GS Cleantech Corp. v. Big River Resources Galva, LLC, No. 10 C 990, Slip Op. (N.D. Ill. Jul. 30, 2010) (Andersen, J.).
Judge Andersen reassigned this case so that it could be consolidated with a case before Judge Bucklo by the same plaintiff asserting the same patent accusing similar technologies. The Court also ordered that a stay awaiting resolution of a related District of Kansas case would apply to the consolidated case.

Continue Reading Patent Cases Consolidated and Stayed Pending Related Case

Golden Golf Lighting, Inc. v. Greenwich Indus., L.P., No. 07 C 1086, Slip Op. (N.D. Ill. Jun. 18, 2010) (Andersen, J.).
Judge Andersen denied defendant Clarin’s Fed. R. Civ. P. 8(a), 9(b) and 12(b)(6) motion to dismiss this Lanham Act case regarding Clarin’s allegedly fraudulent procurement of a trademark related to folding seats.
First, 15 U.S.C. § 1120 limited recovery to injuries sustained “in consequence” of a trademark registered by fraud or false reasons. The damages need not be to a trademark, as Clarin argued. Plaintiff’s alleged damage because its folding chairs were seized at the U.S. border based upon alleged infringement of Clarin’s trademark and plaintiffs allegedly lost business based upon the seizure. Those facts were sufficient to plead that Clarin was the proximate cause of plaintiff’s alleged damages.
Plaintiffs pled fraud with sufficient particularity by incorporating by reference the fraud-related decision in Specialized Seating v. Greenwich Indus., L.P., 472 F.Supp. 2d 999 (N.D. Ill. 1999). Finally, Plaintiffs did not violate Fed. R. Civ. P. 8(a) or 8(d)(1) by combining two claims into a single count. Notice pleading did not require separate headings for each claim.

Continue Reading Fraud Sufficiently Pled by Citing to Earlier Fraud Decision

Aller-Caire, Inc. v. Am. Textile Co., No. 07 C 4086, 2008 WL 4066976 (N.D. Ill. Aug. 28, 2008) (Andersen, J.)
Judge Andersen granted in part and denied in part defendant American Textile Co.’s (“ATC”) Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Aller-Caire’s trademark infringement case. Aller-Caire allegedly began using its ALLER-CAIRE mark in 1990, but never registered it. ATC registered its ALLER CARE mark in 2006. Both use the marks to market, at least, allergy sensitive pillow and mattress encasements. The Court dismissed Aller-Caire’s trademark count with leave to refile because it did not expressly allege a likelihood of confusion. It was not sufficient that the complaint alleged facts sufficient to infer confusion, plaintiff must plead confusion. The Court did not dismiss Aller-Caire’s tortious interference claim. Aller-Caire’s allegations would have been insufficient pursuant to Illinois law because Aller-Caire did not plead that ATC interfered with Aller-Caire’s business expectancy with a specific third party. But federal pleading requirements governed, and did not require identification of an entity.
Finally, a competitor’s privilege did not defeat Aller-Caire’s tortious interference claim. Competition cannot be tortious interference unless the competition employs wrongful means. Aller-Caire’s allegation that ATC’s alleged trademark infringement was done with malice constituted wrongful means.

Continue Reading Trademark Plaintiff Must Specifically Plead Confusion

While Judge Filip heads to Washington as Deputy Attorney General, the Northern District has reassigned his cases — click here for the Executive Committee’s Order. At least the following IP cases have been reassigned:
Judge Andersen
1:07-cv-05666 Dicam, Inc. v. United States Cellular
Judge Dow
1:07-cv-02883 Kids Hope USA, Inc. v. Kids Hope United
Judge Kennelly
1:06-cv-05611 Liquid Dynamics Corporation v. Vaughn Co.
Judge Zagel
1:07-cv-03339 Borg Warner Inc. et al. v. Hilite International, Inc. et al.

Continue Reading Judge Filip’s Cases Reassigned

Allen Bros., Inv. v. AB Foods LLC, No. 06 C 1269, 2008 WL 345600 (N.D. Ill. Feb. 6, 2008) (Andersen, J.).
Judge Andersen granted defendant AB Foods summary judgment of likelihood of confusion and dismissed plaintiff Allen Brothers’ Lanham Act claim and related state law trademark infringement claim. Allen Brothers, a seller of gourmet meats, argued that AB Foods infringed its AB trademark by using it to sell AB Foods’ gourmet meats. The Court held that this was the rare case that was so one-sided as to warrant summary judgment that there was no likelihood of confusion, even though AB Foods uses its AB mark in direct competition with Allen Brothers:
The marks were not similar because Allen Brothers always used its full name along with its AB mark;
Allen Brothers’ customers are sophisticated meat purchasers, as evidenced by Allen Brothers’ high prices;
The strength of Allen Brothers’ mark is in its full name, not just AB;
Allen Brothers’ produced no evidence of actual confusion; and
Allen Brothers produced no evidence that AB Foods intended to pass off its meats as Allen Brothers products.
The Court, therefore, granted AB Foods summary judgment and dismissed the case.

Continue Reading Rare Summary Judgment of No Likelihood of Confusion

Zeidler v. A&W Restaurants, Inc., No. 03 C 5063, 2006 WL 1898056 (N.D. Ill. July 6, 2006) (Anderson, J.).

Zeidler is worth mentioning despite the absence of intellectual property issues because it makes a point that many practitioners miss:  disregarding Local Rule 56.1 Statements of Fact or slapping one together at the last minute