United States District Court, D. Connecticut
ORDER GRANTING MOTION FOR PRELIMINARY
JEFFREY ALKER MEYER, UNITED STATES DISTRICT JUDGE
case arises at an uncommon intersection between the repair of
car mufflers and principles of intellectual property law. For
several decades now, plaintiff Illinois Tool Works Inc. (ITW)
has trademarked the term “MUFFLER WELD” for a
product it sells to seal cracks on car mufflers. But last
year J-B Weld Company, LLC (J-B Weld) began to sell its own
formulation of a muffler sealant using the mark
“MufflerWeld.” In light of the similarity of
these terms, ITW has now moved for a preliminary injunction
to bar J-B Weld from continuing to market its product under
the “MufflerWeld” name during the pendency of
argues that it is likely to succeed on its trademark
infringement claim and that it is being irreparably harmed.
In response, J-B Weld argues that the difference in trade
dress (packaging) between its product and ITW's product
defeats any claim of trademark infringement, and that ITW has
not shown irreparable injury in any event. For the reasons
described below, I will grant ITW's motion for a
facts relevant to this motion for a preliminary injunction
are largely uncontested. ITW has, since 1976, sold a sealant
for automotive exhaust systems under the name “MUFFLER
WELD.” Doc. #4-2 at 1 (¶ 3) (“Agrafojo
Decl.”). In 1977, the United States Patent and
Trademark Office entered a trademark for MUFFLER WELD on the
Principal Register, “for paste sealer for repairing
muffler holes, ” noting that the application disclaimed
the word “muffler” aside from the mark as shown.
MUFFLER WELD, U.S. Trademark Registration No. 1, 064, 459
(Apr. 26, 1977), reproduced in Agrafojo Decl. at 4.
ITW owns this trademark. Ibid. An ITW marketing
executive, Frank Agrafojo, declares in an affidavit that
“MUFFLER WELD sealants are strong sellers for ITW, with
annual gross sales in the hundreds of thousands of
dollars.” Agrafojo Decl. at 2 (¶ 6). For ease of
reference, I will call ITW's product, separate and apart
from its branding, the “ITW muffler sealant.”
Weld sells high-strength adhesives, most notably the product
that gave the company its name, “J-B Weld, ” a
“two-part, epoxy, ‘cold weld' bonding
adhesive, ” Doc. #14-1 at 2 (¶ 4) (“Hanson
Decl.”), essentially a very strong glue with many
different applications in industry, in the garage, or at
home. Ibid. According to the affidavit of Carlton
Hanson, the Chairman and CEO of J-B Weld Co. LLC, the
original epoxy was a success after it debuted in the late
1960s, and the company it launched sought to diversify its
product range in the decades thereafter. Id. at 3
(¶¶ 7-9). Many, but not all, of these successor
products were branded with a modifier suggesting the
product's usage concatenated with the word
“Weld.” Id. at 3 (¶ 8). For
example, J-B Weld has sold products named RadiatorWeld,
TankWeld, MarineWeld, and AutoWeld. Id. at 4
began in April 2018, when J-B Weld started selling a new form
of sealant for mufflers, pipe joints, and exhaust systems
called “MufflerWeld.” For ease of reference, I
will call this product the “J-B Weld muffler
sealant.” Inspection of the product-submitted with the
consent of both parties to the Court to aid in deciding this
motion-reveals that J-B Weld has asserted a common-law
trademark over the term “MufflerWeld” by placing
theTM symbol next to that term (distinguished from
the ® denoting that “J-B Weld” is a
registered mark). Neither party has directed the Court to
any attempt by anyone to register “MufflerWeld, ”
as opposed to “MUFFLER WELD, ” with the Patent
and Trademark Office.
August 2019, ITW learned that J-B Weld had started selling
the J-B Weld muffler sealant using the mark MufflerWeld and
that the J-B Weld muffler sealant had been stocked at
AutoZone, a national automotive supply store. Agrafojo Decl.
at 2 (¶¶ 9-10). Early in 2019, AutoZone stopped
selling ITW's competing muffler sealant; some months
later, it began to stock J-B Weld muffler sealant.
