Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 1 of 12
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`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF LOUISIANA
`
`DENNIS PERRY
`
`Plaintiff,
`
`CIVIL ACTION NO. 19-280
`
`Versus
`
`H.J. HEINZ COMPANY BRANDS
`LLC
`
`Defendant.
`
`JUDGE
`
`
`
`MAGISTRATE
`
`
`
`COMPLAINT
`
`DENNIS PERRY (“Plaintiff”), through undersigned counsel, alleges the
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`following in support of his Complaint against Defendant, H.J. HEINZ COMPANY
`
`BRANDS LLC (“Defendant”), for infringement and counterfeiting of Plaintiff’s
`
`federally registered “METCHUP” trademark.
`
`NATURE OF THE CASE
`
`1.
`
`This is an action for trademark infringement under the Lanham Act, 15
`
`U.S.C. § 1051, et seq., including the Trademark Counterfeiting Act of 1984, 15 U.S.C.
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`§ 1116(d), and related state law claims for trademark infringement and unfair
`
`competition due to Defendant’s unlawful manufacture, distribution, advertisement
`
`and/or sale of infringing goods and promotional materials bearing a confusingly
`
`similar trademark as to Plaintiff’s federally registered “METCHUP” trademark.
`
`1
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`
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`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF LOUISIANA
`
`DENNIS PERRY
`
`Plaintiff,
`
`CIVIL ACTION NO. 19-280
`
`Versus
`
`H.J. HEINZ COMPANY BRANDS
`LLC
`
`Defendant.
`
`JUDGE
`
`
`
`MAGISTRATE
`
`
`
`COMPLAINT
`
`DENNIS PERRY (“Plaintiff”), through undersigned counsel, alleges the
`
`following in support of his Complaint against Defendant, H.J. HEINZ COMPANY
`
`BRANDS LLC (“Defendant”), for infringement and counterfeiting of Plaintiff’s
`
`federally registered “METCHUP” trademark.
`
`NATURE OF THE CASE
`
`1.
`
`This is an action for trademark infringement under the Lanham Act, 15
`
`U.S.C. § 1051, et seq., including the Trademark Counterfeiting Act of 1984, 15 U.S.C.
`
`§ 1116(d), and related state law claims for trademark infringement and unfair
`
`competition due to Defendant’s unlawful manufacture, distribution, advertisement
`
`and/or sale of infringing goods and promotional materials bearing a confusingly
`
`similar trademark as to Plaintiff’s federally registered “METCHUP” trademark.
`
`1
`
`
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 2 of 12
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`PARTIES
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`2.
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`Plaintiff DENNIS PERRY is a Louisiana citizen of full age of majority
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`residing in St. Tammany Parish, Louisiana.
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`3.
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`Upon information and belief, Defendant H.J. HEINZ COMPANY
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`BRANDS LLC is a Delaware limited liability company with its principal place of
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`business at One PPG Place, Pittsburgh, PA 15222.
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`JURISDICTION AND VENUE
`
`4.
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`This Court has subject matter jurisdiction over this action pursuant to
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`15 U.S.C. § 1121 and 28 U.S.C. § 1338(a) and (b). This Court has supplemental
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`jurisdiction pursuant to 28 U.S.C. § 1367(a) with respect to the state law claims
`
`asserted herewith.
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`5.
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`This Court has personal jurisdiction over Defendant because they are
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`transacting business in this State and have caused harm or tortious injury in this
`
`State by acts within this State. Upon information and belief, Defendant is currently
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`advertising, selling, and distributing infringing goods within the Eastern District of
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`Louisiana.
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`6.
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`Venue in this District is proper under 28 U.S.C. § 1391(b)-(d). A
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`substantial part of the acts of infringement complained of herein occurs or has
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`occurred in this District.
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`2
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`
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 3 of 12
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`FACTUAL BACKGROUND
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`7.
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` Plaintiff is an entrepreneur who has invested substantial time, money,
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`and effort into creating and branding a mayonnaise and ketchup condiment sauce
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`and a mayonnaise and mustard condiment sauce bearing the name “METCHUP.”
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`8.
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`Since at least as early as August 15, 2010, Plaintiff has manufactured,
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`bottled, and sold his “METCHUP” brand condiment sauces within the United States.
