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TWD, LLC v. Grunt Style LLC

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

October 23, 2019

TWD, LLC, Plaintiff/Counterclaim-Defendant,
v.
GRUNT STYLE LLC, Defendant/Counterclaim-Plaintiff.

          MEMORANDUM OPINION

          Charles P. Kocoras, United States District Judge.

         Before the Court is Defendant/Counterclaim-Plaintiff Grunt Style LLC's (“Grunt Style”) motion for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c) and motion to strike Plaintiff/Counterclaim-Defendant TWD, LLC's (“TWD”) affirmative defenses pursuant to Federal Rule of Civil Procedure 12(f). For the following reasons, the Court grants in part and denies in part the motion for judgment on the pleadings and grants the motion to strike.

         BACKGROUND

         For purposes of this motion, the Court accepts as true the following facts from the complaint. Murphy v. Walker, 51 F.3d 714, 717 (7th Cir. 1995). All reasonable inferences are drawn in TWD's favor. Tamayo v. Blagojevich, 526 F.3d 1074, 1081 (7th Cir. 2008).

         TWD is a California limited liability company that sells t-shirts bearing the phrase "THIS WE'LL DEFEND." On May 27, 2015, TWD filed a trademark application (Serial No. 86643151) with the United States Patent and Trademark Office ("PTO") for the word mark "THIS WE'LL DEFEND" in Class 25 for t-shirts, as pictured below.

         (Image Omitted)

         A trademark search using the Trademark Electronic Search System (TESS) prior to May 27, 2015 would not have shown any registered trademark or pending trademark application that included this phrase. However, after that date, TWD's pending trademark application would appear in the search results.

         Grunt Style is an Illinois limited liability company that manufactures and sells clothing. On September 12, 2015, Grunt Style filed five separate trademark applications in Class 25 for clothing that included its logo or portions thereof. The logo, pictured below, includes the words "GRUNT STYLE" above an image of two crossed muskets with the letters "US" to the left, "GS" below, and "1776" to the right. Underneath the image appears the phrase "THIS WE'LL DEFEND." Collectively, this design constitutes the entire composite mark.

         (Image Omitted)

         Grunt Style's first trademark application (Serial No. 86754995) was for the entire composite mark. The second application (Serial No. 86754996) was for the composite mark with the phrase "THIS WE'LL DEFEND" omitted.

         (Image Omitted)

         The third application (Serial No. 86755028) was for the composite mark with the phrase "GRUNT STYLE" omitted.

         (Image Omitted)

         The fourth application (Serial No. 86755032) was for the composite mark with both the phrases "THIS WE'LL DEFEND" and "GRUNT STYLE" omitted.

         (Image Omitted)

         The final application (Serial No. 86755035) was only for the words “THIS WE'LL DEFEND, ” as pictured below.

         THIS WE'LL DEFEND

         On September 30, 2015, the PTO issued a Notice of Publication for TWD's trademark “THIS WE'LL DEFEND, ” explaining that it would be published in the Official Gazette on October 20, 2015 “for the purpose of opposition by any person who believes he will be damaged by the registration of the mark.” During this time, Grunt Style did not file any opposition to TWD's trademark with the PTO. On January 5, 2016, the PTO issued TWD trademark registration No. 4, 880, 776 for the words “THIS WE'LL DEFEND” without claim to “any particular font, style, size or color” in Class 25 for t-shirts.

         On January 7, 2016, the PTO issued separate Office Actions for Grunt Style's five trademark applications. The PTO refused the entire composite mark on the ground that the “identification of goods is indefinite, ” but also stated that there were no conflicting marks. The PTO refused the fractions of the composite mark because “the specimen does not show the applied-for mark in use in commerce…. Specifically, the mark appears to be embedded into a larger mark and is not severable from the rest of the design.” Finally, the PTO refused Grunt Style's application for just the words “THIS WE'LL DEFEND, ” citing “a likelihood of confusion with the mark in U.S. Registration No. 4880776.” The PTO elaborated that the “marks are identical in terms of appearance and sound” and ...


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