GREGORY A. PRESNELL, District Judge.
This matter came before the Court without oral argument upon consideration of Plaintiff-Counterdefendant's, Intertape Polymer Corporation ("Intertape"), Motion for Summary Judgment (the "Motion") (Doc. 43),
The procedural history and general background of this case have been summarized in prior orders. (Docs. 29 and 71). In its instant Motion, Intertape contends that it is entitled to a judgment as a matter of law on Counts VIII, X, XI, XII, XIII, XIV and XV of ITI's Second Amended Counterclaim. (Doc. 43 at 1).
In Count VIII of its Second Amended Counterclaim, ITI asserts that Intertape violated Florida's Deceptive and Unfair Trade Practices Act, FLA. STAT. § 501.201 et seq., by engaging in unfair competition and making false advertisements. (Doc. 40, ¶¶ 171-177). Count X asserts that Intertape violated the Lanham Act
The Court has jurisdiction pursuant to, inter alia, 28 U.S.C. §§ 1331, 1332 and 1367.
As the Court noted its prior Order, Intertape was the supplier of masking tape ITI used to manufacture "FrogTape," a green colored painter's tape product consisting of masking tape and ITI's patented "Paint Block" (hereinafter "PAINT BLOCK")—a polymer that, when applied to the edges of masking tape, absorbs paint to produce cleaner lines and edges (Doc. 71 at 1). Shortly after it agreed to act as ITI's tape supplier, Intertape began developing its own product: "Bloc-it," a bluish-teal colored painter's tape treated with "PST 16" polymer
According to ITI, Intertape's research and development department knew from repeated testing that Bloc-it failed to out-perform FrogTape. (Doc. 63 at 2-3). Specifically, on September 19, 2008, an internal Intertape memorandum noted that FrogTape outperformed Bloc-it on painted wallboard; on March 27, 2009, an internal Intertape email revealed "higher than normal paint bleed" with Bloc-it but
Notwithstanding the foregoing, Intertape aggressively marketed Bloc-it. On January 29, 2009, for instance, Intertape made the following comparison during a presentation to executives at Lowe's (a nationwide home improvement retailer):
(Doc. 58-7 at 14).
Other materials provided to, or designed for, retailers stated that Bloc-it "Solves paint bleed problem" and "allows for CLEAN EDGES Every time." (Doc. 61-2 at 2-3). Furthermore, on September 11, 2009, Intertape issued a press release to investors (among others) stating:
(Doc. 61-3 at 2).
ITI has federally registered trademarks for "Frog Tape" (hereinafter "FROG TAPE")
(Doc. 40-4 at 3).
ITI also contends that it has common rights to the following "It WORKS" (hereinafter "IT WORKS") design mark (within which "IT" refers to Inspired Technologies, Inc. and "O" contains ITI's company logo):
(Doc. 40-4 at 2). Other than a picture of an ITI company vehicle bearing the IT WORKS design, ITI has not introduced any evidence of how it uses IT WORKS in
On January 9, 2009, Intertape submitted an application to the U.S. Patent and Trademark Office for registration of the word and design mark "BLOC IT PAINTERS TAPE" (hereinafter "BLOC IT"). U.S. Trademark Application Serial No. 77,646,259; (Doc. 40-8 at 2).
Registration No. 3,796,838 (black and white image available on Westlaw's Trade-MarkScan and at the USPTO); also available at BLOC-IT, http://www.bloc-it.com (last visited July 11, 2010).
In addition to the foregoing, on February 19, 2009, Intertape submitted an application to the U.S. Patent and Trademark Office for registration of the word and design mark "LILI LOW-ENVIRONMENTAL IMPACT LINE FROM INTERTAPE" (hereinafter the "LILI" mark). U.S. Trademark Application Serial No. 77,673,873; (Doc. 40-10 at 2). As of July 11, 2010, the application remained pending and had been published for opposition. The following comprises the design for the LILI mark:
(Doc. 40-10 at 22).
