BANJO CORPORATION v. GREEN LEAF, INC.

1
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
BANJO CORPORATION, 	)
)
Plaintiff, 	)
)
v. 	) 	No. 1:23-cv-01770-SEB-MG
)
GREEN LEAF, INC., 	)
)
Defendant. 	)
)
)
GREEN LEAF, INC., 	)
)
Counter Claimant, 	)
)
v. 	)
)
BANJO CORPORATION, 	)
)
Counter Defendant. 	)
)
)
FEDERATED MUTUAL INSURANCE
COMPANY,
)
)
)
Intervenor
Defendant.
)
)
ORDER ON PARTIES' CROSS-MOTIONS FOR SUMMARY JUDGMENT
Plaintiff Banjo Corporation ("Banjo") brought this trademark infringement and un-
fair competition action against Defendant Green Leaf, Inc. ("Green Leaf"), alleging that
Green Leaf deliberately copied Banjo's Yellow Handle® Design as part of a calculated
effort to divert sales away from Banjo through consumer confusion, in violation of the
Lanham Act, 15 U.S.C. § 1051 et seq., and Indiana common law. Green Leaf filed a
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counterclaim against Banjo, seeking the cancellation of Banjo's registration of the Yellow
Handle® Design. Now before the Court is Banjo's Motion for Partial Summary Judgment,
dkt. 84, and Green Leaf's Motion for Summary Judgment, dkt. 124. For the reasons stated
below, Banjo's motion is GRANTED in part and DENIED in part, dkt. 84, and Green
Leaf's motion is DENIED, dkt. 124.
LEGAL STANDARD
Summary judgment is proper when "the movant shows that there is no genuine dis-
pute as to any material fact and that the movant is entitled to judgment as a matter of law."
Fed. R. Civ. P. 56(a). Because summary judgment requires "no genuine issue of material
fact," "the mere existence of some alleged factual dispute between the parties will not de-
feat an otherwise properly supported motion for summary judgment." Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 247−48 (1986) (emphasis in original). Material facts are those
that "might affect the outcome of the suit," and a dispute of material fact is genuine when
"a reasonable jury could return a verdict for the nonmoving party." Id. at 248.
"The ordinary standards for summary judgment remain unchanged on cross-motions
for summary judgment: we construe all facts and inferences arising from them in favor of
the party against whom the motion under consideration is made." Blow v. Bijora, Inc., 855
F.3d 793, 797 (7th Cir. 2017) (citation omitted). Where the movant seeks "summary judg-
ment on a claim as to which it bears the burden of proof, it must lay out the elements of the
claim, cite the facts which it believes satisfies these elements, and demonstrate why the
record is so-one sided as to rule out the prospect of finding" in the non-movant's favor.
Hotel 71 Mezz Lender LLC v. Nat'l Ret. Fund, 778 F.3d 593, 601 (7th Cir. 2015). "If the
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movant has failed to make this initial showing, the court is obligated to deny the motion."
Id.
FACTUAL & PROCEDURAL BACKGROUND
Throughout the course of this litigation, which has pended on our docket for more
than two years, the parties have demanded judicial intervention to resolve an excessive
number of discovery- and case management-related disagreements. See, e.g., dkt. 67, 77,
78, 92, 93, 99, 104, 104, 110, 115, 118, 137, 145, 188. Only now do we arrive at the merits
of the trademark infringement dispute at the heart of this litigation. In reciting the facts
below, we have omitted the parties' editorial embellishments and legal argumentation im-
properly embedded in their presentations of record as well as factual assertions unsup-
ported by citations to the record. See S.D. Ind. L.R. 56-1 cmt. (a)–(b), (e).
I. 	The Parties
A. 	Banjo & the Original Yellow Handle
Banjo Corporation (formerly known as Terra-Knife and Terra-Products) is an Indi-
ana-based manufacturer of liquid handling products utilized in the commercial, industrial,
and agricultural sectors. Hays Decl. ¶¶ 2, 8, dkt. 112-1. According to John Hays ("Mr.
Hays"), the Business Line Leader, Pumps & Compressors of Advanced Flow Solutions of
IDEX Corporation ("IDEX"), Banjo's parent company, "Banjo is a leading provider of con-
trol valves for regulating the flow of liquids in hoses and pipes." Id. ¶ 2. Since 1994, Banjo
has regarded the color yellow as a signature feature of its brand, incorporating the color
into its marketing materials as well as the products themselves. Id. ¶ 3. In the early 2000s,
Banjo began marketing its control valves as the "original yellow handle." Wagner Aff. ¶
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12, dkt. 124-5; Bezdicek Aff. ¶ 10, dkt. 124-7. Prior to 2018, Banjo was not aware of any
competitor making more than the occasional or sporadic use of yellow handles on valves
or valve-related products specific to the agricultural market. Hays Decl. ¶ 4, dkt. 112-1.
Banjo's revenues are generated primarily through sales to product distributors in the
agricultural sector, who, in turn, sell Banjo's products to end-users (namely, farmers). Id. ¶
10. At a typical outlet, the distributor displays Banjo's and Banjo's competitors' products in
bins and/or on shelves, often without packaging, making it especially important to Banjo
that its products are visually distinguishable from those of its competitors. See id. Accord-
ing to Mr. Hays, Banjo has previously "sold approximately 675,000 units of its Yellow
Handle® valves annually (representing tens of millions of dollars)," id. ¶ 3, though Banjo
has not yet provided further evidence of its revenues beyond Mr. Hays's written statements.
Currently, Banjo sells approximately 150 types of yellow handle control valves as
well as companion fittings and the like, all of which bear a four-digit alpha-numeric iden-
tification code (e.g., "V050"). Id. ¶¶ 6, 9. Banjo's end-users, primarily farmers, rely on
these identification codes to locate replacement parts and/or to restock their inventories.
Id. ¶ 11.
B. 	Green Leaf & the TerreMax Brand
Green Leaf is also an Indiana-based manufacturer of liquid-handling products that
competes with Banjo in the production and sale of control valves. Goda Aff. ¶ 3, dkt. 124-
4. (Other competitors in the liquid handling industry include, but are not limited to, Apache,
Bee Valve, Norwesco, and Kuriyama. Bezdicek Aff. ¶ 6, dkt. 124-7.) Green Leaf had pre-
dominantly used green in its branding and products. See generally dkt. 112-15 at 5–10, 16,
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107–13; e.g., dkt. 112-13 (screenshot of Green Leaf's website as it appeared in May 2014,
showing photo of green handled valve); dkt. 112-14 (screenshot of Green Leaf's website as
it appeared in December 2015, showing photo of green handled valve); Cummings Decl.
¶¶ 4–5, dkt. 112-12 (authenticating screenshots); dkt. 112-20 at 6 (October 2019 email re-
ferring informally to Green Leaf's "trademark green color"). That said, Peter Goda ("Mr.
Goda"), Green Leaf's owner and President, asserts that Green Leaf has also sold yellow
handled valves continually since 1998. Goda Aff. ¶ 6, dkt. 124-4.
Prior to 2018, Green Leaf generated most of its revenues through sales to retail
stores, such as Farm & Fleet, Tractor Supply, and Menards. Goda Dep. 25:23–25, dkt. 112-
16. In the mid-2010s, however, Green Leaf made the decision to begin targeting growth
opportunities in the commercial agriculture sector where Banjo had predominated. See
Goda Aff. ¶ 7, dkt. 124-4. According to Green Leaf, the decision to target commercial ag-
riculture was motivated, in part, by reported deficiencies in its competitors' (namely, Ban-
jo's) ability to fulfill customer demands. Id. ¶ 8.
In 2018, Green Leaf launched its commercial agriculture division under the name
"TerreMax." In Mr. Goda's words, the distinction between Green Leaf and TerreMax is "a
branding thing," since their overall "operation's pretty much the same." Goda Dep. 25:22–
23, dkt. 112-16. Through its TerreMax brand, Green Leaf offers a robust selection of heavy-
duty liquid handling products with an emphasis on uses in commercial agriculture. See,
e.g., Bezdicek Dep. 82:11–21, dkt. 112-19. As outlined in greater detail below, this lawsuit
relates principally to Green Leaf's creation of its TerreMax division.
