Friday, October 30, 2020

trademark law continues as 500 pound gorilla in glue case

J-B Weld Company, LLC v. Gorilla Glue Co., --- F.3d ----, 2020 WL 6144561, No. 18-14975 (11th Cir. Oct. 20, 2020)

This case illustrates how much leeway trademark claims often get and how little false advertising claims do.

My daughter provided the best summary of my take on the trademark part of this dispute: if you can’t tell these two apart, you have no business working with powerful adhesives. But the court found the evidence of copying was so strong as to allow a jury to infer an intent to confuse. This triggered a concurrence emphasizing that intentional copying isn’t necessarily evidence of intent to confuse. But if intentional copying can always or usually reasonably allow an inference of intent to confuse, which itself can be assumed to succeed, then ordinary competitors will find it difficult to avoid a full jury trial, which is an anti-competitive result. (Side note: the court also remanded the state law dilution claim because dilution doesn’t require confusion and the court of appeals couldn’t tell if the district court fully understood that, given that it focused on how different the parties’ products looked, even though that’s also an excellent reason there’d be no blurring either.)

The parties compete in the adhesive market. J-B Weld makes a two-part epoxy adhesive. “J-B Weld Original’s epoxy resin paste also contains iron dust as a filler, purportedly to strengthen and support the adhesive when cured, which J-B Weld recognizes by referring to the product as a ‘steel reinforced epoxy.’” It describes its trade dress as:

(1) two squeezable tubes in a blister package, with the tubes angled inwardly to create a “V-shape;” (2) a black-bannered tube on the left side of the package and a red-bannered tube on the right side of the package; (3) black and white caps on each respective tube; (4) a clear “blister” style protective package that angles inward in the same manner as the tubes; (5) a background card with a width of five inches; (6) a “technical information box,” located in between the two tubes on the background card, including four lines of information separated by white lines; (7) colored banners stretching across the top and bottom portions of the background card; (8) the capitalized/emphasized word “WELD” inside the upper banner on the background card; (9) a list of potential uses for the product in the bottom-right corner of the background card

In 2017, Gorilla Glue introduced a two-tube adhesive under the brand name “GorillaWeld.” GorillaWeld’s adhesive differs from J-B Weld’s in that GorillaWeld uses methyl methacrylate chemistry (MMA), which, chemically, is not an epoxy-group polymer. GorillaWeld’s resin also does not contain any iron or steel. It’s still marketed as an “epoxy” adhesive and, on its packaging, as a “steel bond epoxy.”

Gorilla Glue recognized that it was entering the epoxy market to go head to head against J-B Weld. Its graphic designer stated: “The objective of this project was to go straight up against the top competitor (J-B Weld) and create packaging that mimics the competitor’s architecture. I was able to pull subtle elements into our package, but still keep the package looking tough and geared towards the Gorilla brand.”

The district court found confusion unlikely,  because the packages look so different, but the court of appeals thought it had resolved disputed questions of fact against J-B Weld on similarity, intent, and actual confusion.


Here, reasonable minds could disagree as to which of these features contributes most to the overall impression conveyed by the two marks. Where one consumer may think that the color scheme and Gorilla Glue logo are central to the trade dress’s impression, another consumer may believe that the particular placement and angling of the black-and-red labeled tubes, the identical location of product specifications such as hold strength and set and cure time, and the presence of “WELD” in large, bolded text comprised the primary impression of the two products’ packaging. With this amount of conflicting evidence as to the similarity of the two designs, it was error for the District Court to conclude that, as a matter of law, J-B Weld had not shown that the two products’ trade dress designs were similar.

Intent: Again, the district court erred by failing to make J-B Weld’s “best case.” Intent to confuse can be found based on circumstantial evidence, so a factfinder “may” infer “intent to derive a benefit from a competitor’s goodwill—and, accordingly, an intent to cause confusion—from evidence of intent to copy.” This is especially true if there are substantial similarities.

