Expanding “Consumer” in False Advertising & Affirming Trade Dress Infringement: Republic Technologies (NA), LLC v. BBK Tobacco & Foods, LLP

Introduction

In Republic Technologies (NA), LLC v. BBK Tobacco & Foods, LLP, the Seventh Circuit clarified two important aspects of federal and state unfair-competition law. Republic Technologies (“Republic”) and BBK Tobacco & Foods (“HBI” or “RAW”) compete in the market for organic hemp rolling papers. Republic sued in 2016 under the Lanham Act and Illinois deceptive‐trade-practices law, seeking (1) a declaration that its “OCB” trade dress did not infringe HBI’s “RAW” trade dress and (2) relief for HBI’s allegedly false and misleading advertising. HBI counterclaimed for trade‐dress and copyright infringement. After a 2021 jury trial produced a mixed verdict, the district court entered a permanent injunction restricting certain HBI advertising nationwide. Both sides appealed discrete issues: Republic challenged the court’s response to a jury question defining “consumer” under the Lanham Act and the sufficiency of evidence supporting trade‐dress infringement; HBI challenged the injunction’s terms and geographic scope.

Summary of the Judgment

The Seventh Circuit affirmed in all respects. First, the district court did not abuse its discretion by referring the jury back to the agreed jury instructions—rather than crafting a clarified definition of “consumer”—when the jury inquired whether “consumer” meant only end‐users or also distributors and other intermediaries. Second, a reasonable jury could find a likelihood of confusion between OCB’s red 99¢ packaging and RAW’s red‐lettered packaging under the Lanham Act’s trade‐dress test, even though the two products bear different brand names. Third, the nationwide permanent injunction against misleading advertising is sufficiently definite under Rule 65(d) and appropriately tailored to provide full relief to Republic in all U.S. markets where HBI advertises its rolling papers.

Analysis

Precedents Cited

Jury Instruction on “Consumer”

• Seventh Circuit Pattern Jury Instruction 13.3.1 (elements of a Lanham Act false‐advertising claim).
• United States v. Funds in the Amount of One Hundred Thousand & One Hundred Twenty Dollars (Funds), 901 F.3d 758 (7th Cir. 2018) (reviewing jury‐instruction responses for abuse of discretion).
• United States v. Durham, 645 F.3d 883 (7th Cir. 2011); Knowlton v. City of Wauwatosa, 119 F.4th 507 (7th Cir. 2024); Emerson v. Shaw, 575 F.3d 680 (7th Cir. 2009) (holding that sending a jury back to accurate, agreed instructions is not an abuse of discretion).

Trade Dress Infringement

• Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145 (7th Cir. 1994) (two‐part test: protectible trade dress + likelihood of confusion).
• Abbott Laboratories v. Mead Johnson & Co., 971 F.2d 6 (7th Cir. 1992) (trade dress elements: size, shape, color, graphics, packaging).
• Uncommon, LLC v. Spigen, Inc., 926 F.3d 409 (7th Cir. 2019) (seven‐factor likelihood‐of‐confusion test).
• Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (trade dress can infringe even with different names, if overall appearance is confusing).
• Bristol‐Myers Squibb Co. v. McNeil‐P.P.C., Inc., 973 F.2d 1033 (2d Cir. 1992) (prominence of distinct trade names may defeat preliminary injunction but not binding on final fact‐finder in all contexts).

Nationwide Injunction & Injunction Drafting

• Fed. R. Civ. P. 65(d) (requirement that injunctions be specific and describe restrained acts with “reasonable detail”).
• United States v. Express Publishing Co., 312 U.S. 426 (1941) (courts may enjoin future acts based on pattern of violations).
• Califano v. Yamasaki, 442 U.S. 682 (1979) (injunctions should be no more burdensome than necessary to provide complete relief).
• Steele v. Bulova Watch Co., 344 U.S. 280 (1952) (equity may reach acts outside territorial jurisdiction once defendant is properly before the court).
• Phillips Petroleum Co. v. Shutts, 472 U.S. 797 (1985) (due‐process and comity concerns when applying one state’s law to nationwide class; requires material conflict between laws of other states).

