United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
W. Darrah, Judge
LoggerHead Tools, LLC filed a Second Amended Complaint
against Defendants Sears Holding Corporation and Apex Tool
Group, LLC, alleging, inter alia, trade dress
infringement claims against Defendants based on product
design, Count XV, and product packaging, Count XVI.
Defendants filed a Motion for Summary Judgment  on
Counts XV and XVI. For the reasons set forth more fully
below, Defendants' Motion for Summary Judgment  is
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
LoggerHead Tools, LLC (“LoggerHead”) is an
Illinois limited-liability company with its principal place
of business in Palos Park, Illinois. (DSOF ¶ 1.)
Defendant Sears Holding Corporation (“Sears”) is
a Delaware corporation with its principal place of business
in Hoffman Estates, Illinois. (Id. ¶ 2.)
Defendant Apex Tool Group, LLC (“Apex”) is a
Delaware limited-liability company with its principal place
of business in Sparks, Maryland. (Id. ¶ 3.)
LoggerHead asserts two patents in this case, U.S Patent Nos.
6, 889, 579 (“the ‘579 Patent”) and 7, 992,
470 (the “‘470 Patent”). (Id.
¶ 22) Those patents describe the claimed device as an
adjustable gripping tool. (Id. ¶ 23.)
LoggerHead started selling the Bionic Wrench in 2005.
(Id. ¶ 34.) The Bionic Wrench is stamped with
the trademark LOGGERHEAD TOOLS and the trademark BIONIC
WRENCH. (Id. ¶ 40.) The Bionic Wrench has black
handles and green horizontal ribbing at the top of each
handle. (Id.) In the packaging, the 8-inch version
of the Bionic Wrench appears as follows:
¶ 9.) The packaging for the Bionic Wrench has the
trademark LOGGERHEAD and the trademark BIONIC WRENCH.
(Id. ¶ 41.) The packaging also includes a
turtle-head logo, “A Gripping Experience”
tagline, and a green, yellow, and black color scheme.
(Id.) The packaging includes an image and text of
multiple wrenches being replaced by a single wrench and a
“Try Me” sign ad. (Id. ¶ 41.)
LOGGERHEAD, BIONIC WRENCH, a turtle-head logo and “A
Gripping Experience” are registered trademarks owned by
LoggerHead, are used for goods including wrenches, and serve
as source identifiers. (Id. ¶¶ 42-43.)
6, 2014, LoggerHead received Supplemental Trademark
Registration No. 4, 527, 177 from the United States Patent
and Trademark Office (“USPTO”) for claim of the
following design in solid lines:
(Id. ¶¶ 11-13.) The Supplemental Trademark
Registration says that “[t]he mark consists of
three-dimensional depiction of a wrench head. The wrench head
consists of a cog-like design in the nature of a circle with
six rectangular slots. The broken lines depicting the handles
indicate placement of the mark on the goods and are not part
of the mark.” (Id. ¶ 14.) In the
prosecution of application for the supplemental trademark
registration, the USPTO found that the applied-for-design was
functional and lacked distinctiveness, which Plaintiff
disputed. (Id. ¶¶ 15-16.)
Axess Locking Wrench (“MALW”) has red and black
handles and is stamped with the CRAFTSMAN trademark.
(Id. ¶ 35.) It includes a measuring scale and a
locking mechanism that protrudes from the wrench head like a
fin. (Id. ¶ 47.) In the packaging, the 8-inch
version of the MALW appears as follows:
(Id. ¶ 8.) CRAFTSMAN and MAX AXESS are
registered Sears trademarks for goods including wrenches.
(Id. ¶ 37.) CRAFTSMAN is a source identifier
for Sears. (Id. ¶ 38.)