Intertape has never used the LILI mark in connection with Bloc-it. As the text of the mark suggests, LILI is associated with Intertape's environmental stewardship program and, more particularly, a line of specially approved products sold by Intertape. Bloc-it is not a part of Intertape's line of LILI products. The only evidence of Intertape's use of the LILI mark consists of a page on Intertape's web site devoted to its "Green Initiative," see http:// www.intertapepolymer.com/Products/ Industrial/GreenInitiative/Pages/Default. aspx (last visited July 11, 2010), and as a part of the signature block on certain of Intertape's emails.
A party is entitled to summary judgment when it can show that there is no genuine issue as to any material fact. FED. R. CIV. P. 56(c); Beal v. Paramount Pictures Corp., 20 F.3d 454, 458 (11th Cir. 1994). Which facts are material depends on the substantive law applicable to the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The moving party bears the burden of showing that no genuine issue of material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Clark v. Coats & Clark, Inc., 929 F.2d 604, 608 (11th Cir.1991); Watson v. Adecco Employment Servs., Inc., 252 F.Supp.2d 1347, 1351-52 (M.D.Fla.2003). In determining whether the moving party has satisfied its burden, the court considers all inferences drawn from the underlying facts in a light most favorable to the party opposing the motion, and resolves all reasonable doubts against the moving party. Anderson, 477 U.S. at 255, 106 S.Ct. 2505.
When a party moving for summary judgment points out an absence of evidence on a dispositive issue for which the non-moving party bears the burden of proof at trial, the non-moving party must "go beyond the pleadings and by [its] own affidavits, or by the depositions, answers to interrogatories, and admissions on file, designate specific facts showing that there is a genuine issue for trial." Celotex Corp., 477 U.S. at 324-25, 106 S.Ct. 2548 (internal quotations and citations omitted). Thereafter, summary judgment is mandated against the non-moving party who fails to make a showing sufficient to establish a genuine issue of fact for trial. Id. at 322, 324-25, 106 S.Ct. 2548; Watson, 252 F.Supp.2d at 1352. The party opposing a motion for summary judgment must rely on more than conclusory statements or allegations unsupported by facts. Evers v. Gen. Motors Corp., 770 F.2d 984, 986 (11th Cir.1985) ("conclusory allegations without specific supporting facts have no probative value") (citations omitted); Broadway v. City of Montgomery, Ala., 530 F.2d 657, 660 (5th Cir.1976).
A trademark is defined to include "any word, name, symbol, or device or any combination thereof" used by any person "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." Two Pesos, Inc. v. Taco Cabana, 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992); 15 U.S.C. § 1127. "Marks are often classified in categories of generally increasing distinctiveness; following the classic formulation set out by Judge Friendly, they may be (1) generic; (2) descriptive; (3) suggestive; [or] (4) arbitrary. . . ." Two Pesos, Inc., 505 U.S. at 768, 112 S.Ct. 2753; accord Caliber Automotive Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 938 (11th Cir.2010) (citation omitted). "An arbitrary or fanciful mark bears no logical relationship to the product or service it is used to represent [e.g. Kodak]. A suggestive mark refers to some characteristic of the goods, but requires a leap of the imagination to get from the mark to the product [e.g., Penguin Refrigerators]. A descriptive mark identifies a characteristic or quality of the service or product [e.g., Vision Center]." Caliber Automotive Liquidators, Inc., 605 F.3d at 938 (citations and quotations omitted); see also Frehling Enters., Inc. v. Int'l Select Group, Inc., 192 F.3d 1330,
The Court's analysis proceeds in two parts: in Part A, the Court addresses ITI's Lanham Act claims; in Part B, the Court addresses ITI's state law claims.
In Count X of its Second Amended Counterclaim, ITI asserts that Intertape's use of BLOC IT, PST (or the phrase "Paint Shock Technology"
To prevail on its infringement claim, ITI must show, inter alia, that: (1) it has valid trademarks;
In assessing likelihood of confusion, courts within the Eleventh Circuit apply a weighted seven-factor balancing test that considers: (1) the strength of mark; (2) similarity of marks; (3) similarity of the products the marks represent; (4) similarity of the parties' customers; (5) similarity of advertising media; (6) the alleged infringer's intent; and (7) actual confusion. Caliber Automotive Liquidators, Inc., 605 F.3d at 934-35; Aronowitz v. Health-Chem Corp., 513 F.3d 1229, 1239 (11th Cir.2008); see also John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 972-73 (11th Cir.1983). "Of these, the [strength] of mark and the evidence of actual confusion are the most important." Aronowitz, 513 F.3d at 1239 (citation and quotation omitted). Evidence of actual confusion by consumers, in particular, is the best evidence of likelihood of confusion.
