A&L Indus. v. Weaver Enters.

• Decision Date: 30 August 2021
• Docket Number: 20-cv-552-slc
• Court: U.S. District Court — Western District of Wisconsin
• Parties: A&L INDUSTRIES, LLC, Plaintiff, v. WEAVER ENTERPRISES, LTD., Defendant, and OAK LEAF OUTDOORS, INC., Defendant and Counter-Plaintiff, v. A&L INDUSTRIES, LLC and ANDRAE D'ACQUISTO, Counter-Defendants.

A&L INDUSTRIES, LLC, Plaintiff, v. WEAVER ENTERPRISES, LTD., Defendant, and OAK LEAF OUTDOORS, INC., Defendant and Counter-Plaintiff, v. A&L INDUSTRIES, LLC and ANDRAE D'ACQUISTO, Counter-Defendants.

No. 20-cv-552-slc

United States District Court, W.D. Wisconsin

August 30, 2021

OPINION AND ORDER

STEPHEN L. CROCKER MAGISTRATE JUDGE

This civil action involves numerous disputes about the parties' use of the LONE WOLF® trademark, which is the subject of a 2006 license agreement between the parties and two unlicensed marks (a wolf head logo and the name Alpha) in connection with the manufacture, sales advertising, and promotion of hunting tree stands, clothing and accessories. Plaintiff A&L Industries, LLC filed this lawsuit against defendant Weaver Enterprises, Ltd. and its successor-in-interest, defendant Oak Leaf Outdoors, Inc., for trademark infringement, unfair competition, and false designation of origin under the Lanham Trademark Act, 15 U.S.C. §§ 1114(1) and 1125(a), and Wisconsin common law, and breach of contract under Wisconsin law. Dkt. 1. A&L contends that after its owner, counter-defendant Andrae D'Acquisto, terminated the parties' long-standing license agreement on October 15, 2018, defendants used the LONE WOLF® trademark as well as the wolf head logo and Alpha name without permission and in violation of the license agreement. Oak Leaf also asserts counterclaims against A&L and D'Acquisto for trademark infringement, unfair competition, breach of contract, and violation of the Illinois Franchise Disclosure Act, based in large part on its contention that the license agreement was not terminated legally. Dkt. 38 (amended answer and counterclaims). Before the court are the parties' cross motions for summary judgment. Dkts. 43 and 50.

For the reasons explained below, I am granting A&L/D'Acquisto's motion for summary judgment and denying Oak Leaf/Weaver Enterprises's motion with respect to:

(1) A&L/D'Acquisto's three trademark claims (Counts I-III) and its breach of contract claim (Count IV) regarding Oak Leaf's use of the LONE WOLF® mark after the termination of the license agreement on October 15, 2018; and

(2) Oak Leaf's trademark, breach of contract, and IFDA counterclaims.

I am denying A&L/D'Acquisto's motion for summary judgment and granting Oak Leaf/Weaver Enterprises's motion with respect to:

(1) A&L's trademark claims related to the wolf head logo and Alpha name; and

(2) A&L's claims against defendant Weaver Enterprises.

Therefore, this case will proceed to trial solely on the issue of damages with respect to A&L's trademark and breach of contract claims regarding Oak Leaf's use of the LONE WOLF® mark after the termination of the license agreement on October 15, 2018. Weaver Enterprises will be dismissed as a defendant and D'Acquisto will be dismissed as a counter-defendant.

The following facts are undisputed except where noted.

UNDISPUTED FACTS

I. The Contested Marks

Counter-defendant Andrae D'Acquisto is the former president and owner of Lone Wolf Manufacturing Company, Inc. In 1984, Lone Wolf Manufacturing began manufacturing and selling tree stands, which are elevated platforms mounted to a tree for hunters to stand or sit on while hunting.

In 2003, the United States Patent and Trademark Office (USPTO) granted D'Acquisto trademark registration in the LONE WOLF® name (No. 2, 733, 871) for use on t-shirts and caps and hunting equipment, including tree stands, climbing sticks, tree stand pads, tree stand cords, bow holders, tow ropes, tree stand belts, tree stand cables, tree stand blinds, climbing stick brackets, climbing stick fasteners, climbing stick steps, and climbing stick straps. See dkt. 1-1 (registration). These items were to be sold exclusively on the Internet and through trade shows. D'Acquisto has designed, created, and patented platforms for tree stands that have been sold under the LONE WOLF® name.

Prior to 2006, D'Acquisto also used various names, terms, symbols, emblems, slogans, designs, colors and other identifying marks-including a wolf's head- in connection with the sale of many types of hunting-related goods, instructional hunting DVDs, and clothing. He also introduced “Alpha” model tree stands, hand climber combos, sit and climb combos, and hang on stands. D'Acquisto does not identify these additional marks with any specificity, but he has provided the following example of what he calls a “Lone Wolf with head” mark depicted on what appears to be one of his DVDs:

(Image Omitted)

II. 2006 Licensing of LONE WOLF® Trademark

On June 9th, 2006, D'Acquisto executed a series of six agreements-one each for asset purchase, consulting, interim production, noncompete, technology assignment, and license - by which D'Acquisto sold Lone Wolf Manufacturing and licensed the LONE WOLF® trademark (Reg. No. 2, 733, 871) to defendant and counter-plaintiff Weaver Enterprises, Ltd., a Nevada corporation with its principal place of business in Brimfield, Illinois.