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II. 	Green Leaf Hires Two Former Banjo Employees
In gearing up to expand its reach into commercial agriculture, Green Leaf hired two
longtime Banjo employees: Matthew Wagner ("Mr. Wagner") and Vincent Bezdicek ("Mr.
Bezdicek").
A. 	Mr. Wagner
Mr. Wagner began his career with Banjo in the 1980s, where he worked in sales for
approximately thirty years. Wagner Aff. ¶ 3, dkt. 124-5. Mr. Wagner states by affidavit that
he departed from Banjo because he felt that Banjo "was not providing proper service" to
its customers. Id. ¶ 15. According to Mr. Hays, "Banjo had some concern" that Mr. Wagner
surreptitiously transmitted "documents" to his private Yahoo! account, though Banjo has
neither confirmed its suspicions nor formally pursued the matter. Hays Decl. ¶ 17, dkt. 112-
1. Sometime after Mr. Wagner officially terminated his employment with Banjo (though it
is unclear exactly when), Green Leaf contacted Mr. Wagner to offer him a sales position.
Id. ¶ 16.
In December 2016, Mr. Wagner began employment with Green Leaf as a sales rep-
resentative. See Wagner Suppl. Aff. ¶ 3, dkt. 124-29. On December 21, 2016, Banjo wrote
to Green Leaf detailing "post-employment contractual and other legal obligations" that Mr.
Wagner purportedly owed to Banjo as his former employer. Hays Decl. ¶ 17, dkt. 112-1;
dkt. 112-10. The letter stated, in relevant part, that Mr. Wagner was bound by a one-year
non-compete agreement and that Mr. Wagner had a continuing obligation to safeguard and
protect Banjo's confidential information. See dkt. 112-10 at 2–3. Although Banjo "urge[d]"
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Green Leaf's legal counsel to follow up with Banjo's in-house counsel, it appears that no
further action was taken by Banjo in this regard at that time. Id. at 4.
Enclosed in the December 21st letter was a copy of the "Employee Confidential
Information, Work Product, and Non-Solicitation Agreement" to which Banjo contends Mr.
Wagner was bound. Id. at 2. Mr. Wagner, however, maintains that he "never signed" any
such agreement with Banjo and that the purported employment agreement is "fraudulent."
Wagner Suppl. Aff. ¶¶ 5–6, 8–9, dkt. 124-29; Wagner Dep. 40:6–21, dkt. 112-17. To
demonstrate the inauthenticity of the purported employment contract, Mr. Wagner high-
lights its improper pagination: The eighth and final page bearing his signature (dated May
18, 2007) is enumerated as page six. Id. ¶ 6–7. Mr. Wagner alleges that Banjo likely at-
tached a signature page from a different, unidentified agreement to create the appearance
that Mr. Wagner signed a non-compete agreement. Id. In light of this factual dispute, the
substance and scope of Mr. Wagner's purported contractual obligations to Banjo remain
unclear.
B. 	Mr. Bezdicek
Mr. Bezdicek began his thirty-six-year sales career with Banjo in 1979, which ex-
tended through his retirement in 2015. Bezdicek Aff. ¶¶ 2, 5, 11, dkt. 124-7. Prior to his
retirement, Mr. Bezdicek reportedly had begun to "experience difficulties with [Banjo's]
management," namely, with regard to Banjo's ability to meet customer demands. Id. ¶ 12.
On December 10, 2015, Mr. Bezdicek affirmed that he had read and understood Banjo's
Code of Ethics and Business Conduct. Hays Decl. ¶ 17, dkt. 122-1; dkt. 112-11.
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Following his departure from Banjo, Mr. Bezdicek was also contacted by Green
Leaf about joining Green Leaf's sales team and helping to launch TerreMax. Bezdicek Aff.
¶ 13, dkt. 124-7. Internal email correspondence between Mr. Goda and Green Leaf's Vice
President of Sales and Marketing Teko Goda ("Teko") reveals that, in December 2016,
Green Leaf believed hiring Mr. Bezdicek "would be a good move" because "[h]e has a lot
of relationships with people that are loyal to him personally." Dkt. 112-22 at 3. Mr.
Bezdicek began working for Green Leaf in mid-2017.
III. 	Green Leaf Prepares to Launch TerreMax
Throughout 2017, Green Leaf undertook various steps aimed at improving "every
product category" by adding hundreds of products to its catalog in order to "get new busi-
ness away from [its] competitors" utilizing its new TerreMax branding. Bezdicek Dep.
80:11–14, dkt. 112-19. In April 2017, Green Leaf "made a big financial commitment to
order a bunch of new tooling so the product line will look like Banjo's." Dkt. 113-7 (April
2017 email from Mr. Wagner) (under seal). Indeed, during "Phase 1" of what Green Leaf
referred to as "Project Banjo," Green Leaf budgeted $250,000 for "new tooling to duplicate
Banjo." Dkt. 113-2 at 4 (capitalization modified) (under seal). Internal correspondence re-
veals that Green Leaf employees prepared "a breakdown of what we have compared to
what Banjo has." Id. at 3. These retooling efforts included "add[ing] material" to existing
products in order "to match Banjo['s] profile" and "renumber[ing] everything to match
Banjo." Id. at 5.
Green Leaf prepared a detailed spreadsheet itemizing and comparing the prices of
hundreds of different products manufactured and sold by Green Leaf, Banjo, Norwesco,
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and Bee Valve, among others. See generally id. at 6–15. This price and parts comparison
spreadsheet reveals that, at that time, many of Green Leaf's products did not match Banjo's
(even for "compatible" parts), and none of the other competitors utilized a parts numbering
system that replicated Banjo's. See id.
In addition to emulating Banjo's product selection and alphanumeric identification
system, Green Leaf opted to use yellow, rather than its "trademark green color," on the
control valve handles. Dkt. 112-20 at 6. Indeed, a June 2017 email thread reveals that Green
Leaf color matched the handles by using a sample of Banjo's product. See dkt. 112-23 at
8–9. At that time, Green Leaf chose to "leav[e] [its] name off the valve handles to allow
[its] customers to apply their own decals if they so choose." Dkt. 112-20 at 6. See generally
dkt. 133-4 (2018 TerreMax catalogue showing only unlabeled valve handles). (Green Leaf
maintains that it embosses TerreMax handles with a distinctive mountain logo without ac-
knowledging the record evidence to the contrary. Dkt. 124-30.)1
In a September 2018 email to Green Leaf's outside accountant, Mr. Goda expressed
optimism in response to Green Leaf's success:
[W]e are winning the battle against Banjo. We identified this opportunity
about 2 years ago at which time we were able to hire two long term Banjo
employees/salesman and begin to make plans to take market away from
them. As Banjo struggled with product quality, delivery and basic customer
knowledge we moved in. Last year we invested around ½ million dollars in
machinery and tooling to better position ourselves in the Commercial Ag
market. We've been able to secure a number of new accounts ranging from
small to midsize and have also begun making headway with some of Banjo's
1 In its response/reply brief, Banjo included a photo of two yellow valve handles, ostensibly to
demonstrate the absence of any logo on Green Leaf's yellow valve handles. Dkt. 132 at 19. Because
Banjo did not cite any source for this photo, or elaborate on its context, it is entirely unclear to us
what evidentiary value this photograph bears on the claims before us.
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larger accounts. In the past 16 months we've added 170+ new accounts, 11 in
our top 50. The opportunity is still very real for us to continue and take mar-
ket share away from them. We will continue to invest and work heavily to do
so. We are launching a new Division of Green Leaf, Inc. this fall to directly
target the Commercial Ag sector and where Banjo has/had the strongest foot
hold. TerreMax is the name of our new division. Over the last 12-18 months
we've listed to these customers and we feel confident we have developed a
formula that will help us succeed.
Dkt. 112-32.