As noted, supra, "[t]here are four recognized types of mark, ranging from weakest to strongest: generic, descriptive, suggestive and arbitrary. The stronger the mark, the greater the scope of protection accorded it." Id. (citations and quotations omitted). To determine strength, courts look to both the words of the marks as well as to recognition of the mark in the marketplace. See, e.g., John H. Harland Co., 711 F.2d at 972-73 (11th Cir.1983) ("The words of a mark are not . . . the sole factors determining its strength. Also important is . . . consumer recognition of the mark at issue") (citations and quotations omitted); Aronowitz, 513 F.3d at 1239 ("A mark's strength is enhanced where there is little or no third-party use of that mark") (citations and quotations omitted); 2 MCCARTHY § 11:83 (discussing two-pronged test for determining strength and noting that "[w]hile some courts have made the strong-weak evaluation solely upon the place of the term on the spectrum of marks, such an approach is incomplete. One must in addition look at the marketplace strength of the mark").
ITI contends—in a single paragraph in its Response—that all
The Court concludes that ITI's marks are comparatively weak. As the counterclaimant, ITI bears the burden at trial of proving the strength of its marks. Although ITI cannot be expected to prove a negative, see, e.g., Schneckloth v. Bustamonte, 412 U.S. 218, 286, 93 S.Ct. 2041, 36 L.Ed.2d 854 ("courts have traditionally been reluctant to require a party to prove negatives such as the lack of knowledge"), the absence of third-party use is only one consideration in proving strength. ITI must also offer some evidence (or, at the very least, some argument) as to why the words and designs in each of its marks are "suggestive"—and not merely descriptive—in referring to the qualities of ITI's products. ITI has failed to do so. More importantly, ITI has failed to produce evidence as to the strength of its marks in the marketplace. Furthermore, even assuming that ITI's marks could be characterized as "suggestive," suggestive marks are generally considered to be comparatively weak. See, e.g., John H. Harland Co., 711 F.2d at 974 ("A suggestive mark falls somewhere between [descriptive and arbitrary] and, although a suggestive mark can be protected without evidence that it has acquired secondary meaning, is comparatively weak"). Accordingly, the Court concludes that ITI's marks are comparatively weak.
The similarity of marks is determined by considering the overall impression created by the marks as a whole rather than simply comparing individual features of the marks and includes a comparison of the appearance, sound and meaning of the marks, as well as the manner in which the marks are used. See, e.g., Frehling Enters., Inc., 192 F.3d at 1337; John H. Harland Co., 711 F.2d 966 (citing, inter alia, MCCARTHY);
ITI makes the following argument in its Response about the similarity of the parties' marks:
(Doc. 63 at 16-17) (citations omitted). The Court disagrees.
With respect to Intertape's BLOC IT mark, there is no evidence whatsoever that Intertape ever used the phrase "Paint Shock Technology" and the argument that Intertape simply combined the second word in PAINT BLOCK with the first word in IT WORKS to create BLOC IT is fantastic. Intertape uses BLOC IT as the name of its product, while ITI uses PAINT BLOCK as merely a description of the technology that goes into its product. If
With respect to Intertape's LILI mark and ITI's frog design (i.e., ITI's prior frog design—not the frog design which ITI currently uses on its web site and product packaging), there is clearly some similarity in the frogs that appear in both marks. Arguably, though, the dominant feature in Intertape's LILI mark consists of the letters "Lili" (with lily pads as titles) and the phrase "Low-environmental impact line from intertape"—not the side-profile of the frog clinging to the letter "L." (Doc. 40-10 at 22). In any event, ITI has not offered any evidence tending to suggest that Intertape's LILI mark has been used in connection with "Bloc-It." On the contrary, the record demonstrates that Intertape's LILI mark has nothing to do with Bloc-It or FrogTape.
Accordingly, the Court concludes that there is little similarity between Intertape's and ITI's marks.
