UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

BOX ACQUISITIONS, LLC, d/b/a BOX )

PARTNERS, LLC and BOX PACKAGING, )

LLC an Illinois Limited Liability Company, )

)

Plaintiff, ) 

)

v. ) 12 C 4021

)

BOX PACKAGINIG PRODUCTS, LLC, )

an Indiana Limited Liability Corporation; )

JAMIL PACKAGING CORPORATION, )

an Indiana Corporation; and DAVID M. )

DIROLL, an individual, )

)

Defendants. )

MEMORANDUM OPINION

CHARLES P. KOCORAS, District Judge:

This matter comes before the Court on the motion for summary judgment of 

Defendants Box Packaging Products, LLC (“Box Packaging Products”), Jamil 

Packaging Corporation (“Jamil Packaging”), and David M. Diroll (“Diroll) 

(collectively “Defendants”) pursuant to Federal Rule of Civil Procedure 56 (“Rule 

56”). For the following reasons, the Court grants summary judgment in its entirety.

BACKGROUND

I. Facts

The following facts are taken from the parties’ respective statements and 

exhibits filed pursuant to Northern District of Illinois Local Rule 56.1. The Court 
- 2 -

reviews each Local Rule 56.1 statement and disregards any argument, conclusion, or 

assertion unsupported by the evidence in the record. The parties do not dispute the 

facts below unless otherwise noted.

Plaintiff BOX Acquisitions, LLC, d/b/a BOX Partners, LLC (“BOX Partners”)

and BOX Packaging, LLC (“BOX Packaging”) (collectively “Plaintiff”) is a 

distributor and a wholesaler of shipping and industrial products in Illinois. Jamil, an 

Indiana corporation, became a customer of Plaintiff in June 1998 and a vendor in 

2008 up until May of 2012. Jamil designs and manufactures corrugated boxes and 

packaging, and markets products for other companies. Plaintiff currently uses both

names, BOX Packaging and BOX Partners, interchangeably, in advertising, sales, and 

marketing materials. Plaintiff never formally announced the adoption of BOX

Partners when it began using it in 2004. “Boxpartners.com” was registered as a 

domain name in 2004. 

Plaintiff does not have a federal trademark registration for either “Box 

Packaging” or “boxpackaging.com”, but does for BOX Partners and 

“boxpartners.com”. Plaintiff also registered “www.boxpkg.com” in 1996 as a domain 

name and started using it around 2001. Allied Packaging (“Allied”), a third-party 

company, owned the “boxpackaging.com” domain from 1999 until 2009. Plaintiff

was aware that Allied obtained “boxpackaging.com” in the early 2000s; however, it 

did not take action against Allied because Allied was not actively using the domain. 

The parties dispute whether Allied used “boxpackaging.com” in 2008 and 2009. 
- 3 -

Around December 15, 2010, Diroll, General Manager at Jamil, purchased the 

“boxpackaging.com” domain through the Go Daddy service for $5,675.00. Diroll 

also registered “boxpackaging.biz”, “boxpackaging.com”, and “boxpackaging.info”

(collectively with “boxpackaging.com” the “Domains”). A company called Sunrise 

Packaging, Inc. (“Sunrise”) currently owns “boxpackaging.net”. Diroll purchased and 

registered the Domains in part to serve as a lead generator to the jamilpackaging.com 

domain. Once Defendants obtained the Domains, Diroll started Box Packaging 

Products LLC and invested in advertising that mentioned the “boxpackaging.com” 

domain and used the phrase “Box Packaging”. 

A sign outside of Plaintiff’s office building previously said BOX Packaging, 

but now says BOX Partners. Employees of Plaintiff currently use “boxpartners.com” 

email addresses and multiple exhibits including invoices, paperwork, correspondence, 

and advertisements. Employees issue bills of lading which identify Plaintiff only as 

BOX Partners. However, price quotations, invoices, shipper documents and checks 

from Defendants to Plaintiff from 2009 to 2012 refer to Plaintiff as BOX Packaging. 

Some companies and entities that operate in the packaging industry also use the words 

“box” and “packaging”. For example, the UPS Store uses “box-packaging” in its 

domain name, as does A&R Box and Packaging, which also refers to the phrase “Box 

Packaging” on its website.

