Noncompetitor nailed on false advertising claim

Illinois Tool Works, Inc. v. Chester Brothers Machined Products, Inc., 2006 WL 2191982 (N.D. Ill.)

Plaintiff makes pneumatic nailers and staplers with a distinctive orange color, which it has registered for pneumatic and gas-powered hand tools, namely nailers and staplers. Apparently plaintiff uses a variety of trade names on the nailers and staplers, with the orange color being a common feature.

Defendant does business as “Pneu-Fast” and sells nails. Its ads use a photo of a pneumatic nailer bearing the color orange and the name “Pneu Fast.” (The website currently has a picture in which the nailer is orange, but the name isn’t visible.) Plaintiff sued for trademark infringement, false designation of origin, and false advertising.

As to the false advertising claim, the defendant won its motion to dismiss; the parties aren’t competitors, which means a Lanham Act false advertising claim is unavailable. For these purposes, defendant’s ads aren’t “commercial advertising or promotion.” That's a silly way to put a standing objection, since the ads quite obviously are commercial advertising, but that’s how the test goes. Thus the coordinate state law claim went as well, as did a false designation of origin claim in which plaintiff forgot to allege the interstate commerce element.