IV. 	Banjo's February 2018 Cease-and-Desist Letter
Green Leaf formally launched TerreMax in 2018, though it is unclear precisely
when during that year. On February 20, 2018, Banjo issued a cease-and-desist letter to
Green Leaf, contending that Green Leaf was actively engaging in trade dress violations,
false advertising, and unfair trade practices. Dkt. 124-9. Specifically, Banjo took issue with
Green Leaf's "most recent catalog" that included various ball valves in "a distinctive yellow
handle in violation of Banjo's protected trade dress." Id. at 1. Banjo also alleged that Green
Leaf's newly-developed "Parts Compatibility Guide" falsely represented a functional com-
patibility between Banjo's and Green Leaf's products. Banjo also highlighted that the tim-
ing of Green Leaf's "switching to Banjo's color scheme . . . and copying Banjo's part num-
bers" began shortly after Green Leaf hired Messrs. Wagner and Bezdicek. Id. at 2. Notably,
Banjo reported that Mr. Wagner had "emailed certain confidential, proprietary and trade
secret information belonging to Banjo . . . to his private Yahoo email account shortly before
he" departed (though, as previously mentioned, Banjo has not sought recourse against Mr.
Wagner himself). Id.
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Green Leaf responded to Banjo's cease-and-desist letter on February 23, 2018, ask-
ing Banjo to identify specific instances of actual customer confusion; to elaborate on how
Green Leaf's statements re: its Parts Compatibility Guide were false and misleading; and
to describe what types of confidential and trade secret information Green Leaf might have
in its possession as well as how such information was being misused. Dkt. 124-10. Accord-
ing to Green Leaf, Banjo never replied. Hence, the matter was pursued no further at that
time.
V. 	Interim Developments
The record before us at this juncture does not provide a clear picture of any devel-
opments that might have unfolded throughout 2020 and most of 2021, which void Banjo
attributes to the supply-chain complications caused by the COVID-19 pandemic. Hays
Decl. ¶ 18, dkt. 112-1. The record nonetheless does reveal the following relevant develop-
ments:
A. 	The Yellow Handle® Design
In November 2018, Banjo applied, albeit unsuccessfully, for a trademark registra-
tion of the yellow handle design. See dkt. 124-23. Approximately a year-and-a-half later,
in July 2020, Banjo renewed its application and, on December 28, 2021, successfully ob-
tained a registered trademark for the Yellow Handle® Design depicted below:
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Dkt. 124-16; dkt. 124-24. According to the registration certificate, the "mark consists of
the color yellow as applied to the entire handle portion of the valve." Dkt. 124-16 at 1. The
dotted lines and color white are demonstrative and are not features of the trademark. Id.
(The generic valve handle design, as outlined in the image above, is not at issue in this
case.)
B. 	IDEX Initiates Acquisition Talks
In July 2022, IDEX representatives, acting on behalf of Banjo, contacted Mr. Goda
with Green Leaf to propose a potential acquisition. Hays Decl. ¶ 19, dkt. 112-1. Through
mid-August 2022, the company representatives continued their negotiation efforts. As re-
vealed in the email thread between the companies' representatives, IDEX was highly com-
plimentary of Green Leaf, stating to Mr. Goda: "You're leading a wonderful business. IDEX
shares your passion for building great teams and serving the ag industry. I am excited about
the prospects of learning more and sharing the vision of Ag at IDEX"; and "You and your
team have built a very special company. IDEX . . . share[s] your values." Dkt. 124-15 at 5,
20. Ultimately, however, no final agreement was ever reached.
IDEX's motive for initiating this acquisition has not been clearly explained: Mr.
Hays maintains that Banjo was attempting to avoid the need for litigation, Hays Decl. ¶ 19,
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dkt. 112-1; whereas Green Leaf contends that no such purpose was ever disclosed, either
in writing or in any other communication, Goda Aff. ¶¶ 55–58, dkt. 124-4.
VI. 	Procedural History
A year later, on September 29, 2023, Banjo filed a three-count complaint against
Green Leaf asserting claims for (1) trademark/trade dress infringement, pursuant to 15
U.S.C § 1114(1); (2) unfair competition, false designations of origin, and false advertising,
pursuant to 15 U.S.C. § 1125(a); and (3) unfair competition and trademark infringement
under Indiana common law. Compl. ¶¶ 44–66, dkt. 1. In an answer denying all counts
against it, Green Leaf asserted five separate affirmative defenses as well as a counterclaim
for the cancellation of Banjo's trademark on the Yellow Handle® Design, pursuant to 15
U.S.C. § 1119. Dkt. 14. Green Leaf's affirmative defenses include: the statute of limitations;
laches; functionality and lack of secondary meaning; abandonment; and lack of trademark
significance. Id.
On January 13, 2025, Banjo moved for partial summary judgment, seeking the dis-
missal of Green Leaf's counterclaim to cancel the trademark registration and the denial of
Green Leaf's five affirmative defenses. Dkt. 84. (On that same day, Green Leaf cross-
moved for summary judgment on all counts, though that motion was subsequently stricken
relating to case management purposes. Dkt. 97.) On April 28, 2025, Green Leaf cross-
moved for summary judgment, opposing Banjo's partial summary judgment motion and
seeking the dismissal of Banjo's trademark infringement and unfair competition claims as
well as the cancellation of Banjo's Yellow Handle® Design. Dkt. 124. On June 20, 2025,
Banjo filed a reply/response brief in support of its motion for partial summary judgment
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and in opposition to Green Leaf's motion. Dkt. 132. On June 27, 2025, Green Leaf filed a
reply in support of its summary judgment motion. Dkt. 134. The parties' cross-motions for
summary judgment are now fully briefed and ripe for ruling.
DISCUSSION
We begin by noting that the parties' respective views of the relevant facts and cir-
cumstances are diametrically opposed: Banjo, on one hand, alleges that Green Leaf em-
barked on a multifaceted plan to steal business away from Banjo by copying as closely as
possible Banjo's Yellow Handle® Design, hiring two former Banjo salespeople, misappro-
priating one or more of Banjo's customer lists, launching the TerreMax product line com-
prised exclusively of Banjo lookalikes, and systematically underpricing Banjo to encour-
age product substitution. In denying these allegations, Green Leaf argues that the produc-
tion and sale of yellow-handled control valves is a generic and ubiquitous aspect of the
liquid-handling industry and that this lawsuit reflects an attempt by Banjo to prevent law-
ful, free market competition by maintaining a monopoly on the use of the color yellow.
Dkt. 134 at 5–6.
Below, we shall first address Green Leaf's motion for summary judgment on Banjo's
legal claims before turning to the parties' cross-motions for summary judgment on Green
Leaf's affirmative defenses and counterclaim.
I. 	Banjo's Legal Claims
Green Leaf seeks summary judgment on the legal claims asserted against it by Banjo
in this lawsuit, which include two federal claims for trademark infringement and unfair
competition, pursuant to §§ 1114(1) and 1125 of the Lanham Act, respectively, as well as
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a claim for trademark infringement and unfair competition under Indiana common law. "A
trademark is any word, name, symbol, or device, or any combination thereof, used to iden-
tify a person's good and to distinguish it from those goods manufactured or sold by others."
Phoenix Ent. Partners v. Rumsey, 829 F.3d 817, 822 (7th Cir. 2016) (citing 15 U.S.C. §
1127). "The Lanham Act established a federal right of action for trademark infringement
to protect both consumer confidence in the quality and source of goods and businesses'
goodwill in their products." Id. (citation modified).
Section 1114(1) of the Lanham Act provides "a cause of action for the unauthorized
use of a registered trademark." Id. Specifically, § 1114(1) "renders a person liable in a civil
suit when he 'use[s] in commerce any reproduction, counterfeit, copy, or colorable imita-
tion of a registered mark in connection with the sale, offering for sale, distribution, or ad-
vertising of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive.' " Id. (quoting 15 U.S.C. § 1114(a)) (citation
modified).
