Likelihood of Confusion

Life After Hate, Inc. a/k/a Exit USA v. Free Radicals Proj., Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Sep. 30, 2019) (Kendall, J.).

Judge Kendall granted plaintiff Life After Hate a/k/a Exit USA’s (“LAH”) motion for preliminary injunction preventing defendants (collectively “Free Radicals”) from using LAH’s LIFE AFTER HATE, NO JUDGMENT. JUST

Easton v. Primal Wear, Inc., No. 17 C 6081, Slip Op. (N.D. Ill. Mar. 29, 2019) (Tharp, J.).

Judge Tharp denied the plaintiffs’ (collectively “Primal Mode”) Fed. R. Civ. P. 56 motion for summary judgment and defendant Primal Wear’s Fed. R. Civ. P. 12(b)(1) & (6) motion to dismiss in this Lanham Act trademark

Bodum USA, Inc. v. A Top New Casting, Inc., No. 16 C 2916, Slip Op. (N.D. Ill. Dec. 28, 2017) (Kennelly, J.).

Judge Kennelly denied defendant A Top’s motions for summary judgment and to exclude the testimony and survey evidence of plaintiff Bodum’s survey experts in this Lanham Act trade dress case involving French-press

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

Global Total Office Ltd. Partnership v. Global Allies, LLC, No. 10 C 1896, Slip Op. (N.D. Ill. Feb. 14, 2012) (Coleman, J.).

Judge Coleman denied plaintiffs summary judgment as to their Lanham Act infringement, deceptive trade practices and unfair competition claims.  All three required a factual finding of a likelihood of confusion, which the

Judge Aspen denied defendant Teachbook’s motion to dismiss plaintiff Facebook’s Lanham Act complaint. As an initial matter, the Court refused to consider the 300 pages of additional materials outside of Facebook’s complaint that Teachbook sought to introduce. The Court declined to take judicial notice of public records, and would have had to convert the motion to a summary judgment motion to consider the remaining materials.
The Court denied Teachbook’s claims that the -Book suffix in the FACEBOOK mark was generic as a matter of law. As an initial matter, although it was within the Court’s discretion, the Court did not believe it was appropriate to isolate and review the -BOOK suffix separate from the FACEBOOK mark. Additionally, Facebook was using its mark to offer social networks, not books, ebooks or otherwise. Facebook sufficiently plead the visual and aural similarities between the two marks. Facebook’s decision not to plead actual confusion was not fatal to its claim. Actual confusion is not a required element of trademark infringement.
Facebook also sufficiently pled intent. Facebook alleged that Teachbook adopted its mark to call to mind Facebook. The Court also noted that teachers might think that Teachbook was Facebook’s response to some school’s banning teachers Facebook use.

Continue Reading Facebook Sufficiently Pleads Lanham Act Claims Against Teachbook

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Mar. 8, 2010) (Darrah, J.).
Judge Darrah, after a bench trial, held that defendant’s use of his Oil Zone and Wash Zone marks did not create a likelihood of confusion with plaintiff AutoZone’s Auto Zone trademarks.*
Likelihood of Confusion
Only one of the seven likelihood of confusion factors weighed in AutoZone’s favor – the strength of AutoZone’s mark. But the strength of the mark was outweighed by the dissimilarity of both the marks and the services offered by the parties. Apart from the common use of the word “zone” there was little similarity between plaintiff’s AutoZone and defendant’s Oil Zone/Wash Zone. And while AutoZone sells auto parts, defendant performs automatic services.
AutoZone’s four-year delay exceeded the analogous Consumer Fraud and Deceptive Business Practices Act three-year statute of limitations. The fact that defendant’s alleged infringement “fell through the cracks” and was not acted on for four years, was not a sufficient excuse for the delay. And defendant was prejudiced by AutoZone’s delay based upon defendant’s four years of advertising the Oil Zone/Wash Zone names.
* Click here for more on this case in the Blog’s archives.

Continue Reading Four Year Delay Creates Laches in Lanham Act Case

It is the time of year for the Best of 2008 lists. The legal blogosphere* is no different as evidenced by Blawg Review #193 — click here to read it — recounting the 51 weekly Reviews from this year and soliciting nominations for the annual Review of the Year award from anyone who has hosted or is scheduled to host a Review. As someone who has hosted (click here to read my 2008 Review # 173, and who plans to host another in 2009, I exercise my right to vote for the following Reviews:
Rush on Business — Click here to read Review #147 which followed law blogs as they participated in Iowa’s famous RAGBRAI cycling race/ride (I love cycling).
Patent Baristas — Click here to read Review #161 which provided a powerful message on Memorial Day.
Likelihood of Confusion — Click here to read Review #191 which took a legal look at the possible explanations for the miracle of Chanukah.
* Ed. how can you insist upon Blawg Review, but than refer to the legal blogosphere. Are you just trying to get to Mr. O’Keefe?

Continue Reading Best Blawg Reviews of 2008