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`9.
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`Plaintiff is the exclusive owner of the “METCHUP” trademark, federally
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`registered with the United States Patent & Trademark Office bearing U.S. Reg. No.
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`392003 for use in connection with “ketchup; mayonnaise; mustard.”1 Due to Plaintiff’s
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`longstanding, continuous, and exclusive use of the “METCHUP” trademark,
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`Plaintiff’s trademark registration is now incontestable pursuant to 15 U.S.C. § 1065.
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`10.
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`Despite Plaintiff’s efforts to protect his trademark in his mayonnaise
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`and ketchup condiment sauce, Defendant created and branded a competing
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`mayonnaise and ketchup condiment sauce using a confusingly similar trademark.
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`11.
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`Specifically, starting in or around April of 2018, Defendant launched a
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`nation-wide ad campaign in which it heavily promoted its new mayonnaise and
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`ketchup condiment sauce using the trademark “MAYOCHUP.”
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`12.
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`Defendant’s “MAYOCHUP” mark is confusingly similar in sight, sound,
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`and meaning when compared to Plaintiff’s “METCHUP” mark.
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`1 Exhibit A, certificate of trademark registration.
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`3
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 4 of 12
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`13.
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`Defendant’s “MAYOCHUP” mark bears a particularly strong phonetic
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`similarity to Plaintiff’s mark. Depending on pronunciation and/or regional dialect,
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`the marks are virtually indistinguishable from one another.
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`14.
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`In fact, consumers on social media and news articles covering
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`Defendant’s infringing product have noted the auditory similarities, best summarized
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`by the following posts on the social media platform, Twitter, including one in which
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`Defendant responded:
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`4
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 5 of 12
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`15.
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`Defendant has further advertised its infringing “MAYOCHUP” product
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`using a counterfeit designation that is identical to Plaintiff’s “METCHUP”
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`trademark. Specifically, in extensive social media advertising and on Defendant’s
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`website, www.heinz.com, Defendant used Plaintiff’s
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`federally
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`registered
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`“METCHUP” trademark in order to advertise its products:
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`16.
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`Due to Defendant’s blatant infringement and misleading advertising
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`practices, internet searches for Plaintiff’s federally registered “METCHUP”
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`trademark instead direct consumers to Defendant’s “MAYOCHUP” products. As of
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`January 14, 2019, half of all “METCHUP” search results returned on the first page
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`of Google concern Defendant’s products. In fact, the first result on Google for
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`Plaintiff’s “METCHUP” trademark directs consumers to Defendant’s website:
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`5
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 6 of 12
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`17.
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`Defendant’s social media accounts are also replete with instances of
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`consumers referring
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`to Defendant’s
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`infringing
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`“MAYOCHUP” product as
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`“METCHUP.”
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`18. Upon information and belief, Defendant has used and continues to use
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`its confusingly similar “MAYOCHUP” mark in commerce despite knowledge of
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`Plaintiff’s superior rights in his federally registered “METCHUP” trademark.
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`19.
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`As a result of Defendant’s substantially similar use of Plaintiff's
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`federally registered trademark, Defendant deceives the consuming public into
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`believing that they are purchasing genuine goods which have been manufactured,
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`authorized, or approved by Plaintiff, and will likely cause confusion and mistake in
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`that consumers are likely to assume that Plaintiff has manufactured, authorized, or
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`approved of the infringing goods sold by Defendant.
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`20.
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`Additionally, or in the alternative, the commercial viability of Plaintiff’s
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`business has been damaged to the extent Defendant’s actions create reverse
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`trademark confusion. Reverse trademark confusion occurs when a larger company
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`uses a smaller senior user’s trademark such that consumers assume the senior user’s
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`mark is associated with or infringing the junior user’s mark.
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`21.
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`In addition to causing Plaintiff to suffer incalculable, irrecoverable, and
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`irreparable lost sales, Defendant’s manufacture, advertisement, distribution, and
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`sale of its infringing goods will irreparably injure Plaintiff’s reputation.
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`6
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 7 of 12
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`CLAIMS FOR RELIEF
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`COUNT I – COUNTERFEITING
`15 U.S.C. §§ 1114(1)(a)-(b), 1116(d), 1117
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`22.