Section 1125 "[m]ore broadly . . . creates a remedy against a person who engages in
unfair competition by, inter alia, falsely designating the origin of a product." Id. In other
words, § 1125 protects an unregistered mark against "[a]ny person who, on or in connection
with any goods or services . . . uses in commerce any word, term, name, symbol, or device,
or any combination thereof, or any false designation of origin, . . . which—(A) is likely to
cause confusion, or to cause mistake, or to deceive . . . as to the origin, sponsorship, or
approval of his or her goods, services, or commercial activities by another person . . . ." 15
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U.S.C. § 1125(a)(1)(A); see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768
(1992).
Through the tort of "unfair competition," Indiana common law similarly provides a
remedy against "attempt[s] to create confusion concerning the source of the unfair compet-
itor's goods." Gabet v. Amazon.com Inc., 693 F. Supp. 3d 966, 974 (S.D. Ind. 2023). Be-
cause Indiana trademark infringement and unfair competition claims are analyzed in the
same manner as Lanham Act claims, we shall combine Banjo's legal claims for purposes
of our analysis. Fortes Grand Corp. v. Warner Bros. Ent. Inc., 763 F.3d 696, 700 n.4 (7th
Cir. 2014) (collecting cases); accord Dwyer Instruments, Inc. v. Sensocon, Inc., 873 F.
Supp. 2d 1015, 1040 (N.D. Ind. 2012).
To prevail on its claims in this lawsuit, Banjo "must establish that (1) its mark is
protectable and (2) the defendant's use of the mark is likely to cause confusion among
consumers." CAE, Inc. v. Clean Air Engineering, Inc., 267 F.3d 660, 673–74 (7th Cir.
2001); see also Keaton & Keaton v. Keaton, 842 N.E.2d 816 (Ind. 2006) (trade name in-
fringement under Indiana law requires showing of a likelihood of confusion). We turn to
these elements below, highlighting any legal distinctions among Banjo's theories of relief
as necessary.
A. 	Protectable Mark
A mark is protectable if it "is either inherently distinctive or has acquired secondary
meaning." Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 291 (7th Cir. 1998).
Secondary meaning (or acquired distinctiveness) is "a link in the minds of consumers be-
tween the marked item and its source." Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855,
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857 (7th Cir. 2010). A non-inherently distinctive mark, such as a color, achieves secondary
meaning when it "identifies and distinguishes a particular brand (and thus indicates its
'source')." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995). "To establish
secondary meaning, a manufacturer 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." Id. (citation modified).
If an asserted mark "is not registered with the United States Patent and Trademark
Office, the burden is on the claimant . . . to establish that it is entitled to protection under
[§ 1125(a)] of the Lanham Act." Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Inc.,
149 F.3d 722, 727 (7th Cir. 1998). However, once a mark is registered, the Lanham Act
"affords the registrant the rebuttable presumption of validity." CAE, Inc., 267 F.3d at 673
(quoting 15 U.S.C. § 1115(a)); see also 15 U.S.C. § 1057(b) (certificate of registration is
prima facie evidence of trademark validity). "[T]he presumption of validity that registra-
tion creates is easily rebuttable, since it merely shifts the burden of production to the al-
leged infringer." Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir.
2007); e.g., Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169 (7th Cir. 1996) ("The
presumption of validity that federal registration confers evaporates as soon as evidence of
invalidity is presented." (internal citation omitted)).
A "defendant may overcome th[e] presumption with evidence that the mark is
merely generic or descriptive, or that it lacks secondary meaning." Packman v. Chicago
Tribune Co., 267 F.3d 628, 639 (7th Cir. 2001). "Secondary meaning can be established
through direct costumer testimony, consumer surveys, length and manner of use, amount
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and manner of advertising, volume of sales, place in the market, and proof of intentional
copying. Thomas & Betts Corp., 138 F.3d at 291.
Applying these legal principles to the case at bar, we hold that Banjo's Yellow Han-
dle® Design became presumptively valid upon its registration on December 28, 2021. Dkt.
124-16. Consequently, Green Leaf bears the burden of proof to establish a lack of second-
ary meaning with regard to Banjo's trademark infringement claims. Packman, 267 F.3d at
639.2
Based on our review of the record, we conclude that Banjo has adduced sufficient
evidence from which a reasonable jury could find that the Yellow Handle® Design holds a
secondary meaning. The record evidence demonstrates that Banjo has used yellow as a
signature feature of its brand since 1994, Hays Decl. ¶ 3, dkt. 112-1, and that, by the early
2000s, Banjo represented its control valves as the "original yellow handle," Wagner Aff. ¶
12, dkt. 124-5; Bezdicek Aff. ¶ 10, dkt. 124-7. Banjo's success with its Yellow Handle®
valves is convincingly established by Mr. Hays's (unchallenged) Declaration stating that
Banjo has in the past sold 675,000 units on an annual basis, amounting to "tens of millions
of dollars." Hays Decl. ¶ 3, dkt. 112-1.
2 Since unregistered marks are not afforded the presumption of validity, plaintiffs asserting § 1125
and/or common law claims typically bear the burden of proving the protectability of their mark.
See Platinum Home Mortg. Corp., 149 F.3d at 727. In this case, the parties have not elucidated
whether or how trademark registration affects their respective burdens of proof apropos of Banjo's
pre-registration claims under § 1125 and Indiana common law: Banjo flatly insists that its Decem-
ber 2021 registration places the burden of proof on Green Leaf entirely, dkt. 111 at 19, 23; dkt. 132
at 7, 15, 18, 22; while Green Leaf, at most, asserts without citation to any legal authority or further
elaboration that "there is no legal presumption of ownership without federal trademark registra-
tion," dkt. 124-3 at 11–12.
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Banjo's best evidence of secondary meaning consists of numerous email exchanges
among members of Green Leaf's executive team documenting its intentional copying of
Banjo's trade dress. "Copying is only evidence of secondary meaning if the defendant's
intent in copying is to confuse consumers and pass off his product as the plaintiff's."
Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654, 663 (7th Cir. 1995). "In that situation,
the defendant's belief that plaintiff's trade dress has acquired secondary meaning—that that
his copying will indeed facilitate his passing off—is some evidence that the trade dress
actually has acquired secondary meaning." Id.
Here, Green Leaf's internal correspondence supports a finding that Green Leaf un-
derstood that Banjo's yellow handled control valves had acquired distinctiveness in the
industry and deliberately designed its TerreMax products to be virtually indistinguishable
from Banjo's. Notable evidence supporting a finding that Green Leaf understood the ac-
quired distinctiveness of the yellow handle includes: an August 2017 email wherein Mr.
Goda described "green handled green leaf [a]s junk and yellow handled [a]s good," dkt.
112-21 at 3; a December 2016 email to Mr. Goda relaying that "[c]ustomers are willing to
pay more because Banjo product is so good," dkt. 112-22; and a December 2017 email
from Mr. Wagner stating that he "prefer[s] yellow handle cause [sic] the customers ask
fewer questions," dkt. 112-28 at 3. Substantial record evidence further establishes the ex-
tensive efforts undertaken by Green Leaf to "copy[ ] Banjo to look identical." Dkt. 112-25
at 3 (July 2017 email from Mr. Goda). Indeed, in 2017, Green Leaf budgeted $250,000 for
"new tooling to duplicate Banjo." Dkt. 113-2 at 4 (capitalization modified) (under seal).
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None of Green Leaf's arguments to the contrary suffice to establish Green Leaf's
entitlement to judgment as a matter of law. Green Leaf's assertion that Banjo's common
law claim fails because Banjo "was not the first to use the yellow handle or the lever shape
for which it is alleging trademark protection," dkt. 124-3 at 11, is a non-starter because
Banjo does not assert a protectable interest in the lever shape itself: rather, Banjo's trade-
mark registration encompasses any shade of yellow valve handle in the generic shape de-
picted in the registration certificate. See dkt. 124-16. In any event, Green Leaf's only sup-
porting legal authority is a 1975 Fifth Circuit decision concerning trademark infringement
under Texas common law, see Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th
Cir. 1975), which authority is neither binding nor persuasive for our purposes. United
States v. Glaser, 14 F.3d 1213, 1216 (7th Cir. 1994).
