Uncommon, LLC v. Spigen, Inc.

Filing 191

MEMORANDUM Opinion and Order Signed by the Honorable John Robert Blakey on 3/26/2018. Mailed notice(gel, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
UNCOMMON, LLC,
Plaintiff,

Case No. 15-cv-10897

v.

Judge John Robert Blakey

SPIGEN, INC.,
Defendant.
MEMORANDUM OPINION AND ORDER
Plaintiff Uncommon, LLC sued Defendant Spigen, Inc. for using the
trademarked term “Capsule” in the names of its cell phone cases, the same product
that Plaintiff sells under the Capsule mark. Plaintiff brings claims for trademark
infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114,
1125(a), and unfair competition under Illinois common law. [1]. Defendant asserts
counterclaims seeking cancellation of Plaintiff’s Capsule mark for genericness and
descriptiveness. [47]. Before this Court are Plaintiff’s motion to strike Defendant’s
expert report [104]; Defendant’s motion to strike Plaintiff’s expert report [107];
Plaintiff’s motion to strike an affidavit from Defendant’s nontestifying expert [177];
Defendant’s motion to withdraw answers to Plaintiff’s requests for admission [180];
and the parties’ cross-motions for summary judgment [123, 147].
As explained below, this Court denies the parties’ motions to strike; partially
grants and partially denies Defendant’s motion to withdraw answers; and partially
grants and partially denies the parties’ motions for summary judgment.

I.

Background
A.

Disputed Facts

The facts in this section come primarily from Defendant’s Local Rule 56.1
statement of facts [124] and Plaintiff’s Local Rule 56.1 statement of facts [149]. 1
The parties disagree over many of the circumstances of this case and each filed
extensive responses to the other’s statement of facts, [152, 157], and statement of
additional facts, [169, 171]. Simply denying a fact that has evidentiary support
“does not transform it into a disputed issue of fact sufficient to survive a motion for
summary judgment.” Roberts v. Advocate Health Care, 119 F. Supp. 3d 852, 854
(N.D. Ill. 2015). Denials “must cite specific evidentiary materials justifying the
denial” or be disregarded. Malec v. Sanford, 191 F.R.D. 581, 584 (N.D. Ill. 2000).
Further, responses to the opposing party’s statement of facts are not the place for
“purely argumentative details,” id., or legal conclusions, Cady v. Sheahan, 467 F.3d
1057, 1060 (7th Cir. 1997). District courts may disregard any improper denials. See
id.; Ammons v. Aramark Unif. Servs., 368 F.3d 809, 817 (7th Cir. 2004).
Plaintiff argues in its reply brief on its motion for summary judgment that
many of Defendant’s responses to Plaintiff’s statement of facts should be
disregarded. [168] at 7. But Plaintiff waived this argument by failing to raise it
before the reply brief. See, e.g., Padula v. Leimbach, 656 F.3d 595, 605 (7th Cir.
2011).

Even so, this Court retains discretion to enforce Local Rule 56.1.

See

In citations, “DSOF” refers to Defendant’s statement of undisputed facts [124], with Plaintiff’s
responses [157] cited as “R. DSOF.” “PSOF” refers to Plaintiff’s statement of undisputed facts [149],
with Defendant’s responses [152] cited as “R. PSOF.” “PSAF” refers to Plaintiff’s statement of
additional facts [157], with Defendant’s responses [171] cited as “R. PSAF.” “DSAF” refers to
Defendant’s statement of additional facts [152], with Plaintiff’s responses [169] cited as “R. DSAF.”
References to additional filings are by docket number.

1

2

Ammons, 368 F.3d at 817. To the extent that Defendant’s responses fail to cite
specific evidence in the record, this Court will disregard them and deem Plaintiff’s
statement of fact to be admitted. See Malec, 191 F.R.D. at 583–84.
The majority of responses that Plaintiff challenges sufficiently conform to
Local Rule 56.1 to remain in the record. In most responses Defendant admits the
statement in part and disputes the remainder either by citing to the record or reciting the portion of the record relied upon by Plaintiff.

In some responses,

Defendant limited its reply because it objected to the form of Plaintiff’s statement as
containing improper legal argument or as unsupported by the evidence. This Court
considers this to be the case with respect to Defendant’s responses to paragraphs 1–
3, 5, 7–10, 15, 16–18, 20, 21, 26, 29–37, and 39–42, and declines to strike those
responses.

In a few instances, however, Defendant failed to cite to any record

evidence: this is true of its responses to paragraphs 6, 14, 23, 25, 28, and 38 of
Plaintiff’s statement of facts. This Court disregards those denials and considers
Plaintiff’s corresponding statements admitted. Malec, 191 F.R.D. at 583–84. 2
B.

This Case

The parties make and sell cell phone cases. PSOF ¶¶ 5, 6. Plaintiff sells a
number of case models that consumers can customize with their own images, as
well as “ready-made” varieties available with mass-produced designs or licensed
artwork. DSOF ¶ 42; R. DSOF ¶ 40.

Plaintiff’s reply brief contains additional arguments about other disputed responses by Defendant.
See [168] at 8–10. But these overlap with Plaintiff’s arguments against Defendant’s motion to
withdraw certain of its admissions, which this Court addresses later in this opinion. This Court will
not consider additional, waived arguments on that issue.
2

3

In September 2012, Plaintiff applied to register the name “Capsule” as a
trademark for one of its lines of cases. PSOF ¶ 4. The Capsule mark issued in May
2013 as Trademark Registration No. 4,338,254, for “cases specifically adapted for
protection and storage of consumer electronics, namely, cellular phones and mobile
media players.” Id.; [149-3]. The mark’s registration lists its “first use” and “in
commerce” dates as December 16, 2009. [149-3]. Its registration date is May 21,
2013. Id. Plaintiff sold its first Capsule case in July 2010, and has continuously
sold cell phone cases with the mark since that date. DSOF ¶ 32; PSOF ¶ 5.
When Plaintiff registered its mark, it appears that another company, Vatra,
Inc., had registered “Capsule” as a trademark for “bags and cases” for “holding or
carrying” cell phones, cameras, glasses, and other accessories. [124-8] at 6. Vatra,
however, never followed up on its initial registration by providing a certificate of
“continued use or excusable non-use,” which must be submitted to the U.S. Patent
and Trademark Office (USPTO) between the fifth and sixth year after registration
to maintain a valid trademark. See id. at 5. In any event, the USPTO cancelled
Vatra’s Capsule mark in February 2015 for lack of that certificate, id. at 3, and it
did not flag Vatra’s mark as a potential source of confusion when Plaintiff applied
for its Capsule mark, DSOF ¶ 13; [149-3].
There are, however, additional third-party suppliers that sell cases whose
names contain the term “Capsule,” including Accez, iPhone TPU, Jammylizard,
Catalyst, and others. See [124-10]. Plaintiff’s own exhibit of online search results
for “capsule,” submitted with its Complaint, shows that case producers (other than

4

the parties here) use the term. [1-6]; [124-9] at 8. 3 Such third-party use of Capsule,
even in relation to cell phone cases, did not affect Plaintiff’s registration of its mark
with the USPTO.
Around 2010, Defendant also began selling cell phone cases with the name
“Capsule.” PSOF ¶ 6. These cases sometimes, but not always, used capsule with
other modifiers; for example, Defendant’s products include “Air Capsule,” “Capsule
Solid,” and “Capsule Capella.” Id. ¶¶ 6, 9; DSOF ¶¶ 53, 54. By November 2014,
Defendant had submitted registration applications to the USPTO to trademark
these “Capsule family” product names.

PSOF ¶¶ 6, 12.

At least one of these

marks—Capsule Capella—was approved and registered with the USPTO in May
2017. [124-4] at 4; CAPSULE CAPELLA, Registration No. 5,297,564. 4 Although
the Capsule Capella mark was originally rejected by the USPTO for likelihood of
confusion, the objection was withdrawn upon review. [124-4] at 6. The registration
for Capsule Capella includes the disclaimer that Defendant makes no claim to the

Despite offering its own internet search evidence, see [1-6], [149-19], Plaintiff offers a number of
perfunctory hearsay objections to Defendant’s internet evidence, without citing to law, see R. DSOF ¶
11. This Court finds the internet search evidence admissible under Federal Rule of Evidence 807.
The internet evidence offered by both sides consists of images of search returns on the parties’
websites or retail websites like Amazon, see, e.g., [149-18], [124-22], and is likely to be trustworthy
because it is in the seller’s interest to accurately represent its products. Additionally, this evidence
is more probative on the issue of consumer confusion—an element of trademark infringement—than
any other comparable evidence and admitting it will best serve the purposes of the federal rules and
the interests of justice. See Fed. R. Evid. 807; see also Peerless Indus., Inc. v. Crimson AV LLC, No.
11-c-1768, 2017 WL 1192805, at *3 & *3 n.6 (N.D. Ill. Mar. 31, 2017) (affirming use of Amazon.com
print-out as evidence of public availability of a product); In re Bayer Aktiengesellschaft, 488 F.3d 960,
967 (Fed. Cir. 2007) (internet search results are evidence of the descriptiveness of a mark); 2
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 11:20, 20:126.50 (5th ed.) (discussing use of
internet search results to show descriptiveness and consumer understanding and use of a term).
3

This Court may take “judicial notice of public records and government documents, including those
available from reliable sources on the Internet.” Sleeter v. Actavis Totowa, LLC, No. 10-653-GPM,
2010 WL 3781261, at *2 n.1 (S.D. Ill. Sept. 21, 2010) (citing Laborers’ Pension Fund v. Blackmore
Sewer Constr., Inc., 298 F.3d 600, 607 (7th Cir. 2002)).
4

5

“exclusive right to use ‘Capsule’ apart from” its appearance in the mark as shown.
CAPSULE CAPELLA, Registration No. 5,297,564. Defendant’s “Rugged Capsule”
mark was also initially rejected, both for likelihood of confusion and because the
USPTO determined that the mark was “merely descriptive” of an attribute of the
Defendant’s case. [124-6] at 16–17. Defendant still sells its “Capsule family” cases,
on its website and through online retailers such as Amazon and eBay. PSOF ¶ 11.
Defendant also claims that it sold a “Capsule” cell phone accessory in June
2009, predating Plaintiff’s first use of the Capsule mark. See R. DSOF ¶ 22; [12411]. This product was the “SGP Metal Advance Light,” which came in a variety of
styles, including “Capsule Nickel” and “Capsule Gold.” See PSOF ¶ 25; [124-11].
The SGP Metal Advance, however, was a cell phone “skin,” a decorative sticker for
the front of a phone. PSOF ¶¶ 26–28; [150-5]. It was not a cell phone case. In any
event, this use of “capsule” merely described one of the designs in which the sticker
was available—specifically, the option to have the sticker in a gold or nickel color
with a pattern of repeating medicine capsules.

See [124-11, 149-26].

Thus,

“capsule” as Defendant used it in 2009 described a decorative pattern by naming the
objects in the pattern, and was not a product identifier. It has little relevance here. 5

Defendant argues that this purported prior use may be grounds for cancellation of Plaintiff’s mark.
[125] at 13. There are two glaring problems with this argument, as evidenced by the very cases
Defendant cites. In Martahus v. Video Duplication Services, the Federal Circuit noted that 15 U.S.C.
§ 1052(d) supports cancellation on the basis of prior use when the subsequently registered mark “so
resembles a mark or trade name previously used in the United States by another, and not
abandoned, as to be likely, when used in connection” with the second user’s product, to “cause
confusion.” 3 F.3d 417, 421 (Fed. Cir. 1993). Even if Defendant could show that its use of “capsule”
as a decorative sticker was likely to cause confusion with Plaintiff’s cell phone case—a doubtful
proposition—its single citation to an image of this capsule-patterned sticker, see DSOF ¶ 15, [12455], does not satisfy Martahus’ requirement that cancellation of a registered mark on these grounds
rebut the registered mark’s presumed validity by a preponderance of the evidence, 3 F.3d at 421.
5

6

Thus, the disputed products consist of Plaintiff’s Capsule cell phone cases and
Defendant’s “Capsule family” cases. Both parties sell their Capsule cases online,
through their websites and online retailers. PSOF ¶ 14; [1-6]; [124-28]; [124-34].
Both have a national market. PSOF ¶¶ 13, 14. Both parties use the trademarked
term alone and in conjunction with the word “case.” [149-11]; [149-19]; [124-12];
[124-28]; R. DSOF ¶ 20; DSAF ¶ 4. Defendant, as noted, also uses the term with
other descriptors, and has trademarked at least one of the resulting phrases. See
[124-4]; DSAF ¶ 6.

