Sticky Situation? Circumstantial Evidence Can Support Intent to Confuse in Trade Dress Claims

By on November 4, 2020
Posted In Trademarks

The US Court of Appeals for the 11th Circuit reversed a district court’s grant of summary judgment for the defendant on trade dress infringement and trade dress dilution claims, finding that evidence relating to the likelihood of confusion was not viewed in the light most favorable to the plaintiff. However, the Court affirmed the grant of summary judgment for the defendant on the plaintiff’s false advertising claims because the allegedly deceptive advertising was not material to consumer purchasing decisions. J-B Weld Co., LLC v. Gorilla Glue Co., Case No. 18-14975 (11th Cir. Oct. 20, 2020) (Tjoflat, J.) (Carnes, J., concurring).

J-B Weld and Gorilla Glue are competitors specializing in heavy-duty adhesive products. Gorilla Glue introduced an adhesive under the brand name GorillaWeld that mimicked the packaging of a J-B Weld product. Gorilla Glue advertised GorillaWeld as a steel bond epoxy based on the strength of the bond and its similarity to an epoxy-group polymer, even though the product was not a chemical epoxy and did not contain any steel. J-B Weld sued, alleging trade dress infringement based on the Lanham Act and Georgia law, trade dress dilution based on Georgia law, and false advertising under the Lanham Act. The district court granted Gorilla Glue summary judgment on all claims, finding no trade dress infringement or dilution based on insufficient evidence of likelihood of confusion, and no false advertising because the evidence did not demonstrate that Gorilla Glue’s steel bond epoxy claim was material to consumer purchasing decisions. J-B Weld appealed, arguing that the district court did not properly view the evidence in the light most favorable to J-B Weld.

The 11th Circuit reversed on the trade dress infringement and dilution claims and affirmed on the false advertising claim. On the trade dress infringement claims, the 11th Circuit found that the district court did not view the evidence in the light most favorable to J-B Weld in analyzing the likelihood of confusion between the respective trade dress of J-B Weld and GorillaWeld, as required in the context of summary judgment. The 11th Circuit found that the district court did not properly credit evidence relevant to the similarity of the designs, Gorilla Glue’s intent and instances of actual confusion. For example, despite multiple similarities between the J-B Weld and GorillaWeld packages (including a V-shape tube arrangement and the use, emphasis and location of certain text), the district court found that the presence of the Gorilla Glue logo, brand name and color scheme negated a finding of similarity. The 11th Circuit deemed this finding error in the context of summary judgment. The Court also determined that communications from Gorilla Glue’s packaging design team that repeatedly referenced J-B Weld’s packaging and expressed a desire to use similar elements (including a communication in which a Gorilla Glue employee referred to the GorillaWeld design as a “knock off”) were improperly ascribed to innocuous motives based on self-serving testimony from a Gorilla Glue employee. As the Court explained, summary judgment required drawing all inferences in the light most favorable to J-B Weld. Similarly, the Court noted instances where inferences from evidence relating to actual confusion were drawn in favor of Gorilla Glue while other reasonable inferences and circumstantial evidence in J-B Weld’s favor were overlooked.

The 11th Circuit also noted that the district court did not consider four of the seven factors relevant to the likelihood of confusion analysis, including the strength of the J-B Weld mark, similarities of the products themselves, their retail outlets and purchasers, and common advertising media. Although this omission was not reversible error, the Court found that in combination with impermissible fact-finding on the other factors, it was indicative of insufficient evaluation of likelihood of confusion. The Court accordingly reversed the district court’s summary judgment grant of no trade dress infringement and remanded those claims for trial.

The 11th Circuit also reversed the grant of summary judgment to Gorilla Glue on J-B Weld’s trade dress dilution claim under Georgia law. Georgia law requires that the trade dress be similar and requires a likelihood of dilution of the distinctive quality of the mark. Unlike trade dress infringement, it does not require proof of likelihood of confusion. Because the district court remarked on the indistinguishability of the standards of trade dress infringement and trade dress dilution, and the 11th Circuit was unable to discern whether the district court—erroneously—required proof of likelihood of confusion, the 11 Circuit remanded for re-evaluation of the claim.

The 11th Circuit affirmed the grant of summary judgment to Gorilla Glue on the claim that it falsely advertised GorillaWeld as a steel bond epoxy. The Court agreed with the district court that J-B Weld had not shown that the inclusion of steel bond epoxy on GorillaWeld’s packaging was material to consumer purchasing decisions, as required by the Lanham Act and Georgia law. Because even demonstrably false statements cannot sustain a false advertising claim if they are irrelevant to consumer purchasing decisions, the 11th Circuit found the district court’s grant of summary judgment proper.

In a concurring opinion, Judge Carnes wrote separately to emphasize the distinction in the trade dress context between copying to compete and copying to confuse. Intentional copying, without more, does not permit an inference of copying with intent to confuse. But intent to confuse may be inferred from evidence of intent to copy if other facts permit. On the facts J-B Weld presented, Judge Carnes agreed that a jury could reasonably infer that Gorilla Glue intended to copy J-B Weld’s trade dress to confuse consumers about GorillaWeld’s origins and to benefit from J-B Weld’s goodwill, and agreed that the district court erred by failing to consider that evidence in the light most favorable to J-B Weld.

Practice Note: A trade dress infringement claim requires that a competitor’s use of a similar trade dress is likely to cause consumer confusion as to the origin of the product. Likelihood of confusion can be established by intentional copying with the intent to confuse. A party seeking to protect its trade dress rights should try to make a showing of not just intentional copying, but intentional copying with the intent to confuse consumers about a product’s origins. Because direct evidence is often unavailable, circumstantial evidence can play a vital role in meeting this burden of proof.

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