Firstpower Grp. LLC v. WD-40 Co.

• Decision Date: 18 July 2017
• Docket Number: CASE NO. 5:17-cv-392
• Parties: FIRSTPOWER GROUP LLC, PLAINTIFF, v. WD-40 COMPANY, et al., DEFENDANTS.
• Court: U.S. District Court — Northern District of Ohio

FIRSTPOWER GROUP LLC, PLAINTIFF, v. WD-40 COMPANY, et al., DEFENDANTS.

CASE NO. 5:17-cv-392

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION

July 18, 2017

JUDGE SARA LIOI

MEMORANDUM OPINION

This matter is before the Court on the motion of plaintiff FirstPower Group LLC ("FirstPower") for a preliminary injunction pursuant to Fed. R. Civ. P. 65, 15 U.S.C. § 1116, and Ohio Revised Code § 4165.03. (Doc. No. 4. ["Mot."].) A single opposition was filed by all defendants (WD-40 Company and WD-Manufacturing Company (collectively, "WD-40" or "WD-40 defendants"); Wal-Mart Stores East, LP, Lowe's Home Centers, LLC, Home Depot, U.S.A., Inc., and Home Depot, Inc.¹ (collectively, the "retail defendants")) (Doc. No. 34 ["Opp'n"]), to which plaintiff replied (Doc. No. 38 ["Reply"]). For the reasons that follow, the motion is denied.

I. FACTUAL AND PROCEDURAL BACKGROUND

Plaintiff is a limited liability company organized in Ohio with its principal place of business in Twinsburg, Ohio. (Doc. No. 1 (Complaint ["Compl."]) ¶ 1.) FirstPower has used the EZ REACH trademark in connection with the sale of lubricants since September16, 2011. (Id. at ¶ 20.) FirstPower is the owner of two EZ REACH trademarks registered with the United States Patent and Trademark Office ("USPTO") for lubricating oil: (1) U.S. Registration No. 4,194,628 (issued August 21, 2012); and (2) U.S. Registration No. 5,074,457 (registered on November 1, 2016). (Id. ¶ 27.) These two registered trademarks are part of a "family" of EZ REACH trademarks owned and used by FirstPower: (1) EZ REACH LIFE for oil lubricants (U.S. Registration No. 5,047,436); (2) EZ REACH LIFE for oil lubricants (U.S. Registration No. 5,074,458); (3) EZ REACH RUSTAWAY for oil lubricants (U.S. Registration No. 5,074,474); and (4) EZ REACH CLEAN for cleaning and softening lubricants (U.S. Trademark Application Serial No. 87/272,774). (Id. ¶ 36.)

Plaintiff alleges that, notwithstanding WD-40's knowledge of FirstPower's EZ REACH trademarks, WD-40 is using and has attempted to register a virtually identical mark—EZ-REACH—also for use in connection with lubricating oil. (Id. ¶¶ 22, 24, 40.) WD-40's attempted trademark applications were rejected by the USPTO because of likelihood of confusion with FirstPower's trademarks. (See id. ¶¶ 40, 47, 53, 76, 87, 95.) WD-40's EZ-REACH product is sold by the retail defendants.

On these facts, plaintiff claims that: (1) WD-40 and the retail defendants have infringed its registered trademarks in violation of § 32(1) of the Lanham Act, 15 U.S.C. §1114(1) (counts one and two, respectively); (2) WD-40 and the retail defendants are engaging in unfair competition in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) (counts three and four, respectively); (3) WD-40 has engaged in acts of counterfeiting in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1) (count five); (4) WD-40's employees and officers are individually, jointly, and severally liable with WD-40 for WD-40's violations of the Lanham Act (count six); and (5) alldefendants are liable for common law trademark infringement and unfair competition, and violation of Ohio's Deceptive Trade Practices Act (counts seven and eight, respectively). The WD-40 defendants counterclaimed for a declaration of non-infringement, invalidity, and cancellation of plaintiff's trademark registrations. (Doc. No. 24 (WD-40 Defendants' Counterclaim) ¶¶ 15-26.)

In its motion for a preliminary injunction, FirstPower argues that it will be irreparably harmed if defendants are permitted to continue using the EZ-REACH mark and selling WD-40's EZ-REACH product. Plaintiff asks the Court to require defendants to cease using and/or otherwise infringing plaintiff's trademark, and to deliver to FirstPower for destruction all product, materials, and information bearing the EZ-REACH mark. (Mot. at 97.²)

The Court conducted a hearing on plaintiff's motion, and both sides introduced exhibits³ and presented witness testimony. (See Minute Order May 19, 2017.) After plaintiff's motion was fully briefed, but before the hearing, the Sixth Circuit issued its opinion in Progressive Distribution Servs., Inc. v. United Parcel Serv., Inc., 856 F.3d 416 (6th Cir. 2017).⁴ Like the instant case, Progressive Distribution involved reverseconfusion trademark infringement.⁵ At the end of the hearing, counsel for both sides made closing arguments, which included the impact of the Progressive Distribution decision on their respective positions.

II. STANDARD OF REVIEW

"'A preliminary injunction is an extraordinary remedy never awarded as of right.'" CLT Logistics v. River W. Brands, 777 F. Supp. 2d 1052, 1064 (E.D. Mich. 2011) (quoting Winter v. Natural Res. Def. Council, 555 U.S. 7, 24, 129 S. Ct. 365, 172 L. Ed. 2d 249 (2008)). An injunction should be granted "'only if the movant carries [its] burden of proving that the circumstances clearly demand it.'" Id. (quoting Overstreet v. Lexington-Fayette Urban County Gov't, 305 F.3d 566, 573 (6th Cir. 2002)) (further citation omitted). "'[T]he proof required for the plaintiff to obtain a preliminary injunction is much more stringent than the proof required to survive a summary judgment motion.'" Id. (quoting Leary v. Daeschner, 228 F.3d 729, 739 (6th Cir. 2000)). Plaintiff must "affirmatively demonstrate entitlement to injunctive relief." Id.

In determining whether to issue a preliminary injunction, the Court considers four well-known factors: (1) whether plaintiff has established a strong likelihood of success on the merits; (2) whether plaintiff will suffer irreparable harm without an injunction; (3)whether issuing an injunction will cause substantial harm to others; and (4) whether an injunction will serve the public interest. Id. (citing Winter, 555 U.S. at 20; ACLU of Ky. v. McCreary County, Ky., 354 F.3d 438, 445 (6th Cir. 2003)). These four considerations are factors to be balanced, not prerequisites that must satisfied. Callan v. Fischer, No. 3:16-CV-734, 2016 WL 6886870, at *1 (W.D. Ky. Nov. 19, 2016) (collecting Sixth Circuit cases). "'Although no one factor is controlling, a finding that there is simply no likelihood of success on the merits is usually fatal.'" O'Toole v. O'Connor, 802 F.3d 783, 788 (6th Cir. 2015) (quoting Gonzales v. Nat'l Bd. of Med. Exam'rs, 225 F.3d 620, 625 (6th Cir. 2000)).

III. ANALYSIS

A. Plaintiff Has Not Demonstrated A Likelihood Of Success On The Merits

In this reverse confusion case, FirstPower alleges federal and state trademark infringement and unfair competition claims, and a state law claim under Ohio's Deceptive Trade Practices Act. "Regardless of the theory of infringement alleged, a plaintiff must show that there is a likelihood of consumer confusion."⁶ ProgressiveDistribution, 856 F.3d at 425 (citation omitted). Thus, in order to establish a likelihood of success on the merits, plaintiff must establish that consumer confusion is likely.⁷

The Sixth Circuit utilizes an eight-factor analysis to determine the likelihood of consumer confusion:

(1) strength of the plaintiff's mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the marks; and (8) likelihood of expansion of the product lines.

Progressive Distribution, 856 F.3d at 424 (citing Frisch's Rest., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982)) (further citation omitted).

There is no mathematical precision in the application of these eight factors. Rather, they are a guide for the Court in determining the "'ultimate question [of] whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.'" Id. (quoting Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991)).

1. Strength of FirstPower's mark

"The strength of the mark factor 'focuses on the distinctiveness of a mark and its recognition among the public.'" Id. at 427 (quoting Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 631 (6th Cir. 2002)). The Sixth Circuit has explained that:

the strength evaluation encompasses two separate components: (1) conceptual strength, or placement of the mark on the spectrum of marks, which encapsulates the question of inherent distinctiveness; and (2) commercial strength or the marketplace recognition value of the mark.

Id. at 428 (internal quotation marks omitted) (quoting Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 419 (6th Cir. 2012)) (further citation omitted).

A mark's distinctiveness and resulting conceptual strength 'depends partly upon which of four categories it occupies: generic, descriptive, suggestive, and fanciful or arbitrary.' Therma-Scan, 295 F.3d at 631 (internal quotation marks omitted). A descriptive mark 'specifically describes a characteristic or ingredient of an article,' while an arbitrary mark 'has a significance recognized in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached, such as CAMEL cigarettes or APPLE computers.' Id. (internal quotation marks, citation, and brackets omitted).

Id.

Conceptual strength

Plaintiff argues that its EZ REACH marks "are relatively strong" on the spectrum ranging from descriptive⁸ to arbitrary, and the registration of its mark with the USPTO demonstrates that the mark is not merely descriptive.⁹ Defendants disagree, arguing thatplaintiff's EZ REACH trademark is descriptive because it describes a characteristic of FirstPower's lubricants—its applicator. (Opp'n at 598.) In support, defendants point to plaintiff's website, which touts its "Extended Reach Applicator" as "ideal for surfaces requiring lubrication which are not accessible for grease or paste application." (Opp'n at 598, emphasis omitted.)

Plaintiff contends that EZ REACH is a suggestive mark. (Mot. at...