The Black & Decker Corporation et al v. Positec USA Inc.

Filing 328

MEMORANDUM OPINION AND ORDER Signed by the Honorable Robert M. Dow, Jr. on 1/20/2021. Emailed notice(cdh, )

IN THE UNITED STATE DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
THE BLACK & DECKER
CORPORATION, BLACK & DECKER
INC. and BLACK & DECKER (U.S.)
INC.,
Plaintiffs,
v.
POSITEC USA INC. and RW DIRECT
INC.,
Defendants.

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Case No. 11-cv-5426
Judge Robert M. Dow, Jr.

MEMORANDUM OPINION AND ORDER
Plaintiffs Black & Decker Corporation, Black & Decker Inc., and Black & Decker (U.S.)
Inc. (collectively, “Plaintiffs”) bring suit against Defendants Positec USA Inc. and RW Direct Inc.
(collectively, “Defendants”) for trademark infringement under 15 U.S.C. § 1114 (Count II) and
trade dress infringement under 15 U.S.C. § 1125(a) (Count IV). Currently before the Court is
Defendants’ motion [321] for certification of interlocutory appeal under 28 U.S.C. § 1292(b). For
the reasons that follow, Defendants’ motion [321] is denied.
I.

Background
The background of this trademark case, knowledge of which is assumed, is set forth in the

Court’s Memorandum Opinion and Order [317] granting in part and denying in part Defendants’
motion for summary judgment. Plaintiffs assert claims against Defendants’ yellow and black
“sunburst” packaging and Defendants’ Rockwell brand “JawHorse” product (a non-power portable
work support with hands-free clamping device) for registered trademark infringement in violation
of 15 U.S.C. § 1114 and unregistered trade dress infringement in violation of 15 U.S.C. § 1125(a).

Defendants’ motion concerns primarily Plaintiffs’ claims based on the “sunburst”
packaging. Defendants began using their yellow and black (or “green-gray”) sunburst design on
packaging for their Rockwell power tools and power tool accessories sometime in 2009 or 2010
(Defendants have not pinned down the date that their packaging actually went on the market).
Defendants’ “sunburst” packaging is alleged to infringe three of Plaintiffs’ packaging styles.
Plaintiffs introduced their “predominantly yellow” variation in 1992, consisting of a yellow box
with black text and a black illustration of the tool. Plaintiffs introduced their “black bar” variation
in late 2008 or 2009. The black bar variation is a yellow box with a black top and black bars at
the top and bottom, black or yellow text (depending on its positioning over the black or yellow
background colors), and a black illustration of the tool. Plaintiffs introduced their “predominantly
black with photograph” variation in approximately 2010 or 2011.

That variation uses a

predominantly black box with yellow bars on the sides, black or yellow text (depending on its
positioning over the black or yellow background colors), a yellow, black and gray illustration of
the tool, and gray and silver accents. Examples of the three styles of packaging, in order, are
shown below, see [230] at 48-49:

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In the opinion that Defendants seek leave to appeal, the Court granted summary judgment
in favor of Defendants on Plaintiffs’ claim for registered copyright infringement, to the extent that
claim is based on Defendants’ “sunburst” packaging, because none of the registered marks
submitted by Plaintiffs “relate to the use of yellow and black on packaging.” [317] at 6. The Court
concluded that “[a]llowing Plaintiffs to frame the same claim as a registered trademark
infringement claim based on a family of trademarks that have nothing to do with packaging
unnecessarily muddles the legal analysis and likely would lead to juror confusion as well.” Id. at
8. The Court denied summary judgment on the registered copyright infringement claim to the
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extent the claim is based on the JawHorse, because “[t]he Court cannot say based on the record
before it that no reasonable jury could conclude that the JawHorse is ‘closely related’ to power
tools, including in particular ones depicted in Plaintiffs’ registered trademarks.” Id. at 10.
The Court also denied summary judgment to Defendants on the unregistered trade dress
infringement claim based on packaging. The Court rejected Defendants’ argument that Plaintiffs
could not establish that its “family” of trade dress for packaging had established secondary
meaning by the time Defendants entered the market with their sunburst packaging. The Court
explained that “‘the proponent of a family of marks must prove that, prior to the junior user’s entry,
all or many of the marks in the alleged family were used and promoted in such a way as to create
public perception of the family mark as an indicator of source.’” [317] at 12-13 (quoting AM
General Corp. v. DaimlerChrysler Corp., 311 F.3d 796, 819 (7th Cir. 2002)). There were disputed
questions of fact concerning whether “many” of Plaintiffs marks had established secondary
meaning by the time Defendants began using the “sunburst” packaging, because “there is a
material factual dispute concerning when Defendants began using the sunburst packaging” (May
2009 versus late 2009 or early 2010) and it was not clear when Plaintiffs’ began using their second,
“black bar” style of packaging, which could have been as early as 2008. Id. at 14-15. Under these
facts, a reasonable jury could find that two out of three of the packaging designs—or “many” of
the members of the claimed family—had acquired secondary meaning by the time the “sunburst”
packaging was introduced. If
The Court further determined that Plaintiffs had sufficient evidence that its “family” of
trade dress had acquired secondary meaning by the time Defendants began using the “sunburst”
packaging. The Court explained that “there are many other ways a party may establish secondary
meaning, including ‘direct consumer testimony, … length and manner of use, amount and manner

