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UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

James G. Hugunin, an individual; )

Land O’ Lakes Outdoors, Inc. )

and Land O’ Lakes Tackle Co., Inc., ) Case No. 1:11-cv-09098

Illinois corporations, ) Honorable Joan B. Gottschall

)

Plaintiffs and Counter-Defendants, )

)

v. )

)

Land O’ Lakes, Inc., )

a Minnesota corporation, )

)

Defendant and Counter-Plaintiff. )

PLAINTIFFS’/COUNTER-DEFENDANTS’ MOTION IN LIMINE #1: TO EXCLUDE 

EVIDENCE OF FAME AFTER THE DATE OF PLAINTIFFS’/COUNTERDEFENDANTS’ FIRST USE

Plaintiffs/Counter-Defendants James G. Hugunin, Land O’ Lakes Outdoors, Inc., and 

Land O’ Lakes Tackle Co., Inc. (collectively “Hugunin”) move this Court to enter an Order in 

limine to preclude Defendant/Counter-Plaintiff Land O’Lakes, Inc. (“Land O’Lakes”) from 

introducing evidence or making any argument at trial that its LAND O LAKES trademark is 

“famous” after the relevant date at issue namely, August 25, 1997, which is first time Hugunin 

used the LAND O LAKES trademark in commerce. Any evidence referencing the fame of Land 

O’Lakes trademark after August 25, 1997 is an irrelevant distraction that unfairly prejudices

Hugunin. Fed. R. Evid. 402-03. For the reasons more fully described below, Hugunin seeks to 

exclude the following exhibits: Plaintiff’s Trial Ex. Nos. 23-26, 35, and 38. 

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I. RELEVANT BACKGROUND

Hugunin made his first commercial sale of tackle on August 25, 1997, under the name 

Land O’ Lakes Tackle Company. Hugunin then applied to federally register the LAND O 

LAKES trademark on August 9, 1999, (Serial No. 75/771,889). The United States Patent and 

Trademark Office cited no registrations as a bar and issued Hugunin a Federal Trademark 

Registration dated June 6, 2000 (Reg. No. 2,355,268) for the LAND O LAKES trademark for 

use in connection with fishing tackle.

To prevail on its dilution claim, Land O’Lakes must show that its mark was famous 

before Hugunin’s first use. Land O’Lakes plans to offer evidence at trial showing the fame of its 

mark after Hugunin’s first use. As more fully discussed below, such evidence should be 

excluded because it is not probative of fame before Hugunin’s first use.

In accordance with Judge Gottschall’s Case Management Packet at III(F)(1), the parties 

have met and conferred in an attempt to resolve this dispute prior to filing this motion in limine.

II. ARGUMENT

Evidence is relevant if: (a) it has any tendency to make a fact more or less probable than 

it would be without the evidence; and (b) the fact is of consequence in determining the action. 

Fed. R. Evid. 401. Conversely, irrelevant evidence is not admissible. Fed. R. Evid. 402. A 

court may exclude evidence if its probative value is outweighed by the danger of prejudice, of 

confusing the jury, or causing undue delay. Fed. R. Evid. 403. District court judges have broad 

discretion in ruling on pre-trial motions in limine. Jenkins v. Chrysler Motors Corp., 316 F.3d 

663, 664 (7th Cir. 2002).

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A. Fame of the LAND O LAKES trademark after August 25, 1997 is Irrelevant to 

the Dilution Inquiry.

The threshold question in Land O’Lakes federal dilution claim is whether its LAND O 

LAKES mark is “famous.” See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 

1356 (Fed. Cir. 2012). To prove a violation of the Federal Trademark Dilution Act (“FTDA”), 

as substantially amended by the Trademark Dilution Revision Act of 2006 (“TRDA”), Land 

O’Lakes must show that (1) its LAND O LAKES mark is famous; (2) Hugunin is making a 

commercial use of the mark in commerce; (3) Hugunin’s use began after the mark became 

famous; and (4) Hugunin’s use of the mark dilutes the quality of the mark by diminishing the 

capacity of the mark to identify and distinguish goods and services. 15 U.S.C. § 1125(c)(1); see 

also Plumeus, Inc. v. INTERSOG LLC, No. 13-c-2206, 2013 U.S. Dist. LEXIS 147368, at *4

(N.D. Ill. Oct. 11, 2013) (citing Coach Servs., Inc., 668 F.3d at 1372; Kraft Foods Holdings, Inc. 

v. Helm, 205 F. Supp. 2d 942, 946 (N.D. Ill. 2002).