Ibid. This lawsuit and motion for preliminary
injunction followed in September 2019. Doc. #1.
parties have made no submissions about the similarity of the
J-B Weld muffler sealant and the ITW muffler sealant at a
chemical level, although the safety information contained on
the packaging suggests there are some chemical differences
between the products. More importantly, for present purposes,
the parties do not dispute that both products do essentially
the same thing (patch mufflers and other cracked but
patchable car parts) by essentially the same method (creating
chemical bonds that patch said cracks) at essentially the
same price (around $5-$10) marketed to essentially the same
people (so-called “DIYers” alongside some auto
repair professionals and car manufacturers). Compare
Agrafojo Decl. at 2 (¶¶ 7-13) with Hanson
Decl. at 3, 5 (¶¶ 7, 12).
principal difference between the products is their packaging
and the means by which they are dispensed. See
Hanson Decl. at 6 (¶ 14) (reproduced below).
muffler sealant is dispensed from a small black tub (from
which the product is designed to be scooped) and appears in
the center of a flame motif with “MUFFLER WELD”
in capital white letters at the top of the package, with
“Exhaust System Repair” immediately below it, and
“MUFFLER-CAST” in smaller black letters
immediately above and to the right; VersaChem, the house
brand under which ITW sells MUFFLER WELD, appears on the face
of the tub itself and in a small logo on the top left.
Weld's muffler sealant is dispensed directly from a tube
that one squeezes; the packaging's colors are alternating
bands of red and white except at the top of the tube, which
has a black band on which the J-B Weld logo is superimposed.
Immediately beneath the J-B Weld logo is the mark
“MufflerWeld;” immediately beneath
“MufflerWeld” is the legend “Muffler
teleconference held on November 1, 2019, the parties agreed
that I would determine ITW's motion for a preliminary
injunction based on the record presently before the Court,
i.e., on the basis of the parties' submissions
to date. Doc. #40. See generally 11A Wright &
Miller, Fed. Prac. & Proc. § 2949 (3d. ed.)
(evidentiary standards for preliminary injunction hearings).
district court has the power to “grant injunctions,
according to the principles of equity and upon such terms as
the court may deem reasonable, to prevent the violation of
any right of the registrant of a mark registered in the
Patent and Trademark Office.” 15 U.S.C. § 1116(a).
receive a preliminary injunction, ITW must satisfy a
four-part test. First, it must show “either (a) a
likelihood of success on the merits or (b) sufficiently
serious questions going to the merits to make them a fair
ground for litigation and a balance of hardships tipping
decidedly in the [plaintiff]'s favor.” Salinger
v. Colting, 607 F.3d 68, 79 (2d Cir. 2010) (cleaned up).
Second, it must show that it is “likely to suffer
irreparable injury in the absence of an injunction.”
Id. at 80. Third, “a court must consider the
balance of hardships between the plaintiff and defendant and
issue the injunction only if the balance of hardships tips in
the plaintiff's favor.” Ibid.
“Finally, the court must ensure that the ‘public
interest would not be disserved' by the issuance of a
preliminary injunction.” Ibid. All in all,
because a preliminary injunction “is an extraordinary
and drastic remedy, [it is] one that should not be granted
unless the movant, by a clear showing, carries the burden of
persuasion.” Mazurek v. Armstrong, 520 U.S.
968, 972 (1997) (cleaned up). Accord Moore v. Consol.
Edison Co. of New York, 409 F.3d 506, 510-11 (2d Cir.
when a movant seeks, as ITW does here, a “mandatory
preliminary injunction that alters the status quo by
commanding some positive act, ” rather than a
“prohibitory injunction seeking only to maintain the
status quo, ” then the burden of proof on the movant is
“even higher.” Cacchillo v. Insmed,
Inc., 638 F.3d 401, 406 (2d Cir. 2011) (cleaned up). A
mandatory injunction “should issue only upon a clear
showing that the moving party is entitled to the relief
requested, or where extreme or very serious damage will
result from a denial of preliminary relief.”
Ibid. A party seeking a mandatory injunction must
make “a ‘clear' or ‘substantial'
showing of a likelihood of success” on the merits, in
addition to a showing of irreparable harm. Jolly v.
Coughlin, 76 F.3d 468, 473 (2d Cir. 1996).
Likelihood of Success on the Merits
argues that J-B Weld's use of the
“MufflerWeld” mark infringes on ITW's MUFFLER
WELD mark, in violation of the Lanham Act. 15 U.S.C. §
1114. “A plaintiff's trademark is protected by
federal law against infringement by use of colorable
imitations of the mark that are ‘likely to cause
confusion, or to cause mistake, or to deceive.'”
Hormel Foods Corp. v. Jim Henson Prods., Inc., 73
F.3d 497, 502 (2d Cir. 1996) (quoting 15 U.S.C. §
1114(1)). “To prevail on a claim of certification mark
infringement, ‘a plaintiff must show, first, that its
mark merits protection, and, second, that the defendant's
use of a similar mark is likely to cause consumer
confusion.'” Int'l Info. Sys. Sec.
Certification Consortium, Inc. v. Sec. Univ., LLC, 823
F.3d 153, 160 (2d Cir. 2016) (quoting Brennan's, Inc.
v. Brennan's Restaurant, L.L.C., 360 F.3d 125, 129
(2d Cir. 2004)).