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of advertising, volume of sales, place in the market and proof of intentional copying.’” [317] at
15 (quoting Spraying Sys., 975 F.2d at 393). The Court then identified specific evidence on several
of these factors, including a secondary meaning survey showing (according to Defendants’
description) “a cropped image of the front of a Yellow style package.” [317] at 15. As to proof
of intentional, rather than innocent, copying, Plaintiffs submitted evidence that, “with full
knowledge that DeWalt had trademark and trade dress rights in the yellow and black color scheme
and that DeWalt was the market leader in power tools, Defendants introduced their copycat yellow
and black packaging to be sold side-by-side with DeWalt at retail.” Id. The Court agreed with
Plaintiffs that one reasonable inference that could be drawn from this evidence is that “Defendants
intentionally tried to create confusion so as to trade off of DeWalt’s iconic reputation.” Id. The
Court also pointed the reader to Plaintiffs’ extensive discussion of additional evidence going to
other factors. See [317] at 15 (citing [312] at 16-20, 27).
The Court rejected Defendants’ argument that Plaintiffs’ survey evidence and advertising
and promotional expenses were irrelevant because they were not specific to Plaintiffs’ packaging.
The Court instead looked more broadly to Plaintiffs’ use of a yellow and black color scheme
throughout their advertising, merchandising, and promotional activities for decades, something
that was viewed as “ground-breaking” at the time. See [312] at 17 (citing 1995 Harvard business
school cased study; Business Week article). The Court concluded that “a rational jury could find
that Defendants’ extensive advertising and promotional activities caused consumers to associate
yellow and black trade dress with DeWalt and contributed to DeWalt’s substantial growth in
sales.” [317] at 16. Finally, the Court allowed Plaintiffs’ trade dress infringement claim based on
the JawHorse to proceed, due to the parties’ failure to develop that issue in any detail. See id. at
17.

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Currently before the Court is Defendants’ motion to certify the order denying summary
judgment in part for interlocutory appeal pursuant to 28 U.S.C. § 1292(b).
II.

Legal Standard
Pursuant to 28 U.S.C. § 1292(b), a district court may certify an otherwise non-appealable

