Case 2:19-cv-00280-GGG-MBN Document 128 Filed 06/08/20 Page 1 of 6
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF LOUISIANA
`
`
`DENNIS PERRY
`
`VERSUS
`
`H.J. HEINZ COMPANY BRANDS
`LLC and KRAFT HEINZ FOODS
`COMPANY
`
`
`
`
`
`CIVIL ACTION 19-280
`
`
`
`SECTION: “T”
`
`
`ORDER
`
`Before the Court are three related motions for summary judgment: (1) Plaintiff’s Motion
`
`
`
`
`
`for Partial Summary Judgment, 1 (2) Motion for Partial Summary Judgment on Defendants’
`
`Affirmative Defenses and Counterclaim for Cancellation,2 and (3) Defendants’ Cross-Motion for
`
`Summary Judgment.3 For the following reasons, the motions for summary judgment4 filed by
`
`Dennis Perry (“Plaintiff”) are DENIED, and the cross-motion for summary judgment5 filed by
`
`H.J. Heinz Company Brands LLC and Kraft Heinz Foods Company (“Defendants”) is
`
`GRANTED.
`
`
`
`
`
`BACKGROUND
`
`This suit involves Plaintiff’s claims 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.6 Plaintiff alleges
`
`that Defendants unlawfully manufactured, distributed, advertised and sold infringing goods and
`
`
`1 R. Doc. 72.
`2 R. Doc. 76.
`3 R. Doc. 97.
`4 R. Docs. 72 and 76.
`5 R. Doc. 97.
`6 R. Doc. 1.
`
`1
`
`

`

`Case 2:19-cv-00280-GGG-MBN Document 128 Filed 06/08/20 Page 2 of 6
`
`promotional materials bearing a confusingly similar trademark as to Plaintiff’s federally registered
`
`“METCHUP” trademark.7 On June 15, 2007, Plaintiff filed a federal trademark application for his
`
`“METCHUP®” brand condiment sauce with the United States Patent & Trademark Office. Since
`
`August 15, 2010, Plaintiff has manufactured, bottled, and sold his “METCHUP®” brand
`
`condiment sauces within the United States. On February 15, 2011, the United States Patent &
`
`Trademark Office determined that Plaintiff is the exclusive owner of “METCHUP®” and issued
`
`a federal trademark registration for the mark bearing U.S. Reg. No. 3,920,035. The goods recited
`
`in Plaintiff’s METCHUP registration are “ketchup; mayonnaise; mustard.” Plaintiff has not
`
`registered his METCHUP trademark with the State of Louisiana. Plaintiff has sold approximately
`
`thirty-four (34) bottles in total of “METCHUP,” which consists of Wal-Mart store brand ketchup
`
`mixed in equal parts (i.e., a 50/50 ratio) with either Wal-Mart store brand mayonnaise or Wal-Mart
`
`store brand mustard. Plaintiff has sold METCHUP only from the reception area of the Star Motel
`
`in Louisiana and has not sold METCHUP in any store or online.
`
`In 2018, Kraft Heinz launched a family of “flavor mashup” condiment sauces in the U.S.,
`
`including HEINZ® KRANCH (ketchup and ranch sauce), HEINZ® MAYOMUST (mayonnaise
`
`and mustard sauce), HEINZ® MAYOCUE (mayonnaise and barbecue sauce) and HEINZ®
`
`MAYOCHUP (mayonnaise and ketchup sauce). Beginning in April 2018, Kraft Heinz conducted
`
`a pre-launch public outreach campaign for HEINZ® MAYOCHUP. As part of its pre-launch
`
`campaign, Kraft Heinz invited the public to submit proposed names for the new product. Kraft
`
`Heinz received at least 95 submissions, including a submission for METCHUP. At the end of the
`
`prelaunch campaign, Kraft Heinz posted an image on its website of a “gallery” of submitted names
`
`shown on virtual mock-up bottles. Kraft Heinz subsequently launched HEINZ® MAYOCHUP in
`
`
`7 R. Doc. 1.
`
`2
`
`

