throbber
Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 1 of 11 PageID# 1
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF VIRGINIA
`ALEXANDRIA DIVISION
`
`
`
`
`
`
`Civil Action No. ____________________
`
`JURY TRIAL DEMANDED
`
`MARS, INCORPORATED
`6885 Elm Street
`McLean, Virginia 22101
`
`and
`
`MARS PETCARE US, INC.
`315 Cool Springs Boulevard
`Franklin, Tennessee 37057,
`
` Plaintiffs,
`
` v.
`
`SIMMONS PET FOOD, INC.
`316 North Hico Street
`Siloam Springs, Arkansas 72761,
`
` Defendant.
`
`
`
`COMPLAINT
`
`Plaintiffs Mars, Incorporated and Mars Petcare US, Inc. (collectively, “Mars”) bring this
`
`
`
`action against Defendant Simmons Pet Food, Inc. (“Defendant”) and allege as follows:
`
`PRELIMINARY STATEMENT
`
`1.
`
`This is an action for direct and contributory trade dress infringement, false
`
`designation of origin, unfair competition and related claims under the federal Lanham Act, 15
`
`U.S.C. §§ 1051 et seq. (as amended) and Virginia law.
`
`2.
`
`Mars is a leading manufacturer of pet food in the United States. Mars sells
`
`PEDIGREE-branded canned dog food, which features a trade dress that is unique and unusual in
`
`the marketplace. Mars has invested many millions of dollars in advertising the trade dress for
`
`
`
`1
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 2 of 11 PageID# 2
`
`PEDIGREE canned dog food and has earned billions of dollars in revenues from the sale of the
`
`products featuring its well-known trade dress.
`
`3.
`
`Defendant manufactures, distributes and sells a competing canned dog food under
`
`the name “Signature.” Rather than invest the time, money and resources to create its own
`
`distinctive trade dress, Defendant simply helped itself to Mars’s famous trade dress.
`
`4.
`
`Defendant’s manufacturing, distribution and sale of dog food bearing the infringing
`
`trade dress is likely to cause consumer confusion and is irreparably harming the goodwill and
`
`reputation of Mars and PEDIGREE.
`
`THE PARTIES
`
`5.
`
`Plaintiff Mars, Incorporated, is a Delaware corporation with a principal place of
`
`business in McLean, Virginia, and owns the trade dress for PEDIGREE canned dog food.
`
`6.
`
`Plaintiff Mars Petcare US, Inc. is a Delaware corporation with a principal place of
`
`business in Franklin, Tennessee. Mars Petcare is a wholly owned subsidiary of Mars, Incorporated,
`
`and exclusive licensee of the trade dress for PEDIGREE canned dog food.
`
`7.
`
`Defendant Simmons Pet Food, Inc. is an Arkansas corporation with a principal
`
`place of business in Siloam Springs, Arkansas. Defendant manufactures canned dog food bearing
`
`labels that infringe Mars’s trade dress for its PEDIGREE canned dog food. Defendant distributes
`
`and sells those products nationwide to companies and retailers with actual knowledge that they in
`
`turn advertise and sell the products to dog owners at stores throughout the United States, including
`
`in Virginia.
`
`JURISDICTION AND VENUE
`
`8.
`
`This Court has subject-matter jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C.
`
`§§ 1331, 1338, and 1367.
`
`
`
`2
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 3 of 11 PageID# 3
`
`9.
`
`This Court has personal jurisdiction over Defendant because Defendant
`
`manufactures canned dog food bearing infringing trade dress, which it distributes and sells to
`
`customers that Defendant knows have locations in Virginia and advertise and sell those products
`
`to dog owners in Virginia. Defendant’s unlawful conduct is causing Mars to suffer irreparable
`
`injury in this judicial district.
`
`10.
`
`Venue is proper because Defendant is subject to personal jurisdiction in this district.
`
`28 U.S.C. § 1391(b)(1), (c)(2), (d). Venue is also proper because Plaintiff Mars, Incorporated, the
`
`owner of the trade dress for PEDIGREE canned dog food, resides in this district and a substantial
`
`portion of the events or omissions giving rise to the alleged claims occurred in this district. 28
`
`U.S.C. § 1391(b)(2).
`
`FACTUAL BACKGROUND
`
`I.