order for interlocutory appeal if it is “of the opinion that such order involves a controlling question
of law as to which there is substantial ground for difference of opinion and that an immediate
appeal from the order may materially advance the ultimate termination of the litigation.” See also
Microsoft Corp. v. Baker, 137 S. Ct. 1702, 1708 (2017). “The court of appeals may then, “in its
discretion, permit an appeal to be taken from such order.” Id. An appeal under 28 U.S.C. § 1292(b)
does “not stay proceedings in the district court unless the district judge or the Court of Appeals”
orders.
“A district court may only certify an issue under Section 1292(b) if it turns ‘on a pure
question of law, something the court of appeals could decide quickly and cleanly without having
to study the record.’” U.S. Commodity Futures Trading Commission v. Kraft Foods Group, Inc.,
195 F. Supp. 3d 996, 1002 (N.D. Ill. 2016) (quoting Ahrenholz v. Board of Trustees of University
of Illinois, 219 F.3d 674, 676-77 (7th Cir. 2000)). This normally means “a question of the meaning
of a statutory or constitutional provision, regulation, or common law doctrine.” Ahrenholz, 219
F.3d at 676. The “denial of summary judgment is a paradigmatic example of an interlocutory
order that normally is not appealable,” according to the Seventh Circuit. Id.; cf. also In re Folding
Carton Antitrust Litigation, 75 F.R.D. 727, 738 (N.D. Ill. 1977) (“permission to take an
interlocutory appeal should be granted sparingly and with discrimination”). An immediate appeal
is said to materially advance the ultimate termination of the litigation if it “will expedite rather
than protract the resolution of the case.” U.S. Commodity Futures Trading Commission, 195 F.

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Supp. 3d 996 at 1005 (citing Sterk v. Redbox Automated Retail, LLC, 672 F.3d 535, 536 (7th Cir.
2012)).
III.

Analysis
Defendants argue that their appeal from the Court’s latest partial denial of summary

judgment would present a “controlling question of law” concerning the “applicable legal standards
for establishing a family of unregistered trade dress.” [322] at 5 (capitalization modified). “‘Trade
dress’ refers to the total image of a product, including features such as ‘size, shape, color or color
combinations, texture, graphics, or even particular sales techniques.’” Computer Care v. Service
Systems Enterprises, Inc., 982 F.2d 1063, 1067 (7th Cir. 1992) (quoting Roulo v. Russ Berrie &
Co., 886 F.2d 931, 935 (7th Cir. 1989)); see also Syndicate Sales, Inc. v. Hampshire Paper Corp.,
192 F.3d 633, 635–36 (7th Cir. 1999). According to Defendants, there are substantial grounds for
disagreement on at least three legal issues addressed in the Court’s summary judgment ruling. See
[322] at 6.
First, Defendants assert that “a family of unregistered trade dress encompassing the
undefined use of colors across both packaging and product design is not legally protectable.” [322]
at 6 (capitalization modified). According to Defendants, the unregistered trade dress must be
specifically defined with a stabile visual appearance, id. at 7, and the Court must differentiate
between and separately address product design and product packaging, see id. at 8. In this section
of their brief, id. at 6-10, Defendants discuss the applicable legal standards, but do not identify
anything in particular that the Court got wrong in its summary judgment opinion. The Court has
recognized that “[o]ne claiming family trade dress protection must articulate a specific trade dress
and demonstrate that it has consistently used that trade dress[.]” [276] at 15. And it has explained
that “‘[w]hether a family of marks’ (or trade dress) ‘exists is an issue of fact based on the common

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formative component’s distinctiveness, the family’s use, advertising, promotion, and inclusion in
[the] party’s other marks.’” Id. (quoting AM Gen. Corp., 311 F.3d at 815); see also [317] at 5. In
its motion granting a new trial, the Court determined based on the trial record that “a rational jury
could conclude based on the packaging that Plaintiffs entered into evidence that Plaintiffs' two
forms of packaging had a consistent overall look—the predominantly yellow package with black
in the DeWalt name, tool picture and text; and the predominately black package with yellow side
panels and DeWalt name and black text and graphics.” [276] at 16; see also [230] at 48-49. In
other words, the Court articulated the specific trade dress to which Plaintiffs claim protection, and
concluded that Plaintiffs had sufficient evidence to take the issue to a jury. Ultimately, a jury
could find that Plaintiffs’ different packaging styles are not similar enough to establish a family,
or that secondary meaning was not established as to “most or all” of the packaging designs when
Defendants’ “sunburst” packaging hit the market. But there is no abstract, contested, or controlling
question of law for the Federal Circuit to resolve—just second guessing whether Plaintiffs “ha[ve]
raised a genuine issue of material fact.” This is not a proper basis for an interlocutory appeal. See
Ahrenholz, 219 F.3d at 676 (“question of law” as used in § 1292(b) does not mean “whether the
party opposing summary judgment has raised a genuine issue of material fact”).
Second, Defendants explain that under applicable case law, Plaintiffs must provide “proof
that the family existed prior to the first infringing use, such that all or most of the family members
were in use and had acquired secondary meaning by that time.” [322] at 10. There is no
disagreement on this point, which the Court made itself, quoting the same case as Defendants. See
id.; [317] at 12-13 (quoting AM General Corp., 311 F.3d at 819). Defendants argue that Plaintiffs
failed to satisfy this standard in opposing summary judgment, because “Black & Decker did not
present any evidence that its later, predominantly black packaging trade dress had acquired