Plaintiff has not conducted any consumer surveys, studies, or market research 

related to the phrase “Box Packaging”. Plaintiff’s employees claim that they have 
- 4 -

received complaints from suppliers and customers expressing confusion regarding 

why “boxpackaging.com” directed those to Defendants’ website. However, these 

employees cannot recall any names of any of these individuals. The parties met on 

April 1, 2011 to discuss Defendants’ use of “boxpackaging.com”. After this meeting, 

the parties corresponded through early May 2011, with Plaintiff offering to purchase 

“boxpackaging.com” for $500.00, which Defendants rejected.

On October 18, 2011, Defendants filed an application to trademark

“boxpackaging.com” in hopes of using it in connection with the packaging industry. 

The trademark application contained the following representation: “[a]dvertising, 

marketing, and promotional services in the field of packaging, shipping, corrugated 

boxes, and industrial products by providing an on-line website and advertising and 

marketing materials”. Defendants listed on their application that the first use of the 

trademark and the first use of the trademark in commerce were December 10, 2010. 

On April 3, 2012, the “boxpackaging.com” mark was registered on the supplemental 

register and given the number 4,123,303. 

Around the time Plaintiff filed the instant lawsuit in May 2012, Plaintiff took 

down Defendants’ jamilpackaging.com website, which it had been hosting on 

Defendants’ behalf. The parties also ceased most of their business together around 

this time.
- 5 -

II. Procedural History

On November 5, 2013, Plaintiff filed its amended complaint with this Court 

against Defendants alleging: (i) a Lanham Act claim for false or fraudulent 

registration under 15 U.S.C. § 1120; (ii) a Lanham Act claim to cancel Defendants’ 

registration of “boxpackaging.com”; (iii) a Lanham Act direct infringement claim of 

BOX Partners under 15 U.S.C. § 1114; (iv) a Lanham Act unfair competition and 

false designation of origin claim under 15 U.S.C. § 1125(a); (v) a Lanham Act 

cybersquatting claim under 15 U.S.C. § 1125(d); (vi) a violation of the Illinois 

Uniform Deceptive Trade Practices Act (“IUDTPA”), 815 Ill. Comp. Stat. Ann. 510/1 

et seq.; (vii) a violation of the Illinois Consumer Fraud and Deceptive Business 

Practices Act (“ICFA”), 815 Ill. Comp. Stat. Ann. 505/1 et seq.; (viii) trademark 

infringement under Illinois common law; and (ix) unfair competition under Illinois 

common law. On January 31, 2014, Defendants moved for summary judgment 

pursuant to Rule 56 on all claims. 

LEGAL STANDARD

Summary judgment is appropriate when the pleadings, discovery, disclosures, 

and affidavits establish that there is no genuine issue of material fact, such that the 

movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The movant 

bears the initial burden of showing that no genuine issue of material fact exists. 

Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). The burden then shifts to the nonmoving party to show through specific evidence that a triable issue of fact remains on 
- 6 -

issues on which the movant bears the burden of proof at trial. Id. at 325. The nonmovant may not rest upon mere allegations in the pleadings or upon conclusory 

statements in affidavits; it must go beyond the pleadings and support its contentions 

with documentary evidence. Id. A genuine issue of material fact exists when, based 

on the evidence, a reasonable jury could find in favor of the non-movant. Anderson v. 

Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). In considering a motion for summary 

judgment, a court construes all facts and draws all reasonable inferences in favor of 

the non-movant. Id. at 255. “[A] motion for summary judgment in trademark 

infringement cases must be approached with great caution.” AHP Subsidiary Holding 

Co. v. Stuart Hale Co., 1 F.3d 611, 616 (7th Cir. 1993).

DISCUSSION

I. Trademark Infringement and Unfair Competition Claims

“Congress passed the Lanham Act in 1946 to ‘federalize’ existing common law 

protection of trademarks used in interstate commerce.” CAE, Inc. v. Clean Air Eng'g, 

Inc., 267 F.3d 660, 672 (7th Cir. 2001). “The Lanham Act provides national 

protection of trademarks in order to secure to the owner of the mark the goodwill of 

his business and to protect the ability of consumers to distinguish among competing 

producers.” Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985). 

