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The Black & Decker Corporation v. Positec Usa Inc.

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

July 10, 2015

THE BLACK & DECKER CORPORATION, BLACK & DECKER INC. and BLACK & DECKER (U.S.) INC., Plaintiffs,
v.
POSITEC USA INC. and RW DIRECT INC., Defendants.

MEMORANDUM OPINION AND ORDER

ROBERT M. DOW, Jr., District Judge.

Plaintiffs and Defendants are competing power tool manufacturers. Plaintiffs allege, in part, that Defendants infringed their unregistered trade dress in violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125(a). They describe their trade dress as a yellow and black color combination appearing on their power tools, power tool accessories, and associated packaging. On motion for partial summary judgment [65], Defendants argued that this description was insufficiently precise as a matter of law. The Court rejected this argument in its March 31, 2015 Opinion and Order [93]. Defendants now move for reconsideration [97]. For the reasons stated below, the Court denies Defendants' motion.

I. Background

Plaintiffs introduced the DeWalt line of power tools in 1992. They allege trade dress rights in a yellow and black color combination appearing on DeWalt's power tools, power tool accessories, and packaging. Defendants allegedly violated Plaintiffs' trade dress infringement by using yellow and black color schemes on their own products. On motion for partial summary judgment, Defendants argued that Plaintiffs' description of its trade dress was insufficiently precise to constitute a legally cognizable trade dress, and the Court rejected their argument.

Although the Seventh Circuit has not directly addressed the issue, other circuits have imposed an articulation requirement, requiring plaintiffs to describe the specific elements of their trade dress. See, e.g., Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 309 (3d Cir. 2014) ("it is the plaintiff's duty to articulat[e] the specific elements which comprise its distinct dress.") (citation and quotation marks omitted); Gen. Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 415 (6th Cir. 2006) ("the discrete elements which make up that combination should be separated out and identified in a list * * * * Without such a precise expression of the character and scope of the claimed trade dress, litigation will be difficult, as courts will be unable to evaluate how unique and unexpected the design elements are in the relevant market") (quoting 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 8:3 (4th ed. 2001); Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 118 (2d Cir. 2001) ("a plaintiff asserting that a trade dress protects an entire line of different products must articulate the specific common elements sought to be protected"). Meanwhile, the Supreme Court has held that protectable trademarks may consist of a color that has acquired secondary meaning. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163 (1995) (finding that trademark law protected Qualitex's use of a green-gold color on its press pads). Viewing the articulation requirement alongside Qualitex Co., the Court concluded that, to the extent that an articulation requirement exists, Plaintiffs' description satisfied it. Defendants move the Court to reconsider.

II. Legal Standard

A district court has inherent authority to reconsider its own orders entered prior to final judgment. See Moses H. Cone Mem. Hosp. v. Mercury Const. Corp., 460 U.S. 1, 12 (1983) ("every order short of a final decree is subject to reopening at the discretion of the district judge"); Diaz v. Indian Head, Inc., 686 F.2d 558, 562-63 (7th Cir. 1982) (interlocutory orders may be "reconsidered and reviewed at any time prior to final judgment") (citation and internal quotation marks omitted); Sims v. EGA Prods., Inc., 475 F.3d 865, 870 (7th Cir. 2007) ("nonfinal orders are generally modifiable") (Cudahy, J., concurring).

It is well-established that "[m]otions for reconsideration serve a limited function: to correct manifest errors of law or fact or to present newly discovered evidence." Conditioned Ocular Enhancement, Inc. v. Bonaventura, 458 F.Supp.2d 704, 707 (N.D. Ill. 2006) (quoting Caisse Nationale de Credit Agricole v. CBI Indus., Inc., 90 F.3d 1264, 1269 (7th Cir. 1996)). A motion to reconsider is proper when "the Court has patently misunderstood a party, or has made a decision outside the adversarial issues presented to the Court by the parties, or has made an error not of reasoning but of apprehension." Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990) (citation and internal quotation marks omitted). It is also appropriate if there has been "a controlling or significant change in the law or facts since the submission of the issue to the Court." Id. (citation and internal quotation marks omitted). Because the standards for reconsideration are exacting, our court of appeals has stressed that issues appropriate for reconsideration "rarely arise and the motion to reconsider should be equally rare." Id. (citation and internal quotation marks omitted).

