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Box Acquisitions, LLC v. Box Packaginig Products, LLC

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

March 26, 2014

BOX ACQUISITIONS, LLC, d/b/a BOX PARTNERS, LLC and BOX PACKAGING, LLC an Illinois Limited Liability Company, Plaintiff,
v.
BOX PACKAGINIG PRODUCTS, LLC, an Indiana Limited Liability Corporation; JAMIL PACKAGING CORPORATION, an Indiana Corporation; and DAVID M. DIROLL, an individual, Defendants

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[Copyrighted Material Omitted]

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For B O X Acquisitions, LLC, Illinois Limited Liability Company, doing business as BOX Partners, LLC, doing business as BOX Packaging LLC, Plaintiff: Colin Thomas O'Brien, Mark Van Buren Partridge, LEAD ATTORNEYS, Jordan A. Arnot, PRO HAC VICE, Partridge IP Law P.C., Chicago, IL; John L. Ambrogi, Partridge IP Law, Chicago, IL.

For Box Packaging Products, LLC, an Indiana Limited Liability Corporation, Defendant: Jonathan Paul Froemel, LEAD ATTORNEY, Barnes & Thornburg, Chicago, IL; Daniel Paul Albers, Elizabeth Anne Peters, Shubham Mukherjee, Y, Barnes & Thornburg, LLP, Chicago, IL; John L. Ambrogi, Partridge IP Law, Chicago, IL.

For Jamil Packaging Corporation, an Indiana Corporation, Mr. David M. Diroll, an individual, Defendants: Jonathan Paul Froemel, LEAD ATTORNEY, Barnes & Thornburg, Chicago, IL; Daniel Paul Albers, Elizabeth Anne Peters, Shubham Mukherjee, Y, Barnes & Thornburg, LLP, Chicago, IL.

For Mr. David M. Diroll, an individual, Jamil Packaging Corporation, an Indiana Corporation, Counter Claimants: Jonathan Paul Froemel, LEAD ATTORNEY, Barnes & Thornburg, Chicago, IL; Elizabeth Anne Peters, Shubham Mukherjee, Y, Barnes & Thornburg, LLP, Chicago, IL.

For Box Packaging Products, LLC, an Indiana Limited Liability Corporation, Counter Claimant: Jonathan Paul Froemel, LEAD ATTORNEY, Barnes & Thornburg, Chicago, IL; Elizabeth Anne Peters, Shubham Mukherjee, Y, Barnes & Thornburg, LLP, Chicago, IL; John L. Ambrogi, Partridge IP Law, Chicago, IL.

For Mr. David M. Diroll, an individual, Jamil Packaging Corporation, an Indiana Corporation, Counter Defendants: Jonathan Paul Froemel, LEAD ATTORNEY, Barnes & Thornburg, Chicago, IL; Elizabeth Anne Peters, Barnes & Thornburg LLP, Chicago, IL.

For Box Packaging Products, LLC, an Indiana Limited Liability Corporation, Counter Defendant: Jonathan Paul Froemel, LEAD ATTORNEY, Barnes & Thornburg, Chicago, IL; Elizabeth Anne Peters, Barnes & Thornburg LLP, Chicago, IL; John L. Ambrogi, Partridge IP Law, Chicago, IL.

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MEMORANDUM OPINION

Charles P. Kocoras, United States District Judge.

This matter comes before the Court on the motion for summary judgment of Defendants Box Packaging Products, LLC (" Box Packaging Products" ), Jamil Packaging Corporation (" Jamil Packaging" ), and David M. Diroll (" Diroll) (collectively " Defendants" ) pursuant to Federal Rule of Civil Procedure 56 (" Rule 56" ). For the following reasons, the Court grants summary judgment in its entirety.

BACKGROUND

I. Facts

The following facts are taken from the parties' respective statements and exhibits filed pursuant to Northern District of Illinois Local Rule 56.1. The Court reviews each Local Rule 56.1 statement and disregards any argument, conclusion, or assertion unsupported by the evidence in the record. The parties do not dispute the facts below unless otherwise noted.

