Rebecca Tushnet

J-B Weld Company,
LLC v. Gorilla Glue Co., — F.3d —-, 2020 WL 6144561, No. 18-14975 (11th
Cir. Oct. 20, 2020)

This case illustrates how much leeway trademark claims often get and how little false advertising claims do.

My daughter provided
the best summary of my take on the trademark part of this dispute: if you can’t
tell these two apart, you have no business working with powerful adhesives. But
the court found the evidence of copying was so strong as to allow a jury to
infer an intent to confuse. This triggered a concurrence emphasizing that
intentional copying isn’t necessarily evidence of intent to confuse. But if intentional
copying can always or usually reasonably allow an inference of intent to
confuse, which itself can be assumed to succeed, then ordinary competitors will
find it difficult to avoid a full jury trial, which is an anti-competitive
result. (Side note: the court also remanded the state law dilution claim
because dilution doesn’t require confusion and the court of appeals couldn’t
tell if the district court fully understood that, given that it focused on how
different the parties’ products looked, even though that’s also an excellent
reason there’d be no blurring either.)

The parties compete
in the adhesive market. J-B Weld makes a two-part epoxy adhesive. “J-B Weld
Original’s epoxy resin paste also contains iron dust as a filler, purportedly
to strengthen and support the adhesive when cured, which J-B Weld recognizes by
referring to the product as a ‘steel reinforced epoxy.’” It describes its trade
dress as:

(1) two squeezable tubes in a blister package, with the tubes angled
inwardly to create a “V-shape;” (2) a black-bannered tube on the left side of
the package and a red-bannered tube on the right side of the package; (3) black
and white caps on each respective tube; (4) a clear “blister” style protective
package that angles inward in the same manner as the tubes; (5) a background
card with a width of five inches; (6) a “technical information box,” located in
between the two tubes on the background card, including four lines of
information separated by white lines; (7) colored banners stretching across the
top and bottom portions of the background card; (8) the capitalized/emphasized
word “WELD” inside the upper banner on the background card; (9) a list of
potential uses for the product in the bottom-right corner of the background
card

In 2017, Gorilla
Glue introduced a two-tube adhesive under the brand name “GorillaWeld.” GorillaWeld’s
adhesive differs from J-B Weld’s in that GorillaWeld uses methyl methacrylate
chemistry (MMA), which, chemically, is not an epoxy-group polymer.
GorillaWeld’s resin also does not contain any iron or steel. It’s still
marketed as an “epoxy” adhesive and, on its packaging, as a “steel bond epoxy.”

Gorilla Glue
recognized that it was entering the epoxy market to go head to head against J-B
Weld. Its graphic designer stated: “The objective of this project was to go
straight up against the top competitor (J-B Weld) and create packaging that
mimics the competitor’s architecture. I was able to pull subtle elements into
our package, but still keep the package looking tough and geared towards the
Gorilla brand.”

The district court
found confusion unlikely,  because the packages look so different, but
the court of appeals thought it had resolved disputed questions of fact against
J-B Weld on similarity, intent, and actual confusion.

Similarity:

Here, reasonable minds could disagree as to which of these features
contributes most to the overall impression conveyed by the two marks. Where one
consumer may think that the color scheme and Gorilla Glue logo are central to
the trade dress’s impression, another consumer may believe that the particular placement
and angling of the black-and-red labeled tubes, the identical location of
product specifications such as hold strength and set and cure time, and the
presence of “WELD” in large, bolded text comprised the primary impression of
the two products’ packaging. With this amount of conflicting evidence as to the
similarity of the two designs, it was error for the District Court to conclude
that, as a matter of law, J-B Weld had not shown that the two products’ trade
dress designs were similar.

Intent: Again, the
district court erred by failing to make J-B Weld’s “best case.” Intent to
confuse can be found based on circumstantial evidence, so a factfinder “may”
infer “intent to derive a benefit from a competitor’s goodwill—and,
accordingly, an intent to cause confusion—from evidence of intent to copy.” This
is especially true if there are substantial similarities.