The Capsule marks for which Defendant has sought or is

seeking registration have first-use dates no earlier than February 2015. DSAF ¶ 6.
Defendant briefly ceased selling its Capsule family cases during the pendency of
this litigation but has resumed its sales. PSOF ¶ 38.
Although both parties currently sell Capsule cases, Plaintiff does not sell its
Capsule models for iPhones after the 5/5s generation, with the exception of the
iPhone SE. PSOF ¶ 5; R. DSOF ¶¶ 43, 44. The trademarked Capsule models are
limited to cases for the iPhone 5/5s, iPhone SE, iPhone 4/4s, and the fourth
generation iPod Touch. R. DSOF ¶ 43. Plaintiff’s cases for these goods can be
customized by consumers or bought with ready-made prints. Id. Plaintiff did not
produce Capsule cases for later generations because it was more difficult to print
customized designs—generally supplied by consumers—on the cases that fit those
generations. R. DSOF ¶ 44. Defendant’s challenged cases, by contrast, are not
customizable, and appear to be sold primarily in solid colors. DSOF ¶ 50; see also
[149-19] (Capsule products on Defendant’s website). Also, Defendant sells Capsule
family cases for phones other than the iPhone, such as the Samsung Galaxy, see
7

[149-19], while Plaintiff’s Capsule models only fit iPhones, see PSOF ¶ 5; R. DSOF
¶¶ 43, 44; [124-2, 124-12, 124-23]. Plaintiff admits that it has no evidence of actual
confusion between its Capsule cases and Defendant’s cases. R. DSOF ¶ 52.
In December 2015, Plaintiff sued Defendant for federal trademark
infringement under 15 U.S.C. § 1114(a); unfair competition and false designation of
origin under 15 U.S.C. § 1125(a); and Illinois common law unfair competition. [1].
Defendant asserted a counterclaim and numerous affirmative defenses. [31, 47].
Defendant later voluntarily dismissed Counts I and VI of its counterclaim, and this
Court dismissed Counts II and V.

[54, 61].

Thus, Defendant’s remaining

counterclaims are Counts III and IV, seeking cancellation of Plaintiff’s mark for
genericness and descriptiveness, respectively. [47].
The parties engaged in extensive discovery in the course of this litigation,
and each consulted experts. In December 2016, Defendant disclosed its experts to
Plaintiff. [183-2, 183-5]. It listed Doug Bania as an expert who “may be called to
testify regarding the lack of consumer confusion” as to the parties’ marks; whether
Plaintiff’s mark “is descriptive and has acquired distinctiveness”; and damages
calculations. [183-5]. Defendant noted that Bania would provide a formal report.
Id.

Defendant’s designation of experts also listed Kirk Martensen as a “non-

testifying expert who will conduct a consumer survey” to provide evidence of
consumer perspectives on the Capsule mark and the parties. Id. Defendant noted
Martensen’s association with Goldmarks—his survey firm—and said that although
no “formal report” was forthcoming, Martensen might “be called to testify on the
methodology of the survey if needed.” Id.
8

Upon Plaintiff’s request, Defendant

provided a two-page summary of Martensen’s credentials that same month. [15718, 157-20].

Defendant sent Plaintiff a copy of the survey report, including

information about its methodology and findings, with Defendant’s expert
disclosures.

See [124-19] at 3–5, 15–24; [180-1] ¶ 2.

Although Plaintiff never

sought to depose Martensen, it asked Bania about Martensen and his methodology
in a January 2017 deposition. [180-1] ¶ 9; [180-6]. In response, Bania admitted
that he is not a survey expert but said that he accepted the reliability of the survey
report, in part because it aligned with his own research. See [183-6] at 2.
In January 2017, this Court extended the initial expert discovery cut-off from
February 2017 to March 14, 2017. [102]. On March 13, after Plaintiff’s expert
rebuttal report had been submitted and a day before the close of expert discovery,
Bania submitted a “Supplemental Expert Report.” [104-3]. Ultimately, this Court
again extended expert discovery until June 1, 2017. [114].
The parties cross-filed for summary judgment in June 2017.

[123, 147].

Defendant included Bania’s expert report and Martensen’s consumer survey as
exhibits in support of its motion. [124-9, 124-19]. In response, Plaintiff challenged
the admissibility of the consumer survey. See R. DSOF ¶ 28; [158] at 8. As a result,
Defendant submitted a sworn declaration from Martensen in support of the
consumer survey with its responses to Plaintiff’s statement of additional facts.
[171-8]. The affidavit described the work that Martensen and his firm Goldmarks
conducted to produce the survey, and attested to the truth and validity of the
consumer survey report previously disclosed to Plaintiff and submitted with
Defendant’s motion for summary judgment. Id.
9

II.

Legal Standard
Under Federal Rule of Civil Procedure 12(f), courts may strike a party’s

“insufficient defense or any redundant, immaterial, impertinent, or scandalous
matter.” Accordingly, courts grant motions to strike only in rare circumstances;
they are generally disfavored for their dilatory effect and frequent use as a vehicle
to make arguments beyond the page limits of the merits briefs.

See Custom

Vehicles, Inc. v. Forest River, Inc., 464 F.3d 725, 726–27 (7th Cir. 2006). A motion to
strike should succeed when it removes “unnecessary clutter from the case,” and
thus expedites rather than delays resolution on the merits. Heller Fin., Inc. v.
Midwhey Powder Co., Inc., 883 F.2d 1286, 1294 (7th Cir. 1989).
A motion for summary judgment can be granted only when there are no
genuine issues of material fact and the moving party is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). A genuine dispute of material fact exists where
“the evidence is such that a reasonable jury could return a verdict for the
nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). The
party seeking summary judgment has the burden of establishing that there is no
genuine dispute as to any material fact. See Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986). The motion will be granted only if, viewing the record in the light most
favorable to the nonmoving party, no jury could reasonably find in the nonmoving
party’s favor. McDonald v. Hardy, 821 F.3d 882, 888 (7th Cir. 2016). “The mere
existence of a factual dispute,” however, does not bar summary judgment unless
“the disputed fact is outcome determinative under governing law.”

Howland v.

Kilquist, 833 F.2d 639, 642 (7th Cir. 1987). Summary judgment is also appropriate
10

if the nonmoving party fails to establish an essential element for which it bears the
burden of proof at trial. Massey v. Johnson, 457 F.3d 711, 716 (7th Cir. 2006).
III.

Analysis
A.

Evidentiary Disputes

Both parties bring numerous evidentiary challenges.

These include

Plaintiff’s motion to strike Defendant’s expert report [104]; Defendant’s motion to
strike Plaintiff’s expert report [107]; Plaintiff’s motion to strike Kirk Martensen’s
affidavit [177]; and Defendant’s motion to withdraw four answers to Plaintiff’s
requests for admission [180].

Plaintiff also includes several related evidentiary

arguments in its summary judgment briefing (and to the extent those arguments
overlap with the listed motions, this Court addresses them with the related motion).
This Court also addresses two of Plaintiff’s arguments separately: Plaintiff’s
objections to Defendant’s consumer survey, [158] at 8, and to the affidavits
submitted by defense counsel and one of Defendant’s employees, id. at 12–14.
Because parties “may rely only on admissible evidence” at summary
judgment, Lewis v. CITGO Petroleum Corp., 561 F.3d 698, 704 (7th Cir. 2009), this
Court considers the evidentiary disputes before turning to the merits of the case.
1.

Motions to Strike the Expert Reports

Both parties move to strike their opponent’s expert report and exclude the
expert’s opinions.

Plaintiff moves to strike Doug Bania’s supplemental expert

report as untimely and improper, and to exclude his full report and testimony
because he does not address issues in dispute and because he is not a qualified
expert. [104] at 4, 6. Defendant seeks to exclude Chad Porter’s report and opinions
11

because they are unreliable and conclusory. [107] at 3, 6, 8. Defendant’s motion is
denied as moot, as explained below. This Court considers Plaintiff’s motion next.
The admissibility of expert testimony is governed by Federal Rule of
Evidence (FRE) 702 and the Supreme Court’s decision in Daubert v. Merrell Dow
Pharm., Inc., 509 U.S. 579 (1993). Expert testimony is admissible under FRE 702 if
technical or specialized knowledge “will assist the trier of fact to understand the
evidence or to determine a fact in issue.”

Essentially, district courts act as

gatekeepers and must ensure that expert testimony “is not only relevant, but
reliable.”

Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (internal

quotation marks omitted). Relevant factors in this determination include testing,
peer review, error rates, and acceptance by the relevant expert community. See
Daubert, 509 U.S. at 593–94. The reliability inquiry is flexible, however, and not all
of these factors will apply in every case. See Kumho, 526 U.S. at 141.
In assessing the admissibility of expert opinions, courts do not focus on “the
ultimate correctness of the expert’s conclusions,” Schultz v. Akzo Nobel Paints, LLC,
721 F.3d 426, 431 (7th Cir. 2013), but “solely on principles and methodology,”
Daubert, 509 U.S. at 595.

The “soundness of the factual underpinnings” and

“correctness of the expert’s conclusions” may affect any ultimate determination on
the merits, but do not govern admissibility. See Smith v. Ford Motor Co., 215 F.3d
713, 718–19 (7th Cir. 2000). The expert must explain his or her methodology and
cannot “simply assert a bottom line.” Metavante Corp. v. Emigrant Sav. Bank, 619
F.3d 748, 761 (7th Cir. 2010). Finally, the expert “may be qualified by knowledge,
skill, experience, training, or education.”
12

See Smith, 215 F.3d at 718 (internal

quotation marks omitted). District courts have “great latitude in determining not
only how to measure the reliability of the proposed expert testimony but also
whether the testimony is, in fact, reliable.” United States v. Pansier, 576 F.3d 726,
737 (7th Cir. 2009).
(i)

Bania’s Supplemental Report

Defendant engaged Bania to provide information and expert opinions on the
parties’ use of the Capsule trademark; the purpose and functionality of trademarks;
and potential damages. [124-8] at 3. In addition to his initial expert report from
December 2016, [124-8], Bania submitted a “Supplemental Expert Report” in March
2017, [104-3].

Plaintiff objects to the primary expert report as unreliable and

irrelevant, and to the supplemental report for failure to comply with Federal Rule of
Civil Procedure (FRCP) 26. This Court addresses the supplemental report first.
Under FRCP 26(e), parties must timely supplement their expert disclosures
to remedy an incomplete or incorrect disclosure. See Fed. R. Civ. P. 26(e)(1–2); Vill.
of Sauk Vill. v. Roadway Express, No. 15-cv-9183, 2017 WL 378424, at *2 (N.D. Ill.
Jan. 25, 2017). Supplementary reports cannot offer “entirely new expert opinions”;
rather, they should clarify or expand upon information in the expert’s original
report or “information given during the expert’s deposition.” Id. (internal quotation
marks omitted); see also Fed. R. Civ. P. 26(e)(2). The supplementary report may be
intended in part to rebut an opposing party’s expert. Sauk Vill., 2017 WL 378424,
at *2; Bone Care Int’l, LLC v. Pentech Pharm., Inc., No. 08-cv-1083, 2010 WL
3894444, at *15 (N.D. Ill. Sept. 30, 2010).