The judicial consensus is that ‘famous’ is a rigorous standard. Everest Capital, Ltd. v. 

Everest Funds Mgmt. LLC, 393 F.3d 755, 763 (8th Cir. 2005). The Federal Circuit recently 

applied the principle that fame of a senior user’s mark must predate use by a junior user for a 

dilution claim to succeed. In Coach Servs., construing the principle in the context of a 

Trademark Trial and Appeal Board proceeding, the court agreed that evidence of fame after the 

junior entity began using the mark was insufficient to establish fame, and stated, “the owner of 

the allegedly famous mark must show that its mark became famous ‘prior to the filing date of the 

trademark application or registration against which it intends to’” object. Coach Servs., 668 F.3d 

at 1373, 1375 (quoting Toro Co., 61 U.S.P.Q.2d at 1174) (which clarifies that “in the case of an 

intent-to-use application, an owner of an allegedly famous mark must establish that its mark had 

become famous prior to the filing date of the trademark application” whereas “[i]n a use-based 

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application under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), the party alleging 

fame must show that the mark had become famous prior to the applicant's use of the 

mark”) (emphasis added).

Accordingly, only evidence of fame prior to Hugunin’s first use of the LAND O LAKES 

trademark is relevant to determining the threshold issue of whether Land O’Lakes’ trademark 

was famous. The fame of the LAND O LAKES trademark after the date of the Hugunin’s first 

commercial use, on August 25, 1997, is irrelevant. There is no evidentiary value related to the 

Defendant’s use and fame thereafter, namely: Plaintiff’s Tr. Ex. Nos. 23-26 (Land O’Lakes, Inc. 

Annual Reports for 2012, 2011, 2004, and 1998); Plaintiff’s Tr. Ex. No. 35 (“The Butter is the 

Best at Land O’ Lakes,” from Burckhardt, A.L., A Cook’s Tour of Minnesota, Minnesota 

Historical Society Press, 2004); and Plaintiff’s Tr. Ex. No. 38 (Ipsos ASI Report, “Corporate 

Dairy Equity*Builder Study,” Fall 2006).

B. Referring to the fame of the LAND O LAKES trademark after August 25, 1997 

Would be Prejudicial and Waste Time.

Alternatively, the Court should preclude Land O’Lakes from introducing evidence after 

August 25, 1997, at trial because such evidence would waste time and unfairly prejudice 

Hugunin under Fed. R. Evid. 403. Any probative value related to the fame of the mark after the 

Hugunin’s first commercial use is substantially outweighed by the danger of prejudice and 

potential confusion that such arguments and evidence would pose. 

The only function this evidence would serve is to improperly bolster Land O’Lakes 

trademark rights and distract this court from the relevant issue: the fame, if any, of the mark at 

the time of Hugunin’s first use: August 25, 1997. This prejudice outweighs whatever miniscule 

probative value the evidence may have.

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Lastly, introducing evidence and argument concerning fame of the mark after that date 

would make the trial in this case more complex, time-consuming, and lengthy than it otherwise 

will be. 

III. CONCLUSION

For the foregoing reasons, Hugunin respectfully requests that Land O’Lakes be precluded 

from introducing evidence or argument regarding fame of the LAND O LAKES trademark after 

August 25, 1997.

Respectfully submitted,

Dated: January 12, 2015 By: __s/Mark V.B. Partridge_______ 

Mark V.B. Partridge

PARTRIDGE & GARCIA P.C.

321 N. Clark Street, Suite 720

Chicago, IL 60654

Phone: 312-634-9500

Fax No: 312-275-7503

E-mail: mark@partridgegarcia.com

Attorney for the Plaintiffs/CounterDefendants

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CERTIFICATE OF SERVICE

I hereby certify that on January 12, 2015, a true and correct copy of the foregoing

PLAINTIFFS’/COUNTER-DEFENDANTS’ MOTION IN LIMINE #1: TO EXCLUDE 

EVIDENCE OF FAME AFTER THE DATE OF PLAINTIFFS’/COUNTERDEFENDANTS’ FIRST USE was filed with the Clerk of Court which electronically notifies all 

CM/ECF participants of this filing:

James R. Steffen

Mary A. Walker

Colby A. Kingsbury

James J. Saul

FAEGRE BAKER DANIELS LLP

311 S. Wacker Drive, Suite 4400

Chicago, Illinois 60606-6622

___________/s/DanielLRogna____________

Daniel L. Rogna

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