Bestway Inflatables & Material Corp. v. Individuals,
Corporations, Limited Liability Companies, Partnerships, & Unincorporated
Associations Identified on Schedule A Hereto, 2025 WL 2380699, No. 24 C 11697
(N.D. Ill. Aug. 15, 2025)
When they tell you that Schedule A cases are against
counterfeiters, keep in mind that trademark owners are willing to call pretty
much anything “counterfeiting,” including ads for compatible parts. Here, the
court looks into the allegations—assisted by defendants who showed up—and concludes
that they’re implausible as to the fighting defendants (those who weren’t
dismissed due to settlement—which this result suggests may have been unnecessary).
What about the rest? The court allows them to show up on their own and repeat
the prevailing defendants’ arguments—which probably won’t do much to curtail
the practice absent some big fee shifts.
Defendants sell parts and accessories for above-ground pools
via internet storefronts on third-party platforms, including Amazon.com, where their
listings mention Bestway as a maker of equipment with which their products are
compatible. Each of defendants’ listings “states in some way that their
products are compatible with Bestway pools or meant for use in Bestway pools,”
e.g., one listing states that its cup holders are “[p]erfect for above ground
pools of brands such as Bestway, Intex, Funsicle, Summer Waves ... Coleman, etc.,”
while another defendant’s listings state that its pool plunger valve is “for
Intex/Bestway/Coleman Pool[s]” and its pool pipe holder is “for Intex Bestway
Coleman Above Ground Pool,” and another says that its pool hose adapter is “for
Bestway for Coleman for Intex” and its joint hose connector is “for Intex
Bestway Coleman.”
As a general matter, “it is not trademark infringement for a
manufacturer of parts to truthfully inform buyers that its parts will fit the
trademarked product of another manufacturer.” However, “the exact language of
the advertisement will be carefully scrutinized” to ensure that it is not
“confusing as to source, sponsorship, affiliation or approval.” Here, the
listings “plainly used the mark ‘Bestway’ not for any source-identification
function as to their own products, but only to indicate that their parts and
accessories are compatible with Bestway pools.” Each listing referred not only
to Bestway but also to at least one other manufacturer of above-ground pools,
such as Intex or Coleman.
Defendants pointed to an earlier Schedule A case, Roku Inc.
v. Individuals, Corps., LLCs, Partnerships, & Unincorporated Associations
Identified on Schedule A Hereto, No. 22-CV-0850, 2022 WL 1598208, at *4
(S.D.N.Y. May 20, 2022), which concluded that the holder of the “Roku”
trademark had not shown a likelihood of confusion based only on an Amazon
listing of a remote that was listed as “compatible” with Roku TVs, reasoning in
part that the fact that the remote had a “Roku channel” button did not
communicate sponsorship or a common origin with Roku-manufactured products when
there were also buttons for “Netflix, Hulu, [and] Disney+.” It was clear in
context that the defendant’s use of the term “Roku” in its listing referred to “legitimate
Roku products,” not to defendant’s own products. The same was true here. There
were no non-conclusory allegations of actual confusion or intent to palm off.
And, though “[a] superficial glance at the other likelihood of confusion
factors might seem to suggest that they favor Plaintiff, … any such assessment
would fail to account for context and common sense.” The mark was used “in its
simple textual form,” along with the marks of competing above-ground pool
manufacturers, “to inform consumers that their parts will fit the pools of
those manufacturers.” If “Bestway” had been in larger font than the rest of the
text or singled out in some other way, the result might have been different. [This
is nominative fair use without the label, deployed as implementation of Twiqbal.
If all we have to limit trademark rights is context, then it’s good for courts
to take context seriously. But the Seventh Circuit has a very distinct attitude towards common sense.] Here, the mention of other competitors signalled a
lack of source- or sponsorship-indicating use, suggesting that “Bestway” was
being used “not to indicate sponsorship but only to identify Plaintiff’s pools
as an example of one kind of pool that Plaintiff’s parts and accessories will
fit.” If these listings could infringe,
it is hard to see how anyone in
Defendants’ position could sell replacement parts without risking a trademark
infringement suit, short of offering an explicit disclaimer—i.e., “These parts
are not manufactured by Bestway, Intex, or Coleman.” Plaintiff has cited no
authority requiring such language in circumstances such as these, nor does the
Court see anything plausibly misleading or confusing in Defendant’s listings
that might require some such corrective disclosure.
The court didn’t reach “fair use” arguments as such because
confusion was implausible. Two other defendants filed motions for summary
judgment on similar grounds, but the parties hadn’t yet had an opportunity for
discovery; those defendants could now refile. (If the grounds were similar,
what more could discovery have revealed that would change the content of the
listings over which plaintiff brought suit?)
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