If offered in rebuttal, certain new

arguments may be made “to repel testimony” of the opposing party’s experts, as
13

long as they do not differ so substantially from the opening report that they
introduce entirely new theories or angles. Bone Care, 2010 WL 389444, at *16.
Finally, failure to comply with FRCP 26 may be excused under FRCP 37(c) if that
failure is “substantially justified” or harmless.
For purposes of summary judgment, this Court finds that Bania’s
supplemental report sufficiently adheres to the scope of his initial report and to
permissible rebuttal that it need not be stricken. The first half of the supplemental
report corrects the scope of Bania’s previous damages calculations but does not alter
his underlying methodology. See [104-3] at 2–4. The second half rebuts Plaintiff’s
expert, but similarly confines itself to the calculation of damages, focusing on the
issue of Spigen’s costs as they relate to damages. See id. at 5–6. Bania previously
addressed Spigen’s costs in his initial report, [124-8] at 14–15, and here merely
applies his analysis to Plaintiff’s expert report. Such limited rebuttal does not open
up new areas of the case or prejudice Plaintiff’s ability to prepare for trial. Cf.
Stuhlmacher v. Home Depot USA, Inc., No. 2:10-cv-467, 2012 WL 5866297, at *3
(N.D. Ind. Nov. 19, 2012). Rather, it supplements Bania’s original report, partly in
response to Plaintiff’s expert material. See Sauk Vill., 2017 WL 378424, at *2.
Even if the supplementary report failed to strictly comply with Rule 26, this
Court also finds any such failure harmless and thus excused under Rule 37. Not
only was the supplementary report provided to Plaintiff before the initial close of
expert discovery (albeit on the last day) [102], this Court then extended the close of
expert discovery another two and a half months, [144], largely to give Plaintiff time
to address the supplementary report, as stated in open court. Finally, Defendant’s
14

production of the supplement does not venture into new territory, minimizing any
potential prejudice to Plaintiff. See Bone Care, 2010 WL 389444, at *16. This Court
denies Plaintiff’s motion to strike Bania’s supplementary report.
(ii)

Bania’s Initial Report

Plaintiff challenges Bania’s qualifications and the relevance and reliability of
his expert opinion overall, and seeks exclusion of his initial report and testimony at
trial. [104] at 6; [148] at 25; [158] at 11. Plaintiff also challenges the reliability and
admissibility of the consumer survey on which Bania relied for some of his opinions.
See [148] at 14; [158] at 8–10.

This Court first considers Plaintiff’s primary

challenges to Bania’s report before turning to the consumer survey.
Plaintiff’s objections to Bania’s report rest solely upon a challenge to Bania’s
qualifications and methodology with respect to calculating damages. See [104] at 8–
16; [148] at 25. For the reasons explained below, this Court does not reach the
question of damages because it finds that Defendant did not infringe on Plaintiff’s
mark. Plaintiff’s motion to strike Bania’s report is, therefore, denied as moot.
As noted above, however, Bania’s opinions extend beyond the issue of
damages. His report also addresses the interaction of the parties’ products in the
marketplace. See [124-8] at 3, 13. Among other conclusions, Bania states that: (1)
the parties’ products are dissimilar; (2) a number of cell phone case suppliers use
the term “Capsule” in the names of their cases; (3) consumers do not identify the
Capsule mark with Uncommon; and (4) Defendant’s use of “Capsule” likely did not
interfere with Plaintiff’s business.

Id. at 7–12, 13.

These opinions relate to

Plaintiff’s infringement claims and Defendant’s counterclaim for cancellation of
15

Plaintiff’s mark for descriptiveness. Thus, the admissibility of his report remains
relevant.
Considering the “principles and methodology” that Bania used, Daubert, 509
U.S. at 595, and his “knowledge, skill, experience, training,” and education, Smith,
215 F.3d at 718 (internal quotation marks omitted), this Court finds Bania’s expert
opinion admissible. Bania’s qualifications include his professional experience as the
founder of a consulting firm “specializing in the management, valuation and
monetization” of intellectual property (IP); over a decade of work in IP
management; his certification as a licensing professional in 2011; his membership
in various trademark and licensing associations, as well as the American Bar
Association’s IP Law section; and a decade’s worth of publications on copyright use,
brand valuation, infringement claims, and other IP topics. See [124-9] at 25–30.
The methodology underpinning Bania’s assessment of the parties’ products
and marks is not terribly complicated, but the questions he was asked to answer do
not necessarily call for complexity. Because this case turns primarily on consumer
perception of the parties’ products and marks, Bania conducted a variety of internet
searches to examine how the products and marks appear to consumers. Id. at 4–12.
Bania then applied his knowledge and expertise to the results of those searches—
which he conducted after wiping his internet search history to remove bias—and to
Martensen’s consumer survey report to arrive at his conclusions. Id. at 13, 18. This
is a reasonable method for determining consumer perceptions.

See Ty, Inc. v.

Publ’ns Int’l, Ltd., No. 99-c-5565, 2004 WL 5634301, at *7 (N.D. Ill. Oct. 21, 2004)
(finding that an expert’s reliance upon his experience and relevant studies offered a
16

“rational basis” for his conclusions on consumer motivations) (citing Sheldon v.
Metro-Goldwyn Pictures Corp., 309 U.S. 390, 408 (1940)); see also Sands, Taylor &
Wood Co. v. Quaker Oats Co., 978 F.2d 947, 952 n.6 (7th Cir. 1992) (qualified
expert’s opinion on consumer understanding of trademarked term created genuine
issue of material fact as to the mark’s descriptiveness).
For the foregoing reasons, this Court will not strike Bania’s expert report or
exclude his opinions. But to the extent that some of those opinions rely upon the
consumer survey, those portions of his report and opinions are only admissible if the
survey itself is reliable and admissible, as discussed next.
2.

Martensen’s Declaration

To determine the admissibility of the consumer survey—independently and
as support for Bania’s conclusions—this Court must first determine the
admissibility of Martensen’s declaration. For the reasons explained in this section,
the consumer survey cannot be admitted unless it is introduced by the expert who
conducted it.

Although experts like Bania may generally rely upon studies

conducted by other experts in forming their opinions, see Fed. R. Evid. 703, this is
not the case when such studies involve discretionary expertise that the testifying
expert lacks, see Dura Auto. Sys. of Ind. v. CTS Corp., 285 F.3d 609, 614 (7th Cir.
2002). As explained below, because Bania admits that he is not a survey expert,
and because the consumer survey offered here involves discretion, the survey
requires Martensen’s testimony to be admissible at trial and his sworn support to
be considered at summary judgment. Thus, this Court next considers Plaintiff’s
motion to strike Martensen’s affidavit. [177].
17

Defendant submitted Martensen’s affidavit with its responses to Plaintiff’s
statement of additional facts; it attests to the validity of the consumer survey
conducted by Martensen’s firm.

[171-8].

Plaintiff objects to Martensen’s

declaration on three grounds: (1) Martensen cannot submit a testimonial affidavit
because Defendant designated him as a nontestifying expert; (2) if Martensen is a
testifying expert, Defendant failed to provide the expert report required by Rule 26;
and (3) Plaintiff suffered harm from this undisclosed use of Martensen’s testimony.
[177] at 2, 5. Plaintiff therefore seeks to strike Martensen’s affidavit and bar his
opinions and testimony from consideration now and at trial. Id. at 1.
Because this Court finds no basis to exclude Martensen’s declaration, and
because Defendant’s failure to adhere precisely to the letter of Rule 26 was
harmless, the motion to strike Martensen’s declaration is denied.

Since

Martensen’s declaration constitutes the requisite support for the admission of
Defendant’s consumer survey, this Court sets out in detail the reason for this
ruling.
Plaintiff’s first argues that as a designated nontestifying expert, Martensen
cannot offer any testimonial evidence, including a sworn declaration. [177] at 2.
Plaintiff’s sole support for this exclusionary rule is Dura, 285 F.3d 609. But Dura
requires no such thing.
In Dura, the plaintiffs’ sole named expert admitted in depositions that his
analysis relied upon mathematical models that he lacked the expertise to evaluate.
Id. at 611–12. The defendants used that admission to challenge the inclusion of the
expert’s testimony, and the plaintiffs responded with affidavits from the employees
18

at the expert’s firm who created the models, attesting to their validity. Id. at 612.
Defendants moved to strike those affidavits as untimely, arguing that the
employees constituted new expert witnesses that the plaintiffs failed to disclose
before the court’s deadline. Id. The district court granted the motion to strike, and,
because the original expert’s testimony lacked sufficient reliability absent those
affidavits, the court barred him from testifying as well. Id.
The Seventh Circuit affirmed, holding that the district court did not abuse its
discretion in excluding the plaintiffs’ expert.

Id. at 616.

The mathematical

modeling involved such specialized, discretionary expertise that it could not be
summarily relied upon by someone lacking that expertise, and required its own
expert support. Id. at 615. In so ruling, the Seventh Circuit did not reject the clear
meaning of FRE 703, which allows “an expert to base an opinion in part on what a
different expert believes on the basis of expert knowledge not possessed by the first
expert,” without imposing any “general requirement that the other expert testify as
well.” Id. at 613. The Seventh Circuit was concerned, however, with a situation in
which the “soundness of the underlying expert judgment is in issue,” and held that
where an underlying study is “not cut and dried” but involves “professional
discretion,” the person who produced the study must testify to its adequacy, id. at
613–14.
The models at issue in Dura were sufficiently discretionary to require
testimony from their creators. Id. Since the employees who wrote them were not
previously identified, but were necessary to establish the validity of the study, the
district court reasonably treated them as previously undisclosed experts, whose new
19

reports as to their models were untimely. Id. at 612, 615. Had the mathematical
models not required adaptations involving “a host of discretionary expert
judgments,” but instead been a matter of “routine,” the outcome would have been
different. Id. at 615.
Finally, the Seventh Circuit held that the district court reasonably found that
the plaintiffs’ untimely filing of additional expert reports was harmful and
unjustified, so their failure to comply with Rule 26’s disclosure requirements did not
fall into Rule 37’s safe harbor for “substantially justified” or “harmless” failures to
disclose. Id. at 616; Fed. R. Civ. P. 37(c)(1). The plaintiffs should have known that
the modeling was beyond their original expert’s expertise; discovery had closed by
the time the employees were finally named in the suit; and the withholding of the
employees’ names may have been strategic. Dura, 285 F.3d at 616.
As should be clear from this discussion, Dura affects Bania’s ability to offer
opinions based upon the consumer survey absent supporting testimony from
Martensen, who created the survey.
Martensen’s declaration be excluded.

Dura does not, however, demand that
The Seventh Circuit affirmed the district

court’s exclusion of the supplementary affidavits because: (1) the district court
reasonably treated the newly revealed employees’ affidavits as untimely “experts’
reports”; and (2) the district court reasonably found the late disclosure harmful. Id.
at 612–13, 616. Thus, this Court must determine whether Martensen’s declaration
constitutes an expert report, and if so, whether its untimely production was harmful
or unjustified.

20

On the first point, consumer surveys involve sufficiently discretionary
expertise that they require the testimonial support of someone with expertise in
that field. See Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 397, 394 (7th Cir. 1992)
(discussing potential bias and discretionary choices in conducting consumer
surveys); Simon Property Grp. L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033, 1039
(S.D. Ind. 2000) (“Consumer survey results must be presented through expert
witnesses.”).

Bania has admitted that he is not a survey expert and has not

conducted “a lot of surveys.” [183-6] at 2. Thus, the survey requires Martensen’s
testimony to support its admission. But the need for Martensen’s testimony does
not necessarily mean that his affidavit constitutes an untimely expert report.
Defendant’s situation is similar to that of the plaintiffs in Dura in one key
respect: both erroneously assumed that their experts could permissibly rely upon
another’s expertise, according to the general rule of FRE 703. Here, as in Dura,
Defendant should have planned to have the original expert testify, and that expert
should have provided a formal report as required by FRCP 26(a)(2)(B).

