TWD, LLC v. Grunt Style LLC

• Decision Date: 12 April 2022
• Docket Number: 18 C 7695
• Citation: 598 F.Supp.3d 676
• Parties: TWD, LLC, Plaintiff, v. GRUNT STYLE LLC, Defendant.
• Court: U.S. District Court — Northern District of Illinois

598 F.Supp.3d 676

TWD, LLC, Plaintiff,

v.GRUNT STYLE LLC, Defendant.

18 C 7695

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

Signed April 12, 2022

Quinn Darren J. Quinn, Law Offices of Darren J. Quinn, Del Mar, CA, Yanling Jiang, JiangIP LLC, Chicago, IL, for Plaintiff.

Geoffrey Baldwin, Pro Hac Vice, Baldwin Legal Group APC, San Diego, CA, Christopher William Niro, Matthew L. De Preter, Aronberg Goldgehn Davis & Garmisa, Chicago, IL, Kathleen Ann Lyons, Olson & Cepuritis, Ltd., Chicago, IL, for Defendant.

MEMORANDUM OPINION

CHARLES P. KOCORAS, District Judge:

Before the Court is Defendant Grunt Style LLC's ("Grunt Style") Motion for Partial Summary Judgment. For the following reasons, the Court grants the Motion.

BACKGROUND

In resolving a motion for summary judgment, the Court views the evidence in the light most favorable to the nonmovant. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The following facts are taken from the record and are undisputed unless otherwise noted.

This action raises an issue over the ownership of the "THIS WE'LL DEFEND" trademark (the "Mark"). Plaintiff TWD, LLC ("TWD") owns U.S. Trademark Number 4880766, while Defendant Grunt Style asserts it has common law rights to the Mark.

I. Grunt Style's History and Use of the Mark

Grunt Style traces its beginnings to 2009 when Daniel Alarik, a U.S. Army veteran, began selling apparel out of his car. Alarik marketed his apparel under the marks "Grunt Style," which is a reference to his time as an Army "grunt," and "This We'll Defend," which is an homage to his time in the U.S. Army as a drill sergeant. Alarik lived in Georgia at the time he started the company, so he initially formed the company as a Georgia limited liability company ("Grunt Style Georgia").

However, Alarik moved to Illinois and wanted his company to be an Illinois company. So, in May 2014, Alarik filed a certificate of termination with the Georgia Secretary of State and Grunt Style Georgia was dissolved on June 11, 2014. Grunt Style's Illinois articles of organization were filed with the Illinois Secretary of State on June 17, 2014. That company is the Defendant in this action. Alarik ensured that the Illinois company worked to wrap up the Grunt Style Georgia's affairs, including fulfilling all pending orders on the Grunt Style Georgia's—www.gruntstyle.com—which is now Defendant Grunt Style's website.

Grunt Style began prominently using the Mark in 2011, featuring it on hangtags, iron-on collar tags, company letterheads, and directly on its shirts. When using the Mark in this manner, it was included directly next to or directly below the company name. See Dkt. # 167-1, ¶¶ 14, 16–17, 20. Around the same time, Grunt Style began using the Mark on its online retail store, www.gruntstyle.com, including in the browser tab and header.

As the company grew, Grunt Style developed an insignia featuring two crossed rifles—a reference to the United States and its independence—and the initials of the company. Grunt Style also uses a design featuring the insignia with the name of the company above the insignia and the Mark below the insignia. Grunt Style owns Federal Trademark Registration Number 4991746 for this design. The trademarked design is featured on its clothes, both as a tag and on the sleeve, and in the online retail store header. Grunt style also uses the Mark on its own, directly emblazoned on the front, back, and sleeve of shirts, and on the leg of a pair of shorts. See id. at ¶ 20.

II. TWD's History and Use of the Mark

TWD is a California limited liability company founded by Tim Bauer in 2013. Bauer first became familiar with the phrase "this we'll defend" in 2004 while doing research on historical American flags. The phrase was featured on a flag used by the U.S. War Office in 1778. Bauer wanted to start a brand that "would echo [his] strong sense of gun advocacy and patriotism to others who felt the same way." Dkt. # 176-16, ¶ 3. He conducted research on the use of the phrase with the U.S. Patent and Trademark Office ("USPTO") and on Google. Finding no apparent prior use, he purchased the domain name "www.thiswelldefend.com" in April 2013. Bauer then began designing t-shirts and sold his first shirt in September 2014.

TWD applied for a trademark in May 2015. TWD received its federal trademark for use of the Mark on t-shirts in Class 25 in January 2016. In July 2019, TWD and the U.S. Department of the Army, which owns a federal trademark for use of the Mark in connection with career services, entered into a written agreement allowing for TWD's use of the Mark for the sale of clothes in Class 25, or online or retail sales in Class 35. TWD continues to use the Mark on its website and on shirts, both on the tag and on the front of the shirt.

