RGB Plastic, LLC v. First Pack, LLC

• Decision Date: 04 May 2016
• Docket Number: No. 14 C 08744,14 C 08744
• Citation: 184 F.Supp.3d 649
• Parties: RGB Plastic, LLC, d/b/a Restaurantware, Plaintiff, v. First Pack, LLC, d/b/a Pack N Wood, Defendant.
• Court: U.S. District Court — Northern District of Illinois

184 F.Supp.3d 649

RGB Plastic, LLC, d/b/a Restaurantware, Plaintiff,

v.First Pack, LLC, d/b/a Pack N Wood, Defendant.

No. 14 C 08744

United States District Court, N.D. Illinois, Eastern Division.

Signed May 4, 2016

Charles Lincoln Philbrick, Emily A. Shupe, Kaitlyn Anne Wild, Michael Paul Adams, Polina Arsentyeva, Rathje & Woodward, LLC, Wheaton, IL, for Plaintiff.

Steven L. Baron, Natalie Anne Harris, Catherine Leigh Gibbons, Cristina M. Salvato, Mandell Menkes LLC, Chicago, IL, for Defendant.

MEMORANDUM OPINION AND ORDER

Honorable Edmond E. Chang, United States District Judge

A service mark identifies the source of services, as distinct from a trademark, which identifies the source of goods. RGB Plastic LLC, which goes by the name Restaurantware, brought this action against First Pack, LLC (which uses the name Pack N Wood) in a dispute over Restaurantware's service mark, "Fashion for Food."¹ Restaurantware asserts five claims against First Pack: (1) service mark infringement under section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1) ; (2) unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) ; (3) false description under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) ; (4) violation of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2 ; and (5) violation of the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/2.² R. 1, Compl.³ In response, First Pack counterclaimed against Restaurantware to cancel the service mark registration, alleging both that the mark is void and that Restaurantware committed fraud on the Patent and Trademark Office in obtaining the mark. R. 57, Am. Answer. First Pack now moves for summary judgment on its counterclaim, as well as against all of Restaurantware's claims and on First Pack's laches affirmative defense to those claims. R. 146, Def.'s Mot. Summ. J.; R. 164, Def.'s Br.⁴ For its part, Restaurantware moves for partial summary judgment against First Pack's counterclaim. R. 180, Pl.'s Resp. Br. For the reasons discussed below, First Pack's motion is in large part denied on the cancellation counterclaim, although it is a close call. Restaurantware's corresponding cross-motion against the cancellation counterclaim is denied. First Pack's motion also is denied on the issues of prior use, infringement, and laches.

I. Background

To decide cross motions for summary judgment, the facts are viewed in the light most favorable to the respective non-moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). So when the Court evaluates Restaurantware's summary judgment motion, First Pack gets the benefit of reasonable inferences; conversely, when evaluating First Pack's motion, it is Restaurantware that gets the benefit of the doubt.

A. Restaurantware: "Fashion for Food"

Restaurantware is an Illinois-based retailer that sells tableware, cutlery, and flatware with a focus on eco-friendly products. R. 150, DSOF ¶ 11; R. 182, PSOF ¶ 15; R. 172 at Exh. 5, Rinella Decl. ¶ 3. Restaurantware does not manufacture the products it sells. PSOF ¶ 8; R. 182-2, Exh. 37, Rinella Dep. 52:9-23. Most of Restaurantware's customers are food industry professionals, such as restaurants, restaurant-supply companies, and catering companies, which buy Restaurantware's products via the company's website and catalogs. Exh. 5, Rinella Decl. ¶ 3.

In February or March 2011, Restaurantware developed the phrase "Fashion for Food" (though not with that capitalization) to describe bamboo skewers that Restaurantware sold.⁵ PSOF ¶ 1; R. 206, Def.'s Resp. PSOF ¶ 1; R. 172 at Exh. 10, Restaurantware's Resp. to First Pack's First Set of Interr. ¶ 8. By July 2011, Restaurantware sold the bamboo skewers on its website, and the product description included the phrase, "These are truly fashion for food!" PSOF ¶ 3; Def.'s Resp. PSOF ¶ 3; Exh. 5, Rinella Decl. ¶ 5 and Exh. 2 thereto; Exh. 10 Restaurantware's Resp. to First Pack's First Set of Interr. ¶ 8. The product "Brand" listed for the skewers was "Restaurantware LLC." R. 172, Exh. 5, Rinella Decl. ¶ 5 and Exh. 2 thereto.

After the product description on the website, the next display of the mark was in August 2011, when the "Fashion for Food" tagline was on a Restaurantware sign at an Arizona trade show hosted by a company called European Imports. PSOF ¶ 4; Def.'s Resp. PSOF ¶ 4; Exh. 5, Rinella Decl. ¶ 7 and Exh. 4 thereto; R. 182-3, Exh. 38, Restaurantware 30(b)(6) Dep. 12:4-10. About 500 people attended the trade show. DSOF ¶ 16; R. 172 at Exh. 12, Restaurantware 30(b)(6) Dep. 12:13-17; R. 172 at Exh. 13, Pohanka Dep. 46:3-7. The Restaurantware sign was on an 8 ½ by 11-inch, letter-sized piece of paper, and contained the "Fashion for Food" tagline, Restaurantware's logo and contact information, including its website address, and a picture of dessert tureens. DSOF ¶ 16; R. 172, Exh. 5, Rinella Decl., Exh. 4 thereto.

