IP Law Daily My Pillow can pursue infringement but not false advertising claims against competitor
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Monday, December 17, 2018

My Pillow can pursue infringement but not false advertising claims against competitor

By Cheryl Beise, J.D.

The federal district court in Minneapolis has determined that My Pillow—a manufacturer of pillows and related products under the mark MYPILLOW—can pursue trademark infringement claims against a competitor that sells pillows under the mark "I ♥ MY PILLOW." My Pillow’s motion to amend its complaint was granted because it sufficiently alleged that the competitor’s use of its own mark breached a prior settlement agreement and created a likelihood of confusion with My Pillow’s mark. However, My Pillow failed to allege any new facts to plausibly support a claim for false advertising. My Pillow’s motion to amend its false advertising and false representation claims was denied as futile, but the claims may be reasserted later if new facts come to light (My Pillow, Inc. v. LMP Worldwide, Inc., December 13, 2018, Rau, S.).

Since 2009, Minnesota-based My Pillow, Inc., has sold pillows and related products using the mark "MYPILLOW." Michigan-based LMP Worldwide, Inc., has sold pillows using the mark "I ♥ MY PILLOW," in stylized form, since 2007. Each company owned a federal trademark registration for its mark.

In 2012, My Pillow sued LMP for trademark infringement and unfair competition in federal court in federal court in Michigan. The parties settled that case before conducting discovery. The settlement agreement prohibited LMP from using the MYPILLOW mark in connection with pillows and from making any ad word purchase for the works "my" and "pillow," whether together or separate, unless accompanied by additional words. My Pillow likewise agreed not to purchase certain ad words related to the LMP mark. The agreement also stated that the parties’ respective marks were not confusingly similar.

My Pillow alleged that LMP violated the settlement agreement by purchasing prohibited ad words without the accompaniment of additional words. My Pillow also alleged that LMP made false representations about My Pillow in an email to a wholesale customer and that LMP produced radio advertisements in Minnesota that were designed to cause confusion between My Pillow and LMP. My Pillow terminated the agreement on January 23, 2018, and filed the present suit the next day—asserting claims for breach of contract, trademark infringement, unfair competition, and false advertising/representation in violation of the Lanham Act, cancellation of trademark registration under the Lanham Act, common-law trademark infringement and unfair competition, and unfair competition and false representation in violation of the Minnesota Deceptive Trade Practices Act ("MDTPA"). LMP moved to dismiss My Pillow’s original complaint for failure to state a claim. The court granted the motion as to LMP’s trademark infringement, trademark cancellation, and false advertising claims.

Before the court was My Pillow’s motion to amend its complaint to "correct the pleading issues" identified by the court and to add another federal trademark registration as a basis for infringement. A court should "freely give leave" to amend a pleading before trial when "justice so requires." Fed. R. Civ. P. 15(a). LMP opposed the motion, arguing the proposed amendments would be futile.

Trademark infringement. To prevail on its trademark infringement and unfair competition claims, My Pillow must prove it owns a valid trademark and that LMP used a confusingly similar mark in commerce in connection with the sale of goods. The court previously found that the complaint alleged no specific facts addressing LMP’s unlawful use of the MYPILLOW mark. A screenshot provided by My Pillow only showed LMP’s use of its own mark, a use the court found to be permitted by the settlement agreement.

My Pillow attempted to remedy its trademark infringement claims by alleging that its termination of the settlement agreement rescinded any authorization LMP had in using the LMP mark or the words "my" and "pillow" in connection with pillows. According to My Pillow, LMP’s continued use of the LMP mark following the agreement’s termination infringed upon the My Pillow mark by creating a likelihood of consumer confusion. To support an inference of confusion, My Pillow referenced a December 14, 2017, email from an LMP employee to a wholesale customer that includes the following language: "I’ve been with this company for 3 years and I can’t tell you how many calls I get from customers wanting to return their My Pillow thinking we are the same."

The court found that My Pillow’s amended allegations sufficed to plausibly state a claims for trademark infringement. The court observed that My Pillow’s allegations essentially revived the Michigan federal litigation that the parties settled, returning the parties to their pre-settlement positions. However, the court also noted that My Pillow’s claims might not withstand further scrutiny as the case develops, particularly given its admission of no likelihood of confusion in the settlement agreement.

My Pillow also sought add a new trademark infringement claim in connection with LMP’s sales of pillow cases in addition to pillows. My Pillow asserted that pillow cases were never covered by the agreement, thus rendering any use of the LMP mark on pillow cases as trademark infringement. LMP countered that the cases were sold as replacement parts for the core component of the underlying pillows, and thus, this claim was subsumed by the other trademark infringement claim. The court, however, did not need to decide this factual issue at this point. The claim was not futile, and was allowed.

False advertising. In its original complaint, My Pillow’s false advertising/false representation claim was based "solely on a statement made by an employee to a wholesale customer in a private email." The court previously found this statement "was neither ‘advertising’ nor ‘promotion’" constituting a commercial advertisement because the complaint did not allege the "statement was sufficiently disseminated or directed to the purchasing public."

My Pillow sought to add following: "On information and belief, LMP has made false and misleading statements comparing LMP and My Pillow and quoting unsubstantiated statistics regarding the sales, products, and customers of My Pillow and LMP to a substantial portion of the relevant purchasers in an effort to take sales away from My Pillow." The court found that this additional language did not overcome the original deficiency. My Pillow tried to distinguish its present claim of a broader pattern of behavior from its previous claim of a broader pattern by reason of the addition of "on information and belief" that the email was part of the larger marketing campaign. The cases cited by My Pillow that allowed such pleading were factually distinguishable. The court could not conclude that the addition of "on information and belief" altered My Pillow’s previously-rejected allegations. My Pillow’s false advertising claim was dismissed, but My Pillow was not barred from reasserting the claim in the future if new facts are uncovered in discovery.

This case is No. 0:18-cv-00196-WMW-SER.

Attorneys: David J. Simonelli (Simonelli IP, PLLC) and Laura L. Myers (Fredrikson & Byron, PA) for My Pillow, Inc. Anthony Michael Palizzi (Miller Canfield Paddock & Stone PLC) and Matthew L. Woods (Robins Kaplan LLP) for LMP Worldwide, Inc.

Companies: My Pillow, Inc.; LMP Worldwide, Inc.

MainStory: TopStory Trademark MinnesotaNews

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