Antitrust Law Daily Wrap Up, ADVERTISING—D. Minn.: False commercial statement required to state Lanham Act false advertising claim, (Oct 27, 2014)

By Jody Coultas, J.D.

The federal district court in Minneapolis dismissed Lanham Act false advertising claims filed by Honeywell International Inc. against competitor ICM Controls Corp. for failing to allege a false commercial statement (Honeywell International Inc. v. ICM Controls Corp., October 24, 2014, Ericksen, J.).

Honeywell alleged that ICM Controls created the false impression that ICM’s products were in fact affiliated with, the same as, sponsored by, manufactured by, or condoned by Honeywell in violation of the Lanham Act. The court previously granted ICM Controls’ motion for summary judgment on Honeywell’s claims of trade dress infringement because Honeywell failed to submit evidence that its claimed trade dress is nonfunctional. The court also questioned the viability of Honeywell International’s claim of false advertising because it was based on the same facts as the trade dress claim.

In response to the court’s request for a brief to support the false advertising claim, Honeywell responded that the false advertising claim challenged a broader range of ICM’s conduct than the trade dress claim. Specifically, Honeywell alleged that ICM advertised and promoted that its products were the same as products manufactured by Honeywell and made its products look the same as Honeywell’s products. However, ICM’s products allegedly were not the same as Honeywell’s and not always highly interchangeable with the Honeywell products. ICM responded that Honeywell failed to allege a single false commercial statement of fact.

Because Honeywell failed to allege that ICM made any false statement in a commercial advertisement, the court dismissed the claim. Honeywell alleged that ICM marketed products that appeared similar to those of Honeywell and that the marketing created a false impression that ICM Controls’ products are affiliated with, the same as, sponsored by, manufactured by, or condoned by Honeywell. Honeywell had no protectable interest in its claimed trade dress. Because Honeywell could not show trade dress infringement of its products, the marketing of those same products did not constitute false advertising.

The case is No. 11-569 (JNE/TNL).

Attorneys: Emily Cowing (Robins Kaplan Miller & Ciresi LLP) for Honeywell International Inc. Allen W. Hinderaker (Merchant & Gould PC) for ICM Controls Corp.

Companies: Honeywell International Inc.; ICM Controls Corp.

Cases: Advertising MinnesotaNews