Green Leaf also contends that, prior to the instant lawsuit, Banjo failed to put its
competitors on notice of its trademark rights by omitting the ™ (for common law trade-
marks) and/or ® (for registered trademarks) symbols that would otherwise indicate Banjo's
claimed ownership interest in the Yellow Handle® Design. Dkt. 124-3 at 12. Green Leaf's
internal correspondence, as referenced above, puts the lie to Green Leaf's assertion, how-
ever, that it was unaware of the source-identifying significance of yellow handled control
valves. Thus, Green Leaf's purported lack of notice falls short as support for a judgment in
its favor.
Green Leaf's remaining arguments relate to the denial of Banjo's 2018 trademark
application as well as the purported sales of yellow handled control valves by third parties.
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Dkt. 124-3 at 12–13.3 The contestability of these issues further buttresses our conclusion
that material factual disputes preclude the entry of judgment in Green Leaf's favor. Viewing
the record evidence detailed above in the light most favorable to Banjo, as we must in
resolving Green Leaf's motion for summary judgment, we conclude that a reasonable jury
could find that Banjo's Yellow Handle® Design holds secondary meaning and is therefore
a protectable mark.
B. 	Likelihood of Confusion
The hallmark "of trademark infringement is 'likelihood of confusion' as to source,
affiliation, connection or sponsorship of goods or services among the relevant class of cus-
tomers and potential customers." Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir. 2015)
(citation modified). "To decide whether there is a likelihood of confusion, a court must ask
whether consumers, and specifically consumers who would use either product, would be
likely to attribute them to a single source." Id. (citation modified). Confusion "must be
'probable,' " not merely "possible." Id. "[T]he question of whether likelihood of confusion
exists may be resolved on summary judgment 'if the evidence is so one-sided that there can
be no doubt about how the question should be answered.' " CAE, Inc., 267 F.3d at 677
(quoting Door Sys., Inc., 83 F.3d at 173). "Likelihood of confusion is a question of fact,
usually reserved for the jury." Sorensen, 792 F.3d at 726.
3 Banjo objects to Green Leaf's reliance on the 2018 trademark application materials on the grounds
that "statements of trademark examiners are inadmissible." Dkt. 132 at 13. Aside from a handful
of footnote citations to non-binding legal authorities, Banjo does not articulate nor develop further
its argument as to how such evidence is inadmissible. We therefore express no view as to the
admissibility of the 2018 trademark application materials at this juncture.
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There are seven factors bearing on an assessment of the likelihood of confusion: (1)
the similarity between the marks in appearance and suggestion; (2) the similarity of the
products; (3) the area and manner of concurrent use; (4) the degree of care likely to be
exercised by consumers; (5) the strength of the plaintiff's mark; (6) any evidence of actual
confusion; and (7) the intent of the defendant to "palm off" its product as that of another.
Id. Although "no single factor is dispositive," the Seventh Circuit has identified "three [as]
especially important: the similarity of the marks, the intent of the defendant, and evidence
of actual confusion." Id.
Here, we conclude that Banjo has adduced sufficient evidence to create a triable
question of fact as to the likelihood of consumer confusion. As detailed above, Green Leaf
literally designed TerreMax products to serve as direct and (arguably) indistinguishable
substitutions to Banjo's. See generally dkt. 113-2 (under seal) (retooling and price compar-
ison breakdowns); dkt. 112-23 (Green Leaf ordering yellow valve handles to match Ban-
jo's); dkt. 113-3 at 5 (September 2020 email describing TerreMax products as "exact phys-
ical duplicates of the Banjo items") (under seal). Further indication of the likelihood of
confusion is evidence of actual confusion: in April 2021, one distributor relayed to Mr.
Wagner that "[c]ustomers can't tell a difference" between TerreMax and Banjo products,
dkt. 112-37 at 3; in June and July 2023, Banjo received customer complaints about defec-
tive products that were in fact purchased from TerreMax, dkt. 112-4; and, in February
2020, John Bray, Green Leaf's Regional Accounts Manager, confused TerreMax valve
handles as belonging to Banjo, dkt. 112-36. In short, a non-exhaustive review of the evi-
dence in the record before us reveals a sufficient basis on which a reasonable jury could
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conclude that Green Leaf's imitation of Banjo's Yellow Handle® Design created a likeli-
hood of customer confusion.
Because Green Leaf has failed to establish its entitlement to judgment as a matter
of law on the first and second essential elements of Banjo's claims, Green Leaf's motion
for summary judgment must be and therefore shall be denied. Dkt. 124.
II. 	Green Leaf's Affirmative Defenses
The parties have cross-moved for summary judgment on Green Leaf's affirmative
defenses. As the party asserting the affirmative defenses, Green Leaf bears the burden of
identifying evidence upon which a jury could find in its favor. C & N Corp. v. Kane, 953F.
Supp. 2d 903, 910 (E.D. Wis. 2013), aff'd sub nom. C & N Corp. v. Gregory Kane & Illinois
River Winery, Inc., 756 F.3d 1024 (7th Cir. 2014).
A. 	Statute of Limitations
The Lanham Act does not contain a specific statute of limitations. Thus, courts in
our circuit (and beyond) turn to analogous state limitation periods. See Hot Wax, Inc. v.
Turtle Wax, Inc., 191 F.3d 813, 821 (7th Cir. 1999). Here, both parties agree that the appli-
cable statute of limitations, as provided by Indiana law, is two years. Dkt. 111 at 27; dkt.
124-3 at 32–33 (citing Ind. Code § 34-11-2-4).
Green Leaf argues that the two-year statute of limitations renders this lawsuit en-
tirely time-barred. In Green Leaf's view, Banjo was undeniably aware of the alleged in-
fringement by February 2018, when it sent the cease-and-desist letter to Green Leaf. Thus,
Green Leaf contends, Banjo's September 2023 Complaint—more than five years later—
was untimely. Dkt. 124-3 at 33.
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Banjo counters that the "continuing violation doctrine" permits it to maintain this
lawsuit, even if certain aspects of Green Leaf's alleged misconduct pre-date the applicable
limitations period. Dkt. 111 at 27–28. The continuing violation doctrine is a rule of accrual
that treats a "cause of action [as] accru[ing] at the date of the last injury." Heard v. Sheahan,
253 F.3d 316, 319 (7th Cir. 2001) (citation modified) (reversing and remanding dismissal
of Eighth Amendment claim arising out of prison officials' years-long refusal to treat med-
ical condition). "A violation is 'continuing,' signifying that a plaintiff can reach back to its
beginning even if that beginning lies outside the statutory limitations period, when it would
be unreasonable to require or even permit him to sue separately over every incident of the
defendant's unlawful conduct." Id. The continuing violation doctrine "ensure[s] that illegal
conduct is punished by preventing a defendant from invoking the earliest manifestation of
its wrongdoing as a means of running out the limitations clock on a course of misconduct
that persisted over time." United States v. Spectrum Brands, Inc., 924 F.3d 337, 350 (7th
Cir. 2019). "[W]here the violation at issue can be characterized as a continuing wrong, the
limitations period begins to run not when an action on the violation could first be brought,
but when the course of illegal conduct is complete." Id. (citing Taylor v. Meirick, 712 F.2d
1112, 1118 (7th Cir. 1983) (finding that the defendant's copyright infringement constituted
a continuing wrong)).
Green Leaf does not proffer a response to Banjo's continuing violation argument.
See dkt. 134. That failure alone is a sufficient basis on which to find that Banjo is entitled
to judgment on Green Leaf's statute of limitations defense. See Bonte v. U.S. Bank, N.A.,
624 F.3d 461, 466 (7th Cir. 2010) ("Failure to respond to an argument . . . results in
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waiver."). In any event, a straightforward application of the doctrine leads us to conclude
that Green Leaf's allegedly infringing conduct constitutes a continuing wrong that effec-
tively postpones the accrual of Banjo's causes of action. As reflected in the record, Green
Leaf's alleged misconduct—e.g., its production and sale of yellow-handled valves and its
retooling operation—is active and ongoing. See, e.g., Bezdicek Dep. 82:8, dkt. 112-19 (tes-
tifying that Green Leaf was "halfway" through retooling). Because Green Leaf's alleged
"course of illegal conduct" is not yet complete, the limitations period has not begun to run,
and this action is therefore timely. Spectrum Brands, 924 F.3d at 350.
