The opinion of the court was delivered by: Morton Denlow, United States Magistrate Judge.
MEMORANDUM OPINION AND ORDER
The saga continues. After several trips between this Court and
the Seventh Circuit Court of Appeals, the case is back. The
Seventh Circuit previously reversed this Court's grant of summary
judgment to Panduit on Count II and remanded for further
proceedings. Panduit Corporation (hereinafter "Panduit") now
brings a motion to dismiss Count II of the complaint filed by
Plaintiffs Thomas & Betts Corporation and Thomas & Betts
Holdings, Inc. (hereinafter collectively "T & B"). Panduit
contends the Court no longer has jurisdiction over Count II. The
Court disagrees. For the reasons set forth below, Panduit's
motion to dismiss Count II is denied.
T & B and Panduit are the nation's largest suppliers of cable
ties. Cable ties are nylon plastic straps used to tie together
cables or wires. T & B obtained a utility patent on the two-piece
cable tie in 1965, which expired in 1982. T & B also obtained a
design patent on the cable tie in 1966, which expired in 1980. In
late 1993, Panduit began to produce a cable tie similar to that
of T & B, sold under the trademark "BARB-TY." Panduit's cable tie
is substantially similar in appearance to T & B's cable tie.
T & B brought this action in five counts against Panduit. Count
I alleges that Panduit's metal barb oval head shaped cable tie
infringes on the trade dress of T & B's cable tie in violation of
Section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a). Count II
alleges that Panduit's registration and use of the trademark
BARB-TY constitutes unfair competition under the Lanham Act,
15 U.S.C. § 1125(a)(1)(A), and seeks cancellation of Panduit's
trademark registration of the term BARB-TY. T & B also alleged
that Panduit's conduct violates the common law of unfair
competition in Count III; the Illinois Consumer Fraud and
Deceptive Business Practices Act, 815 ILCS 505/2, and the Uniform
Deceptive Trade Practices Act, 815 ILCS 510/1, in Count IV; and
the Illinois Anti-Dilution Act, 765 ILCS 1035/15, in Count V.
T & B previously brought a motion for a preliminary injunction
which was granted by the trial court in Thomas & Betts Corp. v.
Panduit Corp., No. 94 C 2656, 1994 WL 714619 (N.D.Ill.Dec.19,
1994), and later reversed by the Seventh Circuit, Thomas & Betts
Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir. 1995). The case
was then transferred to this Court which granted summary judgment
against T & B on Counts I, III, IV, and V. Thomas & Betts Corp.
v. Panduit Corp., 935 F. Supp. 1399 (N.D.Ill. 1996) ("T & B
I"). This Court subsequently granted summary judgment against T
& B with regard to Count II. Thomas & Betts Corp. v. Panduit
Corp., 940 F. Supp. 1337 (N.D.Ill. 1996) ("T & B II"). On
appeal, the Seventh Circuit reversed the grant of summary
judgment on Counts I and II. Thomas & Betts Corp. v. Panduit
Corp., 138 F.3d 277 (7th Cir. 1998) ("T & B III"). No appeal
was taken regarding Counts III through V and they are no longer
part of the case.
Panduit now brings a motion to dismiss Count II for lack of
subject matter jurisdiction. Fed.R.Civ.P. 12(b)(1). A review of
the history of Count II is a necessary background.
A. Count II of the Complaint.
Count II is captioned "Unfair Competition Under
15 U.S.C. § 1125(a) and Withdrawal Of Application For Registration (or
Cancellation of Registration Under 15 U.S.C. § 1064(3))" and
consists of several components. In Count II, T & B alleges the
term "barb tie" has become associated with Thomas & Betts'
products, "although this term is also a generic expression for
identifying two-piece self-locking cable ties having a metal
locking device or a barb." (Compl. ¶ 26.) According to T & B, the
term BARB-TY is virtually indistinguishable from and phonetically
identical to the "barb tie" designation which is uniquely
associated with Thomas & Betts' cable ties. (Compl. ¶ 27.) As a
result, T & B believes Panduit is using the BARB-TY trademark to
trade on T & B's reputation. (Compl. ¶ 29.) In sum, T & B asserts
all of the above allegations demonstrate a violation of
15 U.S.C. § 1125(a)(1)(A) because Panduit's use of the term BARB-TY as a
trademark for its cable ties constitutes a false designation of
origin, "which is likely to cause confusion, or to cause mistake,
or to deceive as to the affiliation, connection, or association
of Panduit with Thomas & Betts or as to the origin, sponsorship
or approval of Panduit's two-piece self-locking cable ties, or
the commercial goods or activities of others." (Compl. ¶ 28.)
In Count II, T & B also claims that, because of "barb tie's"
association with T & B's products and generic quality, Panduit
obtained its registration of the trademark BARB-TY fraudulently
and did not have the right to register the mark BARB-TY. (Compl.
¶¶ 32-33.) To support this allegation, T & B reviews Panduit's
application history before the U.S. Patent and Trademark Office
("PTO") for the BARB-TY mark. Panduit's Application Serial No.
74/331,294, covering the mark was allowed on July 13, 1993.
(Comp. ¶ 30.) T & B asserts Panduit failed to advise the PTO of
the significance of the term "barb tie" while making its
application. (Comp. ¶ 31.) This is in direct contravention to
15 U.S.C. § 1064(3) according to T & B. (Comp. ¶ 33.)
T & B claims damages from the registration of the BARB-TY mark
arising out of a misrepresentation as to the source of the cable
tie or in connection with the way the mark is used. (Comp. ¶ 35.)
In addition, as part of its prayer for relief, T & B seeks an
order pursuant to 15 U.S.C. § 1119 directing the PTO Commissioner
to cancel the BARB-TY registration. (Comp. ¶ B, p. 17.)
B. T & B I, 935 F. Supp. 1399 (N.D.Ill. 1996).
Although there were earlier opinions in this case, Count II was
first addressed on the merits in this Court's August 15, 1996
decision in connection with Panduit's motion for summary
judgment. T & B I, 935 F. Supp. 1399, 1418 (N.D.Ill. 1996). The
Court denied Panduit's motion for summary judgment on Count II
because the record was ...