Sorensen v. WD-40 Co.

• Citation: 115 U.S.P.Q.2d 1128,792 F.3d 712
• Decision Date: 11 June 2015
• Docket Number: No. 14–3067.,14–3067.
• Parties: Jeffrey SORENSEN, Plaintiff–Appellant, v. WD–40 COMPANY, Defendant–Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

792 F.3d 712

115 U.S.P.Q.2d 1128

Jeffrey SORENSEN, Plaintiff–Appellant

v.WD–40 COMPANY, Defendant–Appellee.

No. 14–3067.

United States Court of Appeals, Seventh Circuit.

Argued Feb. 25, 2015.

Decided June 11, 2015.

Rehearing and Rehearing En Banc Denied July 14, 2015.

Mark J. Liss, Attorney, Leydig, Voit & Mayer, Ltd., Vivek Jayaram, Attorney, Chicago, IL, for Plaintiff–Appellant.

Lisel M. Ferguson, Attorney, Kathleen A. Brown, Attorney, Heather A. Cameron, Attorney, Anthony J. Dain, Attorney, Procopio, Cory, Hargeaves & Savitch LLP, San Diego, CA, Robert A. Carson, Attorney, Gould & Ratner, Chicago, IL, for Defendant–Appellee.

Before BAUER, FLAUM, and MANION, Circuit Judges.

Opinion

FLAUM, Circuit Judge.

Plaintiff Jeffrey Sorensen is the founder and CEO of Inhibitor Technology Corporation, which produces a line of rust-inhibiting products containing a substance called volatile corrosion inhibitor (“VCI”). This line of products is branded with the federally registered trademark THE INHIBITOR. That word mark is owned by Sorensen; he also claims common law trademark rights in a design mark associated with his products, an orange-and-black crosshair.

In 2011, the WD–40 Company, the well-known maker of spray lubricant, introduced a new sub-brand of products known as the WD–40 Specialist product line. According to Sorensen, the branding for these products infringes upon his marks. In particular, one of the WD–40 products—WD–40 Specialist Long–Term Corrosion Inhibitor, which contains VCI and has a purpose similar to that of Sorensen's products—contains on its packaging both the word “inhibitor” and an orange crosshair. So, Sorensen filed suit against WD–40 in the Northern District of Illinois, alleging trademark infringement and unfair competition under both federal and Illinois law.

The district court granted summary judgment in favor of WD–40 on all counts. It found that WD–40's use of the word “inhibitor” on the label of WD–40 Specialist Long–Term Corrosion Inhibitor was a non-trademark descriptive fair use of the word. As to the crosshair mark, the district court found that Sorensen had not presented sufficient evidence to demonstrate a genuine issue of material fact as to a likelihood of confusion. Sorensen appeals the grant of summary judgment. We affirm the judgment of the district court.

I. Background

In 1997, Jeffrey Sorensen founded a company called Van Patten Industries and began selling rust preventative products under the name THE INHIBITOR. That company existed until 2010. Now, Sorensen is the CEO of Inhibitor Technology Corporation, which he founded and which continues to sell THE INHIBITOR line of products. These products contain VCI, which prevents corrosion by creating a chemical barrier on materials that repels moisture and water.

Sorensen claims to own two trademarks related to his line of products. First, he is the owner of the word mark THE INHIBITOR, which was registered on the United States Patent and Trademark Office's Principal Register on August 6, 2002. See THE INHIBITOR, Registration No. 2,604,283. That mark attained incontestable status in August 2008. Second, Sorensen claims ownership of a common law (i.e., unregistered) trademark in a crosshair design, which consists of a black crosshair symbol over an orange background, with a different black symbol in each quadrant of the crosshair (the “Sorensen crosshair”).¹ The district court assumed without deciding that these marks were valid and protectable.

Sorensen sells a variety of products using these marks, including “plugs,” “pro chips,” spray oil, oil wipes, grease, degreaser, covers, “poly bags,” “VCI paper,” and wiping cloths, all of which contain VCI. The words THE INHIBITOR appear consistently on all of these products. The crosshair design mark, however, appears on only some of his products, and its appearance is inconsistent. For example, on the VCI Pro Chips and the V80 VCI Wiping Cloth—among others—there is no crosshair, but rather only an orange-and-black bull's-eye that replaces the “O” in a stylized THE INHIBITOR logo. But on the V80 VCI Oil Blend and the V80 VCI Oil Wipe, the crosshair mark appears both on its own and as the “O” in THE INHIBITOR.

