United States District Court, N.D. Illinois, Eastern Division
JAMES G. HUGUNIN, an individual; LAND O' LAKES OUTDOORS, INC., and LAND O' LAKES TACKLE CO., INC., Illinois corporations, Plaintiffs and Counter-Defendants,
LAND O'LAKES, INC., a Minnesota corporation, Defendant and Counter-Plaintiff.
MEMORANDUM OPINION & ORDER
JOAN B. GOTTSCHALL, District Judge.
On December 22, 2011, James Hugunin, Land O' Lakes Outdoors, Inc. and Land O' Lakes Tackle Co., Inc., filed a five-count complaint against Land O'Lakes, Inc. ("LOL"), alleging federal trademark infringement (Count I); unfair competition under federal law (Count II); unfair competition under Illinois common law (Count III); common law trademark infringement (Count IV); and unfair competition under the Illinois Deceptive Trade Practices Act (Count V). LOL has filed counterclaims alleging federal trademark infringement (Count I); federal false designation of origin (Count II); federal trademark dilution (Count III); unfair competition under the Illinois Deceptive Trade Practices Act (Count IV); and trademark dilution under Illinois law (Count V).
Now before the court are both parties' motions for partial summary judgment. Hugunin seeks partial summary judgment in his favor on LOL's federal dilution and Illinois dilution claims, and LOL seeks partial summary judgment in its favor on its federal dilution claim and on all of Hugunin's claims. For the reasons stated below, Hugunin's motion is denied, and LOL's motion is granted in part and denied in part.
LOL is an agricultural cooperative based in Arden Hills, Minnesota. Since the 1920s, LOL has sold butter and other dairy products across the United States using the trademark LAND O LAKES. The Land O'Lakes brand enjoys a high level of consumer recognition-a 2006 survey of 873 butter consumers found that 99% were aware of the brand, and 85% had used or tried LOL dairy products.
In addition to traditional print and television advertising, LOL has promoted its dairy products by sponsoring a number of different sporting events. In 1997, LOL entered into an agreement to become the official dairy sponsor of a sport fishing tournament known as the Wal-Mart FLW Tour. As a result of the sponsorship, LOL's dairy products were displayed at tournament venues and included in tournament promotional materials, and the tournament's "Angler of the Year Award, " was renamed the "Land O Lakes Angler of the Year Award."
Jim Hugunin is a general contractor who resides in Illinois. In 1997, he won a fishing competition, the Vilas County Musky Marathon, using a fishing lure that he had created. After winning the competition, Hugunin decided to manufacture and sell fishing tackle for his friends and local guides who lived around the Land O' Lakes, Wisconsin, region. He sold the fishing tackle using the same LAND O LAKES mark that LOL used to sell its dairy products. Hugunin sold his first fishing lure on August 25, 1997, through a company he had created called the Land O' Lakes Tackle Company. On August 9, 1999, he applied to register the LAND O LAKES trademark, and the United States Patent and Trademark Office issued him a registration certificate on June 6, 2000.
On December 8, 2000, LOL sent a letter to Hugunin regarding his use of the LAND O LAKES mark. The letter stated in relevant part:
It has come to our attention that you have obtained a registration for LAND O LAKES for fishing tackle. Please be advised that Land O'Lakes, Inc., has been using the trademark LAND O LAKES in the fishing industry well prior to your use of the trademark LAND O LAKES....
Land O'Lakes, Inc. is concerned that your company's use of the LAND O LAKES trademark infringes and dilutes Land O'Lakes' trademark usage in the fishing industry and elsewhere. You should note that Land O'Lakes is considered a famous trademark and therefore, it is eligible for remedies under the anti-dilution statute (15 U.S.C. § 1125(c)), in addition to traditional trademark remedies....
Land O'Lakes is at the present time not going to request that you stop using the LAND O LAKES trademark. Instead, we would like to offer you a proposal which will meet Land O'Lakes' immediate concern, that is your infringement and dilution of its trademark LAND O LAKES. We are proposing that you continue using your trademark LAND O LAKES under a paid-up license from Land O'Lakes[, ] the terms of which will be defined in a written agreement....
(Hugunin Decl. Ex. 16 (Dec. 8, 2000, Letter), ECF No. 3-9.) The parties never reached any agreement, and several years passed without any discussions between LOL and Hugunin. Then, on February, 12, 2008, LOL opposed an application that Hugunin had made to renew his registration of the LAND O LAKES mark before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office ("TTAB"). The proceeding before the TTAB is on hold pending the outcome of this litigation.
II. LEGAL STANDARD
Summary judgment is appropriate when the movant shows there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56; Smith v. Hope Sch., 560 F.3d 694, 699 (7th Cir. 2009). "[A] factual dispute is genuine' only if a reasonable jury could find for either party." SMS Demag Aktiengesellschaft v. Material Scis. Corp., 565 F.3d 365, 368 (7th Cir. 2009). The court ruling on the motion construes all facts and makes all reasonable inferences in the light most favorable to the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). Summary judgment is warranted when the ...