Box Acquisitions, LLC d/b/a Box Partners, LLC v. Box Packaging Prods., LLC, No. 12 C 4021, Slip Op. (N.D. Ill. Mar. 26, 2014) (Kocoras, J.).

The Court granted summary judgment for defendant in this Lanham Act case involving alleged trademark infringement regarding plaintiff’s BOX PACKAGING trademarks.  The “key issue” was whether BOX PACKAGING was a protectable mark or was unprotectable as a descriptive term that has not acquired sufficient secondary meaning.

The Court held that BOX PACKAGING was descriptive as a matter of law.  No imagination was required to connect BOX PACKAGING to the box and packaging services offered by plaintiff.  The fact that plaintiff did more than just distribute boxes and packaging did not sway the Court because all of plaintiff’s services encompass boxing and packaging somehow.  The Court was also swayed by how other companies used “Box Packaging” within the industry.  The fact that BOX PACKAGING is not defined in the dictionary was not enough to avoid summary judgment of descriptiveness.

Regarding secondary meaning, plaintiff did not offer any direct evidence, which comes from consumer testimony or consumer surveys.  The Court, therefore, turned to the circumstantial evidence.  Plaintiffs use of BOX PACKAGING was not exclusive, many others used the phrase.  And the fact that plaintiff largely stopped using BOX PACKAGING in favor of BOX PARTNERs weighed against a finding of secondary meaning. 

Furthermore, plaintiff offered no evidence of advertising or sales figures to support secondary meaning based upon such expenditures.  The Court also held that plaintiff’s evidence of intentional copying was weakened because plaintiff chose a descriptive mark. 

Plaintiff’s proof of actual confusion was insufficient because plaintiff could not identify the customers that allegedly expressed confusion.

The Court granted summary judgment regarding plaintiff’s claims that defendant sought to fraudulently register its trademark because there were several other entities using versions of the mark.  So, the fact that defendants were aware of plaintiff did not suggest that defendants could not register their marks. 

The Court also granted summary judgment as to defendant’s purchase of various “boxpackaging” domain names because plaintiff was not actively using BOX PACKAGING at the time, noting that had defendants acted when plaintiff was actively using the mark the result “could have been vastly different.”