For these reasons, we shall grant Banjo's motion for summary judgment, dkt. 87,
and deny Green Leaf's cross-motion for summary judgment, dkt. 124, as to Green Leaf's
statute of limitations defense.
B. 	Laches
The equitable doctrine of laches originates "from the maxim that those who sleep
on their rights, lose them." Hot Wax, 191 F.3d at 820–21. "Laches addresses delay in the
pursuit of a right when a party must assert that right in order to benefit from it." Id. at 820.
District courts "enjoy[ ] considerable discretion in determining whether to apply the doc-
trine of laches . . . ." Id. at 819. "Laches is generally a factual question not subject to sum-
mary judgment," though a decision may be rendered at the summary judgment stage if "no
genuine factual issues are in dispute." Jeffries v. Chicago Transit Auth., 770 F.2d 676, 679
(7th Cir. 1985). For laches to apply in this case, Green Leaf must show "an unreasonable
lack of diligence by the party against whom the defense is asserted and prejudice arising
from this lack of diligence." Hot Wax, 191 F.3d at 822.
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In the context of a Lanham Act case, such as the one at bar, "[t]he notion of a 'con-
tinuing wrong,' . . . 	provides a strong justification for the application of the doctrine of
laches in appropriate circumstances[,] regardless of whether the plaintiff has brought suit
within the analogous statute of limitations." Id. at 821. "Without the availability of the
application of laches to a claim arising from a continuing wrong, a party could, theoreti-
cally, delay filing suit indefinitely." Id. At bottom, "it cannot be equitable for a well-in-
formed merchant with knowledge of a claimed invasion of right, to wait to see how suc-
cessful [its] competitor will be and then destroy with the aid of court decree, much that the
competitor has striven for and accomplished." Id. at 824 (citation modified). The Seventh
Circuit has also remarked that, "[i]n the context of a trademark infringement action, . . .
although laches may bar a plaintiff from recovering damages or wrongfully derived profits
during the time prior to filing suit, upon a showing of infringement, the plaintiff may still
be entitled to injunctive relief and to damages and profits for the period subsequent to the
filing of suit because of the continuous nature of trademark infringement." Id. at 824 n.3.
With these legal principles in mind, we turn to Green Leaf's laches defense.
1. 	Unreasonable Delay
As previously noted, "[b]ecause the Lanham Act does not contain a statute of limi-
tations, federal courts have referred to analogous state statutes of limitations to determine
whether a presumption of laches should apply." Id. at 821. In addition, as also noted above,
both parties here recognize that Indiana law provides a two-year statute of limitations. Dkt.
111 at 27; dkt. 124-3 at 32–33 (citing Ind. Code § 34-11-2-4); see, e.g., Gema USA, Inc. v.
First in Finishing Inc., No. 1:22-CV-02053-TWP-KMB, 2025 WL 3073875, at *22 (S.D.
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Ind. Mar. 27, 2025), appeal docketed, No. 26-1075 (Fed. Cir. Oct. 22, 2025) (collecting
cases applying Indiana's two-year statute of limitations for injuries to personal property to
Lanham Act claims). We thus shall apply this two-year limitations period "as [our] base-
line" in determining whether the "presumption of laches exists." Hot Wax, 191 F.3d at 821.
Evidence before us reveals that Banjo believed as early as February 2018 that Green
Leaf was engaging in actionable misconduct. In the February 20, 2018, cease and desist
letter, Banjo specifically asserted that Green Leaf had "started advertising certain . . . prod-
ucts that have a distinctive yellow handle in violation of Banjo's protected trade dress."
Dkt. 124-9 at 1. Banjo also objected to Green Leaf's creation of a Part Compatibility Guide,
which not only represented Green Leaf's products as being "one-to-one replacements" for
Banjo's products but also mimicked Banjo's parts numbering system. Id. Banjo explicitly
linked these developments to Green Leaf's hiring of Messrs. Wagner and Bezdicek. Id. at
2. Measured against a two-year limitations period, Banjo's five-year delay in filing suit
could arguably be regarded as unreasonable.
That said, "[a]ttempts to resolve a dispute without resorting to a court do not consti-
tute unreasonable delay for determining the applicability of the doctrine of laches." Hot
Wax, 191 F.3d at 823–24 (characterizing five letters sent between 1993 and 1995 as a
"sparse letter writing campaign can hardly be characterized as a serious attempt to resolve
[the plaintiff's] concerns"). Applying this principle to the case at bar, Banjo's cease-and-
desist letter could similarly be viewed as an effort to resolve the dispute between the parties
without resorting to litigation. Additional examples of Banjo's efforts to stake out its inter-
est in yellow handled valves include its 2018 trademark application, the successful
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registration of its Yellow Handle® Design in December 2021, and the July 2022 negotia-
tions between IDEX and Green Leaf about a potential acquisition (though the parties ad-
here to conflicting views about IDEX's motivation in initiating those talks).
Our review of the record makes clear to us that further factual development is nec-
essary to resolve the parties' legal arguments concerning the applicability of the doctrine
of laches here. In view of our inability to fully resolve the question of whether Banjo's
delay in filing suit was unreasonable, we must also sidestep an analysis and resolution of
the remaining issues of prejudice as well as Banjo's defenses of unclean hands, the public
interest, and progressive encroachment. Accordingly, the parties' cross-motions for sum-
mary judgment shall be denied as to the issue of laches and their other related defenses.
C. 	Functionality & Lack of Secondary Meaning
"The doctrine of functionality prevents trademark law, which seeks to promote com-
petition by protecting a firm's reputation, from instead inhibiting legitimate competition by
allowing a producer to control a useful product feature." Qualitex, 514 U.S. at 164. "A
product feature is considered functional and ineligible for trademark protection if it is es-
sential to the use or purpose of the article or if it affects the cost or quality of the article."
Flexible Steel Lacing Co. v. Conveyor Accessories, Inc., 955 F.3d 632, 644 (7th Cir. 2020)
(internal quotation and citation omitted). "Even if a product feature does not satisfy that
definition, it can still be [regarded as] functional if it is a 'competitive necessity, that is, if
its exclusive use 'would place competitors at a significant non-reputation-related disad-
vantage.' " Arlington Specialties, Inc. v. Urb. Aid, Inc., 847 F.3d 415, 419 (7th Cir. 2017)
(quoting TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32–33 (2001)); see also
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Qualitex, 514 U.S. at 165 (noting that "sometimes color plays an important role (unrelated
to source identification) in making a product more desirable, sometimes it does not").
The following considerations are probative of functionality:
(1) the existence of a utility patent, expired or unexpired, that involves or
describes the functionality of an item's design element; (2) the utilitarian
properties of the item's unpatented design elements; (3) advertising of the
item that touts the utilitarian advantages of the item's design elements; (4)
the dearth of, or difficulty in creating, alternative designs for the item's pur-
pose; (5) the effect of the design feature on an item's quality or cost.
Georgia-Pac. Consumer Prods. LP v. Kimberly-Clark Corp., 647 F.3d 723, 727–28 (7th
Cir. 2011). The existence of an expired or unexpired utility patent constitutes "strong evi-
dence that the features therein claimed are functional." TafFix Devices, Inc., 532 U.S. at
29–30. "Functionality is a factual question, but the bar for functionality is so low that it can
often be decided as a matter of law . . . ." Arlington Specialties, Inc., 847 F.3d at 419–20
(citation modified). Because "registration creates a presumption of validity, . . . the defend-
ant has the laboring oar on all issues relating to validity, including functionality." Publica-
tions Int'l, Ltd. v. Landoll, Inc., 164 F.3d 337, 340 (7th Cir. 1998).