To prove a federal trademark infringement violation, Plaintiff must establish: (i) a 

protectable mark in “Box Packaging” before Defendants began using the allegedly 

infringing mark; and (ii) that the use of “Box Packaging” is likely to cause confusion 
- 7 -

among consumers. Packman v. Chi. Tribune Co., 267 F.3d 628, 638 & n.8 (7th Cir. 

2001). Plaintiff, as the claimant, bears the burden of establishing that its mark is 

entitled to protection or at the very least, that there exists a genuine issue of material 

fact as to this issue. Platinum Home Mortgage Corp. v. Platinum Fin. Grp., Inc., 149 

F.3d 722, 727 (7th Cir. 1998). Both of Plaintiff’s federal trademark infringement and 

unfair competition claims involve the same elements and proof. See Spex, Inc. v. The 

Joy of Spex, Inc., 847 F. Supp. 567, 579 (N.D. Ill. 1994). 

The heart of this trademark infringement case is not difficult to ascertain. 

Approaching summary judgment with great caution, this Court finds the core issue as 

being whether “Box Packaging” is a protectable trademark or whether it lacks 

protection because it is a descriptive phrase with no acquired secondary meaning. 

A. Mark Classification

Courts classify marks into five categories of increasing distinctiveness: 

(i) generic; (ii) descriptive; (iii) suggestive; (iv) arbitrary; and (v) fanciful. Platinum 

Home Mortg. Corp., 149 F.3d at 727 (citing Two Pesos, Inc. v. Taco Cabana Inc., 505 

U.S. 763, 767-68 (1992)). The level of protection to which a mark is entitled depends 

on where it falls on the spectrum of distinctiveness, the least distinctive being the 

“generic” mark to the most distinctive being the “fanciful” mark. Two Pesos, Inc., 

505 U.S. at 768. At issue is whether “Box Packaging” should be considered a 

“descriptive” or “suggestive” mark. This distinction is important because a suggestive 

mark has full trademark protection, whereas a descriptive mark is not protected unless 
- 8 -

it becomes distinctive, or put another way, “acquires secondary meaning” ‘in the 

collective consciousness of the relevant community.’” See Platinum Home Mortg. 

Corp., 149 F.3d at 727 (quoting Mil-Mar Shoe Co., Inc. v. Shonac Corp., 75 F.3d 

1153, 1157 (7th Cir. 1996)).

A descriptive mark “describes the ingredients, qualities, or characteristics of an 

article of trade or a service.” Platinum Home Mortg. Corp., 149 F.3d at 727 (quoting 

Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986)). A 

suggestive mark only indirectly suggests a product’s qualities. See Sands, Taylor & 

Wood Co. v. Quaker Oats Co., 978 F.2d 947, 952-53 (7th Cir. 1992). To determine if 

a mark is descriptive or suggestive, the court uses the “degree of imagination test.” 

“[I]f the mark imparts information directly, it is descriptive, however if the mark 

stands for an idea which requires some operation of the imagination to connect it with 

the goods, it is suggestive.” Id. at 952 (identifying “Thirst Aid” as descriptive when 

used for a drink that quenches thirst and “Roach Motel” as suggestive when used for 

an insect trap). 

Defendants argue that they are entitled to summary judgment because “Box 

Packaging” is a descriptive phrase with no secondary meaning that would entitle it to 

trademark protection. Plaintiff disagrees, stating that although it does not hold a 

registered trademark with the United States Patent and Trademark Office (“PTO”) for 

the phrase “Box Packaging,” that whether “Box Packaging” is descriptive or 

suggestive is not suitable for summary judgment because the categories are 
- 9 -

ambiguous and present issues of material fact. See Zazu Designs v. L’Oreal, S.A., 979 

F.2d 499, 502 (7th Cir. 1992) (“Through § 43(a) of the Lanham Act . . .a provision 

addressed to deceit, it also indirectly allows the enforcement of unregistered marks.”). 