`

`Case 2:19-cv-00280-GGG-MBN Document 128 Filed 06/08/20 Page 3 of 6
`
`the U.S. in or around September 2018. HEINZ® MAYOCHUP is now sold in retail stores across
`
`the country and online.
`
`
`
`In January 2019, Plaintiff filed his complaint asserting federal counterfeiting, trademark
`
`infringement and false designation of origin, as well as related state law claims. Plaintiff and
`
`Defendants have both moved for summary judgment contending there are no genuine issues of
`
`material fact. Plaintiff and Defendants only dispute the legal significance of the undisputed
`
`material facts.
`
`
`
`LAW AND ANALYSIS
`
`Summary judgment is proper where “the movant shows that there is no genuine dispute as
`
`to any material fact and the movant is entitled to judgment as a matter of law.”8 When assessing
`
`whether a dispute as to any material fact exists, the court considers “all of the evidence in the
`
`record but refrains from making credibility determinations or weighing the evidence.” 9 All
`
`reasonable inferences are drawn in favor of the nonmoving party, but “unsupported allegations or
`
`affidavits setting forth ‘ultimate or conclusory facts and conclusions of law’ are insufficient to
`
`either support or defeat a motion for summary judgment.”10 The party seeking summary judgment
`
`bears the burden of demonstrating the absence of a genuine issue of material fact.11 “Once the
`
`movant does so, the burden shifts to the nonmovant to establish an issue of fact that warrants
`
`trial.”12
`
`
`
`
`8 Fed. R. Civ. P. 56(a).
`9 Delta & Pine Land Co. v. Nationwide Agribusiness Ins. Co., 530 F.3d 395, 398–99 (5th Cir. 2008).
`10 Galindo v. Precision Am. Corp., 754 F.2d 1212, 1216 (5th Cir. 1985); Little v. Liquid Air Corp., 37 F.3d 1069,
`1075 (5th Cir. 1994).
`11 Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 2553, 91 L. Ed. 2d 265 (1986).
`12 Smith v. Reg'l Transit Auth., 827 F.3d 412, 420 n.4 (5th Cir. 2016).
`
`3
`
`

`

`Case 2:19-cv-00280-GGG-MBN Document 128 Filed 06/08/20 Page 4 of 6
`
`1. Likelihood of Confusion
`
`To prove trademark infringement, counterfeiting or false designation of origin under the
`
`federal Lanham Act, 15 U.S.C. § 1101 et seq., a plaintiff must prove that the defendant has used a
`
`mark in a way that is likely to confuse consumers.13 “Likelihood of confusion” is more than a mere
`
`possibility; the plaintiff must demonstrate a probability of confusion.14 Likelihood of confusion is
`
`typically a question of fact, but summary judgment is proper if the “record compels the conclusion
`
`that the movant is entitled to judgment as a matter of law.”15 The Court examines “the following
`
`nonexhaustive ‘digits of confusion’ in evaluating likelihood of confusion: (1) the type of
`
`trademark; (2) mark similarity; (3) product similarity; (4) outlet and purchaser identity; (5)
`
`advertising media identity; (6) defendant's intent; (7) actual confusion; and (8) care exercised by
`
`potential purchasers.”16 The burden of proving likelihood of confusion rests with the plaintiff.17
`
`The Court finds Plaintiff has failed to prove Defendants have used Plaintiff’s mark in a
`
`way that is likely to confuse consumers. Plaintiff has failed to produce any evidence to show that
`
`the mark and product sold by Defendants is similar to Plaintiff’s METCHUP mark. The undisputed
`
`facts show that Kraft Heinz has never used a METCHUP mark in commerce (i.e., in connection
`
`with the interstate sale or transportation of goods). Plaintiff’s counterfeiting claim is based on a
`
`member of the public having submitted “METCHUP” as a proposed name for Kraft Heinz’s as-
`
`yet unlaunched condiment sauce in April 2018. Kraft Heinz has never used METCHUP in
`
`commerce, and Plaintiff has not produced any evidence to show that Kraft Heinz ever intended to
`
`do so. Plaintiff has also failed to produce any evidence to show actual confusion. Thus, based on
`
`
`13 Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 226 (5th Cir.2009).
`14 Id. (citing Bd. of Supv. v. Smack Apparel, 550 F.3d 465, 478 (5th Cir.2008).
`15 Id. at 227 (quoting Smack Apparel, 550 F.3d at 474).
`16 Id. at 227.
`17 S. Snow Mfg. Co. v. Sno Wizard Holdings, Inc., 2011 WL 601639, at *2 (E.D. La. Feb. 16, 2011).
`
`4
`
`