But

Defendant never provided such a report and it seems that Martensen’s affidavit was
not intended to be one: in large part it merely restates the summary of findings
disclosed to Plaintiff in December 2016. Compare [171-8] ¶¶ 1, 3, 4, 5–8, 10, 11,
with [124-19] at 3–5, 15–24. Unlike the affidavits in Dura, Martensen’s affidavit
bolsters previously provided information by including it in a sworn statement
rather than merely offering it as an unsworn attachment; it does not significantly
expand the record on the survey’s methodology. Indeed, Defendant continues to

21

argue that Martensen need not provide an expert report because of his designation
as a nontestifying expert. [183] at 2.
In these circumstances, the affidavit does not constitute an expert report. It
is, however, a testimonial statement from a witness who was (erroneously)
designated a nontestifying expert. Contrary to Plaintiff’s contention, there is no
rule barring such statements from nontestifying experts. Dura did not address this
issue, and the few cases to do so have not held that the statement is barred, but
rather that the privilege normally accorded to nontestifying experts under FRCP
26(b)(4)(D) is waived. See Positive Techs., Inc. v. Sony Elecs., Inc., No. 11-CV-2226
SI (KAW), 2013 WL 1402337, at *2 (N.D. Cal. Apr. 5, 2013); W. Res., Inc. v. Union
Pac. R.R. Co., No. 00-2043-CM, 2002 WL 181494, at *8, 10 (D. Kan. Jan. 31, 2002);
Douglas v. Univ. Hosp., 150 F.R.D. 165, 168 (E.D. Mo. 1993).

Thus, were

Martensen properly considered a nontestifying expert, he would have opened
himself up to discovery by submitting the affidavit. But the parties do not address
the rescission of Martensen’s privilege; the question they pose is whether any rule
bars Martensen’s affidavit, and this Court finds none.
Instead, the situation is this: Defendant erroneously designated Martensen
as a nontestifying expert when, in fact, it needs his testimony to introduce the
consumer survey report. Because Martensen must testify, but Defendant never
provided an expert report regarding his testimony, Defendant failed to comply with
FRCP 26. Thus, the final question is whether Rule 37 excuses that failure.
Rule 37(c)(1) provides that where a party fails to provide information about a
witness as required by Rule 26, courts should exclude that information and witness
22

from consideration “unless the failure was substantially justified or is harmless.”
Whether a failure to comply with Rule 26(a) may be excused under Rule 37 is “left
to the broad discretion of the district court,” Dynegy Mktg. & Trade v. Multiut Corp.,
648 F.3d 506, 514 (7th Cir. 2011), which may tailor any sanctions to the omission,
see Salgado by Salgado v. Gen. Motors Corp., 150 F.3d 735, 741 n.6 (7th Cir. 1998).
When applying Rule 37, courts consider: “(1) the prejudice or surprise to the party
against whom the evidence is offered; (2) the ability of the party to cure the
prejudice; (3) the likelihood of disruption to the trial; and (4) the bad faith or
willfulness involved in not disclosing the evidence at an earlier date.” David v.
Caterpillar, Inc., 324 F.3d 851, 857 (7th Cir. 2003).
Here, Defendant’s failure to provide an expert report was harmless, mainly
because Defendant made substantial, timely disclosures about both Martensen and
the survey. Defendant included Martensen in its expert disclosure to Plaintiff in
December 2016, stating that he would conduct a consumer survey that would
inform Bania’s opinions, and noting that although Martensen was considered a
nontestifying expert, he might “be called to testify on the methodology of the survey
if needed.”

See [183-5] at 2–3; [183-2].

Although this statement should have

signaled to Defendant that Martensen needed to produce an expert report, it still
gave Plaintiff clear notice of Martensen’s potential testimony well before the close of
expert discovery, let alone trial.

See [114].

Moreover, Defendant included

substantial detail about the survey’s design and methodology in the findings report
disclosed to Plaintiff in December 2016.

See [124-19] at 3–5, 15–24.

Finally,

although Defendant did not provide as detailed a resume for Martensen as for
23

Bania, Defendant gave Plaintiff a two-page summary of his credentials at that time.
See [157-18] (indicating receipt by December 7, 2016); [157-20].
In light of these disclosures, this Court finds no likelihood of surprise to
Plaintiff as to the nature or substance of Martensen’s testimony, or of the consumer
survey. This minimizes the prejudice to Plaintiff, who, in any event, had ample
opportunity to depose Martensen and did not do so.

Designating Martensen a

nontestifying expert did not shield him from discovery: where a nontestifying
expert’s report forms the basis for an expert’s opinion, the nontestifying expert may
be deposed. See Fed. R. Civ. P. 26(a)(2)(B)(ii), (b)(4)(A); Estate of Manship v. United
States, 240 F.R.D. 229, 238 (M.D. La. 2006); Herman v. Marine Midland Bank, 207
F.R.D. 26, 30–32 (W.D.N.Y. 2002); Derrickson v. Circuit City Stores, Inc., No. DKC
95-3296, 1999 WL 1456538, at *7 (D. Md. Mar. 19, 1999), aff’d on other grounds sub
nom. Johnson et al. v. Circuit City Stores, 203 F.3d 821 (4th Cir. 2000); Hartford
Fire Ins. Co. v. Pure Air on the Lake Ltd., 154 F.R.D. 202, 208 (N.D. Ind. 1993);
Eliasen v. Hamilton, 111 F.R.D. 396, 401 (N.D. Ill. 1986) (discovery into
nontestifying experts permissible where the party seeking discovery is unable to
obtain equivalent information from other sources). Ample warning and failure to
seek additional information supports the application of Rule 37’s safe harbor. See
David, 324 F.3d at 857.
Finally, this Court cannot conclude that Defendant acted in bad faith given
the spectrum of discretionary expertise that Dura and FRE 703 create—on one end,
“routine” studies and surveys may be relied upon by testifying experts; on the other,
“discretionary” surveys must be supported by testimony from their creators. Dura,
24

285 F.3d at 615.

Defendant misread the spectrum, but still provided sufficient

information so that no “tactic of surprise” could have affected “the outcome of the
case.” Sherrod v. Lingle, 223 F.3d 605, 613 (7th Cir. 2000).
Under such circumstances, Defendant’s failure to strictly comply with Rule
26(a)’s expert report requirement as to Martensen was harmless.

Moreover,

submitting Martensen’s affidavit did not harm Plaintiff because the affidavit
primarily restated information that Defendant had previously disclosed. This Court
declines to strike Martensen’s affidavit, or exclude his statements and testimony.
Because Martensen’s affidavit and testimony are admissible, this Court will
also admit the consumer survey Martensen produced, provided it is sufficiently
reliable and complies “with the principles of professional survey research.” Evory v.
RJM Acquisitions Funding LLC, 505 F.3d 769, 776 (7th Cir. 2007).
3.

The Consumer Survey

Plaintiff seeks to exclude the consumer survey that Martensen produced and
Bania relied upon because “no expert has opined regarding the methodology
employed.” [148] at 14. As discussed above, however, the survey findings disclosed
to Plaintiff in December 2016 contained significant information on the methodology
of the survey.

[124-19].

Martensen’s affidavit, which this Court has admitted,

provides sworn support for that information. [171-8]. No categorical bar prevents
admitting the consumer survey under these circumstances, nor does Plaintiff point
to any. Rather, the admissibility of the survey turns on its reliability, which this
Court will now consider.
The Seventh Circuit has said that for a consumer survey to be admissible, it
25

“must comply with the principles of professional survey research,” Evory, 505 F.3d
at 776, and should not rely upon “leading or suggestive” questions, Muha v. Encore
Receivable Mgmt., Inc., 558 F.3d 623, 625–26 (7th Cir. 2009). A reliable survey
must “replicate market conditions” and remain free of bias. Spraying Sys., 975 F.2d
at 396.

Courts in this district have supplemented those general principles by

considering factors drawn from cases cited with approval by the Seventh Circuit,
including: “whether (1) the ‘universe’ was properly defined, (2) a representative
sample of that universe was selected, (3) the questions to be asked of interviewees
were framed in a clear, precise and nonleading manner, (4) sound interview
procedures were followed by competent interviewers who had no knowledge of the
litigation or the purpose for which the survey was conducted, (5) the data gathered
was accurately reported, (6) the data was analyzed in accordance with accepted
statistical

principles

and

(7)

the

objectivity

of

the

entire

process

was

ensured.” Dyson, Inc. v. Bissell Homecare, Inc., 951 F. Supp. 2d 1009, 1017 (N.D.
Ill. 2013).

Courts rarely exclude consumer surveys from evidence, since most

“shortcomings” go to “the proper weight of the survey” rather than admissibility.
AHP Subsidiary Holding Co. v. Stuart Hale, Co., 1 F.3d 611, 618 (7th Cir. 1993).
(i)

The Universe and Sampled Population

Selecting the right universe of respondents significantly affects the probative
value of a consumer survey. See Spraying Sys., 975 F.2d at 394 n.5. An “erroneous
or undefined” universe diminishes the survey’s reliability. Competitive Edge, Inc. v.
Staples, Inc., 763 F. Supp. 2d 997, 1008 (N.D. Ill. 2010).

26

Once the universe is

defined, a sample population must be selected “that accurately represents the
universe.” Id.
Here, the survey report identifies its universe as consumers of cell phones
and cell phone cases who do not work for a cell phone or cell phone accessory
business, or a “marketing agency, research or media company.” [124-19] at 3. This
is a relevant universe to this case, which turns on the perceptions of consumers of
cell phone cases.

The report notes that the sample was selected by Precision

Sample, LLC, “a leading provider of respondents for consumer surveys.” Id. While
this does not give the Court much information to independently evaluate the
sampling, the use of a qualified third-party sampler could increase the impartiality
of the survey. Moreover, in the context of the consumer universe for this case, any
random sampling of cell phone case consumers is likely to be as reliable as any
other, since cell phone cases have a broad, national market that crosses most
demographic boundaries.

Cf. Competitive Edge, 763 F. Supp. 2d at 1008

(considering only college students in consumer survey of calculator consumers was
underinclusive); see also Bobak Sausage Co. v. A&J Seven Bridges, Inc., No. 07-C4718, 2010 WL 1687883, at *6 (N.D. Ill. Apr. 26, 2010) (questions narrowing
respondents to likely consumers helped create an appropriate universe).