Legal Reasoning

1. Jury Instruction on “Consumer.” The Lanham Act false‐advertising instruction required proof that a misleading statement “actually deceived or had the tendency to deceive a substantial segment of HBI’s audience” and “influenced the purchasing decisions of consumers.” When the jury asked whether “consumer” meant only end‐users or also distributors and other purchasers, the district court—concerned about issuing a potentially erroneous supplemental instruction—sent the jury back to its agreed instructions. Under Supreme Court and Seventh Circuit precedent, a district court may do so if the original instruction correctly states the law and the supplemental guidance might inject confusion or reversible error. Republic’s evidence of end‐user confusion was ample, so it could not show prejudice from the court’s decision.

2. Trade Dress Infringement. Under 15 U.S.C. § 1125(a), a party must show (a) protectible trade dress and (b) likelihood of confusion. The jury found that OCB’s 99¢ red‐lettered packaging infringed RAW’s red‐lettered trade dress. Although the product names differ (“OCB” vs. “RAW”), Seventh Circuit law views name‐differences as one factor among seven, not a dispositive shield. On a Rule 50 review—taking all evidence in the light most favorable to the verdict—ample evidence supported overlapping colors, fonts, button devices, shelf presentation, actual retailer confusion, and even evidence of Republic’s market research on RAW’s look. The jury’s nuanced verdict (infringement of the red OCB but not brown OCB) underscores that it weighed each packaging design carefully.

3. Permanent Injunction. The district court enjoined HBI’s future advertising unless it “clearly constitutes permissible opinion … or [is] factual statements for which HBI maintains tangible, objective verification.” Rule 65(d) requires an injunction to state “its terms specifically” and describe “in reasonable detail … the acts restrained.” Although some vagueness is unavoidable in false‐advertising law, the verification requirement responds to HBI’s proven penchant for unsubstantiated claims (organic hemp, wind power, “world’s first,” charitable donations). Equity’s forward‐looking power permits prophylactic measures where future violations are “fairly anticipated.” The nationwide scope is likewise proper: Illinois and nearly every other state outlaw false‐or‐misleading advertising, and Republic sells OCB papers nationwide. No material conflict of law bars applying the injunction across all U.S. markets. Under Califano v. Yamasaki, the injunction is tailored to afford complete relief to Republic—its competitor everywhere HBI advertises.

Impact

This decision provides three critical guideposts for litigators and trial judges in unfair‐competition cases:

1. Jury Instructions: Trial courts may refer juries back to agreed, accurate instructions rather than risk a mistaken “clarifying” supplement, so long as no party is prejudiced.
2. Trade Dress Litigation: Even distinctly branded products may infringe if the overall look and marketing channels plausibly confuse retail buyers or end users.
3. Crafting Injunctions: Prophylactic, nationwide injunctions based on state and federal unfair‐competition law can include prophylactic verification requirements where a pattern of unverified claims exists.

Complex Concepts Simplified

• False Advertising (Lanham Act § 1125(a)): The plaintiff must show a misleading statement, actual or likely deception of consumers or their business‐to‐business audience, and a tendency to influence purchasing choices.
• Trade Dress: The “look and feel” of a product’s packaging or design. It is protectible if it is distinctive (non‐functional and identifies source) and infringed if consumers likely confuse it with another brand.
• Likelihood of Confusion Factors: (1) mark similarity; (2) product similarity; (3) concurrent use; (4) buyer care; (5) mark strength; (6) actual confusion; (7) defendant’s intent to “palm off.”
• Permanent Injunctions (Rule 65(d)): Must describe in specific, detailed terms what is forbidden or required. Equity allows broad, forward‐looking relief to deter a future pattern of violations, provided the remedy is no more burdensome than needed to protect the winning party’s rights.

Conclusion

Republic Technologies v. BBK Tobacco & Foods reaffirms that jury instructions in false‐advertising cases must be accurate—and juries can be sent back to agreed instructions when supplemental guidance risks error. It underscores that trade‐dress infringement lies in the totality of packaging similarities, not just identical names. Finally, the decision confirms the equity courts’ authority to craft concrete, nationwide injunctions against future unsubstantiated advertising claims. Together, these rulings provide practical guardrails for litigating and resolving disputes over brand identity and marketing practices in today’s competitive retail landscape.