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secondary meaning before Positec’s first use of the accused sunburst packaging.” Id. at 11. But
this is a highly fact-specific inquiry concerning the sufficiency of the evidence, which is not an
appropriate basis for an interlocutory appeal. See Ahrenholz, 219 F.3d at 676. Even if it were,
Defendants do not discuss Plaintiffs’ evidence or identify any particular factual errors made by the
Court in assessing the evidence. The Court concluded, and continues to believe, that Defendants
were not entitled to summary judgment because Plaintiffs have evidence that two out of three of
their packaging styles had acquired secondary meaning by the time Defendants’ “sunburst”
packaging entered the market—which a reasonable jury could find satisfies AM General Corp.’s
standard.
Defendants have not cited any cases suggesting the Court’s analysis was incorrect as a
matter of law. The Court’s summary judgment ruling (and earlier related rulings) do not allow
Plaintiffs to “preempt the use of the colors” yellow and black on packaging for power tools and
power tool accessories, but rather protect “the particular combination of these colors, arranged in
a particular” manner, with black or yellow panels with contrasting yellow or black text and
graphics of the tool. In re Forney Industries, Inc., 955 F.3d 940, 947, 2020 WL 1696314, at *5
(Fed. Cir. 2020). The cases on which Defendants rely for the proposition that more specificity is
required involved very different facts. For instance, in Regal Jewelry Co. v. Kingsbridge Int’l,
Inc., 999 F. Supp. 477 (S.D.N.Y. 1998)—the case from which the “articulate a specific trade dress”
language originates—the plaintiff argued that “varying shades of gray [we]re within [its] trade
dress” for packaging, but its officers testified at trial that its “theme color” was a “particular teal
gray color.” Id. at 488. The plaintiff failed to show “that it has consistently applied any single
avowed theme trade dress to the packages of its products” because, for instance, of the six products
presented in the suit, one contained no shade of teal gray or gray; one contained a “full bleed”

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photograph of the product covering the entire front and back panels of the packaging, unlike the
other boxes that had a photo on the two largest sides of the box; and another used two different
package designs, one of which did not use the theme color. Id. at 487-88. The plaintiff’s box
design also was found to be unprotectable because it was so similar to those used by other
manufacturers and thus generic. See id. at 489 (noting that “Regal’s use of box designs are
extremely similar to those of the other manufacturers, Regal is not using a design or color
combination that has become a singular custom in the industry”). The plaintiff’s owner and
president also admitted at trial that the “sales for many of its products have actually declined” since
the “theme color” trade dress had been introduced. See id. at 490. The facts here are very different.
The images of Plaintiffs’ packaging show that Plaintiffs’ packaging styles all use a yellow and
black color scheme and contain an image of the tool on the front panel. Plaintiffs have also
presented evidence that their sales went up tremendously after they began using the yellow and
black color scheme throughout their packaging, tools, and marketing.
In Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373 (2d Cir. 1997), see [322]
at 7, 9, the plaintiff sought trade dress protection for a line of outdoor furniture, but failed to
include a description of the furniture in its complaint and failed to offer evidence “indicat[ing]
what unique combination of features” in the ten items in the furniture line were “inherently
distinctive[,] i.e., likely to be perceived by consumers as bearing the stamp of their maker.”
Landscape Forms, 113 F.3d at 381-82. Instead, the plaintiff offered abstract descriptions of the
furniture, such as that it appeared “substantial” yet “light,” or “is at once massive, yet appears to
float.” Id. at 382. Further, the plaintiff’s descriptions applied only to “some, but not all, of the ten
items in the [furniture] line.” Id. Here, by contrast, Plaintiffs’ description of their trade dress—
the use of the color combination yellow and black on packaging for power tools and power tool