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`Plaintiff incorporates herein by reference each and every averment
`
`contained in the foregoing paragraphs as if fully set forth herein.
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`23.
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`Defendant has used counterfeit marks that are identical with, or
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`substantially indistinguishable from Plaintiff’s federally registered “METCHUP”
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`mark.
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`24. Upon information and belief, Defendant’s competing mayonnaise and
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`ketchup condiment sauce marketed under the names “MAYOCHUP” and/or
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`“METCHUP” constitute the use of a counterfeit mark in connection with the sale,
`
`offering for sale, or distribution of goods or services. Defendant has trafficked these
`
`goods in violation of the Trademark Counterfeiting Act of 1984, 15 U.S.C. § 1116(d),
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`and unless restrained and enjoined, will continue to traffic these goods, all to
`
`Plaintiff’s monetary damage and irreparable harm.
`
`25.
`
`Pursuant to 15 U.S.C. § 1117(b), Plaintiff is further entitled to three
`
`times Defendant’s profits from the infringement together with reasonable attorneys’
`
`fees.
`
`26.
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`Alternatively, in lieu of damages and/or Defendant’s profits, Plaintiff is
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`entitled to statutory damages pursuant to 15 U.S.C. § 1117(c) in an amount up to
`
`$200,000. In the event that Plaintiff shows that Defendant’s actions were willful,
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`Plaintiff will be entitled to statutory damages in an amount up to $2,000,000.
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`7
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 8 of 12
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`COUNT II – TRADEMARK INFRINGEMENT
`15 U.S.C. § 1114
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`27.
`
`Plaintiff incorporates herein by reference each and every averment
`
`contained in the foregoing paragraphs as if fully set forth herein.
`
`28.
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`Defendant’s substantially similar use of Plaintiff's federally registered
`
`trademark deceives the consuming public into believing that they are purchasing
`
`genuine goods which have been manufactured, authorized, or approved by Plaintiff,
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`and will likely cause confusion and mistake in that consumers are likely to assume
`
`that Plaintiff has manufactured, authorized, or approved of the infringing goods sold
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`by Defendant.
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`29.
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`Defendant’s use of a substantially similar mark as to the federally
`
`registered “METCHUP” mark owned by Plaintiff causes confusion as to the identity
`
`of the source of the products, capitalizes on Plaintiff’s goodwill it has built over nearly
`
`a decade of continuous and exclusive use of its mark, and damages Plaintiff’s ability
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`to market and sell its products and/or business.
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`30.
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`Additionally, or in the alternative, Plaintiff’s business has been
`
`damaged to the extent Defendant’s actions create reverse trademark confusion.
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`31.
`
`Plaintiff, under this cause of action, is entitled to damages equal to
`
`Defendant’s profits, damages sustained by the Plaintiff, and costs. Plaintiff is further
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`entitled to an amount up to three times the amount found as actual damages.
`
`Moreover, should the Court find this to be an exceptional case, Plaintiff is further
`
`entitled to his reasonable attorneys’ fees.
`
`8
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 9 of 12
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`32.
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`Defendant’s acts described herein will infringe Plaintiff’s mark, will
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`injure Plaintiff business, reputation, and goodwill, and unless restrained and enjoined
`
`will continue to do so, all to Plaintiff’s monetary damage and irreparable harm.
`
`COUNT III – FALSE DESIGNATION OF ORIGIN
`15 U.S.C. § 1125(a)
`
`33.
`
` Plaintiff incorporates herein by reference each and every averment
`
`contained in the foregoing paragraphs as if fully set forth herein.
`
`34.
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` Defendant’s confusingly similar use of Plaintiff’s “METCHUP” mark
`
`creates a false designation of origin and false representation of Defendant’s goods, all
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`in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`35.
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`The threat of the loss of Plaintiff’s right to control the use of his mark
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`and the reputation of his goods is real and substantial. This loss is further enhanced
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`by the inferior quality of Defendant’s merchandise.
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`36.