The

universe of respondents is therefore sufficiently reliable.
(ii)

The Questions

The next factor asks whether the questions given to survey respondents were
clear, precise, and nonleading. Dyson, 951 F. Supp. 2d at 1017. The questions used
in this survey satisfied these conditions. See [124-19] at 15–23. The phrasing is
27

unambiguous, see, e.g., id. at 16 (“Can you recall the brand name of the case of your
primary cell phone?”), and the questions allow consumers a range of response
options where appropriate, rather than forcing “yes” or “no” answers, see id. at 18;
Competitive Edge, 763 F. Supp. 2d at 1008–09. Nor are the questions biased or
leading: the survey randomized answers in multiple choice questions and did not
unduly emphasize either party’s brand name, mark, or product. See [124-19] at 19–
20; cf. Bobak Sausage, 2010 WL 1687883, at *6 (survey improperly suggested
answers by emphasizing certain choices).
Finally, the questions are reasonably designed to identify consumer
perceptions of the term “Capsule” in relation to cell phone cases, which is relevant
to the strength and protectability of Plaintiff’s mark, as discussed below. The fact
that the survey does not appear to have included images of the products somewhat
weakens its value, given the relevance of the mark’s appearance to consumer
confusion, but does not seriously undermine it since the “Capsule” mark has no
particular visual content. Rather, both parties merely use similar, sans-serif fonts.
See [149-11]; [149-18]; [149-19]; [124-12]. And, since the survey provides evidence
as to whether “Capsule” achieved a “secondary meaning” with consumers—which
requires that consumers identify the trademark “as the name of the product,”
Packman v. Chi. Tribune Co., 267 F.3d 628, 639 (7th Cir. 2001)—presenting
“Capsule” with minimal context is a valuable measure of its stature in the market.
Thus, the questions are sufficiently reliable to support admission of the
survey. See McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1172 (7th
Cir. 1986) (The “manner of presentation to the interviewee goes to the weight to be
28

accorded to the survey results rather than providing a reason to ignore the survey
evidence altogether.”).
(iii)

Interview Procedures

This factor addresses whether the interviewers followed professionally
“sound” procedures so as to minimize the potential for procedural bias. See Dyson,
951 F. Supp. 2d at 1017. This Court has little information on this point, other than
the fact that Goldmarks conducted the survey online through the third-party
platform SurveyMonkey, [124-19] at 4, and “complied with the general principles of
professional survey research,” per Martensen’s sworn statement, [171-8] ¶ 5.
Despite the meagerness of the record on this point, it is difficult to see how an
online survey suffers the risk of bias presented by human interviewers, which is
what this factor seeks to identify. Here, this Court will not exclude the survey for
lack of further information when the available information offers no reason to doubt
the survey’s impartiality. See Bobak Sausage, 2010 WL 1687883, at *8 (admitting
consumer survey even though sparse record raised some doubts as to its design).
(iv)

Accurate and Objective Data

The record shows the same flaws in this factor as in the previous one. Little
information exists about the survey’s method of calculating and reporting data,
other than that the information collected through SurveyMonkey was converted
into percentages, see [124-19] at 4, 6–13, and was “accurately gathered and
reported,” according to Martensen, [171-8] at 6. Again, however, the format and
approach of the survey is relatively simple and this Court has no reason to doubt
the effectiveness of this “no-frills” approach, which does not appear to have required
29

sophisticated algorithms or data coding. See Bobak Sausage, 2010 WL 1687883, at
*8; cf. Dyson, 951 F. Supp. 2d at 1020 (scrutinizing coding undertaken by human
coders subject to bias).
(v)

Summary

In sum, this Court finds that Defendant’s consumer survey is not “so flawed
as to be completely unhelpful to the trier of fact and therefore inadmissible.” Stuart
Hale, Co., 1 F.3d at 618. Rather, its shortcomings go “to the weight to be accorded
to the survey results rather than providing a reason to ignore the survey
altogether.” Id. (quoting McGraw-Edison Co., 787 F.2d at 1171–73).
4.

Defendant’s Additional Affidavits

Plaintiff next challenges affidavits submitted by defense counsel [124-57],
and Defendant’s manager Sang Jun [124-59], for lack of personal knowledge, [158]
at 12-14. FRCP 56(c)(4) requires that affidavits made in support of a motion for
summary judgment “be made on personal knowledge, set out facts that would be
admissible in evidence, and show that the affiant” is “competent to testify on the
matters stated.” Personal knowledge includes inferences and opinions, but these
“must be grounded in observation or other first-hand personal experience.” Visser v.
Packer Eng’g Assoc., Inc., 924 F.2d 655, 659 (7th Cir. 1991); see also EEOC v.
Admiral Maint. Serv., L.P., 174 F.R.D. 643, 647 (N.D. Ill. 1997). Mere speculation
about “matters remote from that experience” fails to conform to the rule. Visser,
924 F.2d at 659.
With respect to the affidavit from defense counsel [124-57], Plaintiff
specifically challenges paragraphs 9 and 55, describing defense counsel’s web search
30

for the parties’ Capsule products and Plaintiff’s failure to use the ® designation
with its mark on certain of those products. [158] at 13. There is no paragraph 55 in
this affidavit, but this Court understands Plaintiff to object to paragraph 4, which
addresses Plaintiff’s use of the ® designation. See [124-57] ¶ 4. Paragraph four
relates to counsel’s observation of an image of Plaintiff’s product, contained in the
record, which is a permissible inference based upon personal observation.

See

Admiral Maint., 174 F.R.D. at 648. Paragraph nine describes counsel’s search for
Plaintiff’s products on Amazon.com in May 2017, and attests that the search results
included as Exhibit 22 [124-23] are “true and correct copies” of his search results.
[124-57] ¶ 9. This is the definition of personal knowledge, since counsel himself
conducted the search. This Court declines to strike paragraphs four and nine of
defense counsel’s affidavit.
With respect to Sang Jun’s affidavit, this Court finds that one of Jun’s
statements is not clearly the result of personal knowledge, and Defendant has
therefore failed to that Jun is “competent to testify on the matters stated.” Fed. R.
Civ. P. 56(c)(4).

Although it may sometimes be inferred that the affiant had

knowledge of certain events based upon his position within an organization and
involvement in relevant circumstances, Ladenberger v. Gen. Signal Pump
Grp./Aurora Pump, No. 00-c-4054, 2001 WL 586497, at *1 (N.D. Ill. May 31, 2001)
(citing Barthelemy v. Air Lines Pilots Ass’n, 897 F.2d 999, 1018 (9th Cir. 1990)), this
is not the case with paragraph eight of Jun’s affidavit. Although Jun is Defendant’s
“Manager of General Affairs” and oversees “day to day operations,” [124-59] ¶ 1,
this does not explain how he knows that Spigen “has developed a reputation” for
31

“high quality and minimalist design,” id. ¶ 5.

Although this statement cites

Defendant’s expert report, it must more clearly point to the source of this knowledge
or at least indicate that Jun examined the report.
With respect to paragraph 10 of Jun’s affidavit, it is clear that Jun concluded
that the term “capsule” is used by other cell phone case manufacturers based upon
his review of Defense Exhibit 9 [124-10], showing capsule-labeled cell phone cases
sold by third parties.

As noted, inferences from matters in the record are

permissible under Rule 56. See Admiral Maint., 174 F.R.D. at 648. The remainder
of Jun’s statements relate to Spigen’s ordinary business practices and this Court
infers that they draw upon his personal knowledge as Spigen’s manager.

See

Ladenberger, 2001 WL 586497, at *1. This Court therefore strikes paragraph eight
of Jun’s affidavit, but admits the remaining statements.
5.

Defendant’s Motion to Withdraw Answers

Defendant seeks to withdraw its answers to numbers 18, 23, 24, and 47 of
Plaintiff’s requests for admission (RFAs). [180]. FRCP 36(b) gives district courts
discretion to “permit withdrawal or amendment if it would promote the
presentation of the merits of the action and if the court is not persuaded that it
would prejudice the requesting party.”

The party seeking to withdraw its

admissions must show good cause. Howard v. Sheahan, 546 F. Supp. 2d 566, 568
(N.D. Ill. 2008). Even if these prerequisites are met, courts may refuse to permit
withdrawal. See United States v. Kasuboski, 834 F.2d 1345, 1350 n.7 (7th Cir. 1987)
(Admissions may be withdrawn under Rule 36(b) “if certain conditions are met and
the district court, in its discretion, permits the withdrawal.”).
32

This Court grants Defendant’s request to withdraw its response to RFA 18.
RFA 18 asked Defendant to admit that the “term ‘CAPSULE’ as used by Spigen and
Uncommon’s CAPSULE mark are identical in appearance.”

[149-8] at 6.

This

Court first notes that this RFA is problematic because it essentially aims “to
establish the ultimate legal question.” McNary v. Hamer, No. 14-cv-01897-WTLTAB, 2016 WL 4140945, at *2 (S.D. Ind. Aug. 4, 2016).

More importantly,

Defendant’s response contains an erroneous denial, controverted by the evidence,
that it used the trademarked term “Capsule” alone. See [149-8] at 7; R. PSOF ¶ 9;
[149-11] at 2. Thus, the merits of the case are aided by the withdrawal of this
denial.

The withdrawal cannot prejudice Plaintiff, since Defendant’s use of

“capsule” alone more closely resembles Plaintiff’s mark, and thus favors Plaintiff’s
infringement claim.
This Court denies, however, Defendant’s request to withdraw its responses to
RFAs 23, 24, and 47. In response to RFAs 23 and 24, Defendant admitted that its
products were similar and/or identical to Plaintiff’s. [149-8] at 10. Defendant now
seeks to withdraw both admissions on the grounds that the distinct coloration and
designs on the parties’ cell phone cases render the products distinct. [180] at 5–6.
This is contrary to the law governing product similarity, which asks whether
consumers are likely believe that “a single source could produce both” products,
McGraw-Edison Co., 787 F.2d at 1169, and if the products are competitive, see
Knaack Mfg. Co. v. Rally Accessories, Inc., 955 F. Supp. 991, 1000 (N.D. Ill. 1997).
The decorative aspect of these cases affects neither inquiry. The parties’ cases could
replace one another and are thus competitive, id., and a single company could
33

produce more than one kind of cell phone case.

Thus, Defendant’s request for

withdrawal relies upon a distinction unsupported by law.
In Defendant’s response to RFA 47, Defendant admitted that “it does not
appear SPIGEN used the term ‘CAPSULE’ prior to” Plaintiff’s first use of the mark
in December 16, 2009. [149-8] at 15. Now Defendant argues that its earlier use of
“capsule” to describe a decorative pattern of medicine capsules on a cell phone
sticker proves this admission false. [180] at 7. This Court has already discussed
why the use of the cell phone sticker is largely irrelevant to the merits of this case.
To the extent that it is relevant, Plaintiff would be prejudiced by its withdrawal at
this late hour. Plaintiff cited this admission in its briefing, see, e.g., [148] at 19,
which represents “detrimental reliance” upon the admission, see Matthews v.
Homecoming Fin. Network, No. 03-c-3115, 2006 WL 2088194, at *3 (N.D. Ill. July
20, 2006) (internal quotation marks omitted). Moreover, the fact that Defendant
waited to amend its answer for over a year after it submitted its supplemental
responses to Plaintiff’s RFAs, see [180-2] at 19, and after the parties’ motions for
summary judgment were fully briefed, strongly indicates unfair prejudice to
Plaintiff, see Matthews, 2006 WL 2088194, at *3; Tidwell v. Daley, No. 00-c-1646,
2001 WL 1414229, at *1 (N.D. Ill. Nov. 8, 2001).

If Defendant was able to

supplement its responses to Plaintiff’s interrogatories on this issue in 2016, [180-6],
it could and should have moved to amend this answer at that time. Having shown
no cause for this delay, Defendant’s motion is denied as to RFA 47. See Howard,
546 F. Supp. 2d at 568; Matthews, 2006 WL 2088194, at *3.

34

B.

Validity of Plaintiff’s Mark

Defendant’s two extant counterclaims seek the cancellation of Plaintiff’s
mark for genericness and descriptiveness, respectively.

[47].

“Courts classify

marks into five categories of increasing distinctiveness: (i) generic; (ii) descriptive;
(iii) suggestive; (iv) arbitrary; and (v) fanciful.”

Box Acquisitions, LLC v. Box

Packaging Prods., LLC, 32 F. Supp. 3d 927, 934 (N.D. Ill. 2014) (citing Platinum
Home Mortg. Corp. v. Platinum Fin. Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998)).
Generic terms receive no trademark protection, while a descriptive mark only
receives trademark protection “if it acquires secondary meaning in the collective
consciousness of the relevant community.” Platinum, 149 F.3d at 727 (internal
quotation marks omitted). Terms in the other three categories receive protection
“automatically” because “they are inherently distinctive.”

Id.

A district court’s

determination as to where a mark falls “on the continuum between generic and
arbitrary” is “often made on an intuitive basis rather than as the result of a logical
analysis susceptible of articulation.” Money Store v. Harriscorp Fin., Inc., 689 F.2d
666, 674 (7th Cir. 1982).
Here, Defendant contends that Plaintiff’s mark is either generic or
descriptive, and should be canceled in either case because the mark lacks secondary
meaning. [125] at 9–13. Plaintiff argues that it is entitled to the presumption that
its mark is at least suggestive because the USPTO approved its registration. [148]
at 8. Plaintiff is correct that registration entitles its mark to a presumption of
validity. 15 U.S.C. § 115(a). But Defendant may overcome that presumption “with
evidence that the mark is generic or descriptive, or that it lacks secondary
35

meaning.”

