The opinion of the court was delivered by: Michael T. Mason United States Magistrate Judge
Magistrate Judge Michael T. Mason
MEMORANDUM OPINION AND ORDER
Michael T. Mason, United States Magistrate Judge: Plaintiff, Clark Tile Co., Inc. ("Clark Tile"), filed a multi-count complaint against defendants Red Devil, Inc. ("Red Devil") and Menard, Inc. ("Menard") alleging claims for trade dress violations pursuant to 15 U.S.C. § 1125(a) as well as violations of the Illinois Consumer Fraud and Deceptive Business Practices Act, the Illinois Uniform Deceptive Trade Practices Act and common law unfair competition. Defendants Red Devil and Mendard filed counterclaims against Clark Tile and a third-party complaint against Ronald M. Clark ("Mr. Clark") seeking a declaration of invalidity of the purported trade dress and alleging claims for tortious interference with an existing business relationship and vexatious and frivolous litigation. Pursuant to Federal Rule of Civil Procedure 56, defendants Red Devil and Menard filed a motion for summary judgment on all counts of plaintiff's complaint. For the reasons set forth below, defendants' motion for summary judgment is denied.
Plaintiff Clark Tile is a manufacturer and distributor of plastic products. Defendant Red Devil is a manufacturer and distributor of hand tools, including plastic adhesive spreaders. Defendant Menard is a retailer and operates home improvement stores in Illinois. Third-party defendant, Mr. Clark, has been involved with Clark Tile for many years and has been president of Clark Tile since 1975.
A. The Trade Dress Claims
This action arises out of Clark Tile's trade dress claims involving the shape, color and overall look of certain hand tools designed by plaintiff. These hand tools are commonly known as "spreaders" or "trowels."*fn2 Spreaders or trowels are used to spread adhesives, plaster or the like. There are two types of spreaders at issue in this case: plaintiff's 1/8 inch notch size red disposable plastic adhesive spreaders and plaintiff's 3/32 inch notch size white disposable plastic adhesive spreaders.
Since 1980, Clark Tile has sold millions of its spreaders, including about seven million red plastic spreaders and about five million white plastic spreaders. Red Devil started to buy Clark Tile's plastic adhesive spreaders in 1987 and continued to purchase Clark Tile's spreaders through 2002. Red Devil would then sell the spreaders to retailers such as defendant Menard. Clark Tile sold its spreaders to Red Devil from 1987 to 2002 without ever advising Red Devil that Clark Tile claimed to own trade dress in the spreaders. At some point, the parties' relationship deteriorated and Red Devil began purchasing spreaders from its new manufacturer, Branchcomb. Clark Tile contends that the spreaders Red Devil purchased from Branchcomb and sold to retailers infringe on its protectible trade dress.
Clark Tile seeks to protect the overall look of its spreaders. Plaintiff's complaint alleges that "Clark Tile has a protectible trade dress in its 1/8 inch notch size red disposable plastic adhesive spreader and in its 3/32 inch notch size white disposable plastic adhesive spreaders." (Cmplt. ¶ 7). Clark Tile also alleges that the purchasers, retailers and private label resellers of its spreaders recognize the "shape and color" of the red adhesive spreaders and the white adhesive spreaders as being manufactured by Clark Tile, or if not specifically by Clark Tile, by a single, albeit anonymous, source. (Cmplt. ¶ 13).
In their first set of interrogatories, defendants asked Clark Tile to identify any features or combination of features for which plaintiff claimed individual trade dress rights, such that copying of that feature alone would constitute trade dress infringement. Clark Tile's response states in pertinent part:
The over-all look of the plaintiff's plastic adhesive trowels, especially their shape and color, is claimed as protectible trade dress, particularly when combined with the length of time they have been sold, the channels of trade and the customers to whom they have been sold, the manner of their display intermingled with each other, their inexpensive price and lack of distinctive packaging. The evidence may show other elements, too.
Defendants deny Clark Tile's trade dress charges and allege that plaintiff's trade dress claims fail because plaintiff's spreaders incorporate functional features.
B. The Prior Utility Patent
In 1978 and 1979, Mr. Clark designed several embodiments of the plastic spreaders at issue in this case. Prior to Mr. Clark's invention, most spreaders were made of metal. Mr. Clark applied for a utility patent for his plastic spreaders on March 14, 1980, and received U.S. Patent 4,316,302, entitled "Trowel," on February 23, 1982 (hereafter, "'302 patent").*fn3 The '302 patent covers several different embodiments of Mr. Clark's invention. The different embodiments are set forth in claims 1 through 9 of the '302 patent. The patent states:
Having described what is new and novel and desired to secure by Letters Patent, what is claimed is:
1. A hand trowel comprising a blade portion having a substantially flat lower surface and four edges; and a longitudinally arcuate*fn4 handle portion integrally formed at its ends with the upper surface of said blade portion, extending outwardly from said upper surface, and having a first reinforcing ridge integrally formed therein substantially along the longitudinal centerline thereof and extending onto the upper surface of said blade portion.
2. A hand trowel as recited in claim 1 wherein said blade portion is of rectangular shape; and said handle portion is disposed along a longitudinal axis of said blade portion.
3. A hand trowel as recited in claim 2 further including a closed cell pad of substantially the same dimensions as said blade portion affixed to the lower surface of said blade portion.
4. A hand trowel as recited in claim 1 wherein said blade portion is elongate trapezoidal shape; and said handle portion is disposed substantially along the ...