Trademark Law Briefing: Black & Decker v. Positec, 2021WL202686 (NDIL-ED), January 20, 2021, by James Michael Faier, M.P.P., M.B.A., J.D. (USPTO Regn. No. 56,731)

Case Title and Date: The Black & Decker Corporation et al v. Positec USA Inc. et al., 2021WL202686

Facts:  Black & Decker in 1992 introduced bright yellow packaging for its DeWalt power tools.  It modified that packaging about 2008.  The packaging had a drawing of a power tool.  Black filed numbers of trademark applications on the appearance of the black parts of the tools.  About 2008, Positec introduced its own yellow box on which it printed images of power tools in silver.  Positec testified that it viewed the DeWalt advertising and regarded the bright yellow as iconic.  Black & Decker had an expert and the court quoted the results of a survey on secondary meaning.  Black & Decker entered evidence of sales and marketing expenditures.

Procedural Posture: At US Dist. Ct. for the Northern District of Illinois, Eastern Division, Positec moves the court for an interlocutory appeal after the Court grants in part and denies in part its Motion for Summary Judgment.

Issue: Should the district court certify questions on interlocutory appeal to the Court of Appeals?

Rule: The District Court only certifies questions on interlocutory appeal on questions of law where the Court of Appeals would have nothing to do looking into facts in the case.

Holding: Positec’s motion was denied.

Analysis: Positec is only delaying the inevitable.  Positec already admitted that DeWalt had an iconic marketing campaign of bright yellow with black printing and drawings of the tools.  Positec admitted with knowledge of DeWalt’s presentation, Positec introduced its own yellow boxes in a similar color with the silver photo of the tool. The place where I am surprised that there is no mention is actual confusion.  Black had been using this mark for 15-years before the Positec marks were rolled out.  Where was evidence on confusion?  Where was Positec evidence that the marks co-existed without confusion for years.  Where is an argument that absent confusion over so long that Black is hard pressed to point to damage. There is interesting comments on a family of marks, namely, to have action on a family of marks, you need to prove the market significance of the family prior to the beginning of the infringement.

Concurrence or Dissent:

NA

Definitions of New Vocabulary:

NA

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