Packman, 267 F.3d at 639.

Thus, Defendant bears the burden of

demonstrating that the mark is either generic or descriptive, and, if descriptive,
that it lacks secondary meaning. Id.; see also Custom Vehicles, Inc. v. Forest River,
Inc., 476 F.3d 481, 485 (7th Cir. 2007) (registered mark presumed to have secondary
meaning); Scandaglia v. Transunion Interactive, Inc., No. 09-c-2121, 2010 WL
3526653, at *6 n.1 (N.D. Ill. Sept. 1, 2010) (party contesting the mark must show
that the mark lacks secondary meaning).
Courts have the authority to cancel invalid marks. 15 U.S.C. § 1119. Indeed,
in such circumstances “cancellation is not merely appropriate, it is the best course.”
Cent. Mfg., Inc. v. Brett, 492 F.3d 876, 883 (7th Cir. 2007); see also Specht v. Google,
Inc., 747 F.3d 929, 936 (7th Cir. 2014). A registered mark may be canceled at any
time for genericness; a descriptive mark may be canceled if the challenger shows
that it lacks secondary meaning and provided the mark has not become
incontestable by remaining in continuous use for five years from its date of
registration. See 15 U.S.C. §§ 1115, 1064, 1065; Park ’N Fly, Inc. v. Dollar Park and
Fly, Inc., 469 U.S. 189, 196 (1985); Nola Spice Designs, LLC v. Haydel Enters., Inc.,
783 F.3d 527, 547 (5th Cir. 2015); Ashland Oil, Inc. v. Olymco, Inc., 64 F.3d 662, at
*2 (6th Cir. 1995).
1.

Plaintiff’s Mark is Not Generic

Count III of Defendant’s counterclaim seeks cancellation of Plaintiff’s mark
for genericness. [47] at 16. “A generic term is one that is commonly used as the
name of a kind of goods.” Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d
934, 936 (7th Cir. 1986). It does not identify a product’s source but “merely specifies
36

the genus of which the particular product is a species.” Id. Because it is “commonly
used to denote the product, a common source of evidence is the dictionary.” Id.
Plaintiff’s mark is not generic. “Capsule” is not “commonly used to denote”
cell phone cases, nor does it clearly specify the broader “genus” of which cell phone
cases are a species. Id. Moreover, Defendant has the burden of proving that the
mark is generic, id. at 938, and Defendant has not pursued this counterclaim in its
motion for summary judgment, let alone offered evidence to support it, see [125].
Therefore this argument is waived, Crespo v. Colvin, 824 F.3d 667, 673 (7th Cir.
2016), and this Court grants summary judgment to Plaintiff on Count III of
Defendant’s counterclaim, Celotex, 477 U.S. at 322–23.
2.

Plaintiff’s Mark is Descriptive

Count IV of Defendant’s counterclaim asserts that Plaintiff’s mark is merely
descriptive and therefore not protectable unless it has a secondary meaning. [47] at
17.

Plaintiff argues that its mark is at least suggestive and thus entitled to

automatic protection. [158] at 19–20.
A descriptive mark “ordinarily names a characteristic of a product or service.”
Sorensen v. WD-40 Co., 792 F.3d 712, 724 (7th Cir. 2015). Descriptive terms “are
generally not protectable as trademarks,” in part “because they are poor means of
distinguishing one source of services from another.” Liquid Controls, 802 F.2d at
936.

The distinction between a descriptive and a suggestive mark is that a

descriptive mark “imparts information directly,” while a suggestive mark “stands
for an idea which requires some operation of the imagination to connect it with the
goods.” Platinum, 149 F.3d at 727 (internal quotation marks omitted). An example
37

of a suggestive mark is “Tide,” which requires imagination to be connected with
soap. See Sands, 978 F.2d at 953. Courts evaluate whether a mark is suggestive or
descriptive from the perspective of the consumer. Id.
Plaintiff’s registered trademark triggers the presumption that it is not
descriptive and Defendant has the burden “not only to overcome” that presumption
“but also to show that there is no genuine issue of material fact” as to
descriptiveness.

See Liquid Controls, 802 F.2d at 937.

But once a defendant

produces sufficient evidence to “burst” the presumption, the plaintiff can no longer
“rely on that presumption to defeat” a motion for summary judgment. Id. at 938.
To prove descriptiveness, parties may offer dictionary definitions, evidence on the
term’s use in the relevant industry, or direct evidence of consumer perceptions. See
Platinum, 149 F.3d at 727; Sands, 978 F.2d at 952–53; M.B.H. Enters., Inc. v
WOKY, Inc., 633 F.2d 50, 55 n.6 (7th Cir. 1980).
Here, Defendant offers dictionary definitions; a finding by the USPTO that
“Capsule” is descriptive as applied to cell phone cases; and relatively common use of
the term among cell phone case suppliers. [125] at 8; DSOF ¶ 8; [124-4] at 6.
Despite this somewhat sparse record, this Court has no trouble concluding that
“capsule” is descriptive as applied to cell phone cases.

The Oxford English

Dictionary defines capsule as a “little case or receptacle.” Capsule, OXFORD ENGLISH
DICTIONARY, OED Online (last visited Nov. 17, 2017). Webster’s defines it as “a
small case, envelope, or covering.” [124-2] at 2. Capsule therefore “specifically
describes a characteristic” of Plaintiff’s cell phone case, which is all that it need do
to be considered descriptive. Sands, 978 F.2d at 952.
38

This Court disagrees with Plaintiff that the move from “capsule” to cell phone
case requires a “mental leap” of the kind required by suggestive terms. [158] at 19.
It is “not necessary that a descriptive term depict the product itself, but only that
the term refer to a characteristic of the product.” Sands, 978 F.2d at 952 (internal
quotation and punctuation marks omitted). This is what is meant by the rule that
descriptive terms “impart information directly.” Packman, 267 F.3d at 641. Here,
“capsule” directly imparts information about a characteristic of Plaintiff’s product:
namely, that it is a case or covering. “Capsule” thus resembles “Work-N-Play,”
which merely described a van used “for work and for play,” Custom Vehicles, 476
F.3d at 483, and “Thirst Aid,” which described a thirst-quenching drink, rather than
“Tide,” which required substantial imagination to summon any idea of soap and was
not a characteristic of soap, see Sands, 978 F.2d at 952. Accordingly, this Court
finds that “capsule” is descriptive of cases for small electronic goods.
3.

Secondary Meaning

A descriptive term may nevertheless be protected if it has acquired secondary
meaning.

Platinum, 149 F.3d at 728.

“Secondary meaning exists only if most

consumers have come to think of the word not as descriptive at all but as the name
of the product.” Packman, 267 F.3d at 639 (internal quotation marks omitted).
Factors used to assess whether a term has secondary meaning include: “(1) the
amount and manner of advertising; (2) the sales volume; (3) the length and manner
of use; (4) consumer testimony; and (5) consumer surveys.” Platinum, 149 F.3d at
728.

Lengthy, exclusive use of a mark can create secondary meaning, but the

inquiry remains whether consumers understand that the relevant term “has come
39

to mean” that “those products or services are the company’s trademark.”

Id.

Because Plaintiff’s mark is registered, it is presumed to have secondary meaning.
Packman, 267 F.3d at 638–39.

Thus, although this Court appreciates “the

difficulties of proving a negative,” Liquid Controls, 802 F.2d at 938–39, Defendant
must show that the mark lacks secondary meaning, Packman, 267 F.3d at 638–39.
Here, Defendant offers evidence that Plaintiff’s use of the term Capsule has
not been exclusive. Defendant has used “Capsule” at least since 2010—only a year
after Plaintiff’s first use—and it is also used by other cell phone case suppliers. See
PSOF ¶ 6; [1-6]; [124-10]. Further, Plaintiff has, at best, used the term for under
eight years; even though it is not impossible that secondary meaning could arise in
that time, this case falls closer on the spectrum to five years (which casts “serious
doubt upon the very possibility” of establishing a “strong secondary meaning”) than
fifty years (which is better proof of an established brand). Gimix, Inc. v. JS&A
Grp., Inc., 699 F.2d 901, 907 (7th Cir. 1983). Moreover, if the period of Plaintiff’s
exclusive use is less than a year (as evidenced by Plaintiff’s first use in 2009 and
Defendant’s 2010 introduction of Capsule products), that fact provides a significant
reason to doubt that the mark achieved secondary meaning, id., particularly in a
market replete with similar products, see Custom Vehicles, 476 F.3d at 484 (noting
the difficulty of establishing secondary meaning in a competitive market for similar
products). Such evidence tends to rebut the presumption of secondary meaning.
Defendant next argues that Plaintiff’s advertising efforts were “minimal,”
and that its sales have dropped since Plaintiff stopped making the Capsule model
for new iPhone generations. [125] at 11. As to advertising, it is far from clear that
40

Plaintiff’s efforts were minimal. The record shows that Plaintiff hired a marketing
firm, used Google ads, ran traditional ads, and sought celebrity placements. See R.
DSOF ¶¶ 24–25; [124-14]. Plaintiff does concede that it used Google ads only briefly
because they were not successful. R. DSOF ¶ 25.
As to sales, Defendant’s sole evidence is that Plaintiff ceased making the
Capsule model for iPhone generations after the 5/5s, but Defendant fails to connect
that fact to reduced sales.

See DSOF ¶¶ 43, 44.

Defendant offers evidence of

Plaintiff’s sales from July 2010 to March 2011, [128], but this hardly covers the full
period of Plaintiff’s Capsule sales, and in any event Defendant provides no evidence
allowing this Court to assess the relative strength of such sales in the cell phone
case market. Thus, these factors do not serve to rebut the presumption of secondary
meaning accorded to Plaintiff’s mark.
The foregoing factors are “circumstantial” evidence of secondary meaning.
Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1085 (7th Cir.
1988). “Consumer testimony and consumer surveys are the only direct evidence” of
secondary meaning.

Id.

Defendant produced the only consumer survey in the

record. [124-19]. The survey shows that among consumers of cell phones and cell
phone cases—excluding employees in the industry—only 6 percent of respondents
were familiar with “Capsule” as a brand name (compared with over 60 percent
familiar with the competing case brand “OtterBox”). Id. at 10. Only 14 percent of
respondents could connect “Capsule” to cell phone cases when prompted. Id. at 11.
As such, the survey indicates that, far from “Capsule” having “come to mean” a cell
phone case in the minds of consumers, it has barely registered with consumers.
41

Thus, Plaintiff’s product does not enjoy “a mental association in buyers’ minds
between the alleged mark and a single source of the product.” Packman, 267 F.3d
at 641 (internal quotation marks omitted). Based upon the record, Plaintiff’s mark
has not acquired a secondary meaning.
In sum, Defendant meets its burden of showing that Plaintiff’s mark is
merely descriptive and lacks secondary meaning. See id. at 639, 641–42. The date
of registration for Plaintiff’s mark is May 21, 2013; it therefore has not been in
continuous use for five years and has not become incontestable. See [149-3]; 15
U.S.C. § 1065.

Accordingly, descriptiveness remains a valid basis upon which

Defendant may seek cancellation of Plaintiff’s mark. See 15 U.S.C. § 1115(a); Park
’N Fly, 469 U.S. at 196; Ashland Oil, 64 F.3d 662, at *2, 5. Because Plaintiff’s mark
is merely descriptive and lacks secondary meaning, it is invalid, see Gimix, 699 F.2d
at 907–08, which makes cancellation “the best course,” Cent. Mfg., 492 F.3d at 883.
This Court therefore grants summary judgment to Defendant on Count IV of
its counterclaim, [47] at 17, and orders the USPTO to cancel U.S. Trademark
Registration No. 4,338,254, see 15 U.S.C. § 1119.
C.