TWD alleges Grunt Style's use of the Mark infringes on its federally registered trademark in violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a). Grunt Style also brings several counterclaims, including a declaratory judgment for invalidity of TWD's registered trademark; a declaratory judgment of non-infringement of TWD's registered trademark; violations of the Lanham Act, 15 U.S.C. § 1125 ; common law trademark infringement; common law unfair competition; violations of the Illinois Deceptive Business Practices Act, 815 ILCS 510/1 et seq. ; and a violation of California's unfair competition law, Cal. Bus. & Prof. Code § 17200, et seq. Grunt Style now moves for partial summary judgment.

LEGAL STANDARD

Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (citation omitted). "A genuine dispute as to any material fact exists if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Kvapil v. Chippewa Cnty. , 752 F.3d 708, 712 (7th Cir. 2014) (cleaned up).

In deciding whether a dispute exists, the Court must "construe all facts and reasonable inferences in the light most favorable to the non-moving party." Citizens for Appropriate Rural Roads v. Foxx , 815 F.3d 1068, 1074 (7th Cir. 2016). The nonmovant "must go beyond the pleadings" to demonstrate that there is evidence "upon which a jury could properly proceed to find a verdict in [their] favor." Modrowski v. Pigatto , 712 F.3d 1166, 1168–69 (7th Cir. 2013). "The existence of a mere scintilla of evidence, however, is insufficient to fulfill this requirement." Wheeler v. Lawson , 539 F.3d 629, 634 (7th Cir. 2008). And "[c]onclusory statements, not grounded in specific facts" cannot defeat a motion for summary judgment. Bordelon v. Bd. of Educ. of the City of Chi. , 811 F.3d 984, 989 (7th Cir. 2016) (cleaned up).

Not all factual disputes will preclude the entry of summary judgment, only those that "could affect the outcome of the suit under governing law." Outlaw v. Newkirk , 259 F.3d 833, 837 (7th Cir. 2001) (citation omitted). In deciding a motion for summary judgment, the Court's sole function is "to determine whether there is a genuine issue for trial." Tolan v. Cotton , 572 U.S. 650, 657, 134 S.Ct. 1861, 188 L.Ed.2d 895 (2014). The Court cannot weigh conflicting evidence, assess the credibility of witnesses, or determine the ultimate truth of the matter, as these are functions of the jury. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ; Omnicare, Inc. v. UnitedHealth Grp., Inc. , 629 F.3d 697, 704–05 (7th Cir. 2011).

Local Rule 56.1 requires a party moving for summary judgment to submit a statement of material facts as to which the movant contends there is no genuine issue and entitles the movant to judgment as a matter of law. The party opposing the motion for summary judgment is then required to file "any opposing affidavits and other materials referred to in [ Federal Rule of Civil Procedure 56(e) ]" and a "concise response" to the movant's statement of facts containing "any disagreement, specific references to the affidavits, parts of the record, and other supporting materials." L.R. 56.1(b)(1), (3).

"A general denial is insufficient to rebut a movant's factual allegations; the nonmovant must cite specific evidentiary materials justifying the denial." Malec v. Sanford , 191 F.R.D. 581, 584 (N.D. Ill. 2000). Local Rule 56.1(b)(3)(C) is not satisfied by "purely argumentative denials," id. , or "evasive denials that do not fairly meet the substance of the material facts asserted," Bordelon v. Chi. Sch. Reform Bd. of Trs. , 233 F.3d 524, 528 (7th Cir. 2000). If a response to a statement of material fact provides only extraneous or argumentative information, this response will not constitute a proper denial of the fact, and the fact is admitted. See Graziano v. Vill. of Oak Park , 401 F. Supp. 2d 918, 936 (N.D. Ill. 2005). Similarly, if a statement of fact contains a legal conclusion or otherwise unsupported statement, including a fact that relies upon inadmissible hearsay, such a fact is disregarded. Eisenstadt v. Centel Corp. , 113 F.3d 738, 742 (7th Cir. 1997). "The purpose of the 56.1 statement is to identify for the Court the evidence supporting a party's factual assertions in an organized manner[;] it is not intended as a forum for factual or legal argument." Malec , 191 F.R.D. at 585.

DISCUSSION

Before addressing the merits of the Motion, we must first address evidentiary disputes raised by the parties.

I. TWD's Objections

In its Local Rule 56.1 Response, TWD raises evidentiary objections to 28 of Grunt Style's statements of fact. On a motion for summary judgment, the Court considers "only those facts whose substance would be admissible at trial under a form permitted by the Federal Rules of Evidence, although the form...