MUFFLER WELD mark is a registered and incontestable mark. As
J-B Weld's counsel conceded at oral argument, ITW's
mark merits protection. See Park 'N Fly, Inc. v.
Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985)
(describing limitations on challenges to an incontestable
mark). The question, then, is whether consumers are likely to
confuse J-B Weld's junior “MufflerWeld” mark
with ITW's senior MUFFLER WELD mark.
determine the likelihood of consumer confusion requires me to
consider the eight-factor balancing test set forth in
Polaroid Corp. v. Polarad Electronics Corp., 287
F.2d 492 (2d Cir. 1961) (Friendly, J.). Those factors are:
(1) strength of the trademark;
(2) similarity of the marks;
(3) proximity of the products and their competitiveness with
(4) evidence that the senior user may “bridge the
gap” by developing a product for sale in the market of
the alleged infringer's product;
(5) evidence of actual consumer confusion;
(6) evidence that the imitative mark was adopted in bad
(7) respective quality of the products; and (8)
sophistication of consumers in the relevant market.
See Starbucks Corp. v. Wolfe's Borough Coffee,
Inc., 588 F.3d 97, 115 (2d Cir. 2009). “Although
the Polaroid test originally was applied to
non-competing products . . . it has been expanded to apply
where, as here, competing goods are involved.”
Physicians Formula Cosmetics, Inc. v. W. Cabot Cosmetics,
Inc., 857 F.2d 80, 83 (2d Cir. 1988).
application of the Polaroid test is not mechanical,
but rather, focuses on the ultimate question of whether,
looking at the products in their totality, consumers are
likely to be confused.” Kelly-Brown v.
Winfrey, 717 F.3d 295, 307 (2d Cir. 2013) (cleaned up).
“No single factor is dispositive, and cases may
certainly arise where a factor is irrelevant to the facts at
hand. . . . But it is incumbent upon the district judge to
engage in a deliberate review of each factor, and, if a
factor is inapplicable to a case, to explain why.”
Arrow Fastener Co. v. Stanley Works, 59 F.3d 384,
400 (2d Cir. 1995).
Strength of the Muffler Weld Mark
strength of a mark is determined by its tendency to uniquely
identify the source of the product.” Star Indus.,
Inc. v. Bacardi & Co., 412 F.3d 373, 384 (2d Cir.
2005). “To gauge a mark's strength, we consider two
factors: its inherent distinctiveness, and its
distinctiveness in the marketplace.” Streetwise
Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743 (2d Cir.
inherent distinctiveness, the MUFFLER WELD mark is
“inherently strong because the USPTO registered it
without proof of secondary meaning, so [the Second Circuit]
presume[s] ‘that the mark is more than merely
descriptive' and ‘is inherently
distinctive.'” Joules Ltd. v. Macy's Merch.
Grp., Inc., 695 Fed.Appx. 633, 638 (2d Cir. 2017)
(quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt.,
Inc., 192 F.3d 337, 345 (2d Cir. 1999)). “A trier
of fact could reasonably conclude that [plaintiff's] word
mark, having been incontestable for five years, is strong for
the purposes of the Polaroid test.” The
Sports Authority, Inc. v. Prime Hospitality Corp, 89
F.3d 955, 961 (2d Cir. 1996).
measuring a mark's distinctiveness in the marketplace,
the Second Circuit has looked to (1) the use of the mark by
third parties, see, e.g., Streetwise Maps,
Inc., 159 F.3d at 744; (2) the length of time the mark
has been used in the relevant marketplace, see,
e.g., Cadbury Beverages, Inc. v. Cott
Corp., 73 F.3d 474, 479 (2d Cir. 1996); (3) volume of
sales of the products branded by the mark, see W.W.W.
Pharm. Co. v. Gillette Co., 984 F.2d 567, 573 (2d Cir.
1993); (4) expenditures on advertisements containing the
mark, see Lang v. Ret. Living Pub. Co., 949 F.2d
576, 581 (2d Cir. 1991); and (5) unsolicited media coverage
discussing the mark, see Scarves by Vera, Inc. v. Todo
Imports Ltd. (Inc.), 544 F.2d 1167, 1173 (2d Cir. 1976).