However, Plaintiff argues that irrespective of the questions of fact, the evidence shows 

that “Box Packaging” is protected as an inherently distinctive “suggestive” mark. 

Alternatively, if this Court considers the mark as descriptive, Plaintiff asserts that it 

has satisfied the minimum threshold to establish that the phrase has acquired 

distinctiveness, also known as secondary meaning.

More specifically, Defendants aver that “Box Packaging” is a plain description 

of what Plaintiff sells, boxes and packaging, and that no reasonable jury could find 

otherwise. They cite to the use of “Box Packaging” by other companies in the 

industry as evidence of the descriptive nature of the phrase. Defendants further use 

written discovery as support: Plaintiff states in an answer to an interrogatory that

“100% of Plaintiff’s annual revenue is related to the sale of boxes and packaging 

products and services” (while still asserting its general objections to the 

interrogatories).

To rebut Defendants’ “descriptive” arguments, Plaintiff contends that “Box 

Packaging”, as a whole, does not immediately convey or describe the breadth of the 

services it provides since it does not only sell boxes and packages. Plaintiff lists the 

other industrial products it sells in addition to boxes and packaging, including 

adhesives, tape, cable ties, fasteners, bubble foam, filling, carts, safety products, as 
- 10 -

well as services like advertising, marketing, and promotion of other companies in the 

same industry. It also offers that “Box Packaging” is not a commonly defined phrase

found in a standard dictionary. 

The burden is on Defendants to provide enough evidence to create no doubt 

that “Box Packaging” should be classified as descriptive and no genuine dispute of 

fact exists otherwise. See Timelines, Inc. v. Facebook, Inc., 938 F. Supp. 2d 781, 793 

(N.D. Ill. 2013) (“. . . the classification of Plaintiff's marks is a question of fact. . . 

unless Defendant can demonstrate that the evidence as to Plaintiff's marks is so 

obvious that there is no doubt as to how the question of classification of the mark 

should be answered.”). Understanding that categorizing “Box Packaging” as 

descriptive or suggestive can be a question of fact, this Court finds that as a matter of 

law, “Box Packaging” is a descriptive mark. No operation of the imagination is 

necessary for this Court to connect “Box Packaging” with the fundamental operations 

of the company. See Forum Corp. of N. Am. v. Forum, Ltd., 903 F.2d 434, 444 (7th 

Cir. 1990) (It is not required “that a descriptive term depict the [product] itself, but 

only that the term refer to a characteristic of the [product].”). Although Plaintiff does 

not limit itself to only distributing boxes and packaging, a majority, if not all of its 

products and services it lists for the Court, encompass boxes and packaging in some 

fashion. Additionally, the use of “Box Packaging” at other companies in the industry 

also convinces the Court that the phrase is descriptive because it is widely 

acknowledged in the packaging service industry. Finally, the fact that “Box 
- 11 -

Packaging” is not found in the dictionary is inadequate to show an issue of material 

fact. 

B. Secondary Meaning

Because this Court has found “Box Packaging” descriptive, and not suggestive, 

the phrase is not protected unless Plaintiff can establish that “Box Packaging” has a 

secondary meaning in the mind of the public. “A mark acquires secondary meaning 

when it has been used so long and so exclusively by one company in association with 

its products or services in that particular industry that the word, term, name, symbol, 

or device has come to mean that those products or services are the company’s 

trademark.” Platinum Home Mortg. Corp., 149 F.3d at 728. A plaintiff “must show 

that, in the minds of the public, the primary significance of a product feature or term is 

to identify the source of the product rather than the product itself.” Inwood Labs., Inc. 

v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982). Descriptiveness and lack of 

secondary meaning can be decided in favor of a defendant on summary judgment. 

Custom Vehicles Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir. 2007). A 

plaintiff may face a heightened burden because “the more descriptive the term, the 

greater the evidentiary burden to establish secondary meaning.” Spex, Inc., 847 F. 

Supp. at 576. 

Courts consider both “direct evidence” factors and “circumstantial evidence” 

factors in deciding secondary meaning. Echo Travel, Inc. v. Travel Assocs., Inc., 870 

F.2d 1264, 1267 (7th Cir. 1989). There are two direct evidence factors: (i) direct 
- 12 -

consumer testimony; and (ii) consumer surveys. Id. These factors constitute “the 

chief inquiry with respect to secondary meaning.” Spex Inc., 847 F. Supp. at 577. 

