Cobra Capital LLC v. LaSalle Bank Corp., __ F. Supp.2d __, 2006 WL 2720626 (N.D. Ill. Sept. 19, 2006) (Bucklo, J.)
In this trademark infringement dispute, Judge Bucklo denied defendants’ summary judgment motion because there were material issues of fact regarding, among other things, the protectability of the marks at issue ("Making Impossible Possible" and "Make the Impossible Possible"). Defendants argued that the marks were descriptive of the banking and lease financing industry, and that the marks were "merely common self-laudatory advertising." The Court, however, disagreed, stating that the latter argument "borders on frivolous" and noting that defendants’ argument was harmed by their corporate parent’s pending application for the similar mark "Making More Possible."
This holding, and the Court’s identification of defendants’ similar pending trademark application, lead to an obvious practice tip: check your current registered and pending marks before challenging another’s marks as generic or merely descriptive.
The Court’s opinion also raises one of my recurring themes — compliance with Local Rule 56.1. Defendant moved to strike "numerous portions" of plaintiff’s statement of material facts. The Court denied the motion as moot because the Court relied only on statements that complied with Local Rule 56.1. While plaintiff does not appear to have been harmed by its failure to comply with Local Rule 56.1, it is easy to imagine circumstances under which it could have been harmed. I have said it before, here and here and here, but I will say it again: you must comply with Local Rule 56.1.