J-B Weld’s evidence included “communications from Gorilla Glue’s packaging design team that repeatedly referenced J-B Weld Original’s packaging and expressed a desire to use similar elements for GorillaWeld’s packaging.”  The team described certain GorillaWeld packaging options as “[c]lose to JB Weld brand” and aspiring to “go[ ] directly after [J-B Weld Original],” and the team stated their target market was consumers that had used the J-B Weld Original product in the last six months. One Gorilla Glue employee later called the GorillaWeld design a “knock off” of J-B Weld. [Note that GG apparently didn’t choose the closest options, but its consideration and rejection of them gets to weigh against it!]

The district court wrongly relied on the graphic designer’s statement, “I was able to pull subtle elements [of J-B Weld’s Dress] into our package, but still keep our package looking tough and geared towards the Gorilla brand.” This was error because there was evidence that Gorilla Glue intended to “mirror,” “copy,” and “knock off” J-B Weld Original’s trade dress, not simply “construct a worthy competitor.”

And “GorillaWeld was designed with the knowledge that it would be sold on shelves near its competitor in retail stores,” which is apparently evidence favoring likely confusion instead of easily allowing consumers to recognize big differences between them. “This evidence of Gorilla Glue’s intent to copy creates an inference that Gorilla Glue intended to capitalize on J-B Weld’s goodwill, and that evidence is probative of the likelihood of confusion issue.”

It was also improper to impute innocuous motives from the testimony of Gorilla Glue’s employees that the “V-shape” design of GorillaWeld’s packaging served purposes other than mirroring J-B Weld’s trade dress. It’s true that “intentional copying does not necessarily indicate a desire to capitalize on another’s goodwill,” but it can, so it had to weigh in J-B Weld’s favor for summary judgment purposes.

Actual confusion: “J-B Weld’s evidence indicated that other industry professionals, including a buyer at a retailer that carries J-B Weld Original, asked J-B Weld representatives whether J-B Weld ‘had anything to do with’ GorillaWeld, or if J-B Weld was making or supplying Gorilla Glue with ‘private Label Epoxy Twin Tubes’ pursuant to some sort of agreement.” The district court went with case law saying that questions about affiliation show lack of confusion, not confusion—they understand that the signals they’re receiving are at least ambiguous.

But this wasn’t the only reasonable inference from this evidence. It would also be reasonable to infer that “even if the industry professionals knew the two products were different, they were confused as to whether GorillaWeld was the product of a collaboration or other liaison between the two companies.” [Except they asked, rather than assuming—they knew they didn’t know the answer to that question based on what they’d seen. It’s not just that they differentiated the products, which I can do with Diet Coke versus Coke, it’s that they didn’t presume that they were joint productions based on the similarities.] Because affiliation confusion is actionable, this confusion could be legally significant. The question about whether there was a private label deal “leads to a reasonable inference that the person was confused because he or she believed that the similarities in packaging signified a business relationship or other agreement between the companies. Asking if one company ‘had anything to do with’ another company’s product would — or, at least, could — generate a similar inference.”

Plus, the district court failed to consider “any of the circumstantial factors that we have held are integral to determining how much weight should be assigned to any individual instance of actual confusion,” such as “the extent of the parties’ advertising, the length of time for which the allegedly infringing product has been advertised, or any other factor that might influence the likelihood that actual confusion would be reported.” Since the GorillaWeld product was introduced in 2017, and J-B Weld sued quickly thereafter, “in all likelihood the number of reported instances of actual confusion would be on the lower side, making each instance of reported confusion more probative.”

And finally, the district court “failed to appropriately discuss four of the seven applicable factors — the similarity of the products, the similarity of retail outlets and purchasers, the similarity of advertising media used, and the strength of the J-B Weld mark,” which was error. [Query: Pepsi and Coke are at least as similar in appearance—they even use only the same colors. Would it be error to dismiss a confusion claim by Coke against Pepsi based merely on dissimilarity because these factors (product similarity, marketing channels, and mark strength) favor Coke?] A court has to evaluate the weight given to the factors; though that weight varies case by case, it was insufficient to discuss the facts supporting, and weight due, only the three factors discussed above. It was particularly error to rely on the court’s own determination that the trade dress was only moderately strong because the jury could find otherwise given “J-B Weld’s presentation of evidence that J-B Weld Original’s dress is recognizable and has retained consistent features for decades.” [Even though neither of those things are actually evidence of a strong mark as opposed to a mark that works fine but is not particularly strong.]

