Sorenson v. WD-40 Co., No. 12 C 50417, Slip Op. (N.D. Ill. Sep. 9, 2014) (Kapala, J.).

Judge Kapala granted defendant WD-40 summary judgment as to plaintiff’s Lanham Act and related state law claims regarding plaintiff’s THE INHIBITOR and related design marks (the “Inhibitor Marks”) and WD-40’s Specialist product line.

WD-40’s use of the word “inhibitor” in connection with its Specialist products was fair use:

  • It was not used as a trademark, as evidenced by the emphasis of WD-40’s well know marks on the front of the product over the use of the term “inhibitor.”
  • Inhibitor was descriptive of the WD-40 product which was intended to inhibit rust.
  • There was a lack of evidence that WD-40 used the term in bad faith.

WD-40 was, therefore, granted summary judgment as to plaintiff’s Lanham Act claim.  WD-40 was also granted summary judgment that there was no likelihood of confusion:

  • Looking at the usage of the marks as a whole, plaintiff lacked sufficient evidence to show similarity of use.
  • Plaintiff’s oil products were not similar to WD-40’s Specialist products.
  • There was limited evidence of concurrent use, but not enough to weigh in plaintiff’s favor.
  • There was some evidence of a low degree of care by consumers, but it was mitigated by the strength of WD-40’s marks.
  • Plaintiff’s Inhibitor Marks were relatively weak because they were descriptive of the product.
  • There was not sufficient evidence of actual confusion.  The testimony by one individual that he believed that the products could be co-branded even if it were assumed to be evidence actual confusion, was insufficient because it was de minimus.
  • There was not sufficient evidence that WD-40 intended to pass off its products as plaintiff’s to support plaintiff’s burden.

Having granted summary judgment as to the Lanham Act claims, the Court granted summary judgment as to the state law claims based upon the Court’s likelihood of confusion analysis.  As an interesting side note, the opinion identifies evidence in the suit suggesting that four out of five people have used WD-40.  That is a pretty amazing statistic.