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Illinois Tool Works Inc. v. J-B Weld Company, LLC

United States District Court, D. Connecticut

December 12, 2019




         This 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 this litigation.

         ITW 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 preliminary injunction.


         The 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.”

         J-B 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 (illustrated examples).[1]

         Trouble 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).[2] 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.

         In 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.[3]

         The 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).

         The principal difference between the products is their packaging and the means by which they are dispensed. See Hanson Decl. at 6 (¶ 14) (reproduced below).

         (Image Omitted)

         ITW's 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. Ibid.

         J-B 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 Cement.” Ibid.

         At a 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).


         A 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).

         To 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. 2005).

         Further, 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).

         I. Likelihood of Success on the Merits

         ITW 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)).

         ITW's 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.

         To 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 one another;
(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 faith;
(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).

         “The 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).

         1. Strength of the Muffler Weld Mark

         “The 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. 1998).

         As for 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).

         In 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).

         Perhaps 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 strength.

         On the 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 marketplace.

         ITW's evidence of marketplace strength, along with the incontestable nature of the mark, is sufficient to find that the first factor favors ITW.

         2. Similarity of the Mark

         J-B 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.[4]

         To 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) (collecting cases).

         Nabisco 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 [product]”).

         Judge 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 ‚Äúdeliberately to take the ...

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