Less than a month later, Weaver Enterprises assigned all of its rights under these six agreements to defendant and counter-plaintiff Oak Leaf Outdoors, Inc., an Illinois corporation with its principal place of business in Brimfield, Illinois. D'Acquisto consented to the assignment and signed a “Restated Memorandum of Understanding” with Oak Leaf “to clarify the identity of the parties to this transaction, in light of the Assignment from Weaver to Oak Leaf.” Dkt. 53-8. D'Acquisto understood at the time the agreements were signed in June 2006 that Oak Leaf and not Weaver Enterprises would carry on the tree stand business. Lone Wolf Manufacturing was dissolved by the State of Wisconsin.

A. Exclusive and Non-Exclusive Uses

Section I of the license agreement grants Oak Leaf-as the assignee of Weaver Enterprises-the exclusive right to use the LONE WOLF® mark “in connection with the manufacturing, advertising, promotion, and sale of Category I and Exhibit A Products.” Dkt. 1-3 at 1. Category I products are defined in the accompanying Consulting Agreement as tree stands, “hang ons” and “climbers, ” climbing sticks, tree stand accessories, and hats and t-shirts bearing the Lone Wolf Portable Tree stands brand. See dkt. 53-13 at 6. Exhibit A, which is attached to the licensing agreement, lists 24 products, including “Alpha sit and climb seats” and “Alpha hand climber seats.” Dkt. 1-3 at 8.

In addition, Section 1 gives Oak Leaf a non-exclusive right to use the LONE WOLF® mark on “Category II and III Products, ” which are defined in the accompanying Consulting Agreement to include: ground blinds, deer carts, portable stools/chairs, ground mount bow holders, hanging bow holders for ground blinds, decoys and decoy launchers, clothing products other than hats and t-shirts with the Lone Wolf Portable Tree Stand Logo, and muzzle loaders. Id. at 1-2; dkt. 53-13 at 8-9.

B. Quality, Inspection, and Approval

Sections 2.1 to 2.4 of the license agreement set a baseline level of quality that Oak Leaf must maintain in its products and give D'Acquisto the right to inspect the quality of the products:

QUALITY, INSPECTION AND APPROVAL

2.1. LICENSEE represents and warrants that it will maintain the quality of Category I and Exhibit A Products and Category II and III Products at least at a level that meets industry standards and is commensurate with the quality of products previously manufactured and sold by LICENSOR.

2.2. LICENSEE represents and warrants that it will comply with the applicable laws, rules and regulations relating to the production, promotion, and sale of Category I and Exhibit A Products and Category II and III Products and will not violate or infringe any right of any third party.

2.3. LICENSEE agrees that the nature and quality of all Category I and Exhibit A Products and Category II and III Products in connection with the Licenses Trademarks shall conform to the standards set by LICENSOR. LICENSOR shall have the sole right and discretion to determine whether the Licensed Products are of satisfactory quality.

2.4. LICENSEE shall on request provide the LICENSOR representative samples of the Category I and Exhibit A Products and Category II and III Products, and LICENSOR or its authorized representatives shall have the right to inspect LICENSEE'S business operations conducted in connection with the Licensed Trademark.

Dkt. 1-3 at 2.

C. Trademark Ownership and Infringement

Regarding trademark ownership, the license agreement provides that:

4.1 LICENSEE acknowledges and agrees that the Licensed Trademark, all goodwill associated therewith, and all registrations thereof are owned solely by LICENSOR and LICENSEE shall never directly or indirectly contest the ownership or validity of the trademark.

4.2 All use of the Licensed Trademark shall inure solely to the benefit of and be on behalf of LICENSOR;

4.3 The License granted herein is not intended to be and shall not be construed as an Assignment; and further, nothing herein confers on LICENSEE any right, title or interest in the Licensed Trademark other than the limited right to use same in accordance with this Agreement;

4.4 LICENSEE shall not do or cause to be done, or omit to do or be done, anything impairing or intending to impair any of the rights of LICENSOR in the Licensed Trademark;

Dkt. 1-3 at 2-3.

Section 5 of the license agreement further provides that the licensor grants no rights other than those granted in the agreement and that the licensee shall not directly or indirectly “use any of LICENSOR'S trade names, trademarks service marks, domain names or trade dress, other than the Licensed Trademark” or “[a]pply to register or own any registration of the Licensed Trademarks or any trademarks confusingly similar thereto anywhere in the world.” Dkt. 1-3 at...