`
`Mars and the Famous Trade Dress for Pedigree Canned Dog Food
`
`11. Mars is a world’s leading pet food manufacturer and PEDIGREE is among its most
`
`famous brands.
`
`12.
`
`As of 2020, PEDIGREE is the best-selling dog food brand in the United States by
`
`revenues. Mars sells PEDIGREE canned dog food in various flavors.
`
`13.
`
`Decades ago, Mars adopted a trade dress for the PEDIGREE canned dog food that
`
`was and continues to be unique and unusual in the field.
`
`14.
`
`Samples of Mars’s PEDIGREE canned dog food products bearing the distinctive
`
`trade dress are shown below:
`
`
`
`
`
`
`
`
`
`3
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 4 of 11 PageID# 4
`
`
`
`
`
`
`
`
`15. Mars’s trade dress for its PEDIGREE canned dog food features the following
`
`elements:
`
`a.
`
`b.
`
`c.
`
`a predominant yellow background;
`
`a white circular halo in the middle of the label;
`
`the image of a dog’s head and neck with its mouth open and tongue sticking
`
`out positioned to the right of and adjacent to the circular halo;
`
`d.
`
`the image of a yellow, round bowl containing dog food at the bottom of the
`
`label positioned to the left of the dog’s head and touching the dog’s neck;
`
`and
`
`e.
`
`a unique color convention for different flavors of dog food, e.g., orange for
`
`Chicken flavor, teal for Chicken & Rice flavor, brown for Beef, Bacon &
`
`Cheese flavor.
`
`The overall visual and commercial impression created by the combination of these elements of the
`
`trade dress for Mars’s PEDIGREE canned dog food is referred to as the “PEDIGREE Trade
`
`Dress.”
`
`
`
`4
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 5 of 11 PageID# 5
`
`16. Mars’s PEDIGREE Trade Dress is inherently distinctive because it has an overall
`
`visual impression that is unique and unusual in the field of canned dog food.
`
`17. Mars’s PEDIGREE Trade Dress has acquired distinctiveness nationwide through
`
`substantially exclusive use in commerce, substantial advertising and promotion featuring the
`
`PEDIGREE Trade Dress, and substantial revenues from the sale of canned dog food bearing the
`
`PEDIGREE Trade Dress.
`
`18. Mars’s canned dog food bearing the PEDIGREE Trade Dress is sold nationwide,
`
`including in grocery stores (e.g., Safeway, Kroger), big box stores (e.g., Target, Wal-Mart), pet
`
`stores (e.g., Pet Smart) and online (e.g., Amazon, Chewy).
`
`19. Many millions of dog owners throughout the United States have purchased canned
`
`dog food bearing the PEDIGREE Trade Dress. Mars’s PEDIGREE Trade Dress is widely
`
`recognized among consumers and dog owners nationwide as designating the source of dog food
`
`and was so before the acts of Defendant giving rise to this action.
`
`20. Mars’s PEDIGREE Trade Dress is non-functional. The PEDIGREE Trade Dress is
`
`not essential to the use or purpose of canned dog food and does not affect the cost or quality of the
`
`product. Affording trade dress protection to the PEDIGREE Trade Dress would not place
`
`competitors at a significant non-reputation related disadvantage because, among other things, there
`
`are an unlimited number of alternative, non-infringing trade dresses available for canned dog food.
`
`21.
`
`Consumers and dog owners nationwide associate the PEDIGREE Trade Dress
`
`exclusively with a single source and did so before the unlawful acts of Defendant.
`
`
`
`
`
`
`
`5
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 6 of 11 PageID# 6
`
`II.
`
`Defendant and Its Infringing Trade Dress
`
`22.
`
`Defendant is manufacturing, distributing and selling canned dog food featuring
`
`labels that are highly similar in overall visual and commercial impression to Mars’s PEDIGREE
`
`Trade Dress. Examples of Defendant’s canned dog food featuring those labels are shown below:
`
`
`
`
`
`
`
`
`
`
`23.
