Barrington attorneys land Black & Decker $54,074,815 verdict in Dewalt ‘yellow and black’ trademark battle

An Illinois federal jury on Monday awarded $ 54 million in damages to The Black & Decker Corp. and two of its subsidiaries in their four-year battle with Positec USA, Inc. and RW Direct, Inc., decided after four hours of deliberation that the defendants have infringed the yellow and black trademark and trade dress of Black & Decker’s iconic DEWALT brand of power tools and accessories.

The eight-member jury’s verdict followed a one-week trial in which Black & Decker presented evidence that the defendants’ “Rockwell” brand of power tools and accessories – totaling more than 250 products – was likely to cause confusion among consumers as to the source, origin, sponsorship, or affiliation of those products in light of the DEWALT brand’s yellow and black color scheme. This color scheme has been a key component of Black & Decker’s brand identification and marketing efforts since the 1992 launch of its DEWALT line.

Over the course of the trial and during closing argument, Black & Decker’s lead counsel, Raymond P. Niro, Jr. of Niro McAndrews, LLC, argued that DEWALT’s yellow and black trademark is like the “Golden Arches” for McDonald’s and Nike’s famous “swoosh” trademark. Niro and his co-counsel on the case and law partner, Matt McAndrews, live in Barrington and have been best friends since they played football together at Saint Viator High School in the early 80s.

Among other evidence, Black & Decker presented at trial survey results indicating that 100% of professional tradespeople and 85% of serious “do-it-yourselfers,” respectively, identified DEWALT by name when asked whether they would have a belief as to the manufacturer of a yellow and black power tool encountered at a job site or retail store. There was other evidence that, since the line’s 1992 launch, Black & Decker has expended more than $100 million advertising and promoting the DEWALT brand – efforts that include a high-profile NASCAR sponsorship featuring popular driver Matt Kenseth and his No. 20 yellow and black DEWALT car.

“We’re thrilled the jury recognized not just the longstanding goodwill of DEWALT’s iconic yellow and black color scheme, but the important economic value of that trade dress,” said Niro. Niro added, “The jury was thoughtful and attentive the entire trial, and we feel – without any doubt – that they reached the correct decision.” McAndrews noted, “This is a huge win for our client and all trademark, trade dress, and even patent owners in a climate that has, unfortunately, become increasingly hostile to intellectual property rights.”

Black & Decker plans to seek an immediate and permanent injunction barring the defendants from further use of yellow and black with respect to their packaging, power tools, accessories, and related advertising.

Black & Decker is represented by Raymond P. Niro, Jr., Matthew G. McAndrews, Kyle D. Wallenberg, and Anisha Mehta of Niro McAndrews, LLC.

Positec USA, Inc. and RW Direct, Inc. is represented by Dennis D. Murrell, Robert J. Theuerkauf, and Brian P. McGraw of Middleton Reutlinger and J. Aron Carnahan of Husch Blackwell LLP.

The case is Black & Decker Corporation, et al. v. Positec USA Inc., et al., Case No. 1:11-cv- 05426, in the U.S. District Court for the Northern District of Illinois, Robert M. Dow, Jr., U.S. District Judge presiding.

For more information, please contact: Raymond P. Niro, Jr. at 847-828-9633 or