Bloc-it with PST and FrogTape are functionally similar products. However, Bloc-it is represented by BLOC IT and PST; FrogTape is represented by FROG TAPE and PAINT BLOCK (other than its display on company vehicles, IT WORKS does not represent FrogTape). There is no evidence that Intertape's LILI mark represents Bloc-it. Furthermore, Bloc-it is a bluish-teal product and FrogTape is green (the colors of the two products are clearly different).
Intertape apparently concedes that the parties have similar customers
Intertape concedes that the parties have similar advertising and sales methods. (Doc. 43 at 7).
The intent factor focuses on the alleged infringer's subjective intent to deliberately derive a benefit from the plaintiff's business reputation, or the extent to which the infringer was intentionally blind to the adoption of a confusingly similar mark. See Frehling Enters., Inc., 192 F.3d at 1340; John H. Harland Co., 711 F.2d at 977.
ITI has failed to offer substantial evidence of Intertape's intent to capitalize on ITI's marks or to turn a blind eye to same. Although Intertape deliberately created and promoted a product that competes directly with FrogTape, there is no evidence that the marks associated with Bloc-it were meant to capitalize on ITI's reputation or that Intertape was intentionally blind to the adoption of a confusingly similar mark.
ITI has failed to offer any relevant evidence of actual confusion. Other than an inapposite string cite to evidence having no bearing on the extent to which Intertape used ITI's marks (or similar marks) to promote Bloc-it, ITI's Response fails to discuss a single instance where a retailer or end-consumer expressed any confusion
In balancing the foregoing factors, the Court concludes that ITI has failed to present a triable issue of fact as to likelihood of confusion. As to the most weighty factors, the strength of ITI's marks is comparatively weak and there is no evidence of actual confusion. Although there is similarity in the parties' products (at least as to function), customers and advertising methods, the remaining factors favor Intertape
In short, there is insufficient evidence that relevant consumers are (or were) likely to believe that Intertape's products are in some way affiliated with ITI. See Midway Servs., Inc., 508 F.3d at 650 (noting that after district court's balance the Frehling factors, the "ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way") (citation and quotation omitted).
Accordingly, Intertape is entitled to a judgment as a matter of law as to Count X.
In Count XI, ITI asserts that Intertape violated 15 U.S.C. § 1125(a)(1)(A) by engaging in unfair competition. Inasmuch as likelihood of confusion is an essential element to a claim of unfair competition under § 1125(a), see, e.g., Caliber Automotive Liquidators, Inc., 605 F.3d at 935, n. 16, Intertape is entitled to a judgment as a matter of law on Count XI.
In Count XII, ITI asserts that Intertape violated 15 U.S.C. § 1125(a)(1)(B)
To prevail on a false advertising claim under the Lanham Act, a plaintiff must establish that: (1) the defendant's advertisements were false or misleading; (2) the advertisements deceived, or had the capacity to deceive, consumers; (3) the deception had a material effect on purchasing decisions; (4) the misrepresented product or service affects interstate commerce; and (5) the plaintiff has been injured as a result of the false advertising. See, e.g., North Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1224 (11th Cir.2008); Hickson Corp. v. Northern
In its Response, ITI asserts that Intertape made false
(Doc. 63 at 11).
In its Motion, Intertape makes two arguments concerning Count XII. First, Intertape contends that none of the foregoing statements are literally false and that ITI has offered little or no evidence as to their falsity. Second, it contends that ITI has failed to produce any evidence that Intertape's advertisements had a material effect on consumers' purchasing decisions. (Doc. 43 at 14).
Upon review, the Court concludes that the statements identified by ITI are not literally false, have not been shown to be false by record evidence, or amount to puffery. Even assuming, arguendo, however, that some of the statements are literally false and do not amount to puffery, ITI has failed to adduce evidence tending to show that Intertape's statements had a material effect on consumers' purchasing decisions.
The first statement that ITI relies upon—"Featuring [sic] technologically [sic] superior to . . ."—is, at most, ambiguous puffery. As a grammatical matter, it is not even clear what this statement was meant to convey (e.g., that Bloc-it "featured technology superior to . . ." or that Bloc-it's "features were technologically superior to . . ."). In any event, the statement would be literally false only if there were evidence demonstrating that the technology (or features) in Bloc-it were not, in fact, superior to the technology found in any other "performance masking tape" (what constitutes "performance masking tape" is also ambiguous—it is unclear, for instance, whether that phrase includes only edge-treated tapes such as Bloc-it and FrogTape or also includes untreated tapes). ITI has not produced evidence concerning the inferiority of Bloc-it's technology or features.