False advertising: The district court did correctly grant summary judgment on the claim that GorillaWeld is falsely advertised as a “steel bond epoxy.” J-B Weld failed to show materiality of either “steel bond” or “epoxy.”

J-B Weld argued that “epoxy” was material because it refers to the chemical composition of an adhesive, which constitutes an “inherent quality or characteristic” of the product. “But the ‘inherent quality or characteristic’ formulation adopted by this Circuit does not replace the consumer-oriented nature of the materiality inquiry with a scientific one.” The mere fact that components or ingredients are often found to be “inherent qualities or characteristics” that are important to consumer purchasing decisions didn’t mean that they always are. [I sense a bit of tension with the “it’s a jury question” treatment of infringement above.]

While J-B Weld argued that “consumer[s] know[ ] that ‘epoxy’ is a specific and desirable category of adhesives,” it didn’t show that consumers would deem GorillaWeld’s MMA-based adhesive not to be an “epoxy.” It didn’t present “any evidence that consumers are so scrupulous about the chemicals in their adhesives.” Instead, the evidence that there was indicated that consumers probably deemed all two-part adhesives to be “epoxies” regardless of chemical composition. J-B Weld’s survey didn’t ask consumers whether or not they understood epoxy adhesive to have “a specific type of chemistry to it,” and its expert opined that consumers likely only care about whether the product sticks two surfaces together effectively. Gorilla Glue also pointed to evidence that MMA-chemistry based adhesives, such as GorillaWeld, “are frequently marketed, and categorized by retailers, as epoxies.”

Although J-B Weld was correct that retail purchasers or middlemen could be considered in assessing materiality, it didn’t manage to show a factual question as to them either.  The speculation that retailer demand for GorillaWeld increased in 2017 merely because GorillaWeld began including “epoxy” on its labeling couldn’t succceed without proof that it was the inclusion of “epoxy,” and not some other factor, that increased demand for the product.

J-B Weld argued that chemical epoxies and MMA chemistries have “different physical properties,” including “safety and odor differences.” “Maybe so. But J-B Weld has not made any showing that these differences would matter to a consumer.”

“Steel bond”: First, the court was skeptical that Gorilla Glue was really using “steel bond” to describe “a strong bond that works well on metal,” rather than “an adhesive that physically contains iron or steel as a reinforcing agent.” But even so, J-B Weld needed to show that the presence or absence of steel in GorillaWeld resin would be material to a consumer’s purchasing decision, and it didn’t. Its survey asked respondents to identify which of the products they believed contained steel, but didn’t ask about materiality. Internal Gorilla Glue documents showing that it very much wanted to make some reference to “steel” on the package (e.g., “play up on steel”) also didn’t matter. [Now this is definitely in tension with the treatment of intent in the trademark part of the case. Why isn’t it the most reasonable inference that Gorilla Glue, which presumably knows its customers better than the court does, knew what would likely influence them?]

Judge Carnes concurred, but wrote separately “to emphasize the distinction between ‘intentional copying’ and ‘intentional copying with intent to cause confusion.’” Unfortunately, despite celebrating fair competition involving copying, the concurrence doesn’t actually explain when summary judgment for a partial trade dress copier could be proper, making procompetitive copying a risky endeavor. Perhaps if your internal documents don’t say that you seek to “mirror” or be “close to” the competition, or call it a “knock off,” you can still be ok. The concurrence said that the majority doesn’t “alter the well-established rule that intentional copying does not — without more — permit an inference of copying with intent to confuse,” but instead found evidence of that “more” here. I wonder how many instances of copying will not involve people saying that they copied (sorry, “mirrored”), and how people are supposed to talk about their legitimate copying without generating the “more.” I also suspect that, despite all that, product design trade dress copying will continue to get more leeway than product packaging copying.


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