No Likelihood of Confusion

This Court’s conclusion that the “Capsule” mark is descriptive and void of
secondary meaning disposes of Plaintiff’s infringement claims in addition to
Defendant’s counterclaims. See Packman, 267 F.3d at 642. As an alternate basis
for this Court’s ruling on Plaintiff’s claims, this Court finds that Defendant did not
infringe on Plaintiff’s mark because there is no likelihood of consumer confusion.

42

Plaintiff’s claims are for federal trademark infringement under 15 U.S.C. §
1114(a); unfair competition and false designation of origin under 15 U.S.C. §
1125(a); and Illinois common law unfair competition.

[1].

Both federal claims

require Plaintiff to show that: (1) Plaintiff holds a protected right in the mark; and
(2) Defendant’s use is likely to confuse consumers or deceive the public. See S
Indus., Inc. v. Stone Age Equip., Inc., 12 F. Supp. 2d 796, 804 (N.D. Ill. 1998); see
also Packman, 267 F.3d at 639 (requirements for § 1114 claims); G. Heileman
Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 999 (7th Cir. 1989) (discussing §
1125 claims). In Illinois, the common law tort of unfair competition applies to a
broader range of conduct, but here also “depends upon likelihood of confusion as to
the source of plaintiff’s goods when the whole product, rather than just the service
mark, is considered.” Thompson v. Spring-Green Lawn Care Corp., 126 Ill. App. 3d
99, 113 (Ill. App. Ct. 1984); see also James Burrough Ltd. v. Sign of Beefeater, Inc.,
540 F.2d 266, 274–75 (7th Cir. 1976) (both § 1114 and Illinois common law
infringement claims turn on consumer confusion).

Thus, Plaintiff must show a

likelihood of consumer confusion caused by Defendant’s use of “Capsule” to prevail
on all three of its claims.
The Seventh Circuit has identified seven factors to assess whether
Defendant’s use of the trademarked term is likely to confuse consumers: “(1)
similarity between the marks in appearance and suggestion; (2) similarity of the
products; (3) area and manner of concurrent use; (4) degree of care likely to be
exercised by consumers; (5) strength of the plaintiff’s mark; (6) actual confusion;
and (7) intent of the defendant to ‘palm off’ his product as that of another.”
43

Packman, 267 F.3d at 643. No single factor is dispositive but “in many cases, the
similarity of the marks, the defendant’s intent, and actual confusion are
particularly important.” Id. Confusion is a question of fact but may be decided at
summary judgment where the evidence is “so one-sided that there can be no doubt
about how the question should be answered.” Door Sys., Inc. v. Pro-Line Door Sys.,
Inc., 83 F.3d 169, 171 (7th Cir. 1996).
1.

The Marks are Not Confusingly Similar

Courts evaluate the similarity of two marks “in light of what happens in the
marketplace, and not merely by looking at the two marks side-by-side.” Ty, Inc. v.
Jones Grp., Inc., 237 F.3d 891, 898 (7th Cir. 2001) (internal quotation marks
omitted). Taking market conditions into account, courts determine if the marks are
“similar in sound, appearance, meaning, and connotation.” S Indus., 12 F. Supp. 2d
at 813 (internal quotation marks omitted). Relevant considerations include “the
appearance and placement” of the marks, different “packaging, coloring, and
labeling,” Packman, 267 F.3d at 644, and the “use of a prominent brand name” with
the mark, G. Heileman Brewing, 873 F.2d at 999.
Here, it is indisputable that both parties use the trademarked term Capsule,
both alone and in combination with other words or phrases. See [149-11] (Spigen
packaging with “Capsule” alone); [149-19] (Spigen products sold as “Ultra Fit
Capsule,” “Case Capsule Solid,” and others); [124-12] (Uncommon products sold as
“Capsule Case”); [124-28] (Uncommon product sold as “Capsule”). The term is thus
the same in sound, meaning, and connotation, and appears in a similar sans-serif
font, either at the bottom of physical packaging or next to a picture of the product
44

when sold online. See [124-12]; [149-11]; [149-18]; [149-19]. These factors weigh in
favor of the marks’ similarity. See Packman, 267 F.3d at 644; see also S Indus., 12
F. Supp. 2d at 813–14.
But viewing the marks “from a consumer’s marketplace vantage point,” as
this Court must, “the similarities diminish.” S Indus., 12 F. Supp. 2d at 814; see
also James Burrough, 540 F.2d at 275. In every example of the parties’ products
contained in the record, the parties display their respective brand names and logos
prominently in conjunction with the mark. See, e.g., [124-12], [124-30], [149-11].
On both parties’ packaging, the branding and logo are more prominent than the
Capsule mark, which, as described above, often appears in a smaller font size at the
bottom of the packaging. Id. The coloring of the packaging echoes each parties’
brands (blue and white or black for Plaintiff; black and orange for Defendant),
further diminishing the likelihood of confusion. See Packman, 267 F.3d at 644;
Zeibert Int’l Corp. v. After Mkt. Assocs., 802 F.2d 220, 227 (7th Cir. 1986) (use of
different colors with disputed marks reduces likelihood of confusion as to source).
Indeed, the only instance Plaintiff points to where the mark is used without a brand
name is a product listing on its own website, where, in fact, Plaintiff’s logo appears
at the top of the page. See R. DSOF ¶ 47; [124-28].
Once a consumer has arrived at a seller’s dedicated website, little to no
danger exists that the consumer will be confused as to the source of the product he
or she is purchasing.

See Door Sys., 83 F.3d at 174 (because trademarks are

“merely an identifier of source,” competitors can use the mark “provided there is no
likelihood” that the source will be confused). On third-party sites like Amazon,
45

where some of the parties’ products are sold, brand names always appear next to
the product names, again reducing the likelihood of confusion. See [1-6]. While the
question is admittedly a closer one with respect to such third-party retailers (since
the parties’ logos and colors are not always visible in search results), the fact that
the brand name appears before the mark, along with a host of individualizing
descriptors of the products, weighs against finding similarities likely to cause
confusion.
Finally, because—as discussed above—this Court considers “Capsule” a
weak, descriptive mark, Defendant’s use of Capsule in combination with other
terms has “less significance” for potential infringement. S Indus., Inc. v. JL Audio,
Inc., 29 F. Supp. 878, 890 (N.D. Ill. 1998) (quoting Henri’s Food Prods. Co. v. Kraft,
Inc., 717 F.2d 352, 356 (7th Cir. 1983)).

This, of course, only applies to those

products using Capsule in conjunction with other terms.
Overall, considering the disputed Capsule products in their market
conditions, this Court finds that their distinct “packaging, coloring, and labeling,”
Packman, 267 F.3d at 644, and “use of a prominent brand name” with the mark, G.
Heileman Brewing, 873 F.2d at 999, minimizes the similarity of the marks, Zeibert,
802 F.2d at 227 (“Prominent display of different names on the marks” can “reduce
the likelihood of confusion even where . . . the marks are otherwise similar.”).
2.
Despite

The Products are Similar
Defendant’s

contention

that

Plaintiff’s

customization

option

distinguishes its product, [125] at 22, the parties’ products—cell phone cases—are
clearly similar.

Two products are similar when they are “the kind the public
46

attributes to a single source.” Ty, Inc., 237 F.3d at 899. Consumers could certainly
believe that “a single source could produce both” types of cases, McGraw-Edison
Co., 787 F.2d at 1169, and the cases are competitive because a consumer could
replace one with the other, see Knaack, 955 F. Supp. at 1000.
That said, consumers are, in the context of the market for cell phone cases,
unlikely to believe that Defendant’s and Plaintiff’s products actually come from the
same source. This is due to the distinct appearance of the marks and because, with
countless cell phone cases on the market from a wide range of suppliers, see [12410], no consumer is likely to assume that any two cell phone cases come from the
same manufacturer unless the branding indicates this to be true, cf. Ty, Inc., 237
F.3d at 899–900 (finding the fame of the “Beanie” mark together with plaintiff’s
previous licensing of the mark increased likelihood that consumers would attribute
the defendant’s “Beanie Racers” to plaintiff).

Thus, though the products are

undoubtedly similar, this factor deserves little weight when viewed in context.
3.

The Area and Manner of Use is Similar

To assess the concurrent use factor, courts examine whether “there is a
relationship in use, promotion, distribution, or sales between the goods or services
of the parties.” Id. at 900. Additional considerations include “whether the parties
use the same channels of commerce, target the same general audience, or use
similar marketing procedures.” Sorensen, 792 F.3d at 730.
Here, both parties distribute their products nationally, including through
their own websites and online retailers like Amazon and eBay. PSOF ¶¶ 11, 13, 14;
[1-6]; [124-28]; [124-34]. The parties’ Capsule cases can appear in the same online
47

shopping search results. See [1-6]; [124-9] at 8. The parties thus avail themselves
of similar distribution means and channels of commerce.
Arguably the parties target somewhat different demographics.

Compare

[124-28] (Uncommon website featuring customized phone with photo of a mother
and child) with [124-34] at 4–12 (Spigen website advertising cases as “Military
Grade” with banner showing soldiers). But construed in the light most favorable to
Plaintiff, the record fails to disprove that the parties target the same “general
audience” of cell phone case consumers. Sorensen, 792 F.3d at 730.
On balance, the concurrent use factor favors Plaintiff, given the similar
listings of the Capsule products on third-party web platforms and their concurrent
national reach. But Plaintiff offers no evidence of similarities between the parties’
promotional or marketing activities, which could be significant in determining
whether the parties’ products truly compete with one another. See JL Audio, 29 F.
Supp. 2d at 891–92 (factors to determine whether products are truly in competition
include whether they are sold in the same stores and sections of stores, or use the
same “means of advertising”). Because “cell phone case consumers” describes much
of the American public, the lack of evidence as to what part of that market the
parties actually target leaves open the possibility that they pursue very different
consumers. Thus, this minimal showing of “direct competition” between the parties’
products reduces the weight of this factor. See id. (citing Smith Fiberglass Prods.,
Inc. v. Ameron, Inc., 7 F.3d 1327, 1330 (7th Cir. 1993)).
4.

Consumers Are Likely to Exercise Care

The degree of care factor assesses how sophisticated and discriminating the
48

relevant consumers are in purchasing the disputed products. See Rust Env’t &
Infrastructure, Inc. v. Teunissen, 131 F.3d 1210, 1217 (7th Cir. 1997).

When

consumers are sophisticated—for example, if the relevant purchasers are primarily
within a commercial industry—they exercise a high degree of care, minimizing the
likelihood of confusion.

Id.

Where consumers might buy something quickly or

impulsively—for example, because the product is inexpensive and replaceable—
there is a greater likelihood of confusion. See TV Land, L.P. v. Viacom Int’l, Inc.,
908 F. Supp. 543, 552 (N.D. Ill. 1995). Thus, the degree of care can relate to price
point.

See Maxim’s Ltd v. Badonsky, 772 F.2d 388, 393 (7th Cir. 1985).

But

purchases related to taste, artistic expression, or other subjective experiences are
likely to be discriminating regardless of price. See JL Audio, 29 F. Supp. 2d at 892;
Tsiolis v. Interscope Records, Inc., 946 F. Supp. 1344, 1356 (N.D. Ill. 1996).
Here, cell phone cases can be low-cost, but their prices vary widely.
Defendant’s cases commonly sell for $14.99, [149-19, 149-21], while Plaintiff’s cases
have sold for as much as $39.95, [124-24] at 2, with others listed at $24.95, [124-28]
at 2.

Widely varying prices—particularly of goods in a competitive market—

indicate that consumers are likely to exercise a greater degree of care. Knaack, 955
F. Supp. at 1001 (“Because car covers at mass merchandisers are sold at different
price points and in competition with competing covers, consumers can be expected
to inspect the product information before purchasing.”).

Additionally, with the

variety of phones and generations of phone on the market, consumers “must make
certain that they are buying the right size” and type of case “to meet their needs”—
another reason to exercise care. Id.
49

Plaintiff offers no evidence other than price to show that consumers buy cell
phone cases impulsively.

