Knowledge Library Sears cannot slip wrench maker’s trade dress claims
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Friday, January 23, 2015

Sears cannot slip wrench maker’s trade dress claims

By Cheryl Beise, J.D.

LoggerHead Tools, LLC—the maker of the locking Bionic Wrench—can proceed with trade dress infringement claims against Sears Holding Corporation and Apex Tool Group, LLC, the federal district court in Chicago has held (LoggerHead Tools, LLC v. Sears Holding Corp., January 22, 2015, Darrah, J.). LoggerHead sufficiently alleged that its registered product design and its unregistered packaging were protectable and infringed by a Craftsman branded locking wrench.

Background. In 2005, Dan Brown founded LoggerHead Tools, LLC and began selling the Bionic Wrench product. The wrench is covered by U.S. Patent Nos. 6,889,579 and 7,992,470. In August 2008, LoggerHead received a trademark registration certificate from USPTO for the standard character mark “Bionic Wrench” for “hand tools” and “hand tool bits” in International Class 8. On May 6, 2014, LoggerHead received registration on the Supplemental Register of a mark consisting of drawing of a wrench (the “Product Design Mark”). The mark is described as consisting of “a 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.”

In 2009-2010, Sears ordered 90,000 Bionic Wrench units from LoggerHead. On February 1, 2011, Sears and LoggerHead entered into a one-year supply agreement. In September 2012, Sears announced the Craftsman “Max Axess Locking Wrench,” which according to LoggerHead, is an infringing copy of the Bionic Wrench.

LoggerHead sued Sears Holding Corporation and Apex Tool Group, LLC, asserting various claims for patent and trademark infringement. Before the court was the defendants motion to dismiss LoggerHead’s trade-dress infringement claims pursuant to Federal Rules of Civil Procedure 12(b)(6).

Product design infringement. To plead a product design trademark or trade-dress infringement claim, a plaintiff must plausibly plead that: (1) its trade dress is nonfunctional, (2) the trade dress has acquired secondary meaning, and (3) a likelihood of confusion exists between its trade dress and the defendant’s trade dress.

The defendants argued that LoggerHead’s product design was not subject to trade-dress protection because it was functional and had not acquired secondary meaning. The court rejected this argument. First, registration of LoggerHead’s Product Design Mark on the Supplemental Register indicated that the USPTO already had determined that the mark was not functional. Second, although registration on the Supplemental Register is rebuttable prima facie evidence that the registered mark was descriptive at the time of registration, a determination of whether a mark has acquired secondary meaning requires evaluation of the factual record as a whole. Finally, LoggerHead’s allegation that Sears sold the Bionic Wrench for several years before releasing the Max Axess Locking Wrench plausibly supported a finding of likelihood of confusion.

The court concluded that LoggerHead sufficiently alleged that its registered product design trade dress was nonfunctional, had acquired distinctiveness, and that there was a likelihood of confusion between the parties’ products.

Package trade dress infringement. LoggerHead also sufficiently alleged that Sears infringed its unregistered packaging trade dress. LoggerHead claimed trade dress protection in “packaging trade dress that (1) has a cardboard backing with a clear coating so shows that Bionic Wrench product with two handles and six jaws, (2) exposed handles, (3) a try me feature, (4) a lifetime warranty, and (5) an illustration that the product replaces multiple wrenches in one.”

The defendants again argued that the claimed packaging trade dress was unprotectable because it was either functional or descriptive. The court disagreed. While the defendants were correct that each element claimed by LoggerHead has been found non-distinctive in other cases, the court found that LoggerHead plausibly alleged that its trade dress was inherently distinctive when the elements were combined as a whole. Although LoggerHead did not allege secondary meaning, the Supreme Court has held that “trade dress that is inherently distinctive is protectible under § 43(a) without a showing that it has acquired secondary meaning.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 767 (1992).

LoggerHead also sufficiently alleged actual confusion. Both parties’ tools had packaging that: (1) was clear, (2) showed a product with six jaws and two exposed handles, (3) included a “try me” feature, (4) featured an illustration showing that the product replaced multiple wrenches, and (4) offered a lifetime warranty. In addition, LoggerHead alleged actual confusion by customers who had contacted LoggerHead, believing that the Max Axess Locking Wrench was associated, affiliated, authorized, or sponsored by LoggerHead.

The defendants’ motion to dismiss LoggerHead’s trade dress infringement claims was accordingly denied.

The case is No. 12-cv-9033.

Attorneys: Paul J. Skiermont (Skiermont Puckett LLP) for Loggerhead Tools, LLC. James M. Hilmert (Winston & Strawn LLP) for Sears Holdings Corp. Marcus Edward Sernel (Kirkland & Ellis LLP) for Apex Tool Group, LLC.

Companies: Loggerhead Tools, LLC; Sears Holdings Corp.; Apex Tool Group, LLC

MainStory: TopStory Trademark IllinoisNews

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