Sorensen v. WD-40 Co. - 792 F.3d 712 (7th Cir. 2015)

Rule:

Where a number of the likelihood of confusion factors provide support for a plaintiff, that is not enough to create a material dispute of fact that must be presented to a jury. Rather, the relevant question is whether, looking at the seven factors collectively, a reasonable jury could find in the plaintiff's favor. The three most important factors are similarity of the marks, bad faith intent, and evidence of actual confusion.

Facts:

Plaintiff Jeffrey Sorensen was the founder and CEO of Inhibitor Technology Corporation, which produced a line of rust-inhibiting products containing a substance called volatile corrosion inhibitor ("VCI"). The said products were branded with the federally registered trademark THE INHIBITOR. The word mark was owned by plaintiff; plaintiff also claimed common law trademark rights in a design mark associated with his products, an orange-and-black crosshair. In 2011, the WD-40 Company introduced a new sub-brand of products known as the WD-40 Specialist product line. Plaintiff alleged that the branding of the WD-40 Specialist product line infringed upon his marks. Consequently, plaintiff filed suit against WD-40 in the Northern District of Illinois, alleging trademark infringement and unfair competition under both federal and Illinois law. The district court granted summary judgment in favor of WD-40 on all counts. It found that WD-40's use of the word "inhibitor" on the label of WD-40 Specialist Long-Term Corrosion Inhibitor was a non-trademark descriptive fair use of the word. As to the crosshair mark, the district court found that plaintiff had not presented sufficient evidence to demonstrate a genuine issue of material fact as to a likelihood of confusion.

Issue:

Did the defendant infringe upon plaintiff’s mark, thereby warranting the reversal of the grant of summary judgment in favor of defendant? 

Answer:

No.

Conclusion:

The court affirmed the summary judgment in favor of the defendant, holding that the plaintiff’s claims regarding his word mark were barred by the descriptive fair use defense under 15 U.S.C.S. § 1115(b)(4) because the defendant’s use of the word "inhibitor" was a non-trademark use, "corrosion inhibitor" was clearly descriptive of the competitor's spray, and other than pointing to the defendant’s mere knowledge of the plaintiff’s mark, the plaintiff identified no evidence that defendant acted in subjective bad faith. The court further held that no reasonable jury could find a likelihood of confusion regarding the defendant’s crosshair logo and the plaintiff’s common law crosshair trademark because, inter alia, the similarity of the marks, bad faith intent, and evidence of actual confusion all pointed decisively in favor of the defendant.