to reply, filed nothing.  As a result, the Court deemed defendant's additional Rule 56.1 statement true for purposes of plaintiff's summary judgment motion (which ended up being moot as the Court did not rule upon plaintiff's motion after granting defendant's).  For purposes of defendant's summary judgment motion, the Court deemed admitted any assertions made by defendant that were not addressed in plaintiff's original Rule 56.1 statement, so plaintiff got a minor reprieve.  But this, once again, raises my most common practice tip:  you have to read Rule 56.1 several times and then follow it closely.

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