Illinois Tool Works Inc. v. J-B Weld Co., No. 3:19-cv-1434 (JAM), 2024 WL 4117244 (D. Conn. Sept. 9, 2024)
The parties compete in the sale of “chemical bonding
products marketed for home and automotive use.” Here, the court kicks out
Lanham Act claims/counterclaims on summary judgment for want of materiality—for
“Made in USA” and the term “epoxy”—as well as another claim on laches grounds. The
first one’s the potential surprise, and raises evidentiary questions about hearsay that a
court in a trademark case might have seen differently.
J-B has used unqualified “Made in USA” claims in its
advertising. The parties disputed whether J-B’s silicone sealants, manufactured
by its suppliers, contain ingredients sourced from abroad and the significance
of those ingredients.
ITW advertises “the interchange between its products and the
matching OEM manufacturer products” in its materials, sometimes including OEM
interchanges for specific automotive brands in its package advertising. It also
marketed certain products as epoxies despite their not fitting the chemical
definition of an epoxy. The parties agreed that “an epoxy is a polymer
containing one or more epoxy or epoxide groups,” and that adhesives containing
epoxides are distinct from adhesives containing methyl methacrylate (“MMAs”),
and they have distinct health and safety concerns. ITW’s accused products didn’t
contain chemical epoxide groups, but it categorized them as epoxies on its
website. It took the position that, “from a marketing perspective, the
definition of an epoxy is any two-part adhesive,” regardless of its specific
chemical composition. J-B Weld disagreed and cited a few Amazon reviews in
which customers say things like “Is this epoxy or just adhesive?”; “Can anyone
tell me if this has methyl methacrylate (mma)? that’s what i want but i can’t
tell for sure”; “What is the base chemical of this glue—epoxy, methacrylate, or
polyurethane?” Some of ITW’s technical product data sheets did differentiate
between “the ‘chemical type’ of an epoxy and a non-epoxy,” identifying
differences in odor and flashpoint, among other product characteristics.
ITW didn’t submit sufficient evidence of the materiality of
“Made in USA,” offering only “two deposition excerpts in which ITW employees
offer their opinions and vague impressions on the issue.” The former director
of marketing testified that consumers “definitely” purchase products “based on
Made in the USA advertising.” He elaborated: “Because of the type of consumer
that shops for our products in general, the profile are people that highly
value Made in the USA.” He said that Walmart told his team that “made in the
USA is a priority for them.” The court deemed this hearsay and thus irrelevant
for summary judgment—but I wonder whether it could also be characterized as
evidence of the speaker’s mental state. Regardless, “[c]ourts that have deemed ‘Made
in USA’ claims material have been offered much richer evidentiary records,”
including actual retailer testimony.
In addition, ITW didn’t show actual injury; in the Second
Circuit, literal falsity alone isn’t enough to presume injury in the absence of
comparative advertising as well as direct competition. This wasn’t comparative
advertising (or a two-player market).
OEM: The court found laches; ITW had used OEM advertising
since 2001 and J-B didn’t sue until 2020. J-B argued that the relevant period
should begin in 2014, when J-B entered the market, and that it wasn’t
unreasonable for a new market entrant to wait to sue the most significant
competitor. But that still didn’t excuse six years of delay (where the relevant
state period was three years). And ITW was likely to be prejudiced “by being
forced to discontinue a marketing strategy it has relied on for so many years
and with the risk that customers will assume—in the absence of OEM labeling
claims—that the formulation of its products have changed.”
Epoxy: In J-B Weld Co., LLC v. Gorilla Glue Co., 978 F.3d
778 (11th Cir. 2020), J-B lost a false advertising claim against a different
competitor based on the competitor’s use of the term “epoxy” in advertising its
non-epoxy MMA-based product. The court of appeals reasoned that “consumers
likely categorize ‘epoxies’ as all two-part resin-and-hardener adhesives,
regardless of the chemical constitution of the resin.” It cited the testimony
of J-B’s own expert “that consumers likely only care about whether the product
sticks two surfaces together effectively.” Even if there were “safety and odor”
differences, there wasn’t a showing of materiality.
The record here wasn’t sufficiently different from that in Gorilla
Glue. A “smattering” of Amazon reviews was insufficient to change anything.
J-B’s own CEO’s opinion about whether ITW’s epoxy claim would affect consumer
purchasing decisions didn’t help because he wasn’t qualified expert on consumer
purchasing decisions, and “his self-interested opinion about consumer
purchasing decisions exceeds the limits of permissible lay opinion testimony
that must be based on a witness’s own sensory perception.”
In the alternative, J-B also failed to show injury from
either the OEM or epoxy advertising. Its 30(b)(6) witness testified that various
retailer customers told them that J-B was losing business because ITW used
“OEM” labels and J-B didn’t, but that was hearsay. Even nominal damages
required evidence of injury.
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