Plaintiff BOX Acquisitions, LLC, d/b/a BOX Partners, LLC (" BOX Partners" ) and BOX Packaging, LLC (" BOX Packaging" ) (collectively " Plaintiff" ) is a distributor and a wholesaler of shipping and industrial products in Illinois. Jamil, an Indiana corporation, became a customer of Plaintiff in June 1998 and a vendor in 2008 up until May of 2012. Jamil designs and manufactures corrugated boxes and packaging, and markets products for other companies. Plaintiff currently uses both names, BOX Packaging and BOX Partners, interchangeably, in advertising, sales, and marketing materials. Plaintiff never formally announced the adoption of BOX Partners when it began using it in 2004.

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" Boxpartners.com" was registered as a domain name in 2004.

Plaintiff does not have a federal trademark registration for either " Box Packaging" or " boxpackaging.com" , but does for BOX Partners and " boxpartners.com" . Plaintiff also registered " www.boxpkg.com" in 1996 as a domain name and started using it around 2001. Allied Packaging (" Allied" ), a third-party company, owned the " boxpackaging.com" domain from 1999 until 2009. Plaintiff was aware that Allied obtained " boxpackaging.com" in the early 2000s; however, it did not take action against Allied because Allied was not actively using the domain. The parties dispute whether Allied used " boxpackaging.com" in 2008 and 2009. Around December 15, 2010, Diroll, General Manager at Jamil, purchased the " boxpackaging.com" domain through the Go Daddy service for $5,675.00. Diroll also registered " boxpackaging.biz" , " boxpackaging.com" , and " boxpackaging.info" (collectively with " boxpackaging.com" the " Domains" ). A company called Sunrise Packaging, Inc. (" Sunrise" ) currently owns " boxpackaging.net" . Diroll purchased and registered the Domains in part to serve as a lead generator to the jamilpackaging.com domain. Once Defendants obtained the Domains, Diroll started Box Packaging Products LLC and invested in advertising that mentioned the " boxpackaging.com" domain and used the phrase " Box Packaging" .

A sign outside of Plaintiff's office building previously said BOX Packaging, but now says BOX Partners. Employees of Plaintiff currently use " boxpartners.com" email addresses and multiple exhibits including invoices, paperwork, correspondence, and advertisements. Employees issue bills of lading which identify Plaintiff only as BOX Partners. However, price quotations, invoices, shipper documents and checks from Defendants to Plaintiff from 2009 to 2012 refer to Plaintiff as BOX Packaging. Some companies and entities that operate in the packaging industry also use the words " box" and " packaging" . For example, the UPS Store uses " box-packaging" in its domain name, as does A& R Box and Packaging, which also refers to the phrase " Box Packaging" on its website.

Plaintiff has not conducted any consumer surveys, studies, or market research related to the phrase " Box Packaging" . Plaintiff's employees claim that they have received complaints from suppliers and customers expressing confusion regarding why " boxpackaging.com" directed those to Defendants' website. However, these employees cannot recall any names of any of these individuals. The parties met on April 1, 2011 to discuss Defendants' use of " boxpackaging.com" . After this meeting, the parties corresponded through early May 2011, with Plaintiff offering to purchase " boxpackaging.com" for $500.00, which Defendants rejected.

On October 18, 2011, Defendants filed an application to trademark " boxpackaging.com" in hopes of using it in connection with the packaging industry. The trademark application contained the following representation: " [a]dvertising, marketing, and promotional services in the field of packaging, shipping, corrugated boxes, and industrial products by providing an on-line website and advertising and marketing materials" . Defendants listed on their application that the first use of the trademark and the first use of the trademark in commerce were December 10, 2010. On April 3, 2012, the " boxpackaging.com" mark was registered on the supplemental register and given the number 4,123,303.

Around the time Plaintiff filed the instant lawsuit in May 2012, Plaintiff took down ...


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