`

`Case 2:19-cv-00280-GGG-MBN Document 128 Filed 06/08/20 Page 5 of 6
`
`the digits of confusion, the Court finds that Plaintiff cannot establish a likelihood of confusion in
`
`this case.
`
`Defendants also move for summary judgment on Plaintiff’s claim under the Louisiana
`
`Unfair Trade Practices Act (“LUTPA”), La. R.S. § 51:1409 and under state trademark
`
`infringement law, La. R.S. § 51:222. Both statutes require a plaintiff to show a likelihood of
`
`consumer confusion. Accordingly, summary judgment is granted as to Plaintiff's LUTPA claim
`
`and Louisiana trademark infringement claim for the same reasons set forth above.
`
`
`
`2. Cancellation for Non-Use
`
`Defendants also seek summary judgment on their counterclaim finding that Plaintiff's mark
`
`should be cancelled. Under 15 U.S.C. § 1064, a mark may be cancelled at any time if it has been
`
`abandoned. “Use” for abandonment purposes is equivalent to “use in commerce” under 15 U.S.C.
`
`§ 1127.18 The Lanham Act defines “use in commerce” as “the bona fide use of a mark in the course
`
`of trade, and not merely to reserve a right in a mark.”19 This definition reflects Congress's intent
`
`to define “ ‘use’ so as to require a greater degree of activity.”20 In the end, “actual use of a mark
`
`in commerce is what creates and builds up rights in a mark.”21
`
`The summary judgment evidence produced establishes that Plaintiff has abandoned his
`
`trademark by failing to use the trademark in commerce. Plaintiff obtained a federal trademark
`
`registration for the word mark METCHUP in 2011. Plaintiff has not registered his METCHUP
`
`trademark with the State of Louisiana and has only sold METCHUP from the reception area of the
`
`
`18 Who Dat Yat Chat, LLC v. Who Dat, Inc., 2012 WL 1118602, at *11 (E.D. La. Apr. 3, 2012).
`19 15 U.S.C. § 1127.
`20 Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1157 (9th Cir.2001) (citing 2 McCarthy on Trademarks and
`Unfair Competition, § 16:8 (4th ed.)).
`21 KeyCorp v. Key Bank & Trust, 99 F. Supp. 2d 824, 826 (N.D. Ohio 2000) (citations omitted); see also United
`Drug Co. v. Theodore Rectanus, Co., 248 U.S. 90, 97 (1918) (“[t]he right to a particular mark grows out of its use,
`not its mere adoption.”).
`
`5
`
`

`

`Case 2:19-cv-00280-GGG-MBN Document 128 Filed 06/08/20 Page 6 of 6
`
`Star Motel. Plaintiff has failed to produce any evidence to show any sales of METCHUP-branded
`
`products outside of Louisiana or to non-Louisiana residents. Plaintiff has never sold METCHUP
`
`in any store, nor has he offered it for sale on the internet. Plaintiff has made no more than nine or
`
`ten batches of either ketchup-and-mustard or ketchup-and-mayonnaise, with each batch filling no
`
`more than six 12-ounce bottles. In total, Plaintiff has made no more than sixty (60) bottles of
`
`product and has sold no more than thirty-four (34) individual bottles. Therefore, the Court finds
`
`that Plaintiff has abandoned his trademark by failing to make lawful, non-de minimis use of his
`
`METCHUP mark in commerce.
`
`CONCLUSION
`
`Accordingly, for the foregoing reasons, IT IS ORDERED that the motions for summary
`
`judgment22 filed by Dennis Perry are DENIED, and the cross-motion for summary judgment23
`
`filed by H.J. Heinz Company Brands LLC and Kraft Heinz Foods Company is GRANTED.
`
`New Orleans, Louisiana, on this 8th day of June, 2020.
`
`GREG GERARD GUIDRY
`UNITED STATES DISTRICT JUDGE
`
`22 R. Docs. 72 and 76.
`23 R. Doc. 97.
`
`6
`
`