`
`Defendant’s labels appear on at least the following products: (a) Chopped Supper
`
`Adult Dog Food Chunky Chicken Dinner, Universal Product Code (“UPC”) No. 0 21130 42262
`
`3; (b) Chopped Supper Adult Dog Food with Chopped Beef, UPC No. 0 21130 42024 7; (c)
`
`Chopped Supper Adult Dog Food Chopped Combo with Chicken, Beef & Liver, UPC No. 0 21130
`
`42022 3; (d) Hearty Supper Adult Dog Food with Beef, Egg, Bacon & Cheese, UPC No. 0 21130
`
`42028 5; (e) Hearty Supper Turkey, Rice & Vegetable Dinner Adult Dog Food, UPC No. 0 21130
`
`42025 4; (f) Gravy Cuts Adult Dog Food Chop Cuts with Chicken & Rice in Sauce, UPC No. 0
`
`21130 42261 6; and (g) Gravy Cuts Adult Dog Food with Beef Cuts in Gravy, UPC No. 0 21130
`
`42148 0 (collectively, the labels on these products are referred to as “Defendant’s Infringing Trade
`
`Dress”).
`
`
`
`6
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 7 of 11 PageID# 7
`
`24.
`
`Defendant’s Infringing Trade Dress, like Mars’s PEDIGREE Trade Dress, features
`
`a predominant yellow background with a white circular halo in the middle of the label. Like Mars’s
`
`PEDIGREE Trade Dress, Defendant’s Infringing Trade Dress also features the image of a dog’s
`
`head with its mouth open and tongue sticking out adjacent to the right of the circular halo, and the
`
`image a round, yellow bowl filled with dog food on the bottom of the label positioned to the left
`
`of the dog’s head and touching the dog’s neck.
`
`25.
`
` Defendant’s Infringing Trade Dress also copies Mars’s color conventions for
`
`different flavors:
`
`Mars’s Chopped Ground Dinner with
`Chicken
`
`Defendant’s Chopped Supper Adult Dog
`Food Chunky Chicken Dinner
`
`
`
`
`
`
`
`Mars’s Choice Cuts in Gravy
`Chicken & Rice Flavor
`
`Defendant’s Gravy Cuts Adult Dog Food
`Chop Cuts with Chicken & Rice in Sauce
`
`
`
`
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 8 of 11 PageID# 8
`
`Mars’s Chopped Ground Dinner with
`Beef, Bacon & Cheese Flavor
`
`Defendant’s Hearty Supper Adult Dog
`Food with Beef, Egg, Bacon & Cheese
`
`
`
`
`
`
`
`
`
`
`26.
`
`Defendant’s canned dog food bearing the Infringing Trade Dress is sold in some of
`
`the same stores as Mars’s canned dog food bearing the PEDIGREE Trade Dress.
`
`27.
`
`Defendant’s canned dog food bearing the Infringing Trade Dress competes with
`
`Mars’s canned dog food bearing the PEDIGREE Trade Dress and is advertised and offered for sale
`
`to the same customers and dog owners.
`
`28.
`
`Defendant’s Infringing Trade Dress is likely to cause confusion, mistake, and
`
`deception that Defendant’s canned dog food products are manufactured, approved or licensed by
`
`or connected or associated with Mars or PEDIGREE.
`
`29.
`
`Prior to commencing use of the Infringing Trade Dress, Defendant manufactured,
`
`distributed, and sold canned dog food bearing labels that did not infringe Mars’s PEDIGREE Trade
`
`Dress. Defendant commenced manufacturing, distributing, and selling canned dog food bearing
`
`the Infringing Trade Dress with the intent to trade on the goodwill and reputation of Mars’s
`
`PEDIGREE Trade Dress.
`
`30. Mars has lost control over the goodwill and reputation associated with its
`
`PEDIGREE Trade Dress due to Defendant’s manufacturing, distribution and sale of canned dog
`
`
`
`8
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 9 of 11 PageID# 9
`
`food bearing the Infringing Trade Dress and Defendant’s customers’ advertising and sale of those
`
`products directly to dog owners.
`
`31.
`
`Defendant’s manufacturing, sale and distribution of canned dog food bearing the
`
`Infringing Trade Dress and Defendant’s customers’ advertising and sale of those products directly
`
`to dog owners is irreparably harming Mars.
`
`COUNT 1
`Direct and Contributory Trade Dress Infringement, False Designation of Origin and
`Unfair Competition Under the Federal Lanham Act (15 U.S.C. § 1125(a))
`
`32. Mars re-alleges Paragraphs 1 through 31, above, as part of this count.
`
`33. Mars owns nationwide common law rights to the PEDIGREE Trade Dress for
`
`canned dog food.
`
`34.
