IP Law Daily, TRADEMARK—W.D. Wash.: Mixed ruling in trademark dispute between cleaning product companies over ‘BREAKTHROUGH’ mark, (Jun 1, 2026)

By Ravindra Kumar Singh, B.L.

Factual disputes preserved most claims and counterclaims, but a trademark infringement counterclaim failed for lack of evidence of infringing products.

A federal district court in Washington has issued a mixed ruling in a dispute over the BREAKTHROUGH trademark between a manufacturer of industrial cleaning solvents and a seller of firearm cleaning products, denying the defendant’s motion for summary judgment in its entirety while preserving most of the plaintiff’s claims and the defendant’s counterclaims for trial. The court denied the plaintiff’s motion to dismiss the counterclaims, dismissed the defendant’s federal trademark infringement counterclaim with prejudice and otherwise concluded that factual disputes concerning an alleged trademark license, consumer confusion, false advertising, equitable defenses and copyright infringement could not be resolved without a jury (Inland Technology Inc. v. The Allen Company, Inc., No. 3:24-cv-05913-BHS (W.D. Wash. May 29, 2026)).

Background. The plaintiff, Inland Technology Incorporated (Inland), is a manufacturer and seller of industrial cleaning solvents used in aerospace, automotive, and military applications. The defendant, The Allen Company, Inc. (Allen), sells firearm cleaning and maintenance products through retailers and direct-to-consumer channels. Allen acquired the assets of ATG Specialty Products Corporation in 2022, including trademark rights and related business assets. ATG had previously marketed and sold Inland’s solvent products to civilian consumers.

The case centered on Inland’s BREAKTHROUGH trademark, which was registered in 1993 for cleaning products. Inland alleged that ATG later used the BREAKTHROUGH name on products sold to firearm owners and developed additional branding, including the BCT and B-Shield marks. According to the court, ATG obtained registrations for those marks without Inland’s authorization. The marks covered gun-cleaning preparations, gun barrel oil, and related firearm-maintenance products. According to Inland, it engaged ATG owner Erick Navarro in 2013 to market and sell BREAKTHROUGH solvent products to civilian consumers and allowed ATG to use the trademark under a licensing arrangement. Inland claimed the arrangement required ATG to purchase solvent exclusively from Inland. Allen disputed the existence of any license agreement.

After acquiring ATG’s assets, Allen continued using BREAKTHROUGH branding. Inland later concluded that Allen was using the mark on products containing solvent supplied by third-party suppliers rather than by Inland. Inland sent a cease-and-desist letter in August 2024, revoking Allen’s authority to use the mark, and filed suit two months later.

Inland asserted claims for trademark infringement, false designation of origin, false advertising, violations of Washington’s Consumer Protection Act, and unjust enrichment. Allen responded with counterclaims for trademark infringement, false designation of origin, Consumer Protection Act violations, declaratory relief concerning Inland’s trademark application, and copyright infringement based on Inland’s use of Allen’s product labels in a November 2024 trademark application.

Counterclaims. The court first rejected Inland’s attempt to dismiss Allen’s counterclaims. It found that Allen plausibly alleged false designation of origin and Consumer Protection Act claims because both depended on consumer confusion. This fact-intensive issue could not be resolved at the pleading stage. The court also allowed Allen’s request for declaratory relief concerning Inland’s November 2024 trademark application to proceed. Allen alleged that Inland improperly relied on photographs of Allen’s products to support the application. Inland responded that Allen’s use of the mark inured to Inland’s benefit because Allen operated under a license. Because the parties sharply disputed whether a valid license existed, the court found the issue unsuitable for dismissal.

Trademark claims. The central issue in the case was whether Allen’s use of the BREAKTHROUGH mark was authorized and whether it was likely to confuse consumers. Inland argued that the mark is valid and that Allen’s continued use after termination of the alleged license created consumer confusion. Allen denied the existence of any licensing arrangement and argued that confusion was unlikely.

The court concluded that genuine factual disputes prevented summary judgment. It identified unresolved questions regarding the commercial strength of the BREAKTHROUGH mark, the relationship between the parties’ products, evidence of actual consumer confusion, consumer sophistication, and the parties’ marketing practices. The court emphasized that trademark disputes are particularly fact-intensive and that the likelihood of confusion is ordinarily determined by a jury.

The court also found a significant factual dispute regarding the alleged licensing relationship. Inland presented evidence that Navarro sought approval for labels and marketing materials and that Inland instructed ATG on proper use of the trademark. Allen countered that no final licensing agreement was ever executed and argued that any purported license would be unenforceable. Citing Department of Parks & Recreation for State of California v. Bazaar Del Mundo Inc., 448 F.3d 1118 (9th Cir. 2006), the court held that a jury must decide whether an express or implied license existed.

Laches, waiver, and equitable estoppel. Allen also argued that Inland’s claims were barred by laches, waiver, and equitable estoppel because Inland allegedly waited years before enforcing its trademark rights. The court rejected the laches defense, finding that if Allen’s conduct constituted infringement, it would necessarily have been willful because Allen knew Inland owned the BREAKTHROUGH mark. Citing Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (9th Cir. 2002), the court held that laches was unavailable under those circumstances. The court found that waiver and estoppel depended on disputed facts and therefore could not be resolved on summary judgment.

The court also rejected Allen’s argument that Inland lacked standing to pursue false advertising claims based on Allen’s “Made in USA” representations. Relying on Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), the court held that Inland had adequately alleged reputational and commercial harm. Conflicting testimony regarding actual injury created a factual dispute for trial. The court similarly refused to dismiss Inland’s unjust enrichment claim because the existence of any licensing agreement remained unresolved.

Trademark infringement counterclaim. The only claim eliminated before trial was Allen’s federal trademark infringement counterclaim. Allen alleged that Inland infringed the BCT and B-Shield marks. The court found no evidence supporting that allegation. Allen’s president, Brian Cavanaugh, testified that despite an investigation lasting more than a year, Allen had been unable to identify any Inland products bearing those marks. The only examples cited by Allen were photographs submitted with Inland’s trademark application, but Inland never claimed those products as its own. The court therefore concluded that no reasonable jury could find infringement and dismissed the counterclaim with prejudice.

Copyright counterclaims. The court reached a different conclusion on Allen’s copyright infringement counterclaim. Allen alleged that Inland infringed copyrights in its product labels by reproducing them in Inland’s trademark application. Inland argued that the labels were not copyrightable because the Copyright Office had refused registration and, in the alternative, claimed fair use. The court rejected both arguments at this stage. It held that copyrightability remained a factual issue and that the fair-use analysis could not be resolved on the existing record, particularly because there was insufficient evidence regarding the effect of Inland’s use on the market for the labels. As a result, the copyright claim will proceed alongside the parties’ remaining trademark and unfair-competition claims.

The Case is No. 3:24-cv-05913-BHS.

Judge: Settle, B.

Attorneys: John E. Whitaker (Christensen O'Connor Johnson & Kindness) for Inland Technology Inc. Annemarie Garrett (Greenberg Traurig, LLP) for The Allen Co., Inc.

Companies: Inland Technology Inc.; The Allen Co., Inc.

Cases: Trademark Copyright WashingtonNews