My Pillow, Inc. v. Ontel Prods. Corp., Civil No. 19-cv-903 (JNE/HB)

My Pillow, Inc., Plaintiff, v. Ontel Products Corporation,Target Corporation, Pegasus Home Fashions, Inc.,and Does 1 through 7, Defendants.

Civil No. 19-cv-903 (JNE/HB)

UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

April 3, 2020

REPORT AND RECOMMENDATION

HILDY BOWBEER, United States Magistrate Judge

This matter is before the Court on Plaintiff's Motion for an Expedited Preliminary Injunction [Doc. No. 49]. On November 20, 2019, the Honorable Joan N. Erickson, U.S. District Judge, denied Plaintiff's request for expedited handling of its motion. [Doc. No. 58.] Subsequently, the motion was referred to this Court for a report and recommendation in an Order of Referral dated December 10, 2019. [Doc. No. 64.] The Court held a hearing on the motion on January 30, 2020. [See Doc. No. 77.] For the reasons set forth below, the Court recommends that the motion be denied.

I. Background

Plaintiff My Pillow, Inc. is a Minnesota corporation that primarily makes and sells pillows under the brand name "MyPillow." (See Lindell Decl. ¶ 2 [Doc. No. 55].) The MyPillow is a personal pillow made of shredded polyurethane foam fill. (Id. ¶ 13.) It was developed by Mike Lindell, the company's founder and CEO, and has been marketed extensively through tradeshows, print media, and television and internet infomercials. (Id. ¶¶ 2-5.) In connection with its marketing strategy, Plaintiff registered as a trademark its product's slogan, "GUARANTEED THE MOST COMFORTABLE PILLOW YOU'LL EVER OWN!" (hereafter referred to as the "Most Comfortable Pillow Mark").¹ (Id. ¶ 9.) Plaintiff has used its slogan continuously since 2005 and registered the mark on October 9, 2012. (Id.) Plaintiff also has a registered copyright for a photograph of Mike Lindell holding a MyPillow, a version of which appears on the MyPillow packaging. (Id. ¶ 11.)

Defendant Ontel sells a variety of consumer products, including pillows. (Wade Decl. ¶¶ 3-4, 8-20 [Doc. No. 69].) In 2014, Ontel registered a trademark for its "MIRACLE BAMBOO" pillow. (Id. ¶ 8.) In 2018, it began producing another pillow, which it named the "Miracle Pillow." (Id. ¶¶ 15-17.) Plaintiff initiated this lawsuit against Ontel on April 1, 2019, alleging that the packaging and trade dress Ontel used for the Miracle Pillow infringed Plaintiff's trademark and trade dress for the MyPillow, among other things. [Doc. No. 1.] Plaintiff later amended its complaint to include additional defendants. [Doc. No. 9.]

Plaintiff makes four claims pertinent to this motion. First, Plaintiff asserts Defendants' use of the slogan "The Most Comfortable Pillow . . . Ever!" on the Miracle Pillow packaging infringes Plaintiff's Most Comfortable Pillow Mark. (Am. Comp. ¶¶ 66-71.)

Second, Plaintiff alleges the packaging of the Miracle Pillow infringes Plaintiff's rights in the trade dress of the MyPillow. The MyPillow is sold in a box of approximately the same dimensions of the pillow, with a handle on the top. The packaging includes the following features: (1) the product name, MyPillow, on the front of the box, on the left side; (2) an image of Mike Lindell holding a MyPillow in his arms and smiling at the camera; (3) a blue background with gradient coloring; (4) the Most Comfortable Pillow Mark on the front of the box, centered at the top; and (5) a list of four descriptions of the pillow, such as "Patented Adjustable Fill" and "Will Not Go Flat." The box also includes a graphic representing the pillow's 10-year warranty, an American flag icon that says "Made in the U.S.A.," and several green banners containing further descriptions of the product.

Image materials not available for display.

Defendants also sell the Miracle Pillow in a box with a handle. Plaintiff points out that Ontel's packaging also includes: (1) the product name, Miracle Pillow, on the front of the box, on the left side; (2) an image of a person holding a pillow; (3) a blue gradient background; (4) the slogan "The Most Comfortable Pillow . . . Ever!" running along the front, top of the box; and (5) a list of four descriptions of the pillow, including "SpecialInterlocking Fill" and "Won't Go Flat." Defendants' pillow box also includes a graphic indicating that the pillow comes with a 10-year warranty, an American flag icon that says "Made in the USA," and a green banner with the pillow's dimensions.

Image materials not available for display.

Third, Plaintiff alleges that the photograph of the person holding a pillow on the Miracle Pillow box is derivative of, and therefore infringes, Plaintiff's copyrighted image of Mike Lindell holding a MyPillow. (Lindell Decl. ¶ 11.) Although the image has changed from time to time since it was originally registered, it has always featured Mike Lindell holding a MyPillow, wearing a blue, collared shirt and smiling at the camera. (See original image Pl.'s Mem. Supp. Mot. at 4 [Doc. No. 54]; image variations Def. Mem. Opp'n Mot. at 35 [Doc. No. 66].)

