By John W. Scanlan, J.D.
The district court made impermissible findings of fact with respect to three factors of the seven-factor test for likelihood of consumer confusion and failed to discuss the other four factors for which there was potentially relevant evidence.
Trade dress infringement and dilution claims brought by a manufacturer of adhesive products against a competitor were incorrectly decided in favor of the defendant on summary judgment because the district court improperly drew inferences in favor of the defendant, the U.S. Court of Appeals for the Eleventh Circuit held in affirming in part, reversing in part, and remanding the decision for further proceedings. However, the ruling in favor of the defendant manufacturer on false advertising claims was upheld (J-B Weld Company, LLC v. The Gorilla Glue Co., October 20, 2020, Tjoflat, G.).
J-B Weld Company manufactures adhesive products, including a two-part adhesive called "J-B Weld Original" or "J-B Weld Cold Weld" that consists of a resin paste and a hardener paste that are combined before application, which starts a chemical reaction that results in a strong adhesive once it dries. J-B Original resin paste contains polymers that are part of "epoxy groups" that catalyze the adhesive products, as well as iron dust as a filler that purportedly strengthens the adhesive when cured. J-B Weld refers to its product as a "steel reinforced epoxy" and has manufactured it since 1969. It has used its current packaging since 2012 with some features that date to 1969. Gorilla Glue is a competitor of J-B Weld. In 2017, Gorilla Glue introduced a two-part adhesive called "GorillaWeld" that, like J-B Weld Original, comes in separate tubes for a resin and a hardener to be mixed together at application. GorillaWeld contains a catalyst that is not an epoxy-group polymer and its product does not contain any iron or steel, but its packaging contains the phrase "steel bond epoxy."
J-B Weld brought suit against Gorilla Glue alleging federal and Georgia trade dress infringement, common law unfair competition, Georgia trade dress dilution, and federal and Georgia false advertising claims. J-B Weld filed for a preliminary injunction to prevent Gorilla Glue from continuing to use its packaging design, but the district court found that J-B Weld had not shown a substantial likelihood of success on the merits. J-B Weld amended its complaint, and Gorilla Glue pleaded sixteen affirmative defenses and filed its own counterclaims against J-B Weld. Both parties moved for summary judgment; the district court granted Gorilla Glue’s motion on all J-B Weld’s claims and partially granted J-B Weld’s motion. J-B Weld appealed.
Trade dress infringement. The district court’s ruling in favor of Gorilla Glue on the trade dress infringement claims was reversed by the Eleventh Circuit because the lower court did not properly view the evidence in a light most favorable to J-B Weld, as the nonmoving party, when considering the "likelihood of confusion" element for this claim. The Eleventh Circuit applies a seven-factor test for likelihood of confusion, but the district court did not properly analyze the evidence for the factors for the similarity of the designs, the intent of the defendant, and actual confusion.
The district court found that while there were similarities between the packaging of the two products, no reasonable person could find the overall impression for the GorillaWeld mark as a whole was similar to the impression created by the J-B Weld Original trade dress due to the presence of the Gorilla Glue logo, brand name, and color scheme. The Eleventh Circuit found that there was conflicting evidence as to the similarity of the designs and that reasonable minds could disagree as to which of these features added the most to the overall impression of the marks.
The record contained evidence that Gorilla Glue’s packaging design team repeatedly referenced the packaging of J-B Weld Original and wished to use similar elements, with one employee calling the ultimate design chosen by GorillaWeld a "knock off" of the J-B Weld design. It also offered evidence that Gorilla Glue intended to copy J-B Weld’s trade dress to "successfully mirror JB Weld at shelf." The district court rejected J-B Weld’s contention that a finder of fact could infer from this evidence that Gorilla Glue intentionally copied elements of J-B Weld’s trade dress that were recognizable to consumers; the district court also improperly inferred innocuous motives from the testimony of Gorilla Glue employees. Although intentional copying does not necessarily demonstrate that Gorilla Glue had the intent of capitalizing on J-B Weld’s goodwill, on a summary judgment motion the court was required to draw inferences in favor of J-B Weld, not Gorilla Glue, and should not have resolved disputed evidentiary issues on a motion for summary judgment.
The district court also did not consider reasonable inferences of fact regarding proof of actual confusion that were in favor of J-B Weld. Industry professionals had asked J-B Weld whether the company "had anything to do with" GorillaWeld or whether it was making or supplying private label tubes to Gorilla Glue. The district court found that this evidence did not show actual confusion because the professionals knew the difference between the products. While the Eleventh Circuit found this conclusion plausible, it pointed out that it also was reasonable to infer instead that the professionals were confused as to whether the companies were collaborating on GorillaWeld. The district court should not have chosen the interpretation that was adverse to J-B Weld, the Eleventh Circuit instructed. It also did not consider other circumstances, such as the fact that the complaint was filed only months after GorillaWeld was introduced meant that there likely would be few reported incidents of actual confusion.
The district court mentioned in a footnote that it had determined while deciding the preliminary injunction that J-B Weld’s trade dress deserved moderate protection. However, it was improper for the court to rely upon its factual findings from that stage at the litigation at the summary judgment stage because the findings of fact and conclusions of law from the preliminary injunction stage were not binding at trial on the merits and the district court did not consider the weight that the jury might give to this factor. Finally, the district court did not discuss at all the factors for similarity of the productions, similarity of retail outlets and purchasers, and the similarity of advertising media used. The appellate court found evidence that these factors weighed in favor of a finding of infringement.
Trade dilution claim. The Eleventh Circuit stated that it had "serious doubt" that the district court had applied the correct standard in analyzing the claim for trade dress dilution under state law and reversed the summary judgment ruling in favor of Gorilla Glue. The lower court required J-B Weld to show proof of a likelihood of confusion for this claim but the statute explicitly provides that confusion does not need to be proven to establish trade dress dilution. The district court’s "abbreviated treatment" apparently conflated the state law trade dress dilution claim with the federal trademark infringement claim, which has different requirements.
False advertising. By contrast, the district court’s grant of summary judgment to Gorilla Glue on J-B Weld’s claim that GorillaWeld was falsely advertised as a "steel bond epoxy" was upheld. J-B Weld had argued that "steel bond epoxy" was material to consumers because it misrepresented inherent qualities or characteristics of the GorillaWeld product as it contained neither iron or steel nor an epoxy-group polymer. However, the "inherent quality or characteristic" element was a consumer-oriented inquiry, not a scientific one. J-B Weld provided no evidence, such as consumer surveys, that showed that consumers were that "scrupulous" about the chemical composition of adhesive products. The appellate court found that the evidence showed that retailers often categorize MMA-chemistry related products like GorillaWeld as epoxies and that consumers classify epoxy adhesives by the resin-and-hardener application and the strength of the surface bonding. Similarly, J-B Weld did not show that the absence or presence of steel in GorillaWeld would affect consumers’ purchasing decisions. Without evidence that consumers would be more likely to purchase adhesives that they believed contained steel or epoxy polymers, J-B Weld could not show materiality.
This case is No. 18-14975.
Attorneys: Neil C. Jones (Nelson Mullins Riley & Scarborough LLP) for J-B Weld Co LLC. April Lynn Besl (Dinsmore & Shohl LLP) for The Gorilla Glue Co.
Companies: J-B Weld Co LLC; The Gorilla Glue Co.
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