the most important factor in this analysis is the use of the
mark by third parties. See The Sports Authority, 89
F.3d at 961; Streetwise Maps, 159 F.3d at 744. Other
than the alleged use of the mark by J-B Weld-the subject of
this lawsuit-there is no evidence that anyone has used
MUFFLER WELD or anything even close to MUFFLER WELD to brand
muffler sealant (or anything else for that matter) in the
last four decades. The absence of any evidence that ITW ever
licensed the mark itself to third parties, forfeiting
“exclusivity” of sales, distinguishes this case
from Nora Beverages, Inc. v. Perrier Grp. of Am.,
Inc., 269 F.3d 114, 123 (2d Cir. 2001), the case on
which J-B Weld principally relies in its discussion of mark
remaining factors, ITW has presented evidence in the form of
an affidavit from an ITW marketing executive declaring that
the company has sold MUFFLER WELD for the last 43 years and
has made hundreds of thousands of dollars from sales of the
MUFFLER WELD product annually, from which it is possible to
infer that ITW sold tens of thousands of units of MUFFLER
WELD each year. Agofojo Decl. at 2 (¶ 6). J-B Weld
argues that ITW's statements are “generic”
and “conclusive, ” Doc. #14 at 20, but it is
hard to understand how a sworn statement from a company
employee with reason to know these figures that a company has
sold tens of thousands of units of its MUFFLER WELD-branded
product annually over the past four decades is anything other
than probative evidence of the mark's strength in the
evidence of marketplace strength, along with the
incontestable nature of the mark, is sufficient to find that
the first factor favors ITW.
Similarity of the Mark
Weld argues that “MufflerWeld” and “MUFFLER
WELD” are dissimilar by reason of the insertion of an
additional space in ITW's mark, as well as the difference
in capitalization. But, perhaps recognizing that this is a
slim basis for distinguishing the two marks, J-B Weld
concentrates most of its attention on the different trade
dress, dispensing receptacles, and house marks of the ITW and
J-B Weld products, arguing that a combination of the
different trade dress and use of the J-B Weld house mark mean
no reasonable consumer would be confused between the two
products if viewed side by side.
support its argument, J-B Weld relies heavily on Nabisco,
Inc. v. Warner-Lambert Co., 220 F.3d 43 (2d Cir. 2000),
where the Second Circuit held that “DENTYNE ICE,
” a chewing gum, did not infringe a plaintiff's
“ICE BREAKERS” mark as a matter of law because
the trade dresses in which the marks were presented were
dissimilar. In reaching this conclusion, the Second Circuit
drew attention to the defendant's “prominent use of
its well-known house brand [which] significantly reduces, if
not altogether eliminates, the likelihood that consumers will
be confused as to the source of the parties'
products.” Id. at 46. See also Playtex
Prod., Inc. v. Georgia-Pac. Corp., 390 F.3d 158, 164 (2d
Cir. 2004) (“We have repeatedly found that the presence
of a distinct brand name may weigh against a finding of
confusing similarity”); W.W.W. Pharm., 984
F.2d at 573 (“when a similar mark is used in
conjunction with a company name, the likelihood of confusion
may be lessened”); Bristol-Myers Squibb Co. v.
McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2d Cir.
1992) (“the prominence of the trade names on the two
packages weighs heavily against a finding of consumer
confusion”); Timex Corp. v. AAI.FosterGrant,
Inc., 2000 WL 1576396, at *10 (D. Conn. 2000)
and the cases it cites are in some tension with another line
of cases, beginning far back with Menendez v. Holt,
128 U.S. 514 (1888), finding that use of a house brand
weighed in favor of a finding of consumer confusion.
In Holt, the U.S. Supreme Court held that when the
house mark of the alleged infringer “accompanied the
brand upon flour sold by appellants, instead of the name of
Holt & Co.[, the name of the senior mark holder, t]hat is
an aggravation, and not a justification, for it is openly
trading in the name of another upon the reputation acquired
by the device of the true proprietor.” Id. at
521. See also Jacobs v. Beecham, 221 U.S. 263, 272
(1911) (Holmes, J.) (“The statement [on the packaging]
that the defendant makes [the product with the infringing
mark] does not save the fraud. That is not what the public
would notice or is intended to notice, and, if it did, its
natural interpretation would be that the defendant had bought
the original business out and was carrying it on. It would be
unfair, even if we could assume, as we cannot, that the
defendant uses the plaintiff's formula for his
Friendly, writing in A. T. Cross Co. v. Jonathan Bradley
Pens, Inc., 470 F.2d 689 (2d Cir. 1972), likewise
concluded that adding the house mark to the infringing mark
“does not save the day; a purchaser could well think
plaintiff had licensed defendant as a second user.”
Id. at 692. See also Arrow Fastener Co., 59
F.3d at 395; In re Bay State Brewing Co., Inc., 2016
WL 1045677 (T.T.A.B. 2016) (“In general, use of a house
mark does not obviate confusion”); Sterling House,
Inc. v. Dell Publishing Co., 1972 WL 17658 at *3
(S.D.N.Y. 1972) (use of house mark with simulation of
plaintiff's magazine cover format apparently done
“deliberately to take the ...