J-B Weld’s evidence
included “communications from Gorilla Glue’s packaging design team that
repeatedly referenced J-B Weld Original’s packaging and expressed a desire to
use similar elements for GorillaWeld’s packaging.”  The team described certain GorillaWeld
packaging options as “[c]lose to JB Weld brand” and aspiring to “go[ ] directly
after [J-B Weld Original],” and the team stated their target market was
consumers that had used the J-B Weld Original product in the last six months. One
Gorilla Glue employee later called the GorillaWeld design a “knock off” of J-B
Weld. [Note that GG apparently didn’t choose the closest options, but
its consideration and rejection of them gets to weigh against it!]

The district court
wrongly relied on the graphic designer’s statement, “I was able to pull subtle
elements [of J-B Weld’s Dress] into our package, but still keep our package
looking tough and geared towards the Gorilla brand.” This was error because
there was evidence that Gorilla Glue intended to “mirror,” “copy,” and “knock
off” J-B Weld Original’s trade dress, not simply “construct a worthy
competitor.”

And “GorillaWeld was
designed with the knowledge that it would be sold on shelves near its
competitor in retail stores,” which is apparently evidence favoring likely
confusion instead of easily allowing consumers to recognize big differences
between them. “This evidence of Gorilla Glue’s intent to copy creates an
inference that Gorilla Glue intended to capitalize on J-B Weld’s goodwill, and
that evidence is probative of the likelihood of confusion issue.”

It was also improper
to impute innocuous motives from the testimony of Gorilla Glue’s employees that
the “V-shape” design of GorillaWeld’s packaging served purposes other than
mirroring J-B Weld’s trade dress. It’s true that “intentional copying does not
necessarily indicate a desire to capitalize on another’s goodwill,” but it can,
so it had to weigh in J-B Weld’s favor for summary judgment purposes.

Actual confusion: “J-B
Weld’s evidence indicated that other industry professionals, including a buyer
at a retailer that carries J-B Weld Original, asked J-B Weld representatives
whether J-B Weld ‘had anything to do with’ GorillaWeld, or if J-B Weld was
making or supplying Gorilla Glue with ‘private Label Epoxy Twin Tubes’ pursuant
to some sort of agreement.” The district court went with case law saying that
questions about affiliation show lack of confusion, not confusion—they
understand that the signals they’re receiving are at least ambiguous.

But this wasn’t the
only reasonable inference from this evidence. It would also be reasonable to
infer that “even if the industry professionals knew the two products were
different, they were confused as to whether GorillaWeld was the product of a
collaboration or other liaison between the two companies.” [Except they asked,
rather than assuming—they knew they didn’t know the answer to that question
based on what they’d seen. It’s not just that they differentiated the products,
which I can do with Diet Coke versus Coke, it’s that they didn’t presume that
they were joint productions based on the similarities.] Because affiliation
confusion is actionable, this confusion could be legally significant. The
question about whether there was a private label deal “leads to a reasonable
inference that the person was confused because he or she believed that the
similarities in packaging signified a business relationship or other agreement
between the companies. Asking if one company ‘had anything to do with’ another
company’s product would — or, at least, could — generate a similar inference.”

Plus, the district
court failed to consider “any of the circumstantial factors that we have held
are integral to determining how much weight should be assigned to any
individual instance of actual confusion,” such as “the extent of the parties’
advertising, the length of time for which the allegedly infringing product has
been advertised, or any other factor that might influence the likelihood that
actual confusion would be reported.” Since the GorillaWeld product was
introduced in 2017, and J-B Weld sued quickly thereafter, “in all likelihood
the number of reported instances of actual confusion would be on the lower
side, making each instance of reported confusion more probative.”

And finally, the
district court “failed to appropriately discuss four of the seven applicable
factors — the similarity of the products, the similarity of retail outlets and
purchasers, the similarity of advertising media used, and the strength of the
J-B Weld mark,” which was error. [Query: Pepsi and Coke are at least as similar
in appearance—they even use only the same colors. Would it be error to dismiss a
confusion claim by Coke against Pepsi based merely on dissimilarity because
these factors (product similarity, marketing channels, and mark strength) favor
Coke?] A court has to evaluate the weight given to the factors; though that
weight varies case by case, it was insufficient to discuss the facts
supporting, and weight due, only the three factors discussed above. It was
particularly error to rely on the court’s own determination that the trade
dress was only moderately strong because the jury could find otherwise given “J-B
Weld’s presentation of evidence that J-B Weld Original’s dress is recognizable
and has retained consistent features for decades.” [Even though neither of
those things are actually evidence of a strong mark as opposed to a mark
that works fine but is not particularly strong.]