Circumstantial factors include: (i) exclusivity, length and manner of use; (ii) amount 

and manner of advertising; (iii) amount of sales and number of customers; 

(iv) established place in the market; and (v) proof of intentional copying. Id. 

The burden is on Plaintiff to show that “Box Packaging” has a secondary 

meaning attached to it, or at the least demonstrate that a genuine issue of material fact 

exists as to the secondary meaning of the phrase. As to the direct evidence factors, 

Plaintiff does not present any direct consumer testimony or consumer surveys, but 

asserts that it is not required to prove every single factor and that the record raises 

material issues of fact on the question of secondary meaning. Instead, Plaintiff states

that it submitted sufficient evidence on three of the circumstantial factors to convince 

this Court that at the very least, a material issue of fact exists. 

1. Exclusivity, Length and Manner of Use

Plaintiff argues that it has exclusively used the phrase “Box Packaging” since 

1989 in connection with both its goods and services and that this use has created a 

secondary meaning in the phrase and consequently, a protectable right. Defendants 

rebut this argument with examples of other companies that have used “Box 

Packaging” in some manner. (Sunrise’s current ownership and use of a similar 

domain, “boxpackaging.net”, and the use of the phrase “box-packaging” in the UPS 

Store’s domain website and by A&R Box and Packaging). 
- 13 -

For instance, Defendants maintain that Plaintiff did not exclusively use “Box 

Packaging” for the years it claims because Allied owned “boxpackaging.com” from 

1999 until 2009. Plaintiff claims that even though it did not possess that specific 

domain, it used the phrase “Box Packaging” and went by BOX Packaging since 1989. 

The parties dispute whether Allied actually used “boxpackaging.com” in 2008 and 

2009. Plaintiff claims that Allied “merely maintained a registration of the domain 

name” and “did not actually use the domain name through at least 2006”, therefore 

continuing Plaintiff’s exclusive use of “Box Packaging”. Nonetheless, the materiality 

of this fact is not as obvious to this Court as it is to Plaintiff. What this Court finds 

more unfavorable to Plaintiff’s position is its use of BOX Partners.

Beginning in 2004, Plaintiff started to refer to itself as BOX Partners

interchangeably with BOX Packaging. The use of BOX Partners was not as incidental 

as Plaintiff claims—the record reflects Plaintiff used BOX Partners instead of BOX 

Packaging. Multiple exhibits, including countless invoices, paperwork, 

correspondence, and advertisements, refer only to BOX Partners, and not BOX 

Packaging. While many of these invoices are from more recent years, the record 

reveals that Plaintiff started to use BOX Partners more frequently over referring to 

itself as Box Packaging. Plaintiff also changed the sign outside its office from BOX 

Packaging to BOX Partners and employees use “boxpartners.com” email addresses. 

Irrespective of when all of these changes occurred, Plaintiff’s inconsistent use 

of BOX Packaging contradicts its attempts to establish a secondary meaning through 
- 14 -

exclusivity, length and manner of use. See Gimix, Inc. v. JS & A Group, Inc., 699 

F.2d 901, 907 (7th Cir. 1983) (holding that inconsistent advertising of an alleged 

protected trademark for five years did not establish secondary meaning). Indeed, 

Plaintiff is correct that a product or organization may be designated by more than one 

protectable mark. Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 

427, 435 (7th Cir. 1999). However, this Court finds that the frequent use of BOX 

Partners has broken the chain of continuity necessary for “Box Packaging” to acquire

a secondary meaning based on this factor. This also rebuts any argument by Plaintiff

that it had an established place in the marketplace because of the length and manner of 

its use of the “Box Packaging” mark. See Edsal Mfg. Co., Inc. v. Vault Brands, Inc., 

No. 11 C 9287, 2012 WL 5558849 (N.D. Ill. Nov. 15, 2012) (citing MicroStrategy 

Inc. v. Motorola, 245 F.3d 335, 342 (4th Cir. 2001), which held that trademark usage 

must be “readily apparent and recognizable without extended analysis or research and 

certainly without legal opinion”).