Here, there is no evidence relating to the existence of a utility patent or advertise-
ments touting the utilitarian advantages of a yellow handled control valve (nor, for that
matter, of handles in any other color). Nor is there evidence that the color of the valve
handles affects their cost or quality. To the contrary, the unchallenged deposition testimony
of Green Leaf's Vice President of Engineering Curtis Owens ("Mr. Owens") reveals that
the cost difference between green and yellow handles is, at best, "very insignificant." Ow-
ens Dep. 52:5–11, dkt. 112-18; see also Goda Dep. 25:22–23, dkt. 112-16 (describing
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difference between Green Leaf and TerreMax as "a branding thing"). Mr. Owens further
testified that green and yellow "valves are basically the same valves, just with different
color handles." Owens Dep. 52:2–4, dkt. 112-18. These factors therefore weigh against a
finding of functionality.
The remaining considerations bearing on functionality relate to the purported utili-
tarian benefits of using yellow and the existence of alternative designs. Green Leaf argues
that the color yellow serves a functional purpose due to its high visibility, which makes it
the safest and most attractive option for use in the low visibility and muddy conditions that
are common to construction and agricultural worksites. Goda Aff. ¶ 3, dkt. 124-4; Wagner
Aff. ¶ 8, dkt. 124-5; Bezdicek Aff. ¶ 30, dkt. 124-7; Teko Aff. ¶ 18, dkt. 124-17.4
In rebuttal, Banjo emphasizes that no contemporaneous Green Leaf documents iden-
tify safety and/or better visibility as the basis for selecting the color yellow over any other
available color. Dkt. 132 at 32. Further undermining the purported utility of the color yel-
low, Banjo argues, is the availability of design alternatives—that is, of other bright and
highly visible colors—that can achieve the same alleged utilitarian benefits without
4 Green Leaf's functionality defense rests largely on the (challenged) expert testimony of Steven
Bleicher ("Mr. Bleicher"). Dkt. 124-3 at 28–30. In September 2025, well after the instant cross-
motions were fully briefed, Green Leaf informed the Court of Mr. Bleicher's death. Dkt. 145. Green
Leaf was permitted to engage a substitute expert witness with the caveat that the testimony of such
replacement expert could not exceed the scope of Mr. Bleicher's expert report. Dkt. 184; Stringer
v. Cambria Fabshop-Indianapolis, LLC, No. 1:13-CV-00659-SEB-TAB, 2015 WL 13632234
(S.D. Ind. Oct. 2, 2015). Banjo has objected to the admissibility of Green Leaf's substitute expert
witness's testimony. Dkt. 193. For purposes of resolving the parties' cross-motions for summary
judgment, we shall address the record as it stands, which means based on Mr. Bleicher's opinion(s).
Banjo's (and, for that matter, Green Leaf's) evidentiary objections will be resolved in due course
in other contexts of this litigation.
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meaningful impact on the product's quality or cost. According to Banjo, "there is no func-
tional need to use yellow," since "other colors can be and are used." Dkt. 111 at 25.
"Alternative designs can be 'part of the total evidentiary matrix to be weighed' in
deciding whether claimed trade dress is functional." Arlington Specialties, Inc., 847 F.3d
at 420 (quoting J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competi-
tion § 7:75 (4th ed. 2008)). That said, the Supreme Court has also noted "that a design is
legally functional, and thus unprotectable, if it is one of a limited number of equally effi-
cient options available to competitors and free competition would be unduly hindered by
according the design trademark protection." Two Pesos, Inc., 505 U.S. at 775. Although we
are skeptical about the functional advantage of the color yellow (as opposed to other bright
colors), we find that the parties competing contentions about the utility of the color yellow
and the availability of design alternatives creates a triable question of fact as to whether
color is in fact an essential component of control valve handles' use and/or purpose.
Even if the color yellow does not serve a utilitarian function, however, a showing
of "esthetic functionality" may still preclude trademark protection if "exclusive use of the
feature would place competitors at a significant non-reputation-related disadvantage."
Flexible Steel Lacing Co., 955 F.3d at 644 (citation modified). The hallmark of esthetic
functionality is, at bottom, "whether the recognition of trademark rights would significantly
hinder competition." Qualitex, 514 U.S. at 170 (citation modified). Esthetic functionality
has been applied, in one example, to "permit[ ] competitors to copy the green color of farm
machinery" where the "customers wanted their farm equipment to match." Id. at 169 (citing
Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98 (SD Iowa 1982), aff'd, 721 F.2d 253
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(8th Cir. 1983)); see also Arlington Specialities, Inc., 847 F.3d at 420 (noting that "attrac-
tiveness is a kind of function") (emphasis in original).
Here, Green Leaf contends that customers in the commercial agricultural industry
prefer yellow handled valves due to the perception that "what's sold in Tractor Supply" or
in any other retail store "is inferior quality to what's sold in some other distribution shop."
Goda Dep. 84:16–19, dkt. 134-2. Green Leaf has historically sold its green handled valves
in retail stores. Thus, it argues that Banjo's trademark on the "entire spectrum of the color
yellow" unduly hinders its ability to enter and to compete successfully in commercial ag-
riculture. Dkt. 134 at 15 (citing Goda Aff. ¶ 18, dkt. 124-4).
This theory is, in our view, underdeveloped by Green Leaf, as Mr. Goda's non-spe-
cific testimony gives rise to too many alternative explanations for consumer behavior. On
the other hand, Banjo's responsive argument that Green Leaf (and others) can and do sell
non-yellow handled valves falls short of demonstrating conclusively that such competitive
success is achieved in the relevant industry (i.e., in commercial agriculture). These defi-
ciencies in the parties' arguments, coupled with the competing evidence presented by Banjo
regarding the source-identifying significance of the color yellow, persuade us that summary
judgment cannot be granted in favor of either party. The parties' cross-motions for summary
judgment shall each be denied accordingly.
D. 	Abandonment
A trademark is considered abandoned "[w]hen its use has been discontinued with
intent not to resume such use." 15 U.S.C. § 1127. Where abandonment is found, the holder
of the abandoned mark loses all rights to the exclusive use and ownership of the mark:
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"Once a mark is abandoned, it returns to the public domain, and may be appropriated
anew." Specht v. Google Inc., 747 F.3d 929, 935 (7th Cir. 2014).
Green Leaf argues that Banjo abandoned its trademark by permitting third parties,
including Green Leaf, to sell yellow handled control valves. Although there is evidence
that other competitors have occasionally sold yellow handled valves, see Hays Decl. ¶ 4,
dkt. 112-1, Green Leaf has failed to adduce any relevant evidence revealing the extent to
which third parties used, promoted, and became known by the consuming public as the
source of yellow handled control valves. See McGraw-Edison Co. v. Walt Disney Prods.,
787 F.2d 1163, 1171 (7th Cir. 1986) (third-party usage is material "only to the extent that
the similar marks are promoted by their owners and recognized by the consuming public");
CAE, Inc., 267 F.3d at 685 (same). Thus, there is no basis on which a reasonable jury could
conclude that third parties' occasional sales of yellow handled valves weakened Banjo's
trademark to the point of abandonment.
Tellingly, Green Leaf's reply brief offers no rebuttal argument on the issue of aban-
donment. See Alioto v. Town of Lisbon, 651 F.3d 715, 719 (7th Cir. 2011). As such, Banjo
is entitled to judgment as a matter of law on the issue of abandonment, and its summary
judgment motion shall be granted accordingly. Green Leaf's request for summary judg-
ment shall be denied.
E. 	Lack of Trademark Significance (Genericness)
In trademark law, "generic terms receive no trademark protection." Mil-Mar Shoe
Co. v. Shonac Corp., 75 F.3d 1153, 1156 (7th Cir. 1996). When a mark is federally regis-
tered, as is the Yellow Handle® Design at issue here, the burden is on the opposing party
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to establish that the mark is generic and therefore unprotectable. See id. A generic mark "is
one that is commonly used to name or designate a kind of good." Id. at 1157. "Unlike
a trademark, which identifies the source of a product, a generic term merely specifies the
type, or genus, of thing into which common linguistic usage consigns that product." Id.
(citation modified). Under the Lanham Act, the genericness assessment focuses on the
mark's "primary significance . . . to the relevant public." 15 U.S.C. § 1064(3).