Next, in 2012, Restaurantware added its "Fashion for Food" tagline to its founders' business cards. DSOF ¶ 17; R. 182, Pl.'s Resp. DSOF ¶ 17. Like the trade show sign, the business card displayed the "Fashion for Food" tagline, along with Restaurantware's logo and contact information, including its website address. PSOF ¶ 4; R. 182-15, Exh. 50; Exh. 38, Restaurantware 30(b)(6) Dep. 53:16-24.

Restaurantware filed a service mark application for "Fashion for Food" on February 26, 2013. Exh. 5, Rinella Decl. ¶ 14 and Exh. 11 thereto. The PTO uses defined "classes" to categorize the different types of marks, and Restaurantware specifically sought to register its tagline as an "International Class 035" mark to identify its services. Restaurantware described the services as:

Marketing services , namely, promoting or advertising the cutlery, tableware and flatware of others; Marketing services for the cutlery, tableware and flatware of others; On-line retail store services featuring a wide variety of cutlery, tableware and flatware of others; Promoting the cutlery, tableware and flatware of others; Providing a searchable website featuring the cutlery, tableware and flatware of other vendors; Retail store services featuring a wide variety of cutlery, tableware and flatware of others; The bringing together, for the benefit of others , of a variety of cutlery, tableware and flatware, enabling customers to conveniently view and purchase those goods.

Id. (emphases added). Restaurantware stated in its application that it first used the mark in commerce "at least as early as 02/28/2011." Exh. 5, Rinella Decl. at Exh. 11. Restaurantware submitted its business card to show use of "Fashion for Food" in commerce in connection with its International Class 035 services. DSOF ¶ 21; Exh. 5, Rinella Decl. ¶ 16 and Exh. 11 thereto at RGB.576. But the PTO rejected the business card as a valid specimen because it "ma[de] no reference to retail or promotional services or services consisting of a searchable website." DSOF ¶ 21; Exh. 5, Rinella Decl. ¶ 18 and Exh. 12 thereto at RGB.565.

In response to the rejection, Restaurantware submitted a picture of packaging tape displaying its "Fashion for Food" tagline as a substitute example. DSOF ¶ 22; Exh. 5, Rinella Decl. ¶ 19 and Exh. 13 thereto at RGB.560-563. The PTO also rejected this example, finding that it "depict[ed] the mark on packaging for products sold through the services," instead of "depicting the mark in relation to ... services." DSOF ¶ 22; Exh. 5, Rinella Decl. ¶ 20 and Exh. 14 thereto at RGB.547.

In March 2014, Restaurantware took another shot, submitting excerpts from its Fall/Winter 2014 catalog as substitute examples. DSOF ¶ 23; Exh. 5, Rinella Decl. ¶ 21 and Exh. 15 thereto. The cover of the catalog featured the "Fashion for Food" tagline, Restaurantware's logo and website, and a picture of desserts. DSOF ¶ 23; Exh. 5, Rinella Decl. ¶ 21 and Exh. 15 thereto at RGB.544-45. Restaurantware represented to the PTO that it used the Fall/Winter 2014 catalog in commerce "at least as early as the filing date of the application"—February 26, 2013. DSOF ¶ 23; Exh. 5, Rinella Decl. ¶ 21 and Exh. 15 thereto at RGB.540. In fact, however, Restaurantware did not use the Fall/Winter 2014 catalog until October 2014. DSOF ¶ 26; Pl.'s Resp. DSOF ¶ 26; Exh. 12, Restaurantware 30(b)(6) Dep. 73:13-21; R. 172 at Exh. 19, Runde Dep. 57:11-59:18; R. 172 at Exh. 20, Runde Dep. Exh. 105; R. 172 at Exh. 21, Runde Dep. Exh. 106. The PTO approved Restaurantware's application based on the Fall/Winter 2014 catalog specimen, and as a result, issued a service mark (Registration Number 4,570,714) for "Fashion for Food" in July 2014. DSOF ¶ 23; Exh. 5, Rinella Decl. ¶ 22 and Exh. 17 thereto.

B. First Pack: "Everyday Fashion for Food Packaging"

First Pack is part of a family-owned French company that sells eco-friendly food packaging products to food industry professionals. DSOF ¶¶ 5, 6; PSOF ¶ 15; R. 172 at Exh. 3, Merran Decl. ¶¶ 1, 2. First Pack sells its products via its website, catalogs, trade shows, and independent sales representatives. DSOF ¶ 6; Exh. 3, Merran Decl. ¶ 2.

In February 2012, First Pack developed the tagline "Everyday Fashion for Food Packaging" and used it to market tableware products at a trade show. DSOF ¶¶ 7, 8; Pl.'s Resp. DSOF ¶ 8; Exh. 3, Merran Decl. ¶¶ 3, 5. First Pack also placed the tagline on the cover of its 2012 product catalog. Exh. 3, Merran Decl. ¶ 6 and Exh. C thereto. The cover of the catalog showed the tagline, the First Pack brand name and logo, and a picture of petite food skewers. Id. By June 2012, First Pack had also placed the tagline on its corporate letterhead and website. DSOF ¶ 9; Pl.'s Resp. DSOF ¶ 9; Exh. 3, Merran Decl. ¶ 7. First Pack has used its tagline on its catalogs, website, and other promotional materials ever since. DSOF ¶ 9; Pl.'s Resp. DSOF ¶ 9.

In August 2014, First Pack filed a trademark application to register "Everyday Fashion for Food." PSOF ¶ 30; R. 182-14, Exh. 49. The PTO...