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accessories—is concrete, easy to understand, and applies to all of the packaging offered into
evidence by Plaintiffs, and all of the packaging sold by Plaintiffs since the early 1990s. Plaintiffs’
evidence also supports its position that this unique combination of features—the yellow and black
color combination on packaging for power tools and power tool accessories—is “likely to be
perceived by consumers as being the stamp of” Black and Decker, id. at 381-82, because no other
tool maker had used this particular color combination (prior to Defendants’ alleged infringement)
Further, Plaintiffs’ evidence shows that they reinforced to consumers the distinguishing
characteristic of their packaging—the yellow and black color scheme—by using the same color
combination, and virtually no other color, on everything possible: tools, advertising, promotional
materials, employees, racecars, and anything else they could paint yellow and black. There is
nothing in Landscape Forms or any other case cited by Defendants that prohibits the Court from
taking these facts into consideration in denying Defendants’ motion for summary judgment on the
trade dress infringement claim.
Third, Defendants assert that the Court “rejected [their] argument that Black & Decker
should not be permitted to rely on evidence of secondary meaning as to its yellow and black colors
on its power tools to assert a protectable family of packaging trade dress,” and allowed Plaintiffs
to proceed “without relying on specific packaging design elements or evidence of secondary
meaning in those elements.” [322] at 12. This was not the Court’s holding. The Court was
discussing the narrower question of whether Plaintiffs could rely on evidence of advertising and
promotion of power tools to support the secondary meaning of their packaging trade dress. The
Court found that precluding the use of such evidence (which also included ads and promotions that
specifically featured the yellow packaging style, see [245] at 29-30) would unnecessarily limit “the
inferences that a jury may (or may not) reasonably and logically draw from the evidence as a

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whole,” which included Plaintiff’s use of yellow and black for years in all of tools, packaging,
advertising, and promotional activities. [317] at 15. Put another way, the Court recognized the
inability to silo the evidence of secondary meaning into discrete categories where, as here, at least
one of the common formative components of the claimed family—the use of a yellow and black
color scheme—is also used extensively in the trademark holder’s other marks, products,
advertisements, and promotional activities. Indeed, AM General recognized that “[w]hether a
family of marks exists is an issue of fact” based on a number of relevant factors, including “the
common formative component’s distinctiveness, the family’s use, advertising, promotion, and
inclusion in party’s other marks.” AM General, 311 F.3d at 815 (emphasis added). Further,
“[w]hether the party claiming a family of marks has used joint advertising and promotion in a
manner designed to create an association of common origin may be pertinent.” Id. Plaintiffs’
evidence here is that their entire marketing strategy since 1992 has been to create an association
between DeWalt and the color combination of yellow and black. The case law does not preclude
Plaintiffs from telling this story to support their claim for trade dress infringement.
Looking at the larger record, however, does not absolve Plaintiffs of the need to
demonstrate that all or most of the members of their proposed family of packaging trade dress had
acquired secondary meaning when Defendants’ “starburst” packaging entered the market. See AM
General Corp., 311 F.3d at 819. The Court believes that Plaintiffs have presented enough evidence
to allow this question to go to a jury. To the extent Defendants disagree, this is a sufficiency of
the evidence question not appropriate for interlocutory appeal. See Ahrenholz, 219 F.3d at 676.
Plaintiffs have presented evidence that their use of a yellow and black color combination
on packaging generally—rather than on one particular packaging style—has an established
secondary meaning, associating the packaging in the consumers’ mind with the DeWalt brand. In