The same is true with respect to the fact that Plaintiff also fails to provide 

enough evidence for this Court to conclude that even before it began using BOX 

Partners (from approximately 1989 to 2004) that the public associated “Box 

Packaging” with Plaintiff enough to acquire a secondary meaning. See Edsal Mfg. 

Co., Inc., 2012 WL 5558849 (“Although use in commerce is essential for trademark 

rights, use of a merely descriptive or generic term will not on its own create trademark 
- 15 -

rights.”). The circumstantial factors of exclusivity, length, and manner of use are,

therefore, unsupportive as to the existence of a secondary meaning. 

2. Advertising and Proof of Intentional Copying

As to the amount and manner of advertising, Plaintiff admits that it did not 

produce specific advertising and sales figures during discovery for the Court to 

consider, but that it has produced and spent “substantial sums” on “hundreds of 

pages” of Plaintiff’s advertisements with “Box Packaging” on them. Defendants 

refute this by claiming that only a dozen of those advertisements even mention “Box 

Packaging” and almost all advertise BOX Partners. Additionally, Defendants argue 

that Plaintiff should be precluded from offering evidence to prove this circumstantial 

factor because Plaintiff “stonewalled” written discovery by asserting “unfounded 

objections” to Defendants’ requests for information on Plaintiff’s advertising. 

After review of the record, this Court agrees that Plaintiff fails to meet its 

evidentiary burden of establishing that its amount and manner of advertising create a 

secondary meaning. There is little evidence that these advertisements had a 

significant effect—the record is devoid of details on when and for how long these 

advertisements were broadcasted, who may have seen these advertisements, and 

whether they reached consumers. Additionally, nothing indicates that actual 

customers of Plaintiff were even exposed to these advertisements. See Echo Travel,

Inc., 870 F.2d at 1270 (where 25,000 posters and advertisements in student 

newspapers were not sufficient enough to raise a genuine issue of material fact as to 
- 16 -

the existence of secondary meaning). Therefore, the bald assertion that these 

“hundreds of pages” of advertisements reached consumers during the decades Plaintiff

exclusively used “Box Packaging” does not establish an issue of material fact as to 

this circumstantial factor. 

Regarding the issue of proof of intentional copying, Plaintiff claims that after 

ten years of conducting business with Defendants as BOX Packaging, Defendants

intentionally copied after they purchased the Domains and started the Box Packaging 

Products company in 2010. Plaintiff uses Diroll’s deposition testimony where he 

stated that he registered and purchased the Domains to act as a “lead generator” as 

evidence of intentional copying because once the Domains were purchased, Plaintiff

became a direct competitor. 

“When a business's strategy includes using a competitor's name in order to 

divert or confuse potential customers, infringement or dilution or other unfair trade 

practices may be occurring. Where a competitor's strategy is to use generic and 

descriptive terms to market its products, wrongdoing is less likely.” Best Vacuum, 

Inc. v. Ian Design, Inc., 04 C 2249, 2005 WL 1185817 (N.D. Ill. Jan. 18, 2005). 

Because this Court has found “Box Packaging” to be a descriptive phrase, improper 

use of it by Defendants is not as likely. While it is true that Plaintiff used the 

company name of BOX Packaging for many years, the record reflects that it started to 

phase that name out in 2004 when it started using BOX Partners. Also, as Defendants 
- 17 -

point out, other companies use “Box Packaging” to promote their products on the 

internet. 

This Court finds that the choice Plaintiff took when it used a common 

descriptive phrase for its original company name, and its subsequent decision to refer 

to itself as BOX Partners collectively weaken its argument of intentional copying. 

The years that the parties engaged in business together and Diroll’s deposition 

testimony do not salvage Plaintiff’s lack of evidence showing that Defendants 

intentionally copied the name and mark or acted in bad faith. Consequently, in 

addition to supplying no direct evidence, Plaintiff has failed to provide any significant 

circumstantial evidence that the public associated a secondary meaning with BOX 

Packaging.

