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

United States District Court, D. Connecticut

December 20, 2019




         Plaintiff Illinois Tool Works Inc. (ITW) has sued defendant J-B Weld Company, LLC (J-B Weld) for infringement of ITW's registered mark, “MUFFLER WELD, ” among other things. On December 12, 2019, I granted ITW's motion for a preliminary injunction. See Illinois Tool Works Inc. v. J-B Weld Co., LLC, -- F.Supp.3d. --, 2019 WL 6765761 (D. Conn. 2019). Among the injunctive remedies I ordered was the immediate recall of J-B Weld's MufflerWeld-branded muffler sealant product. Id. at *19.

         J-B Weld has now filed an emergency motion for a partial stay pending appeal of the injunction to the extent that the injunction requires an immediate recall of its MufflerWeld-branded muffler sealant product. Doc. #50. ITW opposes the motion. Doc. #53.

         In light of the parties' arguments and new information presented, I conclude that the injunction should be modified in part to relieve J-B Weld of an obligation to effectuate an immediate recall of its MufferWeld-branded muffler sealant product from AutoZone stores or other retail outlets. Instead, I will allow J-B Weld until January 21, 2020, either to issue a recall for its MufflerWeld-branded muffler sealant product from AutoZone or to furnish AutoZone with corrective labels so that the remaining inventory of MufflerWeld-branded muffler sealant may be sold without infringing ITW's trademark. In light of this modification of the terms of the preliminary injunction, I will deny J-B Weld's motion for a stay of the recall provision pending appeal.


         According to J-B Weld, it will comply with those provisions of the preliminary injunction that bar it from selling its muffler sealant using the name MufflerWeld by placing adhesive labels over the MufflerWeld mark on all outgoing tubes of its muffler sealant until new tubes can be printed and obtained. Doc. #50-1 at 4. But J-B Weld notes that it will have considerably more difficulty complying with the injunction insofar as it requires J-B Weld to recall an estimated 32, 000 tubes of its product that are on sale at as many as 5, 500 AutoZone stores nationwide. Ibid. J-B Weld contends that it would require several months and cost more than $300, 000 to effectuate a recall of these products. Ibid.

         According to J-B Weld, it would suffer irreparable harm to its business relationship with AutoZone if required to comply with the Court's order to effectuate an immediate recall of its product from thousands of AutoZone stores. ITW responds that it does not insist that J-B Weld physically recall all of its infringing products from AutoZone and would not object to J-B Weld's relabeling of its existing infringing inventory at AutoZone stores. Doc. #53 at 3.


         “The standard in this circuit for a stay or injunction pending appeal is (1) whether the movant will suffer irreparable injury absent a stay, (2) whether a party will suffer substantial injury if a stay is issued, (3) whether the movant has demonstrated a substantial possibility, although less than a likelihood, of success on appeal, and (4) the public interests that may be affected.” LaRouche v. Kezer, 20 F.3d 68, 72 (2d Cir. 1994).

         As to the irreparable-harm and substantial-possibility-of-success factors, J-B Weld argues that my prior ruling did not conduct a specialized inquiry into whether a product recall was warranted. Although J-B Weld did not previously request this inquiry despite being on notice that ITW had expressly sought a recall as part of its requested injunction order (Doc. #4-3 at 2), I will exercise my discretion at this time to specifically consider whether a recall order is appropriate, in light of the fresh facts supplied by J-B Weld and ITW, as well as whether I should sua sponte modify the recall order with respect to J-B Weld's product that is presently at AutoZone stores. See generally Modification of Injunctions, 11A Fed. Prac. & Proc. Civ. § 2961 (3d ed.) (collecting cases concerning grounds for modifications to injunctions).

         Recall is an “extreme remedy, ” Conopco Inc. v. 3DO Co., 1999 WL 1277957, at *3 (S.D.N.Y. 1999), and, “[o]f course, a district court should carefully consider the likely burden and expense of a recall before it imposes the remedy.” Perfect Fit. Indus., Inc. v. Acme Quilting Co., 646 F.2d 800, 807 (2d Cir. 1981). In deciding whether to order a product recall as part of a preliminary injunction, a court should consider factors including “the defendant's good faith or bad faith, the likelihood of diversion of customers from plaintiff to defendant, the extent of the burden entailed in a recall including the breadth of distribution and the shipping costs, and the probability that the plaintiff would benefit from such an order.” Cherry River Music Co. v. Simitar Entm't, Inc., 38 F.Supp.2d 310, 322 (S.D.N.Y. 1999); see also Tecnimed SRL v. Kidz-Med, Inc., 462 Fed.Appx. 31, 35 (2d Cir. 2012) (noting “that district court should consider relative benefit to trademark owner and burden to infringer when determining whether product recall is appropriate remedy”).

         I have considered all of these factors. As to good or bad faith, my prior ruling described at length the evidence of J-B Weld's bad faith infringement. See ITW, 2019 WL 6765761, at *10-11. J-B Weld argues, however, that I overlooked precedent suggesting that the relevant inquiry for bad faith is not whether a defendant intentionally copied a mark, but whether the defendant intentionally set out to confuse consumers as to the manufacturer or supplier of their product; no customers, it claims, would believe that J-B Weld's MufflerWeld was made by ITW owing to the presence of the J-B Weld house trade dress and house mark on J-B Weld's product.

         I do not agree. As explained in the very case J-B Weld cites in its motion, the bad faith inquiry looks to whether defendant was “deceiving customers into believing that its products were related to the plaintiff.” Malletier v. Dooney & Bourke, Inc., 561 F.Supp.2d 368, 388 (S.D.N.Y. 2008) (emphasis added) (quoting New York Stock Exch., Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 556 n.1 (2d Cir. 2002)). There was concededly no evidence that J-B Weld intended to draw on the positive brand reputation of the ITW brand (or the “VersaChem” house mark that appeared on ITW's MUFFLER WELD product); had J-B Weld wanted to do that, it would have copied the house marks (here, “VersaChem”). Instead, the reputation J-B Weld sought to trade on was that of the mark I concluded J-B Weld likely infringed: plaintiff's product, MUFFLER WELD the chemical.

         By using the identical mark with its house brand when it knew the senior mark was registered, J-B Weld sought to trade on the MUFFLER WELD product's reputation by giving its product the same name, and thus deceiving customers into believing that J-B Weld's muffler sealant was related to the plaintiff's muffler sealant, trading on MUFFLER WELD's ...

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