False advertising:
The district court did correctly grant summary judgment on the claim that
GorillaWeld is falsely advertised as a “steel bond epoxy.” J-B Weld failed to
show materiality of either “steel bond” or “epoxy.”

J-B Weld argued that
“epoxy” was material because it refers to the chemical composition of an
adhesive, which constitutes an “inherent quality or characteristic” of the
product. “But the ‘inherent quality or characteristic’ formulation adopted by
this Circuit does not replace the consumer-oriented nature of the materiality
inquiry with a scientific one.” The mere fact that components or ingredients
are often found to be “inherent qualities or characteristics” that are
important to consumer purchasing decisions didn’t mean that they always are. [I
sense a bit of tension with the “it’s a jury question” treatment of
infringement above.]

While J-B Weld
argued that “consumer[s] know[ ] that ‘epoxy’ is a specific and desirable
category of adhesives,” it didn’t show that consumers would deem GorillaWeld’s
MMA-based adhesive not to be an “epoxy.” It didn’t present “any evidence that
consumers are so scrupulous about the chemicals in their adhesives.” Instead,
the evidence that there was indicated that consumers probably deemed all
two-part adhesives to be “epoxies” regardless of chemical composition. J-B
Weld’s survey didn’t ask consumers whether or not they understood epoxy
adhesive to have “a specific type of chemistry to it,” and its expert opined
that consumers likely only care about whether the product sticks two surfaces
together effectively. Gorilla Glue also pointed to evidence that MMA-chemistry
based adhesives, such as GorillaWeld, “are frequently marketed, and categorized
by retailers, as epoxies.”

Although J-B Weld
was correct that retail purchasers or middlemen could be considered in
assessing materiality, it didn’t manage to show a factual question as to them
either.  The speculation that retailer
demand for GorillaWeld increased in 2017 merely because GorillaWeld began
including “epoxy” on its labeling couldn’t succceed without proof that it was
the inclusion of “epoxy,” and not some other factor, that increased demand for
the product.

J-B Weld argued that
chemical epoxies and MMA chemistries have “different physical properties,”
including “safety and odor differences.” “Maybe so. But J-B Weld has not made
any showing that these differences would matter to a consumer.”

“Steel bond”: First,
the court was skeptical that Gorilla Glue was really using “steel bond” to
describe “a strong bond that works well on metal,” rather than “an adhesive
that physically contains iron or steel as a reinforcing agent.” But even so,
J-B Weld needed to show that the presence or absence of steel in GorillaWeld
resin would be material to a consumer’s purchasing decision, and it didn’t. Its
survey asked respondents to identify which of the products they believed
contained steel, but didn’t ask about materiality. Internal Gorilla Glue
documents showing that it very much wanted to make some reference to “steel” on
the package (e.g., “play up on steel”) also didn’t matter. [Now this is definitely
in tension with the treatment of intent in the trademark part of the case. Why
isn’t it the most reasonable inference that Gorilla Glue, which presumably
knows its customers better than the court does, knew what would likely
influence them?]

Judge Carnes
concurred, but wrote separately “to emphasize the distinction between ‘intentional
copying’ and ‘intentional copying with intent to cause confusion.’”
Unfortunately, despite celebrating fair competition involving copying, the
concurrence doesn’t actually explain when summary judgment for a partial trade
dress copier could be proper, making procompetitive copying a risky endeavor.
Perhaps if your internal documents don’t say that you seek to “mirror” or be
“close to” the competition, or call it a “knock off,” you can still be ok. The
concurrence said that the majority doesn’t “alter the well-established rule
that intentional copying does not — without more — permit an inference of
copying with intent to confuse,” but instead found evidence of that “more”
here. I wonder how many instances of copying will not involve people saying that
they copied (sorry, “mirrored”), and how people are supposed to talk about
their legitimate copying without generating the “more.” I also suspect that,
despite all that, product design trade dress copying will continue to get more
leeway than product packaging copying.

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