United States District Court, D. Minnesota
Kristine M. Boylan and Michael M. Sawers, BRIGGS & MORGAN, PA, for plaintiff.
Raymond Rundelli and Thomas R. O'Donnell, CALFEE, HALTER & GRISWOLD, LLP, and Christopher A. Pinahs and Mark D. Schuman, CARLSON CASPERS, for defendant.
MEMORANDUM OPINION AND ORDER DENYING MOTION FOR A PRELIMINARY INJUNCTION
JOHN R. TUNHEIM, District Judge.
Plaintiff Plasti-Dip International, Inc. ("Plasti Dip") brings this action against competitor Rust-Oleum Brands Co. ("Rust-Oleum") for trademark infringement and unfair competition in violation of the Lanham Act, 15 U.S.C. §§ 1114, 1119, and 11125. Plasti Dip, manufacturer of the trademarked product PLASTI DIP, seeks a preliminary injunction against Rust-Oleum, manufacturer of FLEXIDIP, enjoining the company from (1) advertising, selling, and offering to sell product bearing the FLEXIDIP name online in any forum, including through third party online retailers and (2) selling or shipping, or in any way distributing any product bearing the product name FLEXIDIP.
The Court will deny Plasti Dip's motion for preliminary injunction, because the Court finds there is little likelihood of confusion between the two products.
I. THE PRODUCTS
Plasti Dip is a Minnesota corporation with its principal place of business also in Minnesota. (Compl. ¶ 3, June 6, 2014, Docket No. 1.) Plasti Dip owns the brand name and registered trademark PLASTI DIP. (Decl. of Laura Conley ("Conley Decl."), Ex. 1, Sept. 19, 2014, Docket No. 15.) Plasti Dip began selling this product under the PLASTI DIP name in 1959. (Compl. ¶ 5.) A trademark for PLASTI DIP was issued in 1983. (Conley Decl. at Ex. 1)
PLASTI DIP is an "air dry plastic coating" used in projects in the home, garage, or garden, most often to spray paint cars or car parts such as wheel rims or door handles. (Conley Decl. at Exs. 1, 2, and 5.) The coating protects against moisture, acids, abrasion, corrosion, and skidding/slipping, and remains flexible over time, even in cold weather conditions. (Conley Decl. at Ex. 5.)
Rust-Oleum is a Delaware corporation with its principal place of business in Illinois. (Compl. ¶ 4.) Rust-Oleum products have been sold in the United States since the 1930s. (Decl. of Michael T. Murphy, at ¶ 5, Oct. 20, 2014, Docket No. 25.) Rust-Oleum makes a wide range of protective paint and coating products and the company is the market share leader in the United States for rust preventative, decorative, specialty and professional segments of the small-project paint category. ( Id. at ¶ 4; Decl. of Sean Lavery, at ¶ 4, Oct. 20, 2014, Docket No. 27.) Rust-Oleum is the owner of U.S. Trademark Application No. 86/085, 498, filed on or about October 8, 2013 seeking to register the trademark for FLEXIDIP. (Answer ¶ 8, July 29, 2014, Docket No. 9.) Rust-Oleum began using the mark FLEXIDIP in late January 2014. ( Id. at ¶ 9.) FLEXIDIP is a rubberized coating that adheres to metal, plastic, and glass. Its recommended uses include customizing car wheels or other automotive uses and it can be used on kitchen utensils and other tools. (Conley Decl. at Ex. 7.)
PLASTI DIP and FLEXIDIP are sold through some of the same channels of trade, though Rust-Oleum sells FLEXIDIP only at Home Depot. (Lavery Decl. at ¶ 24.) The two products are sold next to each other in brick and mortar Home Depot stores where the two products are surrounded by other Rust-Oleum products. (Decl. of Patrick Persons, Exs. 1-2, Sept. 19, 2014, Docket No. 16.) In addition, in online retail at Home Depot, the two products are also shown together when a shopper searches "Plasti Dip." (Conley Decl. at Ex. 8.) Rust-Oleum's product also appears in response to online search engine results and search results online through Home Depot with searches for Plasti Dip. (Conley Decl. at Exs. 7-10.)
II. PROCEDURAL HISTORY
On June 6, 2014, Plasti Dip filed this action against Rust-Oleum. (Compl. at 1.) On September 19, 2014, Plasti Dip filed this motion for preliminary injunction. (Mot. for Prelim. Inj., at 1, Sept. 19, 2014, Docket No. 12.) Prior to this action, on March 6 2014, Plasti Dip sent Rust-Oleum a cease and desist letter asserting that the FLEXIDIP mark was infringing on the mark for PLASTI DIP. (Decl. of Patricia A. Cigelnik, Ex. L, Oct. 20, 2014, Docket No. 26.) Rust-Oleum responded on March 17, 2014 denying the allegations. ( Id. at Ex. M.) Plasti Dip then filed with the Trademark Trial and Appeal Board a notice of opposition to Rust-Oleum's trademark registration application for FLEXIDIP. ( Id. at Ex. N.) On May 27, Rust-Oleum filed an answer to the opposition. ( Id. at Ex. O.)
I. STANDARD OF ...