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`Defendant’s acts described herein will infringe Plaintiff’s mark, will
`
`injure Plaintiff business, reputation, and goodwill, and unless restrained and enjoined
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`will continue to do so, all to Plaintiff’s monetary damage and irreparable harm.
`
`37.
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`Plaintiff, under this cause of action, is entitled to damages equal to the
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`amounts described in Count II.
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`COUNT IV – LIABILITY FOR ACTS CAUSING DAMAGES
`LA. CIV. CODE 2315
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`38.
`
`Plaintiff incorporates herein by reference each and every averment
`
`contained in the foregoing paragraphs as if fully set forth herein.
`
`39.
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`Defendant is liable for damages under Louisiana Civil Code Article 2315
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`9
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 10 of 12
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`for damages caused by the above-described wrongful acts, as set forth in detail above.
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`COUNT V – LOUISIANA UNFAIR TRADE PRACTICES
`LA. R.S. 51:1409
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`40.
`
`Plaintiff incorporates herein by reference each and every averment
`
`contained in the foregoing paragraphs as if fully set forth herein.
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`41.
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`The above-described wrongful acts constitute unfair or deceptive acts or
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`practices, in violation of La. R.S. 51:1409, et seq.
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`42.
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`In the event that Plaintiff shows that Defendant’s actions were done
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`knowingly, after being put on notice by the attorney general, Plaintiff will be entitled
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`to three times the damages sustained.
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`COUNT VI – LOUISIANA TRADEMARK INFRINGEMENT
`LA. REV. STAT. § 51:222
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`43.
`
`Plaintiff incorporates herein by reference each and every averment
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`contained in the foregoing paragraphs as if fully set forth herein.
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`44.
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`The above-described wrongful acts constitute infringement of Plaintiff’s
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`trademark under Louisiana Trademark law, La. Rev. Stat. § 51:222.
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`COUNT VII – LOUISIANA TRADEMARK DILUTION
`LA. REV. STAT. § 51:222.1
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`45.
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`Plaintiff incorporates herein by reference each and every averment
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`contained in the foregoing paragraphs as if fully set forth herein.
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`46.
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`The above-described wrongful acts constitute dilution (or dilution by
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`blurring) of Plaintiff’s trademark and injury to Plaintiff’s business reputation
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`(dilution by tarnishment) under Louisiana Trademark law, La. Rev. Stat. §§ 51:222.1.
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`10
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 11 of 12
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays for judgment against Defendant as follows:
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`47.
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`For entry of a preliminary and permanent injunction immediately and
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`without bond enjoining Defendant from any use or display of Plaintiff’s federally
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`registered “METCHUP” trademark and/or Defendant’s confusingly similar
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`“MAYOCHUP” trademark;
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`48.
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`For entry of an order compelling Defendant to deliver up and destroy all
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`use or display of Plaintiff’s federally registered “METCHUP” trademark and/or
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`Defendant’s confusingly similar “MAYOCHUP” trademark;
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`49.
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`For entry of judgment against Defendant for all damages to which
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`Plaintiff may be entitled, including:
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`a.
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`Defendant’s profits and for damages in an amount as may be proven at
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`trial, together with any applicable statutory damage enhancements, including
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`treble damages;
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`b.
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`Alternatively, at Plaintiff's election, for the maximum amounts allowed
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`by law for mandatory statutory damages of up to $200,000 per mark infringed
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`or up to $2,000,000 for willful use of Plaintiff’s mark;
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`c.
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`d.
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`For prejudgment and post-judgment interest according to law;
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`For Plaintiff's attorneys’ fees, and full costs and disbursements in this
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`action; and
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`e.
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`For such other and relief as the court may find appropriate.
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`11
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`Case 2:19-cv-00280-GGG-MBN Document 1 Filed 01/14/19 Page 12 of 12
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`Respectfully Submitted,
`
`Brad E. Harrigan (Bar No. 29592)
`Kenneth L. Tolar (Bar No. 22641)
`TOLAR HARRIGAN & MORRIS LLC
`1055 St. Charles Avenue, Suite 208
`New Orleans, LA 70130
`Telephone: (504) 571-5317
`Facsimile: (504) 571-5437
`bharrigan@nolaipa.com
`ktolar@nolaipa.com
`Counsel for Dennis Perry
`
`12
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