"Significant use of a term by competitors in the industry has traditionally been rec-
ognized, along with dictionary evidence, as indicating genericness." Mil-Mar Shoe Co., 75
F.3d at 1159. See also Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960,
965 (Fed. Cir. 2015) (listing "consumer surveys, dictionaries, newspapers, and other pub-
lications" as "competent sources" for evidence of genericness). Genericness is typically a
question of fact that cannot be resolved on summary judgment unless "the evidence is so
one-sided that there can be no doubt about how the question should be answered." Door
Sys., Inc., 83 F.3d at 171.
In this case, Green Leaf has adduced no such evidence establishing that Banjo's
Yellow Handle® Design is generic as a matter of law. Green Leaf's best evidence is Mr.
Goda's affidavit testimony that "98% of manufacturers . . . s[ell] yellow handled control
valve[s]," Goda ¶ 10, dkt. 124-4; and Messrs. Wagner's and Bezdicek's affidavit testimonies
that other competitors have sold yellow handled control valves for decades, Wagner Aff. ¶
12, dkt. 124-5; Bezdicek Aff. ¶ 7, dkt. 124-7. "Because the vast majority of manufacturers
. . . sell valves with yellow handles," Green Leaf argues, "the overwhelming evidence
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indicates that yellow handles on control valves are in indication of the type of product
rather than its source being Banjo." Dkt. 124-3 at 27.
Green Leaf's barebones evidence that some competitors also sell yellow handled
valves falls short of establishing the genericness of Banjo's trademark through significant
use by others in the liquid-handling industry. At this stage in the litigation, Green Leaf
"must show what evidence it has that would convince a trier of fact to accept its version of
the events." Hammel v. Eau Galle Cheese Factory, 407 F.3d 852, 859 (7th Cir. 2005). To
the extent that competitors do in fact sell yellow handled valves, Green Leaf has pointed
to no evidence of the success of such sales, never mind that such sales have affected con-
sumers' understanding of the source-identifying significance of the color yellow. We have
little trouble in concluding that Green Leaf has failed to adduce sufficient evidence to pre-
sent the question of genericness to a jury. On the issue of genericness, summary judgment
shall be granted in Banjo's favor: Green Leaf's cross-motion shall likewise be denied.
III. 	Green Leaf's Counterclaim
The Lanham Act provides that "[i]n any action involving a registered mark the court
may determine the right to registration, order the cancelation of registrations, in whole or
in part, restore canceled registrations, and otherwise rectify the register with respect to the
registrations of any party to the action." 15 U.S.C. § 1119. In this case, Green Leaf asserts
that Banjo's trademark should be canceled because: (1) the trademark is functional; (2)
Banjo abandoned the trademark; and (3) the trademark is generic.
Since Grean Leaf's theories in support of cancellation are identical to its functional-
ity, abandonment, and genericness defenses, our analyses above apply to Green Leaf's
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counterclaim as well. Accordingly, Banjo's motion for summary judgment on Green Leaf's
counterclaim shall be granted in part as to abandonment and genericness and denied in
part as to functionality. Green Leaf's motion for summary judgment on its counterclaim
shall also be denied.
IV. 	Miscellaneous Matters
Before concluding, we must address several miscellaneous issues raised in the par-
ties' summary judgment briefs.
First, Green Leaf alleges that Banjo purchased and registered various domain names
containing references to Green Leaf and its products in order to redirect internet traffic to
Banjo's own webpage. Dkt. 124-3 at 7–8, 24–25. In October 2024, Green Leaf sought leave
to amend its answer to add a counterclaim for cyberpiracy, pursuant to 15 U.S.C. § 1125(d).
Dkt. 67. On November 14, 2024, Magistrate Judge Garcia of our Court denied Green Leaf's
motion as untimely. Dkt. 69. Green Leaf's allegations of cyberpiracy extend beyond the
scope of the legal claims pending in this lawsuit; thus, we do not address them further.
Second, Green Leaf has raised several additional grounds in support of the cancel-
lation of Banjo's trademark that were not included in its answer, dkt. 14: to wit, that Banjo's
2020 trademark application contained "wholly incorrect and misleading" representations
of fact. Dkt. 124-3 at 6, 35. Green Leaf contends that Banjo's alleged misrepresentations
warrant the cancellation of Banjo's Yellow Handle® Design. However, since this theory
was not timely asserted in the relevant pleadings, dkt. 14, it too falls beyond the scope of
the issues to be resolved by the jury.
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Third, Green Leaf requests a preemptive limitation on the scope of damages that
Banjo might seek to recover at trial. Dkt. 124-3 at 38–41. According to Green Leaf, § 1111
of the Lanham Act precludes Banjo from seeking certain kinds of damages: Section 1111
provides, in relevant part, that "no profits and no damages shall be recovered . . . unless the
defendant had actual notice of the registration."5 Additionally, Green Leaf requests that we
exclude lost profits from valve component parts (e.g., piping, fittings, etc.) as a basis of
Banjo's potential recovery. We defer a resolution of issues relating to damages until there
is a finding of liability.
CONCLUSION
For the reasons stated above, Banjo's Partial Motion for Summary Judgment is
hereby GRANTED in part and DENIED in part. Dkt. 84. Banjo's motion is granted as
to the affirmative defenses of statute of limitations, abandonment, and genericness; and as
to Green Leaf's counterclaim for cancellation of Banjo's trademark based on the theories
of abandonment and genericness. Banjo's motion is denied as to Green Leaf's affirmative
defenses of laches and functionality; and as to Green Leaf's counterclaim for trademark
cancellation based on functionality.
Green Leaf's Cross-Motion for Summary Judgment is hereby DENIED. Dkt. 124.
The parties should prepare to try the following issues, unless they are abandoned by
the party advancing the specific claim prior to trial:
5 It is well established that "§ 1111 does not create a defense; it is a limitation on remedies" only.
United States v. Sung, 51 F.3d 92, 94 (7th Cir. 1995). Thus, Banjo's request that we "strike" Green
Leaf's § 1111 "defense" is misplaced. Dkt. 132 at 37.
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• 	Banjo's claim for trademark infringement, pursuant to 15 U.S.C. § 1114(1);
• 	Banjo's claim for unfair competition, pursuant to 15 U.S.C. § 1125(a);
• 	Banjo's claim for trademark infringement and unfair competition, pursuant to
Indiana common law;
• 	Green Leaf's affirmative defense of laches as well as Banjo's defenses of unclean
hands, public interest, and progressive encroachment;
• 	Green Leaf's affirmative defense of functionality; and
• 	Green Leaf's counterclaim for cancellation based on functionality.
IT IS SO ORDERED.
Date:
Distribution:
Jennifer L. Blackwell
ORZESKE & BLACKWELL, P.C
jblackwell@indylitigation.com
Charles W. Browning
PLUNKETT & COONEY, P.C.
cbrowning@plunkettcooney.com
William Michael Etienne
TAFT STETTINIUS & HOLLISTER LLP (Indianapolis)
metienne@taftlaw.com
Roma Lopes
Foley & Lardner LLP
rlopes@foley.com
1/9/2026	_______________________________
SARAH EVANS BARKER, JUDGE
United States District Court
Southern District of Indiana
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39
Dwight D. Lueck
BARNES & THORNBURG
dwight.lueck@btlaw.com
Jonathan Moskin
Foley & Lardner LLP
jmoskin@foley.com
Donald G. Orzeske
ORZESKE & BLACKWELL, P.C
dorzeske@indylitigation.com
Pamela A. Paige
Plunkett Cooney, P.C.
ppaige@plunkettcooney.com
Caroline Payne
Barnes and Thornburg
caroline.payne@btlaw.com
Jonathan G. Polak
TAFT STETTINIUS & HOLLISTER LLP (Indianapolis)
jpolak@taftlaw.com
Dana A. Sarros
Barnes & Thornbug LLP
One North Wacker Drive
Suite 4400
Chicago, IL 60606-2833
William C. Wagner
TAFT STETTINIUS & HOLLISTER LLP (Indianapolis)
wwagner@taftlaw.com
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