Crystal Visions, Inc. v. EC Grow, Inc., No. 17 C 7490, Slip Op. (N.D. Ill. Sep. 3, 2019) (Shah, J.).

Judge Shah denied declaratory judgement defendant EC Grow’s Fed. R. Civ. P. 56 motion for summary judgement as to likelihood of confusion and denied declaratory judgment plaintiffs / counter-defendants Crystal Visions and Salt Xchange (collectively “defendants”) counter motion in this Lanham Act case involving EC Grow’s LIGHTNING FAST mark for its ice-melt product and defendants’ LIGHTNING PREMIUM ICE MELTER mark for their ice-melt product.

As an initial matter, the Court pointed to the import of Local Rule 56.1 statements of undisputed material facts (“SOMF”) and noted that it is overlooked “too often.” SOMFs are not the place to argue facts. The responding party’s sole option is to admit the fact or deny it with factual support. Facts that are not properly denied with factual support are deemed admitted. Each party admitted certain facts, but added contexts and cites to support for the context or to supplemental facts. But that context and argument should be provided by asserting supplemental facts and / or argument in the party’s brief.

The Court also refused to treat Crystal Visions and Salt Xchange because they sell the same product. They are separate entities, with separate sales and strategies, which must be considered separately.

Of particular note, the Court held as follows:

  • While the use of the marks were similar in certain ways – they both used gray and blue, and feature a lightning image – the shades of the colors were different, the fonts were “very different,” and the lightning images were different.
  • EC Grow’s LIGHTNING FAST mark was descriptive because it explains that its ice-melter works quickly.
  • The similarity of the products and their markets favored EC Grow’s claim. The ice-melt pellets were different colors, but it was unclear that the pellet color impacted consumers. Otherwise, there was significant overlap in the target consumers.
  • At least some of the target consumers were not sophisticated and were unlikely to be able to differentiate between the two products.
  • There was evidence of at least one instance of actual confusion. One is not much, but it can be sufficient.
  • Weighing the evidence, the Court held that summary judgment must be granted in Crystal Visions’ favor.
  • The Court also granted Salt Xchange summary judgment. Its case was stronger because there was no evidence of its label and EC Grow’s mark was not strong.