C. Likelihood of Confusion

Defendants contend that they are entitled to summary judgment because 

Plaintiff does not meet its burden of providing evidence to show that Defendants’ use 

of “Box Packaging” is likely to confuse. Plaintiff disputes this, asserting that there 

were instances of actual confusion and that Defendants’ use of “boxpackaging.com” 

infringes on its federally registered trademark “BOX Partners”. 

In the Seventh Circuit, seven factors are used to evaluate whether a likelihood 

of confusion exists: (i) the similarity between the marks in appearance and suggestion; 

(ii) the similarity of the products or services; (iii) the area and manner of concurrent 

use; (iv) the degree of care likely to be exercised by consumers; (v) the strength of the 
- 18 -

plaintiff's mark; (vi) whether any actual confusion exists; and (vii) whether the 

defendant intends to palm off its products as those of the plaintiff. Ty, Inc. v. Jones 

Grp., Inc., 237 F.3d 891, 897-98 (7th Cir. 2001). As a factual issue, likelihood of 

confusion can be decided in the summary judgment stage “if the evidence is so onesided that there can be no doubt about how the question should be answered.” Door 

Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171 (7th Cir. 1996). Every factor 

need not be proven, instead the “weight and totality of the most important factors in 

each case will ultimately be determinative of the likelihood of confusion, not whether 

the majority of the factors tilt the scale in favor of one side or the other.” AHP 

Subsidiary Holding Co., 1 F.3d at 616. In some cases, lack of evidence of actual 

confusion may be conclusive to a finding of no likelihood of confusion. Nike, Inc. v. 

Just Did It Enters., 6 F.3d 1125, 1231 (7th Cir. 1993). 

Plaintiff claims that it has provided evidence of actual confusion because 

several customers expressed confusion. However, no information is known about 

these customers because Plaintiff’s employees claim they cannot remember any 

specific names. Stating the existence of actual confusion is not the same as proving 

that an issue of material fact exists as to it. The Court now turns to the likelihood of 

confusion since evidence of actual confusion is not required to prove that a likelihood 

of confusion exists. 

It is not necessary for this Court to do a full analysis of all seven factors that 

establish likelihood of confusion. Indeed, boxpackaging.com and boxpartners.com 
- 19 -

(BOX Partners) share the word “box” and provide very similar services, but confusion

is less likely to occur with sophisticated business customers that typically purchase

Plaintiff’s products and services. See Humanly Possible, Inc. v. Manpower, Inc., No. 

11 C 4977, 2013 WL 633332 (N.D. Ill. Feb. 19, 2013). As to the strength of 

Plaintiff’s mark, this Court has already determined that “Box Packaging” is a common 

descriptive phrase. Plaintiff’s federal registration of BOX Partners is not a 

particularly strong mark either. Finally, in the intentional copying analysis contained 

in Subsection B2 supra, the Court has concluded that the evidence does not support 

that Defendants have attempted to palm off their services as those of Plaintiff. Thus, 

the factors weigh in favor of Defendants, and no material issue of fact exists as to a 

likelihood of confusion in the sense that consumers were confusing 

“boxpackaging.com” with BOX Partners. 

Because this Court has found that Plaintiff falls short of establishing that it has 

a protectable right to the phrase “Box Packaging”, Defendants’ laches and 

acquiescence by estoppel defenses need not be addressed. Defendants are therefore 

entitled to summary judgment as to Counts III and IV.

II. Remaining Federal Claims

A. Fraudulent Registration and Cybersquatting Claims

To establish that Defendants engaged in fraud in procuring the registration of

“Box Packaging”, Plaintiff must establish by clear and convincing evidence that 

Defendants deliberately attempted to mislead the PTO by presenting materially false 
- 20 -

and misleading information when Defendants applied for their trademark registration. 

See Money Store v. Harriscorp Fin., Inc., 689 F.2d 666, 670 (7th Cir. 1982); see also 

In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009) (“a trademark is obtained 

fraudulently under the Lanham Act only if the applicant or registrant knowingly 

makes a false, material representation with the intent to deceive the PTO.”). 

