competitor's challenge to use of expired certification marks must go to trial

FireBlok IP Holdings v. Hilti, Inc., No. 19-cv-50122, 2025 WL 1557924 (N.D. Ill. Jun. 4, 2025)

FireBlok sued defendants, relevantly for false advertising and false association. The court denied FireBlok’s motion for summary judgment.

FireBlok alleged that defendants’ use of the UL certified mark and FM approved mark on their product, the Firestop Box Insert, was false advertising and false association. “According to UL’s website, a product with the UL certification mark is one that UL found to meet UL’s requirements by a representative sample. According to FM’s website, an FM approved mark denotes that a product has completed FM’s testing process.” FireBlok was never FM approved, and its UL certification was withdrawn in 2025. Defendants’ product has used the UL and FM marks since 2008 and 2009, respectively, but requested withdrawal of UL certification/sent an email to FM leading FM to withdraw its listing in 2008.

FireBlok was asserting false association claims on behalf of a third party as false advertising, which led to an “undifferentiated amalgam of a claim.”

 “A ‘literal’ falsehood is bald-faced, egregious, undeniable, over the top.” (This is a bad standard, risking a conflation of falsity with willfulness.)

The court found that it was not enough to get summary judgment on literal falsity that defendants withdrew their certifications with both certifying bodies. Defendants argued that the Firestop Box Insert was, in fact, UL certified as shown by UL’s continued listing of Hilti’s product as a UL certified product and UL’s lack of adverse actions against Defendants for their use of the UL certified mark, and that their use of the FM approved mark was not literally false because FM continued to conduct routine inspections of the manufacturing process, issued Certificates of Compliance, and continued listing the Firestop Box Insert as an FM Approved product. This was a genuine factual dispute over what the use of certification marks meant. A jury could find the use to mean that the Firestop Box Insert met the safety requirements set by UL and FM, “in which case the statement would be true.” But a jury could also reasonably interpret these statements to mean that defendants were authorized to use these marks on their product [though one has to wonder about materiality in that event].

The parties argued over the likely confusion factors, but false attribution isn’t enough: “a false advertising claim requires a showing of deception about the product itself.”

FireBlok also failed to show that there was no dispute about materiality. Nor was injury to FireBlok shown sufficiently to grant summary judgment; it wasn’t enough that the parties competed.

What about false association? (I would probably have held that there wasn’t standing under 43(a)(1)(A), only (B).) Doing conflating of its own, the court said that, without literal falsity, FireBlok had to show misleadingness with actual consumer confusion, and there was no evidence of that. The court would not presume likely confusion from literal falsity in a false association case.