The statement "Best In Class— Product Performance" was used in connection with both Bloc-it and FrogTape (the phrase appears at the top of a page comparing various attributes of both products). (Doc. 58-7 at 14). "Class" is an inherently ambiguous term that is frequently used in advertising. Here, it is unclear whether "class" refers to some edge-treated tapes; all edge-treated tapes; some untreated tapes; or all "performance masking tapes"—treated or untreated. Even assuming, however, that "class" includes only Bloc-it and FrogTape, both are described as "Best" and neither product is characterized as being superior to the other.
The statements concerning Bloc-it's "Industry leading bleed resistance" and FrogTape's "Good bleed resistance" are not literally false. While Intertape's performance tests appear to have revealed that competitors' products were (at one time, at least) outperforming Bloc-it,
The remaining statements upon which ITI relies are also not literally false, have not been shown to be false by record evidence, or amount to puffery. "Featuring NEW Technology that allows for CLEAN EDGES Every Time," for instance, is not false—Bloc-it certainly has "new technology" and any masking tape, depending on the skill of the painter, type of paint, surface, etc., could arguably "allow for clean edges every time." Furthermore, ITI has not offered any evidence that Bloc-it, inter alia, does not contain technology that "allows" for clean edges; fails to "solve" or "stop" bleed resistance; or does not "promote" smooth lines. Finally, statements to the effect of "delivering performance results not yet seen" in competing products or "[W]hen the painter pulls the tape off the wall, the line is picture perfect, crisp and straight" are puffery or opinion.
Even assuming, however, that some (or even all) of Intertape's advertising statements were literally false, ITI has not shown that any of these statements had a material effect on consumers' purchasing decisions. ITI does not appear to even address this element of its claim in its Response; the closest it comes to producing evidence of an effect on consumers' purchasing decisions is that Intertape sold Bloc-it in 2009, continues to sell Bloc-it in 2010, and has damaged ITI through these sales. (Doc. 63 at 5-6 and 9). Sales of Bloc-it—without more—are not evidence from which a factfinder could find that Intertape's false advertising had a material effect on retailers' or end-consumers' purchasing decisions. ITI must offer some evidence that Intertape's advertisements falsely "misrepresented an inherent quality or characteristic of the product" that was relevant to consumers' purchasing decisions. Johnson & Johnson Vision Care, Inc., 299 F.3d at 1250 (citations and quotations omitted). It has failed to do so.
Accordingly, Intertape is entitled to a judgment as a matter of law on Count XII.
ITI concedes that its Florida and Minnesota statutory claims (Counts VIII, XIII and XIV) are predicated on the same conduct required to support its Lanham Act claim for false advertising, (Doc. 63 at 12-14), and that its remaining Florida and Minnesota common law claims (Count XV) "essentially mirror[ ]" its Lanham Act claims. (Doc. 63 at 19).
Inasmuch as ITI's Lanham Act claims for trademark infringement, unfair competition and false advertising fail, as a matter of law, ITI's state law claims necessarily fail as well. See, e.g., Natural Answers, Inc., 529 F.3d at 1332-33; Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 n. 4 (11th Cir.2001); Investacorp, Inc., 931 F.2d at 1521; accord Fair
Accordingly, Intertape is entitled to a judgment as a matter of law on Counts VIII, XIII, XIV and XV.
For the foregoing reasons, it is
1. Plaintiff-Counterdefendant Intertape Polymer Corporation's Motion for Summary Judgment (Doc. 43) is
2. Plaintiff-Counterdefendant Intertape Polymer Corporation is entitled to a judgment as a matter of law on Counts VIII, X, XI, XII, XIII, XIV and XV of Defendant-Counterclaimant's Second Amended Counterclaim.
See FROG TAPE, http://www.frogtape.com (last visited July 11, 2010).
(Doc. 61-7 at 2).
15 U.S.C. § 1125(a)(1)(B).