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Plaintiffs’ expert “Mr. Hollander’s ‘secondary meaning’ survey, 72.7% of survey respondents
asked, ‘If you were shopping at a Home Depot, Lowe’s, or another similar retail store and you saw
a yellow and black packaged power tool or power tool accessory, would you associate that package
with any particular company?’, answered DeWalt/Black & Decker, while a net of 63.5% did so.”
[312] at 21. At trial, Defendants’ Vice President of Marketing, Ms. Taylor, admitted that yellow
and black packaging is DeWalt’s “iconic look.” [245] at 28. Plaintiffs’ survey and Ms. Taylor’s
admission are relevant to both of the packaging styles that Plaintiffs had introduced (or at least
arguably introduced) by the time Defendants’ “sunburst” packaging entered the market—the
predominately yellow style and the black bar style—since both share the distinctive formative
components of the use of a yellow and black color scheme on power tool packaging.
Although Defendants do not delve into the evidence in any detail, they presumably would
dispute that these statements about “yellow and black packaging” are specific enough to support a
finding that the black bar package acquired secondary meaning in the relatively short time it was
on the market (less than two years, at most, see [317] at 14) before Defendants began using their
“sunburst” packaging. But demands for such particularized proof are premised not on any
particular case law, but on an assumption that the two styles of packaging are so different that
wholly separate evidence of secondary meaning for the predominately black package must be
required. It is useful to keep in mind the actual appearance of the two styles:

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The main difference between the two styles is that the use of yellow and black is reversed on
certain panels of the box. The colors, fonts, and graphics are the same. If the first design had

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already been known in the market for well over a decade, how long would it reasonably be
expected to take a consumer familiar with the first package to also associate the second package
with Black and Decker, as well? Does flipping the yellow and black on portions of the box create
such a different visual impression that consumers would no longer make the connection? The
Court cannot say that it would be beyond the bounds of reasonableness for a jury to conclude based
on the similarity of the two packaging styles, along with the record evidence as a whole, that both
styles of packaging (i.e., two out of three, or “most,” of the total three packaging styles in Plaintiffs’
asserted family) had acquired secondary meaning by the time Defendants began using the
“sunburst” packaging. The yellow packaging had been on the market nearly twenty years, and the
black bar packaging could have been on the market for up to two years, depending on how disputed
dates shake out at trial.
Looking to the rest of the record, Defendants never come to terms with the evidence of
intentional copying, which is properly considered in evaluating secondary meaning. See Spraying
Sys., 975 F.2d at 393. Plaintiffs submitted evidence that, “with full knowledge that DeWalt had
trademark and trade dress rights in the yellow and black color scheme and that DeWalt was the
market leader in power tools, Defendants introduced their copycat yellow and black packaging to
be sold side-by-side with DeWalt at retail.” [317] at 15. In particular, they cite to testimony from
Positec’s Tom Duncan that Defendants were aware prior to March 2010 that the DeWalt brand
used the colors yellow and black. See [313] at 39-40. Plaintiffs offer photos showing their
DeWalt-packaged products in the black bar packaging intermingled and side by side in retail stores
including Costco and Lowe’s. See id. at 22-23. The testimony and photos support an inference
that Defendants chose the “sunburst” design in order to create an association with DeWalt and
profit off of DeWalt’s brand recognition.

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In addition, it is proper, in relation to both the yellow and black bar packaging styles, for
the Court to consider Plaintiffs’ place in the market at the time Defendants’ introduced their
“sunburst” packaging. See Spraying Sys., 975 F.2d at 393. Plaintiffs offer essentially unrebutted
evidence that prior to Defendants’ introduction of their packaging, Plaintiffs were the only ones in
the power tool market that used a yellow and black color combination on their power tools,
accessories, and packaging. This was due to Plaintiffs’ deliberate efforts: Plaintiffs launched
“Operation Sudden Impact” with the express goal “to ‘build awareness quickly and consistently’
in the yellow and black color scheme.” [313] at 36. Over the next twenty-plus years, Plaintiffs
policed the market in order to maintain their exclusivity. See id. at 37.
For these reasons, the Court is not convinced that there are any reasonably disputed, pure
legal issues to be resolved in an interlocutory appeal, much less any that would materially advance
the ultimate resolution of the litigation without requiring the Federal Circuit to delve into the
factual record. Therefore, Defendants’ motion for interlocutory appeal [321] is denied.
IV.

Conclusion
For these reasons, Defendants’ motion [321] for certification of interlocutory appeal under

28 U.S.C. § 1292(b) is denied. This case is set for a telephonic status hearing on February 3, 2021
at 10:00 a.m. The call-in information will be placed on the docket in a separate minute entry.

Dated: January 20, 2021

____________________________
Robert M. Dow, Jr.
United States District Judge

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