United States District Court, N.D. Illinois, Eastern Division
Charles P. Kocoras, United States District Judge.
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.
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).
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.
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
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.
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.
third application (Serial No. 86755028) was for the composite
mark with the phrase "GRUNT STYLE" omitted.
fourth application (Serial No. 86755032) was for the
composite mark with both the phrases "THIS WE'LL
DEFEND" and "GRUNT STYLE" omitted.
final application (Serial No. 86755035) was only for the
words “THIS WE'LL DEFEND, ” as pictured
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
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