Last July, Bellingham, Wash.-based Homax Products, Inc. filed a declaratory judgment action against Dynacraft Industries, Inc. Both parties manufacture paint removal products that change color to signify when the paint they are applied to is ready to be stripped.
One of Dynacraft’s READY STRIP products
Homax’s complaint stemmed from a cease-and-desist letter it received from Dynacraft in May 2006, which allegedly claimed that:
- Homax’s use of NATURE’S OWN for its paint strippers infringes Dynacraft’s federally-registered mark, BACK TO NATURE;
- Homax’s use of the the phrase “Color Changing Paint Stripper” infringes Dynacraft’s common law trademark rights in COLOR CHANGING PAINT STRIPPER; and
- Homax’s “selection of verbiage” in two of its labels are “close in comparison with the copyrighted verbiage in Dynacraft’s ‘Ready Strip’ label.”
The complaint asked the Western District to determine that Homax “has not infringed Dynacraft’s alleged federal trademark registration for ‘Back to Nature’”; that “Dynacraft has no rights in the term ‘nature’ apart from any rights it has in the mark ‘Back to Nature’”; that “Dynacraft has no trademark rights in the generic and/or merely descriptive phrases ‘color changing’ and ‘paint stripper’”; that Homax has not infringed Dynacraft’s trade dress; and that Dynacraft has no protectable trade dress in the packaging of its products.
In Oct. 2006, Dynacraft answered Homax’s complaint and asserted counterclaims that Homax was indeed infringing its trade dress and trademark rights. (The answer is worth checking out for the color exhibits on pages 20 and 21 illustrating the products’ similar trade dress.)
The parties recently made nice. Today, they filed a Stipulation and Order of Dismissal stating they had settled their differences and agreed that all claims and counterclaims between them should be dismissed with prejudice.
The case cite is Homax Products, Inc. v. Dynacraft Industries, Inc., No. 06-990 (W.D. Wash.).