Compared to a claim for fraudulent registration, a cybersquatting claim involves a 

similar showing of bad faith. To establish its cybersquatting claim, Plaintiff must 

show that: (i) it had a distinctive or famous mark at the time Defendants registered the 

domain name; (ii) Defendants registered, trafficked in, or used a domain name that is 

identical or confusingly similar to Plaintiffs' mark; and (iii) Defendants acted with bad 

faith to profit from that mark. MasterCard Int'l Inc. v. Trehan, 629 F. Supp. 2d 824, 

830 (N.D. Ill. 2009). 

As to these remaining federal claims, it is undisputed that Defendants were 

aware of Plaintiff’s use of “Box Packaging” in the years prior, particularly because the 

parties engaged in business relations. Still, advance knowledge of a mark’s use by 

itself does not establish triumphant claims involving bad faith. See Packman, 267 

F.3d at 644-45. In fact, the evidence clearly cites to other companies in the same 

industry that actively use the phrase “Box Packaging” or variations of it, 

predominantly on their websites or in their choice of domains. This refutes any 

argument from Plaintiff that it had a distinctive or famous mark at the time 
- 21 -

Defendants registered the domain name, in addition to the fact that this Court has 

found that “Box Packaging” was not a protectable mark. 

Also, at some point, Allied relinquished ownership of the “boxpackaging.com” 

domain because Defendants purchased it through the Go Daddy service for $5,675.00. 

This indicates that Box Acquisitions had the opportunity to purchase the 

“boxpackaging.com” domain. Plaintiff’s conclusory accusations that Defendants 

fraudulently registered “boxpackaging.com” and engaged in cybersquatting because 

Defendants knew Plaintiff used “Box Packaging” does not create a genuine issue of 

material fact or rise to the level of clear and convincing evidence to support these 

claims. When all is said and done, Plaintiff could have registered “Box Packaging” 

with the PTO for the years it claims exclusive use of the phrase and the results of this 

lawsuit could have been vastly different. However, it failed to do so. For these 

reasons, the Court grants Defendants’ summary judgment motion as to Counts I 

and V. 

B. Cancellation of Trademark Registration Claim

Plaintiff asks for this Court to cancel the trademark registration of 

“boxpackaging.com” Defendants currently have with the PTO office. While federal 

courts possess the power to cancel registration of a trademark when appropriate, it is 

to be done when “a registrant's asserted rights to a mark are shown to be invalid, 

cancellation is not merely appropriate, it is the best course.” Central Mfg., Inc. v. 

Brett, 492 F.3d 876, 883 (7th Cir. 2007). This power only arises if the trademark is 
- 22 -

contestable and “[o]nce a mark has been used for five years following registration, it 

becomes ‘incontestable’”. Eco Mfg. LLC v. Honeywell Int'l, Inc., 357 F.3d 649, 651 

(7th Cir. 2003). Despite the fact that the “boxpackaging.com” mark is still contestable 

because it was registered fewer than five years ago, this Court finds no reason why it 

should cancel Defendants’ trademark registration of “Box Packaging”. Accordingly, 

summary judgment is granted as to Count II.

IV. Remaining State Law Claims

Defendants have met their burden of establishing that no rational trier of fact 

could find that the phrase “Box Packaging” warrants trademark protection as either a 

suggestive mark, or alternatively, as a descriptive mark that acquired a secondary 

meaning. Defendants also establish that no genuine issue of material facts exist as to 

the other federal claims brought under the Lanham Act. Plaintiff fails to meet its 

burden of showing through specific evidence that a triable issues of fact remain. As 

such, this Court grants summary judgment as to Plaintiff’s common law and statutory 

claims because all are resolved under the same analysis as the federal claims. (Counts 

VI through IX). See Spex, Inc., 847 F. Supp. at 579 (holding that “[c]laims for unfair 

competition and deceptive business practices [involving trade names] brought under 

Illinois statutes are to be resolved according to the principles set forth under the 

Lanham Act” and noting that “Illinois courts look to federal case law and apply the 

same analysis to state infringement claims”). 
- 23 -

CONCLUSION

For the foregoing reasons, this Court grants Defendants’ motion for summary 

judgment in its entirety.

____________________________________

Charles P. Kocoras

United States District Judge

March 26, 2014

Dated: ______________________