IP Law Daily Tool manufacturer granted injunction against maker of competing product with similar name
Friday, December 13, 2019

Tool manufacturer granted injunction against maker of competing product with similar name

By Deirdre Kennedy, J.D.

The plaintiff succeeded in obtaining a preliminary injunction against a competitor who likely infringed its MUFFLER WELD trademark by selling a similar product with the same name.

In a trademark infringement action brought by the manufacturer of "MUFFLER WELD," the federal district court in New Haven, Connecticut, has granted a preliminary injunction barring the manufacturer of "MufflerWeld" from continuing to sell or market its product. The evidence supported a finding that J-B Weld sought to trade on the reputation and goodwill of the long-established "MUFFLER WELD" product and employed the "MufflerWeld" mark in bad faith (Illinois Tool Works Inc. v. J-B Weld Company, LLC, December 12, 2019, Meyer, J.).

ITW has, since 1976, sold a sealant for automotive exhaust systems under the name "MUFFLER WELD." The USPTO granted a trademark for MUFFLER WELD on the Principal Register, "for paste sealer for repairing muffler holes."

J-B Weld sells high-strength adhesives. Many, but not all, of its successor products were branded with a modifier suggesting the product’s usage concatenated with the word "Weld." For example, J-B Weld has sold products named RadiatorWeld, TankWeld, MarineWeld, and AutoWeld. Trouble began in April 2018, when J-B Weld started selling a new form of sealant for mufflers, pipe joints, and exhaust systems called "MufflerWeld." Inspection of the product reveals that J-B Weld has asserted a common-law trademark over the term "MufflerWeld" by placing the TM symbol next to that term (distinguished from the ® denoting that "J-B Weld" is a registered mark).

ITW moved for a preliminary injunction to bar J-B Weld from continuing to market its product under the "MufflerWeld" name during the pendency of this litigation. ITW argued that it was likely to succeed on its trademark infringement claim and that it was being irreparably harmed. In response, J-B Weld argued that the difference in trade dress (packaging) between its product and ITW’s product defeated any claim of trademark infringement, and that ITW had not shown irreparable injury in any event.

Likelihood of success on the merits. The court determined that the MUFFLER WELD mark is inherently strong because the USPTO registered it without proof of secondary meaning, so it could be presumed that the mark was more than merely descriptive and was inherently distinctive. Additionally, there was no evidence that anyone had used MUFFLER WELD or anything even close to MUFFLER WELD to brand muffler sealant in the last four decades, contributing to the finding that the strength of the mark factor favored ITW.

As for the similarity of the marks, J-B Weld argued that "MufflerWeld" and "MUFFLER WELD" were dissimilar by reason of the insertion of an additional space in ITW’s mark, as well as the difference in capitalization, but, also noted the different trade dress, dispensing receptacles, and house marks of the ITW and J-B Weld products, arguing that no reasonable consumer would be confused between the two products if viewed side by side. The court found, however, that word marks would lose much of their meaning if a competitor could market an identical product using the senior product’s registered mark and escape all liability for infringement simply by slapping the competitor’s logo on the product, changing the trade dress, or making a minor punctation change.

The court was also conceded that the parties were direct competitors. While there was no evidence of actual confusion, the court noted that evidence of actual confusion is not always required to prove likelihood of confusion between the marks.

It was also shown that J-B Weld had constructive notice of ITW’s mark. Where such prior knowledge is accompanied by similarities so strong that it seems plain that deliberate copying has occurred, there is a likelihood of a finding of bad faith. The court further noted that intentional copying does not require identical copying. All of this evidence provided sufficient support to conclude that J-B Weld sought to trade on the reputation and goodwill of the long-established "MUFFLER WELD" product and employed the "MufflerWeld" mark in bad faith.

Balancing all of those factors, the court concluded that ITW made a clear showing of a substantial likelihood of success on the merits.

Irreparable harm. Irreparable harm is the single most important prerequisite for the issuance of a preliminary injunction. ITW had to demonstrate that irreparable injury was likely in the absence of an injunction. The first and most obvious evidence of irreparable harm is ITW’s showing that the ITW and J-B Weld muffler sealants are identical except for trade dress and the means by which the products are dispensed (tub v. tube). Second, as ITW argued, its factual showing that a direct competitor used a near-identical word mark to market a near-identical product is sufficient to show that ITW had lost at least a degree of control over MUFFLER WELD’s reputation in the marketplace. Finally, AutoZone’s decision to stop stocking ITW’s Muffler Weld and start stocking J-B Weld’s MufflerWeld was further evidence that the appropriation of its trademark had already caused, and will continue to cause, ITW to lose control of the MUFFLER WELD mark.

For all the foregoing reasons, the court granted ITW’s motion for a preliminary injunction.

This case is No. 3:19-cv-01434-JAM.

Attorneys: Bradley L. Cohn (Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP) and Timothy Andrew Diemand (Wiggin and Dana LLP) for Illinois Tool Works Inc. Ashley Summer (Nelson Mullins Riley & Scarborough, LLP) for J-B Weld Co., LLC.

Companies: Illinois Tool Works Inc.; J-B Weld Co., LLC

MainStory: TopStory Trademark ConnecticutNews

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