See [148] at 13. Plaintiff does point to Defendant’s

consumer survey as evidence that consumers use little care in selecting their cases
because consumers often could not recall the brand name of their case. [158] at 28.
The survey, however, shows that nearly half of respondents did know the brand of
their case, and in any event, the respondents cited a number of factors that weighed
more heavily in their purchasing decisions, including cost, level of protection,
design, functionality, online reviews, and whether it fits their phone. [124-19] at 7,
8. Such considerations indicate that consumers take time to assess a variety of
attributes of phone cases, including aspects like design and specific fit that courts
have found indicate a higher degree of consumer care. See JL Audio, 29 F. Supp. 2d
at 892; Knaack, 955 F. Supp. at 1001.
If anything, Plaintiff’s own marketing materials and customization features
show that cell phone cases can be a means of subjective self-expression, see [124-15],
[124-14] at 7–15, which means that consumers are likely to be discriminating in
such purchases regardless of price, see Tsiolis, 946 F. Supp. at 1356.
Plaintiff asserts that its failure to offer evidence of care leaves this factor
“neutral,” [158] at 28, but that is not the case.

Although this Court construes

inferences in Plaintiff’s favor on Defendant’s summary judgment motion, it is still
Plaintiff’s burden to establish the elements of its claims, Celotex, 477 U.S. at 322–
23, which here requires demonstrating a likelihood of consumer confusion, see S
Indus., 12 F. Supp. 2d at 804. Thus, Plaintiff’s failure to introduce evidence may be
fatal to its claims. See Packman, 267 F.3d at 646. In any event, Plaintiff does not
50

create a genuine issue of material fact with respect to consumer care, and this factor
weighs in favor of Defendant.
5.

Plaintiff’s Mark is Weak

For purposes of consumer confusion analysis, a mark’s strength depends
upon two elements: first, how inherently distinctive it is, based upon where the
mark falls on the spectrum between generic and arbitrary, and second, whether the
public considers the mark to indicate a “particular source,” which may be the result
of the mark’s distinctiveness, “wide and intensive advertisement,” or both.

See

Telemed Corp. v. Tel-Med, Inc., 588 F.2d 213, 219 (7th Cir. 1978).
This Court already found Plaintiff’s mark so lacking in distinctiveness as to
be void for descriptiveness. Use of a descriptive term in a mark may mean that
“that feature of the mark” is “of less significance in designating a source of origin.”
Henri’s Food Prods., 717 F.2d at 356.

Thus, Defendant’s use of the mostly

descriptive term “capsule” in its marks is not a strong indicator of their products’
source, and is unlikely to cause consumer confusion. Additionally, the record shows
that the term capsule is used by various makers of cell-phone cases, beyond the
parties to this case. See [1-6]; [124-8]; [124-9] at 8, 11. Such wide use of similar
terms by different companies further weakens the mark. See One Indus., LLC v.
Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1164–65 (9th Cir. 2009); see also Packman,
267 F.3d at 646 (“widely used descriptive phrase” indicated a weak mark); Blau
Plumbing, Inc. v. S.O.S. Fix-It, Inc., 781 F.2d 604, 610 (7th Cir. 1986) (use of
contested “location boxes” by many competitors indicated plaintiff’s mark was
weak).
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Plaintiff offers no evidence directed to this factor, other than its earlier
arguments that its mark is not descriptive, which this Court already discussed.
Beyond that, Plaintiff argues without citation that its lengthy use of the mark and
the “success of Plaintiff’s business stemming from using the mark” prove the mark’s
strength. [158] at 27. Although Plaintiff provides certain sales records, see e.g.,
[150-1], it offers no evidence linking the sales to the mark (rather than, for example,
the customizable feature of the Capsule case), nor does Plaintiff offer any evidence
that the mark has the kind of “fame” with consumers that supports an inference of
strength, see Telemed, 588 F.2d at 219.

Nor do the not-quite eight years of

Plaintiff’s use of the mark constitute “lengthy use.” In Telemed, the Seventh Circuit
found that the plaintiff’s use of the mark for nine years failed to constitute a
sufficient period for that consideration to affect the strength of the mark. Id.
Finally, Plaintiff points to Defendant’s consumer survey (despite contending
elsewhere that it is inadmissible). [158] at 27, [148] at 14. Plaintiff argues that
because the survey shows its brand recognition equals Defendant’s, its mark is
strong. The survey, however, shows that no consumers were able to name either
Plaintiff, Defendant, or “Capsule” as brands of cell phone cases when unaided, and
only six percent were familiar with Capsule as a cell phone case brand when
presented with it as a suggestion. [124-19] at 9, 10. Thus, Plaintiff’s mark is weak.
6.

No Evidence of Actual Confusion

Although proof of actual confusion among consumers is not required to prove
likelihood of confusion, “courts often view evidence of actual confusion as the best
evidence of likelihood of confusion.” Union Carbide Corp. v. Ever-Ready Inc., 531
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F.2d 366, 383 (7th Cir. 1976). The importance of this factor “is greater when the
products involved are low value items because purchasers are unlikely to complain
when dissatisfied, which would bring to light confusion.”

Id.

Additionally,

concurrent use of a disputed mark “without any instances of actual confusion
weighs heavily against finding any likelihood of confusion.” S Indus., 12 F. Supp. at
818. In some cases, “lack of evidence of actual confusion” may be “conclusive” on the
issue of consumer confusion. Box Acquisitions, 32 F. Supp. 3d at 939 (citing Nike,
Inc. v. Just Did It Enters., 6 F.3d 1225, 1231 (7th Cir.1993)).
Here, Plaintiff admits that it has no evidence of actual confusion between its
Capsule cases and Defendant’s, R. DSOF ¶ 52, which ought to end the matter.
Despite this, Plaintiff asserts that Defendant has admitted the likelihood of
consumer confusion, which it argues is dispositive of the entire confusion inquiry.
[148] at 15. However, the paragraphs in Defendant’s Answer that Plaintiff points to
pertain to Count II of Defendant’s counterclaim asserting prior use of the mark, [47]
¶¶ 38–40, which this Court dismissed, [62] at 15, and in any event contain no direct
admission of confusion. Nor do Defendant’s admissions elsewhere clearly admit
consumer confusion.

Instead, Defendant’s responses to Plaintiff’s requests for

admission (RFAs) merely preserve its defense that Defendant is the senior user of
the mark, [149-19] (RFA Nos. 55, 57), and in one instance argues—presumably in
service of its since-abandoned counterclaim—that Plaintiff’s mark is subject to
cancellation because of Defendant’s senior use of the mark, id. (RFA No. 64).
In no way do these responses resemble the circumstances of the cases cited by
Plaintiff, which either do not support Plaintiff’s position, are confined to specific
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factual circumstances, are out-of-circuit opinions that fail to persuade this Court, or
some combination of the above. See, e.g., Days Inns Worldwide, Inc. v. Lincoln Park
Hotels, Inc., 500 F. Supp. 2d 770, 774–75 (N.D. Ill. 2007) (defendants admitted
confusion at least in part because purpose of motion was to shift blame to another
defendant and in any event dispositive issue was lack of evidence, not admissions);
Martahus, 3 F. 3d at 419–20 (both parties agreed that there was a likelihood of
confusion so the case did not present the issue).
Thus, Plaintiff fails to offer evidence of actual confusion.

This factor

necessarily favors Defendant, and provides added significance here because of the
relative ease of replacing low-cost or mid-range cell phone cases.

See Box

Acquisitions, 32 F. Supp. 3d at 939. Moreover, this factor is one of the three given
particular importance by the Seventh Circuit, Packman, 267 F.3d at 643, and thus,
this Court gives it appropriate weight.
7.

No Evidence of Intent to Palm Off

The final confusion factor is the third “particularly important” factor. See
Packman, 267 F.3d at 643. The “intent to palm off” factor asks whether the alleged
infringer is “trying to get sales from a competitor by making consumers think that
they are dealing with that competitor, when actually they are buying from the
passer off.” G. Heileman Brewing, 873 F.2d at 1000. This constitutes “a type of
fraud.”

Liquid Controls, 802 F.2d at 940.

It cannot be proven by “the mere

similarity of names” or even mere “copying,” particularly where the copied term is
descriptive. Id. It requires some evidence of the defendant’s bad faith, which can
be countered by evidence that the defendant intended “to promote itself as the
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source” of the product. Packman, 267 F.3d at 644. Distinctive appearances and a
“clearly stated designation of origin” weigh against finding an intent to palm off.
Door Sys., Inc. v. Overhead Door Sys., Inc., 905 F. Supp. 492, 496 (N.D. Ill. 1995).
Here, use of the mostly descriptive term “capsule” does not lend itself to
finding bad faith on Defendant’s part. Additionally, the distinctive appearance of
Defendant’s Capsule product packaging along with the constant application of
Defendant’s brand name (the “designation of origin”) weigh against finding the
intent to palm off. See, e.g., [149-11]; Overhead Door Sys., 905 F. Supp. at 496.
Plaintiff argues that Defendant’s knowledge of its mark’s existence shows
bad faith, [148] at 17, but the Seventh Circuit has held that mere knowledge of a
competitor or its mark does not show fraudulent intent, particularly where the
phrase is widely used or the marks’ appearances are distinct, Packman, 267 F.3d at
644–45 (citations omitted).

Nor do Defendant’s continued applications to the

USPTO to register its Capsule family marks necessarily indicate bad faith, as
Plaintiff suggests. [158] at 30. Rather, Defendant may have reasonably considered
that Plaintiff’s mark did not bar Defendant’s use of the term “capsule,” particularly
once the USPTO approved Defendant’s application for “Capsule Capella.”

See

Knaack, 955 F. Supp. at 1004 (USPTO approval of allegedly similar mark may
weigh against finding intent to palm off). Plaintiff’s conclusory assertions to the
contrary do not create a genuine issue of material fact. Packman, 267 F.3d at 645.
8.

Summary

Thus, the three most important factors—“the similarity of the marks, the
defendant’s intent, and actual confusion”—all favor Defendant, as do the degree of
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care and strength of the mark. Packman, 267 F.3d at 643. Overall, “there can be
no doubt” that Defendant’s use of “capsule” is unlikely to cause consumer confusion.
Door Sys., 83 F.3d at 171.

Because this is a necessary element of all three of

Plaintiff’s claims, this Court grants Defendant’s motion for summary judgment on
those claims. See Packman, 267 F.3d 628 (affirming summary judgment where
plaintiff failed to demonstrate likelihood of confusion).
IV.

Conclusion
For the reasons explained above, this Court grants in part and denies in part

the parties’ motions for summary judgment.

[123, 147].

This Court grants

Defendant summary judgment on all of Plaintiff’s claims and on Defendant’s
counterclaim that Plaintiff’s mark is merely descriptive without secondary meaning.
This Court grants Plaintiff summary judgment on Defendant’s counterclaim that
Plaintiff’s mark is generic. Because Plaintiff’s mark is merely descriptive and lacks
secondary meaning, this Court orders the USPTO to cancel U.S. Trademark
Registration No. 4,338,254. 15 U.S.C. § 1119.
Because this Court does not award Plaintiff damages, Defendant’s motion to
strike Plaintiff’s expert report on damages [107], is denied as moot.
This Court also denies Plaintiff’s motion to strike Defendant’s expert report
[104], and Plaintiff’s motion to strike Kirk Martensen’s affidavit [177]. Defendant’s
motion to withdraw or amend certain requests for admission [180] is granted in part
and denied in part, as discussed above.
Judgment is entered in favor of Defendant and against Plaintiff on Plaintiff’s
complaint for trademark infringement.
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[1].

Judgment is entered in favor of

Plaintiff and against Defendant on Count III of Defendant’s counterclaim. [47].
Judgment is entered in favor of Defendant and against Plaintiff on Count IV of
Defendant’s counterclaim. Id. Civil case terminated.
Dated: March 26, 2018
Entered:
____________________________
John Robert Blakey
United States District Judge

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