United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
W. DARRAH United States District Court Judge
LoggerHead Tools, LLC (“LoggerHead”), filed a
Second Amended Complaint against Defendants Sears Holdings
Corporation (“Sears”) and Apex Tool Group, LLC
(“Apex”), alleging against Sears, inter
alia, claims under the Lanham Act § 43(a), Count
VII; the Illinois Consumer Fraud and Deceptive Practices Act,
Count VIII; the Uniform Deceptive Trade Practices Act, Count
IX; and Illinois Common Law Unfair Competition, Count XIV.
Sears filed a Motion for Summary Judgment  on those
counts. For the reasons set forth more fully below,
Sears' Motion for Summary Judgment  is granted.
Rule 56.1(a)(3) requires the moving party to provide “a
statement of material facts as to which the party contends
there is no genuine issue for trial.” Ammons v.
Aramark Uniform Servs., 368 F.3d 809, 817 (7th Cir.
2004). Local Rule 56.1(b)(3) requires the nonmoving party to
admit or deny every factual statement proffered by the moving
party and to concisely designate any material facts that
establish a genuine dispute for trial. See Schrott v.
Bristol-Myers Squibb Co., 403 F.3d 940, 944 (7th Cir.
2005). A nonmovant's “mere disagreement with the
movant's asserted facts is inadequate if made without
reference to specific supporting material.” Smith
v. Lamz, 321 F.3d 680, 683 (7th Cir. 2003). In the case
of any disagreement, the nonmoving party must reference
affidavits, parts of the record, and other materials that
support his stance. Local Rule 56.1(b)(3)(B). To the extent
that a response to a statement of material fact provides only
extraneous or argumentative information, this response will
not constitute a proper denial of the fact, and the fact is
admitted. See Graziano v. Vill. of Oak Park, 401
F.Supp.2d 918, 936 (N.D. Ill. 2005). Similarly, to the extent
that a statement of fact contains a legal conclusion or
otherwise unsupported statement, including a fact that relies
upon inadmissible hearsay, such a fact is disregarded.
Eisenstadt v. Centel Corp., 113 F.3d 738, 742 (7th Cir.
1997). Pursuant to Local Rule 56.1(b)(3)(C), the nonmovant
may submit additional statements of material facts that
“require the denial of summary judgment.”
following facts are taken from the parties' statements of
undisputed material facts submitted in accordance with Local
is an Illinois limited-liability company based in Palos Park,
Illinois. (DSOF ¶ 1.) Sears is a Delaware corporation
based in Hoffman Estates, Illinois. (Id. ¶ 2.)
Apex is a corporation based in Sparks, Maryland.
(Id. ¶ 3.) LoggerHead sells a hand tool known
as the Bionic Wrench. (Id. ¶ 1.) Sears retailed
the Bionic Wrench in its stores starting in 2009.
(Id. ¶ 5.) In February 2012, Sears began talks
with Apex to create and retail a Bionic Wrench replacement to
be sold under the Sears Craftsman brand. (PSOF, ¶ 17.)
Apex sent LoggerHead's '579 Patent for the Bionic
Wrench to a patent lawyer, John Owen. (Id. ¶
18.) Owen identified another patented tool, Buchanan, U.S.
Patent No. 2, 787, 925, that Apex could model a replacement
wrench after. (Id. ¶ 19.) Owen reported to Apex
that using the Buchanan design would not infringe on
LoggerHead's patents. (Id. ¶¶ 19, 23.)
In September 2012, Sears began retailing the Max Axess
Locking Wrench (“MALW”), which was supplied by
Apex. (DSOF, ¶ 6.)
direct to consumer (“DRTV”) advertising for the
MALW, Sears stated: “[i]f you want maximum versatility
in a single wrench, then you'll love the latest
innovation from Craftsman, the Max Axess Locking
Wrench.” (PSOF, ¶ 1.) The product packaging for
the MALW shows a picture of the wrench, the term
“Unique Design, ” and, underneath that, the
phrase “Adapts to a wide range of fastener sizes and
grips fasteners on all sides to prevent rounding.”
(Id. ¶ 2.) The packaging also contains a dotted
line going from the writing to the picture of the wrench.
(Id.) On November 14, 2012, Sears issued a press
release regarding their sale of the MALW. (DSOF, ¶ 7.)
judgment is appropriate when “the movant shows that
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. Courts deciding summary judgment motions
must view facts “in the light most favorable to the
nonmoving party only if there is a ‘genuine'
dispute as to those facts.” Scott v. Harris,
550 U.S. 372, 380 (2007). A genuine dispute as to any
material fact exists if “the evidence is such that a
reasonable jury could return a verdict for the nonmoving
party.” Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 248 (1986). The moving party has the initial burden
of establishing that there is no genuine dispute as to any
material fact. Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986). If the moving party meets this burden,
“[t]he nonmoving party must point to specific facts
showing that there is a genuine issue for trial.”
Stephens v. Erickson, 569 F.3d 779, 786 (7th Cir.
2009). Factual disputes do “not preclude summary
judgment when the dispute does not involve a material
fact.” Burton v. Downey, 805 F.3d 776, 783
(7th Cir. 2015). The evidence must be such “that a
reasonable jury could return a verdict for the nonmoving
party.” Pugh v. City of Attica, Ind., 259 F.3d
619, 625 (7th Cir. 2001) (quoting Anderson, 477 U.S.
VII: Lanham Act
Count VII, LoggerHead alleges Sears engaged in false
advertising under the Lanham Act, § 43(a). Specifically,
LoggerHead alleges that, during Sears' promotion of the
MALW, Sears falsely advertised: (1) on portions of the
MALW's product packaging; (2) with statements made in a
DRTV commercial; and (3) with statements contained in a press
release Sears published on its website. The Lanham Act
imposes civil liability for unfair competition by deceptive
advertising or labeling. Lexmark Int'l, Inc. v.
Static Control Components, Inc.,134 S.Ct. 1377, 1395
(2014). Deceptive advertising means ...