Fourth, Plaintiff alleges that Defendants engaged in deceptive trade practices under the Minnesota Deceptive Trade Practices Act (Minn. Stat § 325D.44).

By this motion, Plaintiff seeks a preliminary injunction prohibiting Defendants from selling the Miracle Pillow in the allegedly infringing packaging.

II. Discussion

"A preliminary injunction is an extraordinary remedy never awarded as of right."Winter v. Nat. Res. Def. Council, 555 U.S. 7, 24 (2008). In determining whether to grant a preliminary injunction, the Court considers the following four factors: (1) the likelihood of the movant's ultimate success on the merits; (2) the likelihood—not just the possibility—of irreparable harm to the movant in the absence of relief; (3) the balance of equities; and (4) whether an injunction is in the public interest. See Dataphase Sys., Inc. v. CL Sys., Inc., 640 F.2d 109, 113 (8th Cir. 1981); Winter, 555 U.S. at 20, 22. "The party seeking injunctive relief bears the burden of proving these factors." Lankford v. Sherman, 451 F.3d 496, 503 (8th Cir. 2006).

A. Likelihood of Plaintiff's Success on the Merits

Although no single factor is determinative, courts weigh heavily the likelihood of Plaintiff's success on the merits. Barrett v. Claycomb, 705 F.3d 315, 320 (8th Cir. 2013). The moving party must demonstrate a "fair chance of prevailing," Planned Parenthood Minn., N.D., S.D. v. Rounds, 530 F.3d 724, 732 (8th Cir. 2008), and "the absence of a likelihood of success on the merits strongly suggests that preliminary relief should be denied," CDI Energy Srvs., Inc. v. West River Pumps, Inc., 567 F.3d 398, 402 (8th Cir. 2009).

Plaintiff has raised four claims, but it "need only show likelihood of success on the merits on a single cause of action, not every action it asserts in its complaint." CPI Card Grp., Inc. v. Dwyer, 294 F. Supp. 3d 791, 807 (D. Minn. 2018). The Court will address the merits of each of Plaintiff's claims in turn.

1. Plaintiff's Trademark Infringement Claim

First, Plaintiff argues the Miracle Pillow's slogan infringes its own trademarkedslogan. To establish a claim for trademark infringement, a plaintiff must show that: (1) it has a valid, protectable trademark, and (2) the unauthorized use of that trademark creates a likelihood of confusion. Jeld-Wen, Inc. v. Dalco Indus., Inc., 1999 WL 1024002, at *2 (8th Cir. Nov. 10, 1999). Plaintiff's mark is incontestable because more than five years have elapsed since its federal registration. (Lindell Decl. ¶ 9.) Once a mark has become incontestable, its validity is presumed. Dakota Indus. Inc. v. Ever Best Ltd., 28 F.3d 910, 912 (8th Cir. 1994). Therefore, the likelihood of Plaintiff's success on its trademark claim turns on the second factor, the likelihood of consumer confusion.

In considering whether use of a mark creates a likelihood of confusion, courts analyze six non-exclusive factors:

(1) the strength of the owner's mark; (2) the similarity of the owner's mark and the alleged infringer's mark; (3) the degree of competition between the products; (4) the alleged infringer's intent to "pass off" its goods as the trademark owner's; (5) incidents of actual confusion; and, (6) the type of product, its cost, and conditions of purchase.

Everest Capital Ltd. v. Everest Funds Mgmt., L.L.C., 393 F.3d 755, 759-60 (8th Cir. 2005).²

a. Strength of the Mark

The strength of a mark generally depends on the distinctiveness of the mark and the extent to which the mark is recognized by consumers. Eniva Corp. v. Glob. Water Sols., Inc., 440 F. Supp. 2d 1042, 1050 (D. Minn. 2006). A strong and distinctive mark is entitled to greater protection than a weak mark. Squirt Co. v. Seven-Up Co., 628 F.2d1086, 1091 (8th Cir. 1980). Determining that a mark is weak "means that consumer confusion has been found unlikely because the mark's components are so widely used that the public can easily distinguish slight differences in the marks, even if the goods are related." Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626 (8th Cir. 1987) (affirming finding of district court that trademark owner had failed to show likelihood of consumer confusion between "Apple Raisin Crisp" and "Oatmeal Raisin Crisp").

Marks are generally categorized as (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. Cellular Sales, Inc. v. Mackay, 942 F.2d 483, 485 (8th Cir. 1991). A generic term is not protectable as a trademark. A descriptive mark "designates the characteristics, qualities, or features of the product." Fair Isaac Corp. v. Experian Info. Sol., 645 F. Supp. 2d 734, 757 (D. Minn. 2009). A descriptive term is "the weakest protectable mark." Davis v. Walt Disney Co., 430 F.3d 901, 903 (8th Cir. 2005).

The Eighth Circuit has been clear that self-laudatory marks—those that indicate "superior quality"—are considered descriptive. Jeld-Wen, Inc., 1999 WL 1024002 at *3 (finding that the mark "Elite 4000" was self-laudatory). Plaintiff's mark is clearly self-laudatory. In using the phrase "most comfortable" in connection with a bed pillow, Plaintiff is...