`
`35.
`
`The PEDIGREE Trade Dress is non-functional.
`
`Defendant’s use of the Infringing Trade Dress in connection with manufacturing,
`
`distribution, and sale of canned dog food is likely to cause consumers, including dog owners, to
`
`erroneously believe that Defendant’s dog food is manufactured, sponsored, or otherwise licensed
`
`or approved by or connected with Mars or PEDIGREE.
`
`36.
`
`Defendant sells and distributes canned dog food bearing the Infringing Trade Dress
`
`to companies and retailers who Defendant knows in turn advertise those products to dog owners
`
`and sell those products in stores directly to dog owners throughout the United States.
`
`37.
`
`Defendant’s conduct constitutes direct and contributory trade dress infringement,
`
`false designation of origin and unfair competition in violation of Section 43(a) of the Lanham Act,
`
`15 U.S.C. § 1125(a).
`
`38.
`
`Unless enjoined, Defendant will continue to engage in this unlawful conduct which
`
`causes irreparably injury to Mars.
`
`
`
`9
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 10 of 11 PageID# 10
`
`COUNT 2
`Direct and Contributory Trade Dress Infringement, False Designation of Origin, Unfair
`Competition and Palming Off Under Virginia Law
`
`39. Mars re-alleges Paragraphs 1 through 38, above, as part of this count.
`
`40. Mars owns nationwide common law rights to the PEDIGREE Trade Dress for
`
`canned dog food.
`
`41.
`
`42.
`
`The PEDIGREE trade dress is non-functional.
`
`Defendant’s manufacturing, distribution and sale of canned dog food bearing the
`
`Infringing Trade Dress is likely to cause consumers, including dog owners and others, to
`
`erroneously believe that Defendant’s products are manufactured, sponsored, or otherwise
`
`approved or licensed by or connected with Mars or PEDIGREE.
`
`43.
`
`Defendant sells and distributes canned dog food bearing the Infringing Trade Dress
`
`to customers who Defendant knows in turn advertise those products to dog owners and sell those
`
`products directly to dog owners throughout the United States.
`
`44.
`
`Defendant’s wrongful conduct constitutes direct and contributory trade dress
`
`infringement, false designation of origin, unfair competition and passing off in violation of
`
`Virginia law.
`
`45.
`
`Unless enjoined, Defendant will continue to engage in this unlawful conduct which
`
`causes irreparable injury to Mars.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Mars respectfully asks the Court to:
`
`a. Enter judgment for Mars and against Defendant on all claims for relief alleged
`
`herein;
`
`b. Enter a permanent injunction enjoining Defendant and its agents, servants,
`
`
`
`10
`
`

`

`Case 1:20-cv-01023-TSE-IDD Document 1 Filed 09/01/20 Page 11 of 11 PageID# 11
`
`employees, attorneys, officers, and all others in privity and acting in concert with it
`
`from using or causing others to use the Infringing Trade Dress or a similar trade
`
`dress, pursuant to 15 U.S.C. § 1116;
`
`c. Order Defendant to deliver up for destruction all labels, signs, prints, packages,
`
`wrappers, receptacles, and advertisements in Defendant’s possession depicting the
`
`Infringing Trade Dress or a similar trade dress, pursuant to 15 U.S.C. § 1118;
`
`d. Require Defendant to file with the Court and serve on Mars within thirty (30)
`
`days after entry of an injunction, a report in writing under oath setting forth in
`
`detail how Defendant has complied with the Court’s injunction;
`
`e. Award reasonable attorney’s fees and costs to Mars under federal and state law;
`
`and
`
`f. Award Mars any other and further relief as the Court may deem just and proper.
`
`JURY DEMAND
`
`Mars demands a trial by jury in connection with this Complaint against Defendant.
`
`Date: September 1, 2020
`
`
`
`MARS, INCORPORATED and MARS
`PETCARE US, INC.
`
`By: /s/Mary D. Hallerman
`Mary D. Hallerman (Va. Bar No. 80430)
`John J. Dabney (to apply for pro hac vice
`admission)
`SNELL & WILMER L.L.P.
`1101 Pennsylvania Avenue, Suite 300
`Washington, D.C. 20004
`Phone: (202) 908-4261
`jdabney@swlaw.com;
`mhallerman@swlaw.com
`
`
`
`11
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket