Ill. Tool Works Inc. v. J-B Weld Co.

• Decision Date: 26 June 2020
• Docket Number: No. 3:19-cv-01434 (JAM),3:19-cv-01434 (JAM)
• Citation: 469 F.Supp.3d 4
• Parties: ILLINOIS TOOL WORKS INC., Plaintiff, v. J-B WELD COMPANY, LLC, Defendant.
• Court: U.S. District Court — District of Connecticut

469 F.Supp.3d 4

ILLINOIS TOOL WORKS INC., Plaintiff,

v.J-B WELD COMPANY, LLC, Defendant.

No. 3:19-cv-01434 (JAM)

United States District Court, D. Connecticut.

Signed June 26, 2020

Bradley L. Cohn, Ashly Boesche, Jacquelyn Prom, Jessica Ekhoff, Pattishall, McAuliffe et al., Chicago, IL, Timothy Andrew Diemand, Wiggin & Dana, Hartford, CT, for Plaintiff.

Ashley Summer, Nelson Mullins Riley & Scarborough, LLP, New York, NY, Kevin P. Polansky, Nelson Mullins Riley & Scarborough, LLP, Boston, MA, Neil C. Jones, Nelson Mullins Riley & Scarborough, LLP, Greenville, SC, for Defendant.

ORDER GRANTING PARTIAL MOTION TO DISMISS

Jeffrey Alker Meyer, United States District Judge Plaintiff Illinois Tool Works Inc. ("ITW") has registered the term "MUFFLER WELD" as a word mark for a product it sells to seal cracks on car mufflers. In 2018, J-B Weld Company, LLC ("J-B Weld") began to sell its own formulation of muffler sealant using the word mark "MufflerWeld." In light of the similarity of these marks, I granted ITW a preliminary injunction to bar J-B Weld from continuing to market its product under the "MufflerWeld" name during the pendency of this litigation, concluding that ITW was likely to prevail on its claim that J-B Weld's product infringed its trademark. See Illinois Tool Works Inc. v. J-B Weld Co., LLC , 419 F. Supp. 3d 382 (D. Conn. 2019) (" J-B Weld I "), as modified , 2019 WL 7816510 (" J-B Weld II ").

In that decision, however, I reserved judgment on whether ITW had stated a claim that J-B Weld counterfeited its MUFFLER WELD mark. See J-B Weld I , 419 F. Supp. 3d. at 401 n. 14. Counterfeiting is "the ‘hard core’ or ‘first degree’ of trademark infringement." Gucci Am., Inc. v. Guess?, Inc. , 868 F. Supp. 2d 207, 242 (S.D.N.Y. 2012). One who counterfeits necessarily infringes a trademark, but one who merely infringes a trademark may not have counterfeited. See Gucci Am., Inc. v. Duty Free Apparel, Ltd. , 286 F. Supp. 2d 284, 287 (S.D.N.Y. 2003). Because I based my preliminary injunction on infringement, I left for another day ITW's claim that J-B Weld engaged in counterfeiting.

That day has now arrived. J-B Weld has moved to dismiss ITW's complaint solely insofar as it alleges that J-B Weld's product counterfeited, rather than simply infringed, the MUFFLER WELD mark. I conclude that the facts of this case as pled in the complaint are consistent only with infringement, not with counterfeiting, and will accordingly grant J-B Weld's motion to dismiss Count One of the complaint.

BACKGROUND

The following facts are taken from the complaint and are assumed to be true solely for purposes of this motion to dismiss. Since 1977, ITW has owned a registered trademark for the words "MUFFLER WELD" when used "for paste sealer for repairing muffler holes." Doc. #1 at 7 (¶ 18); see MUFFLER WELD, U.S. Trademark Registration No. 1,064,459 (Apr. 26, 1977), reproduced in Doc. #1-2 at 4. Using this trademark, ITW has for many years sold a muffler sealant called MUFFLER WELD. ITW's MUFFLER WELD product is dispensed from a small black tub (from which the product is designed to be scooped) and appears in the center of a flame motif with "MUFFLER WELD" in capital white letters at the top of the package, with "Exhaust System Repair" immediately below it, and "MUFFLER-CAST" in smaller black letters immediately above and to the right; VersaChem, the house brand under which ITW sells MUFFLER WELD, appears on the face of the tub itself and in a small logo on the top left. Doc. #1 at 7.

Sometime in the last three years, J-B Weld began to sell its own paste sealer for repairing muffler holes, and it called its product "MufflerWeld." Id. at 8 (¶¶ 24-26). Unlike the ITW product, J-B Weld's product is dispensed directly from a squeezable tube; the packaging's colors are alternating bands of red and white except at the top of the tube, which has a black band on which the J-B Weld logo is superimposed. Immediately beneath the J-B Weld logo is the mark "MufflerWeld," and immediately beneath "MufflerWeld" is the legend "Muffler Cement." Doc. #1 at 9.¹

Below are side-by-side images of the two products as represented in the complaint. It is obvious that they don't look like one another, except, of course, for their near-identical name.

At the time it filed this lawsuit, ITW moved for a preliminary injunction, Doc. #4, seeking an order barring J-B Weld from marketing its muffler sealant using the mark "MufflerWeld" and recalling the J-B Weld "MufflerWeld" products currently on the market. I granted ITW's motion for preliminary injunction, see J-B Weld I , 419 F. Supp. 3d 382 (D. Conn. 2019), subsequently modifying the terms of the injunction to permit J-B Weld to simply relabel its products already on the market in lieu of a recall, see J-B Weld II , 2019 WL 7816510 at *1.

My grant of a preliminary injunction rested on the likelihood that ITW could demonstrate that J-B Weld infringed its trademark. See J-B Weld I , 419 F. Supp. 3d. at 401. It may therefore be taken as established, that ITW's complaint states a plausible claim for trademark infringement (Count Two of the complaint). Cf. Docs. #56, #58, #61 (appeal of preliminary injunction, denial of stay by Court of Appeals, withdrawal of appeal). But "[b]ecause my conclusion that ITW has succeeded in showing likelihood of confusion satisfies the first prong of the preliminary injunction test, I [did] not make any determinations as to its counterfeit claim." J-B Weld I , 419 F. Supp. 3d. at 401 n. 14. I will now do so.

DISCUSSION

When considering a motion to dismiss under Rule 12(b)(6), a court must accept as true all factual matters alleged in a complaint, although a complaint may not survive unless the facts it recites are enough to state plausible grounds for relief. See, e.g., Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). As the Supreme Court has explained, this "plausibility" requirement is "not akin to a probability requirement," but it "asks for more than a sheer possibility that a defendant has acted unlawfully." Ibid. In other words, a valid claim for relief must cross "the line between possibility and plausibility." Bell Atlantic Corp. v. Twombly , 550 U.S. 544, 557, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007).

In addition, a complaint cannot rely on just conclusory allegations. See Hernandez v. United States , 939 F.3d 191, 198 (2d Cir. 2019). A complaint that makes a threadbare recital of the elements of a cause of action without including supporting factual allegations does not establish plausible grounds for relief. Ibid.

What is counterfeiting?

The Lanham Act defines a "counterfeit" mark as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." 15 U.S.C. § 1127 ; see also 15 U.S.C. § 1116(d)(1)(B)(i) (injunctive relief against use of "a counterfeit of a mark that is registered on the Principal Register"); 15 U.S.C. § 1117(b) (treble damages and attorney's fees against a defendant who "intentionally use[s] a mark or designation, knowing such mark or designation is a counterfeit mark"). A counterfeit is distinguished from a junior mark that simply infringes a senior mark, which requires merely that the junior mark be a "colorable imitation ... likely to cause confusion or mistake or to deceive." 15 U.S.C. § 1127.

In Montres Rolex, S.A. v. Snyder , 718 F.2d 524 (2d Cir. 1983), the Second Circuit interpreted these statutory terms to require a court, when determining whether counterfeiting has occurred, to examine the allegedly counterfeit product "from the standpoint of an average purchaser" and compare the product "with the registered mark imprinted on actual merchandise." Id. at 526. Importantly for this case, Snyder did not concern a trade dress registration, but rather a registration for a particular design (the Rolex "Crown") that appeared in distorted but recognizable form on the infringing products. This, the Second Circuit held, sufficed to constitute a "counterfeit." Id. at 533.

The complication here is that, as I have already found, "[t]his case features senior and junior marks that are identical; they are the same words pronounced the same way and differ on the packaging only by the removal of a space between the two (nonetheless obviously distinct) words and a trivial alteration in capitalization." J-B Weld I , 419 F. Supp. 3d at 393.² Because the mark to be protected here is a word mark and not a service mark or trade dress, cf. Kelly-Brown v. Winfrey , 717 F.3d 295, 314 (2d Cir. 2013) (no counterfeit even when service marks were textually identical because "stylized, powder-blue letters" were part of the registration of the senior mark), the marks are substantively identical.

ITW argues that it need not show anything more than that J-B Weld's mark is "identical" or "substantially indistinguishable" from its own; identical marks, it argues, are counterfeits. But ITW's argument reads out an important word in the Lanham Act's definition of a counterfeit mark: "spurious." Marks are not counterfeits solely by reason of their visual or aural indistinguishability. To be a counterfeit, a junior mark must both be substantially indistinguishable from the registered mark and be "spurious"—that is, indistinguishable in such a way that the junior mark "trick[s] the consumer into believing he or she is getting" the product denoted by the registered mark. See Guess? , 868 F. Supp. 2d at 242.³

In determining whether a customer would be so tricked, the Second Circuit explained in Snyder , it is the appearance of the mark on the "actual merchandise," rather than comparison of the marks in the abstract, that matters. See Snyder , 718 F.2d at 532-33 ; see also Fujifilm N. Am. Corp. v. PLR IP Holdings, LLC , 2019 WL 274967, at *3 (S.D.N.Y. 2019) (concluding that counterfeiting occurs only where the substantially identical mark is used "to pass off the infringer's product as the original, rather than merely presented in a manner...