Sorensen generally targets his sales at firearm, fishing, and hunting enthusiasts, as well as members of the military. Until 2008, he promoted his products in various hunting and fishing print and online media; since then, he has used Facebook and his website as his primary methods of advertising. Sorensen also promotes his products at trade shows and by word of mouth. Since July 2012, his chips and plugs have been sold in the tools, storage, and tool box sections of Menards retail stores in the Midwest. In his deposition, Sorensen also stated that he was working on getting his oil products into Menards, but has not yet done so. He also said that his products are sold in other big box stores and smaller hardware stores across the country.

WD–40 is a well-known producer of multipurpose lubricant spray. Its primary product carries a trademark consisting of a yellow shield bearing the name “WD–40” in blue characters. According to a survey conducted by the company and submitted into the record, four out of five Americans have used WD–40 products. In late 2011, WD–40 introduced a sub-brand called the WD–40 Specialist product line. There are eight products in this line. With one exception, they all come in metal aerosol spray bottles with the WD–40 shield above the trademarked SPECIALIST mark. Below that is the specific product's name, such as “Long–Term Corrosion Inhibitor,” and below that is the crosshair design that is at issue in this suit (the “WD–40 crosshair”).

WD–40 obtained a registered design mark in a simple black-and-white crosshair design. On the bottles, though, the WD–40 crosshair appears differently on each product. For example, on the Long–Term Corrosion Inhibitor, the crosshair is made of a gray cross over a burnt orange background, with a black circle perimeter and a different silver-black symbol in each quadrant of the crosshair. The background color and symbols are different on each of the Specialist products. Because of its orange crosshair and its name, the Long–Term Corrosion Inhibitor is of central importance to this case. That product is also important because of its ingredients and function; it contains VCI and is meant to inhibit rust for a long period of time. According to WD–40, in marketing its Specialist products, the company focuses on tradesmen, industrial consumers, auto consumers, construction workers, and maintenance workers, with the greatest focus on the auto industry. The Specialist products are promoted in numerous print and online media, none of which overlap with the media in which Sorensen's products have been advertised.

WD–40's decision to develop the Specialist line was led by an executive named Graham Milner, who headed a group called the Brand Extension Exploration Project. At his deposition, Milner denied that WD–40 ever considered forming a partnership with Sorensen's company. However, a document produced for WD–40 by an outside consulting group, Innovation Edge, suggested the possibility of WD–40 forming a partnership with one of five firms to produce a new corrosion inhibition product; one of the five firms mentioned was Van Patten Industries, Sorensen's former company. Milner stated that his team first became aware of Van Patten as a potential technology provider when he received this document in 2009 or 2010. Milner also said that he was aware of Van Patten before WD–40's decision to use the name “Long–Term Corrosion Inhibitor,” but he denied any knowledge of Sorensen's crosshair design mark. According to Milner, WD–40's marketing for the Specialist line focuses on mechanics and other professional users, but not the hunting or fishing industry.

Milner also testified that WD–40 had considered using other names

for this product, including “corrosion-preventing spray,” “advanced corrosion preventer,” and “rust-preventing spray.” According to Milner, the name Long–Term Corrosion Inhibitor was chosen due to findings by an outside research agency. The district court found that there are multiple products on the market containing VCI and displaying the word “inhibitor” that are not manufactured or sold by either party to this case. The WD–40 crosshair design was created by ECHO Brand Design, a London-based firm. WD–40 adopted the design after testing it with consumers.

Another WD–40 executive, Maria Mitchell, was also deposed. She testified that she had never heard of Sorensen, Van Patten, or THE INHIBITOR products prior to the filing of this suit. At her deposition, Mitchell identified a 10–page document generated by Innovation Edge entitled “Executive Summary,” which WD–40 had produced in discovery and which reads: “The resulting product [WD–40's VCI spray] may have some characteristics related to, for example, ... Inhibitor® VCI technology from Van Patten Industries.” Mitchell admitted that the document indicated that WD–40 had knowledge of Van Patten and The Inhibitor line of products but she did not know when WD–40 came into possession of the document.

Cheryl Perkins, the founder of Innovation Edge, was also deposed. She described the making of that Executive Summary, and acknowledged an email sent by Innovation Edge to WD–40 that listed Van Patten as a prospective partner for VCI technology development. Another document, “Conceptual Ideas Presented to Innovationedge, LLC,” was created by Innovation Edge and sent to individuals at WD–40 in early 2010. That document includes a reference to Van Patten as a possible partner, as does another document sent from Innovation Edge to WD–40 called “WD–40 Brand Extension Exploration Project Business Case–Corrosion Products.” Perkins stated that Innovation Edge never incorporated any of Sorensen's products into any presentation or document provided to WD–40, and that she had never visited Sorensen's website, though...