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J-B Weld Co., LLC v. Gorilla Glue Co.

United States District Court for the Northern District of Georgia, Atlanta Division

October 17, 2018, Decided; October 17, 2018, Filed

CIVIL ACTION NO. 1:17-CV-03946-LMM

Opinion

ORDER

This matter is before the Court on Defendant The Gorilla Glue Company's ("Gorilla Glue") Motion for Summary Judgment [107] and Plaintiff J-B Weld Company, LLC's ("J-B Weld")'s Motion for Summary Judgment [109]. After a review of the record and due consideration, the Court enters the following Order:

I. Background

A. J-B Weld's Product and Packaging

J-B Weld has been marketing and selling a two-part epoxy adhesive under the trademark "J-B WELD" since 1968. See Dkt. No. [128-1] ¶ 1. The two-part epoxy adhesive is comprised of an epoxy resin and a paste hardener. See id. ¶ 2. When the resin and paste hardener are mixed together, a crosslinking reaction occurs that results in a strong, hardened, and permanent adhesive bond that obviates the need for torch welding. Dkt. No. [28] at 2. J-B Weld has sold this two-part [*3]  epoxy adhesive, known as "J-B Weld Original," in separate, twin-tube containers since 1969. Dkt. No. [128-1] ¶ 3. J-B Weld's Product—along with its newer, quicker setting counterpart "KwikWeld"—is sold in major retail stores and online sites, such as Wal-Mart, Home Depot, Lowe's, Ace Hardware, True Value Hardware, Advance Auto Parts, AutoZone, Genuine Parts Co. (NAPA), O'Reilly's and Amazon. See id. ¶¶ 4-5.

J-B Weld has used the same trade dress on J-B Weld Original since 2012. Dkt. No. [28] at 2. J-B Weld defines its trade dress as containing: (1) two squeezable tubes in a clear blister package wherein the two tubes are arranged in a "V-shape"'; (2) red coloring on one tube and black coloring on the other tube, in the form of a red banner background label on one tube and a black banner background label on the other tube; (3) a clear plastic blister package holding the tubes curved downward between the tubes; (4) a drop-down technical information box on the blister package background card, located between the two tubes in the V-shape, that has four lines of information separated by white lines; (5) a colored banner across the bottom end of the blister package background card; (6) a [*4]  colored banner bar across the top of the blister package background card that also includes the term "Weld" within the banner; (7) the phrase "Steel Reinforced Epoxy" and "World's Strongest Bond" on the blister package background card; (8) a list of uses near the bottom right corner of the blister package background card; and (9) an expanded blister package background card that is five inches wide ("J-B Weld's Dress"). Id.

Additionally, J-B Weld's packaging has described J-B Weld Original as a "Steel Reinforced Epoxy" since 2009. Dkt. No. [128-1] ¶ 11. In 2009, J-B Weld also began labeling the resin tube for J-B Weld Original with the word "STEEL." See id. ¶ 17. Accordingly, Gorilla Glue first learned of J-B Weld's use of the term "Steel Reinforced Epoxy" on its packaging when the packaging hit the market in 2009. Id. ¶ 43. J-B Weld further contends that, following Gorilla Glue's receipt of a laboratory report from Epic Resins in April 2009, Gorilla Glue became aware that J-B Weld intended the word "steel" on its packaging to indicate the presence of an iron-containing additive in J-B Weld Original. Dkt. Nos. [109-6]; [128-1] ¶¶ 45-46. While Gorilla Glue agrees the report indicates [*5]  that the presence of iron powder in J-B Weld Original may indeed be connected to J-B Weld's steel claims on its packaging, Gorilla Glue denies drawing any affirmative conclusions from the report in 2009. Dkt. No [128-1] ¶¶ 45-46. Nevertheless, it is undisputed that Gorilla Glue neither contacted J-B Weld about nor challenged its use of the word "steel" on its packaging until the present action. Id. ¶¶ 56, 57.

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2018 U.S. Dist. LEXIS 222506 *

J-B WELD COMPANY, LLC, Plaintiff, v. THE GORILLA GLUE COMPANY, Defendant.

Prior History: J-B Weld Co., LLC v. The Gorilla Glue Co., 2017 U.S. Dist. LEXIS 225930 (N.D. Ga., Nov. 20, 2017)

CORE TERMS

Weld, Gorilla, Glue, epoxy, steel, package, consumers, false advertising, advertisement, products, tubes, Dress, trade dress, literally, blister, laches, reinforced, adhesive, similarity, card, Lanham Act, infringement, contends, likelihood of confusion, summary judgment, deception, coloring, parties, factors, summary judgment motion