III. Analysis

Defendants argue that Plaintiffs' trade dress description is insufficient because it fails to articulate how the yellow and black color combination appears on the products and packaging - meaning, in what locations and in what form. As an initial matter, the Court notes that the crux of Defendants' motion targets Plaintiffs' verbal description of its trade dress: a yellow and black color combination appearing on power tools, power tool accessories, and their packaging. The Court, however, does not consider Plaintiffs' verbal description in a vacuum. Applying a practical, common sense approach attentive to the realities of litigation, the Court considers Plaintiffs' verbal description alongside the photographs in Plaintiffs' responses to Defendants' motion for partial summary judgment and motion for reconsideration. See Heckler & Koch, Inc. v. German Sport Guns GmbH, 2014 WL 7366578, at *35 (S.D. Ind. Dec. 24, 2014) (finding that even though the plaintiffs' description was not "a model of explanatory precision or of consistency, " it was "detailed enough, and enough in sync with the visual evidence * * * to be readily identifiable"). A picture is often worth a thousand words, and in this case, Plaintiffs have provided many pictures. Their photographs consistently show power tools, accessories and packaging that are predominantly solid yellow and/or black, with "DeWALT" written in a particular font and printed either in yellow on a black background or black or a yellow background. See, e.g., [109-1]. Thus, the question here is not whether Plaintiffs' verbal articulation, examined in isolation, is insufficiently precise. It is whether Plaintiffs' verbal description, examined in light of the photographs it has submitted, is so imprecise that it fails to articulate a legally cognizable trade dress.

Defendants argue that, taken together, Qualitex and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), require Plaintiffs' to verbally describe their trade dress in more detail. The Court is unpersuaded, as neither Qualitex nor Wal-Mart directly addressed whether there is an articulation requirement and, if so, what degree of specificity it requires. Instead, the two cases respectively addressed the protectability of color and product design. In Qualitex, the Supreme Court addressed a claim brought by a manufacturer of green-gold press pads. When the defendant began selling similarly-colored press pads, Qualitex brought an unfair competition claim under the Lanham Act. It then obtained a trademark registration and added a trademark infringement count. The trademark registration at issue described the mark as "a particular shade of green-gold applied to the top and side surfaces of the goods." U.S. Registration 1633711, registered Feb. 5, 1991. The question before the Supreme Court was whether the Lanham Act "permits the registration of a trademark that consists, purely and simply, of a color." Qualitex, 514 U.S. at 160-61. The Court held that, where a color had developed secondary meaning and was therefore source-identifying, the answer was yes. Id. at 174.

Defendants correctly note that Qualitex's articulation of its trade dress is distinguishable from Plaintiffs' in that it described not only a color but also its location on a product. But Qualitex's description is not dispositive of whether Plaintiffs have sufficiently articulated their own trade dress for two reasons. First, Qualitex did not directly address whether an articulation requirement exists, let alone establish a test that governs it or the sufficiency of Qualitex's description measured against such a test. In fact, it hardly analyzed the factual particularities of the registration before it at all. Rather, it addressed a general legal question: whether a registered trademark could consist purely and simply of a color. Second, while Qualitex's articulation likely exceeds any degree of specificity that may be required, the Supreme Court's decision in no way suggests that Qualitex's description marks the minimum degree of specificity required.

The Court is similarly unpersuaded by Plaintiff's citation to Wal-Mart. Wal-Mart addressed a question not at issue here: "under what circumstances a product's design is distinctive, and therefore protectible, in an action for infringement of unregistered trade dress." Wal-Mart, 529 U.S. at 207. Finding Qualitex 's analysis of color applicable to product design by analogy, the Supreme Court held that product design is distinctive and therefore protectable only upon a showing of secondary meaning. Id. at 210. Nothing in this holding or the Court's reasoning persuades the Court to find Plaintiffs' articulation insufficient as a matter of law.

Defendants also cite a line of three Second Circuit cases - Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27 (2d Cir. 1995), Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373 (2d Cir. 1997), and Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 117 (2d Cir. 2001) - none of which warrant a change in the Court's opinion. In Jeffrey Milstein, the Second Circuit declined to extend protection to a trade dress related to a line of greeting cards, the front panel of which was cut to the outline of a color photograph using a die-cutting technique. The plaintiff described the trade dress as "straight-on, strong photographic, glossy images of animals, persons or objects on die-cut cards that are cut without bleed of any kind" - an articulation that the Second Circuit rejected as overly broad. Id. at 33. On first glance, Jeffrey Milstein appears to weigh in Defendants' favor, as the articulation there appears to be more detailed than the articulation here. A more thorough examination of the Second Circuit's reasoning, however, leads to a different conclusion. The Court rejected the plaintiff's articulation because, in claiming the "general idea of creating cards out of die-cut photographs, " the plaintiff effectively claimed all die-cut photographic designs, Jeffrey Milstein, 58 F.3d at 33; in protecting a general idea, as opposed to its concrete expression, it claimed the "genus of which the particular product is a species.'" Id. at 33 (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)). In other words, the Second Circuit rejected the plaintiff's trade dress because it sought to protect a general manufacturing methodology rather than a specific impression created by a product's visual components. The Court cautioned that "although trade dress law may supplement copyright and patent law by ...


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